Ex Parte Blake et al

Patent Trial and Appeal Board

Jul 31, 2013

12577467 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALAN BLAKE, RICHARD CROCKETT, JEFFREY ESSNER,
PERRY HACKETT, and AIDAS NASEVICIUS1
__________

Appeal 2011-011557
Application 12/577,467
Technology Center 1600
__________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
JOHN A. EVANS, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
transgenic fluorescent fish. The Examiner has rejected the claims as
anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the obvious rejections. The decision that follows replaces the
Board’s Decision of July 24, 2013, and corrects a typographical error
relating to claim numbering.

1 Appellants identify the Real Party in Interest as Yorktown Technologies,
L.P. (App. Br. 2).
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STATEMENT OF THE CASE
The Specification describes “making recombinant constructs and
transgenic fluorescent fish and providing such fish to the ornamental fish
industry” (Spec. [0009]). In certain embodiments, methods use multiple
vectors to express at least one fluorescent protein to enhance expression (id.
at [0013]). For example, one method involves producing a fish having a first
fluorescent transgene under the control of a ubiquitous fish promoter and a
second fluorescent transgene under the control of a tissue specific fish
promoter (id.). As stated in the Specification, a “ubiquitous fish promoter”
is one that “direct[s] gene expression in most cells, and more preferably in
all cells” (id.). A “tissue specific fish promoter” directs gene expression “in
specific cells of differentiated tissues such as muscle, brain, liver, blood and
eyes” (id.).
Claims 20-34, 39, and 61-64 are on appeal.2 Independent claim 20 is
representative and reads as follows:
20. A transgenic fluorescent fish comprising in its genome:
a) a first transgene encoding a first fluorescent protein, wherein said
first transgene is under the control of a ubiquitous fish promoter,
and
(b) a second transgene encoding a second fluorescent protein,
wherein said second transgene is under the control of a tissue
specific fish promoter;
wherein said first and second transgene encode the same fluorescent
protein, and the fluorescent fish visibly express the first and
second transgene.

2 App. Br. 7; see also Ans. 3 (regarding claims 62-64).
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Independent claims 39 and 61 are directed to methods of producing
“transgenic fluorescent, ornamental fish” using at least two vectors, where
each vector comprises a gene expressing the same fluorescent protein, where
each gene is under the control of a ubiquitous fish promoter or a tissue
specific fish promoter, respectively.
The Examiner has rejected claims 20, 21, 24-27, 29-33, 39, and 61-64
under 35 U.S.C. §102(b) as anticipated by or, in the alternative, under 35
U.S.C. §103(a) as obvious over Gong.3 The Examiner has also rejected
claims 20, 22-24, 26-28, 32, and 34 as obvious over Gong in view of
Wouters,4 Finley,5 CLONTECHniques,6 Xu,7 Ju,8 and/or Tsai.9 (App. Br. 7;
Ans. 4-7).
Anticipation
The Examiner rejects claims 20, 21, 24-27, 29-33, 39, and 61-64 as
anticipated by Gong (Ans. 4). The Examiner finds that Gong teaches
making transgenic zebrafish comprising and expressing single or multiple
genes encoding fluorescent proteins (id.). The disclosed methods combine
various promoter-reporter gene constructs in a single fish to generate various
patterns and/or colors (id. (citing Gong [0091])). The Examiner refers to

3 Gong et al., U.S. Pat. Appl. Publ. No. 2004/0143864, published July 22,
2004.
4 Wouters et al., PHYSIOL. GENOMICS, 22:412-421 (2005).
5 Finley, BIOTECHNIQUES, 31:66-72 (2001).
6 CLONTECHniques, Living ColorsTM DsRed2 (2001).
7 Xu et al., DNA CELL BIOL., 18:85-95 (1999).
8 Ju et al., DEVELOPMENTAL DYNAMICS, 227(1):14-26 (2003).
9 Tsai et al., US. Pat. Appl. Publ. No. 2004/0117866 A1, published Jun. 17,
2004.
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claims 21, 24- 26, and 29-31 in Gong as teaching different elements recited
in the pending claims, such as certain fluorescent gene products and
promoters, including ubiquitous and tissue specific promoters. The
Examiner states that “it would follow that the claimed combination of a
ubiquitous promoter and a tissue-specific promoter, each operably linked to
a gene encoding the same fluorescent reporter (see paragraph [0091]) was
taught by Gong” (id.)
Applicants’ independent claims recite a first transgenic gene (or first
vector comprising the gene) under the control of a ubiquitous fish promoter,
and a second transgenic gene (or second vector comprising the gene) under
the control of a tissue specific fish promoter. Notably, these claims also
recite that the first and second transgenes encode the same fluorescent
protein.
Paragraph [0091] and claims in Gong disclose a method of making a
transgenic fish “comprising one or more chimeric fluorescence genes
positioned under the control of a promoter, wherein the transgenic fish
expresses one or more fluorescent proteins” (Gong, claim 1). Dependent
claims in Gong teach the use of promoters such as tissue specific promoters
(claims 16 and 19) and ubiquitously expressing promoters (claims 24 and
25). Gong also discloses that transgenic fish can express two different
fluorescence proteins, i.e., a first transgenic gene under the control of one
promoter and a second transgenic gene under the control of another
promoter, where the two genes express different fluorescence proteins (see
Gong, [0092], claims 30-35).
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We find that the Examiner does not establish that Gong expressly or
inherently (i.e., necessarily) discloses a fish, or method comprising,
expressing the same fluorescent protein via two different genes, where each
gene is under the control of a ubiquitously expressing promoter and a tissue
specific promoter, respectively. Even if such a method “would follow” from
Gong (Ans. 4), Gong does not expressly provide such teaching in paragraphs
[0091], [0092], or Gong claims cited by the Examiner. Nor does the
Examiner indicate that Gong inherently discloses such a method. Thus, the
Examiner does not established by a preponderance of the evidence that Gong
anticipates all elements of independent claims 20, 39 and 61, and therefore
corresponding dependent claims.
Obviousness
The Examiner rejects all pending claims as obvious over Gong, either
alone or in combination with different cited references (Ans. 4-10).
Regarding all obviousness rejections, the same issue is dispositive.
Appellants do not argue the claims separately, and therefore all pending
claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Gong discloses a large genus of transgenic fish
that includes “easily thousands or more” different transgenic fish species
(App. Br. 10). According to Appellants, “merely asserting that Gong
discloses a broad genus of transgenic fish, as the Examiner has done here,
does not establish that the claims, which are directed to particular species of
transgenic fish, are obvious” (id. at 12). Appellants argues that “the
Examiner has not clearly articulated any apparent reason why one
considering the numerous possible combinations of promoters and reporters
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disclosed by Gong would choose the elements selected by Appellants and
combine them in the manner claimed” (id.; see also id. at 14). Appellants
also note that Gong teaches the advantages of expressing different
fluorescent proteins in the same fish, citing paragraph [0092] in Gong (id. at
13). Thus, according to Appellants, the Examiner fails to make a prima
facie case of obviousness for any pending claim (id. at 13, 14).
The Examiner finds that “[i]n teaching various combinations of
promoters and reporters, it would follow that the claimed combination of an
ubiquitous promoter and a tissue-specific promoter, each operably linked to
a gene encoding the same fluorescent reporter (see paragraph [0091]) was
taught by Gong” (Ans. 4). According to the Examiner, while “[u]se of the
same reporter gene linked to different promoters in a single fish may be a
less-preferred embodiment of the teachings of Gong,” such a method is still
“within the scope of the teachings of Gong” (id. at 10). The Examiner also
states that an ordinary artisan reading Gong “could readily envision
motivation to use identical reporters linked to different promoters including
the desire to fill in gaps in expression of one promoter with another, either
spatially or temporally” (id. at 8, 10). As stated by the Examiner: “Even
ubiquitous promoters fail to express in all cell types at all times. By
combining two different promoters, one could obtain greater expression of a
single reporter than one could obtain with a single promoter alone” (id. at 8-
9, 10).
As an initial matter, we note that even assuming Gong discloses a
large genus of transgenic fish, Appellants’ independent claims also
encompass a large “species.” The relevant “genus” at issue in Gong, as
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taught in paragraph [0091] and Gong claims 1, 16, 19-21, 24, 25, and 32, is a
transgenic fluorescent fish expressing one or more fluorescent proteins, via
one or more genes, via one or more fish promoters, i.e., ubiquitously
expressing or tissue specific promoters. The “species” (subgenus of the
Gong genus) at issue in Appellants’ claim 20 is a transgenic fluorescent fish
expressing the same fluorescent protein via two different genes, where each
gene is under the control of a ubiquitously expressing fish promoter and a
tissue specific fish promoter, respectively. Notably, claim 20 recites
generally genes encoding any fluorescent protein and any ubiquitously
expressing and tissue specific fish promoters. Thus, the size of the genus,
i.e., the “numerous possible combinations of promoters and reporters” (App.
Br. 12), in Gong is relatively small in relation to the type of broad
species/subgenus at issue in claim 20.
Under KSR, there must be “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). KSR explains that a reason might be found in “interrelated
teachings of multiple patents; the effects of [design or marketplace] demands
. . . and the background knowledge possessed by a person having ordinary
skill in the art.” Id. KSR notes that obviousness can be determined with
reference to “the inferences and creative steps that a person of ordinary skill
in the art would employ.” Id.
As stated by the Examiner, which Appellants do not dispute, “[b]y
combining two different promoters, one could obtain greater expression of a
single reporter than one could obtain with a single promoter alone” (Ans. at
8-9, 10). In light of the “inferences and creative steps that a person of
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ordinary skill in the art would employ” when reading Gong, the Examiner
makes a prima facie case that an ordinary artisan would have had reason to
express the same fluorescent protein in a fish via two different genes, via a
ubiquitously expressing promoter and a tissue specific promoter, as recited
in claim 20. KSR, 550 U.S. at 418. Although Gong does not expressly
describe a fish comprising these elements per se, teachings in Gong would
have reasonably led one in that direction, as one embodiment among others,
as a way of obtaining an ornamental fish that brightly exhibits a particular
fluorescent color.
Appellants appear to suggest that Gong teaches away from the fish of
claim 20 because paragraph [0092] of Gong describes a multiple color
fluorescent fish comprising transgenic genes expressing two different
fluorescent proteins (App. Br. 13). Such teachings do not teach away from
an alternative embodiment, however. Gong does not criticize, discredit, or
otherwise discourage the claimed embodiment. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”).
Based on the record before us, the Examiner establishes a prima facie
case of obviousness regarding claim 20. Appellants do not persuade us with
evidence or argument, when considering the “totality of the record,” that the
preponderance of the evidence fails to establish that claim 20 is obvious over
Gong. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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SUMMARY
We reverse the rejection of claims 20, 21, 24-27, 29-33, 39, and 61-64
as anticipated by Gong. We affirm the rejections of claims 20-34, 39, and
61-64 as obvious over Gong, alone and in view of other cited references.

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). The time period
for taking any subsequent action runs from the date of this corrected
decision.

AFFIRMED

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