Ex Parte Shannon

Board of Patent Appeals and Interferences

Mar 26, 2004

09690173 (B.P.A.I. Mar. 26, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 21

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAREN SHANNON
__________

Appeal No. 2004-0727
Application No. 09/690,173
__________

ON BRIEF
__________

Before SCHEINER, ADAMS and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 32-48, which are all the claims pending in the
application.
Claims 38 and 41 are illustrative of the subject matter on appeal and are
reproduced below:
38. A kit for use in linearly amplifying mRNA, said kit comprising:
an oligonucleotide promoter-primer comprising an RNA polymerase
promoter sequence; and
instructions to convert the mRNA to cDNA, and to then transcribe
the cDNA into RNA in the presence of a reverse transcriptase that is
rendered incapable of RNA-dependent DNA polymerase activity
during this transcription step.

41. A kit for use in linearly amplifying mRNA, said kit comprising:
Appeal No. 2004-0727 Page 2
Application No. 09/690,173

(a) an oligonucleotie promoter-primer comprising an RNA
polymerase promoter sequence;
(b) an RNaseH- polymerase; and
(c) an RnaseH+ polymerase.
The references relied upon by the examiner are:
Wang et al. (Wang) 5,932,451 Aug. 3, 1999
Phillips et al. (Phillips), “Antisense RNA Amplification: A Linear Amplification
Method for Analyzing the mRNA Population from Single Living Cells,” Methods: A
companion to Methods in Enzymology, Vol. 10, pp. 283-88 (1996)

GROUNDS OF REJECTION
Claims 32-481 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Wang.
Claims 32-36 and 39-40 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Phillips.
We affirm the rejection over Wang. Having disposed of all claims on
appeal, we find it unnecessary to reach the merits of Phillips.
CLAIM GROUPING
According to appellant (Brief, page 5), “[c]laims 32-48 stand together.”
Since all claims stand or fall together, we limit our discussion to representative
independent claim 41. Claims 32-40 and 42-48 will stand or fall together with
claim 41. In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991).

1 We note that appellant’s statement of the claims under rejection is incorrect. According to
appellant (Brief, page 4), Wang was applied to claims 38 and 41-48. To the contrary, as set forth
in the Final Office Action (Paper No. 11, page 2), “[c]laims 32-37 and 39-40 remain rejected and
claims 38, and 41-48 are [rejected] under 35 U.S.C. 102(e) as being anticipated by Wang….” We
note that in appellant’s response immediately preceding the Final Office Action, claim 38 was
amended and claims 41-48 were added. See Paper No. 10, pages 1-2. The Advisory Action
Appeal No. 2004-0727 Page 3
Application No. 09/690,173

DISCUSSION
Anticipation under 35 U.S.C. § 102 requires that a single prior art
reference disclose each and every limitation of the claimed invention. Electro
Med. Sys. S.A. v. Cooper Life Sci., 34 F.3d 1048, 1052, 32 USPQ2d 1017, 1019
(Fed. Cir. 1994). As we understand the rejection of record, Wang discloses kits
comprising containers of various reagents, including those set forth in appellant’s
claim 41. Accordingly, the examiner concludes (Answer, page 4), Wang “teach
each and every aspect of the instant invention thereby anticipating [a]ppellant’s
claimed invention.”
While claim 41 does not include a limitation drawn to “printed matter,”
such as instructions, appellant spends the bulk of the Brief and Reply Brief
discussing “printed matter.” According to appellant (Brief, page 14),
Wang fails to teach a kit containing the instructional element of the
present claims because Wang is concerned with an entirely
different method…. As such, Wang fails to teach each and every
element of the claims. Because Wang fails to teach each and
every element of the claimed kit, e.g., the instructions, Wang fails to
anticipate [c]laims 38 and 41-48….

Apart from appellant’s argument concerning “printed matter,” which is not
a limitation of claim 41, appellant identifies no other error in the rejection of claim
41 over Wang. Accordingly, we are compelled to affirm the rejection of claim 41
under 35 U.S.C. § 102(e) as anticipated by Wang. As set forth above, claims 32-
40 and 42-48 fall together with claim 41.

maintained the rejection of claims “32-48 for the reasons of record set forth in the Office Action
mailed 5-08-2002 [the Final Office Action, Paper No. 11].”
Appeal No. 2004-0727 Page 4
Application No. 09/690,173

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )
Appeal No. 2004-0727 Page 5
Application No. 09/690,173

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