Ex Parte 6,814,934 et alDownload PDFPatent Trial and Appeal BoardApr 26, 201390010131 (P.T.A.B. Apr. 26, 2013) Copy Citation 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. 90/010,131 03/31/2008 6,814,934 4380-RX US 6014 52059 7590 04/26/2013 LIFE TECHNOLOGIES CORPORATION Attn: IP Department 5791 Van Allen Way Carlsbad, CA 92008 EXAMINER TURNER, SHARON L ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 04/26/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte APPLIED BIOSYSTEMS, LLC, Patent Owner and Appellant ____________________ Appeal 2012-012210 Merged reexamination control 90/010,131 & 90/010,905 Patent 6,814,934 B1 Technology Center 3900 ____________________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF CASE Applied Biosystems, LLC (hereinafter “Appellant”), the real party in interest1 of Patent 6,814,934 B1 (hereinafter the “’934 patent”), appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims 1-12. Final Office Action, mailed November 28, 2011, pages 7-17. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral hearing took place on April 4, 2013. A transcript of the oral hearing will be made of record in due course. 1 See Appellant’s Appeal Brief filed March 27, 2012 (hereinafter “App. Br.”) at 2. Appeal 2012-012210 Application 90/010,131 & 90/010,905 2 We REVERSE. This appeal is from two merged reexamination proceedings. The first was filed by Troll Busters, LLC and assigned reexamination control number 90/010,131. Request for Ex Parte Reexamination, filed March 31, 2008. The second was filed by Novak Druce + Quigg LLP and assigned reexamination control number 90/010,905. Request for Ex Parte Reexamination, filed March 10, 2010. The reexamination proceedings were merged in a Decision before the Director of the Central Reexamination Unit on August 4, 2010. The ’934 patent relates to a method for monitoring the accumulation of the product of a nucleic acid amplification reaction while the reaction is in progress, namely by simultaneous amplification and detection of signaling agent, such as a fluorescent dye, that is capable of binding double-stranded DNA. ’934 patent, col. 5, l. 33-col. 6, l. 8. Representative claim 1 on appeal reads as follows: 1. An instrument for use in monitoring a nucleic acid amplification reaction comprising multiple thermal cycles, comprising: (a) an automated thermal cycler capable of alternately heating and cooling, and adapted to receive, at least one reaction vessel containing an amplification reaction mixture comprising a target nucleic acid, reagents for nucleic acid amplification, and a detectable nucleic acid binding agent; and (b) a detector operable to detect a fluorescence optical signal while the amplification reaction is in progress and without opening the at least one reaction vessel, which fluorescence optical signal is related to the amount of amplified nucleic acid in the reaction vessel. Claims App’x, App. Br. 41. Claim 7, the only other independent claim on appeal, includes identical requirements for an “automated thermal cycler” and a “detector.” Id. at 42. Appeal 2012-012210 Application 90/010,131 & 90/010,905 3 II. REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 1, 3, 4, 6, 7, 9, and 12 rejected under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious over, either the Morrison article2 or the Morrison patent3 (collectively referred to herein as “Morrison4”), as evidenced by the Stirling Declaration.5 Examiner’s Answer, dated June 21, 2012 (hereinafter “Ans.”) at 2-6. 2. Claims 1, 3, 4, 6, 7, 9, and 12 rejected under 35 U.S.C. § 103(a) as obvious over, Garner6 in view of Morrison, as evidenced by the Stirling Declaration. Ans. 6-9. The Examiner further rejects dependent claims 2, 5, 8, 10, and 11 under 35 U.S.C. § 103(a) as obvious over Morrison, as evidenced by Stirling, and further in view of additional prior art. Ans. 9-12. As discussed in detail below, we reverse all the Examiner’s rejections. 2 Morrison et al., "Solution-Phase Detection of Polynucleotides Using Interacting Fluorescent Labels and Competitive Hybridization,” Anal. Biochem. 183:231-244 (1989). 3 U.S. Patent 5,928,862, issued July, 27, 1999 to Larry E. Morrison. 4 The Examiner and Appellant acknowledge that the Morrison article and the Morrison patent are essentially cumulative, i.e., they include substantially identical disclosures. Ans. 5; App. Br. 28. Accordingly, we refer to them collectively as “Morrison.” All citations herein are to the Morrison article. 5 The Declaration under 37 C.F.R. § 1.132 of Dr. Colin Stirling, dated March 1, 2010 (hereinafter the “Stirling Declaration” or “Stirling Decl.”). 6 U.S. Patent 5,092,674, issued March 3, 1992 to Harold R. Garner. Appeal 2012-012210 Application 90/010,131 & 90/010,905 4 III. ISSUE ON APPEAL Central to this appeal is the interpretation of the term “automated thermal cycler” as recited in the independent claims on appeal. In finding that Morrison discloses an “automated thermal cycler,” the Examiner stated that the term “automated thermal cycler” is not sufficiently defined in the ‘934 Patent to distinguish the Haake Model A81 water bath with external temperature control disclosed in Morrison and the automatically temperature controlled micropipette adaptor for a spectrophotometer disclosed in Garner. Ans. 2-3, 7, 15-28; Morrison, ¶ spanning p. 234, col. 2 to p. 235, col. 1, last ¶, p. 237, col. 2 to first full ¶, p. 238, col. 1 and p. 238, col. 2, Figure 3; Garner, col. 8, ll. 6-50. Appellant argues that the term “automated thermal cycler” has a specific meaning in the art that is distinguishable from the water bath of Morrison or the micropipette adaptor of Garner in that it is a specialty instrument capable of very rapid temperature cycling specifically for use with polymerase chain reaction (PCR) amplification of nucleic acids. App. Br. 7. In support of its claim interpretation, Appellant relies on the testimony provided by the Second Batt Declaration7 and the Third Batt Declaration.8 Dr. Batt testifies to “have made practical use of PCR and realtime PCR in my research and 7 The Second Declaration under 37 C.F.R. § 1.132 of Dr. Carl A. Batt, dated November 10, 2010, and entered into the record on November 10, 2010 (hereinafter “2nd Batt Declaration” or “2nd Batt Decl.”). App. Br., Evidence Appendix, Exhibit L. 8 The Third Declaration under 37 C.F.R. § 1.132 of Dr. Carl A. Batt, dated July 5, 2010, and entered into the record on July 5, 2011 (hereinafter “3rd Batt Declaration” or “3rd Batt Decl.”). App. Br., Evidence Appendix, Exhibit FF. Appeal 2012-012210 Application 90/010,131 & 90/010,905 5 teaching since their discovery.” First Batt Declaration,9 ¶ 4. Upon review of Dr. Batt’s stated credentials and attached CV, 1st Batt Decl., ¶ 3 and Exhibit A, we find that Dr. Batt is qualified to testify as to the general history of temperature management for PCR reactions and the use of the term “automated thermal cycler” to one of ordinary skill in the art at the time of the filing of the application that became the ’934 patent, i.e., May of 1991. Accordingly, the dispositive issue before us is: Did the term “automated thermal cycler” have a special meaning to one of ordinary skill in the art at the time of filing the application that became the ’934 patent that distinguishes the claimed device over the water bath relied upon in the teachings of Morrison and the micropipette adaptor relied upon in the teachings of Garner? We answer this question in the affirmative. III. ANALYSIS The ’934 patent is expired and as a result, “the Board's review of the claims of an expired patent is similar to that of a district court's review.” In re Rambus Inc., 694 F.3d 42, 45 (Fed. Cir. 2012); Ex Parte Papst-Motoren, 1 U.S.P.Q.2d 1655, 1655-56 (B.P.A.I. Dec. 23, 1986). An expanded panel of the Board has pointed out that the language in Papst- Motoren regarding the construction of a patent claim “that will render it valid” can be misleading. Ex parte Katz, 2010 WL 1259722 at *7 (BPAI 2010). The maxim that claims are construed, if possible, to sustain their validity is limited “to cases in which ‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.’ [quoting] Phillips v. AWH Corp., 9 The First Declaration under 37 C.F.R. § 1.132 of Dr. Carl A. Batt, dated January 30, 2006, and entered into the record on January 29, 2010 (hereinafter “1st Batt Declaration” or “1st Batt Decl.”). App. Br., Evidence Appendix, Exhibit K. Appeal 2012-012210 Application 90/010,131 & 90/010,905 6 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).” Id. We consistently follow the proposition that a claim term is accorded its “ordinary and customary meaning” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). We note that the District Court of Connecticut interpreted the term “automated thermal cycler” in a Markman proceeding. See Memorandum Opinion on Claim Construction, Applera Corp. v. Stratagene Corp., No. 3:04–CV–1881, 2007 WL 776329, *7-8 (Dist. Conn. March 12, 2007). In doing so, the District Court, crediting the testimony of Dr. Batt, interpreted the phrase “automated thermal cycler” to mean “an instrument for use in a nucleic acid amplification reaction comprising multiple thermal cycles for alternately heating or cooling samples.” Id. We agree with Appellant that the term “automated thermal cycler” has a special meaning in the art and that one of ordinary skill in the art would have understood the term distinguishable from the water bath of Morrison and the micropipette adaptor of Garner. The term “automated thermal cycler” is not found in the Specification of the ’934 patent. However, “thermal cycler” is recited in the Specification, and the entire process of performing amplification is described as an automated process and format. ‘934 patent, col. 5, ll. 23-30 and 41-42; col. 9, ll. 35-44; col. 11, ll. 49- 52; Figures 6A, 6B and 8. The Specification is primarily directed to methods for nucleic acid detection during amplification. ’934 patent, col. 5, ll. 33-42. While the methods described Appeal 2012-012210 Application 90/010,131 & 90/010,905 7 therein are not limited to any particular type of nucleic acid amplification, see ’934 patent, col. 7, ll. 27-32, we find that the tools and devices that are described therein are used only with respect to the amplification method known as polymerase chain reaction (PCR) using thermostable enzymes. See col. 9, ll. 41-44 (“A machine specifically adapted for use with a thermostable enzyme is disclosed more completely in EP No. 236,069, which is incorporated herein by reference, and is commercially available from PECI.”) and col. 10, ll. 42-45 (“The embodiments of the invention exemplified herein disclose the process for detecting amplified nucleic acids in conjunction with PCR.”). The Specification further states: In preferred methods for PCR, the amplification reaction is carried out as an automated process. A thermocycler 15 currently available from Perkin Elmer Cetus Instruments uses a heat block capable of holding up to 48 reaction tubes. Consequently, 48 amplification reactions can be carried out simultaneously. . . . Alternatively, it will be obvious to one skilled in the art that such a detection system is not necessarily limited to a particular thermocycler machine or number of reaction vessels. However, the description of the 48 well PECI thermocycler serves to demonstrate this aspect of the present invention. ’934 patent, col. 11, l. 49-col. 12, l. 2. Devices are not described for any other type of nucleic acid amplification reaction other than a PCR reaction using thermostable enzymes. We find this consistent with Dr. Batt’s description of how the term “thermal cycler” was understood in the art. Dr. Batt testifies that “[a]n automated thermal cycler has a clear and specific meaning as it pertains to real time PCR. The term “automated thermal cycler” is universally understood by people who practice PCR.” 3rd Batt Decl. ¶ 5. According to Dr. Batt, a thermal cycler, as the term is used in the context of PCR, is “a new class of instruments for rapidly and precisely heating and cooling” that was “was made newly and singularly important by the Appeal 2012-012210 Application 90/010,131 & 90/010,905 8 invention of PCR.” 2nd Batt Decl. ¶¶ 33 and 35. According to Dr. Batt, the phrase “thermal cycler” “grew out of the PCR revolution.” Id. at ¶ 35. Dr. Batt emphasized the need for thermal cyclers to perform both precise and rapid heating and cooling to avoid exposure of the sample to excessive exposure of heat, particularly the latent heat present with slow cooling times, as such additional heat exposure would more rapidly inactivate the thermostable DNA polymerase and alter the binding kinetics of the primer for its target sequence. Id. at ¶¶ 36-38, 40 and 43. Dr. Batt thus emphasizes “the critical needs for both active heating and cooling” that is reproducible. 3rd Batt Decl. ¶¶ 8 and 10. Dr. Batt cites to what appears to be the preeminent “thermal cycler” patent, also cited to in the ’934 patent, namely European Patent Publication 0236069. 3rd Batt Decl. ¶ 21; ’934 Patent, col. 9, ll. 41-44. Dr. Batt testified that, while PCR amplification was done prior to the invention of the thermal cycler, the discovery of thermostable DNA polymerases created an additional need in the art not met by conventional heating devices. 3rd Batt Decl. ¶¶ 19-23. We find no evidence of record that contradicts Dr. Batt’s statements as to the features the skilled artisan would understand to be consistent with an “automated thermal cycler.” The Stirling Declaration is relied upon as evidence that the Haake Model A81 water bath described in Morrison is capable of performing PCR amplification, and functions as an automated thermal cycler . Ans. 4 and 24-25. Dr. Stirling performs a PCR amplification using a “Neslab Endocal refrigerated circulating bath” which he alleges is “comparable to and available at the same time as the Haake Model A81 [refrigerated water bath].” Stirling Decl. ¶ 36. The testimony of Dr. Stirling is not persuasive. In particular, the Stirling Declaration acknowledges that the two refrigerated circulating baths are not the same, in particular that the Neslab Endocal recirculating water bath “was found to be Appeal 2012-012210 Application 90/010,131 & 90/010,905 9 capable of substantially faster ramp rates than those used in the study by Morrison.” Stirling Decl. ¶ 37. Moreover, the statements of Dr. Stirling and Morrison appear to acknowledge that a “thermal cycler” is a specific device in the prior art for PCR amplification. Dr. Stirling performs certain operations on a “modern thermal cycler . . . to reduce the time taken to complete these studies.” Stirling Decl. ¶ 39. Dr. Stirling also recognizes that “[t]he cycle time [of the Neslab Endocal water bath] was 50 minutes (compared with 3 minutes in a modern thermal cycler)” or even longer if the lid to the Neslab Endocal recirculating water bath was permanently closed. Id. at ¶ 40. Accordingly, Dr. Stirling appreciates the significant increase in efficiency in performing PCR amplification on a thermal cycler. Similarly, Morrison describes the use of a “Perkin Elmer Cetus DNA Thermal Cycler” for the PCR amplification reaction performed therein. Morrison, p.235, col. 1, first full ¶. Accordingly, Morrison appears to acknowledge the special use of a “thermal cycler” for efficient PCR amplification reactions. The Specification of the ’934 patent describes a PCR process in which the temperature cycles between about 50°C and about 94°C but is held at these temperatures for no longer than 1 minute. See e.g., col. 23, ll. 21-25. While the Specification does not expressly recite the rates of cooling and rates of heating for the thermal cycler, Figures 5A and 5B illustrate that in 2000 seconds (approximately 33 minutes), what appears to be 8 cycles have occurred. See ’934 patent, Figures 5A and 5B. This finding is also consistent with Dr. Batt’s testimony that an “automated thermal cycler” is characterized by its performing accurate and very rapid temperature cycling. In fact, we find Dr. Batt’s comparison of cycling speeds, see 2nd Batt Decl. ¶ 39, persuasive that it is the Appeal 2012-012210 Application 90/010,131 & 90/010,905 10 efficiency and rapidity of an “automated thermal cycler” which defines the device as a specialty instrument for efficient PCR amplification. The Examiner has relied exclusively on a position that the ’934 patent and claims lacks a clear description of the scope of the term “automated thermal cycler,” particularly with respect to any particular rate of cooling or rate of cycling. See Ans. 15-20. Yet an express description of the scope would be unnecessary if a skilled artisan would have understood that the phrase referred to a special device in the art. We credit the testimony of Dr. Batt, which is not contradicted by any evidence of record, that the skilled artisan would have understood the term “automated thermal cycler” to have a special meaning in the art. Accordingly, based on the testimony of Dr. Batt, we conclude that an “automated thermal cycler” is limited to a special machine which includes both a heating source and a cooling source capable of being used with thermostable enzymes in rapid and efficient PCR nucleic acid amplification processes. Such a special definition renders the Stirling Declaration irrelevant, for even if the skilled artisan recognizes that the water bath of Morrison is capable of PCR amplification, the skilled artisan would not find Morrison’s water bath meets the recognized meaning of an “automated thermal cycler” as it is understood in the art. Morrison describes a DNA melting apparatus including a Teflon stoppered cuvette provided in a Haake Model A81 water bath with external temperature control. The DNA melting procedure includes the continuous monitoring of a DNA sample via cuvette spectroscopy of a fluorescing agent while the temperature of the DNA sample is only disclosed as being linearly increased and decreased at a rate of 10°C per hour. Ans. 2-3; Morrison, ¶ spanning p. 234, col. 2 to p. 235, col. 1, last ¶, p. 237, col. 2 to first full ¶, p. 238, col. 1 and p. 238, col. 2, Figure 3. Appeal 2012-012210 Application 90/010,131 & 90/010,905 11 Similarly, Garner discloses an automatically temperature controlled micropipette adaptor for a spectrophotometer. Ans. 7; Garner, col. 8, ll. 6-50. Garner discloses controlling the temperature of a resistive heater wire by a temperature feedback control system. Garner, col. 4, ll. 24-50. The adaptor is only disclosed as heating a sample at a rate of about 5.7°C per minute. Garner, col. 8, ll. 65-68. In light of the above discussion, we agree with Appellant that Morrison and Garner fail to disclose an instrument having a detector and an “automated thermal cycler” as the term is understood in the art. Neither Morrison nor Garner discloses a machine which includes both a heating source and a cooling source that is capable of the rapid heating and cooling necessary in order to be used with thermostable enzymes in rapid and efficient PCR nucleic acid amplification processes. The Examiner applied the teachings of Morrison in the same manner in rejecting the dependent claims on appeal. Ans. 9-12. Thus we reverse all of the Examiner’s rejections for the reasons discussed above. IV. CONCLUSION On the record before us, we reverse the rejections maintained by the Examiner. V. TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). Appeal 2012-012210 Application 90/010,131 & 90/010,905 12 REVERSED FOR PATENT OWNER: LIFE TECHNOLOGIES CORPORATION Attn: IP Department 5791 Van Allen Way Carlsbad, CA 92008 FOR THIRD-PARTY REQUESTER: JEFFREY B. OSTER 8339 SE 57th St. Mercer Island, WA 98040 Copy with citationCopy as parenthetical citation