Ex Parte Onji et al

Patent Trial and Appeal Board

Jun 19, 2018

13641224 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/641,224 10/15/2012
55694 7590 06/21/2018
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
FIRST NAMED INVENTOR
Yuichi Onji
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.
206313-001 O-OO-US-487909 6959
EXAMINER
OTTON, ALICIA L
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
DBRIPDocket@dbr.com
penelope.mongelluzzo@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHI ONJI and MASASHI USHIY AMA 1
Appeal2017-007807
Application 13/641,224
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and ULRIKE W.
JENKS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims relating
to tetrazolium compounds, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"The present invention relates to a tetrazolium compound, a reagent
for detecting microorganisms comprising the compound, and a method for
detecting microorganisms." Spec. ,r 1.
1 Appellants identify the Real Party in Interest as JNC CORPORATION.
Appeal Br. 3.
Appeal2017-007807
Application 13/641,224
Claims 1-5, 7, and 8 are on appeal. Claim 1 is illustrative and reads
as follows:
1. A tetrazolium compound represented by formula (I):
R2
\ · Ri R,...,,. _.,-~:-~/··· · ..
• ·~..._.._-:..:Y !1
~ n J~/~ /I~, }'J~,,N., ~-
// '\____.1' i
\ / \ '.
\ I N';c: !'L, _....--:,..
r· "~ ,/ )
I! I
"-.'-$-?;;.'"'-...
R,
wherein R1 is methoxy, R2 is hydrogen or a C1--6 alkoxyl, R3 is hydrogen or
nitro, R 4 is hydrogen, nitro or a C1--6 alkoxyl and x- is an anion, at least one
of R3 and R4 is nitro;
wherein an absorption wavelength region of a formazan dye which is
produced by reduction of the tetrazolium compound of formula (I) is from
400 nm to 420 nm;
wherein the formazan dye which is produced by reduction of the tetrazolium
compound of formula (I) generates blue or bluish purple chromogenic
signals, and
wherein the peak of absorption wavelength of the formazan dye formed from
the tetrazolium compounds is in the range of 400 nm to 420 nm.
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DISCUSSION
The Examiner has rejected claims 1-5, 7, and 8 under 35 U.S.C.
§ I03(a) as obvious based on JP '136,2 Gazenko, 3 Vorontsova, 4 and Tsou. 5
Ans. 4. We conclude that JP '136 and Gazenko support a prima facie case
of obviousness with respect to claim 1, and, therefore, we will not further
address Vorontsova or Tsou.
The Examiner finds that JP ' 13 6 discloses methods of quantifying
components of biological materials using a tetrazolium salt, which is
reduced to a pigmented formazan form. Id. The Examiner finds that JP
'13 6 discloses a formula for its tetrazolium compounds that includes
variable groups that encompass those recited in claim 1. Id. In particular,
the Examiner finds that the genus of compounds disclosed by JP '13 6
includes those of claim 1 's formula I, where R1 is methoxy, R2 is hydrogen,
R3 is hydrogen or nitro (N02), and~ is nitro. Id. at 10. Appellants do not
dispute that JP '13 6 discloses these moieties for the R1-~ moieties recited
in claim 1. See Reply Br. 2.
2 Nishimura et al., JP 2009/072136, published April 9, 2009. Our citations
are to the English-language machine translation of record. Appellants refer
to this reference as "Kengo."
3 US 2007/0238139 Al, published Oct. 11, 2007.
4 Vorontsova, L. N., "Synthesis and polarographic reduction of tetrazolium
salts," 84 Chemical Abstracts 512, abstract 59336b (1976).
5 Kwan-Chung Tsou, et al., "Synthesis of p-Nitrophenyl Substituted
Tetrazolium Salts as Electron Acceptors for the Demonstration of
Dehydrogenases," 78 Journal of American Chemical Society 6139---6144
(1956).
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Application 13/641,224
The Examiner finds that JP '136 does not exemplify a compound
within the scope of claim 1, nor does JP '13 6 describe the use of its
compounds to detect microorganisms specifically. Ans. 6. The Examiner
concludes that under "rationale (B) above, it would have been prima facie
obvious to the person of ordinary skill in the art to substitute one triphenyl
tetrazolium compound[] for another since there is a great degree of structural
similarity between the compounds." Id. at 7 (citing MPEP 2144.06).
"Rationale (B)" refers to "[ s ]imp le substitution of one known element for
another to obtain predictable results." Id. at 6.
The Examiner also finds that "using the reduction of tetrazolium salts
to formazan for the detection of microorganisms was well-characterized in
the art at the time of the invention (see, e.g. [Gazenko])." Id. at 7. The
Examiner finds that "[t]he benefit of [Gazenko's] method is that 'detection
and enumeration of microorganisms' by the reduction of tetrazolium salts
'can be completed many times faster than when depending upon cell growth
on a regular Petri plate."' Id. The Examiner concludes that it would have
been "obvious to optimize the method described by [Gazenko] using other
art-known tetrazolium salt compounds (such as those of [JP '136] ... ).
Such a substitution amounts to B) Simple substitution of one known element
for another to obtain predictable results." Id. at 7-8.
We agree with the Examiner that the compound of claim 1 would
have been obvious to a person of ordinary skill in the art based on JP '136
and Gazenko. JP ' 13 6 discloses a composition "to quantify the specific
component in a biological material." JP '136, ,r 10, Item 1. The
composition comprises an "enzyme which has the oxidation ability by
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Application 13/641,224
dehydrogenation to this specific component under existence of an electron
acceptor." Id. The composition also comprises "a reduction system
pigment" for "making formazan form." Id. JP '136 describes "[u]se [of] the
tetrazolium or its compound as a reduction system pigment." Id.
JP '13 6 discloses compounds of formula ( 1 ), below:
R6y;R5
j ~ R4
R7 N,)~~R3
R1-o
R2
Id. at ,r 10, Item 3. JP '136 describes the substituents of its R groups
as follows:
RI - hydrogen, a nitro group or a methoxy group, and R2 -
hydrogen or a nitro group, and R3 - halogen. [ nitro group ]
Or the azo compound denoted by the following formulas (2)
shows hydrogen or a sulfonic group hydrogen or a sulfonic
group, and R6, and hydrogen, a nitro group or a sulfonic group,
and R7 show hydrogen or a sulfonic group, and R5 R4.
Id. Formula 2 is:
-N=N-·o-~ SO· 3
Id.
Formula ( 1) of JP '13 6 is oriented differently from formula (I) of
claim 1: the ring carrying the R5, R6, and R7 groups in JP '136 corresponds
to the unsubstituted ring in claim 1; the ring carrying the R3 and R4 groups
in JP ' 13 6 corresponds to the ring carrying the Ri group in claim 1; and the
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Application 13/641,224
ring carrying the RI and R2 groups in JP '136 corresponds to the ring
carrying the R1, R2, and R3 groups in claim 1.
Thus, the compounds defined by JP ' 13 6 and the instant claim 1
overlap when: RI of JP '136 (R1 of claim 1) is methoxy; R2 of JP '136 (R3
of claim 1) is hydrogen or nitro; R3 of JP '136 (Ri of claim 1) is nitro; and
R4, R5, R6, andR7 of JP '136 (andR2 of claim I) are each hydrogen.
JP '13 6 discloses that all of the compounds encompassed by its Formula ( 1)
are useful for "quantifying [a] specific component in [a] biological
material." JP '13 6, ,r 10, Item 3. A person of ordinary skill in the art
therefore would have reasonably expected that all of the compounds within
Formula ( 1) of JP '13 6, including those encompassed by the instant claim 1,
would have been useful in the assays disclosed in JP '136.
Gazenko discloses a "method and device for rapid detection of
cellular microorganisms," based on "chang[ing] the natural shape of micro-
colonies to a long cylindrical shape by growing the colonies in long and
extremely small microchannels." Gazenko ,r 11. Gazenko discloses that its
method "enhances the optical characteristics of the micro-colony and
strongly improves the micro-colony's visibility ( detectability) with
microscope." Id. Thus, "[ c ]olonies grown inside the micro-channels will
obtain a tall cylindrical shape, increasing light absorbency with a smaller
volume and cell number than if grown on a flat surface, drastically reducing
the amount of time required for analysis." Id. ,r 14.
Gazenko discloses "[ m Jany different dyes and indicators [are] used
for coloration of micro-colonies. Including but not limited to" "[a] big
group of Tetrazolium salts-indicators of dehydrogenases (group of
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Application 13/641,224
respiratory enzymes of live cells was successfully used to color micro-
colonies. [)]" Id., ,r,r 49, 52. Gazenko states that "[n]on colored Tetrazolium
salts produce well colored Formazans (dark violet, blue, red, pink) in
reactions with live cell's dehydrogenases." Id. at ,r 52.
Thus, it would have been obvious to a person of ordinary skill in the
art to use the tetrazolium salts disclosed by JP '13 6 in its Formula ( 1) in
Gazenko 's method of detecting microorganisms. A skilled artisan would
have had a reasonable expectation of success in doing so, because JP '136
discloses that its compounds are useful for quantifying a component in a
biological material, and microorganisms are components of biological
materials such as blood or urine. See JP '136 ,r 2 ("detection system of
various biogenic substances contained in biological materials, such as blood
and urine") and Gazenko ,r 4 (stating that detecting microorganisms is useful
in "industries including food, biotechnological, pharmaceutical, water
treating industry, and also in medical microbiological diagnostics").
Appellants argue that, "[i]n Kengo, the sole tetrazolium compound of
2-(4-Iodophenyl)-3-(4-nitrophenyl)-5(2,4-disulfophenyl)-2H-tetrazolium salt
is used in the Working and Comparative Examples." Appeal Br. 6.
Appellants argue that "[t]here is no evidence on record, or adduced by the
Examiner, that a skilled artisan would have been directed to modify Kengo's
compound to arrive at the claimed compound which, when reduced,
produces a formazan dye with blue or bluish purple chromogenic signals."
Id. Appellants argue that "Kengo's own example clearly counters the
Office's inherency argument because it, in fact, does not have the claimed
'peak of absorption wavelength' of '400 nm to 420 nm' nor does it produce
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'blue or bluish purple chromogenic signals' as recited in independent claim
1." Id.at 7.
Similarly, Appellants argue that "[ n Jone of the cited art discloses that
the formazan dye exhibits a blue or bluish purple color" and "there is no
teaching in Kengo or the other cited references that would have guided a
person of ordinary skill in the art to the claimed peak absorbance wavelength
or chromogenic signals." Id. at 9. Appellants argue that "[t]he Office is
assuming that a person having ordinary skill in the art would have been
guided to the claimed compound based upon a myriad of potential
modifications to the sole tetrazolium compound exemplified in the Working
and Comparative Examples of Kengo." Id. at 10.
These arguments are unpersuasive. Although JP '136 only uses a
single compound in its working examples, it discloses a genus of compounds
( defined by its Formula ( 1)) and states that the compounds within that genus
are useful for "quantifying [a] specific component in [a] biological
material." JP '136, ,r 10, Item 3. JP '136 therefore would have made it
obvious to use any of the tetrazolium compounds disclosed therein,
including those encompassed by claim 1 on appeal, in Gazenko' s method of
detecting microorganisms. See Merck & Co. Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989): "[I]n a section 103 inquiry, 'the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered."' (Quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976).)
In addition, as the Examiner stated,
if the prior art teaches or suggests the identical chemical
structure as that recited in the claim, the properties applicant
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Application 13/641,224
discloses and/or claims are necessarily present. ... Even if that
property (i.e. absorption wavelength or color) is not disclosed in
the prior art, if the chemical structure is identical, the art need
not recognize every property of the compound in order to
render it unpatentable.
Ans. 10.
That is, the prior art need not suggest every property of a product in
order for that product to be prima facie obvious under§ 103. For example,
in In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990), the claims were rejected
under § 103, on the basis that the cited prior art reference would have made
obvious the claimed method. Id. at 1575-76. The court held that "merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable. . . . While the processes encompassed by the
claims are not entirely old, the rule is applicable here to the extent that the
claims and the prior art overlap." Id. at 1578. See also In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (The "discovery that a claimed composition
possesses a property not disclosed for the prior art subject matter, does not
by itself defeat a prima facie case.").
Here, regardless of whether a skilled artisan would have expected the
compounds of JP '13 6' s Formula ( 1) to produce by reduction a formazan
dye having a peak absorption wavelength of 400 nm to 420 nm and
generating a blue or bluish purple signal, as recited in claim 1 on appeal,
JP '136 provides a reason to expect that any of the compounds defined by its
Formula ( 1) would be useful for "quantifying [a] specific component in [a]
biological material." JP '136, ,r 10, Item 3. Those compounds include some
that are within the scope of claim 1 on appeal, and "[ fJrom the standpoint of
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patent law, a compound and all of its properties are inseparable; they are one
and the same thing." In re Papesch, 315 F.2d 381,391 (CCPA 1963).
We therefore affirm the rejection of claim 1 under 35 U.S.C. § 103(a)
based on JP '136, Gazenko, Vorontsova, and Tsou. Claims 2-5, 7, and 8
have not been argued separately and therefore fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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