Ex Parte Fiers

Board of Patent Appeals and Interferences

May 29, 2008

08449930 (B.P.A.I. May. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WALTER C. FIERS
__________

Appeal 2008-21621
Application 08/449,930
Technology Center 1600
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DECIDED: May 29, 2008
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims directed to treating
various conditions by administering recombinant human beta-interferon.
Claims 31 and 34 stand rejected under 35 U.S.C. § 102(g). Claims 31, 33,
and 34 stand provisionally rejected under the doctrine of obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm

1 Heard May 13, 2008, together with related Appeal No. 2008-2115 in
Application No. 08/471,646. We have considered the two cases together.
Appeal 2008-2162
Application 08/449,930

the provisional double patenting rejection, and reverse the rejection under 35
U.S.C. § 102(g).
BACKGROUND
Appellant was party to a three-way interference proceeding2 between
inventors Fiers (the present Appellant), Revel, and Sugano, in which Sugano
ultimately prevailed. The interference involved a single count, reproduced
below:
A DNA which consists essentially of a DNA which codes for a
human fibroblast interferon-beta polypeptide.

In affirming the USPTO’s award of priority of invention to Sugano,
the Court of Appeals for the Federal Circuit agreed that “Sugano’s March
19, 1980 Japanese application satisfies the requirements of section 112, first
paragraph, and . . . Sugano thus met his burden to establish entitlement to
that filing date.” Fiers v. Revel, 984 F.2d 1164, 1172 (Fed. Cir. 1993).
DISCUSSION
Obviousness-Type Double Patenting
Claims 31, 33, and 34 stand provisionally rejected under the doctrine of
obviousness-type double patenting as unpatentable over claim 37 of co-
pending Application No. 08/253,843.
Appellant does not dispute the propriety of the rejection, and has agreed
to file an appropriate terminal disclaimer, or to cancel conflicting subject
matter upon indication of allowability (Response filed November 24, 2004,
page 2).

2 Interference No. 101,096.
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Application 08/449,930

Accordingly, the rejection is affirmed.

Anticipation under 35 U.S.C. § 102(g)
Claims 31 and 34 stand rejected under 35 U.S.C. § 102(g) as clearly
anticipated by Sugano (U.S. Patent 5,326,859, July 5, 1994) or Sugano (U.S.
Patent 5,514,567, May 7, 1996). The ‘859 patent issued from U.S. Application
No. 06/201,359, which was involved in the interference proceeding discussed
above. The ‘567 patent issued from Application No. 08/400,179, a divisional
of Application No. 06/201,359.
Representative claim 31 reads as follows:
31. A method for immunomodulation or for treating a viral condition,
a viral disease, cancers or tumors comprising the step of administering to a
patient in need of such treatment a therapeutically effective amount of a
composition comprising:
a recombinant polypeptide produced by a non-human host
transformed by a recombinant DNA molecule comprising a DNA sequence
selected from the group consisting of:
(a) DNA sequences which hybridize to any of the DNA inserts
of G-pBR322(Pst)/HFIF1, G-pBR322(Pst)/HFIF3 (DSM 1791),
G-pBR322(Pst)/HFIF6 (DSM 1792), and G-pBR322(Pst)/HFIF7
(DSM 1793), and which code for a polypeptide displaying antiviral
activity, and
(b) DNA sequences which are degenerate as a result of the
genetic code to the DNA sequences defined in (a);
said DNA sequence being operatively linked to an expression control
sequence in the recombinant DNA molecule.

According to the Examiner, “[t]he instant application and the two
Sugano et al patents disclose the same amount of information relevant to the
methods claimed in the instant application” (Ans. 5), and “the methods taught
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in each of the Sugano et al . . . [patents] are embraced by claims 31 and 34 of
the instant application” (Ans. 4-5).
The Examiner contends that the Sugano patents are available as prior art
under 35 U.S.C. § 102(g), “[s]ince the Court of Appeals for the Federal Circuit
has already determined that Sugano et al are entitled to priority . . . for what is
for interference purposes a patentably indistinct invention” (Ans. 5), as of
March 19, 1980, the filing date of Sugano’s Japanese application (Sugano’s
effective filing date under 35 U.S.C. § 119).3
The underlying rationale of the rejection appears to be two-fold. On
one hand, the Examiner’s position seems to be that that the claims on appeal
are patentably indistinct from (or obvious variations of) the count (and
corresponding claims) Appellant lost in the interference. On the other hand,
the Examiner’s position seems to be that each of the Sugano patents has an
effective date as a prior art reference for all it discloses as of March 19,

3 35 U.S.C. § 102(g), at the time the application was filed, read as follows:

§ 102 Conditions for patentability; novelty and loss of right to
patent

A person shall be entitled to a patent unless –
* * *
(g) before the applicant’s invention thereof the invention was
made in this country by another who had not abandoned,
suppressed, or concealed it. In determining priority of
invention there shall be considered not only the respective dates
of conception and reduction to practice of the invention, but
also the reasonable diligence of one who was first to conceive
and last to reduce to practice, from a time prior to conception
by the other.

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1980, the filing date of Sugano’s Japanese application (which antedates
Appellant’s June 6, 1980 filing date in the U.K.).
It is well settled that “[t]he subject matter of counts lost in an
interference is not . . . statutory prior art to the losing party.” In re McKellin,
529 F.2d 1324, 1328 (CCPA 1976). Nevertheless, the doctrine of
interference estoppel “bar[s] the assertion of claims for inventions that are
patentably indistinct from those in an interference that an applicant had
lost.” In re Deckler, 977 F.2d 1449, 1452 (Fed. Cir. 1992). In the present
case, however, the record does not reflect whether claims 31 and 34 have
ever been found to be patentably indistinct from claims corresponding to the
count in the Fiers-Revel-Sugano interference. Therefore, we do not agree
that the outcome of Fiers v. Revel has a bearing on whether Appellant would
be estopped from asserting the claims presently on appeal.
As to Sugano’s entitlement to the filing date of his Japanese patent
application, 35 U.S.C. § 119 relates “only to what an applicant or patentee
may and may not do to protect himself against patent-defeating events
occurring between his invention date and his U.S. filing date.” In re Hilmer,
424 F.2d 1108, 1112 (CCPA 1970). Section 119 “does not remove the
limitation of § 102(g) found in the phrase ‘in this country.’” Id.
“[K]nowledge and acts in a foreign country are not to defeat the rights of an
applicant for a patent, except as the applicant may become involved in a
priority dispute with another applicant entitled to § 119 benefits” (id. at
1112-13).
Finally, unless there is evidence of actual reduction to practice in the
United States by the inventor of a reference United States patent, “the
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disclosure in [the] . . . patent does not fall under 35 U.S.C. § 102(g) but
under 35 U.S.C. § 102(e).” In re Zletz, 893 F.2d 319, 323 (Fed. Cir. 1990).
In the present case, there is no evidence of record that the disclosure relied
on by the Examiner in rejecting Appellant’s claims was reduced to practice
in the United States prior to Appellant’s effective filing date.
Accordingly, we reverse the rejection of claims 31 and 34 under
35 U.S.C. § 102(g).
SUMMARY
The provisional rejection of claims 31, 33, and 34 under the doctrine
of obviousness-type double patenting is affirmed.
The rejection of claims 31 and 34 under 35 U.S.C. § 102(g) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

Ssc:

JAMES F. HALEY JR.
FISH & NEAVE
1251 AVENUE OF THE AMERICAS
NEW YORK, NY 10020-1104
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