10140694 (B.P.A.I. Aug. 25, 2010)

Ex Parte Ginger

Board of Patent Appeals and InterferencesAug 25, 2010

10140694 (B.P.A.I. Aug. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte REBECCA SUSAN GINGER __________ Appeal 2009-015162 Application 10/140,694 Technology Center 1600 __________ Before ERIC GRIMES, DONALD E. ADAMS, and DEMETRA J. MILLS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a method of correlating genetic alleles with predisposition to dry skin. The Examiner has rejected the claims as indefinite and nonenabled. We have jurisdiction 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-015162 Application 10/140,694 2 under 35 U.S.C. § 6(b). We affirm the indefiniteness rejection but reverse the nonenablement rejection. STATEMENT OF THE CASE “The profilaggrin gene and protein are well known in the art” (Spec. 11). “A profilaggrin gene comprises multilple [sic] filaggrin repeats, usually 10, 11 or 12 repeats” (id.). The Specification states that an individual’s “predisposition to a skin condition such as dry skin, dandruff and/or detergent-induced erythema can be determined by identifying the profilaggrin alleles present in their genome” (id. at 4). Claims 6-14, 27, 28, and 32 are on appeal. Claims 27 and 13 are representative and read as follows: 27. A method of correlating an individuals levels of profilaggrin alleles present in genome that correspond to different filaggrin repeat lengths with the individuals predisposition for dry skin as measured by either their self-perceived frequency of dry skin, their clinically assessed leg dryness or their recovery to SLS-induced erythema, said method comprising the steps of: i) selecting a group of individuals; ii) identifying in each individual the proportions of profilaggrin alleles corresponding to 10, 11 or 12 filaggrin repeat units encoded by the genome by analysis of an ex-vivo sample taken from the individual; iii) determining for each individual a measure of predisposition for dry skin by correlating the presence of profilaggrin alleles having either the 11 or 12 filaggrin repeat units with susceptibility to dry skin as measured by one or more of the following methods: a. recording the individual's self-perceived frequency of dry skin, b. clinically assessing the individual's leg dryness, or c. determining an individual's rate of recovery following an SLS patch test. 13. The use of the correlation method according to Claim 27 for grouping individuals for the purpose of a clinical panel wherein individuals from the group selected in step i) of claim 27 are grouped on the basis of the Appeal 2009-015162 Application 10/140,694 3 correlations found between the presence of profilaggrin alleles having either the 11 or 12 filaggrin repeat units found in step ii) of claim 27 and their susceptibility to dry skin as measured by the one or more methods set forth in step iii) of claim 27. The claims stand rejected as follows: • Claims 6-14, 27, 28, and 32 under 35 U.S.C. § 112, first paragraph, as nonenabled by the Specification (Ans. 5); and • Claims 13, 14, and 32 under 35 U.S.C. § 112, second paragraph, as indefinite (Ans. 3). I. The Examiner has rejected all of the claims on appeal on the basis that undue experimentation would be required to practice the full scope of the claimed method (Ans. 5-15). The Examiner’s analysis, however, fails to take into account the limited scope of the claims, the detailed guidance provided by the Specification, and the working examples in the Specification that exemplify each of the steps required by the claims. We reverse the Examiner’s nonenablement rejection for the reasons succinctly stated on pages 8-10 of the Appeal Brief. II. The Examiner has concluded that claims 13, 14, and 32 are indefinite because they do not recite a positive process step and therefore “[i]t is unclear if the claim is intended to be further limiting the method [of] claim 27 or if the claims are intended use of the method of claim 27” (Ans. 3-4). Appellant contends that the steps recited in the rejected claims “fully defines and clearly points out the metes and bounds of appellant’s claimed method” (Appeal Br. 20-21). Appeal 2009-015162 Application 10/140,694 4 Claims 13 and 32 are directed to the “use of the correlation method according to Claim 27” for grouping individuals for a clinical panel, where the individuals are grouped according to criteria determined according to the method of claim 27. Claim 14 is directed to the “use of the method according to Claim 27” for matching individuals with personal care products based on criteria determined according to the method of claim 27. We agree with the Examiner that claims 13, 14, and 32 are indefinite. As the Examiner pointed out, it is unclear from the language of the claims whether claims 13, 14, and 32 define anything more than intended uses for the method of correlating recited in claim 27. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, if claims 13, 14, and 32 do no more than define intended uses of the method of claim 27, they do not further limit the claimed method. If, in fact, claims 13, 14, and 32 do further limit the method of claim 27, it is unclear whether “grouping individuals” or “matching individuals with personal care products” requires an active step of sorting physical products or people, or is simply a mental step of manipulating data generated by the method of claim 27. Because it is unclear what, if any, additional steps are added to the method of claim 27 by claims 13, 14, and 32, we agree with the Examiner that those claims are indefinite. Appeal 2009-015162 Application 10/140,694 5 SUMMARY We reverse the rejection of claims under 35 U.S.C. § 112, first paragraph, but affirm the rejection of claims 13, 14, and 32 under 35 U.S.C. § 112, second paragraph. 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-IN-PART lp UNILEVER PATENT GROUP 800 SYLVAN AVENUE AG WEST S. WING ENGLEWOOD CLIFFS NJ 07632-3100