Ex Parte Zong et al

Board of Patent Appeals and Interferences

Aug 22, 2012

10291549 (B.P.A.I. Aug. 22, 2012)

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.
10/291,549 11/12/2002 Wei-Xing Zong 130694.03901 3637
34136 7590 08/23/2012
Pepper Hamilton LLP
400 Berwyn Park
899 Cassatt Road
Berwyn, PA 19312-1183
EXAMINER
MARVICH, MARIA
ART UNIT PAPER NUMBER
1633
MAIL DATE DELIVERY MODE
08/23/2012 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 WEI-XING ZONG,
CRAIG B. THOMPSON, and TULLIA LINDSTEN
__________

Appeal 2011-005838
Application 10/291,549
Technology Center 1600
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 3, 5, 14, 16, and 18.
1
We have jurisdiction
under 35 U.S.C. § 6(b).

1
Claims 6 and 19 are also pending, but have been indicated as being free of
rejection (App. Br. 5).
Appeal 2011-005838
Application 10/291,549

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. A composition comprising a cell of an immortalized cell line
which does not express Bak mRNA and Bak protein.

Independent claim 14 is drawn to a diagnostic test kit which claims a
cell line that does not express Bak mRNA or Bak protein.
The following ground of rejection is before us for review:
Claims 1, 3, 5, 14, 16, and 18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Grimes.
2

We reverse.

ANALYSIS
The Specification teaches that the “invention relates to a composition
comprising an immortalized cell line which is deficient in the expression of
one or more gene(s) of the intrinsic apoptotic pathway” (Spec. 1). The
Specification defines the “term „deficient‟ as used herein refers to a cell
which does not express the mRNA of a gene, a protein product of a gene, or
both” (id. at 7).
According to the Specification:
Members of the Bcl-2 family of proteins are
characterized by their ability to modulate cell death. Bcl-2 and
some of its homologues, such as Bcl-xl, inhibit apoptosis,
whereas other family members, such as Bax and Bak, induce or

2
Grimes et al., The Gfi-1 protooncoprotein represses Bax expression and
inhibits T-cell death, 93 PROC. NATL. ACAD. Sci. USA 14569-14573 (1996).
Appeal 2011-005838
Application 10/291,549

3
accelerate apoptosis under certain conditions. Bak and Bax, as
well as Bcl-xs, Bid, and Bik, constitute the pro-apoptotic group
of Bcl-2 proteins.

(Id. at 2.) The Specification teaches that it was “unexpectedly found that
deleting Bax and Bak proapoptotic proteins from cells completely mutes the
intrinsic cell death pathway” (id. at 9).
Claims 1, 3, 5, 14, 16, and 18 stand rejected as being anticipated by
Grimes (Ans. 4-5).
The Examiner finds that Grimes teaches “a composition comprising a
2780A cell in which expression of Bak and Bax is repressed (see e.g. figure
2 and figure 4) as recited in claim 1, 3 and 5” (id. at 4).
Appellants assert that the “claims refer to an immortalized cell line
that does not express Bak mRNA and Bak,” and that the “clear and ordinary
meaning of such terms is that an immortalized cell line express no Bak
mRNA and no Bak protein, i.e. the complete absence of both molecules”
(App. Br. 14). Appellants further assert that is consistent with the
Specification, pointing in particular to pages 5 and 7 (id.).
Appellants assert further that “[t]hroughout Grimes, all references to
data showing repression of expression show a reduction but not complete
elimination of expression” (id. at 15). Appellants argue that the only data in
Grimes relating to the expression of Bak is Figure 4, and that the data only
shows that Bak expression is repressed, but not eliminated (id. at 11-12).
Appellants assert further that Figure 2A of Grimes supports that Grimes uses
the terms “inhibition and repression of expression to refer to the significant
and substantial reduction of expression, not its absolute and complete
elimination” (id. at 12).
Appeal 2011-005838
Application 10/291,549

4
The Examiner responds that “by down-regulation of the mRNA,
inherently the protein is not expressed” (Ans. 7). According to the
Examiner, by arguing that the use of an inhibitory protein to produce a cell
line does not express Bak, Appellants appear to be arguing that the claims
are not enabled for their full scope, as there are only two methods of
producing the claimed cells lines, by using a knock-out cell line (the method
disclosed by Appellants) and by inhibiting transcription by inhibiting a
promoter (the method of Grimes (id. at 6)). The Examiner also argues that
by not limiting the claims to cells produced by knock-out of the Bak gene,
the expression in Grimes may be due and residual mRNA or protein left in
the cell after turning off the gene as taught by Grimes (id. at 6-7).
We agree with Appellants that the Examiner has not established by a
preponderance of the evidence that Grimes anticipates independent claims 1
and 14, each of which requires that a cell line that does not express Bak
mRNA or Bak protein. Specifically, the Specification supports Appellants‟
claim interpretation that the claims require a complete absence of expression
of Bak mRNA or Bak protein.
3

Grimes teaches that the “Gfi-l protooncogene encodes a nuclear zinc-
finger protein that carries a novel repressor domain, SNAG, and functions as
a position- and orientation-independent active transcriptional repressor”
(Grimes, Abstract). Grimes teaches that Gfi-1 represses both Bax and Bak
(id.). Figure 4 of Grimes is reproduced below:

3
We note the Examiner‟s argument that given that interpretation, that the
claims are not enabled for their full scope. The independent claims,
however, are drawn to a composition, and all the Specification need do is
enable a single method of making the claimed composition.
Appeal 2011-005838
Application 10/291,549

5

Figure 4 shows that Gfi-1 represses the expression of Bak, but does not
affect the expression of Bcl-2 (id. at p. 14572, second col.). The figure is a
western blot of lysates from thymocytes of MT-Gfi-1 transgenic mice with
drinking water with and without added zinc, and probed with antisera to Gfi-
1, Bcl-2, or Bak (id.). As can be seen in Figure 4, while Bak expression is
reduced as compared to Bcl-2, there is still some level of expression. While
the Examiner finds that the Bak protein seen in the western blot is due to
residual protein left in the cells, the Examiner points to no evidence or
anything in the Grimes reference that would support that finding. We thus
reverse the anticipation rejection.

REVERSED

cdc