Ex Parte Binkowski et al

Patent Trial and Appeal Board

Sep 21, 2017

14160282 (P.T.A.B. Sep. 21, 2017)

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.
14/160,282 01/21/2014 Brock Binkowski PRMG-33071/US-4/DIV 1043
72960 7590 09/25/2017
Casimir Jones, S.C.
2275 DEMING WAY, SUITE 310
MIDDLETON, WI 53562
EXAMINER
RAO, MANJUNATH N
ART UNIT PAPER NUMBER
1656
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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
following e-mail address(es):
docketing @ c asimirj ones .com
pto.correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BROCK BINKOWSKI1, LANCE P. ENCELL, MARY HALL,
MATTHEW B. ROBERS, MICHAEL R. SLATER,
KEITH V. WOOD, and MONIKA G. WOOD
Appeal 2016-006579
Application 14/160,282
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and RACHEL H.
TOWNSEND, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
polynucleotide encoding a luciferase variant, which have been rejected for
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Promega Corporation.
(Appeal Br. 3.)
Appeal 2016-006579
Application 14/160,282
STATEMENT OF THE CASE
The Specification states that the “luciferase secreted from the deep-
sea shrimp Oplophorus gracilirostris has been shown to possess many
interesting characteristics.” (Spec. 12.)
The polypeptide sequence of the mature (i.e., with no signal
sequence) 19 kDa subunit of the naturally-occurring form of the
Oplophorus gracilirostris luciferase (i.e., 169 amino acids . . . )
is given in SEQ ID NO: 1. In various embodiments, a methionine
residue and a valine residue are inserted at the beginning of the
synthetic OgLuc sequence ( . . . SEQ ID NO: 3) to facilitate
cloning and expression in heterologous systems.
(Id. 1133.)
Claims 132—149 are on appeal. Claim 132 is illustrative and reads as
follows:
132. An isolated polynucleotide encoding a polypeptide having at least
80% sequence identify to SEQ ID NO: 1 and comprising one or more amino
acid substitutions relative to SEQ ID NO: 3, wherein at least one amino acid
substitution is at a position corresponding to position 27 of SEQ ID NO: 1,
and wherein the polypeptide has enhanced luminescence relative to SEQ ID
NO: 3.
DISCUSSION
The Examiner has rejected all of the claims on appeal for nonstatutory
double patenting based on claims 3—14 of U.S. Patent 8,669,103. (Ans. 2.)
The Examiner reasons that
[cjlaims 3-7 and 9-11 of the ‘103 have an overlapping scope with
the claims of the instant application as they are directed to
variants of SEQ ID NO:3 wherein the variant has the amino acid
at a position corresponding to position 27 of SEQ ID NO: 1 is
mutated. . .. The only difference between claim 1 of ‘ 103 patent
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Application 14/160,282
and claim 132 of the instant application is the number of the
amino acid residue to be mutated.
(Id. at 2—3.) The Examiner notes that instant claims 137 and 138 require
substitution at both positions 18 and 27, as do claims 3 and 10—142 of the
’ 103 patent. (Id. at 3.) The Examiner concludes that “the claims of the
instant application [are] directed to embodiments included in the patented
claims of the ‘103 patent.” (Id.)
Appellants argue that the nonstatutory double patenting rejection is
barred by 35 U.S.C. § 121. (Appeal Br. 8—11.) Specifically, Appellants
argue that this application is a divisional of application 13/287,986, which
matured into the ’103 patent, and the Examiner imposed a restriction
requirement in the ’986 application that prohibits a double patenting
rejection based on the ’103 patent. (Id.)
We agree with Appellants that the Examiner’s rejection is precluded
by the restriction requirement in the ’986 application. Specifically, the
Examiner required Appellants to “[e]lect mutation at one specific position”
and stated that “[t]his is not a species restriction.” (’986 application,
Requirement for Restriction/Election mailed Nov. 28, 2012.) Restricted
claim 132 of the ’986 application was directed, in relevant part, to “[a]n
isolated polynucleotide encoding an OgLuc variant polypeptide comprising
SEQ ID NO: 3 comprising at least one amino acid substitution at a position
corresponding to positions 18, 27, ... , wherein the OgLuc variant
polypeptide has enhanced luminescence relative to SEQ ID NO: 3.” (’986
2 The Examiner also cited patented claim 27, but the ’103 patent has only
twenty-two claims.
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Appeal 2016-006579
Application 14/160,282
application, preliminary amendment filed Mar. 1, 2012.) Appellants elected
to prosecute claims with a mutation at position 18 of SEQ ID NO: 1 and
deleted the other positions from the independent claim. (Appeal Br. 9.) The
’986 application matured into the ’103 patent with “[cjlaims within the
elected group (i.e., comprising a substitution at position 18).” Id.
If two or more independent and distinct inventions are claimed
in one application, the Director may require the application to be
restricted to one of the inventions. ... A patent issuing on an
application with respect to which a requirement for restriction
under this section has been made, or on an application filed as a
result of such a requirement, shall not be used as a reference
either in the Patent and Trademark Office or in the courts against
a divisional application or against the original application or any
patent issued on either of them, if the divisional application is
filed before the issuance of the patent on the other application.
35U.S.C. § 121.
Here, the Examiner required Appellants to elect a mutation at a single
amino acid residue for examination in the ’986 application as being an
independent and distinct invention from mutation at another amino acid
residue. Appellants elected to prosecute mutations at amino acid 18 of SEQ
ID NO: 1. Thus, the ’103 patent “shall not be used as a reference ... in the
Patent and Trademark Office . . . against a divisional application” based on
the ’986 application. Id. Appellants elected to prosecute mutations at amino
acid 18 of SEQ ID NO: 3 in the ’986 application, and thus the ’103 patent
cannot be used as a basis for a nonstatutory double patenting rejection in
divisional applications claiming mutations at one of the amino acid residues
of SEQ ID NO: 3 that the Examiner restricted out.
The Examiner reasons that the safe harbor provision of § 121 does not
apply where an application claims the same invention as claimed in the
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Appeal 2016-006579
Application 14/160,282
patent, and here “[cjlaims include[] embodiments that require ... the same
combination of substitution mutation at residues 18 and 27 are found in both
patented “claims 3, 10, 11, and 14 of the ‘103 patent and claims 137-140 of
the instant application.” (Ans. 4.)
We agree with Appellants (Appeal Br. 13—14), however, that the
claims cited by the Examiner are not directed to the same invention. It is
true that some claims of both the instant application and the ’103 patent
recite substitutions that include amino acid residues 18 and 27. But the
scope of the claims is not the same.
The ’103 patent’s claim 3 depends from claim 1 and adds a
requirement for an additional substitution beyond the required substitution at
amino acid 18 “at one or more positions corresponding to” numerous
positions, one of which is amino acid 27. (’103 patent 369:15—22.) Claims
10, 11, and 14 require a substitution at amino acid 27, among others, in
addition to amino acid 18. {Id. at 369:40-44, 54—58.) All of these claims
depend, directly or indirectly, from claim 9. {Id.) Claim 9, in turn, depends
from claim 6, which depends from claim 5, which depends from claim 4,
which depends from claim 3.
By virtue of this claim dependency, claim 10 requires mutations at
amino acids 18, 54 (isoleucine or alanine), 90 (valine), 68 (aspartate), 72, 75,
33 (asparagine), 27 (valine), and 43 (arginine). Claim 11 depends from
claim 10 and thus requires the same mutations. Claim 14 requires mutations
at amino acids 18, 54 (isoleucine or alanine), 90 (valine), 68, 72, 75, 27
(glycine or isoleucine), 33 (lysine or alanine), and 43 (lysine).
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Appeal 2016-006579
Application 14/160,282
While claims 137—140 on appeal recite substitutions at positions that
overlap those specified in the above patented claims, the scope of the
required substitutions is not the same. Specifically, claim 137 requires
mutations at amino acids 27, 18, 68, 72, and 75, but not at amino acids 54,
90, 33, and 43. Claims 138—140 depend from claim 137. (Appeal Br. 15.)
Claim 138 specifies the substitutions at amino acids 18 (leucine), 68
(tyrosine), 72 (glutamine), and 75 (lysine). (Id.) Claim 139 requires
substitutions at amino acids 27, 18, 68, 72, 75, 33, and 43, but not at amino
acids 54 and 90. (Id. at 16.) Claim 140 specifies the substitutions at
positions 33 (asparagine), 27 (valine), 43 (arginine), and 68 (aspartate). (Id.)
Thus, claims 137—140 on appeal define genera of luciferase mutants
that overlap those defined by claims 3, 10, 11, and 14 of the ’103 patent but
that are not the same. As Appellants have noted,
“same invention” . . . mean[s] identical subject matter. Thus the
invention defined by a claim reciting “halogen” is not the same
as that defined by a claim reciting “chlorine,” because the former
is broader than the latter. ... A good test, and probably the only
objective test, for “same invention,” is whether one of the claims
could be literally infringed without literally infringing the other.
If it could be, the claims do not define identically the same
invention.
In re Vogel, 422 F.2d 438, 441 (CCPA 1970).
Here, the claims of the ’103 patent differ in scope from the instant
claims, and therefore literally infringing one would not necessarily infringe
the other. For example, instant claims 137—140 define subgenera that are
encompassed by the ’103 patent’s claim 3 but because the ’103 patent’s
claim 3 is broader, it could be infringed without infringing any of instant
claims 137—140. Likewise, instant claims 137—140 would be infringed by
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Appeal 2016-006579
Application 14/160,282
mutants having substitutions at a set of amino acids that do not include
positions 54 and 90 and therefore would not infringe claims 10, 11, or 14 of
the ’103 patent.
In short, the Examiner has not identified any claim on appeal that has
identical scope to a claim of the ’103 patent. The safe harbor provision of
§121 therefore applies and prohibits the double patenting rejection on
appeal, which is therefore reversed.
REVERSED
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