Ex Parte Erbacher et al

Patent Trial and Appeal BoardApr 18, 2016

12064321 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/064,321 84331 7590 MMWVIP,LLC 7900 Westpark Drive Suite AIOO McLean, VA 22102 06/19/2008 04/20/2016 FIRST NAMED INVENTOR Christoph Erbacher 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. 2902162-021000 8212 EXAMINER CHUNDURU, SURYAPRABHA ART UNIT PAPER NUMBER 1637 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): docketing@mmwvlaw.com cgmoore@mmwvlaw.com dwoodward@mmwvlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPH ERBACHER, RALF HIMMELREICH, RALF PEIST, INGERLISE EVANS HAALAND, and HEGE HARDERSEN Appeal2013-008776 Application 12/064,321 Technology Center 1600 Before JEFFREY N. FREDMAN, KIMBERLY McGRAW, and RICHARD J. SMITH, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-3 and 5-17. 1 Claim 4 has been cancelled. Amend. after Final 2; Advisory Act. 1. Claim 21 stands objected to. Advisory Act. 1. Claims 18- 1 Both Appellants' Brief and Examiner's Answer state claims 4 and 21 are under appeal. However, claim 4 was cancelled in an Amendment after Final mailed September 24, 2014 ("Amend. after Final"), which was entered by the Examiner in the Advisory Action dated October 11, 2012 ("Advisory Act."). Additionally, in the same Advisory Action, the Examiner withdrew the rejection to claim 21. As such, we treat the inclusion of claim 4 and 21 in Appellants' Brief and the Examiner's answer as a typographical error. Appeal2013-008776 Application 12/064,321 20 and 22 have been withdrawn. App. Br. 14--15; Advisory Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. STATEMENT OF THE CASE Appellants' invention relates to methods for obtaining nucleic acid from blood. Claim 1 is the only independent claim on appeal and is reproduced below: 1. A method for obtaining nucleic acid from blood, comprising bringing a blood sample in a reaction vessel into contact with an erythrocyte lysis buffer in the presence of a matrix that can adsorb cell organella, wherein the matrix is adsorbed on a wall of the reaction vessel, and wherein the matrix comprises a polymer, copolymer or terpolymer or a mixture thereof capable of forming a polyanionic structure, removing a reaction mixture resulting from contact with the lysis buffer, optionally washing and/or heating the matrix to a temperature at which nucleic acids from the adsorbed blood constituents are released and optionally subjecting the nucleic acid to a subsequent reaction. App. Br. 12 (Claim App'x). REJECTIONS Claims 1-3 and 5-17 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Himmelreich et al. (US 2008/0299557 Al, published Dec. 4, 2008 "Himmelreich"). Ans. 4--5; Advisory Act. Claims 1-3 and 5-17 stand rejected under 35 U.S.C. Â§ 102(a) as being anticipated by Smith et al. (US 6,670, 128 B2, issued Dec. 30, 2003 "Smith"). Ans. 5-6. 2 Appeal2013-008776 Application 12/064,321 Himmelreich: OPINION Appellants argue the Examiner erred in finding Himmelreich teaches a matrix comprising a polymer capable of forming a polyanionic2 structure as required by claim 1. We agree with Appellants. Himmelreich discloses, inter alia, a matrix comprising ( 1) a polyanionic polymer (the "second polymer"), such as poly( acrylic acid) or poly(meth-acrylic acid), that comprises an amine reactive group such as a carboxylate, aldehyde, or epoxide and (2) a compound carrying an amino group. Ans. 7-8 (citing Himmelreich i-fi-1 48---64, 52-71. The Examiner finds Himmelreich's copolymers have similar or identical structure to the Appellants' claimed copolymers and, therefore, are capable of forming an anionic structure. Id. at 8. We disagree with this finding. In contrast to the polymers of Himmelreich, Appellants' polyanionic polymers are not modified to carry an amino group. Himmelreich teaches the amino group attached to the polymers "provides a positive charge to allow the copolymer bind nucleic acid molecules." Himmelreich i-f 11 (emphasis added). As such, the Examiner has not sufficiently shown that Himmelreich discloses, either expressly or inherently, a matrix comprising a negatively charged polyanionic polymer as required by claim 1. Therefore, we do not sustain the Examiner's rejection of claim 1 or claims 2, 3, and 5-17, which depend therefrom. See 37 C.F.R. Â§ 1.75(c)(stating dependent claims shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim). 2 Anionic structures are negatively charged. 3 Appeal2013-008776 Application 12/064,321 Smith: Claim 1 recites "a matrix that can adsorb cell organelle, wherein the matrix is adsorbed on a wall of the reaction vessel." Appellants argue the Examiner erred in finding Smith anticipates claim 1, stating "nothing in Smith indicates that the filters inherently absorb to a reaction vessel and no technical reasoning is provided for why they would." App. Br. 10. We agree with Appellants. A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner states Smith discloses a "matrix ... wherein the matrix is absorbed on the wall of the reaction vessel." Ans. 5 (citing Smith 5:37--40, 9:19--40, 10:46- 59); see also id. at 6 (citing Smith 9: 19--48). The Examiner further states that Smith teaches that the matrix is made up of silica based copolymer particles or grass fibers and cross-references US 6,337,026 as support that the spun bound particles are used as a matrix that adsorb onto the reaction vessel. Ans. 8-9 (citing US 6,337,026 6:25-37). However, the Examiner has not specifically identified, nor is it readily apparent, where these references teach that the matrix is "adsorbed on the wall of a reaction vessel" as required by the claim. As such, we do not sustain the rejection of claim 1, or claims 2, 3, and 5-17 which depend therefrom. DECISION The Examiner's rejections of claims 1-3 and 5-17 as anticipated are reversed. REVERSED 4