Ex Parte Templin et al

Patent Trial and Appeal Board

Aug 21, 2018

14235598 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/235,598 03/25/2014
35811 7590 08/23/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Markus Templin
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.
WIT-14-1027 7749
EXAMINER
COOK,LISA V
ART UNIT PAPER NUMBER
1677
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS TEMPLIN, FRIDOLIN TREINDL,
ANETTE DO ETTINGER, and OLIVER POETZ 1
Appeal2018-005207
Application 14/235,598
Technology Center 1600
Before MICHAEL J. FITZPATRICK, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a method of detecting biomolecules present in a complex
biological sample. 2 The Examiner's rejections of claims 1-7 and 11-19
under 35 U.S.C. § 103(a) are appealed. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
1 The Real Party in Interest is identified as "NMI
NATURWISSENSCHAFTLICHES UND MEDIZINISCHES INSTITUT
AN DER UNIVERSITAT TUBINGEN." Appeal Br. 1.
2 We have considered and herein refer to the Specification of Jan. 28, 2014
("Spec."); Final Office Action of Feb. 7, 2017 ("Final Action"); Appeal
Brief of Aug. 23, 2017 ("Appeal Br."); Examiner's Answer of Feb. 21, 2018
("Answer"); and Reply Brief of Apr. 18, 2018 ("Reply Br.").
Appeal2018-005207
Application 14/235,598
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. A method of detecting biomolecules present in a complex
biological sample comprising:
a) separating the biological sample into fractions according
to at least one physical property of the biomolecules; and
b) specifically detec[t]ing biomolecules present in the
fractions using at least one solid-phase-based, immunological
detection method including immobilizing the biomolecules from
the individual fractions on microsphere populations specific for
each fraction and distinguishable from one another.
Appeal Br. 8 (Claims App'x).
The following rejections are appealed:
Claims 1-7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) over
Sloane, 3 Han,4 and Nolan. 5 Final Action 3.
Claims 11-17 stand rejected under 35 U.S.C. § 103(a) over Sloane,
Han, Nolan, and Emoult. 6 Id. at 5.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
3 WO 02/075321 Al (pub. Sept. 26, 2002) ("Sloane").
4 CN101550441 (A) (pub. Oct. 7, 2009) (English translation) ("Han").
5 John P. Nolan and Francis Mandy, Multiplexed and Microparticle-based
Analyses: Quantitative Tools for the Large-Scale Analysis of Biological
Systems, 69(5) CYTOMETRY A. 318-25 (2006) ("Nolan").
6 Emilie Emoult et al, A Proteomic Approach for Plasma Biomarker
Discovery with iTRAQ Labelling and OFFGEL Fractionation, J. BIOMED. &
BIOTECH. 1-8 (2010) ("Emoult").
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Appeal2018-005207
Application 14/235,598
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Regarding obviousness, "[t ]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). "What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under§ 103." Id. at 419.
"Obviousness does not require absolute predictability of success .... For
obviousness under§ 103, all that is required is a reasonable expectation of
success." In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988).
"Dependent claims are nonobvious under section 103 if the independent
claims from which they depend are nonobvious." In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988).
The Examiner determined that claims 1-7, 18, and 19 would have
been obvious over the Sloane-Han-Nolan prior art combination and that
claims 11-17 would have been obvious over this same prior art combination
adding Emoult. See Final Action 2-3, 6; Answer 2--4, 6-7.
Appellants argue "Sloane does not disclose methods of detecting
biomolecules that include separating a biological sample into fractions and
'immobilizing the biomolecules from the individual fractions on
microsphere populations."' Appeal Br. 3. The Examiner concedes any
indication that Sloan teaches using microbeads was an error, but points to
the disclosure of Han and Nolan as each teaching that beads and micro beads
are suitable supports for protein detection. Answer 3; Final Action 3-5.
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Appeal2018-005207
Application 14/235,598
Appellants also argue that combining Han and Nolan with Sloane
would change the principle operation of Sloane's invention because Sloane
requires printing of reagents at predetermined locations on a planar array,
which would be "fundamentally incompatible" with immobilizing
biomolecules on microsphere populations, thus there would be no reason to
combine the references as determined by the Examiner. Appeal Br. 3--4.
Appellants contend that no way of printing reagents onto microspheres is
taught and so microspheres are not an obvious substitute for Sloane's
supports for its secondary array; Appellants also argue that the beads of
Nolan or Han could not be used as a part of the primary array of Sloane. Id.
at 4.
Appellants' argument is persuasive. If one of ordinary skill relies on
the methodology of Sloane, it is not clear from the record how one could
insert microspheres as a substrate in such a process of analyzing molecules.
Sloan relies on spotting macromolecules, typically proteins, on an array and
then printing reagent over the protein-containing spots to then analyze the
proteins. How could one of ordinary skill print reagents onto microspheres
in this way? The Examiner does not explain how it would be possible, much
less how the "immunological detection method including immobilizing the
biomolecules from the individual fractions on microsphere populations
specific for each fraction and distinguishable from one another," as claimed,
could be accomplished using the methods of Sloane, even if somehow
utilizing beads or microspheres as taught by Han and Nolan.
Because we agree with Appellants that modifying Sloane to utilize
beads or microspheres as taught by Han and Nolan would change the
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Appeal2018-005207
Application 14/235,598
principle of operation of Sloane, and also because there is insufficient
evidence that the skilled artisan would have a reasonable expectation of
successfully so modifying Sloane, we reverse the obviousness rejections.
SUMMARY
The obviousness rejections are reversed.
REVERSED
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