Ex Parte Mullinax et al

Board of Patent Appeals and Interferences

May 4, 2012

11627926 (B.P.A.I. May. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte REBECCA L. MULLINAX and JOSEPH A. SORGE
__________

Appeal 2011-010791
Application 11/627,926
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of designing and making a nucleotide primer for
a microRNA. The Patent Examiner rejected the claims as anticipated. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-010791
Application 11/627,926

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STATEMENT OF THE CASE
Claims 1-13 are on appeal. Claim 1 is representative and reads as
follows (emphasis added):
1. A method of designing and making a nucleotide primer for an
miRNA, said method comprising:
comparing two or more nucleotide sequences of miRNA having a
region of identity or homology;
identifying one or more nucleotide positions with heterogeneity
among the sequences compared;
selecting a nucleotide at or within two nucleotides of the identified
heterogeneous positions as the 3' end of the primer, wherein the selected
nucleotide is part of the natural sequence of an miRNA of interest among the
sequences compared but is not the natural 3' terminal nucleotide of the
miRNA;
selecting some or all of the nucleotides of the remaining region of
identity or homology as additional nucleotides of the primer;
adding zero to ten nucleotides to the 5' end of the primer; and
synthesizing the primer.

The Examiner rejected claims 1-13 under 35 U.S.C. § 102(e) as
anticipated by Hall (US 2009/0142752 A1).

ANTICIPATION
The Issue
Appellants contend that “Hall teaches primers that show
complementarity to miRNA target sequences.” (App. Br. 13.) “[A] key
difference between [Hall and] the presently claimed primers, compositions,
and kits is that the primers show identity to miRNA target sequences, rather
than complementarity to miRNA target sequences.” (Id. at 12-13.)
Specifically, Appellants contend that the primers defined in their claims are
different from Hall’s primers because “the presently claimed primers are
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Application 11/627,926

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designed to show identity to target miRNA sequences through a process that
involves selection of a nucleotide as the 3' terminal nucleotide that is part of
the natural sequence of an miRNA of interest, but is not the natural 3'
terminal nucleotide of the miRNA.” (Id. at 13.) “The presently claimed
primer therefore is not designed to be complementary to an miRNA target
sequence, but rather to show identity to such a sequence.” (Id.)
Accordingly, as “Hall does not disclose a primer that shows identity to an
miRNA target at the 3' end of the miRNA target,” Hall does not anticipate.
(Id.)
The Examiner responds:
the claims as presented require selection of a heterogeneity position or
positions which clearly read on the substantial complementarity
portion of 3' end of the primer taught by Hall since substantial
complementarity reads on incomplete homology or a nucleic acid
sequence region having one or more nucleotides with heterogeneity
with respect to the natural sequence of the miRNA;

and
the assertions that the claimed primers are designed to ‘show identity
to target miRNA sequences’ do not commensurate [sic] with the scope
of the claims since the claims do not require said limitations and as
discussed above and in the rejection, Hall anticipates the claims as
presented.

(Ans. 6.)
Appellants reply that “the Examiner continues to discuss the irrelevant
concepts of ‘substantial complementarity’ and ‘incomplete homology’,
neither of which are recited or in any way captured by the language of the
claims.” (Reply Br. 2.) According to Appellants, “[t]he Examiner continues
to take the position that the claims do not require that the primers show
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Application 11/627,926

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identity to target miRNA sequences. This position is untenable in view of
the specific claim language that the 3' nucleotide of the claimed primer is
part of the natural sequence of an miRNA of interest.” (Id.)
The issue is whether Hall described claim 1’s step
selecting a nucleotide at or within two nucleotides of the identified
heterogeneous positions as the 3' end of the primer, wherein the
selected nucleotide is part of the natural sequence of an miRNA of
interest among the sequences compared but is not the natural 3'
terminal nucleotide of the miRNA.

Findings of Fact
1. The rejection’s findings may be found at Ans. 4-5.
2. To support finding that Hall taught “selecting a nucleotide at or within
two nucleotides of the identified heterogeneous positions as the 3' end
of the primer,” the rejection cited Hall at “page 9, paragraph 0073,
0076, page 10, paragraph 0081, page 19, paragraph 0164.” (Ans. 4.)

Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

Analysis
The rejection cited certain Hall passages as evidence that Hall taught
selecting a nucleotide at or within two nucleotides of the identified
heterogeneous positions as the 3' end of the primer. (FF 2.) We have
reviewed the cited passages but do not find an explicit or inherent disclosure
of the disputed step. The rejection is therefore reversed for lack of evidence.
Appeal 2011-010791
Application 11/627,926

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SUMMARY
We reverse the rejection of claims 1-13 under 35 U.S.C. § 102(e) as
anticipated by Hall.

REVERSED

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