Ex Parte Doranz et al

Patent Trial and Appeal BoardJun 18, 2013

10901399 (P.T.A.B. Jun. 18, 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. 10/901,399 07/28/2004 Benjamin J. Doranz 134088.00101 8634 74984 7590 06/18/2013 Pepper/Integral Molecular, Inc. 400 Berwyn Park 899 Cassatt Road Berwyn, PA 19312-1183 EXAMINER LUCAS, ZACHARIAH ART UNIT PAPER NUMBER 1648 MAIL DATE DELIVERY MODE 06/18/2013 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 BENJAMIN J. DORANZ, SHARON WILLIS, ERIC ROSS, and TIFFANI ANNE GREENE __________ Appeal 2012-003509 Application 10/901,399 Technology Center 1600 __________ Before MELANIE L. McCOLLUM, ERICA A. FRANKLIN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal 1 under 35 U.S.C. § 134 involves claims 1, 4, 11-16, 19-22, 42, 44, 155, 156, 158, and 159. The Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Integral Molecular, Inc. (App. Br. 2). Appeal 2012-003509 Application 10/901,399 2 STATEMENT OF THE CASE Claim 1 is illustrative of the appealed subject matter and reads as follows (emphasis added): 1. A lipoparticle comprising an external lipid bilayer; an enveloped retroviral structural protein; and a multiple membrane spanning protein, wherein said enveloped retroviral structural protein is an uncleaved gag protein and wherein the multiple membrane spanning protein that is incorporated into the lipoparticle does not bind to the gag protein, provided that the only viral proteins in the lipoparticle are structural proteins. The claims stand rejected as follows: I. Claims 1, 4, 11-13, 42, 44, and 157-159 under 35 U.S.C § 103(a) as being unpatentable over the combination of Doms 2 and Morikawa. 3 II. Claims 13-16, 18-22, and 154 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Doms, Morikawa, and Seifert, 4 Milligan, 5 and McEwen. 6 2 Doms et al., US 2002/0183247 A1, published Dec. 5. 2002. 3 Morikawa et al., In Vitro Processing of Human Immunodeficiency Virus Type 1 Gag Virus-like Particles, 272 VIROLOGY 366-374 (2000). 4 Seifert et al., GPCR-Gα fusion proteins: molecular analysis of receptor-G- protein coupling, 20(9) TRENDS PHARMACOL. SCI. 383-390 (1999). 5 Graeme Milligan and Stephen Rees, Chimaeric Gα proteins: their potential use in drug Discovery, 20(3) TRENDS PHARMACOL SCI. 118-124 (1999). Appeal 2012-003509 Application 10/901,399 3 The same issue is dispositive for each rejection. DISCUSSION Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record falls in favor of Appellants. The Examiner’s finding that Doms “teaches that lipoparticles can be made with plasmid encoding Gag without Pol” (Ans. 11, citing Doms at ¶ [0072]) is not supported by the evidence of record. As explained by Appellants, Doms uses lipoparticles made with construct containing pol, which encodes non-structural proteins (see e.g., Reply Br. 7-8; App. Br. 20-21). For example, Paragraph 72 of Doms states: FIG. 8, comprising FIGS. 8A and 8B, is an image of Western blots of MLV pseudotypes. FIG. 8A is an image of a Western blot demonstrating that MLV particles were produced by cotransfection of 293T cells with plasmids expressing MLV gag and either the indicated receptor constructs or an empty pCDNA3vector (MLVpCDNA3). Purified MLV-pCDNA3, MLV-CCR5, MLV-CXCR4, and MLV-CD4 particles were analyzed by Western blot using antibodies against the various receptors and the MLV gag protein as indicated. Paragraph 295 of the Doms describes the production of the particles that were used in Figure 8 and states: Murine leukemia virus (MLV) pseudotypes were produced by calcium phosphate-mediated transfection of 293T cells in 225- cm 2 flasks with a 3:1 ratio of receptor plasmid to pCGP, which encodes the MLV gag and pol genes. 6 McEwen et al., Fluorescent BODIPY-GTP Analogs: Real-Time Measurement of Nucleotide Binding to G Proteins, 291 ANAL BIOCHEM. 109-117 (2001). Appeal 2012-003509 Application 10/901,399 4 Examiner’s reliance on Paragraph 72 of Doms to support the position that Doms discloses lipoparticles that can be made with plasmid encoding Gag without Pol (see e.g., Ans. 11) fails to consider the teachings of Doms as a whole. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“’It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.’”). We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Doms and Morikawa discloses a lipoparticle where the only viral proteins in the lipoparticle are structural proteins. Accordingly, the Examiner has not provided an adequate basis for establishing a prima facie case of obviousness. SUMMARY We reverse all rejections on appeal. REVERSED cdc