Ex Parte Nojiri et al

Patent Trial and Appeal BoardMar 28, 2017

12532290 (P.T.A.B. Mar. 28, 2017)

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. 12/532,290 02/23/2010 Masutoshi Nojiri 21581-00505-US 6625 30678 7590 03/30/2017 POT STNFT T T PC EXAMINER (DC OFFICE) 1000 Louisiana Street CHOWDHURY, IQBAL HOSSAIN Fifty-Third Floor HOUSTON, TX 77002 ART UNIT PAPER NUMBER 1652 NOTIFICATION DATE DELIVERY MODE 03/30/2017 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): DC-IPDocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASUTOSHINOJIRI, DAISUKE MORI YAM A, TOZO NISHIYAMA, and NAOAKI TAOKA1 Appeal 2015-006989 Application 12/532,290 Technology Center 1600 Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and JOHN E. SCHNEIDER, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of the claims as being directed to patent ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM 1 According to Appellants the real party-in-interest is Kaneka Corporation. Appeal Br. 2. Appeal 2015-006989 Application 12/532,290 STATEMENT OF THE CASE The claims are drawn to an isolated DNA which encodes a polypeptide comprising the amino acid sequence as set out in SEQ ID NO: 1. This sequence was derived from a bacterium belonging to the genus Cupriavidus. See Spec, 16, 70. A copy of the claims may be found in the Claims Appendix of the Appeal Brief. Appeal Br. 11—13. Claims 6—10 and 16—202 stand rejected under 35 U.S.C. § 101 as being directed to non- statutory subject matter, i.e., a product of nature. Office Act.3 2—3; Ans. 2— 7. We have reviewed Appellants’ contentions that the Examiner erred in rejecting the claims as being directed to patent ineligible subject matter. Appeal Br. 5—7. We are not persuaded by Appellants’ contentions and agree with the rejection and response to Appellants’ arguments as set out in the Office Action mailed July 9, 2014, and the Examiner’s Answer, and therefore, adopt the Examiner’s reasoning as our own. We add the following point for emphasis. We agree with the Examiner that whether the isolated DNA is obtained by positional cloning (see Association for Molecular Pathology v. United States Patent and Trademark Office, 689 F.3d 1303, 1314 (Fed. Cir. 2012)), by standard techniques “described in publications such as Molecular Cloning 2nd Edition . . . and Current Protocols in Molecular Biology” (Spec. 4:25—28), or 2 The Examiner withdrew the rejection of claim 11 as reading on a product of nature. Ans. 8. Claim 11 is directed to a transformed E. coli bacterium carrying a gene from another bacterium, in this case a bacterium belonging to the genus Cupriavidus. 3 Office Action mailed July 9, 2014. 2 Appeal 2015-006989 Application 12/532,290 known PCR cloning techniques (see Spec. 10:19-30), the resultant gene sequence is identical to that found naturally and “separating that gene from its surrounding genetic material is not an act of invention.” Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Appellants do not identify any structural difference between their sequence and that found in nature. We emphasize that the claims on appeal are claims 6—10 and 16—20 as they stand, which is as they stood at the time the appeal was filed (i.e., the amendment July 26, 2013, and reproduced in the Appeal Brief submitted Jan. 8, 2015). Appellants in their Reply Brief have presented proposed amendments to the claims after the Examiner’s Answer, and request that “the Board consider the narrower scope of the claims.” Reply Br. 2. We decline Appellants’ request that included consideration of the proposed amendment to the claimed subject matter. The Examiner and Appellants are in a more advantageous position to address the patentability, if any, of proposed claim amendments. This board serves as a board of review, not a de novo examination tribunal. See 35 U.S.C. § 6(b) (“The [board] shall, on written appeal of an applicant, review adverse decisions of examiners upon applications for patents . . . .”). Accordingly, the Examiner’s rejection 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(a). AFFIRMED 3