Ex Parte Berthet et al

Patent Trial and Appeal Board

Jul 30, 2013

10523114 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANCOIS-XAVIER JACQUES BERTHET,
RALPH BIEMANS, PHILIPPE DENOEL, CHRISTIANE FERON,
CARINE GORAJ, JAN POOLMAN, and VINCENT WEYNANTS
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Appeal 2012-003325
Application 10/523,114
Technology Center 1600
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Before TONI R. SCHEINER, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
immunogenic composition comprising an isolated transferring binding
protein and an isolated Hsf like protein. The Patent Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appeal 2012-003325
Application 10/523,114

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STATEMENT OF THE CASE
Claims 1-8, 13-19, 45-47, and 51-55 are on appeal. Claim 1 is
representative and reads as follows:
1. An immunogenic composition comprising an isolated transferrin
binding protein (Tbp) or antigenic fragment thereof and an isolated Hsf like
protein or antigenic fragment thereof from the same or different Gram
negative bacteria.

The Examiner rejected claims 1-8, 13-19, 45-47, and 51-55 under 35
U.S.C. § 102(b) as anticipated by Berthet.
1

ANTICIPATION
The Examiner found that Berthet taught the claimed composition.
(Ans. 5-6.)
Appellants contend that Berthet does not anticipate the claimed
invention because “the reference discloses a genus of many possible antigen
combinations containing varying numbers of distinct antigens, including 210
possible combinations of two different antigens” without teaching “the
specific combination of an Hsf-like antigen and a Tbp antigen,” as recited by
the claimed invention. (App. Br. 2-3.) We agree with Appellants. See Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008)(“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it

1
Patent Application Publication No. WO 01/09350 A2 by Jacques Francois-
Xavier et al., published Feb. 8, 2001.
Appeal 2012-003325
Application 10/523,114

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cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.”).
Accordingly, we reverse the anticipation rejection.

REVERSED

cdc