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`VO:SSIU~·cit·PART.NE~.· :
`
`I Postal Address: P. 0. Box 86 07 67 81634 MOnchen Germany I
`
`To the
`European Patent Office
`
`80298 Munich
`
`L
`
`•
`
`C)
`~-
`1 '1 ( )
`84 10 0836.0-2r&5/0117440
`Enzo Biochem Inc.
`Our ref.: S 808 EP
`
`PATENTANWALTE
`EUROPEAN PATENT ATTORNEYS
`Dr. VOLKER VOSSIUS, Dipi.-Chem. (-6/1992)
`Dr. PAUL TAUCHNER. Dipi.-Chem.
`Dr. DIETER HEUNEMANN, Dipi.-Phys.
`Dr. PETER A. RAUH, Dipi.-Chem.
`Dr. GERHARD HERMANN, Dipi.-Phys.
`JOSEF SCHMIDT, Dipl.-lng.
`Dr. HANS-RAINER JAENICHEN, Dipi.-Biol.
`Dr. ALEXA VON UEXKOLL, M. Sc.
`Dr. RUDOLF WEINBERGER. Dipi.-Chem.
`Dr. WOLFGANG BUBLAK, Dipi.-Chem.
`
`EUROPEAN PATENT ATTORNEY
`Dr. RENATE BARTH, Dipi.-Chem.
`
`RECHTSANWAL TIN
`HELGA TREMMEL
`
`SIEBERTSTRASSE 4
`81675 MUNCHEN
`GERMANY
`TELEPHONE: (089) 47 40 75
`CABLE: BENZOLPATENT MONCHEN
`TELEX: 529453 VOPAT D
`TELEFAX: (089) 4 70 60 53
`
`December 28, 1994
`BajFr
`
`in
`the Patentee
`following observations are made by
`The
`(Opponent I)
`response to the oppositions filed by Boehringer
`by Biotest
`on December 23, 1993 and the opposition filed
`(Opponent II) on January 3, 1994:
`
`1. The references cited during the opposition proceedings
`
`The following references were cited by Opponent I
`012) and Opponent II (Dl to D6):
`
`(01 to
`
`u.s. Patent No. 4,358,535 (01)
`
`Clinica Chimica Acta 81: 1-40 (1977)
`
`(02)
`
`Proc. Natl. Acad. Sci USA vol. 78, pp. 6633-6637,
`November 1981 (03)
`
`Proc. Natl. Acad. Sci. USA. vol. 79, pp. 7331-7335,
`December 1982 (04)
`
`Proc. Natl. Acad. Sci. USA vol., 79, pp. 4381-4385, July
`1992 (05)
`
`BAYERISCHE VEREINSBANK NR. 32920888, BLZ 70020270 ·DEUTSCHE BANK A.G. MONCHEN, NR.65/57342, BLZ 70070010
`POSTGIROAMT MONCHEN. NR. 129600-809, BLZ 70010080, V.A.T. NO. DE 130 751 524
`
`Page 1 of 22
`
`HOLOGIC EXHIBIT 1029
`Hologic v. Enzo
`
`

`
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`
`Proc. Natl. Acad. Sci. USA, vol. 80, pp. 4045-4049, July
`1983 (06)
`
`EP-A-0 063 879 (07)
`
`DE-A-29 15 082 (08)
`
`DE-A-27 24 486 (09)
`
`US-A-4,271,140 (010)
`
`Journal of Histochemistry and cytochemistry Vol. 27, 8,
`1131-1139 (1979) (011)
`
`Biochemie 1972, 54, 837-842 (012)
`
`EPA-82301804.9 (01)
`
`EPA-82303701.5 (02)
`
`US-Patent No. 4,358,535 (03)
`
`(1980), pp. 485-490,
`Exp. Cell Res. 128
`al.,
`"A
`new method
`for
`fluorescence
`localization of specific DNA
`sequences
`hybridization of fluorochrome-labeled RNA"
`
`J. Bauman et
`microscopical
`by
`in situ
`(04)
`
`GB-A-2,019,408 (05)
`
`GB-A-2,026,690 (06)
`
`01 is identical to 03 and 07 is identical to 01.
`
`2. The subject matter of EP-B-117 440
`
`2.1. The technical problem underlying the present invention
`is to provide a method for detecting a polynucleotide
`sequence.
`
`the
`is achieved by a method whereby
`The solution
`sequence is fixed to a solid support in a non-porous,
`transparent or translucent system, a hybrid is formed
`between the sequence and a polynucleotide probe having
`a chemical label which comprises a signalling moiety
`capable of generating a soluble signal, directly or
`indirectly, and
`the soluble signal is generated and
`
`Page 2 of 22
`
`

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`3
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`L-~
`
`detected. The essential features of the claimed process
`are outlined in claim 1 which reads as follows:
`
`-
`
`"A method for detecting a polynucleotide sequence which
`comprises:
`solid
`a
`to
`sequence
`-
`fixing said polynucleotide
`support which comprises or is contained within a
`transparent or
`translucent system,
`such
`that
`the
`polynucleotide is
`in a single-strand
`form and is
`capable of hybridizing to complementary nucleic acid
`sequences;
`forming an entity comprising said polynucleotide
`sequence
`hybridized
`to
`a
`polynucleotide
`or
`oligonucleotide probe, said probe having attached
`thereto a chemical
`label comprising a
`signalling
`moiety capable of generating a signal; and
`generating and detecting a signal, characterized in
`that the transparent or translucent system is a non(cid:173)
`porous system and the generated signal is a soluble
`signal."
`
`Dependent claims 2 to 16 and 20 to 25 are directed to
`specific embodiments of features of claim 1 .
`
`Claims 17 to 19 are directed to a device and a kit,
`respectively, to be used in the method of claim 1.
`
`Claim 26 is directed to a transparent or translucent
`solid, non-porous substrate, and reads as follows:
`
`transparent
`"A
`non-porous
`solid,
`translucent
`or
`substrate having
`fixed
`thereto
`a
`double-stranded
`polynucleotide, one of
`the strands of said double(cid:173)
`stranded
`polynucleotide
`being
`a
`non-radioactive
`chemically labelled polynucleotide or comprising a non(cid:173)
`radioactive
`chemically-labelled
`nucleotide
`as
`a
`nucleotide component of said one strand, wherein said
`
`•
`
`•
`
`Page 3 of 22
`
`

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`4
`
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`
`)o
`
`labelled polynucleotide comprises or has
`chemically
`attached
`thereto
`a
`chemical
`label
`comprising
`a
`signalling moiety which generates a
`soluble signal
`which is detected spectrophotometrically."
`
`Claims 27 to 28 are specific embodiments of the subject
`matter of claim 26.
`
`Claim 29 is also directed to a method for detecting a
`polynucleotide sequence and comprises
`the
`following
`steps:
`
`probe
`a polynucleotide or oligonucleotide
`- fixing
`label
`has
`attached
`thereto
`a
`chemical
`which
`comprising a signalling moiety capable of generating
`a signal to a solid support which comprises or is
`contained within a transparent or translucent system
`such that said probe is in single-stranded form and
`is capable of hybridizing to complementary nucleic
`acid sequences;
`forming an entity comprising said probe hybridized to
`said polynucleotide sequence, and,
`generating and detecting a signal, characterized in
`that the transparent or translucent system is non(cid:173)
`porous and the generated signal is a soluble signal.
`
`-
`
`3.
`
`The patentability of the subject matter of the patent
`in suit
`
`3.1. The Opponents,
`and Biotest
`I)
`(Opponent
`Boehringer
`maintain that the present patent is
`(Opponent
`I I) ,
`unpatentable over the prior art for the
`same reasons
`that were
`considered
`and
`dismissed
`during
`the
`prosecution of the present patent and its corresponding
`US Patent. The references cited by the Opponents are
`to or
`either
`identical
`less
`relevant
`than
`the
`
`•
`
`Page 4 of 22
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`5
`
`• •
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`•• •
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`•
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`
`~ \
`
`the Examining
`and considered by
`references cited
`Division during substantive examination. The references
`were overcome by Patentee's arguments and amendments to
`the claims and found not to stand in the way of the
`patentability of the invention. Essentially, Opponents
`are re-raising and re-arguing prior art work that was
`distinguished to the satisfaction of the European and
`US Patent Examiners.
`
`Specifically, both opponents cited the work of David
`Ward and rely heavily on articles published by him and
`his colleagues to support their arguments
`that
`the
`claimed
`invention
`is unpatentable.
`In
`fact, Oppo(cid:173)
`nent's I entire argument is based on David Ward's work
`since all the primary references cited by this Opponent
`for both
`lack of novelty and
`inventive step were
`authored or co-authored by David Ward. See Opponent's I
`opposition papers and cited references 03, 04, 05, 06
`and 07. Likewise, Opponent II cites the European patent
`application wherein David Ward is named as an inventor,
`see Dl of Opponent's II enclosures, as does Opponent I
`(see reference 07); a
`reference that was considered
`repeatedly during prosecution of the contested patent.
`
`David Ward's work led to the discovery that nucleic
`acids could be
`labelled
`in positions
`that do not
`interfere with the hybridization ability of the acids.
`The inventive aspects of this work are best described
`by European patent EP 63,879~and u.s. Patent No.
`5,328,824, of which patentee is the exclusive licensee.
`Patentee's licensee status as to the Ward patents give
`it a thorough and unique understanding of the work and
`the cited Ward, et al., publications.
`
`The Ward articles teach nucleic acid probes labelled in
`non-destructive positions which
`can
`be
`used
`to
`hybridize
`to specific
`target sequences of nucleic
`
`Page 5 of 22
`
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`6
`
`. ••
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`
`for
`a process
`acids. The articles also disclose
`enzymatically incorporating a label into nucleic acids.
`The detection systems of the Ward articles are based on
`the generation of a signal which is localized and
`precipitated. In fact, these are the only systems which
`would be feasible for the objectives of the articles,
`which is to
`label and
`localize specific sequences.
`Transparent or
`translucent, non-porous systems
`that
`produce soluble signals certainly are not taught by the
`Ward articles since such systems would not perform the
`objective of
`localizing nucleic
`acid
`sequences.
`Moreover, although some of the articles may suggest
`using a transparent, non-porous system (e.g. a slide)
`these characteristics are not taught to be requirements
`of the disclosed systems; some have them, some don't.
`And nowhere is it suggested that such systems be used
`with labels that generate soluble signals. Thus,
`the
`cited references teach away from the instant invention.
`
`3.2. Arguments for patentability to counter opposition I
`
`3.2.1. Novelty
`
`Opponent I argues lack of novelty of claim 26 based
`on 03, 04, 05 and 06. As previously noted in 3.1, all
`of
`these cited
`references were authored or co(cid:173)
`authored by David Ward.
`
`Claim 26 is directed to a transparent or translucent,
`solid, non-porous substrate having fixed
`to it a
`double-stranded polynucleotide,
`in which one of the
`strands comprises a chemical label that comprises a
`signalling moiety which generates a soluble signal
`which is detected spectrophotometrically.
`
`that reference 03 discloses a
`argues
`I
`Opponent
`method of gene mapping by in-situ hybridization of
`
`Page 6 of 22
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`7
`
`. ••
`•• • .
`•
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`
`••
`•
`• •
`• • •
`• ••••••
`•
`•
`
`.
`
`..
`
`by
`is
`biotin-labelled probes wherein detection
`antibiotin antibody-alkaline phosphatase. Opponent I
`assumes and asserts that the signals generated in the
`methods of 03 are soluble by referencing 02, a review
`article of enzyme-immunoassays
`for proteins which
`states
`that alkaline phosphatase
`is capable of
`generating a soluble signal.
`
`Reference 03 discloses a process for enzymatically
`incorporating a
`label into nucleic acid probes for
`in-situ hybridization with
`target
`sequences,
`and
`detection of the labelled, bound probes by detection
`systems that require a signal which is localized and
`a precipitate -- e.g. dot or blot systems. 03 teaches
`away
`from
`the
`instant case
`since
`the
`signals
`generated
`in
`the methods and
`systems of 03 are
`required to be a localized signal or a precipitate.
`03 does not disclose or suggest, in any manner, the
`generation of
`a
`soluble
`signal, or
`a
`system,
`substrate or method
`in which a soluble signal is
`generated
`transparent
`or
`and
`detected
`in
`a
`translucent, non-porous system.
`
`The abstract of 03, lines 12-14, specifically states
`that the described biotin-labelled polynucleotides
`can be selectively immunoprecipitated in the presence
`of antibiotin antibody and Staphylococcus aureus
`Protein A. Additionally, in the passage emphasized by
`Opponent I, page 6637, column 2,
`lines 1-11,
`the
`reference states:
`
`"Our studies have led to the development
`of a rapid method of gene mapping by in
`situ hybridization
`that uses
`rabbit
`antibiotin
`antibody
`and
`fluorescein(cid:173)
`labeled goat anti-rabbit IgG to identify
`the loci of hybridized Bio-DNA probes
`and
`a
`histochemical
`procedure
`for
`detecting biotin-labeled
`sequences on
`nitrocellulose filters that uses anti-
`
`Page 7 of 22
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`8
`
`. ••
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`
`. . •
`• .
`• . .
`• •• . ...
`•
`•
`
`•
`••
`
`~Lt
`
`conjugates
`phosphatase
`body-alkaline
`(unpublished data). Second, the ability
`to synthesize immunogenic DNAs (and to a
`lesser extent RNAs) enzymatically, both
`in purified
`in vitro systems and
`in
`crude cell lysates, may allow the use of
`immunoprecipitation techniques".
`(empha(cid:173)
`sis added)
`
`It is well known in the art that the histochemical
`procedure referred to in the article results in a
`precipitated signal within the cellular morphology.
`Likewise,
`the
`reference
`to
`gene mapping
`and
`determining the
`loci of hybridized Bio-DNA probes
`indicates a precipitated, localized signal. Thus, 03
`is limited to the generation of an insoluble product.
`
`the
`the portion of
`also emphasizes
`I
`Opponent
`reference which explains that biotin-labeled polymers
`can
`be
`used
`in
`conjunction with
`appropriate
`immunofluorescent,
`immunohistochemical, or affinity
`reagents
`for
`detecting or
`localizing
`specific
`sequences in chromosomes, cells, tissue sections and
`blots. Again the passage actually supports the fact
`that 03 generates an insoluble signal. Quite clearly,
`the
`in-situ hybridization methods of 03, while
`capable of being performed on non-porous,
`solid
`supports that may be (but need not be) transparent or
`translucent, has to be limited to the generation of a
`localized signal. In fact, 03 states on page 6633,
`lines 14-17 that:
`
`the
`tenacity of
`"The specificity and
`biotin-avidin complex has been exploited
`to develop methods
`for
`the visual
`localization
`of
`specific
`proteins,
`lipids and carbohydrates on or within
`cells." (emphasis added].
`
`By contrast, the signal of the contested patent (and
`specifically of claim 26) is not localized, nor is it
`
`Page 8 of 22
`
`

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`•
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`•
`•
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`
`. ••
`•• • .
`• . •
`..
`•
`•
`•
`• •• ••••
`
`••
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`•
`
`. •
`• . .
`• • • ....
`
`•
`••
`
`•
`•
`
`a precipitate, but it is required to be soluble and
`detected in a liquid media visually or spectrophoto(cid:173)
`metrically. The signal of 03 is only capable of being
`detected through precipitation or localization within
`the
`confinement of
`a
`cellular or
`chromosomal
`structure. This
`is completely different
`from
`the
`present invention.
`
`Opponent's I reliance on reference 02 to assert that
`the enzymes used in the procedure of 03 are capable
`of generating
`soluble
`signals
`is
`inappropriate.
`Regardless of whether
`the enzyme
`is capable of
`generating a soluble signal, the detection procedures
`disclosed in 03 are not suitable for the generation
`signal. Combining
`and detection of
`soluble
`a
`inadmissible in the
`reference 03 and 02
`(which is
`does not
`teach or
`assessment of novelty anyway)
`suggest a
`system,
`substrate or method wherein a
`soluble signal can be generated and detected.
`
`Opponent I also asserts that the disclosed procedures
`of reference 04 and reference 05 destroy the novelty
`of claim 26.
`04 discloses
`the hybridization of
`biotinated nucleic acid probes with nucleic acids in
`tissue samples; 05 discloses a method of detecting
`Drosophila polytene chromosomes on glass supports
`using biotin-labeled probes. The detection methods of
`04 and 05 use peroxidase. Again, Opponent I relies on
`reference 02 to assert that the signal generated by
`the techniques of 04 and 05 may be a soluble signal.
`As pointed out with respect to 03, whether the enzyme
`employed is capable of generating a soluble signal
`does not mean that the detection procedure disclosed
`in 04 and 05 are sui table for the generation and
`detection of a soluble signal. They are not.
`
`Page 9 of 22
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`••
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`• • . . •
`•• •
`• •
`..
`•
`•
`• • •
`... . ...
`•
`•
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`•
`•
`•
`•••• ••
`10
`
`•• •
`
`• . •
`• . .
`• . .. ....
`
`•
`••
`
`•
`•
`
`Throughout the references, 04 and 05 indicate that
`the disclosed procedures are for localizing specific
`sequences; see for instance:
`
`the last sentence of 04 's abstract
`"The
`procedure described preserved morphological
`detail yet is compatible with hybridization
`conditions and
`reveals
`the disposition of
`actin mRNA during gene expression" (emphasis
`added);
`
`lines 14-17
`page 7334 of 04, 1st col.,
`"Similar results have been obtained by using
`avidin complexed to biotinated peroxidase; in
`this variation of the method the sites of
`hybridization
`are
`localized
`through
`the
`deposition of
`insoluble
`enzyme products"
`(emphasis added);
`
`"A
`the first sentence of 05's abstract
`DNA
`method
`is described
`for
`localizing
`sequences hybridized
`in situ to Drosophila
`polytene chromosomes" (emphasis added)
`
`12-16 of 05's abstract
`Lines
`"This
`immunological approach offers four advantages
`... the time required to determine the sites
`of hybridization is decreased .•. "
`(emphasis
`added);
`
`of
`under Detection
`05,
`of
`4382
`Page
`third paragraph -
`"Histo(cid:173)
`Hybridized Probe,
`chemical detection was done by ... " (emphasis
`added) ;
`
`4383
`Page
`paragraph
`
`second
`second col.,
`05,
`of
`"It was our
`intention to use
`
`Page 10 of 22
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`11
`
`.. •
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`. .. . ...
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`
`indicator
`various
`to
`conjugated
`avidin
`molecules in order to localize biotin-labeled
`hybridization probes" (emphasis added).
`
`and 05 clearly
`figures of 04
`In addition,
`the
`these references
`the procedures of
`indicate that
`result in the deposition of precipitates, and not the
`generation of a soluble signal.
`
`I argues
`Lastly, with respect to novelty, Opponent
`that reference 06 destroys the novelty of claim 2 6
`even
`though,
`as Opponent
`I
`acknowledges,
`the
`reference was published after the priority date of
`the present patent. Opponent
`I
`argues
`that
`the
`contested patent is not entitled to the priority date
`(and hence the reference is prior art) because the
`claimed feature "generating a soluble signal" is not
`disclosed in U.S. Serial No. 461,469Y the pr~9rity
`document.
`
`the
`throughout
`I position,
`Contrary to Opponent's
`priority document it is indicated that the preferred
`methods
`of detection
`involve
`spectrophotometric
`techniques which permit quantitative determination of
`the bound probes. See for instance page 22, lines 12-
`21 of the priority document. The originally filed
`claims also clearly
`indicate
`a
`preference
`for
`embodiments wherein the substrate or method permits
`the transmission of light through the substrate and
`solution containing
`the bound probes
`for color
`observation or colorimetric determination. See for
`instance, originally filed claims 34, 36, 38, 56, 62
`and 69 of the priority document. Such descriptions
`can only convey
`to one skilled
`in
`the art
`the
`generation
`and detection of
`a
`soluble
`signal.
`Accordingly,
`the priority document explicitly and
`inherently discloses to one skilled in the art all
`
`Page 11 of 22
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`•••• 1!
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`)<6
`
`•
`•
`
`including
`the limitations of the claimed invention,
`the limitation of "generating a soluble signal". Thus
`reference 06
`is not proper prior art against the
`subject Patent.
`
`Besides not being a proper prior art reference, 06 is
`distinguishable
`from
`the claimed
`invention. The
`the hybridization of nucleic
`reference discloses
`probes
`on
`acids
`with
`biotin-labelled
`DNA
`nitrocellulose wherein
`the
`signalling moiety
`is
`horseradish peroxidase or alkaline phosphatase. As
`pointed out
`in
`its abstract,
`the
`reference
`is
`directed to the generation of an unsoluble product;
`see lines 7-10, "··· which results in the deposition
`of a purple precipitate at the sites of hybridiza(cid:173)
`tion" (emphasis added). As with the other references,
`the
`insolubility of
`the generated signal
`is
`a
`requirement of the disclosed system \and needed to
`fulfill the localization objective.
`
`3.2.2. Inventive step
`
`lack an
`I also alleges that claims 1-29
`Opponent
`inventive step when examined in light of references
`01 through 012. With respect to references 02-06, the
`remarks presented hereinabove are equally applicable
`to Opponent's
`I
`lack of
`inventive step argument.
`Opponent's
`I
`argument
`is primarily
`based
`on
`references 01 and 07
`taken together with reference
`02, which as mentioned above
`is simply a
`review
`article indicating that certain enzymes are capable
`of producing soluble or insoluble signals when used
`in immunoassays for proteins and antibodies.
`
`Reference 07, like reference 03-06, is a publication
`by David Ward and his colleagues: EP Patent No .
`./
`63,879, to which patentee is an exclusive licensee.
`
`Page 12 of 22
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`.. •
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`. .. ....
`•
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`
`3q
`
`references 03-05
`for
`remarks presented above
`The
`for 03)
`are equally
`(especially
`those presented
`applicable
`to 07. Additionally,
`reference 07 was
`repeatedly considered during both the European and
`u.s. prosecutions and
`found not to be a bar
`to
`patentability. Nowhere does 07 disclose a method or
`substrate wherein a soluble signal is generated and
`detected in a transparent or translucent, non-porous
`system. Combining the reference with 02, which only
`indicates
`that certain
`enzymes
`are
`capable of
`producing a soluble signal, does not provide a method
`or system which meet the claim limitations.
`
`Similarly, reference 01 was raised during both the
`European and u.s. prosecutions and determined not to
`be
`a
`bar
`to patentability.
`01
`describes
`a
`hybridization method
`in which clinical samples are
`spotted
`onto
`an
`inert
`support,
`such
`as
`a
`nitrocellulose filter. It is especially suitable for
`specific
`screening
`bacterial
`colonies
`for
`a
`may be
`polynucleotide sequence. The cell number
`increased by placing
`the support on
`a
`nutrient
`medium. In order to allow diffusion of nutrients, the
`support has to be porous. The preferred method of
`labeling is with radionuclides (column 3, lines 25-
`27) . This would allow for fast screening of many
`samples, as the authors point out in column 9, lines
`1-5: "Numerous samples may be spotted on the same
`filter
`and
`processed
`simultaneously,
`greatly
`increasing
`clinical
`efficiency.
`The
`technique
`therefore offers significant opportunities for large
`scale epidemiological and surveillance studies". In
`such
`a method,
`the detectable
`signal must be
`insoluble.
`The
`use
`of
`labels
`other
`than
`radionuclides,
`such
`as
`enzymes
`and
`fluorescent
`compounds, would also generate an insoluble signal,
`
`Page 13 of 22
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`14
`
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`~0
`
`e.g. , deposition of colored precipitates, according
`to this method.
`
`Additionally, 01 does not disclose a transparent or
`translucent, non-porous system
`in which a soluble
`signal may be generated. Accordingly,
`the claimed
`method, by utilizing a solid support and a soluble
`signal
`in
`a
`transparent,
`non-porous
`system,
`is
`unobvious from the disclosure of 07, either alone or
`in combination with 02. The invention of the present
`patent allows for accurate quantitation of the target
`sequence by visual or spectrophotometric techniques.
`There
`is no
`suggestion or disclosure
`in 01 of
`accurately quantitating the target polynucleotide by
`means of a soluble signal
`in a
`transparent, non(cid:173)
`porous system.
`
`the combining of references 01 and 02 is
`Moreover,
`improper. Opponent I is using hindsight more than 10
`years after the invention to say that it would have
`been obvious to combine immunoassays for proteins and
`antibodies, which can use a soluble signal, with DNA
`use was
`far
`from
`sequence-specific probes.
`such
`obvious since, at the time, the
`assays for sequence(cid:173)
`specific nucleic acid probes
`were concerned with
`localization. This argument of combining immunoassays
`for proteins with nucleic acid probes was raised and
`dismissed in the past and lacks merit in the present
`oppositions.
`
`are
`The remaining references cited by Opponent
`I
`secondary references, cited for specific propositions
`such as the use of ligand/receptor interactions in
`the
`the detection of nucleic
`acids. None of
`references, either alone or in combination with the
`cited primary
`references, disclose or suggest
`a
`detection system wherein a probe is hybridized to the
`
`Page 14 of 22
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`•
`•
`•
`•••• is
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`••
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`•
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`.. •
`• • .
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`•
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`4\
`
`target sequence and generates a soluble signal in a
`transparent, non-porous system.
`
`3.3. Arguments for patentability to counter opposition II
`
`3.3.1. Objections under Article 100(c) EPC
`
`terms "non-porous
`the
`that
`3.3.1.1. Opponent II argues
`are
`not
`substrate"
`or
`"non-porous
`system"
`is
`no
`there
`that
`literally
`disclosed
`and
`explanation in the papers as originally filed or
`in
`the patent
`specification what
`is
`to be
`understood by these terms.
`
`First of all, with respect to this definition
`there appears to be a misunderstanding. The terms
`"system" and "substrate" are not
`the
`same or
`interchangeable. The same is true for the terms
`"sy~tem" and "sup~or{.i. As set forth in claim 1,
`the SJmPC?t:t comprises or is contained within a
`system. The disclosure indicates that the support
`nitrocellulose) or non(cid:173)
`may be RRl;"Ol.!~
`(such as
`but the system must be
`porous
`(such as glas~),
`non-porous.
`
`Furthermore, it is not necessary for a term to be
`literally disclosed in the application as filed,
`rather
`an
`amendment
`should
`be
`regarded
`as
`introducing new matter only "if the overall change
`in the content of the application .... results in
`the
`skilled
`person
`being
`presented with
`information
`which
`is
`not
`directly
`and
`unambiguously derivable
`from
`that previously
`presented by the application, even when account is
`taken of matter which is implicit to a person
`skilled in the art
`in what has been expressly
`mentioned. " (Guidelines c VI. 5. 4. ) . However, the
`
`Page 15 of 22
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`3.3.1.2.
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`16
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`non-porous property of the system is self-evident
`from the disclosure and clearly derivable for a
`person skilled
`in the art. The claimed method
`requires
`the generation of
`a
`soluble signal.
`Accordingly,
`by necessity,
`this
`requires
`the
`presence of a solution which, in turn, requires a
`container or system that is non-porous. In some
`embodiments of
`the
`invention,
`the support
`is
`porous, such as nitrocellulose, and must therefore
`be contained
`in a non-porous system.
`In other
`embodiments
`the support may be
`the system,
`in
`which case the support is non-porous and contains
`the solution
`in which
`the soluble signal
`is
`generated.
`
`the claim
`that
`furthermore argues
`Opponent II
`limitation of "soluble signal" is not sufficiently
`application. This
`disclosed
`the original
`in
`raised during
`objection has already been
`the
`examination proceedings and has been successfully
`overcome by applicants line of argument and has
`been resolved to the Examiner's satisfaction. In
`the
`following
`the arguments set
`forth during
`substantive examination and
`found persuasive by
`the Examiner are repeated. The feature "soluble
`signal" can be derived, e.g. from the disclosure
`on page 21, lines 9 to 26 where spectrophotometric
`and ELISA
`techniques are discussed as preferred
`practices of the invention. It is known in the art
`that techniques, such as spectrophotometric-based
`and ELISA techniques are premised upon the use of
`a solution. It is further disclosed on page 53,
`lines 1 to 3 where it is stated that "the enzyme
`reaction was terminated by adding 1. o ml of 0. 5%
`sodium bicarbonate and absorbance was determined
`at A3 00 . " Absorbance of a substrate can only be
`measured
`in solution. This line of argument is
`
`Page 16 of 22
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`• • . •
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`4~
`
`still valid and has not been refuted by Opponent
`II. We also refer to our earlier remarks regarding
`Opponent's I challenge of priority.
`
`3.3.1.3. Opponent II further alleges that claim 1 violates
`Article 100 (c) EPC by omitting steps which are
`originally disclosed. We do not think that this
`objection is justified. According to the EPC and
`the jurisdiction of the EPO, a claim must clearly
`define the object of the invention, i.e. indicate
`all the essential features of it. This, however,
`does not mean
`that a
`reference
`to a specific
`passage of the original disclosure necessitates
`the incorporation of all features mentioned there
`into the claims as long as the above requirement
`is fulfilled, which
`is the case here, as all
`essential features of the invention are set forth
`in claim 1.
`
`3.3.3.
`
`Objection under Article lOO(b) EPC
`
`IJ
`
`Opponent II alleges that the contested patent does
`not
`disclose
`the
`invention
`in
`a manner
`sufficiently clear and complete for those skilled
`in the art to carry it out, and refers to the
`decision T 409/91 which allegedly states that the
`requirements of Article 83 EPC will be satisfied
`only if the skilled person is able to carry out
`the
`invention within the entire scope claimed.
`However,
`this decision is not relevant to
`the
`present case. It concerns a completely different
`field and the question discussed therein does not
`apply to the present case, although Opponent II
`has tried to fabricate a relationship. He points
`out
`that
`the application contains hardly any
`example or no examples at all with respect to
`eukaryotic cells. First of all, examples are not
`
`Page 17 of 22
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`18
`
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`
`Lt'-(-
`
`an absolute requirement as Rule 27 EPC states that
`the description should contain examples
`"where
`appropriate".
`Furthermore,
`according
`to
`established case law an invention is considered to
`be sufficiently disclosed if at least one way is
`clearly indicated enabling the person skilled in
`the art to carry it out (see, e.g., T 292/85, this
`view has been confirmed by similar statements in
`later decisions). Based on a calculation with
`reference
`to
`the
`lambda
`genome, Opponent
`II
`alleges that it is not possible to detect specific
`polynucleotide
`sequences
`in
`eukaryotic cells
`according to the claimed method.
`
`The argument is besides the point. Opponent II is
`apparently arguing
`that one
`cannot detect
`a
`specific sequence
`in a eukaryotic cell by
`the
`claimed method because the sequence is in too low
`of a concentration and too much of the target DNA
`would have to be bound to the support.
`
`Opponent's II underlying assumptions, however, are
`fatally flawed. In his calculations, Opponent II
`assumes there is one probe per sequence and one
`enzyme
`(signalling
`moiety)
`per
`probe.
`Conveniently,