Ex Parte Bright

Patent Trial and Appeal BoardApr 30, 2013

11006857 (P.T.A.B. Apr. 30, 2013)

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. 11/006,857 12/08/2004 Frank V. Bright 011520.00393 6817 26712 7590 05/01/2013 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER SHIBUYA, MARK LANCE ART UNIT PAPER NUMBER 1641 MAIL DATE DELIVERY MODE 05/01/2013 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 FRANK V. BRIGHT ____________________ Appeal 2011-003167 Application 11/006,857 Technology Center 1600 ____________________ Before: WILLIAM V. SAINDON, NEIL T. POWELL, and BEVERLY M. BUNTING, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003167 Application 11/006,857 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4-6, 8-11 and 33. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A molecularly imprinted polymer for detecting the presence of an analyte comprising: at least one templated site which is capable of selectively binding said analyte, said templated site bearing exposed reactive groups needed to selectively bind the analyte, and at least one reporter molecule, wherein the reporter molecules in the polymer are exclusively present at the templated sites. References The Examiner relies upon the following prior art references: Goldstein Upadhya US 3,966,744 US 6,221,604 Jun. 29, 1976 Apr. 24, 2001 Chen US 2004/0157804 A1 Aug. 12, 2004 Pirilä-Honkanen, Thermodynamic and Spectroscopic Properties of 2- Pyrrolidinones. 6. Normalized ET(30) Parameters for Binary Solvent Mixtures of 2-Pyrrolidinone at 30 and 50°C, Journal of Solution Chemistry, vol. 24, no.7, 641-649 (1995) (hereafter “Pirilä-Honkanen”). Turkewitsch et al., Fluorescent Functional Recognition Sites through Molecular Imprinting. A Polymer-Based Fluorescent Chemosensor for Aqueous cAMP, Analytical Chemistry, vol. 70, no. 10, 2025-2030 (1998) (hereafter “Turkewitsch”). Appeal 2011-003167 Application 11/006,857 3 Rejections I. Claims 1, 4, 6, 9, and 33 are rejected under 35 U.S.C. § 102(b) as anticipated by Turkewitsch. Ans. 4. II. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Turkewitsch and Goldstein. Ans. 6. III. Claims 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Turkewitsch and Pirilä-Honkanen. Ans. 8. IV. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Turkewitsch, Pirilä-Honkanen, Upadhya, and Chen. Ans. 10. SUMMARY OF DECISION We AFFIRM-IN-PART. OPINION Claim 1 requires “reporter molecules … exclusively present at the templated sites.” The Examiner found that Turkewitsch describes a majority of the reporter molecules at the templated sites and reasons that this satisfies the limitation requiring “exclusively present.” See, e.g., Ans. 13-14. Appellant argues, and we agree, that having a majority of reporter molecules present at the templated sites does not satisfy the requirement for them to be “exclusively present” at the templated sites. See, e.g., App. Br. 8. The Examiner’s reasons at pages 13-14 (and similar statements elsewhere) fail to articulate how a mere majority satisfies the exclusivity required by the claims, given the stark difference between the plain meanings of the terms “majority” and “exclusively.” Accordingly, we are apprised of error in the rejection of claim 1, and of claims 4, 6, and 9, which depend therefrom. The same error is present in Appeal 2011-003167 Application 11/006,857 4 rejections II and III. Claim 33, however, is of different scope, and we address it separately. Claim 33 requires the reporter molecules “site-selectively installed at the template sites.” Appellant states that this “site-selectively installed” limitation is equivalent in scope to the “exclusively present” limitation in claim 1. App. Br. 3, 9. Appellant does not provide any explanation as to why this different language is to be interpreted in this way. Outside an indication to the contrary, it is presumed that different words or phrases are used in separate claims to indicate the claims have different meanings. Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1368-1369 (Fed. Cir. 2005) (quoting Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999)). The presumption applies across independent claims. Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1365-69 (Fed. Cir. 2000). Accordingly, we do not accept Appellant’s proposed construction of “site-selectively installed.” The Examiner provides an explanation of how Turkewitsch describes “site-selectively installed” reporter molecules. Ans. 19-20. We understand the Examiner’s position to be that because the reporter molecules tend to accumulate at the sites (i.e., a majority of them are located there because of their low affinity to the template), that this means they selected those particular sites. See also Turkewitsch, p. 2027 (“ensuring that the majority of [fluorescent functional monomer] was present in imprinted binding cavities”). Choosing one site over another is reasonably considered site selection. Appellant does not persuasively argue that the Examiner’s interpretation of the claims or their reading on Turkewitsch is in error. Accordingly, we sustain the Examiner’s rejection of claim 33. Appeal 2011-003167 Application 11/006,857 5 DECISION We REVERSE the Examiner’s decision regarding claims 1, 4-6, and 8-11. We AFFIRM the Examiner’s decision regarding claim 33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls