Ex Parte Stahler et al

Patent Trial and Appeal Board

Aug 30, 2016

12400493 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/400,493 0310912009 Peer F. Stahler
95432 7590 09/01/2016
Synthetic Genomics, Inc.
c/o DLA Piper LLP (US)
4365 Executive Drive
Suite 1100
San Diego, CA 92121-2133
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.
SGI1610-3 4103
EXAMINER
STRZELECKA, TERESA E
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
gtdocket@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEER F. STAHLER, CORD F. STAHLER, and
MANFRED MULLER1
Appeal2014-002008
Application 12/400,493
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and RICHARD J.
SMITH, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to methods of optimizing functional genetic elements. The Examiner rejects
the claims as anticipated and on the grounds of nonstatutory obviousness-
type double patenting. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Synthetic Genomics,
Inc. (App. Br. 4.)
Appeal2014-002008
Application 12/400,493
STATEMENT OF THE CASE
Claims 48-50, 52, and 53 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claim 48 is representative of the
claims on appeal, and reads in pertinent part as follows (emphasis added):
48. Method for optimizing the functional genetic parameters of
genetic elements, comprising the steps
( c) synthesizing the plurality of oligomeric building blocks by
parallel synthesis steps, wherein each oligomeric building block
is synthesized on a different area of a common support, ....
(App. Br., Claims Appendix, pg. 11)
The Examiner rejects the claims as follows:
I. Claims 48-50, 52, and 53 under 35 U.S.C. § 102(b) as being
anticipated by Ferretti2 (Final Act. 3 2) as evidenced by Applied
Biosystems Model 380A 4 (Ans. 2).
II. Claims 48-50, 52, and 53 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 3, 10, and 13 of the
'211 patent5 in view of Ferretti (Ans. 5).
III. Claims 48-50, 52, and 53 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 3, 10, and 13 of the
'369 patent6 in view of Ferretti.
2 Ferretti et al., Total synthesis of a gene for bovine rhodopsin, 83 Proc. Natl.
Acad. Sci. USA 599---603 (1986) ("Ferretti").
3 Office Action mailed Jan. 17, 2013.
4 Biosystems Update: New Instrument for Multiple DNA Synthesis, 12 Nucl.
Acids. Res. 1-16 (1984).
5 Stahler et al., US 6,586,211 Bl, issued July 1, 2003 ("'211 patent").
6 Stahler et al., US 7,790,369 B2, issued Sept. 7, 2010 ("'369 patent").
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Appeal2014-002008
Application 12/400,493
I. Anticipation by Ferretti
The Examiner's position is that the term "common support" is not
defined in the Specification but is reasonably interpreted to encompass "a
structure that holds up or serves as a foundation for something else"
(Ans. 14, citing Merriam Webster's Dictionary in support). In other words,
"there is nothing specific about the 'support' or 'reaction area' that is
required by the claims reviewed in the light of the specification" (Ans. 13).
Indeed, the Examiner's position is that one of ordinary skill in the art would
interpret "'support' as an area to which individual reaction columns (=
reaction areas) of a DNA synthesizer is a broadest reasonable interpretation
of the claims. All of the three columns are attached to the same support
through which reagents are delivered to the columns, and each column can
synthesize the same type of oligonucleotide" (Ans. 13, see also 14 ("the
columns(= reaction areas) of the DNA synthesizer are attached to a
structure that serves as a foundation for these columns")).
The issue is: Is the Examiner's interpretation of "common support" as
reading on columns attached to a DNA synthesizer reasonable in light of the
Specification?
Findings of Fact
FPL Appellants' Specification provides that the solid-phase synthesis of
the oligonucleotides occurs in "individual reaction area[ s] on the
surface of the support, for example the wall of the reaction space, i.e.
it is not particles introduced into the reaction space as is the case in a
conventional synthesizer" (Spec. i-f 36 (emphasis added); see Fig. 1
and i-f 23).
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Appeal2014-002008
Application 12/400,493
FF2. Appellants' Specification provides that the method is carried out on "a
support having a surface area which contains a plurality of individual
reaction areas" (Spec. i-f 32).
Principle of Law
"[E]xaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting aprimafacie case ofunpatentability." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[T]he Patent Office has the
initial burden of coming forward with some sort of evidence tending to
disprove novelty." In re Wilder, 429 F.2d 447, 450 (CCPA 1970).
Analysis
Appellants' challenge the Examiner's interpretation of the term
"common support" as recited in claim 48 (see App. Br. 7-10; Reply Br. 1-
3). On the record before us we find that Appellants have the better position
and agree with the reason set forth the Appeal Brief and Reply Brief.
We recognize that during prosecution before the Office, claims are to
be given their broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We also recognize that "limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Claim language, however, "should not [be] treated as meaningless." Bicon,
Inc. v. Straumann Co., 441F.3d945, 951 (Fed. Cir. 2006). Moreover, "the
claims themselves provide substantial guidance as to the meaning of
particular claim terms." Philips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
Cir. 2005) (en bane).
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Appeal2014-002008
Application 12/400,493
The Examiner's claim interpretation takes the position that the DNA
synthesizer is the common support and that the individual columns that are
attached to the synthesizer are the different reaction areas (see Ans. 13-14 ).
We agree with Appellants that this interpretation seems to ignore the plain
claim language that the synthesis occurs "on a different area of a common
support" (App. Br. 8; emphasis omitted). Additionally, the Specification
explains that the reaction is carried out on "a support having a surface area
which contains a plurality of individual reaction areas" (FF2) which supports
the position that there is only one surface with multiple areas.
Even if we were to consider each column attached to the synthesizer
as being a different reaction area, the reaction itself would not take place on
the support but would instead take place inside the columns attached to the
support, identified by the Examiner as the synthesizer itself. The
Specification, however, excludes reaction supports used in conventional
synthesizers, i.e. particles in a column (FF 1 ). The reaction area in the
Applied Biosystems Synthesizer is on the particles inside the columns.
Again, the Specification excludes common supports such as particles as part
of the reaction area (FF 1 ). Therefore, the Examiner's interpretation that the
individual columns that each serve as a different reaction area is inconsistent
with the Specification and the claims.
In sum, as we are not persuaded, for the reasons discussed, that the
Examiner has adequately explained how Ferretti describes, within the
meaning of 35 U.S.C. § 102, having the claimed feature where "each
oligomeric building block is synthesized on a different area of a common
support" as required by claim 48. Accordingly, we reverse the Examiner's
anticipation rejection of claim 48, and any dependents.
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Appeal2014-002008
Application 12/400,493
II. and III. Nonstatutory Obviousness-Type Double Patenting
Appellants do not contest the obviousness-type double patenting
rejection over the '211 and '369 patent (see App. Br. 6; see also Response
filed Nov. 19, 2012 ("Applicant[s] will submit a terminal disclaimer over
U.S. Patent 6,586,211 and over U.S. Patent 7 ,790,369 if the claims in the
present case are allowed in their presently submitted form")). Therefore, we
summarily affirm, and will not further discuss, this rejection. See Manual of
Patent Examining Procedure§ 1205.02 ("If a ground of rejection stated by
the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board.").
SUMMARY
We reverse the rejection of claims 48-50, 52, and 53 under 35 U.S.C.
§ 102(b) by Ferretti as evidenced by Applied Biosystems Model 380A
synthesizer.
We summarily affirm the rejection of claims 48-50, 52, and 53 on the
ground ofnonstatutory obviousness-type double patenting over claims 1, 3,
10, and 13 of the '211 patent in view of Ferretti.
We summarily affirm the rejection of claims 48-50, 52, and 53 under
on the ground of nonstatutory obviousness-type double patenting over
claims 1, 3, 10, and 13 of the '3 69 patent in view of Ferretti.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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