Ex Parte Sunkar et al

Patent Trial and Appeal Board

Oct 5, 2016

12309128 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/309, 128 01115/2010 Ramanjulu Sunkar
22798 7590 10/05/2016
QUINE INTELLECTUAL PROPERTY LAW GROUP, P,C
POBOX458
ALAMEDA, CA 94501
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.
129-002510US 2091
EXAMINER
ZHOU,SHUBO
ART UNIT PAPER NUMBER
1662
MAILDATE DELIVERY MODE
10/05/2016 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 RAMANJULU SUNKAR, A VNISH KAPOOR,
and JIAN-KANG ZHU
Appeal2014-004175
Application 12/309,128
Technology Center 1600
Before ULRIKE W JENKS, RICHARD J. SMITH, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants requested rehearing of the Decision entered July 18, 2016,
which affirmed the Examiner's rejection of claims 1, 4--6, and 8-13 under
35 U.S.C. § 103(a) (hereinafter "Decision").
Appellants' request is denied with respect to making any
modifications to the Decision affirming the Examiner's rejection under
35 U.S.C. § 103(a).
Appeal2014-004175
Application 12/309,128
Appellants contend the Board overlooked or misapprehended their
arguments regarding dependent claim 4. Req. Reh'g 1. More specifically,
Appellants contend the Reply Brief arguments the Board identified as new,
and did not consider for that reason, were not new, but were properly
presented in the Appeal Brief, or that those arguments addressed new
arguments presented by the Examiner in the Answer and, so, should have
been considered by the Board. Id. 2.
I.
The Board did not overlook or misapprehend Appellants' arguments
regarding dependent claim 4 (or 10). Appellants' arguments on claim 4
(and 10) were addressed in the Decision (at 13), where it was noted that the
evidence of record (see FF1-FF6 and Chen) supported the Examiner's
determination of obviousness. The Board did not, however, address
Appellants' contention(s) presented in the Reply Brief that the Examiner
presented a "new rejection of claim 4" because the Examiner made no such
new rejection. See Reply Br. 4; see also discussion infra (no new rejections
were presented).
II.
Appellants' Appeal Brief (at 7) discusses dependent claim 4; however,
Appellants chose to argue all claims as a group and, so, they fall as group.
See MPEP § 1205.02 (iv) (citing 37 CPR§ 41.37(c)(l)(iv)). Appellants did
not place claim 4 under a subheading identifying it by number in their
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Appeal2014-004175
Application 12/309,128
Appeal Brief, but argued claim 4' s patentability with that of the other
claims. Therefore, claim 4 properly falls with claim 1.
III.
Appellants' contend the Examiner's Response to Argument
explanation mentioning the phrase "obvious to try," constituted a new
argument raised first in the Answer. Req. Reh'g 2. The Examiner's
Answer, however, made no changes to the substance of the rejection of
claim 4 or rationale therefore. Ans. 2-5.
In the Answer, the Examiner's rationale in relation to the rejection of
claim 4 was as follows:
As previously discussed on the record, one of skill in the art
would fully understand how to modify a 22 nucleotide sequence
while preserving the encoded amino acids of the protein.
Creation of different nucleic acid sequences for transformation is
standard procedure within the skill of an ordinary artisan. It is
obvious to try when choosing from a finite number of
identified, predictable solutions, with a reasonable expectation
of success (MPEP 2143). Without a substantial showing of an
unexpected result for the sequences of SEQ ID NOs: 2, 3, or 5,
these are merely obvious variants of the instantly claimed
invention.
Ans. 18 (emphasis added). This is not different from the respective rationale
in the Examiner's Final Rejection, which was as follows:
Furthermore, since Jones-Rhoades et al. taught the target site for
miR398, it would have been obvious to one of skill in the art to
try to mutate any of the nucleotides which would have conserved
the amino acid sequence of the protein, which was suggested in
the teaching of Dugas et al. It is noted that sequence of SEQ ID
NO: 5 in the instant invention only mutates those nucleotides
which result in the coding the same amino acid sequence as SEQ
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Appeal2014-004175
Application 12/309,128
ID NO: 2. Given this, there are a finite number of possible
combinations of mutations which one of ordinary skill would
have been motivated to try. One would have a reasonable
expectation of success of using plants which express a miR398-
resistant CSD 1 or CSD2 gene given the success of Abarca et al.
and the success of studies discussed in Dugas et al. at making
miRNA-resistant genes.
Final Action 5 (emphasis added).
The Examiner presented no new grounds or arguments for rejecting
claim 4 in the Answer. The phrase "obvious to try" is not a magic phrase, as
Appellants contend; it does not add new substance to the same rationale for
obviousness stated in the Final Rejection and then restated in the Answer.
SUMMARY
Appellants' request is denied with respect to making any
modifications to the Decision affirming the Examiner's rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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