Ex Parte Pickering et al

Patent Trials and Appeals Board

Feb 3, 2016

13256170 - (D) (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/256,170 09/12/2011 Victoria Pickering
210 7590 02/05/2016
MERCK
POBOX2000
RAHWAY, NJ 07065-0907
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.
SIR-MIS-00084-US-PCT 6491
EXAMINER
SHIN,DANAH
ART UNIT PAPER NUMBER
1674
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
US-DOCKET-PATENT@merck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTORIA PICKERING,
JYOTI K. SHAH, and WALTER STRAPPS
Appeal2013-007360
Application 13/256, 170
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 20, 21, 36, and
37 (Br. 4). Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
The claims are directed to a double-stranded short interfering nucleic
acid (siNA) molecule and a pharmaceutical composition comprising the
1 Appellants identify the Real Party in Interest as "MERCK SHARP &
DOHME CORP." (Br. 4.)
Appeal2013-007360
Application 13/256,170
double-stranded siNA (see Appellants' claims 20, 21, 36, and 37). Claim 20
is representative and reproduced in the Claims Appendix of Appellants'
Brief.
Claims 20, 21, 36, and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Khvorova, 2 Nyce,3 Vickers,4 and
Strapps. 5
Claims 20, 21, 36, and 37 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
the claims of McSwiggen6 in combination with Khvorova, Nyce, Vickers,
and Strapps.
Obviousness-type Double Patenting:
Appellants do not address and, thereby, waived appeal of the
obviousness-type double patenting rejection (see Ans. 6 ("It is noted that
appellant [sic] did not mention the obviousness-type double patenting
rejection in the Brief')). Therefore, we decline to address the merits of the
obviousness-type double patenting rejection.
Obviousness:
ISSUE
Does Strapps qualify as prior art on this record?
2 Khvorova et al., US 2008/0086001 Al, published Apr. 10, 2008.
3 Nyce et al., US 2004/0049022 Al, published Mar. 11, 2004.
4 Timothy A. Vickers et al., Efficient Reduction of Target RN As by Small
Interfering RNA and RNase H-dependent Antisense Agents, 278 J. BIOL.
CHEM. 7108-7118 (2003).
5 Strapps et al., US 2009/0137506 Al, published May 28, 2009.
6 McSwiggen et al., US 7,943,757 B2, issued May 17, 2011.
2
Appeal2013-007360
Application 13/256,170
FACTUAL FINDINGS (FF)
FF 1. Strapps filed Application 12/114,698 on May 2, 2008, claiming
priority to Provisional Application No. 60/915,638, filed May 2, 2007
(Strapps).
FF 2. Strapps identifies the Assignee as "SIRNA THERAPEUTICS, INC."
(Strapps.)
FF 3. Appellants identify October 6, 2009 as the earliest date that an
inventor of the subject matter in Strapps executed an assignment of the
Strapps subject matter to MERCK SHARP & DOHME CORP. (See
Appellants' Evidence Appendix; Ans. 5.)
FF 4. The subject matter of Strapps and this Appeal have different
inventive entities, but share one common inventor-Walter Strapps (see
Strapps).
FF 5. The Application, 13/256,170, on Appeal was filed September 12,
2011, claiming benefit of PCT /US 10/2867 4, filed March 25, 2010, which
claims benefit of 61/164,314, filed March 27, 2009 (see Br. 4--5).
FF 6. Office records report that, at the time Application 13/256, 170 was
filed, the Assignee of Application 13/256,170 was MERCK SHARP &
DOHMECORP.
ANALYSIS
According to Examiner the combination of Khvorova, Nyce, Vickers,
and Strapps makes obvious the subject matter of Appellants' claim 20 (see
August 17, 2012, Final Rej. 2-5 and 5---6). In this regard, Examiner finds
that Strapps is available as prior art under 35 U.S.C. § 102(e) (see May 25,
2012 Non-Final Office Action 7).
3
Appeal2013-007360
Application 13/256,170
35 U.S.C. § 103(c)(l) states:
Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections ( e ), (t), and (g)
of section 102, shall not preclude patentability under this
section where the subject matter and the claimed invention
were, at the time the claimed invention was made, [ (i)] owned
by the same person or [(ii)] subject to an obligation of
assignment to the same person.
(Emphasis added.) As Appellants point out "[f]or the purposes of 35
U.S.C. § 103(c), a 'person' may be a corporation" (Br. 5).
Strapps and the Application on Appeal have different inventive
entities (FF 4). Therefore, the evidence of record supports a
conclusion that, at the time the claimed invention was made, the
subject matter of Strapps and the Application on Appeal was not
owned by the same person.
The evidence of record supports a conclusion that, at the time
the claimed invention was made, Strapps and the Application on
Appeal were not subject to an obligation of assignment to the same
person (see FF 2, 3, 5, and 6; see generally Ans. 3-5; cf Br. 5). The
Application on Appeal claims the benefit of priority application
61/164,314, filed March 27, 2009 (FF 5). Appellants' evidence shows
that Strapps was not assigned to MERCK SHARP & DOHME CORP.
until at least October 6, 2009 (FF 3).
For the foregoing reasons we are not persuaded by Appellants'
contention that Strapps "does not qualify as prior art per 35 U.S.C.
§ 103(c)" (Br. 5).
4
Appeal2013-007360
Application 13/256,170
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion that Strapps qualifies as prior art on this record. The rejection of
claim 20 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Khvorova, Nyce, Vickers, and Strapps is affirmed. Claims 21, 36, and 37
are not separately argued and fall with claim 20.
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
KRH
5