Ex Parte Chu

Board of Patent Appeals and Interferences

Dec 15, 2011

11325556 (B.P.A.I. Dec. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HSIEN-JUE CHU
__________

Appeal 2011-008116
Application 11/325,556
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a nasal
equine composition comprising a live non-encapsulated attenuated
Streptococcus equi in combination with saponin. The Patent Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-008116
Application 11/325,556
2
Claims 1, 5, 6, and 21-23 are on appeal. Appellant argues claims 1,
22 and 23 separately. Independent claim 1 and dependent claims 22 and 23
are representative and are reproduced in the “Claims Appendix” of
Appellant’s Brief (App. Br. 20-21).
The Examiner rejected the claims as follows:
• claim 1 under 35 U.S.C. § 103(a) as unpatentable over Timoney,1
Hartford,2 and Gupta;3 and
• claims 1, 5, 6, and 21-23 under 35 U.S.C. § 103(a) as unpatentable
over Timoney, Hartford, and Estrada.4
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusions that (a) the subject matter of
Appellant’s claim 1 is unpatentable over the combination of Timoney,
Hartford, and Gupta; and (b) the subject matter of Appellant’s claims 1, 5, 6,
and 21-23 are unpatentable over the combination of Timoney, Hartford, and
Estrada. Accordingly, we sustain the Examiner’s rejections of each of these
claims for the reasons set forth in the Answer, which we incorporate herein
by reference.
For emphasis only, we provide the following: The combination of
Hartford and Gupta, as well as the combination of Hartford and Estrada,
provided motivation to combine an adjuvant with a Streptococcus equi

1 US Patent No. 5,183,659 issued to John F. Timoney, Feb., 2, 1993.
2 Patent Application Publication No. EP 0786518 A1 by Orla Marie Hartford
et al., published Jul. 30, 1997.
3 Rajesh K. Gupta et al., Adjuvants for human vaccines-current status,
problems and future prospects, 13 VACCINE1263-1276 (1995).
4 US Patent No. 5,597,807 issued to Alberto Estrada et al., Jan. 28, 1997.

Appeal 2011-008116
Application 11/325,556
3
vaccine and taught that Quil A (saponin) was known in the art and widely
used as an adjuvant in vaccines. (Ans. 4-6 and10, citing Campbell5 as
rebuttal evidence.) Whether administered parenterally or intranasally, a
composition comprising S. equi and saponin would have provided protective
immunity against S. equi infection following S. equi challenge in a horse
compared to an unimmunized horse, as required by the claimed invention.
(See App. Br. 22, Ex. 1, Dec. of Wumin Li, Ph.D., dated Jul. 17, 2007, ¶¶ 3-
4.) Moreover, while Dr. John F. Timoney stated that “by co-administering
with an adjuvant I would be concerned about the risk of interfering with the
infectious response of S. equi strain 709-27” (App. Br. 22, Ex. 4, Dec. of
Dr. John F. Timoney, dated June 15, 2010, ¶ 4) the record does not provide
any evidence that saponin would interfere in this manner. (See, e.g., Li Dec.
¶¶ 3-4.)

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

clj

5 J.B. Campbell et al., Saponin, 143 RES. IN IMMUNOLOGY 526-530 (1992).