Ex Parte Millis et al

Patent Trials and Appeals Board

May 24, 2019

14788402 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/788,402 06/30/2015
43850 7590 05/29/2019
Morgan, Lewis & Bockius LLP (SF)
One Market, Spear Street Tower, Suite 2800
San Francisco, CA 94105
FIRST NAMED INVENTOR
James R. Millis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
060261-5016-US15 1055
EXAMINER
PAK, YONGD
ART UNIT PAPER NUMBER
1652
NOTIFICATION DATE DELIVERY MODE
05/29/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
sfipdocketing@morganlewis.com
donald.mixon@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. MILLIS, JULIE MAURINA-BRUNKER,
and THOMAS W. MCMULLIN 1
Appeal2018-007106
Application 14/788,402
Technology Center 1600
Before ELIZABETH A. LA VIER, TA WEN CHANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
fermentation method. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Arkion Life Sciences LLC.
(Appeal Br. 3.)
Appeal2018-007106
Application 14/788,402
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-9, 11-13, 17, and 19-21 are on appeal and may be found at
the Claims Appendix of Appellants' Appeal Brief. 2 (Appeal Br. 20-22.)
Examiner's Re} ections3
Claims 1-9, 11-13, 17, and 19-21 are rejected on the ground ofnon-
statutory double patenting as being unpatentable over:
1) claims 1-14 of U.S. Patent No. 7,838,279
2) claims 1-14 of U.S. Patent No. 7,927,862
3) claims 1-23 of U.S. Patent No. 9,102,954
4) claims 1-29 of U.S. Patent No. 6,242,227
5) claims 1-16 of U.S. Patent No. 7,927,861
6) claims 1-16 of U.S. Patent No. 7,842,497.
(Final Act. 8.)
DISCUSSION
Appellants contest the Examiner's rejection of claims 1-9, 11-13, 17,
and 19-21 under pre-AIA 35 U.S.C. § 103(a) as obvious over Robinson and
2 Claims 10, 14--16, 18, and 22 have been withdrawn from further
consideration as being drawn to a nonelected species. (Final Act. 2.)
3 In the Answer, the Examiner withdrew the rejection of claims 1-9, 11-13,
17, and 19-21 under pre-AIA 35 U.S.C. § 103(a) as obvious over Robinson,
US Patent No. 5,589,372, issued Dec. 31, 1996 ("Robinson"), and Saunders
et al., US Patent No. 5,460,949, issued Oct. 24, 1995 ("Saunders"). (Ans.
12.) The Examiner also withdrew in the Answer the non-statutory double
patenting rejections of claims 1-9, 11-13, 17, and 19-21 over the claims of
U.S. Patent Nos. 6,531,303, 6,689,593, 8,241,888, and 8,236,552.
2
Appeal2018-007106
Application 14/788,402
Saunders, but that rejection was withdrawn in the Answer. 4 (Appeal Br. 11-
19; Ans. 12.)
Appellants do not contest the rejections of claims 1-9, 11-13, 17, and
19-21 on the ground of non-statutory double patenting over the claims of
U.S. Patent Nos. 7,838,279, 7,927,862, 9,102,954, 6,242,227, 7,927,861, or
7,842,497. (Appeal Br. 11-19; Reply Br. 3-5.) Accordingly, those
rejections are summarily affirmed. See 37 C.F.R. § 4I.37(c)(l)(iv); Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); MPEP § 1205.02 ("Ifa
ground of rejection stated by the examiner is not addressed in the appellant's
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it.").
SUMMARY
We summarily affirm the rejections of claims 1-9, 11-13, 17, and 19-
21 on the ground of non-statutory double patenting over the claims of U.S.
Patent Nos. 7,838,279, 7,927,862, 9,102,954, 6,242,227, 7,927,861, and
7,842,497.
4 In the Reply Brief, Appellants request that we "enter a decision to
withdraw the rejection of claims 1-9, 11-13, 17, and 19-21 under
35 U.S.C. § 103(a) over Robinson and Sanders." (Reply Br. 4.) As
Appellants note, the Examiner withdrew this rejection in the Answer. (Ans.
12; Reply Br. 4.) Thus, the obviousness rejection over Robinson and
Sanders is no longer before us on appeal, and we decline to enter a decision
regarding that rejection.
3
Appeal2018-007106
Application 14/788,402
TIME PERIOD FOR RESPONSE
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
4