Ex parte Cummins

Board of Patent Appeals and Interferences

Jan 27, 1998

07875630 (B.P.A.I. Jan. 27, 1998)

Application for patent filed April 28, 1992. According1
to appellant, this application is a continuation of
Application 07/044,317, filed April 30, 1987, now abandoned;
which is a continuation of Application 06/688,868, filed
January 4, 1985, now U.S. Patent No. 4,820,515, issued April
11, 1989; which is a continuation-in-part of Application
06/448,951, filed December 13, 1982, now U.S. Patent No.
4,497,795, issued February 5, 1985.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOSEPH M. CUMMINS
________________
Appeal No. 94-2097
Application 07/875,6301
________________
ON BRIEF
________________
Before WINTERS, JOHN D. SMITH and GRON, Administrative Patent
Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 94-2097
Application 07/875,630
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This appeal was taken from the examiner's decision
rejecting claims 2, 3, 5, 7, 8, 10, 21 and 22, which are all
of the claims remaining in the application.
REPRESENTATIVE CLAIM
Claim 21, which is illustrative of the subject matter on
appeal, reads as follows:
21. In a method for treating a warm-blooded vertebrate
to stimulate antiviral, antiproliferative and immunomodulatory
responses by oral administration of interferon whereby
ingested interferon is subjected to the digestive conditions
of the digestive tract of the warm-blooded vertebrate, the
improvement which comprises administering the interferon
orally in solution at about 0.1 to about 1.5 IU/lb of body
weight per dose.
THE REFERENCES
The references relied on by the examiner are:
Cummins, Jr. (Cummins) 5,019,382 May 28, 1991
Hasegawa et al. (Hasegawa) 4,675,184 Jun. 23, 1987
(filed Jan. 4, 1984)
M. B. Tompkins et al. (Tompkins), "Response of Feline Leukemia
Virus-induced Nonregenerative Anemia to Oral Administration of
an Interferon-containing Preparation," 12 Feline Practice no.
3,
6-15 (May-June 1982).
THE ISSUES
The issues presented for review are: (1) whether the
examiner erred in entering a provisional rejection of all the
appealed claims under the judicially created doctrine of
Appeal No. 94-2097
Application 07/875,630
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obviousness-type double patenting over the claims in
application Serial No. 08/009,353; (2) whether the examiner
erred in rejecting all of the appealed claims under the
judicially created doctrine of obviousness-type double
patenting over the claims in U.S. Patent No. 5,019,382; and
(3) whether the examiner erred in rejecting all of the
appealed claims under 35 U.S.C. § 103 as unpatentable over
Hasegawa or Tompkins.
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials: (1) the instant
specification, including all of the claims on appeal; (2)
appellant's Brief before the Board; (3) the Examiner's Answer;
(4) the prior art references cited and relied on by the
examiner; (5) the Stewart Declaration, filed under the
provisions of 37 CFR § 1.132, executed March 20, 1993; (6) the
Cummins Declaration, filed under the provisions of 37 CFR
§ 1.132, executed
March 19, 1993; and (7) the decision, adhered to on
reconsideration, by another merits panel of this Board in
parent application Serial No. 07/044,317 (Appeal No. 90-3336).
Appeal No. 94-2097
Application 07/875,630
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The obviousness-type double patenting rejection over
application Serial No. 08/009,353 is moot. We affirm the
obviousness-type double patenting rejection over the claims of
U.S. Patent No. 5,019,382, and we reverse the rejections under
35 U.S.C. § 103.
Appeal No. 94-2097
Application 07/875,630
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OBVIOUSNESS-TYPE DOUBLE PATENTING
All of the appealed claims stand provisionally rejected
under the judicially created doctrine of obviousness-type
double patenting over the claims of application Serial No.
08/009,353. The Patent and Trademark Office records indicate
that application Serial No. 08/009,353 is abandoned.
Accordingly, this rejection is moot.
All of the appealed claims further stand rejected under
the judicially created doctrine of obviousness-type double
patenting over the claims of U.S. Patent No. 5,019,382.
Appellant does not argue the merits of this rejection, i.e.,
appellant does not controvert the examiner's position that the
appealed claims define merely an obvious variation of an
invention claimed in U.S. Patent No. 5,019,382. See In re
Vogel, 422 F.2d 438,
441-42, 164 USPQ 619, 622 (CCPA 1970). Nor has appellant
favored the record with a proper, timely filed terminal
disclaimer which would overcome the rejection. See
appellant's Brief before the Board, section V, pages 19 and
20. Accordingly, we affirm the double patenting rejection in
Appeal No. 94-2097
Application 07/875,630
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view of the subject matter claimed in U.S. Patent No.
5,019,382.
Appeal No. 94-2097
Application 07/875,630
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THE PRIOR ART REJECTIONS
In considering the rejections under 35 U.S.C. § 103, we
first invite attention to the previous Board decision, adhered
to on reconsideration, in parent application Serial No.
07/044,317 (Appeal No. 90-3336). See the parent file, Paper
Nos. 24 and 26. The claims previously presented were broader
than those now at issue. Compare illustrative claim 1 in
Appeal No. 90-3336 (administering interferon orally at a
dosage of about 0.1 to about 5 IU/lb of body weight) with
claim 21 before us (administering interferon orally in
solution at about 0.1 to about 1.5 IU/lb of body weight per
dose). Furthermore, the Stewart and Cummins Declarations,
filed under the provisions of 37 CFR § 1.132, are new to this
application.
We are therefore presented with a different
administrative record. We have taken a step back and re-
evaluated the patentability of appellant's claims based on
this different record. Cf. In re Willis, 455 F.2d 1060,
1062-63, 172 USPQ 667, 669 (CCPA 1972) (what the Patent Office
concluded in previous cases not binding in subsequent cases,
especially when different factual situations are involved).
Appeal No. 94-2097
Application 07/875,630
-8-
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as unpatentable over Hasegawa or Tompkins. Having
reviewed these references in their entireties, we find that
Hasegawa constitutes the closest prior art relied on by the
examiner. See particularly Hasegawa, column 2, lines 1
through 10. The Tompkins reference is, at best, cumulative.
Respecting the proper interpretation of appellant's
claims, we observe the following passage in In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983):
It is axiomatic that, in proceedings before the PTO,
claims in an application are to be given their
broadest reasonable interpretation consistent with
the specification. . . . [A]nd that claim language
should be read in light of the specification as it
would be interpreted by one of ordinary skill in the
art. [Citations omitted.]
With that principle in mind, we conclude that appellant's
claims are limited to administering interferon orally in
solution at about 0.1 to about 1.5 IU/lb of body weight per
dose per day. See the instant specification, page 11, lines 5
through 10; page 28, lines 4 through 7; page 32, lines 17
through 24; page 33, TABLE 12; and page 34, lines 3 through 9.
In our judgment, any other interpretation would be
inconsistent with the plain import of the specification.
Appeal No. 94-2097
Application 07/875,630
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We shall not pass on the merits of the examiner's prima
facie case of obviousness. We shall assume arguendo, without
deciding, that the claimed method would have been prima facie
obvious over Hasegawa or Tompkins. Nevertheless, in our
judgment, comparative data in appellant's specification serves
to rebut any such prima facie case. See particularly EXAMPLES
3, 4, and 5 in the specification, showing that low oral doses
of human alpha interferon provide unexpectedly superior
antiviral properties on treating cattle. EXAMPLES 3, 4, and 5
adequately represent the narrow low dose range set forth in
the claims (about 0.1 to about 1.5 IU/lb of body weight per
dose per day), and show that low doses of interferon provide
unexpectedly superior antiviral properties compared with
higher doses outside the claimed range. On the strength of
this specification evidence, we reverse the § 103 rejections
based on Hasegawa or Tompkins.
OTHER ISSUE
One further point warrants attention. In the Examiner's
Answer, paragraph bridging pages 2 and 3, the examiner states
as follows:
Appeal No. 94-2097
Application 07/875,630
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It has been determined . . . that the present
application has an effective filing date of
December 13, 1982.
We disagree.
Having carefully reviewed the contents of parent
application Serial No. 06/448,951, filed December 13, 1982, we
find that this application does not provide adequate written
descriptive support for the claims before us. The '951
application does not provide adequate written descriptive
support for the step of administering interferon orally in
solution at about 0.1 to about 1.5 IU/lb of body weight per
dose per day. Accordingly, the appealed claims are not
entitled to benefit of the filing date of this parent
application. See In re van Langenhoven, 458 F.2d 132, 136-37,
173 USPQ 426, 429 (CCPA 1972).
We hold that the examiner's finding in the Answer,
sentence bridging pages 2 and 3, is clearly erroneous.
Therefore, the earliest possible date which the appealed
claims can benefit from is January 4, 1985, the filing date of
parent application Serial No. 06/688,868. Therefore, PCT
publication WO 82/00588, published March 4, 1982, here
constitutes legally available prior art under 35 U.S.C.
Appeal No. 94-2097
Application 07/875,630
Appellant has attached a copy of the PCT publication as2
exhibit 1 to the Appeal Brief.
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§ 102(b). Furthermore, see appellant's acknowledgment in the2
Appeal Brief, page 9, lines 1 and 2, that "[d]ocument WO
82/00588 . . . qualifies as prior art against the present
application."
On return of this application to the Examining Corps, we
recommend that the examiner evaluate the patentability of
claims 2, 3, 5, 7, 8, 10, 21 and 22 in light of PCT
publication WO 82/00588 as prior art.
Appeal No. 94-2097
Application 07/875,630
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CONCLUSION
In conclusion, the provisional rejection of all the
appealed claims under the judicially created doctrine of
obviousness-type double patenting over the claims of
application Serial No. 08/009,353, is moot. We affirm the
rejection of all the appealed claims under the judicially
created doctrine of obviousness-type double patenting over the
claims of U.S. Patent No. 5,019,382. However, we reverse the
rejection of all the appealed claims under 35 U.S.C. § 103 as
unpatentable over Hasegawa or Tompkins. We also recommend
that the examiner evaluate the patentability of claims 2, 3,
5, 7, 8, 10, 21 and 22 in light of PCT publication WO 82/00588
as prior art.
The examiner's decision is affirmed.
No time period for taking any subsequent action in
connec-tion with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
Appeal No. 94-2097
Application 07/875,630
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JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TEDDY S. GRON )
Administrative Patent Judge )
Steven R. Lammert
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