Ex Parte Griffey et al

Patent Trial and Appeal Board

Jun 7, 2016

11721326 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111721,326 0712912009
32650 7590 06/09/2016
Baker & Hostetler LLP
CIRA CENTRE, 12TH FLOOR
2929 ARCH STREET
PHILADELPHIA, PA 19104-2891
FIRST NAMED INVENTOR
Richard H. Griffey
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.
CORE0034USA 8516
EXAMINER
ANGELL, JONE
ART UNIT PAPER NUMBER
1674
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD H. GRIFFEY, TIMOTHY VICKERS,
and RANJAN PERERA1
Appeal2013-010540
Application 11/721,326
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of identifying an oligomeric compound that does not modify
heterochromatic gene regions. The Examiner rejects the claims as
anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Isis Pharmaceutical
Inc. (App. Br. 1.)
Appeal2013-010540
Application 11/721,326
STATEMENT OF THE CASE
The Specification explains that "[ e ]pigenetic changes alter gene
expression, and are heritable and yet do not arise due to alterations of DNA
sequence. Epigenetic differences allow two cells within the same organism,
containing the same genetic complement of DNA, to express unique subsets
of genes." (Spec. 1: 25-27 .) There is a "need for agents that regulate
epigenetic processes such as DNA methylation, histone modifications and
RNA-mediated silencing, without causing undesired alterations in the
epigenetic control of gene expression." (Id. at 3: 9-11.)
Claims 1, 2, and 38 are on appeal2, and can be found in the Claims
Appendix of the Appeal Brief. Claim 1 is representative of the claims on
appeal, and reads as follows:
1. A method comprising:
identifying an oligomeric compound which modulates
degradation or translational suppression of a target nucleic acid
molecule;
identifying at least one heterochromatic region subject to
epigenetic control of gene expression, wherein said
heterochromatic region does not modulate expression of said
target nucleic acid molecule; and
assaying for a modification to said heterochromatic
region after treatment with said oligomeric compound.
(App. Br. Claims Appendix)
Appellants request review of the Examiner's rejection of claims 1, 2,
and 38 under 35 U.S.C. § 102 over Grewal.
The Examiner finds that Grewal teaches "heterochromatin and/ or
modification of histones in a cell exposed to an RNAi probe may be assessed
2 Claim 3 is pending, however, the claim has been withdrawn from
consideration as being drawn to a nonelected species. (Final Rej. 2; Ans. 2.)
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Appeal2013-010540
Application 11/721,326
by any of several techniques well established in the art including observation
of the methylation and/or acetylation status of histones." (Ans. 4.) The
Examiner finds that the limitations directed to the "'identifying' steps ... do
not require any actual physical activity because 'identifying' may be
accomplished by a mental or non-physical process." (Id. at 3.) Because
Grewal teaches the "one active step of the claim, assaying for a modification
to the heterochromatic region after treatment with an oligomeric compound"
the Examiner reasons the Grewal anticipates the claim. (Id. at 4.)
Appellants contend that the rejection is in error because Grewal is
missing the element of "identifYing an oligomeric compound which
modulates degradation or translational suppression of a target nucleic acid
molecule." (App. Br. 4 (emphasis added); see Reply Br. 1-2.)
Does the preponderance of evidence on this record support the
Examiner's finding that Grewal teaches Appellants claimed invention?
Principle of Law
To anticipate a reference must expressly or inherently disclose "within
the four comers of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(2008).
Analysis
We agree with the Examiner that Grewal teaches that any number of
well-known and well-established assays may be used to determine if genes
are expressed in a particular system (Ans. 3--4 (citing Grewal i-fi-1 73-7 5); see
Final Act. 3), however, that knowledge in and of itself is not enough to
establish that the reference discloses the method as presently claimed.
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Appeal2013-010540
Application 11/721,326
Appellants invention requires, inter alia, "identifying an oligomeric
compound which modulates degradation or translational suppression of a
target nucleic acid molecule" (see e.g. claim 1.) The Examiner reasons that
the "identifying" step is merely a mental step that does not recite any
positive physical steps (see Ans. 3). We do not agree.
To identify something means to determine whether that thing has a
particular characteristic or feature. In the context of these claims the
question is whether the oligomeric compound effects the degradation of the
target nucleic acid or if it effects the translational suppression of a target
nucleic acid. We do not agree with the Examiner's assessment that
"identifying" in the context of these claims does not encompass a positive
physical step such as assaying the oligomeric compound for the recited
characteristic (see Reply Br. 1-2). Because the Examiner has not identified
a teaching in Grewal that assays the oligomeric compound for the effects on
the target nucleic acid degradation or translation, we reverse the rejection
based on Grewal.
The preponderance of evidence on this record fails to support the
Examiner's finding that Grewal teaches Appellants' claimed invention. The
rejection of claims 1, 2, and 38 under 35 U.S.C. § 102(b) as being
anticipated by Grewal is reversed.
SUMMARY
We reverse the rejection of claims 1, 2, and 38 under 35 U.S.C. § 102
over Grewal.
REVERSED
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