13882773 (P.T.A.B. Feb. 1, 2018)

Ex Parte Finn et al

Patent Trial and Appeal BoardFeb 1, 2018

13882773 (P.T.A.B. Feb. 1, 2018)

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. 13/882,773 05/01/2013 M.G. Finn 613.201US 4812 90187 7590 02/01/2018 T .p.wis Knhn & Walker T T P EXAMINER 15030 Avenue of Science CARLSON, KAREN C Suite 201 San Diego, CA 92128 ART UNIT PAPER NUMBER 1656 MAIL DATE DELIVERY MODE 02/01/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte M.G. FINN, STEVEN BROWN, and JASON FIEDLER Appeal 2017-001118 Application 13/882,773 Technology Center 1600 Before JEFFREY N. FREDMAN, TAWEN CHANG, and TIMOTHY G. MAJORS, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered November 28, 2017 (“Decision”) that entered a New Ground of Rejection under 35 U.S.C. § 102(b). We deny the requested relief. DISCUSSION Appellants contend: “Claim 1 includes a limitation that the shell proteins are recombinant. Also, please note that the shell proteins disclosed by Perez (Ml) are not recombinant. Appellants assert that Claims 1, 2, 5, 7, 13—15, 31, 33—35, and 38 are not anticipated by Perez because Perez does not disclose recombinant shell proteins” (Req. 3). We find this argument unpersuasive. While we agree with Appellants that the term “recombinant” is ordinarily defined in this context as Appeal 2017-001118 Application 13/882,773 “produced by genetic engineering”,1 Appellants’ use of the term “recombinant” represents an attempt to impose a method step onto a product claim, here a synthetic capsule construct comprising a shell with “said shell proteins being recombinant” (Claim 1). However, the “addition of a method step in a product claim, which product is not patentably distinguishable from the prior art, cannot impart patentability to the old product.” In re Dilnot, 300 F.2d 945, 950 (1962). Appellants identify no structural difference between the shell proteins of Perez and those required by the claim other than the process by which the proteins were produced. See In re Thorpe, 111 F.2d 695, 697 (Fed.Cir.1985) (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”); In re Brown, 459 F.2d 531, 535(CCPA 1972) (in product-by process claims the patentability of the product must be established independent of the process). Indeed, whether the shell proteins were produced in a “recombinant” eukaryotic expression system in MDCK cells or produced as taught by Perez by virus infection in the MDCK cells, the final constructs including the shell proteins would be expected to be structurally identical because they would share the same amino acid sequence, same glycosylation patterns (if any), as they were produced by the same cell. Schreiber teaches that writing a claim that mixes structural and functional limitations comes at a price. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“[CJhoosing to define an 1 See https://www.merriam-webster.com/dictionary/recombinant, “2 a : relating to or containing genetically engineered DNA; b : produced by genetic engineering.” 2 Appeal 2017-001118 Application 13/882,773 element functionally, i.e., by what it does, carries with it a risk.”). The price is that when the structural limitations such as requirement for a shell protein that forms an enclosure, and restricts permeability while binding a polynucleotide are met by a single prior art reference such as Perez (see Dec. 9—12; FF 10—15), and when there is “reason to believe” that the prior art reference satisfies all the functional limitations, the burden shifts to the patent applicant to show that the functional limitations are not met by the single prior art reference. Id. Appellants have provided no evidence rebutting the inherency position based on Perez and the evidentiary references of Mair, Ye, and Gonzalez. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”) CONCLUSION We have carefully reviewed the original decision in light of Appellants’ request, but we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, Appellants’ request is denied with respect to making any modifications to the decision entering a new ground of rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED 3