Ex Parte Jung et al

Patent Trial and Appeal Board

Dec 19, 2012

11900637 (P.T.A.B. Dec. 19, 2012)

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.
11/900,637 09/11/2007 Edward K.Y. Jung 1105-002-044-000000 2954
44765 7590 12/19/2012
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
12/19/2012 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO, JR., and
LOWELL L. WOOD, JR.
________________

Appeal 2011-01787
Application 11/900,637
Technology Center 1600
________________

Before FRED E. MCKELVEY, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010787
Application 11/900,637

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3-5, 10, 15, 21-26, 28-38, 40-42, 44, 47, 49, 52, 58-63, and 65.1
We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method for detection of one
or more pathogens and determining one or more agents in response to
pathogen detection. Spec. 10. Claim 1 is illustrative (bracketed material
added):
1. A method comprising:
[step a] identifying one or more pathogens present within one or more
samples obtained from an individual through assaying the one or more
samples with one or more microfluidic chips;
[step b] accepting input associated with the individual from whom the
one or more samples were obtained; and
[step c] determining one or more agents that can be used to reduce the
pathogenicity of at least one of the one or more pathogens identified through
assaying the one or more samples with the one or more microfluidic chips.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Lagally et al., Anal. Chem., Vol. 76, pp. 3162-3317 (June 2004).
Leibovici et al., IEEE Transactions On Knowledge and Data
Engineering, Vol. 12, No. 4, pp. 517-528 (2000).

1 Appellants have indicated that claims 7, 12, 16-20 and 53-57 have been
withdrawn from consideration and claims 2, 6, 8-9, 11, 13-14, 27, 39, 43,
45-46, 48, 50-51 and 64 have been cancelled. App. Br. 16.
Appeal 2011-010787
Application 11/900,637

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Evans et al., The New England Journal of Medicine, Vol. 338, pp.
232-238 (1998).
Li, US 2004/0220498, Published Nov. 4, 2004.
The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 1, 3-5, 15, 29, 30, 32, 33, 35, 36, 38, 40-42, 44, and 472
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lagally in view of Leibovici.
2. Claims 10, 21 and 58 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lagally in view of Leibovici and further in
view of Evans.
3. Claims 22-26, 28, 31, 34, 37, 59-63, and 65 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Lagally in view of
Leibovici, in view of Evans, and further in view of Li.
4. Claims 1, 3-5, 10, 21-26, 28-38, 40-42, 44, 47, 49, 52, 58-63, and
65 also stand provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1, 4, 5, 7, 10, 11, 14, 15, 17, 20-33, 36, 37, 39, 42, 43, 48,
49, 52-55 of co-pending Application No. 11/900,660 (now US
8,068,991) in view of Lagally and Leibovici.

2 Although claim 48 appears in the Examiner’s statement of the rejection,
Answer 5, Appellants have indicated that claim 48 has been canceled. App.
Br. 16.
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Application 11/900,637

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OPINION
Prior Art Rejections
Upon consideration of the appeal, and for the reasons given by the
Examiner in the Answer, the decision of the Examiner rejecting all of the
claims over the prior art is affirmed.
Obviousness-Type Double Patenting Rejection
Appellant has failed to address the above listed double patenting
rejection from the Final Office Action dated December 2, 2009, from which
this appeal has been taken. Appellants have therefore waived the right for
further appellate review of this rejection. The Board will generally not reach
the merits of any issues not contested by the Appellants. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2010) (“Any arguments or authorities not included in the
brief or a reply brief filed pursuant to § 41.41 will be refused consideration
by the Board, unless good cause is shown.”); Hyatt v. Dudas, 551 F.3d 1307,
1313-14 (Fed. Cir. 2008) (the Board may treat arguments the appellant failed
to make for a given ground of rejection as waived); In re Watts, 354 F.3d
1362, 1368 (Fed. Cir. 2004). Accordingly, we summarily affirm this
uncontested 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)(1)(v).

AFFIRMED

McKELVEY, Administrative Patent Judge, concurring.

I concur with, and join, the decision and opinion of the Board.
However, it is not apparent to me how Claim 1 on appeal is patentable
Appeal 2011-010787
Application 11/900,637

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under 35 U.S.C. § 101, particularly in light of Appellants’ argument
that the Examiner has failed to show how the “determining” step is
met. See Mayo Collaborative Service v. Prometheus Laboratories,
132 S.Ct. 1289 (2012). Mayo was decided after entry of the
Examiner’s Answer. The gathering and analysis steps are known in
the art, as shown by the prior art relied upon by the Examiner. The
only significant step is “determining” a material which would
counteract a pathogen. Further discussion concerning § 101, however,
is not necessary given our affirmance of the Examiner’s § 103
rejections.

tc