Ex Parte Scholl et al

Board of Patent Appeals and Interferences

Nov 15, 2011

10210201 (B.P.A.I. Nov. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUERGEN SCHOLL, DIRK ROHDEMANN, and
THOMAS VOMHOF
____________

Appeal 2011-001369
Application 10/210,201
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-11, 13-17, and
36-42.
1
We have jurisdiction under 35 U.S.C. § 6(b).

1
Notwithstanding the Examiner’s statement of the status of the claims (Ans.
2), Appellants’ status of claims statement failed to address the status of
claims 40-42 (App. Br. 1). However, because Appellants address claims 40-
42 in the remainder of their Brief, we find Appellants’ error to be
typographical in nature.
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Application 10/210,201

2
STATEMENT OF THE CASE
The claims are directed to a machine-implemented method for
managing information describing a process flow. Claim 1 is representative
and is reproduced in the “Appendix of Claims” (App. Br. 14-15).
Claims 1-11, 13-17, and 36-42 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Engebrecht.
2

We reverse.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Unit 1.6 of Engebrecht provides instructions for performing four
types of plasmid DNA minipreps. Engebrecht provides the following
overview of the instructions:
Minipreps of Plasmid DNA
Although there are a large number of protocols for the isolation
of small quantities of plasmid DNA from bacterial cells
(minipreps), this unit presents four procedures based on their
speed and success: the alkaline lysis prep, a modification of the
alkaline lysis prep that is performed in 1.5-ml tubes or 96-well
microtiter dishes, the boiling method, and a lithium-based
procedure. A support protocol provides information on storing
plasmid DNA.

(Engebrecht 1.6.1: 1-7.)
FF 2. Under each of Engebrecht’s four separately articulated sets of
instructions Engebrecht provides: (1) an overview of the specific procedure,

2
Engebrecht et al., Minipreps of Plasmid DNA in Current Protocols in
Molecular Biology, 1.6.1-1.6.10 (Ausubel et al., ed., 1991).
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Application 10/210,201

3
(2) a list of materials for the specific procedure, and (3) a stepwise recitation
of the specific method (Engebrecht 1.6.1-1.6.10).
FF 3. Appellants define the term “process flow” as “a sequence of
chemical, physical, or biological activities for the conversion, transport, or
storage of material or energy” (Spec. 1: 8-10).
FF 4. The Examiner finds that “[a] protocol for obtaining plasmid DNA” is
encompassed by Appellants’ definition of the term “process flow” (Ans. 11).
FF 5. The Examiner finds that Engebrecht’s collection of protocols for
obtaining plasmid DNA is “a type of management of the protocols, i.e.
process flows” (Ans. 11-12).
FF 6. The Examiner finds that Engebrecht suggests a method that provides
“a hierarchy that describes the activities in the process of isolating plasmid
DNA, e.g., first getting bacterial cells with the plasmid DNA, breaking up
the bacterial cells . . . separating proteins with DNA, etc.” (Ans. 5; see also
Ans. 12).
FF 7. The Examiner finds that Engebrecht’s “hierarchy is independent of
any particular formula describing inputs [(i.e. the particular materials)] and
outputs [(i.e. plasmid DNA)] of isolating DNA” (Ans. 5-6 and 13).
ANALYSIS
Based on the Examiner’s reading of Engebrecht, the Examiner
concludes that, at the time of Appellants’ invention, it would have been
prima facie obvious to a person of ordinary skill in this art to determine
which of Engebrecht’s methods to use and then “store/record the association
for future use so that the association, i.e., the activity description and the
details of the chosen formula, would be readily withdrawn to use” (Ans. 7).
We are not persuaded.
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Application 10/210,201

4
Appellants’ claimed invention requires, inter alia, the receipt of an
element hierarchy that describes activities for performing the process flow
using different classes of process elements (see Claim 1
3
). In addition,
Appellants’ claims require the receipt of first and second formula
descriptions that are independent of the element hierarchy (id.). As
Appellants explain, Engebrecht’s overview of the instructions is not an
element hierarchy as defined by the claimed invention, “[i]ndeed, except for
the references to the four miniprep procedures . . . it is unclear what
activities are described in this paragraph” (App. Br. 11-12; see also Reply
Br. 2-4; Cf. FF 1). We agree.
Contrary to the Examiner’s assertion, specific activities are listed
under each of Engebrecht’s four separately articulated sets of instructions
(see FF 2; Cf. FF 6). Accordingly, in contrast to the requirements of
Appellants’ claimed invention, we find that the preponderance of the
evidence on this record falls in favor of Appellants’ contention that in each
of Engebrecht’s miniprep procedures the activities and materials are
inseparably tied to a single specific miniprep procedure (see App. Br. 12).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1-11, 13-17, and 36-42
under 35 U.S.C. § 103(a) as unpatentable over Engebrecht

is reversed.

REVERSED
cdc

3
Claims 2-11, 13-17, and 36-42 depend directly or indirectly from claim 1.