Ex Parte Byrum

Board of Patent Appeals and Interferences

Jun 2, 2011

11491371 (B.P.A.I. Jun. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH R. BYRUM
____________

Appeal 2011-002167
Application 11/491,371
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 20, 23-26, 28-31,
and 50-52 (App. Br. 3; Ans. 2).1 We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to a substantially purified nucleic acid
molecule. Claims 20, 24-26, and 50 are representative and are reproduced in
the “CLAIMS APPENDIX” of Appellant’s Brief (App. Br. 15-16).

1 Pending “[c]laims 32-44 are withdrawn” from consideration as directed to
a non-elected invention (App. Br. 3; see also Ans. 2).
Appeal 2011-002167
Application 11/491,371

2
Claims 20, 23-26, 28-31, and 50-52 stand rejected under 35 U.S.C.
§ 101 and the enablement provision of 35 U.S.C. § 112, first paragraph, as
not supported by either a specific, substantial, or credible asserted utility or a
well-established utility.
Claims 24-26 stand rejected under the written description provision of
35 U.S.C. § 112, first paragraph.
We affirm.

Utility:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s finding that Appellant’s claimed invention lacks patentable
utility due to its not being supported by a specific, substantial, and credible
utility or, in the alternative, a well-established utility?
ANALYSIS
Upon consideration of the Examiner’s factual findings and analysis, as
well as, each of Appellant’s contentions, we find no error in the Examiner’s
findings, analysis, or response to Appellant’s contentions. Accordingly, we
adopt the Examiner’s factual findings, analysis, and response to Appellant’s
contentions as our own and incorporate them by reference. We affirm for
the reasons set forth in the Examiner’s Answer.
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s finding that Appellant’s claimed invention lacks patentable
utility due to its not being supported by a specific, substantial, and credible
utility or, in the alternative, a well-established utility. The rejection of
Appeal 2011-002167
Application 11/491,371

3
claims 20 and 502 under 35 U.S.C. § 101 and the enablement provision of 35
U.S.C. § 112, first paragraph is affirmed. Claims 23-26 and 28-31 fall
together with claim 20. Claims 51 and 52 fall together with claim 50.

Written description:
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s conclusion that Appellant’s Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
Upon consideration of the Examiner’s factual findings and analysis, as
well as, each of Appellant’s contentions, we find no error in the Examiner’s
findings, analysis, or response to Appellant’s contentions. Accordingly, we
adopt the Examiner’s factual findings, analysis, and response to Appellant’s
contentions as our own and incorporate them by reference. We affirm for
the reasons set forth in the Examiner’s Answer.

2 We recognize Appellant’s “request that the Board reverse the rejection of
claims 50-52 under 35 U.S.C. § 101” (App. Br. 11). We assume that
Appellant intended to refer to all claims rejected under this ground of
rejection, e.g., claims 20, 23-26, 28-31, and 50-52. The Examiner’s Answer
addressed all rejected claims. In this regard, we note the Examiner’s
separate treatment of claims 50-52 (Ans. 5). Given this record, we elected to
treat Appellant’s reference to claims 50-52 as a separate argument of these
claims. Therefore, the claims stand or fall in two groups: I. claims 20, 23-
26, and 28-31; and II. Claims 50-52. Claims 20 and 50 are representative.
Appeal 2011-002167
Application 11/491,371

4
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s conclusion that Appellant’s Specification fails to provide written
descriptive support for the claimed invention. The rejection of claims 24-26
under the written description provision of 35 U.S.C. § 112, first paragraph is
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

DEA
EG
TRS

cdc