Ex Parte Jung et al

Patent Trial and Appeal Board

Jul 22, 2014

11262499 (P.T.A.B. Jul. 22, 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.
11/262,499 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).
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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
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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).
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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
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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.
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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