Ex parte Fiandaca

Ex parte Fiandaca; Appeal No. 2010-006135, Application No. 11/607,816, Decided on August 16, 2011.

The claims in Fiandaca relate to methods of detecting the presence of a microorganism in a sample, which involve (inter alia) combining a sample having the microorganism with an aqueous alcoholic solution containing peptide nucleic acid (PNA) probes specific to the microorganism and labeled with a detectable group. The alcohol is selected from methanol, ethanol and isopropanol and present in the aqueous solution in an amount of about 40% to about 60% (v/v).

The Examiner asserted that the claims were anticipated by US 2004/0115692 ("Linder") and were obvious: i) in view of US 5,225,326 and US 6,280,946; and ii) in view of US 5,225,326, US 6,280,946, and Rigby et al. (40 Journal of Clinical Microbiology 2182-2186 (2002)). The Board of Patent Appeals and Interferences ("the Board") affirmed each of these rejections, but entered a new ground of rejection based on Linder. The remaining discussion focuses on the Examiner's anticipation rejection in view of Linder and the new ground entered by the Board.

Linder discloses a particular embodiment that is a methanol solution of PNA, but in this particular disclosure, the relative amount of the methanol in the aqueous solution was not disclosed. However, in another embodiment, Linder disclosed an aqueous alcoholic solution where the alcohol is present in an amount of about 40% to less than about 60%, which the Examiner considered to substantially overlap with the claimed range. Thus, the Examiner considered that these disclosures, taken together, was sufficient to support an anticipation rejection of the claims in view of Linder.

Appellant argued that Linder failed to explicitly disclose an aqueous alcoholic solution of PNA where the alcohol was present in the amount as claimed, and argued that the Examiner improperly picked from the distinct disclosures in Linder to support the anticipation rejection. On review, the Board affirmed the Examiner's anticipation rejection, noting that Linder as a whole disclosed all claimed elements.

In concluding its discussion of Linder, the Board conceded that one of ordinary skill in the art might find the disclosure of Linder to be ambiguous enough to raise the question whether this reference disclosed all of the claimed elements. Accordingly, the Board took the additional step of entering a new ground of rejection, i.e.rejecting the claims as obvious in view of Linder. The Board believed that it would have at least been obvious to one of ordinary skill in the art to formulate the aqueous alcoholic solutions of PNA where the alcohol was present in the amounts as claimed, based on the entire disclosure of Linder. The Board's action in this case implies that the strongest rejection of the claims in view of Linder is an obviousness rejection, even though they affirmed the anticipation rejection in view of Linder.

Here, the Board expanded its role from only reviewing prior art rejections to examining the claims and reviewing the prior art rejections. Thus, the Board may be signaling a shift in practice and procedure that might encourage Examiners to send cases to the Board to make the best prior art rejection(s). If so, this practice would cause further delay in disposing cases at the Board and increase the backlog of appeals pending before the Board.