Ex parte Raikhel et al.

Board of Patent Appeals and Interferences

Jul 16, 1998

07888366 (B.P.A.I. Jul. 16, 1998)

Application for patent filed May 26, 1992. According1
to applicants, this application is a divisional of Application
07/587,071, filed September 24, 1990, now U.S. Patent
5,187,262, patented February 16, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NATASHA V. RAIKHEL, WILLEM F. BROEKAERT,
NAM-HAI CHUA and ANIL KUSH
____________
Appeal No. 94-2156
Application 07/888,3661
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, GRON, and WALTZ, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Appeal No. 94-2156
Application 07/888,366
As evidence in support of this rejection, the2
examiner cites the following references (Examiner’s Answer
(Ans.), pp. 3-4):
Alberts, B., et al., Molecular Biology of the Cell, Garland
Publishing, Inc., N.Y., pp. 185-196 (1983);
Safford et al., “Plastid-Localised Seed Acyl-Carrier Protein
of Brassica napus is Encoded by a Distinct, Nuclear Multigene
Family,” Eur. J. Biochem., Vol. 174, pp. 287-295 (1988);
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1. Introduction
This is an appeal from an examiner’s rejections of Claims
3 and 4, all claims pending in this application. Claims 3 and
4 stand rejected under 35 U.S.C. § 103 over the combined
teachings of Walujono et al. (Walujono), “Amino Acid Sequence
of Hevein,” Proceedings of the International Rubber
Conference, Vol. 2, Rubber Research Institute Malaysia, KuaLa
Lumpur, pp. 518-531 (1975), Broekaert, “Chitinases and Chitin-
Binding Lectins in Plants: A Biochemical and Physiological
Study of Their Role in the Natural Protection of Plants
Against Fungi,” Dissertationes de Agricultura,
Doctoraatsproefschrift Nr. 167 aan de Faculteit der
Landbouwwetenschappen van de K. U. Leuven, pp. II-IV (Abs.)
and 73-84 (Ch. 7)(September 1988), and Weissman et al.
(Weissman), U.S. 4,394,443, patented July 19, 1983. Claim 32
Appeal No. 94-2156
Application 07/888,366
Back et al., “Isolation of cDNA Clones Coding for Spinach
Nitrite Reductase: Complete Sequence and Nitrate Induction,”
Mol. Gen. Genet., Vol. 212, pp. 20-26 (1988);
Van der Plas et al., “The Gene for the Precursor of
Plastocyanin from the Cyanobacterium Anabaena sp. PCC 7937:
Isolation, Sequence and Regulation,” Mol. Microbiol., Vol. 3,
No. 3, pp. 275-284 (1989).
While appellants have not objected to the examiner’s citation
of “other” references in support of the rejection under
section 103,
we are mindful of the following statement in In re Hoch, 428
F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970):
Where a reference is relied on to support a rejection,
whether of not in a “minor capacity,” there would appear
to be no excuse for not positively including the
reference
in the statement of the rejection.
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stands rejected under 35 U.S.C. § 102(f) based on the
authorship of later-published Broekaert et al. (Lee I),
“Wound-Induced Accumulation of mRNA Containing a Hevein
Sequence in Laticifers of Rubber Tree (Hevea brasiliensis),”
Proc. Natl. Acad. Sci. USA, Vol. 87, pp. 7633-7637 (October
1990), and Lee et al. (Lee II), “Co- and Post-Translational
Processing of the Hevein Preproprotein of Latex of the Rubber
Tree (Hevea brasiliensis), J. Biol. Chem., Vol. 266, No. 24,
pp. 15944-15948 (August 25, 1991). Claim 4 stands rejected
under 35 U.S.C. § 103 as being unpatentable in view of the
subject matter appellants claim
Appeal No. 94-2156
Application 07/888,366
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which is prior art under 35 U.S.C. § 102(f) as evidenced by
the co-authorship of Lee I and/or Lee II. Claims 3 and 4
read:
3. A cDNA molecule, HEV1, free of other DNA molecules
naturally occurring with the DNA molecule, corresponding
to the DNA sequence of Figure 2 as carried in E. coli
ATCC 68363 which encodes a protein.
4. A single strand cDNA molecule, HEV1, free of other
DNA molecules naturally occurring with the DNA molecule,
which encodes a protein corresponding to the 204 amino
acid sequence in Figure 2.
2. Discussion
A. Obviousness in view of Walujono, Broekaert &
Weissman
As viewed by the examiner, the issue on appeal is whether
HEV1, which corresponds to the cDNA sequence of Figure 2 and
the cDNA sequence which encodes the protein corresponding to
the
204 amino acid sequence in Figure 2, would have been obvious
to
a person having ordinary skill in the art in view of (1) prior
art teaching of the 43 amino acid sequence for mature hevein,
including an internal Trp-Gly-Trp-Cys sequence (Walujono,
p. 519), (2) recognition in the art that hevein has antifungal
Appeal No. 94-2156
Application 07/888,366
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properties and may be useful for treating human beings
infected by fungus (Broekaert), and (3) Weissman’s description
of the requisite information and means necessary to enable
persons skilled in the art to successfully probe a DNA library
for and isolate cDNA which encodes a target protein without
undue experimentation. On the other hand, appellants stress
the significant differences between cDNA which encodes mature
hevein
with a 43 amino acid sequence which is known in the art and
the claimed cDNA, HEV1, which encodes the novel hevein
precursor with the 204 amino acid sequence depicted in Figure
2. Appellants argue that the combined teachings of Walujono,
Broekaert, and Weissman would not have motivated a person
having ordinary skill in the art to probe for and isolate cDNA
which encodes the previously unknown 204 amino acid hevein
precursor depicted in Figure 2. Appellants emphasize that
they are claiming cDNA which encodes a novel 204 amino acid
hevein precursor (see the claims issued in Raikhel et al.,
U.S. 5,187,262, which issued from parent Application
07/587,071), not cDNA which encodes the 43 amino acid sequence
of mature hevein. We find that the differences between the
structures of cDNA which encodes mature hevein and cDNA which
Appeal No. 94-2156
Application 07/888,366
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encodes the 204 amino acid hevein precursor strongly support
the patentability of the subject matter claimed in this case.
Accordingly, we reverse the examiner’s rejection of Claims 3
and 4 under 35 U.S.C. § 103 in view of the combined teachings
of Walujono, Broekaert, and Weissman.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988) instructs:
The consistent criterion for determination
of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
this process should be carried out and would have
a reasonable likelihood of success, viewed in the light
of the prior art. . . . Both the suggestion and the
expectation of success must be founded in the prior
art, not in the applicant’s disclosure.
At 473, 5 USPQ2d at 1532, the court explains:
There must be a reason or suggestion in the art for
selecting the procedure used, other than the knowledge
learned from the applicant’s disclosure.
Here, as in Dow Chemical Co., 837 F.2d at 473, 5 USPQ2d at
1532, “[o]f the many scientific publications cited . . . none
suggests that any process could be used successfully . . . to
produce this product having the desired properties.”
The prior art cited in this case reasonably brings the
claimed subject matter to no higher than the “obvious-to-try”
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Application 07/888,366
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level. See In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990):
An “obvious-to-try” situation exists when a
general disclosure may pique the scientist’s curiosity,
such that further investigation might be done as a result
of the disclosure, but the disclosure itself does not
contain a sufficient teaching of how to obtain the
desired
result, or that the claimed result would be obtained if
certain directions were pursued. See generally In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988)(defining obvious-to-try as when prior art
gives
“only general guidance as to the particular form of the
claimed invention or how to achieve it”).
Here, the prior art provides no information whatsoever as to
the “particular form of the claimed invention or how to
achieve it.” Id. Moreover, In re O’Farrell confirms at 903,
7 USPQ2d at 1681, that the evidence the examiner relies upon
in this case presents a classic “obvious-to-try” situation
which is not the standard for unpatentability under 35 U.S.C.
§ 103:
[W]hat would have been "obvious to try" would have been
to . . . try each of numerous possible choices until
one possibly arrived at a successful result, where the
prior art gave . . . no direction as to which of many
possible choices is likely to be successful.
Compare the examiner’s responses (Examiner’s Answer
(Ans.),
Appeal No. 94-2156
Application 07/888,366
Neither the examiner nor appellants have addressed3
or considered the more recent holdings and opinions in In re
Deuel,
51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) and Ex parte
Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995).
Moreover, resolution
of the issues in this case does not necessitate our
consideration
of the holdings and opinions in those cases relative to In re
Bell, supra, with in depth comparison of the underlying facts
in this
case to the facts therein. It should suffice to say that the
decision in this case is dictated by the fact unique to this
case that the claimed cDNA, HEV1, encodes a sequence of 204
amino acids, not the 43 amino acid sequence the prior art
discloses. See
In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed.
Cir. 1995) (Obviousness determinations require a fact-specific
analysis of the claims and prior art. Per se rules of
obviousness are legally incorrect.)
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pp. 8-13) to appellants’ argument that the prior art presents
persons having ordinary skill in the art with no more than an
invitation to experiment, an argument that refers to In re
Bell,
991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), especially the
court’s discussion of Weissman’s method of probing for and
isolating cDNA encoding proteins with known amino acid
sequences and the relevance of methods of isolating cDNA using
probes based on the amino acid structure of the protein it
encodes to the patentability of claims drawn to the cDNA
itself. For example, the examiner emphasizes that HEV1 has3
Appeal No. 94-2156
Application 07/888,366
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the same -Trp-Gly-Trp-Cys- internal sequence (Trp has a unique
codon) as the known 43 amino acid sequence of mature hevein
(Ans., pp. 9-11), yet the fact that appellants’ claims are
drawn to cDNA which encodes a novel 204 amino acid precursor
is not considered to be a material distinction. We disagree.
The examiner states (Ans., pp. 11-13, bridging para.
(3)):
While applicants urge that the actual gene
expression product and encoding cDNA sequence are
larger than the known hevein protein having only
43 amino acids, one of ordinary skill in the art
in carrying out the method of Weissman . . . would
have inherently or inevitably obtained the full-length
cDNA sequence corresponding to the gene encoding the
protein which included these 43 amino acids . . . .
In our view, the examiner erroneously equates the requisite
“likelihood of success” to inevitability. Rather, for
obviousness under 35 U.S.C. § 103, persons having ordinary
skill in the art would have had to have a reasonable
expectation of success in view of the cited prior art. See In
re O’Farrell,
853 F.2d at 904, 7 USPQ2d at 1681 (“For obviousness under §
103, all that is required is a reasonable expectation of
success.”)
The examiner predicts (Ans., p. 12, l. 12-17):
Appeal No. 94-2156
Application 07/888,366
We note here that U.S. Patent 5,187,262, which4
issued from parent Application 07/587,071, claims “[a] protein
. . . consisting of the sequence of 204 amino acids shown in
Fig. 2 and subfragments of said sequence larger than the 43
amino acid hevein sequence which includes the hevein sequence
and which binds chitin.” We wonder how the same examiner can
reasonably suggest that cDNA which encodes a patentable
protein would have been obvious over the same prior art over
which the protein was allowed.
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Thus, one of ordinary skill in the art would have kept
probing until encountering the intact terminator (i.e.,
including polyadenylation signal) and such a sequence
would have inherently encoded the rest of the naturally
encoded previously unknown polypeptide portion C-terminal
to the N-terminal 43 amino acid sequence which was known.
In our view, rather than expect to isolate cDNA which encodes
a 204 amino acid hevein preprotein, persons having ordinary
skill in the art would keep searching until they inevitably
would find cDNA which encodes something quite new and
different. This is not obviousness within the meaning of 354
U.S.C. § 103. This is surprise which is indicative of
patentability.
B. Rejections under 35 U.S.C. § 102(f) and § 103
But for the fact that the claimed subject matter in In re
Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), was rejected
under 35 U.S.C. § 102(g) over prior publications whose
authorship included a student not named as a coinventor of the
subject matter claimed in the patent application and the
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Application 07/888,366
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claims in this application stand rejected under 35 U.S.C. §
102(f) over subsequent publications whose authorship includes
a student, Lee, not named as a coinventor of the subject
matter claimed in this patent application, the evidence in the
two cases is virtually identical. This case similarly
contains a Declaration Under
37 CFR 1.132 (attachment to appellants’ Supplemental Brief
Under 37 CFR 1.193(b)) by a coinventor, Natasha V. Raikhel,
which states in paragraph (1) thereof that “Dr. Lee’s
contribution was as a student at Michigan State University and
he performed routine experimentation under her supervision.”
That the holding in Katz applies to rejections under
35 U.S.C. § 102(f) is evident from Ex parte Kroger, 219 USPQ
370 (Bd. Pat. App. & Int. 1982). In the case before the Board
“various declarations were submitted by Kroger and Rod to the
effect that Kroger and Rod are the inventors and that Knaster
merely carried out assignments and worked under the
supervision and direction of Kroger.” Id. at 371. The Board
stated at 371-72:
If this were all the evidence in the case, then
we would be constrained to agree that Kroger et al are
the inventors and that Knaster is not a coinventor.
The difference in Kroger was that the record included
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Application 07/888,366
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additional evidence which showed that (1) Knaster refused to
sign a declaration that he was not a coinventor, and (2)
Knaster wrote
a letter to the PTO declaring himself to be a coinventor of
the invention claimed.
In this case, we have only an examiner’s speculation
that Lee must be a coinventor of the subject matter claimed in
this application because of the repeated use of the pronoun
“we” in the later published papers which Lee co-authored and
coinventor Raikhel’s reference to “Dr. Lee” in her declaration
(Supplemental Examiner’s Answer, pp. 2-4). However, the
examiner may recall that the PTO was expressly cautioned
against just this type of speculation in In re Katz, 687 F.2d
at 455-56, 215 USPQ at 18 (emphasis added):
[W]e hold that authorship of an article by itself does
not
raise a presumption of inventorship with respect to the
subject matter disclosed in the article. Thus, co-
authors
may not be presumed to be coinventors merely from the
fact
of co-authorship. . . .
. . . [When there was] ambiguity created by the
printed
publication . . . [i]t was incumbent, therefore, on
appellant to provide a satisfactory showing which
would lead to a reasonable conclusion that he is the sole
inventor.
Appeal No. 94-2156
Application 07/888,366
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. . . . .
In the declaration, appellant provides the
explanation
that the co-authors of the publication . . . “were
students
working under the direction and supervision of the
inventor . . . .” This statement . . . provides a clear
alternative
conclusion . . . . On the record here, the board should
not have engaged in further speculation as to whether
appellant’s view was shared by . . . [the] co-authors but
rather should have accepted that . . . [the co-authors]
were
acting in the capacity indicated, that is, students
working
under the direction and supervision of appellant. From
such
a relationship, joint inventorship cannot be inferred in
the
face of sworn statements to the contrary.
In light of Raikhel’s declaration, the examiner erred as a
matter of law in presuming that the co-authorship of the
Lee I and Lee II publications raises the presumption that
Lee is a coinventor of the subject matter appellants claimed.
Accordingly, we reverse the examiner’s rejections of Claim 3
under 35 U.S.C. § 102(f) and Claim 4 under 35 U.S.C. § 103 in
view of subject matter the examiner deemed to be prior art
under 35 U.S.C. § 102(f).
3. Other Issues
Although the court in In re Deuel, 51 F.3d at 1560,
34 USPQ2d at 1216, reversed the examiner’s rejection of claims
Appeal No. 94-2156
Application 07/888,366
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drawn to DNA and cDNA molecules which encode a protein in view
of prior art teaching of the complete amino acid sequence of
the target protein and known methods of probing DNA libraries
with DNA segments corresponding to unique amino acid sequences
including amino acids having unique codons and isolating DNA
and cDNA, the court left one matter for the PTO to consider.
The matter was expressed as follows (id.):
Because Deuel’s patent application does not describe how
to obtain any DNA except the disclosed cDNA molecules,
[the] claims . . . may be considered to be inadequately
supported by the disclosure of the application.
Like the court in Deuel at 1560, 34 USPQ2d at 1216, we will
not address whether Claim 4 presently on appeal satisfies the
enablement requirement of § 112, first paragraph, but will
leave to the examiner whether any further rejection is
appropriate.
4. Conclusion
We reverse the examiner’s rejection of Claims 3 and 4
under 35 U.S.C. § 103 over the combined teachings of Walujono,
Broekaert, and Weissman.
We reverse the examiner’s rejection of Claim 3 under
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Application 07/888,366
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35 U.S.C. § 102(f).
We reverse the examiner’s rejection of Claim 4 under
35 U.S.C. § 103 in view of prior art under 35 U.S.C. § 102(f).
We remand this application to the examiner to consider
the Other Issues raised in paragraph 4 of this decision.
Appeal No. 94-2156
Application 07/888,366
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This application, by virtue of its "special" status,
requires an immediate action. Manual of Patent Examining
Procedures § 708.01(d)(6th ed., rev. 3, July 1997). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
REVERSED and REMANDED
William F. Smith )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
Appeal No. 94-2156
Application 07/888,366
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Ian C. Mc Leod
2190 Commons Parkway
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