Ex Parte Wehkamp et al

Patent Trial and Appeal Board

Jan 25, 2019

13141315 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/141,315 09/09/2011
24972 7590 01/29/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Jan Wehkamp
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.
BOSC.P7036US/l 1602997 4301
EXAMINER
SITTON, JEHANNE SOUAY A
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
01/29/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN WEHKAMP, EDUARD STANGE, and
MAUREEN KOSLOWSKI 1
Appeal2018-000126
Application 13/141,315
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method of detecting a single
nucleotide polymorphism (SNP) in a human patient. The Examiner rejected
the claims as obvious under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. §
134(a), Appellants appeal the Examiner's determination that the claims are
unpatentable. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the
Examiner's decision.
STATEMENT OF THE CASE
The Examiner finally rejected claims 21 and 27-29 under pre-AIA 35
U.S.C. 103(a) as obvious in view of De Ferrari et al. (Common genetic
1 The Appeal Brief ("Appeal Br."; entered June 2, 2017) identifies Robert
Bosch Gesellschaft mbH fiir medizinische Forschung as the real party in
interest. Appeal Br. 2.
Appeal2018-000126
Application 13/141,315
variation within the Low-Density Lipoprotein Receptor-Related Protein 6
and late-onset Alzheimer's disease, Proc. Nat'l Acad. Sci., 104(22):9434-39,
2007) ("De Ferrari"). in view of Morten (US 6,316,196 Bl, issued Nov. 13,
2001 ). Final Act. 9; Ans. 2.
Claim 21, the only independent claim on appeal, is reproduced below:
21. A method of detecting a single nucleotide polymorphism
(SNP) for rs2302685 in a human patient, the method
compnsmg:
obtaining a biological specimen of the human patient;
and
detecting whether the SNP for rs2302685 is present in the
biological specimen by contacting the biological sample with
an allele-specific polynucleotide probe and detecting binding
between the SNP and the probe, wherein the probe is
configured to detect position 101 of a nucleic acid sequence of
SEQ-ID-No. 10, wherein the SNP is detected in the LRP6 gene,
which encodes a protein associated with the Wnt signaling
pathway in Paneth cells.
DISCUSSION
The Examiner found that De Ferrari describes detecting LRP6 SNP
(single nucleotide polymorphism) rs2302685. Ans. 2. LRP6 is the Low-
Density Lipoprotein Receptor-Related 6 gene. De Ferrari 9434 (abstract).
De Ferrari describes a single nucleotide polymorphism Ile- I 062 ----+ Val in
exon 14 ("I4e") in the LRP6 gene, which is the same rs2302685 SNP
polymorphism that is claimed. De Ferrari 9434 ( col. 2 under "Results").
The polymorphism is associated with a risk for Alzheimer's disease. De
Ferrari 9434 (abstract).
The Examiner found that De Ferrari does not disclose how the
rs2302685 polymorphism is detected, but found that Morten discloses
various techniques for detecting variant nucleotides as required by the
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Appeal2018-000126
Application 13/141,315
claims. Ans. 2. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art to have detected the rs2302685 SNP described
by De Ferrari utilizing any one of the techniques described by Morten with a
reasonable expectation of success. Ans. 2.
Appellants argue that Morten "does not teach or suggest the specific
probe as claimed in claim 21 to detect specifically SEQ-ID-No. 10." Appeal
Br. 4. Appellants state that Merton describes detecting variants in the LTC4
synthase gene, and not the claimed SNP variant. Reply Br. 2. Appellants
contend that the claimed probe is not "obvious or motivated from either
reference, alone or in combination." Appeal Br. 4.
Appellants' arguments do not persuade us that the Examiner erred in
rejecting claim 21 as obvious in view of De Ferrari and Morten. The
Examiner did not rely on Morten for its teaching of a probe to the claimed
SNP asserted by Appellants. Rather, as discussed above, the Examiner cited
Morten for disclosing well known techniques for identifying nucleotide
mutations and polymorphisms. Ans. 2. Appellants did not identify a defect
in the Examiner's finding, which we find to be supported by Morten's
disclosure (Morten 3:39-4:35).
As to Appellants' statements regarding the obviousness of the claimed
probe of SEQ ID NO: 10, as found by the Examiner, the claimed
polymorphism at position 101 of SEQ ID NO: 10 is the polymorphism of
rs2302685 disclosed by De Ferrari. Ans. 3. Appellants did not dispute this
fact. Furthermore, as established by the Examiner, De Ferrari provides
motivation to detect this known polymorphism because it is "located in a
susceptibility region for late onset Alzheimer's disease," making it a useful
SNP to screen for susceptibility for the disease. Ans. 3. Appellants contend
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Appeal2018-000126
Application 13/141,315
that there was no motivation to detect the known SNP, but did not identify a
flaw in the Examiner's reasoning or fact-finding.
For the foregoing reasons, the obviousness rejection of claim 21 is
affirmed. Claims 27-29 were not argued separately and thus fall with claim
21. 37 C.F.R. § 4I.37(c)(l)(iv).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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