Ex Parte Matthiesen

Patent Trials and Appeals Board

Apr 10, 2019

14352815 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/352,815 04/18/2014
22878 7590
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
04/12/2019
FIRST NAMED INVENTOR
Steen Hauge Matthiesen
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.
09138.0156-00000 1402
EXAMINER
CROW, ROBERT THOMAS
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
04/12/2019 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):
IPOPS.LEGAL@agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEEN HAUGE MATTHIESEN 1
Appeal 2018-003693
Application 14/352,815
Technology Center 1600
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims to hybridization compositions that have been rejected as
obvious and for obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Dako Denmark A/S.
Appeal Br. 2.
2 We have considered and herein refer to the Specification of Apr. 18, 2014
("Spec."); Final Office Action of Apr. 25, 2017 ("Final Act."); Appeal Brief
ofNov. 8, 2017 ("Br."); Examiner's Answer of Dec. 21, 2017 ("Ans."); and
Reply Brief of Feb. 21, 2018 ("Reply Br.").
Appeal 2018-003 693
Application 14/352,815
STATEMENT OF THE CASE
In hybridization, segments of nucleic acids known and probes or
primers are used to bind or hybridize to a target nucleic acid. Spec. 1. The
Specification describes a hybridization methods and compositions, "which
result in hybridization applications having at least one of the following
advantages: highly sensitive, technically easy, flexible and reliable
hybridization procedures, and fast analyses." Spec. 3.
Claims 1-8, 10-18, and 21-23 are on appeal. 3 Claim 1 is the sole
independent claim and reads as follows:
1. A hybridization composition comprising at least one
nucleic acid sequence, at least one solvent in an amount
effective to denature double-stranded nucleotide sequences, and
a hybridization solution, wherein the solvent is chosen from
tetrahydrothiophene I-oxide, valerolactam, 1,3- dimethyl-
3,4,5,6-tetrahydro-2(1H)-pyrimidinone, N,N-dimethyl-
acetamide and isobutyramide.
The claims stand rejected as follows:
Claims 1, 3-8, 10-18, and 21-23 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Matthiesen '656. 4
Claims 2 and 3 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Matthiesen '656 in view of Sana. 5
3 Claims 27-34, 36-39, 44, 48-50, and 50 are pending in the application but
have been withdrawn from consideration. Final Act. 1.
4 Matthiesen, WO 2010/097656 Al, published Sept. 2, 2010 ("Matthiesen
'656").
5 Sana et al., US 2003/0203391 Al, published Oct. 30, 2003 ("Sana").
2
Appeal 2018-003 693
Application 14/352,815
Claims 1, 3-8, 10-18, and21-23 have been provisionally rejected for
non-statutory obviousness-type double patenting over claims 1, 2, 4--29, 35-
38, 44--47, 50-58, 61, and 62 of co-pending USSN 13/513,164. 6
Claim 2 has been provisionally rejected for non-statutory
obviousness-type double patenting over claims 1, 2, 4--29, 35-38, 44--47,
50-58, 61, and 62 of co-pending application no. 13/513,164 in view of Sana.
Claims 1, 3-8, 10-18, and21-23 have been provisionally rejected for
non-statutory obviousness-type double patenting over claims 1-10, 12-14,
and 18-54 of Matthiesen '287. 7
Claim 2 has been provisionally rejected for non-statutory
obviousness-type double patenting over claims 1-10, 12-14, and 18-54 of
Matthiesen '287 in view of Sana.
Claims 1, 3-8, 10-18, and 21-23 have been provisionally rejected for
non-statutory obviousness-type double patenting over claims 1-37, 39-41,
and 44--61 of Matthiesen '562. 8
Claim 2 has been provisionally rejected for non-statutory
obviousness-type double patenting over claims 1-37, 39-41, and 44--61 of
Matthiesen '562 in view of Sana.
Claims 1, 3-8, 10-18, and 21-23 have been provisionally rejected for
non-statutory obviousness-type double patenting over claims 1--40, 42--45,
and 48-76 ofUSSN 15/096,036. 9
6 Application no. 13/513,164 is the subject of Appeal no. 2018-006689.
7 Matthiesen, US 9,303,287 B2, issued Apr. 5, 2016 ("Matthiesen '287").
8 Matthiesen, US 9,309,562 B2, issued Apr. 12, 2016 ("Matthiesen '562").
9 USSN 15/096,036 issued as US 10,202,638 on Feb. 12, 2019.
3
Appeal 2018-003 693
Application 14/352,815
Claim 2 has been provisionally rejected for non-statutory
obviousness-type double patenting over claims 1--40, 42--45, and 48-76 of
USSN 15/096,036 in view of Sana.
OBVIOUSNESS
Matthiesen '656
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the conclusion that the subject matter of claims 1, 3-8,
10-18, and 21-23 would have been obvious over the teachings of
Matthiesen '656.
The Examiner finds that Matthiesen '656 teaches the use of
E-caprolactam, a 6-carbon, 7-membered cyclic lactam in a hybridization
composition. Final Act. 3. The Examiner also finds that the claimed
compound valerolactam is a five-carbon, six-membered cyclic lactam. Id.
The Examiner finds that due to the structural similarities of E-caprolactam
and valerolactam, one skilled in the art would expect them to have similar
properties. Id. at 4. The Examiner concludes that it would have been
obvious to substitute valerolactam for E-caprolactam in the composition
taught by Matthiesen '656.
The Examiner reaches a similar conclusion with respect to claim 3
where the solvent is pyrimidone. The Examiner finds that pyrimidone is
structurally similar to the compound of formula 5 recited on page 7 of
Matthiesen '656. Final Act. 4.
4
Appeal 2018-003 693
Application 14/352,815
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
On the record before us we conclude that the Examiner has not
established a prima facie case of obviousness. While the compounds cited
by the Examiner are structurally similar, the precedent of our reviewing
court, including that cited by the Examiner, reveals that structural similarity
alone does not support a case of obviousness. The record must include some
additional evidence to support the conclusion one skilled in the art would
expect the structurally similar compounds to exhibit similar properties and
provide a motivation to make the proposed substitution of one compound for
another. "[I]dentification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention." In re
Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). "Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference." Id.
For example, in Dillon, the issue was whether it would have been
obvious to substitute tetra-orthoesters for tri-orthoesters as dewatering
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Appeal 2018-003 693
Application 14/352,815
agents for fuels. In re Dillon, 919 F.2d 688, 691 (Fed. Cir. 1990). In
addition to the structural similarity of the compounds, the secondary
references taught that both classes of compounds could be used as water
scavengers in hydraulic fluids. Id. Our reviewing court held that "structural
similarity between claimed and prior art subject matter, proved by
combining references or otherwise, where the prior art gives reason or
motivation to make the claimed compositions, creates a prima facie case of
obviousness." Id. at 692 (emphasis added).
In Wilder, the issue was whether it would have been obvious to
substitute one structurally similar compound for another to inhibit rubber
aging. In re Wilder, 563 F.2d457, 457-58 (CCPA 1977). Our reviewing
court upheld the rejection for obviousness based on the structural similarity
and "the fact that the reference compounds were known in the prior art to be
useful as gasoline antidegradants." Id. at 460.
In the present case, even if it could reasonably be determined that the
6-carbon, 7-membered cyclic lactam E-caprolactam is structurally similar to
the five-carbon, six-membered cyclic lactam valerolactam, which is unclear
from the record, the Examiner has not provided evidence to show why one
skilled in the art would have been motivated to make the proposed
substitution or to show that why one skilled in the art would expect the
compounds to have similar properties. Therefore, the Examiner has not
established a prima facie case for obviousness.
Matthiesen '656 Combined with Sana
The Examiner applies the same logic discussed above in similarly
determining that the subject matter of claims 2 and 3 would have been
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Appeal 2018-003 693
Application 14/352,815
obvious over Matthiesen '656 combined with Sana. The Examiner finds that
Sana teaches the use of acetamide as a hybridization solvent that can be used
in the hybridization composition of Matthiesen '656. Final Act. 8. The
Examiner then finds that the claimed compound, N ,N-dimethylacetamide is
structurally similar to acetamide and, because of the structural similarities,
one skilled in the art would have expected the compounds to have similar
properties. Id.
We conclude that the Examiner has not established that the subject
matter of the claims would have been obvious. While acetamide and
N,N-dimethylacetamide may have some degree of structural similarity (they
both include a form of acetamide ), there is no evidence of record that the
Sana's N,N-dimehtyl version is truly structurally similar to the pure
acetamide version. The Examiner also has not shown why one skilled in the
art would have been motivated to substitute one amide for the other or to
expect that the compounds would have the same properties.
The Examiner has provided a reason why one skilled in the art would
use acetamide in the composition of Matthiesen '656, yet the Examiner has
not adequately explained why one skilled in the art would be motivated to
substitute N,N,-dimethylacetamide for acetamide. For at least this reason,
the Examiner has not established a prima facie case for obviousness.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner's determination that the subject matter of the rejected claims
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Appeal 2018-003 693
Application 14/352,815
would have been obvious over Matthiesen '656 alone or in combination with
Sana.
DOUBLE PATENTING
The Examiner's rejections for obviousness-type double patenting each
rely on the same structural similarity rationale discussed above in relation to
the obviousness rejections. See, e.g., Final Act. 11-12. For the reasons
discussed above, we also reverse the rejections for obviousness-type double
patenting.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
We reverse the rejections for non-statutory obviousness-type double
patenting.
REVERSED
8