Ex Parte Wang et al

Patent Trial and Appeal Board

Nov 28, 2012

11256229 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HUI WANG and BO U. CURRY
__________

Appeal 2011-011647
Application 11/256,229
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 15-20, 29, and 30.
1
We have jurisdiction
under 35 U.S.C. § 6(b).

1
Claims 21-28 are also pending, but stand withdrawn from consideration
(App. Br. 3; see also Ans. 3).
Appeal 2011-011647
Application 11/256,229

2
STATEMENT OF THE CASE
Claim 15 is representative of the claims on appeal, and reads as
follows (emphasis added):
15. An array for analyzing miRNAs comprising:
a) an array support, and
b) multiple sets of probes on said array support, wherein each set of
said multiple sets comprises at least five probes that each comprises a
target-complementary region that specifically binds to a single target
miRNA, wherein the target-complementary region of each of said at least
five probes has a contiguous sequence of at least 15 nucleotides that is
complementary to said target miRNA, and wherein the target-
complementary region of at least one of said five probes is of a different
length relative to complementary regions of other probes of the same set and
is not fully-complementary to said target miRNA.

The following grounds of rejection are before us for review:
I. Claims 15, 18, 19, and 30 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Babek
2
and Chee
3

(Ans. 5).
II. Claims 16, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Babek and Chee as
further combined with Calevro
4
(Ans. 9).

2
Babak et al., Probing microRNAs with microarrays: Tissue specificity and
functional inference, 10 RNA 1813-1819 (2004).
3
Chee et al., WO 95/11995, published May 4, 1995.
4
Calevro et al., Assessment of 35mer amino-modified oligonucleotide based
microarray with bacterial samples, 57 J. MICROBIOLOGICAL METHODS 207-
218 (2004).
Appeal 2011-011647
Application 11/256,229

3
III. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Babek and Chee as further
combined with Lagos-Quintana
5
(Ans. 11).
Appellants argue all of the claims and all of the rejections together
(App. Br. 4), thus the issue as to all of the rejections is the same.
We agree with the rejections and responses to Appellants’ arguments
that are set out in the Examiner’s Answer, and therefore adopt the
Examiner’s reasoning as our own.
Specifically, Babak teaches every element of the array of claim 15,
except for teaching multiple sets of probes, wherein each set compriseat
least five probes, and wherein each probe comprises a target-complementary
region that specifically binds to a single target miRNA. We agree with the
Examiner (Ans. 7), however, that, as evidenced by Chee, tiling arrays that
would produce at least 5 probes specific for a single nucleic acid were well
known in the art. Specifically, the ordinary artisan would be able to balance
all the parameters of the number of probes used, the desired to signal-to-
noise ratios, desired sensitivity, and the information desired to determine the
appropriate tiling frequency. Stated differently, it would have been well
within the level of skill of the ordinary artisan to select any desired tiling
frequency, whether it be every 7 nucleotides as taught by Babek, every
nucleotide, as taught by Chee, or anywhere in between. Thus, it would have
also been obvious to select the desired number of probes for a single target
miRNA to obtain the desired tiling frequency, which, as found by the

5
Lagos-Quintana et al., Identification of Novel Genes Coding for Small
Expressed RNAs, 294 SCIENCE 853 (2001).
Appeal 2011-011647
Application 11/256,229

4
Examiner, when the tiling frequency is every base, would result in the
number of probes being greater than 5.
The Examiner’s rejections are affirmed.

TIME PERIOD FOR RESPONSE
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

cdc