Ex Parte Jennissen

Patent Trial and Appeal BoardNov 9, 2015

11631231 (P.T.A.B. Nov. 9, 2015)

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. 11/631,231 12/12/2007 Herbert P. Jennissen 500042.401USPC 1967 500 7590 11/09/2015 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER HEINCER, LIAM J ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 11/09/2015 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 HERBERT P. JENNISSEN ____________ Appeal 2013-010668 Application 11/631,2311 Technology Center 1700 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the decision2 of the Primary Examiner rejecting claims 28–40 and 49. Non-Final Act. 2–7. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November 4, 2015. We affirm. 1 According to Appellant, the Real Party in Interest is Morphoplant GmbH. Appeal Br. 2. 2 Although Appellant appeals from a Non-Final Office Action, mailed November 16, 2012 (“Non-Final Act.”), we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims have been twice presented and rejected. Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994). Appeal 2013-010668 Application 11/631,231 2 OPINION Appellant’s invention relates to “a method of producing of a polypeptide which has been modified with an organic residue, the modified polypeptides thus produced and the use thereof.” Spec. 1, ll. 3–5. Claim 28, reproduced below, is representative of the appealed subject matter: 28. A modified polypeptide comprising a bioactive polypeptide and an organic residue, wherein the bioactive polypeptide is covalently bound to the organic residue, and wherein the organic residue comprises a backbone structure having aromatic side chains selected from the group consisting of: (i) polymers with up to about 50 monomers of ethylene, propylene, ester-, ether- or thioether compounds having side chains which are phenyl- or naphthyl groups, heterocycles or aromatic amino acids selected from the group consisting of: phenylalanine (phe), tyrosine (tyr) and tryptophan (trp), which carry at least one hydroxyl group at the aromatic residue, and wherein at least one aromatic side chain of the organic residue carries two hydroxyl groups; (ii) a residue with the structure P - [R1 - (X)n]w - [R2 - (X)n]z - R3 wherein P represents the bioactive polypeptide which is connected C-terminal or N-terminal with the organic residue having aromatic side chains or in which the organic residue having aromatic side chains is interposed; R1, R2 and R3 are the same or different and each represents an aromatic amino acid which is selected from the group consisting of tyr, trp or phe; X represents any amino acid which is the same or different within the units [R1 - (X)n]w and [R2 - (X)n]z; n is 0 to 1; w and z represent a natural number from about 0 to 5; Appeal 2013-010668 Application 11/631,231 3 and wherein on at least one of R1, R2 and R3 at least two hydroxyl groups are present at the aromatic ring; (iii) the amino acid sequences -(phe)n-, -(tyr)n- or -(trp)n- with n=2-50 or combinations thereof, wherein on at least one phe, tyr or trp at least two hydroxyl groups are present at the aromatic ring; and (iv) analog compounds of the peptides listed under (ii) and (iii), wherein the CONH-amide linkages are substituted by one or more of the groups consisting of depsipeptide (COO), iminomethylene (CH2-NH), trans-alkene (CH=CH), enaminonitrile (C(=CH-CN)-NH), thioamide (CS-NH), thiomethylene (S-CH2), methylene (CH2-CH2) and retro-amide (NH-CO). Appeal Br. 18–19. The Examiner rejected claims 28–40 and 49 under 35 U.S.C. § 103(a) as obvious over the combination of Jennissen3 and Messersmith.4 Non-Final Act. 2–7. According to the Examiner, Jennissen teaches the portion of Appellant’s claim that recites a bioactive polypeptide, while Messersmith teaches the organic residue recited in the claim. Id. at 2–3 (citing Jennissen ¶ 14; Messersmith ¶¶ 10, 91). Appellant does not challenge these findings, but Appellant argues that the Examiner’s combination of Jennissen and Messersmith is harmful error for several reasons. Appeal Br. 10–16. First, Appellant argues that a person of ordinary skill in the art would not have had a reasonable expectation of success in combining the teachings of Jennissen and Messersmith. Appeal Br. 11–13. Because Jennissen and Messersmith “rely on different chemistry, using different materials, and are applied for different reasons,” Appellant argues that a person of ordinary skill in the art would not have found it obvious to combine their teachings. 3 Jennissen, US 2004/0074568 A1, published Apr. 22, 2004. 4 Messersmith et al., US 2003/0087338 A1, published May 8, 2003. Appeal 2013-010668 Application 11/631,231 4 Id. at 12. Appellant is correct that Jennissen and Messersmith operate in different ways, with Jennissen attaching bioactive compounds to a surface using pre-treatment of the surface and Messersmith attaching non-bioactive compounds to a surface without pre-treatment of the surface. Jennissen ¶ 14; Messersmith ¶¶ 9–11. Nevertheless, we are not persuaded by Appellant’s argument. The reason to combine the references is provided by Messersmith itself, which teaches that its “system adhesive to a wide variety of material and/or nanoparticulate surfaces” is a substitute for surface modification “using silane coupling techniques,” the method taught in Jennissen. Messersmith ¶¶ 10–11; Jennissen ¶ 14. Although Messersmith discusses attaching only particular polymers using its coupling technique, we have not been directed to any evidence of record that suggests that a person of ordinary skill in the art would have expected the Messersmith technique to work only with those particular polymers, so we cannot find harmful error in the Examiner’s finding that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Jennissen and Messersmith. Appellant also argues that Jennissen and Messersmith cannot be combined properly because each reference teaches away from the technique discussed in the other reference. Appeal Br. 13–15. We are not persuaded by this argument. First, Jennissen’s discussion of the benefits of chemical coupling using mediator molecules, cited by Appellant as a teaching away from Messersmith’s (and Appellant’s) coupling method, does not rise to the level of teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art disclosure of a different solution to a similar problem does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed). Appeal 2013-010668 Application 11/631,231 5 Second, Messersmith’s use of its coupling method to attach polymers different from those attached in Jennissen also does not amount to teaching away from the use of Messersmith’s coupling method to attach Jennissen’s bioactive polymers. See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992) (to make out a teaching away case, it is not enough for Appellant to show that there are differences between two references). Finally, Appellant argues that it was improper for the Examiner to combine Jennissen and Messersmith because the combination of would render both references inoperative for their intended purposes. Appeal Br. 14–15. We are not persuaded that this is the case. Both Jennissen and Messersmith are concerned with attaching chemical compounds to surfaces. Jennissen ¶ 14; Messersmith ¶ 5. Although they focus on attaching different compounds, we have not been directed to any evidence of record that suggests that the attachment methods in Messersmith would fail to work with the compounds discussed in Jennissen. And, although the references teach different attachment methods, Messersmith teaches that its attachment method is a replacement for the method taught in Jennissen. Messersmith ¶¶ 10–11. Accordingly, Appellant has identified no evidence that supports a finding that combining Jennissen and Messersmith would render either Jennissen or Messersmith inoperative for its intended purpose. Because we are not persuaded by any of Appellant’s arguments that the Examiner committed harmful error in rejecting claims 28–40 and 49, we affirm that rejection. Appeal 2013-010668 Application 11/631,231 6 ORDER The Examiner’s rejection of claims 28–40 and 49 under 35 U.S.C. § 103(a) as obvious over the combination of Jennissen and Messersmith is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED mat