Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardJul 22, 201411262499 (P.T.A.B. Jul. 22, 2014) Copy Citation 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. 11/262,499 10/28/2005 Edward K.Y. Jung SE1-0972-US 7964 80118 7590 07/23/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER CLOW, LORI A ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 07/23/2014 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. JUNG, ROBERT W. LORD, and LOWELL L. WOOD, JR.1 __________ Appeal 2012-003665 Application 11/262,499 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 relating to methods for providing treatment characteristics in response to input of a treatment parameter, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification states that “[c]ertain properties of the endothelial layer . . . may enable the targeted delivery of one or more treatment agents to 1 According to Appellants, the real party in interest is Searete LLC, which is wholly owned by Intellectual Ventures Management, LLC (App. Br. 6). Appeal 2012-003665 Application 11/262,499 2 a vicinity of the diseased tissue” (Spec. 8, ¶ 38). For example, in the case of a tumor that has grown over a period of time, a corresponding growth or development of a site on the endothelial layer 118 may reflect, or otherwise be correlated with and/or affected by, the growth of the diseased tissue (tumor) 114. This correlation between the history or ancestry of the site on the endothelial layer 118 in the vicinity of the diseased tissue 114 may result in unique, or almost unique, properties of the tissue ancestry-correlated site, such as, for example, a display of specific and identifiable proteins. (Id. at 9, ¶ 39.) “[S]uch tissue ancestry-correlated sites may be used to direct treatment agents” (id. at 9, ¶ 40). The Specification’s Figure 5 shows an example of treatment data, including “Treatment Parameter Direct End Target” and “Target-Related Tissue Ancestry-Correlated Binding Site” (id. at 22, ¶ 84, Fig. 5). The Specification states that if the clinician 104 is already aware of a target-related tissue ancestry-correlated binding site in the vicinity of the diseased tissue 114, then the clinician 104 may input this information into the treatment system 102 and be provided with one or more, for example, target-related tissue ancestry-correlated binding agents that may be known to attach to the known target-related tissue ancestry-correlated binding site. (Id. at 13, ¶ 48.) Claims 1-36, 39, 43, 46, 48, and 49 are on appeal. Claim 1 is illustrative and reads as follows: 1. A method comprising: accepting, using a suitable microprocessor, an identification of at least one instance of at least one treatment parameter, the at least one treatment parameter including at least one target-related tissue ancestry-correlated binding site; and Appeal 2012-003665 Application 11/262,499 3 providing, using a suitable microprocessor, at least two instances of at least one treatment characteristic for providing a clinician with treatment information and allowing the update of existing treatment data, the at least one treatment characteristic including at least one target-related tissue ancestry-correlated binding agent, at least one direct end target, at least one discriminated end target, at least one direct intermediate target, at least one discriminated intermediate target, at least one treatment agent delivery mechanism relative to the at least one target-related tissue ancestry- correlated binding agent, at least one treatment agent, or at least one treatment agent precursor. DISCUSSION The Examiner has rejected claims 1-5, 7-29, 31-36, 39, 43, 46, 48, and 49 under 35 U.S.C. § 103(a) as obvious based on Oh2 and Arnaud3 (Ans. 6). The Examiner has rejected claims 1, 6, and 30 under 35 U.S.C. § 103(a) as obvious based on Oh, Arnaud, and Hood4 (Ans. 20). The same issue is dispositive for both rejections. The Examiner finds that Oh teaches “defining an association between at least two instances of a treatment parameter and at least one instance of a treatment characteristic and assigning the association to a memory” (Ans. 6). The Examiner finds that Oh teaches treatment parameters, treatment characteristics, target-related tissue ancestry-correlated binding sites, and target-related tissue ancestry-correlated binding agents (id. at 6-7), as well as relational database management systems (id. at 7). 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 Arnaud et al., US 2002/0186818 A1, published Dec. 12, 2002. 4 Hood et al., Tumor Regression by Targeted Gene Delivery to the Neovasculature, 296 SCIENCE 2404-2407 (2002). Appeal 2012-003665 Application 11/262,499 4 Regarding independent claims other than claim 1, the Examiner finds that Oh does not teach a computer program product and a system to implement the steps recited in claim 1 but that Arnaud teaches “a program and system for building a medical database which uses data tags (also known as attributes) and metadata which are various characteristics of the particular datapoints” (id. at 19). The Examiner concludes that it would have been obvious “to have completely automated the methods of Oh et al. by using the formats as taught by Arnaud et al. to further optimize defining associations amongst tissue-ancestry correlated binding sites and agents for the purpose of targeted cancer therapies” (id.). Appellants argue that the Examiner has not set out a prima facie case of obviousness (App. Br. 48-55). We agree with Appellants that the Examiner has not shown that the inventions defined by the claims on appeal would have been obvious based on the cited references. Claim 1 is directed to a method having two steps: (1) accepting, using a microprocessor, identification of a target-related tissue ancestry-correlated binding site and (2) providing, using a microprocessor, “at least two instances of at least one treatment characteristic” such as a target-related tissue ancestry-correlated binding agent. Claims 39, 43, 46, and 49 are the other independent claims. Claims 39, 43, and 46 recite substantively the same “accepting” and “providing” steps as claim 1. Claim 49 is similar to claim 1 but requires using a microprocessor to accept identification of a target-related tissue ancestry-correlated binding agent (rather than site) and to provide “at least two instances of at least one Appeal 2012-003665 Application 11/262,499 5 treatment characteristic” such as a target-related tissue ancestry-correlated binding site (rather than agent). The Examiner points to no evidence that Oh, Arnaud, or Hood disclose either the “accepting” or the “providing” step of the claims. Rather, the Examiner’s rejection is based on Oh’s disclosure of “defining an association” between treatment parameters and treatment characteristics and “assigning the association to a memory” (Ans. 6). The Examiner does not point to anything in Arnaud or Hood as disclosing the “accepting” and “providing” steps of the claims, and does not provide persuasive reasoning to show that these steps would have been obvious based on the steps actually disclosed by Oh. “In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). Because the Examiner has not shown that the cited references disclose the steps required by the claims, and has not provided evidence- based reasoning to show that those steps would nonetheless have been obvious based on the cited references, we are constrained to reverse the rejections on appeal. Appeal 2012-003665 Application 11/262,499 6 SUMMARY We reverse the rejection of claims 1-5, 7-29, 31-36, 39, 43, 46, 48, and 49 under 35 U.S.C. § 103(a) based on Oh and Arnaud, and the rejection of claims 1, 6, and 30 under 35 U.S.C. § 103(a) based on Oh, Arnaud, and Hood. REVERSED cdc Copy with citationCopy as parenthetical citation