Ex Parte Jung et al

Patent Trial and Appeal Board

Oct 15, 2014

11586349 (P.T.A.B. Oct. 15, 2014)

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.
11/586,349 10/24/2006 Edward K.Y. Jung SE1-1038-US 8195
80118 7590 10/15/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
10/15/2014 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. JUN, ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALMUD, JOHN D. RINALDO, JR. and
LOWELL L. WOOD, JR.1
__________

Appeal 2012-003837
Application 11/586,349
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for providing a treatment option based on a treatment parameter, which have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new rejection based on indefiniteness.

1 According to Appellants, the Real Party in Interest is Searete LLC, which
is wholly owned by Intellectual Ventures Management, LLC (App. Br. 5).
Appeal 2012-003837
Application11/586,349

2
STATEMENT OF THE CASE
Claims 1–36, 48, and 49 are on appeal. Claims 1 and 48 are
illustrative and read as follows:
1. A system comprising:
means for receiving a request for a treatment option, the request associated
with at least one symptomatic query parameter, the symptomatic
query parameter including at least one consequence of treatment on an
end target;
means for determining at least one treatment parameter, based on the
request,
the at least one treatment parameter including at least one target-related
tissue ancestry-correlated binding site and/or at least one target-related
tissue ancestry-correlated binding agent; and
means for providing the treatment option, based on the at least one treatment
parameter and the at least one symptomatic query parameter.

48. A computer program product comprising:
a non-transitory signal-bearing medium bearing
(a) one or more instructions for receiving a request for a treatment
option, the request associated with at least one symptomatic
query parameter, the symptomatic query parameter including at
least one consequence of treatment on an end target;
(b) one or more instructions for determining at least one treatment
parameter by accessing treatment data, based on the request, the
at least one treatment parameter including at least one target-
related tissue ancestry-correlated binding site and/or at least one
target-related tissue ancestry-correlated binding agent; and
(c) one or more instructions for providing the treatment option,
based on the at least one treatment parameter and the at least
one symptomatic query parameter.
Appeal 2012-003837
Application11/586,349

3
I.
The Examiner has rejected claims 1–36, 48, and 49 under 35 U.S.C.
§ 103(a) as obvious based on Oh2 and McIlroy3 (Ans. 5–6). The Examiner
finds that Oh discloses tissue-specific therapy and symptomatic parameters,
as well as a target-related tissue ancestry-correlated binding site and a target-
related tissue ancestry-correlated binding agent (id. at 6), but does not teach
“a system that includes providing a treatment option wherein queries are
generated and treatments are given” (id. at 7).
The Examiner finds that McIlroy teaches such a system and concludes
that it would have been obvious
to have used the healthcare management system for treatment
assessment as taught by McIlroy et al. with the treatment
parameters and agents and binding sites elucidated by Oh et al.
One would have been motivated to do so because McIlroy et al.
specifically teach that the system is a flexible one [ ] which [is]
adaptable to a myriad of treatment methods.
(Id.)
Appellants argue that the Examiner has not set out a prima facie case
of obviousness (App. Br. 31–51).
With respect to claims 1 and dependent claims 2–36, which are in
means-plus-function format, we agree with Appellants that the Examiner has
not shown that the claimed invention would have been obvious based on the
cited references. Claim 1 is directed to a system having three structural
elements: (1) “means for receiving a request for a treatment option,” (2)

2 Oh et al., Subtractive proteomic mapping of the endothelial surface in lung
and solid tumours for tissue-specific therapy, 429 NATURE 629-635 (2004).
3 McIlroy et al., U.S. Patent 5,953,704, issued Sept. 14, 1999.
Appeal 2012-003837
Application11/586,349

4
“means for determining at least one treatment parameter,” and (3) “means
for providing the treatment option.”
“Section 112, paragraph 6 provides that a patentee [or applicant] may
define the structure for performing a particular function generically through
the use of a means expression, provided that it discloses specific structure(s)
corresponding to that means in the patent specification.” Kemco Sales, Inc.
v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000). “A computer-
implemented means-plus-function term is limited to the corresponding
structure disclosed in the specification and equivalents thereof, and the
corresponding structure is the algorithm.” Harris Corp. v. Ericsson Inc.,
417 F.3d 1241, 1253 (Fed. Cir. 2005).
Here, the Examiner has not addressed the scope of the means-plus-
function limitations of claim 1 based on their description in the Specification.
The Examiner’s rejection, in fact, does not address the means-plus-function
limitations at all, but is based on the disclosure in Oh of a method that uses
tissue-specific endothelial cell surface proteins for targeting a treatment agent
to a specific organ or tissue (Ans. 6), combined with McIlroy’s healthcare
management system (id. at 7).
The Examiner has not explained how Oh’s steps, even combined with
McIlroy’s healthcare management system, would have made obvious the
structures disclosed in the Specification as corresponding to the “means for
receiving a request,” “means for determining at least one treatment
parameter,” and “means for providing the treatment option” that are required
by claim 1, and claims dependent on it. “In proceedings before the Patent
and Trademark Office, the Examiner bears the burden of establishing a
Appeal 2012-003837
Application11/586,349

5
prima facie case of obviousness based upon the prior art.” In re Fritch, 972
F.2d 1260, 1265 (Fed. Cir. 1992). That burden has not been carried with
respect to claims 1–36. We are therefore constrained to reverse the rejection
of those claims.
Claims 48 and 49 are not written in means-plus-function format.
Claim 49 will stand or fall with claim 48 because it was not argued
separately. 37 C.F.R. § 41.37(c)(1)(vii). Claim 48 is directed to a computer
program product bearing instructions for (a) receiving a request for a
treatment option, where the request is associated with a consequence of
treatment on an end target; (b) determine a target-related tissue ancestry-
correlated binding site or a target-related tissue ancestry-correlated binding
agent based on the request; and (c) provide the treatment option.
We agree with the Examiner that the combined teachings of Oh and
Arnaud would have rendered obvious a computer program product meeting
the limitations of claim 48. The Examiner found that Oh discloses target-
related tissue ancestry-correlated binding sites and agents (i.e., tissue-specific
proteins such as APP and monoclonal antibodies that bind to it) (Ans. 6), as
well as using them “for targeting single organs or solid tumors, thus teaching
a consequence of a treatment parameter (treatment of the target)” (id. at 6-7).
The Examiner found that McIlroy discloses a healthcare management system
in which queries can be made and treatment options are identified (id. at 7).
The Examiner concludes that it would have been obvious to use McIlroy’s
healthcare management system with the treatment sites and agents taught by
Oh because McIlroy teaches that its system if adaptable to different treatment
Appeal 2012-003837
Application11/586,349

6
methods and its system could easily be adapted to work with databases of
different information (id.).
We agree with the Examiner’s fact-finding and conclusion. Oh
discloses tissue-specific proteins (e.g., APP; Oh 631, bridging paragraph) and
tumor-specific proteins (e.g., annexin-A1; id. at 629, abstract), and a database
containing such proteins (id. at 634, left col.). Oh also discloses radiolabeled
antibodies that specifically target these proteins (id. at 629, abstract; 631,
right col.) and states that it expects that such targeting “will benefit both drug
and gene delivery in the treatment of many diseases” (id. at 634, right col.).
McIlroy discloses “a health care management data processing system”
(McIlroy 2:56–57). McIlroy’s system includes application software that
permits a user to exchange information with the system (id. at 4:57–60) and a
set of diagnosis-based guidelines associated with different health care
conditions (id. at 4:62–66). McIlroy’s system includes a treatment
component that presents treatment options and highlights option(s) based on
user input (id. at 5:58–60). McIlroy states that “[b]ecause [its] invention
implements the guidelines as data base parameters, the system is flexible; it
can be readily adapted to changes in and evolution of health care professional
knowledge and treatment methods” (id. at 10:4–7).
We agree with the Examiner that, based on these teachings, it would
have been obvious to modify Oh’s system to include instructions that direct
a computing device to receive a request for a treatment option, the request
including a consequence of treatment on an end target (e.g., causing the
death of lung tumor cells); to determine based on the request a target-related
tissue ancestry-correlated binding site or a target-related tissue ancestry-
Appeal 2012-003837
Application11/586,349

7
correlated binding agent (e.g., a tumor antigen expressed by the specified
tumor, or a monoclonal antibody that binds to it); and to provide the
determined treatment option (e.g., treatment with a radiolabeled antibody
that binds to a relevant tumor antigen). Oh provides a reason to combine its
disclosure of tissue- or tumor-specific proteins and antibodies that bind to
them with McIlroy’s system for identifying treatment options because Oh
teaches that tissue- or tumor-specific targeting “will benefit both drug and
gene delivery in the treatment of many diseases” (id. at 634, right col.).
Appellants argue4 that “the PTO has overlooked several express
recitations of Independent Claim 1” and the Examiner “has not provided any
objectively verifiable evidence” to show that the references teach what is
recited in claim 1 (App. Br. 31). Appellants conclude that “the USPTO-
identified portions of Oh do not recite the text of . . . Independent Claim 1”
(id. at 41). According to Appellants, “insofar as that Oh does not recite the
text of . . . Independent Claim 1, . . . the USPTO-cited technical material
does not a establish a prima facie case of the unpatentability of Independent
Claim 1” (id. at 42). Appellants make a similar argument with respect to
McIlroy (id. at 44–51).
These arguments are unpersuasive. “[A]ll that is required of the office
to meet its prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of

4 Appellants’ argument with respect to claim 48 is that it “contain[s] similar
recitations as Independent Claim 1, and is not obvious in view of Oh and
McIlroy for at least the same reasons” (App. Br. 61).
Appeal 2012-003837
Application11/586,349

8
§ 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Section 132, in
turn, requires notice to the applicant sufficient to inform him of the reasons
for rejection, “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application.” 35 U.S.C. § 132.
Here, the Examiner notified Appellants that the claims were being
rejected as unpatentable under 35 U.S.C. § 103(a) (Ans. 5–6) and cited
specific passages in Oh and McIlroy, by page and column or column and
line, that were the basis for the conclusion of obviousness (id. at 6–7). The
Examiner’s rejection satisfies the notice requirement of § 132, and therefore
meets the burden of establishing a prima facie case of unpatentability. Cf.
Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of the theory of
invalidity . . . , the prior art basis for the rejection . . . , and the identification
of where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
meet this burden.”).
Appellants also argue that “the USPTO has attempted to support the
present rejection based on a ‘mere conclusory statement[ ]’” (App. Br. 54,
quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
This argument is unpersuasive because the Examiner provided a
reasoned basis for the conclusion of obviousness (Ans. 6 (Oh teaches cell
surface proteins that can act as targets for targeting specific organs or
tumors) and 7 (it would have been obvious to combine McIlroy’s system
with Oh’s binding agents/targets based on McIlroy’s teaching that its system
is adaptable to different treatment methods). The Examiner’s conclusion is
Appeal 2012-003837
Application11/586,349

9
supported by the evidence (see Oh 634, right col. (“We expect that site-
directed vascular and caveolar targeting will benefit both drug and gene
delivery in the treatment of many diseases.”)).
Appellants also argue that combining Oh and McIlroy as proposed by
the Examiner would change Oh’s principle of operation (App. Br. 55–58)
and “the suggested modifications/combinations would render the
technologies of Oh and/or McIlroy unsatisfactory for their intended
purposes” (id. at 61).
These arguments are also unpersuasive. Appellants have not
persuasively shown that combining Oh’s database with McIlroy’s health
care management system would change Oh’s principle of operation or
render it unsatisfactory for its intended purpose. The fact that the system
made obvious by the cited references would include tissue-specific or tumor-
specific proteins and antibodies that bind to them does not show any
incompatibility between the teachings of Oh and McIlroy.
Finally, Appellants argue that “[w]hether or not the Patent Office has
carried its burden in establishing a prima facie case of unpatentability is a
question of law, not fact” (Reply Br. 7). Appellants argue that “[s]ince the
resolution of this question controls whether or not Appellant must produce
evidence in rebuttal of the prima facie case, Appellant asserts that it would
be premature/improper for the Board to decide this appeal on the issue of the
Patent Office fact finding” (id. at 7–8). Appellants request that, for those
claims where we conclude that the Examiner has made out a prima facie
case, “the Board should remand with instructions to the Patent Office to
Appeal 2012-003837
Application11/586,349

10
reopen prosecution for the purpose of receiving evidence/argument in
rebuttal of the prima facie case” (id. at 8).
The Court of Appeals for the Federal Circuit has specifically rejected
this argument. See In re Jung, 637 F.3d at 1363:
Jung, without any basis, would have this court impose
additional prima facie procedural requirements and give
applicants the right first to procedurally challenge and appeal
the prima facie procedural showing before having to
substantively respond to the merits of the rejection. Such a
process is both manifestly inefficient and entirely unnecessary.
Appellants have had the opportunity to provide “evidence/argument in
rebuttal of the prima facie case” (Reply Br. 8) throughout the prosecution of
this application. That they have chosen not to do so reflects their choice of
prosecution strategy and does not merit a remand of this application to the
Examiner.
In summary, the Examiner has made a prima facie case that claim 48
would have been obvious to a person of ordinary skill in the art, and
Appellants have not provided persuasive evidence or reasoning to support a
contrary conclusion. We therefore affirm the rejection of claim 48 as
obvious based on Oh and McIlroy. Claim 49 falls with claim 48. 37 C.F.R.
§ 41.37(c)(1)(vii).
II.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claims 1–36 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite because the Specification does not disclose
structures that correspond to the “means for receiving a request for a
treatment option,” “means for determining at least one treatment parameter,”
Appeal 2012-003837
Application11/586,349

11
and “means for providing the treatment option” that are recited in
independent claim 1 in a way that allows a person of ordinary skill in the art
to ascertain the scope of the claims.
“Use of the term ‘means’ in a claim limitation creates a presumption
that section 112, paragraph 6 has been invoked, but that presumption may be
rebutted if the properly construed claim limitation itself recites sufficiently
definite structure to perform the claimed function.” Kemco Sales, Inc. v.
Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000). In this case,
claim 1 uses the term “means” and recite no structures to perform the
claimed functions. We therefore conclude that the claims invoke 35 U.S.C.
§ 112, sixth paragraph.
Section 112, paragraph 6 provides that a patentee [or
applicant] may define the structure for performing a particular
function generically through the use of a means expression,
provided that it discloses specific structure(s) corresponding to
that means in the patent specification. . . . As such, [the court
has] referred to section 112, paragraph 6 as embodying a
statutory quid pro quo. . . . If a patentee [or applicant] fails to
satisfy the bargain because of a failure to disclose adequate
structure, the claim will be rendered . . . indefinite under section
112, paragraph 2.
Id. at 1360-61. The rules that “structure corresponding to the claimed
function must be disclosed in the specification with clear linkage between
the structure and the claimed function serve worthy goals. Such rules are
intended to produce certainty in result.” Medical Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003). “A
computer-implemented means-plus-function term is limited to the
corresponding structure disclosed in the specification and equivalents
Appeal 2012-003837
Application11/586,349

12
thereof, and the corresponding structure is the algorithm.” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).
An Appeal Brief must include a summary of the claimed subject
matter, and
[f]or each independent claim involved in the appeal . . . every
means plus function and step plus function as permitted by 35
U.S.C. 112, sixth paragraph, must be identified and the
structure, material, or acts described in the specification as
corresponding to each claimed function must be set forth with
reference to the specification by page and line number, and to
the drawing, if any, by reference characters.
37 C.F.R. § 41.37(c)(1)(v) (2004).
In the Summary of Claimed Subject Matter section of the Appeal
Brief, Appellants stated that all three of the “means” recited in claim 1 are
described at “page 60, ll. 3-11 of specification (Independent Claim 1);
and/or para [0003] of specification” (Appeal Br. 8).
Original claim 1 is directed to a method, not a system, and does not
include any recitation of structure for carrying out the method defined in that
claim. Original claim 1 therefore does not disclose structures corresponding
to the “means” recited in claim 1 on appeal.
Paragraph 3 of the Specification describes a computer program
product that includes a signal-bearing medium bearing instructions for
carrying out the functions recited in claim 1 (Spec. 4, ¶ 3). It does not,
however, describe any structures, such as algorithms, that correspond to the
means-plus-function limitations of claim 1.
Thus, Appellants have not identified any description in the
Specification of structures corresponding to the means-plus-function
limitations of claim 1. Our review of the Specification for a disclosure of
Appeal 2012-003837
Application11/586,349

13
such structures included word searches for the phrase “means for” and the
word “means.” The search for the phrase “means for” in the Specification
did not identify any use of that phrase. The search for the word “means”
identified only a single use, in an unrelated context.5
In summary, the Specification does not disclose any structures that
correspond to the means-plus-function limitations of claim 1. Claims 2–36
depend from claim 1. Claims 1–36 are therefore unpatentable under
35 U.S.C. § 112, second paragraph, because they are indefinite.
SUMMARY
We reverse the rejection of claims 1–36 under 35 U.S.C. § 103(a)
based on Oh and McIlroy, but we affirm the same rejection with respect to
claims 48 and 49.
We enter a new ground of rejection of claims 1–36 for indefiniteness
under 35 U.S.C. § 112, second paragraph.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
that “Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,

5 The word “means” appears only in a sentence reading, in part: “the bare
recitation of ‘two recitations,’ without other modifiers, typically means at
least two recitations” (Spec. 59, ¶ 185).
Appeal 2012-003837
Application11/586,349

14
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides: “A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

lp