Ex Parte Sobek et al

Patent Trial and Appeal Board

May 25, 2016

12445384 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/445,384 04/13/2009
22898 7590 05/27/2016
ISHIMARU & AS SOCIA TES LLP
1111 W. El Camino Real
Ste 109-146
Sunnyvale, CA 94087
FIRST NAMED INVENTOR
Daniel Sobek
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
36-008P-PCT-US 6972
EXAMINER
GITOMER, RALPH J
ART UNIT PAPER NUMBER
1657
NOTIFICATION DATE DELIVERY MODE
05/27/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
efiling@ishimarulaw.com
lomi@ishimarulaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL SOBEK and JIANGHONG RAO
Appeal2013-004282 1
Application 12/445,384
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to an assay
system that includes a luminescent nanocrystal that emits light when reacted
with adenosine triphosphate (ATP). The Examiner rejected the claims for
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
As background, the Specification discloses that the "presence of ATP
can be measured using firefly Luciferase bioluminescence. The
bioluminescence created by this reaction can be correlated to the amount of
1 Zymera, Inc., is the real party in interest. App. Br. 3.
Appeal2013-004282
Application 12/445,384
ATP present in the sample." Spec. 1. The ATP-based luciferin/luciferase
bioluminescence reaction can also be used as an indicator for the presence of
the enzyme creatine kinase (CK), which, when present in elevated levels in
the blood, may signal certain disease conditions. Id.
The Specification explains, however, that one disadvantage of the
luciferin/luciferase bioluminescence reaction is that it "typically produces
yellow and green emission that may be quenched by blood proteins such as
hemoglobin. The assays made directly in body fluids such as whole blood
may be difficult to read accurately due to hemoglobin absorption and self-
fluorescence of the background from other blood proteins with natural
fluorescence." Id. at 2.
To address this issue, the Specification discloses a "Bioluminescence
Resonance Energy Transfer luminescent nanocrystal 500, [in which a]
semiconductor nanostructure 502 may be linked, at the Foster distance of 30
Angstroms, to the luminescent enzyme 504, such as a firefly luciferase, with
maximum emission at a wavelength of 550 nm to 560 nm." Id. at 6; see also
Fig. 5 (showing elements corresponding to reference numbers).
The Specification discloses that, in a preferred embodiment, "the
semiconductor nanostructure 502 that may emit in the red visible light
spectrum will be used as a BRET [Bioluminescence Resonance Energy
Transfer] acceptor molecule. Emissions at wavelengths longer than 650 nm
minimize the possibility of light quenching from blood proteins such as
hemoglobin." Spec. 6. The Specification discloses that there are "many
ways to achieve a stable linkage between the semiconductor nanostructure
502 and the luminescent enzyme 504. One method is to form a stable amide
linkage between the two molecules using l-ethyl-3-(3-
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Appeal2013-004282
Application 12/445,384
dimethylaminopropyl)carbodiimide hydrochloride (EDC) as a coupling
reagent." Id. at 7.
Claim 6 is representative and reads as follows (App. Br. 17):
6. An assay system comprising:
a luminescent nanocrystal; and
a solution combined with the luminescent nanocrystal for
detecting an adenosine triphosphate molecule
based on a light emission from the luminescent
nanocrystal reacted with the adenosine
triphosphate molecule.
The sole rejection before us for review is the Examiner's rejection of
claims 6-15, under 35 U.S.C. § 103(a), for obviousness over Hinds2 (Final
Action 2-3).
OBVIOUSNESS
The Examiner cites Hinds as disclosing, on page 64, column 1, last
paragraph, "semiconductor nanocrystals with reacted with ATP as a ligand.
In Fig. 1 the photoluminescence spectra sho\'l/S emission of the presence of
ATP." Final Action 2-3.
The Examiner concedes that "[s]ome of the claims differ from Hinds
in that they are enzyme linked." Id. at 3. The Examiner concludes,
however, that an ordinary artisan would have considered it obvious to "link
the nanocrystal of Hinds with any desired compound to change the
properties of the nanocrystal for it to react with various substances as desired
because Hinds teaches linking nanocrystals with various compounds and
2 Sean Hinds et al., Nucleotide-Directed Growth of Semiconductor
Nanocrystals, 128 J. Am. Chem. Soc. 64---65 (2006).
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Application 12/445,384
then determines the activity resulting from the linking." Id.; see also Ans.
3--4.3
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prim a facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We agree with Appellants that a preponderance of the evidence does
not support the Examiner's conclusion of obviousness.
Claim 6, the only independent claim under rejection, recites an assay
system that has two components: (1) a luminescent nanocrystal, and (2) a
solution that is combined with the luminescent nanocrystal. App. Br. 17.
Claim 6 specifies that the solution is "for detecting an adenosine
triphosphate [ATP] molecule based on a light emission from the luminescent
nanocrystal reacted with the adenosine triphosphate molecule." Id.
(emphasis added).
Based on its language, and when viewed in light of the disclosures
from the Specification cited above, we interpret claim 6 as requiring the
claimed luminescent nanocrystal, in the solution, to be capable of producing
a detectable light emission when the crystal reacts with an ATP molecule.
It may be true, as the Examiner contends, that the final clause of claim
6 is simply an intended use of the claimed solution. See Ans. 5.
3 The Examiner's Answer does not include page numbers. In citing to the
Answer, we consider the first page to be page 1, and the remaining pages as
if they were numbered consecutively.
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Application 12/445,384
As our reviewing court has noted, an intended use recitation is met by
a device capable of performing the claimed function. In re Schreiber, 128
F.3d 1473, 1478-79 (Fed. Cir. 1997) (holding that a prior art apparatus
meeting all claimed structural limitations was anticipatory because it was
inherently capable of performing the claimed function); see also In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971) ("'Functional' terminology may
render a claim quite broad ... [;] a claim employing such language covers
any and all embodiments which perform the recited function.").
In the instant case, we agree with Appellants that the Examiner has
not explained adequately why Hinds teaches or suggests a luminescent
nanocrystal, in a solution, that is capable of producing a detectable light
emission when the crystal reacts with an ATP molecule, as claim 6 requires.
As Appellants argue (App. Br. 10-11), rather than describing a crystal
that reacts with ATP to produce a detectable light emission, Hinds discloses
experiments in which the investigators attempted to grow PbS crystals using
ATP, GTP, CTP, and UTP molecules as ligands. Hinds, 64. As Appellants
argue, of the tested nucleotides, only GTP produced luminescent
nanocrystals:
Syntheses using GTP produced PbS nanocrystals with IR
luminescence (Figure IA) corresponding to photoluminescence
quantum efficiencies in the range 1-2%. In the presence of
ATP, CTP, and UTP, soluble nanocrystals were not the major
product, and instead the syntheses produced mainly precipitate
and nonemissive solutions. The results indicate that, under the
synthetic conditions chosen here, only GTP served as a
competent ligand for nucleation, growth, and capping of
soluble PbS nanocrystals.
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Appeal2013-004282
Application 12/445,384
Id. (emphasis added). Moreover, as seen in the legend of Figure 1, the
photoluminescence that was exhibited did not result from a reaction between
ATP and the crystal, but instead from laser excitation of a crystal grown
from GTP. Id. ("Photoluminescence spectra under 633 nm, 3.3 mW
excitation from a HeNe laser. The use of GTP ligand results in strongly
luminescent, stably dispersed nanocrystals. In the presence of ATP, CTP,
and UTP, syntheses produced mainly precipitate.").
Based on these teachings in Hinds, the Examiner argues:
The spectrum of the nanocrystal was . . . determined in a
solution. It does not appear that Hinds tested for a reaction
between the synthesized nanocrystal and any of the nucleotides.
There is no reason to believe that the intended use of such a
nanocrystal materially changes its structure. Thus, the same
nanocrystal as claimed is taught by Hinds.
Ans. 5---6. The Examiner does not, however, explain with any specificity
why Hinds teaches or suggests that its luminescent nanocrystal, when in
solution, is capable of producing a detectable light emission when the crystal
reacts with an ATP molecule, as claim 6 requires.
Lastly, the Examiner argues that the Specification does not "describe
how the instant luminescent nanocrystal was made so one cannot distinguish
the chemistry or structure of the nanocrystal of Hinds from the presently
claimed nanocrystal based on a synthetic scheme. Anticipation is the
epitome of obviousness and all the limitations of claim 6 are taught by
Hinds." Id. at 6.
We are not persuaded. While the Specification might not limit the
scope of claim 6, as seen in the portions cited above, the Specification in fact
discloses the components of a luminescent nanocrystal that, when in
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Application 12/445,384
solution, is capable of producing a detectable light emission when the crystal
reacts with an ATP molecule, as claim 6 requires.
In sum, for the reasons discussed, we are not persuaded that the
Examiner has explained with adequate specificity why Hinds teaches or
suggests a luminescent nanocrystal that, when in solution, is capable of
producing a detectable light emission when the crystal reacts with an ATP
molecule, as claim 6 requires. Accordingly, we agree with Appellants that a
preponderance of the evidence does not support the Examiner's conclusion
of obviousness as to claim 6. We, therefore, reverse the Examiner's
rejection of claim 6, and its dependent claims, for obviousness over Hinds.
REVERSED
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