Ex Parte Hagen

Patent Trial and Appeal Board

Feb 11, 2013

11544056 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL HAGEN
__________

Appeal 2011-002779
Application 11/544,056
Technology Center 1600
__________

Before FRANCISCO C. PRATS, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134(a) from the rejection of
claims directed to an adjuvant formulation. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Appellant notes there is a related appeal in Application No. 10/416,262.
(App. Br. 3.) That appeal, Appeal No. 2011-002413, is being decided
concurrently.
Appeal 2011-002779
Application 11/544,056

2
STATEMENT OF THE CASE
Claims 1-7 are on appeal. Claim 1 is representative and reads as
follows:
1. An adjuvant formulation comprising the combination of:
(1) an aminoalkyl glucosamine compound (AGP), and (2) a cytokine or
lymphokine, or an agonist to said cytokine or lymphokine.

The Examiner rejected the claims as follows:
I. claims 1-4 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Johnson
2
and Scott;
3

II. claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Johnson and
Jäger;
4

III. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Scott,
and Reed;
5
and
IV. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Jäger,
and Reed.

OBVIOUSNESS
The same issues are dispositive for all four rejections. We therefore
consider them together.
Appellant contends that the rejections failed
[a] “to articulate why it would have been motivating to one of
ordinary skill in the art to combine the prior art elements to yield Appellant’s
claimed invention . . . .

2
David A. Johnson et al., WO 98/50399, published Nov. 12, 1998.
3
Phillip Scott et al., US 5,976,539, issued Nov. 2, 1999.
4
Elke Jäger et al., US 6,096,313, issued Aug. 1, 2000.
5
Steven G. Reed et al., US 6,613,337 B1, filed Aug. 14, 2000, issued Sept.
2, 2003.
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Application 11/544,056

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[b] to articulate why someone skilled in the art would have
predicted the utility of the combination of elements in Appellant's claimed
invention . . . .
[c] to apply the PTO guidelines regarding the KSR decision . . . .
[and]
[d] to properly interpret the concept of art-recognized equivalents
as described in In re Kerkhoven and in MPEP §2144.06.” (App. Br. 4.)

Principles of Law
“It is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose.” In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980), citing In re Crockett, 279 F.2d
274, 276 (CCPA 1960) (the “joint use [of magnesium oxide and calcium
carbide] is not patentable” where the prior art teaches “that both magnesium
oxide and calcium carbide, individually, promote the formation of a nodular
structure in cast iron, and it would be natural to suppose that, in
combination, they would produce the same effect and would supplement
each other”).
See also Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 808
(Fed. Cir. 1989) (“Given the prior art teaching that both amiloride and
hydrochlorothiazide are natriuretic, it is to be expected that their co-
administration would induce more sodium excretion than would either
diuretic alone”); In re Diamond, 360 F.2d 214, 217 (CCPA 1966) (where the
evidence showed that synergy was expected because combined drugs
targeted different cellular mechanisms, and no evidence to the contrary was
produced, “[w]e are not convinced of [the] non-obviousness of the
combination of two drugs, A5MP and a glucocorticoid . . . particularly since
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Application 11/544,056

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the record supports the [PTO’s] contention that the drugs selected are two of
the commonly used drugs in the treatment of such collagen diseases”).

Analysis
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 conclusion that the subject matter of
Appellant’s claims is unpatentable. Accordingly, we sustain the Examiner’s
rejections for the reasons set forth in the Answer, which we incorporate
herein by reference, including the Examiner’s responses to Appellant’s
arguments. We add the following comments for emphasis.
The Examiner relied on the settled principle that it is prima facie
obvious to combine two compositions, each of which is taught by the prior
art to be useful for the same purpose, in order to form a third composition
which is to be used for the very same purpose. Appellant argues for a
limiting gloss on this principle, such that only combinations of mechanistic
equivalents are prima facie obvious (see App. Br. 6-7). That is, if AGP and
GM-CSF do not produce their effect by the same mechanism, their
combination cannot be obvious. We disagree.
Neither Kerkhoven, nor the earlier Crockett case that Kerkhoven cited,
even mentions “equivalents.” The MANUAL OF PATENT EXAMINING
PROCEDURE uses the term “equivalents,” but it does not purport to limit
equivalents to things that produce their effect by the same mechanism. See
MPEP §2144.06. Appellant identifies no authority for the proposed gloss on
precedent, and relevant authority weighs against it. See Diamond, 360 F.2d
at 217.
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SUMMARY
We affirm the rejection of claims 1-4 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Johnson and Scott.
We affirm the rejection of claims 1-5 under 35 U.S.C. § 103(a) as
unpatentable over Johnson and Jäger.
We affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Scott, and Reed.
We affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Jäger, and Reed.
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

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