10795652 (B.P.A.I. Apr. 28, 2010)

Ex Parte Hollingsworth et al

Board of Patent Appeals and InterferencesApr 28, 2010

10795652 (B.P.A.I. Apr. 28, 2010)

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. 10/795,652 03/08/2004 Rawle I. Hollingsworth MSU 4.1-641 9853 21036 7590 04/28/2010 IAN C. McLEOD, P.C. 2190 COMMONS PARKWAY OKEMOS, MI 48864 EXAMINER PESELEV, ELLI ART UNIT PAPER NUMBER 1623 MAIL DATE DELIVERY MODE 04/28/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte RAWLE I. HOLLINGSWORTH, BIRGIT ZIPSER, and LINJUAN HUANG __________ Appeal 2009-0105971 Application 10/795,652 Technology Center 1600 __________ Decided: April 28, 2010 __________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method for diagnosing a disease. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Appeal Brief filed Nov. 19, 2007, indicated that an oral hearing would be requested. (App. Br. 1.) We decide this appeal on the briefs because we have not received a request for oral hearing. Appeal 2009-010597 Application 10/795,652 2 STATEMENT OF THE CASE Claims 17-23 and 32, which are all the pending claims, are on appeal. Claim 17 is illustrative and reads as follows: 17. A method for diagnosing whether a disease, characterized by accumulation of congo red-staining amyloid plaques in a tissue, is present in vivo in a mammal which comprises: (a) detecting by instrument controlled imaging the presence of accumulated chitin associated with the amyloid plaques in the disease in the tissue of the mammal, if the disease is present; and (b) diagnosing whether the disease that is characterized by accumulation of the chitin associated with the congo red-staining amyloid plaques in the tissue, is present in the mammal based upon whether the chitin is detected by the instrument controlled imaging in step (a) wherein the disease is diagnosed using a probe selected from the group consisting of a protein in a biosynthetic pathway for producing the chitin from glucose, DNA or RNA encoding a protein in a biosynthetic pathway for producing the chitin from glucose, and an antibody specific for the chitin. The Examiner rejected claims 17-23 and 32 under 35 U.S.C. § 103(a) as unpatentable over Laine.2 OBVIOUSNESS The Issue The issues on appeal are: whether claim 17 is properly interpreted to include cover an in vitro diagnostic method and, if so, does Laine’s disclosure support a conclusion of obviousness? 2 US 5,587,292, issued to Roger A. Laine et al., Dec. 24, 1996. Appeal 2009-010597 Application 10/795,652 3 Findings of Fact 1. The Examiner found that Laine disclosed a method of detecting chitin that used “labeling probes such as chitin-specific binding protein or its antibody, or a dye.” (Ans. 3, citing Laine at col. 7, ll. 14-40.) 2. Laine disclosed a method of “using a chitinase or other chitin-specific binding protein for diagnosing infections . . . in animal or human tissues or body fluids.” (Laine, col. 4, ll. 3-5.) 3. According to Laine, “[a] preferred chitinase, isolated and cloned from Vibrio parahemolyticus and designated ‘Chitinase VP1,’ binds so tightly to chitin that it (and an anti-chitinase antibody) can be used as a histochemical diagnostic probe with great sensitivity.” (Id. at col. 4, ll. 7-11.) 4. Laine described using several probes to label the chitinase or chitin- specific binding protein, including an antibody. (Id. at col. 7, ll. 8- 35.) 5. The Examiner found that “a protein or an antibody probe encompassed by claim 1 [sic, 17] reads on the protein or an antibody probe disclosed by Laine et al.” (Ans. 3.) Principles of Law When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Appeal 2009-010597 Application 10/795,652 4 Analysis The Examiner interpreted claim 17 as covering an in vitro diagnostic method, and it is undisputed that Laine described an in vitro diagnostic method. Appellants dispute the Examiner’s claim interpretation, arguing that claim 17 is limited to an in vivo method, and does not cover an in vitro method. We agree with the Examiner that claim 17 is not limited to an in vivo method for at least two reasons. First, the preamble defines the invention as “[a] method for diagnosing whether a disease . . . is present in vivo in a mammal.” The Examiner reasonably interpreted “in vivo” as modifying the disease present in a mammal because “in vivo” follows “present.” That interpretation is more reasonable than applying “in vivo” to “method” or “diagnosing,” which are relatively remote from “in vivo.” Second, claim 17 must cover the embodiment claimed in dependent claim 20, which recites that “tissue is from a diseased animal,” not “in” a diseased animal. We conclude that claim 17 covers both in vitro and in vivo diagnostic methods. Appellants argue that the obviousness rejection failed to account for the only probes that can be selected for use in claim 17’s method: (1) “a protein in a biosynthetic pathway for producing the chitin from glucose,” (2) “DNA or RNA encoding a protein in a biosynthetic pathway for producing the chitin from glucose,” and (3) “an antibody specific for chitin.” (App. Br. 13-14.) We agree. The only probe Laine disclosed specifically was chitinase. (FF2 and 3.) Although Laine disclosed that an “other chitin-specific binding protein” could be used (see FF2), the rejection provides no evidence that a person of ordinary skill (i) could have selected a “protein in a biosynthetic pathway for Appeal 2009-010597 Application 10/795,652 5 producing the chitin from glucose” as Laine’s other chitin-specific binding protein, and (ii) would have found it obvious to do so. The rejection also fails to provide evidence that a person of ordinary skill in the art (i) could have selected “an antibody specific for the chitin” as Laine’s other chitin- specific binding protein, and (ii) would have found it obvious to do so. The evidence does not support a finding that Appellants’ claim “reads on” Laine’s antibody (see FF5) because Laine’s antibody was specific for a chitin-specific binding protein, not for chitin (see FF4). Because the rejection did not account for all the claim limitations, we must reverse it. CONCLUSIONS The Examiner correctly interpreted claim 17 as including an in vitro diagnostic method. Laine’s disclosure is insufficient to establish a prima facie case of obviousness. SUMMARY We reverse the rejection of claims 17-23 and 32 under 35 U.S.C. § 103(a) as unpatentable over Laine. REVERSED lp Appeal 2009-010597 Application 10/795,652 6 IAN C. McLEOD, P.C. 2190 COMMONS PARKWAY OKEMOS MI 48864