Ex Parte Xiao

Board of Patent Appeals and Interferences

Dec 23, 2010

11108978 (B.P.A.I. Dec. 23, 2010)

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.
11/108,978 04/19/2005 Guangqing Xiao 102-578 (P-6002) 8360
32752 7590 12/23/2010
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(Hoffman & Baron)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
SINGH, ANOOP KUMAR
ART UNIT PAPER NUMBER
1632
MAIL DATE DELIVERY MODE
12/23/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GUANGQING XIAO
__________

Appeal 2010-009965
Application 11/108,978
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method including preparing, packaging and transporting transgenic frog
oocytes. The Patent Examiner rejected the claims on the ground of
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009965
Application 11/108,978

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STATEMENT OF THE CASE
Claims 1-3, 9-11, 21 and 22, which are all the pending claims, are on
appeal. Claim 1 is representative and reads as follows (emphasis added to
highlight the disputed feature):
1. A method of providing transgenic Xenopus laevis2 oocytes, the
method comprising:
a) preparing transgenic Xenopus laevis oocytes at a first location;
b) disposing a buffer solution into wells of a multiwell plate, wherein
an equal amount of said buffer solution is disposed into each of said
wells;
c) disposing said transgenic Xenopus laevis oocytes into said wells of
said multiwell plate; then,
d) sealing said wells; then,
e) transporting the transgenic Xenopus laevis oocytes to a second
location remote from said first location, wherein said transporting
includes transporting by a mode of transport selected from the group
consisting of automobile, truck, airplane, train, ship, and combinations
thereof.

The Examiner rejected the claims as follows:
• claims 1, 2, 9-11 and 21 under 35 U.S.C. § 103(a) as unpatentable
over Takeshita,3 Halvorsen,4 and Lan;5

2 Xenopus laevis is the systematic name for the South African clawed frog.
(Spec. 1, ¶3.)
3 Tomoko Takeshita et al., Apparatus For Microinjection of Sample Into
Amphibian Oocytes, Pub. No. US 2003/0028908 A1, published Feb. 6, 2003.
4 Yuan-Di C. Halvorsen, Method Of Transporting Cells And Kit Useful
Therefor, US Patent No. 5,842,573, issued Dec. 1, 1998.
5 Ling Lan et al., Expression of Drosophila trpl cRNA in Xenopus laevis
oocytes leads to the appearance of a Ca2+ channel activated by Ca2+ and
calmodulin, and by guanosine 5’[γ-thio]triphosphate, 316 BIOCHEM. J. 793-
803 (1996).
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Application 11/108,978

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• claim 3 under 35 U.S.C. § 103(a) as unpatentable over Takeshita,
Halvorsen, Lan, and Zhang;6 and
• claim 22 under 35 U.S.C. § 103(a) as unpatentable over Takeshita,
Halvorsen, Lan, and Wang.7

OBVIOUSNESS
The Issue
Appellant contends that the prior art cited by the Examiner did not
disclose all the limitations of the claimed method. “Specifically, the cited
prior art fails to disclose use of an equal amount of buffer solution in the
wells of a multiwell plate as set forth in Appellant’s Claim 1.” (App. Br.
10.) Relying on that alleged deficiency, Appellant contends that “the
Examiner has not provided a prima facie showing of obviousness.” (Id.; see
also, id. at 7-10.)
The issue on appeal is whether the cited prior art disclosed “use of an
equal amount of buffer solution in the wells of a multiwell plate.”

Findings of Fact
1. We adopt the Examiner’s findings of fact.
2. Concerning the claim limitation “wherein an equal amount of said
buffer solution is disposed into each of said wells,” the Examiner
found that “it was generally known to one of ordinary skill in the art

6 Lei Zhang et al., Cloning and Functional Expression of a Human Liver
Organic Cation Transporter, 51 MOLECULAR PHARMACOLOGY 913-921
(1997).
7 Chang-Zheng Wang et al., The Na+-driven Cl¯/HCO3¯ Exchanger, 275 J.
BIOL. CHEM. 35486-35490 (2000).
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that buffer to oocyte ratio could be varied depending on type of oocyte
and types of vessel.” (Ans. 5.) The Examiner then found that Lan
taught: “disposing each oocyte into a well in a multiwell plate (60-
well plate) containing 30 μl of MBS.” (Id., citing Lan 794, col. 2,
para. 5.) Further: “[i]t is noted that Lan et al then used multiwell
plate for measurement of Ca2+ and Mn2+ inflow . . . in a fixed
volume of buffer . . . .” (Id., citing Lan 794, col. 2, last 2 para.)
3. Lan stated:
For the measurement of fluorescence, each oocyte was
transferred to a well in a multiwell plate (60-well Micromulti
Test Tray, Disposable Products, Adelaide, South Australia)
containing 30 μl of Ca2+-free MBS and other additions as
indicated.

(Lan, 794, col. 2, para. 5.)

Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).

Analysis
We agree with the Examiner’s findings and the reasoning set out in
the Answer. The evidence supports the Examiner’s findings, and we also
conclude that the rejections set out a prima facie case of obviousness. We
have reviewed the record including the Appeal Brief, the Reply Brief, the
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references, and the Examiner’s Answer, but find Appellant’s arguments
unpersuasive.
The issue Appellant has raised concerns one claimed feature allegedly
missing from the prior art: “an equal amount” of buffer in each well of the
multiwell plate into which the oocytes are disposed, a feature recited in
paragraph “b)” in claim 1. The Examiner relied on Lan as evidence that
disposing oocytes in wells containing equal amounts of buffer was known,
but Appellant argues that “there is no disclosure in Lan of using equal
amounts of buffer solution in each well of a multiwell plate.” (App. Br. 8.)
Lan described placing each oocyte in a well containing “30 μl of Ca2+-free
MBS and other additions as indicated.” (FF3.) As the Examiner explained
in the rejection, “Lan et al. then used [the] multiwell plate for measurement .
. . in a fixed volume of buffer.” (Ans. 5.)
Appellant contends that although Lan described “other additions,”
there was no indication to use the “same amount” of other additions, and
therefore Lan did not describe the “equal amount” feature of the claimed
invention. (App. Br. 8-9.) We find this speculative argument unpersuasive
first because Appellant provides no evidence that any of Lan’s “other
additions” caused the amount of buffer in the wells to become unequal. The
second reason we find it unpersuasive is because claim 1 requires only
“disposing . . . an equal amount of said buffer . . . into each of said wells,”
and it is undisputed that Lan taught disposing an equal amount (30 μl) of
buffer (MBS) in each well. The claim, which uses the transitional phrase
“comprising,” does not exclude steps adding other materials causing the
volumes in wells to differ. Concerning Appellant’s argument about reducing
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Application 11/108,978

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“sloshing effects” during transport (App. Br. 10), we find the Examiner’s
response persuasive (Ans. 12).
Claims 2, 9-11 and 21 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 3 and 22
Under separate headings for claims 3 and 22, Appellant argues only
that the additional references added to address certain features of claims 3
and 22 do not “overcome the deficiencies noted above of Takeshita, Lan and
Halvorsen,” and that these claims dependent on claim 1 are also patentable.
(App. Br. 10-11.) A statement which merely points out what a claim recites
is not an argument for separate patentability of the claim. 37 C.F.R.
§ 41.37(c)(1)(vii). As we disagree that claim 1 is patentable, claims 3 and
22 fall with claim 1.

CONCLUSION
The record evidence supports the Examiner’s finding that the cited
prior art disclosed the use of an equal amount of buffer solution in the wells
of a multiwell plate.

SUMMARY
We affirm the rejection of claims 1, 2, 9-11 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Takeshita, Halvorsen, and Lan.
We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Takeshita, Halvorsen, Lan, and Zhang.
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Application 11/108,978

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We affirm the rejection of claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Takeshita, Halvorsen, Lan, and Wang.
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

cdc

DAVID W. HIGHET, VP & CHIEF IP COUNSEL
BECTON, DICKINSON AND COMPANY
(HOFFMAN & BARON)
1 BECTON DRIVE, MC 110
FRANKLIN LAKES, NJ 07417-1880