Ex Parte Schmidt-Dannert et al

Patent Trial and Appeal Board

Jul 26, 2017

14354183 (P.T.A.B. Jul. 26, 2017)

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.
14/354,183 04/25/2014 Claudia Margarete Schmidt-Dannert 110.03600101 1868
110443 7590 07/26/2017
University of Minnesota
c/o Mueting, Raasch & Gebhardt, P.A.
PO Box 581336
Minneapolis, MN 55458-1336
EXAMINER
CARLSON, KAREN C
ART UNIT PAPER NUMBER
1656
MAIL DATE DELIVERY MODE
07/26/2017 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CLAUDIA MARGARETE SCHMIDT-DANNERT,
SWATI CHOUDHARY SAURKAR, MAUREEN BLACKER QUIN,
and MARK ANTON HELD1
__________

Appeal 2017-002029
Application 14/354,183
Technology Center 1600
__________

Before DONALD E. ADAMS, JOHN E. SCHNEIDER,
and RACHEL H. TOWNSEND, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
engineered subcellular compartments which have been rejected for failing to
comply with the written description requirement. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Party in Interest as Regents of the University
of Minnesota. Appeal Br. 2.
Appeal 2017-002029
Application 14/354,183

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STATEMENT OF THE CASE
Compartmentalized co-location of enzymes and their substrates can
increase efficiency of certain biosynthetic reactions while protecting the host
cell from potentially toxic reaction intermediaries. Spec. 7. Several
bacteria, such as Salmonella enterica, form protein based
microcompartments which sequester certain enzymes and regulate their
access to substrates and metabolites. Id. The Specification describes
expression of the microcompartments from Salmonella enterica in E. coli.
Id.
Claims 1–5 and 8–28 are on appeal. Claim 1 is representative of the
rejected claims and read as follow:
1. A cell comprising:
a non-native compartment comprising a proteinaceous
shell, the proteinaceous shell comprising:
at least one EutS polypeptide; and
no more than three of EutM, EutN, EutL, and EutK.

Claims 1–5 and 8–28 have been rejected under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement.
DISCUSSION
Issue
The issue presented is whether a preponderance of evidence supports
the Examiner’s finding that claims 1–5 and 8–28 do not comply with the
written description requirement.
The Examiner finds the specification does not contain any disclosure
to support the limitation of “no more than three of EutM, EutN, EutL, and
EutK.” Final Act. 7.
Appeal 2017-002029
Application 14/354,183

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Appellants contend that the Examiner improperly rejected the claims
in that there is no requirement that the phrase “no more than three of EutM,
EutN, EutL, and EutK” explicitly appear in the Specification. Appeal Br. 9.
Appellants also contend that the Specification describes expression of the
recited proteins both individually and in different combinations. Appeal Br.
10. Appellants argue that it is proper to exclude one of the disclosed
peptides. Appeal Br. 11.
Principles of Law
The examiner “bears the initial burden . . . of presenting a prima facie
case of unpatentability.’’ In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Insofar as the written description requirement is concerned, that
burden is discharged by “‘presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims.’ . . . If, . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the
identical words), then the examiner . . ., in order to meet the burden of proof,
must provide reasons why one of ordinary skill in the art would not consider
the description sufficient.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Analysis
Appellants have the better argument. As the Examiner concedes, the
Specification discloses “the combinations of EutC with EutMN; EutC with
EutLK; EutC and any one of EutS, EutM, EutM, EutL and EutK;
EutCSMLK; and EutCMNLK.” Ans. 19. The Specification also teaches
Appeal 2017-002029
Application 14/354,183

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that EutS is necessary to form the compartment. Spec. 5, ll. 22–24; 16, ll. 2–
4; and 23, ll. 32 – 24, ll. 2. We agree with Appellants that since
the specification teaches a combination of EutC and no more
than three of EutM, EutN, EutL, or EutK . . . Appellant submits
that . . . the specification also teaches a reason for combining
these shell proteins with EutS to form a non-native
compartment. Because EutS is required for targeting EutC to
the engineered microcompartment, an artisan seeking to form a
non-native compartment would be motivated to combine no
more than three of EutM, EutN, EutL, and EutK with a EutS
polypeptide.

Reply Br. 3.
The Examiner contends that the combination of EutS and no more
than three of EutM, EutN, EutL and EutK does not appear in the
Specification and is thus not supported by the Specification. Ans. 20. In
addition, the Examiner argues that the combinations of EutM, EutN, EutL
and EutK with EutC does not teach combinations of those peptides with
EutS. Id. We are unpersuaded. As discussed above, the Specification
teaches that EutS must be present to create the claimed microcompartments.
One skilled in the art would understand that the disclosed combinations of
EutC with EutM, EutN, EutL and EutK would necessarily also include EutS
to create the claimed microcompartments. Thus the disclosure of EutC
combined with EutM, EutN, EutL and EutK supports the claim limitation of
EutS with no more than three of EutM, EutN, EutL and EutK.
Conclusion of Law
We conclude that the Examiner has failed to establish that the claims
do not satisfy the written description requirement.
Appeal 2017-002029
Application 14/354,183

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SUMMARY
We reverse the rejection under 35 U.S.C. § 112, first paragraph.

REVERSED