Ex Parte Alessi et al

Patent Trial and Appeal Board

Jun 14, 2017

13142852 (P.T.A.B. Jun. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/142,852 12/12/2011 EnricoAlessi 08CT011US01/810063488USPC 8045
38106 7590 06/16/2017
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
CHUNDURU, SURYAPRABHA
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRICO ALESSI and DANIELE RICCERI
Appeal 2017-0034281
Application 13/142,852
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to microreactor with nucleic
probes and primers. The Examiner rejected the claims under 35 U.S.C.
§ 103 as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
The rejection is REVERSED.
1 The Appeal Brief, filed June 20, 2016 (“Appeal Br.”), lists
STMicroelectronics S.R.L. as the real-party-in-interest. Appeal Br. 2.
Appeal 2017-003428
Application 13/142,852
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 9 and 11—
16 under pre-AIA 35 U.S.C § 103(a) as obvious in view of Remacle et al.
(EP 1 788 097 Al, pub. May 23, 2007) (“Remacle”) and Wangh et al. (US
2006/0177841 Al, pub. Aug. 10, 2006) (“Wangh”) (Examiner’s Answer,
mailed Oct. 24, 2016 (“Ans.”)). Ans. 3.
The only independent claim on appeal is claim 9, which is reproduced
below.
9. A microreactor comprising:
a reaction chamber including an array of nucleic acid
probes at respective locations, the nucleic acid probes being
configured to hybridize to respective target nucleic acids at a
hybridization temperature range (Rh); and
a solution in the reaction chamber, wherein the solution
contains primers configured to bind to target nucleic acids,
nucleotides, nucleic acid extending enzymes and nucleic acids
at an annealing temperature range (Ra);
wherein both said nucleic acid probes and said primers
are structured so that said hybridization temperature range is
higher than and does not overlap with said annealing
temperature range.
REJECTION
Independent claim 9 is directed to a microreactor comprising: 1)
nucleic acid probes; and 2) primers.
The claim 9 primers are “configured to bind to target nucleic acids,
nucleotides, nucleic acid extending enzymes and nucleic acids at an
annealing temperature range (Ra)-” The Specification discloses that the
primers can be used in the polymerase chain reaction (PCR) to amplify
DNA. Spec. 8:17-9:2.
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Application 13/142,852
The claim 9 probes are “configured to hybridize to respective target
nucleic acids at a hybridization temperature range (Rh)-” The probes are in
an “array.” The Specification discloses that DNA amplified by primers can
be passed over the array of probes and the amplified DNA (“target nucleic
acid”), if complementary, forms stable bonds with the probes in a process of
hybridization. Id. at 2:12—21.
The claim further requires that “both said nucleic acid probes and said
primers are structured so that said hybridization temperature range [of
probe] is higher than and does not overlap with said annealing temperature
range [of primer].” The Specification explains that “at the hybridization
temperature, primer annealing is prevented and at the annealing temperature
the primers are allowed to bind to denatured target DNA.” Id. at 9:23—26.
The Examiner found that Remacle describes a reaction chamber with
an array of probes bound to specific locations on a solid support (citing,
inter alia, p. 40, claims 108, 111), meeting the corresponding limitation of
the rejected claims. Ans. 3. The Examiner also found that Remacle teaches
a solution comprising primers in the reaction chamber as required by claim
9. Id. The Examiner acknowledged that Remacle, however, does not
disclose non-overlapping hybridization and annealing temperatures of the
probes and primers as recited in rejected claim 9. Id. However, the
Examiner found that this deficiency was met by Wangh. Id. at 4.
As evidence, the Examiner cited to Example 14 of Wangh which the
Examiner found discloses “primer annealing temperature as 66° C and probe
binding temperature range as 95° C to 25° C,” meeting the claimed
requirement of “hybridization temperature range [of probe] is higher than
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Application 13/142,852
and does not overlap with said annealing temperature range [of primer].”
Final Act. 3.
As discussed by Appellants, Fig. 23A, referenced in Example 14 of
Wangh, shows probe binding peaks at 65°C and 50°C. See Appeal Br. 14.
The probe hybridization peak at 50°C is lower than the annealing
temperature of 66°C of the primer, and therefore does not meet the claimed
limitation which requires the probe hybridization temperature to be higher
than the primer annealing temperature. The probe hybridization peak at
65°C is within a range which clearly overlaps with the primer annealing
temperature of 66°C. Claim 9, however, excludes overlap between the
annealing and hybridization temperature ranges. Thus, this example does
not support the obviousness of the claimed subject matter.
The Examiner also cited Example 1 of Wangh as meeting the
requirements of claim 9. Ans. 5. Example 1 is an example in which the
primer has an annealing temperature of 60°C and a non-extendable DNA
oligonucleotide complementary to the target has a hybridization temperature
of 79°C. Wangh 1117. The example was performed to determine the
performance of the DNA dye in the methods and systems of Wangh. Id.
179.
Neither the primer nor the non-extendable DNA oligonucleotide
described in Example 1 of Wangh are arranged in an array as required by the
claim. The Examiner identified the non-extendable DNA oligonucleotide as
a “probe,” but did not provide a reason as to why such oligonucleotides
would be configured in “an array of. . . probes at respective locations.”
Ans. 5. The non-extendable DNA oligonucleotide is used in Wangh to
determine the performance characteristics of the system. Wangh, H 79, 80,
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Application 13/142,852
and 119. It is not used to capture amplified DNA as in Remacle. Remacle
1124, 37. The Examiner did not meet the burden of providing a reason as to
why the ordinary skilled worker would have arranged the non-extendable
DNA oligonucleotide in an array at specific locations. The Examiner also
did not explain why multiple non-extendable DNA oligonucleotides (i.e.,
claims require “an array of nucleic acid probes” or multiple probes) would
have been utilized in such an array. (The Examiner bears the burden of
establishing a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).)
Wangh teaches the opposite relationship between the annealing and
hybridization temperature ranges than required by the claims. Wangh
discloses:
Probes that have low melting temperatures (that is, probes that
form probe-target hybrids having low melting temperatures) can
be added to amplification reaction mixtures prior to the start of
amplification and utilized only when desired. By keeping
temperatures above the melting temperature of a probe during all
or portions of an amplification reaction, the probe is kept from
hybridizing to its target and possibly reducing the efficiency of
the reaction.
Wangh 128.
Thus, Wangh expressly teaches that the primer annealing
temperatures are higher than the probe hybridization temperatures in
contrast to requirement in claim 9 that “probes and said primers are
structured so that said hybridization temperature range [of probe] is higher
than and does not overlap with said annealing temperature range [of
primer].” (Wangh teaches primer temperature is higher than probe
temperature; claims require probe temperature is higher than primer
temperature.)
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Application 13/142,852
The Examiner did not provide a reason as to why the ordinary skilled
worker would have modified Waugh by changing the relationship between
the probe and primer temperature, when Wangh provides an explicit reason
as to why these temperatures are desired.
Because a preponderance of the evidence does not support the
rejection, we are compelled to reverse the rejection of claim 9, and claims
11—16 which depend from it.
REVERSED
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