Ex Parte Cha

Patent Trial and Appeal Board

Jun 27, 2016

12573905 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/573,905 10/06/2009 Jennifer Nam Cha
63822 7590 06/29/2016
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
ARC920050098US2 7114
EXAMINER
BHAT, NARAYAN KAMESHWAR
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
63822@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER NAM CHA
Appeal2013-000940
Application 12/573,905
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a single-stranded genomic
DNA segment helically wound around a single-wall carbon nanotube.
Appellant appeal from the Examiner's rejections of the claims as obvious
under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 134. The
rejections are reversed.
STATEMENT OF CASE
Appellant appeals from the Examiner's final rejection of claims 1-19.
The claims stand finally rejected by the Examiner as follows:
Claims 1-16 and 18 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Zheng (Zheng et al., DNA-assisted dispersion and separation of
carbon nanotubes, 2 Nature Materials 338-342, 2003), Dwyer (Dwyer et al.,
Appeal2013-000940
Application 12/573,905
DNA-junctionalized single-walled carbon nanotubes, 13 Nanotechnology
601---604, 2002), and Dovbeshko (Dovbeshko et al., Study of DNA
interaction with carbon nanotubes, 6 Semiconductor Physics, Quantum
Electronics & Optoelectronics 105-108, 2003).
Claims 17 and 19 under 35 U.S.C. § 103(a) (pre-AIA) as obvious in
view of Zheng, Dwyer, Dovbeshko, and Zheng-2 (Zheng et al., Structure-
Based Carbon Nanotube Sorting by Sequence Dependent DNA Assembly,
302 Science 1545-1547, 2003).
There are two independent claims on appeal, claims 1 and 7. The
remaining claims depend from them. Both independent claims are directed
to a single-stranded DNA segment helically wound around a single-wall
carbon nanotube. Claim 1 is representative and reads as follows:
1. A structure, comprising:
a single-wall carbon nanotube; and
a single-stranded genomic DNA segment helically
wound around said single-wall carbon nanotube, said single-
stranded DNA segment being greater than 2,000 bases in
length.
REJECTION 1
The Examiner found that Zheng describes a single-stranded DNA
"helically wound around" a single-wall carbon nanotube ("SWNT"). Final
Rej. 12. The Examiner acknowledged that Zheng's single-stranded DNA is
synthetic polyT, not "a single-stranded genomic DNA segment" greater than
2,000 bases in length as recited in claims 1 and 7. Id. However, the
Examiner found that Dwyer teaches bacteriophage lambda DNA wrapped
around an SWNT. Id. at 13. The Examiner found that the lambda DNA
utilized by Dwyer is a single-stranded genomic DNA greater than 2,000
2
Appeal2013-000940
Application 12/573,905
bases. Id. at 17-18. The Examiner further cited Dovbeshko as teaching an
SWNT/DNA structure comprising SWNT and single-stranded denatured
genomic DNA which "wraps around the SWNT helically." Id. at 15. The
Examiner concluded that that it would have been obvious to one of ordinary
skill in the art to replace the synthetic polyT DNA in Zheng's SWNT
structure with a larger segment of single-stranded genomic DNA to increase
"the fundamental knowledge for developing improved molecular scale
electronic system for biotechnology applications as taught by Dovbeshko."
Id. at 16. The Examiner found there would have been a reasonable
expectation of success because "it merely involves explicitly using a larger
segment of single stranded DNA of greater than 2000 bases for wrapping
SWNT which is routinely practiced in the art as exemplified by Dovbeshko
in view of Dwyer." Id.
Appellant contends that Dwyer does not teach single-stranded DNA
wrapped around an SWNT. Appeal Br. 5. Appellant also contends that
Dovbeshko not disclose what DNA they used and "only speculates that the
single strands helically wrap." Id. at 11. Appellant states that it is clear
from Fig. 6 of Dovbeshko "that the single strands reform into double-
stranded when they wind." Id.
Appellant's contention that the Examiner erred in finding that Dwyer
and Dovbeshko describe single-stranded genomic DNA wrapped around a
carbon nanotube is supported by a preponderance of the evidence.
3
Appeal2013-000940
Application 12/573,905
Dwyer
The Examiner cited Dwyer for its description of lambda DNA
"wrapped" around an SWNT. Final Rej. 13, 14.
Dwyer does not describe the lambda-DNA as "wrapped" around the
SWNT. Figure 1 of Dwyer shows the attachment of lambda DNA to the
SWNT (see Dwyer 602). Figure 1 is reproduced below:
Figure 1 shows the lambda DNA (thin lines (DNA backbone) with
perpendicular projections (nucleotides)) attached to specific points on the
SWNT through bonds to the SWNT's---COOH groups (shaded tube).
Scanning electron microscope images of the DNA/SWNT structure are
shown in Figures 4 and 5 of Dwyer. Id. at 602. Dwyer states that "Figures 4
and 5 show that the lambda-DNA will readily form clusters with varied
points of attachment to the SWNTs." Id. Consequently, the Examiner erred
in finding that Dwyer shows the DNA "wrapped" around the SWNT.
Dovbeshko
Dovbeshko was said by the Examiner to show single-stranded DNA
helically wrapped around the SWNT. Final Rej. 15. This finding is also not
supported by a preponderance of the evidence. Dovbeshko teaches heating
DNA up to 100°C and then adding it to SWNTs (a.k.a. SWCNTs).
4
Appeal2013-000940
Application 12/573,905
Dovbeshko 105 (paragraph spanning columns 1-2). Appellant does not
dispute the Examiner's finding that such conditions would denature the
DNA into single-stranded DNA. However, Appellant states that the single
strands reform into double-stranded DNA when they wind around the
SWNT. Appeal Brief 11; Reply Br. 14. Appellant's statement is supported
by the following evidence:
Relative intensity of base vibrations is increased in the
spectrum of DNA/SWCNT in comparison with those for
reference DNA. All these features testify that in the case of
DNA/SWCNT complex the B-helical DNA structures are
restored.
Dovbeshko 106 (emphasis added).
The analysis of vibration modes of DNA with SWCNT has
shown that the structural changes in DNA are observed and
could be interpreted as A-B transition and stabilisation of DNA
structure in some DNA fragments .... The obtained data could
describe the model of DNA wrapping around SWCNT. The
similar situation occurs in chromosomes during DNA
assembling by histones.
Id. at 108.
These disclosures provide evidence that the DNA wrapped around the
SWCNT is double-stranded, 1 and at least raises uncertainty about the DNA's
physical form, i.e., whether it is a single- or double-stranded.
Consistent with Appellant's position that double-stranded DNA
reforms, Zheng-2 at 1547 teaches that, when single-stranded synthetic
d(GT)n interacts with carbon nanotubes, it wraps around the nanotube as "a
1 "B-helical DNA structures are restored," indicating that the double-
stranded B-helical structure is reformed. The analogy to double-stranded
DNA assembled on histones (id. at 108), indicates that the DNA wrapped
around the carbon nanotube is also double-stranded.
5
Appeal2013-000940
Application 12/573,905
double-stranded strip" having a "double-helical structure." In other words,
the DNA becomes double-stranded when it wraps around the carbon
nanotube.
Conclusion
The Examiner did not respond to Appellant's argument, but rather
repeated the conclusion that the "wrapping is due to the interaction of
ssDNA bases and SWNT," without citing adequate support for this finding.
Answer 13. Because the rejection was based on the erroneous finding that
Dwyer and Dovbeshko describe single-stranded genomic DNA wrapped
around a carbon nanotube, we are compelled to reverse the rejection of
claims 1 and 7, and dependent claims 2-6, 8-16, and 18 as obvious in view
of Zheng, Dwyer, and Dovbeshko.
REJECTION 2
Rejection 2 further cites Zheng-2 for the specific limitations in claims
17 and 19. Zheng-2 does not correct the deficiency for Rejection 1.
Furthermore, as explained above, Zheng-2 inconsistent with the Examiner's
finding about single-stranded genomic DNA wrapped around a SWNT
because Zheng-2 teaches that the single-stranded DNA forms a double-
stranded structure when it winds around the nanotube. Consequently,
Rejection 2 is reversed.
SUMMARY
We reverse both of the rejections on appeal.
REVERSED
6