Ex Parte Ach et alDownload PDFPatent Trial and Appeal BoardJan 7, 201412325562 (P.T.A.B. Jan. 7, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT A. ACH and BRIAN J. PETER ____________ Appeal 2013-005568 Application 12/325,562 Technology Center 1600 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1,2 This appeal under 35 U.S.C. § 134 involves claims 1-10, 12, 13, and 16-18 (June 18, 2012 Office Action, Summary).3 Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest is Agilent Technologies, Inc. (App. Br. 3.) 2 This Appeal is related to Appeal 2011-009447, decision reversing the obviousness rejection entered October 31, 2011. 3 Pending claims 11, 14, and 15 stand withdrawn from consideration (June 18, 2012 Office Action, Summary). Appeal 2013-005568 Application 12/325,562 2 STATEMENT OF THE CASE The claims are directed to a method of analyzing a test mammalian genome. Claim 1 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 1-10, 12, 13, and 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Berlin,4 Pljevaljčić,5 and Chan.6 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Berlin suggests A method . . . for distinguishing 5-position methylation changes of cytosine bases and cytosine-to-thymine mutations and for the detection of single nucleotide polymorphisms (SNPs) or point mutations in genomic DNA, in which[, inter alia,] . . . a genomic DNA sample is treated with sulfite or disultife in such a way that all of the cytosine bases that are not methylated in the 5-position of the base are changed in such a way that a base is formed that is different in its base-pairing behavior, whereas the cytosines methylated at the 5-position remain unchanged. (Berlin, Abstract; see also id. at col. 3, ll. 53-63; see also App. Br. 5.) FF 2. Examiner relies on Pljevaljčić to suggest “a method using methyltransferase and a[n] AdoMet cofactor analog for quantitative labeling 4 Berlin, US 7,179,594 B2, issued February 20, 2007. 5 Goran Pljevaljčić, et al., Quantitative Labeling of Long Plasmid DNA with Nanometer Precision, 8 ChemBioChem 1516-1519 (2007). 6 Eugene Y. Chan, DNA Mapping Using Microfluidic Stretching and Single- Molecule Detection of Fluorescent Site-Specific Tags, 14 Genome Research 1137-1146 (2008). Appeal 2013-005568 Application 12/325,562 3 of DNA with nanometer precision,” wherein the AdoMet cofactor analog is an aziridine cofactor with a Cy5 flourophor (June 18, 2012 Final Rej. 11-12; see also Pljevaljčić 1519: col. 1, ll. 24-26; App. Br. 5 (Pljevaljčić “provides a method by which DNA can be fluorescently labeled using a methyltransferase”)). FF 3. Examiner relies on Chan to suggest “a method of DNA mapping using microfluidic stretching and single-molecule detection of fluorescent site-specific tags” (June 18, 2012 Final Rej. 14). ANALYSIS Based on the combination of Berlin, Pljevaljčić, and Chan, Examiner concludes that, at the time Appellants’ invention was made, “[o]ne of ordinary skill in the art . . . would have had a reasonable expectation of success in arriving at the Applicant’s invention as claimed” (June 18, 2012 Final Rej. 13). We find no error in Examiner’s conclusion. Appellants content that while Pljevaljčić suggests “a method by which DNA can be fluorescently labeled using a methyltransferase” the “use of Pljevalj[č]i[ć]’s labeling method in Berlin’s [SNP detection] method would require either performing a bisulf[i]te treatment on a fluorescently-labeled nucleic acid, or removing the bisulfite treatment step form Berlin’s method. Either way, it is not clear how Berlin’s method would work” and “the proposed modification would result in a change in the principle of operation of Berlin’s method, or . . . render it inoperable” (id. at 5-6). We are not persuaded. The combination of Berlin and Pljevaljčić does not require (1) the removal of the bisulfite treatment step from Berlin’s method or (2) the bisulfite to act upon Pljevaljčić’s labeled methyl group. To the contrary, Appeal 2013-005568 Application 12/325,562 4 consistent with the steps outlined by Appellants, the combination suggests the use of Pljevaljčić’s labeled cofactor to methylate and label cytosine in a nucleic acid sample using a methyltransferase (App. Br. 5; FF 1-2). The nucleic acid sample is then treated with bisulfite, which acts not on the methylated and labeled cytosine, but instead on non-methylated cytosines (id. (“As is well known, bisulfite changes C’s to U’s . . ., but leaves methyl- C alone”)). Accordingly, notwithstanding Appellants’ contention to the contrary, the combination of Berlin and Pljevaljčić does not require a change in the operation of, or “complete reconstruction of,” Berlin’s method (App. Br. 7). Further, Appellants’ failed to provide persuasive argument or evidence that supports a conclusion that a methylated and labeled cytosine would somehow interfere with or inhibit the action of bisulfite, which does not act on the methylated and labeled cytosine, or that bisulfite would somehow negatively interact with the fluorescent label (see App. Br. 6 (“the effect of the bisulfite treatment on the fluorescent group would be unknown”)). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Berlin, Pljevaljčić, and Chan is affirmed. Claims 2-10, 12, 13, and 16-18 fall with claim 1. AFFIRMED lp Copy with citationCopy as parenthetical citation