Ex Parte Castro-Perez et al

Patent Trial and Appeal Board

Dec 13, 2016

11210977 (P.T.A.B. Dec. 13, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/210,977 08/24/2005 Jose Castro-Perez 67132(49991) 5904
48990 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
12/15/2016 EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
12/15/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE CASTRO-PEREZ, ROBERT PLUMB,
and JANE KIRBY
Appeal 2015-004320
Application 11/210,977
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 28—54. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method, system and computer readable
medium for metabolic analysis. Claim 28 is illustrative:
28. A method comprising the steps of:
subjecting a biological sample to a high resolution mass
spectrometry (MS) analysis;
detecting the ionic masses of ions from said analysis, said
ionic masses forming an initial mass range;
determining mass defect values for the detected ions in
the initial mass range;
Appeal 2015-004320
Application 11/210,977
specifying a first range of mass defect values comprising
a mass defect filter;
discarding detected ions having mass defect values
outside the mass defect filter range;
retaining detected ions having mass defect values within
the mass defect filter range; and
determining species of interest from the retained ions to
detect and identify drug metabolites in the biological sample.
The Reference
Haiying Zhang et al., A software filter to remove interference ions from drug
metabolites in accurate mass liquid chromatography/mass spectrometric
analysis, 38 J. Mass Spectrom. 1110—12 (Oct. 2003) (hereinafter Zhang).
The Rejections
The claims stand rejected as follows: claims 28—54 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention, claims 28—54 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, claims 33 and 39 under 35 U.S.C. § 101 as improperly defining
a method by reciting a use without setting forth any method steps,
claims 28—32, 35—38, 41—44, 46—50, 52, and 53 under 35 U.S.C. § 102(a)
over Zhang and claims 34, 40, 51, and 54 under 35 U.S.C. § 103 over
Zhang.
OPINION
We affirm the rejections under 35 U.S.C. §§ 102(a) and 103, affirm
the rejection under 35 U.S.C. § 112, second paragraph as to claim 45 and
reverse it as to claims 28-44 and 46—54, and reverse the rejections under
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Application 11/210,977
35 U.S.C. § 112, first paragraph, written description requirement and
35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, second paragraph
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mihron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner concludes that the meanings of “mass defect filter” in
claim 28 and “mass filter window” in claim 50 are unclear and that,
therefore, those claims are indefinite (Ans. 7, 8).
The Declaration of Joseph A. Jarrell states that according to the
Encyclopedia of Mass Spectrometry, “‘[t]he mass defect is defined as the
difference between the exact monoisotopic mass of an atom or molecule and
the nominal mass of that atom or molecule’” (Decl. | 8). The mass defect
value is the decimal portion of the mass value (Decl. 112; Spec. 11:20-23).
The mass defect filter, i.e., “filter” or “mass filter window” as referred to in
the Appellants’ Specification, is a user-specified range placed around the
mass defect value to exclude false positives (Spec. 11:20—12:18). Thus, the
Appellants’ claim terms “mass defect filter” and “mass filter window”
circumscribe a particular area with a reasonable degree of precision and
particularity.
The Examiner concludes that claims 33 and 39 recite a use without
reciting any method steps limiting how the use is practiced and, therefore,
are unclear (Ans. 7).
Claims 33 and 39 depend, respectively, from claims 28 and 35 which
recite method steps.
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Application 11/210,977
The Examiner concludes that claims 41 and 47 are unclear as to what
“means” refers and that claims 42-44 and 48 are unclear as appearing to
comprise only a computer with a central processing unit (Ans. 7).
The means in claims 41 and 47 is the corresponding structure
disclosed in the Appellants’ Specification and equivalents thereof. See In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). The Examiner does
not address the structure indicated by the Specification and establish that the
means clauses in claims 41 and 47 are indefinite in view of that structure or
establish that including a limitation to a processor renders claims unclear.
The Examiner concludes that claim 45 is indefinite as lacking
antecedent basis for “the method” (Ans. 7). The Appellants do not challenge
that rejection (App. Br. 21—22).
Accordingly, we affirm the rejection under 35U.S.C. § 112, second
paragraph as to claim 45 and reverse it as to claims 28-44 and 46—54.
Rejection under 35 U.S.C. § 101
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101.
The Examiner concludes that claims 33 and 39 recite a use without
reciting any method steps and, therefore, do not claim patentable subject
matter (Ans. 7).
Claims 33 and 39 depend, respectively, from claims 28 and 35 which
recite method steps.
Hence, we reverse the rejection under 35 U.S.C. § 101.
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Application 11/210,977
Rejection under 35 U.S.C. § 112, first paragraph
To comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, an applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)).
The Examiner finds that the Appellants’ Specification fails to provide
adequate written descriptive support for the claim terms “mass defect
values” and “mass defect filter” (Ans. 4—7).
The Specification shows possession of mass defect values and a mass
defect filter as indicated above regarding the rejection under
35 U.S.C. § 112, second paragraph. Accordingly, we reverse the rejection
under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 102(a)
The Appellants do not challenge the rejections under
35 U.S.C. §§ 102(a) and 103 (Reply Br. 5). We therefore summarily affirm
those rejections.1
DECISION/ORDER
The rejection of claims 28—54 under 35 U.S.C. § 112, second
paragraph is affirmed as to claim 45 and reversed as to claims 28-44
and 46—54. The rejections of claims 28—54 under 35 U.S.C. § 112, first
1 We do not address the Appellants’ alleged priority to provisional
application no. 60/531,044 (filed Dec. 19, 2003) (App. Br. 15—16) because
even if the Appellants are entitled to that priority date, it is after Zhang’s
publication date (Oct. 2003).
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Appeal 2015-004320
Application 11/210,977
paragraph, written description requirement and claims 33 and 39 under
35 U.S.C. § 101 are reversed. The rejections of claims 28—32, 35—38, 41—
44, 46—50, 52, and 53 under 35 U.S.C. § 102(a) and claims 34, 40, 51, and
54 under 35 U.S.C. § 103 are affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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-IN-PART
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