Ex Parte Sulchek et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612125800 (P.T.A.B. Dec. 22, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/125,800 05/22/2008 Todd Aaron Sulchek IL-11608 5175 24981 7590 12/27/2016 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 EXAMINER PYLA, PAUL D LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER 1653 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): llnl-docket@llnl.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TODD AARON SULCHEK and AMY LYNN HIDDESSEN Appeal 2015-002058 Application 12/125,800 Technology Center 1600 Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and KRISTI L. R. SAWERT, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134(a) involves claims 1, 6, 10, and 24 (Ans. 2; Reply Br. I).2 Examiner entered rejections under 35 U.S.C. § 112, second paragraph and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as “Lawerence Livermore National Security, LLC and the United States of America as represented by the United States Department of Energy (DOE)” (App. Br. 2). 2 Pending claims 2, 4, 5, 7, 8, 11—13, 15—17, 19—23, and 25—27 stand “withdrawn [from consideration] as being directed to a non-[]elected invention” (Ans. 2; see Reply Br. 1). Appeal 2015-002058 Application 12/125,800 STATEMENT OF THE CASE Appellants’ disclosure “relates to cell responses and more particularly to probe based molecular signal delivery for precise control and measurement of single cell responses” (Spec. 13). Claim 1 is representative and reproduced below: 1. A method of producing and visualizing the response of a cell, wherein the cell has a surface, consisting of the steps of: providing a probe having a probe body and a probe tip, wherein said probe tip is located on said probe body at the end of said probe body and extends from said probe body, providing a silica reactive material on said probe tip, derivitizing said probe tip so that at least one bio-active molecule is covalently linked to said probe tip by delivering a microscopic droplet that is an incubated solution of said bioactive molecule containing said bio-active molecule to said probe tip, and by covalently linking an amine reactive chemical group to said probe tip and to said bio-active molecule, positioning said probe, said probe body, and said probe tip with said at least one bio-active molecule covalently linked to said probe tip over the surface of the cell, delivering said at least one bio-active molecule to the surface of the cell producing a response of the cell, and using optical microscopy for visualizing said response of the cell to said at least one bio-active molecule, wherein the cell has phosphorolation states and wherein said step of using optical microscopy for visualizing said response of the cell to said at least one bio-active molecule comprises measuring change of said phosphorolation states of the cell. (App. Br. 30.) 2 Appeal 2015-002058 Application 12/125,800 The claims stand rejected as follows: Claim 6 stands rejected under 35U.S.C. § 112, second paragraph. Claims 1, 6, 10, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Xu,3 Itoh,4 Mandell,5 Bonilla,6 NovaScan,7 and Vickery.8 Definiteness'. ISSUE Does the preponderance of evidence support Examiner’s conclusion that a claim which depends from a claim which “consists of’ the recited elements or steps cannot add an element or step? FACTUAL FINDINGS (FF) FF 1. The method of Appellants’ claim 1 consists of a series of steps (see App. Br. 30). 3 Xu et al., US 5,874,668, issued Feb. 23, 1999. 4 Itoh et al., Phosphorylation States of Microtuble-Associated Protein 2 (MAP2) Determine the Regulatory Role of MAP 2 in Microtubule Dynamics, 36 BIOCHEMISTRY 12574-12582 (1997). 5 Mandell, Phosphorylation State-Specific Antibodies Applications in Investisative and Diagnostic Pathology, 163 Am. J. Pathol. 1687—1698 (2003). 6 Bonilla et al., The evolution of tools for protein phosphorylation site analysis: from discovery to clinical application, 44 Bio Techniques 671— 679 (2008). 7 NovaScan, AFMProbes with Particle Attachment, https://web.archive.org/ web/20060708040338/http://www.novascan.com/products/particleafmpr. . . (accessed Nov. 25, 2013). 8 Vickery et al., Combining AFM and FRETfor high resolution fluorescence microscopy, 202 Journal of Microscopy 408-412 (2001). 3 Appeal 2015-002058 Application 12/125,800 FF 2. Appellants’ claim 6 requires that “[t]he method of producing and visualizing the response of a cell of claim 1, further compris[es] the step of providing a gold reactive material on said probe tip” (see App. Br. 30). FF 3. Examiner finds that Appellants’ claim 6 “expands the scope of [Appellants’] claim 1,” because Appellants’ “[c]laim 6 allows for a gold reactive material instead of the silica reactive material of [Appellants’] claim 1” (Ans. 4; cf. Spec. 130 (“The [probe] tip [] can have silica, gold, or other reactive material on the tip [] of the probe”)). ANALYSIS Examiner finds that Appellants’ claim 6 “expands the scope of [Appellants’] claim 1” (FF 3). We are not persuaded by Appellants’ contention that the phrase “further comprising the step of’ in Appellants’ claim 6 “simply means ‘including’” and the claim is clear to a person of ordinary skill in this art (App. Br. 28; see Reply Br. 12). To the contrary, we find that Appellants’ claim 6 expressly requires Appellants’ claim 1 to further comprise an additional step (see FF 2; Ans. 12—13). “A claim which depends from a claim which ‘consists of the recited elements or steps cannot add an element or step” (Manual of Patent Examining Procedure (MPEP) § 2111.03). See generally, App. Br. 8 (“The phrase ‘consisting of limits the scope of a claim to the specified element or steps in the body of the claim. Use of this phrase limits the claim to exactly what follows and nothing more”); see id. at 8—9; Reply Br. 3. CONCLUSION OF LAW The preponderance of evidence supports Examiner’s conclusion that a claim which depends from a claim which “consists of’ the recited elements or steps cannot add an element or step. 4 Appeal 2015-002058 Application 12/125,800 The rejection of claim 6 under 35 U.S.C. § 112, second paragraph is affirmed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 4. “Applicants’ method uses a microscopic probe, such as an . . . atomic force microscope (AFM) cantilever tip” (Spec. 119; see also id. 117 and 30). FF 5. Appellants disclose that “[t]he [probe] tip [] can have silica, gold, or other reactive material on the tip [] of the probe”) (Spec. 130 (emphasis added)). FF 6. Xu discloses atomic force microscope (AFM) systems (Xu 1: 4—5). FF 7. Xu discloses the use of an AFM to probe a biological specimen (Xu 5:43—44 ; see Ans. 5—6). FF 8. Examiner finds that Xu discloses a “probe having a probe body and a probe tip,” wherein the probe tip is located at the end of, extends from, the probe body (Ans. 5). FF 9. Examiner finds that Xu’s probe “tip can have a silica reactive material (e.g., silicon nitride) on the tip (Ans. 6 and 10, citing Xu 13:45— 14:8; see also Ans. 10 (“NovaScan [] provides further evidence [that] different types of AFM probes [were] available at the time of [Appellants’ claimed invention,] which includes AFM probes with particle attachments”)). 5 Appeal 2015-002058 Application 12/125,800 FF 10. Xu discloses that the probe tip is “a specifically functionalized cantilever tip [that] allows [for] the identification of physiologically and pharmacologically important biomolecules and their constituent subunits” (Xu 7: 26—30; see generally Ans. 5—6). FF 11. Xu discloses derivatizing the probe tip, wherein the bioprobe tip [] begins as an untreated scanning probe tip []■which is then treated to alter the charge [], a chemical compound []is attached to the treated surface [], a biospecific molecule [] is attached to chemical [] or, alternatively, can be attached directly to the treated scanning probe tip [], and the biospecific molecule [] acts as a biospecific probe. (Xu 8:3—9; see id. at 8: 36—38 (the biospecific molecule may be an antibody); see Ans. 5—6.) FF 12. Xu discloses that “the AFM [] can be used on pure preparations, on preparations reconstituted in artificial membranes and on the cell surface of living cells” (Xu 7: 30—32; Ans. 6). FF 13. Xu discloses that “the bioprobe tip [] can be biospecifically functionalized and will interact specifically with a molecule or site on the molecule while force is being measured and an image obtained” (Xu 7: 33— 36; see also id. at 54—59 (“When the bioprobe tip [] comes in contact with the molecule or subunit of the molecule to which the tip [] has been specifically functionalized, a strong force would be needed to separate them (rupture force) due to the interaction, and the increased force of the interaction can be measured using the AFM [].”); see id at 6: 61—66 (Xu’s method also uses an AFM cantilever tip, and specifically teaches that the probe tip is deflected by interatomic forces and that the deflection is measured by a laser optical deflection detection system”); see generally Ans. 6). 6 Appeal 2015-002058 Application 12/125,800 FF 14. Xu discloses that Xu’s “bioprobe tip [], coupled with the AFM [], offers the highest resolution available for physiological biological imaging, and can be done in physiologic solutions (with minimal or no cellular damage)” (Xu 9: 5—9; Ans. 6). FF 15. Xu discloses that “[a] piezo tube on which the specimen resides moves the sample in the x, y, and z dimensions and is also used in a feedback loop to keep the deflection and (hence the tracking force) constant while the tip [] scans the specimen” (Xu 7: 5—9). FF 16. Xu discloses that a fluid cell [] that allows imaging in a physiologic environment [] is one of the unique advantages of the AFM []. The fluid cell [] is sealed by use of an “O” ring seal, and both the cantilever tip [] and the specimen [] (in this case, labeled “gap junctions”) are immersed in a fluid that can be changed through inlet and outlet ports. (Xu 7: 16-23.) FF 17. Bonilla discloses that “[pjhosphorylation-dependent signaling events mediate many cellular processes” (Bonilla 671: col. 1,11. 1—2; see generally Ans. 7 (“cells having phosphorylation states[] is inherent to every cell”)). FF 18. Mandell discloses that “[t]he availability of hundreds of phosphorylation state-specific antibodies (PSSAs) now makes possible the study of protein phosphorylation in situ” (Mandell, Abstract; see Ans. 7). FF 19. Examiner relies on ftoh to disclose the examination of “phosphorylation-dependent regulation of microtubule-stabilizing activities of microtubule associated protein 2 (MAP2) [] using optical microscopy (i.e., visualizing phosphorylation states of cells)” (Ans. 7, citing ftoh, Abstract). 7 Appeal 2015-002058 Application 12/125,800 FF 20. Examiner relies on Vickery to disclose that “it was [] known in the art that AFM and fluorescence microscopy (via fluorescence resonance energy transfer; FRET) could be combined as a microscopic method” (Ans. 11, citing Vickery, Title and 408: col. 1,11). ANALYSIS Based on the combination of Xu, Itoh, Mandell, Bonilla, NovaScan, and Vickery, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to position a functionalized probe having an attached biomolecule over the surface of a cell (which delivers the bioactive molecule to the cell surface) thereby producing a response (which can be visualized via microscopy, optical or fluorescence) using Xu’s method (as evidenced by Itoh, Mandell, Bonilla, NovaScan and Vickery)” (Ans. 11; FF 6—20). Appellants’ claim 1 uses the transitional phrase “consisting of.” “Use of the transitional phrase ‘consisting of’ to set off a patent claim element creates a very strong presumption that that claim element is ‘closed’ and therefore excludes any elements, steps, or ingredients not specified in the claim.” Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016) (quotation omitted). Here, however, what Appellants style as “extra steps” are not extra at all, but are instead merely the parameters, scientific activity, chemical and/or physical means or laws, in which Appellants’ broadly claimed method steps can be carried out (see Ans. 13, and 15—17). We are not persuaded by Appellants’ contention that Xu’s method of producing and visualizing the response of a cell using AFM includes steps not required by Appellants’ claimed invention, such as the deflection of a 8 Appeal 2015-002058 Application 12/125,800 probe tip by interatomic forces and the use of a laser optical deflection detection system to measure deflection of the probes cantilever tip (App. Br. 10—11; see also id. at 12; Reply Br. 4—6; see FF 13). Like Xu, “Applicants’ method uses a microscopic probe, such as an . . . atomic force microscope (AFM) cantilever tip” (FF 4). Therefore, absent evidence to the contrary, Appellants’ claimed method implicitly encompasses the deflection of a probe tip by interatomic forces and the use of a laser optical deflection detection system to measure deflection of the probes cantilever tip (see Ans. 16-17). The method of Appellants’ claim 1 requires that the probe, probe body, and probe tip with at least one bio-active molecule covalently linked to the probe tip is positioned over the surface of the cell to deliver at least one bio-active molecule to the surface of the cell to produce a response by the cell (App. Br. 30). As Appellants explain, Xu accomplishes this step through the use of “a piezo tube on which the specimen resides [to] move[] the sample in the x, y, and z dimensions” and, thereby, position the probe, probe body, and probe tip with at least one bio-active molecule covalently linked to the probe tip over the surface of the cell to deliver at least one bio active molecule to the surface of the cell to produce a response by the cell (see App. Br. 11—12; FF 15). As Appellants further explain, Xu’s piezo tube “is also used in a feedback loop to keep the deflection and (hence the tracking force) constant while the tip [] scans the specimen” (App. Br. 12; FF 15). Based on the foregoing, Appellants contend that Xu’s method makes use of a “piezo tube on which the specimen resides moves the sample” and, therefore, Xu includes an “extra step” that is not present in Appellants’ claim 9 Appeal 2015-002058 Application 12/125,800 1 (see App. Br. 11—12; Reply Br. 5). We are not persuaded. Appellants failed to provide persuasive evidence or argument to support a conclusion that the method of Appellants’ claim 1 does not encompass Xu’s means for positioning the probe, probe body, and probe tip with at least one bio-active molecule covalently linked to the probe tip over the surface of the cell to deliver at least one bio-active molecule to the surface of the cell to produce a response by the cell {see generally Ans. 13—14 (Appellant’s claim 1 is “written at a broad high generalized level,” wherein Appellants’ claim 1 encompasses the “steps/activities [] exemplified by Xu”)). Xu discloses that “a fluid cell[, that is sealed by use of an O ring seal,] that allows imaging in a physiologic environment [] is one of the unique advantages of the AFM” (FF 16.) As discussed above, the method of Appellants’ claim 1 encompasses AFM (FF 4). Therefore, we are not persuaded by Appellants’ contention that Xu’s use of a “fluid cell [that] is sealed by use of an ‘O’ ring seal,” necessarily incorporates an extra step into Xu’s method, which is not required by Appellants’ claim 1 {see App. Br. 12—13; Reply Br. 6). Appellants failed to provide persuasive evidence or argument to support a conclusion that the AFM method of Appellants’ claim 1 does not implicitly encompass a fluid cell that is sealed by use of an O ring seal. We recognize, but are not persuaded by, Appellants’ contentions that Examiner’s reliance on Itoh, Mandell, Bonilla, NovaScan, and Vickery add additional steps to Xu’s method that are not required by Appellants’ claimed invention {see App. Br. 13—22; Reply Br. 6—10). Instead, we agree with Examiner’s conclusion that Itoh, Mandell, Bonilla, NovaScan, and Vickery, as relied upon by Examiner, “do not provide extra elements or steps, rather, 10 Appeal 2015-002058 Application 12/125,800 they provide evidence of what was known in the art (e.g., types of probe tips, visualization techniques with known equipment and what was known in the art regarding phosphorylation)” (Ans. 17; see FF 9 and 17—20). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Xu, Itoh, Mandell, Bonilla, NovaScan, and Vickery is affirmed. Claims 6, 10, and 24 are are not separately argued and fall with claim 1. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 11 Copy with citationCopy as parenthetical citation