Ex Parte Van Dyke

Board of Patent Appeals and Interferences

Nov 18, 2002

08293745 (B.P.A.I. Nov. 18, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KNOX Van DYKE
___________
Appeal No. 2001-1164
Application No. 08/293,745
__________
ON BRIEF
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Before WINTERS, WILLAM F. SMITH, and ADAMS, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision rejecting claims 66 through
83, 89 through 99, and 105 through 156, which are all of the claims remaining in the
application.
Representative Claim
Claim 66, which is illustrative of the subject matter on appeal, reads as follows:
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Application No. 08/293,745
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Th
e Prior Art References
In rejecting the appealed claims under 35 U.S.C. § 103, the examiner relies on
the following prior art references:
Kuroda et al. (Kuroda), "Antitumor Effect of Bisbenzylisoquinoline Alkaloids," Chem.
Pharm. Bull., Vol. 24, No. 10, pp. 2413-2420 (1976)
Kato et al. (Kato), Potentiation of Antitumor Activity of Vincristine by the Biscolaurine
Alkaloid Chepharanthine," JNCI, Vol. 79, No. 3, pp. 527-532 (1987)
Liao, Chemical Abstract No. 93CA"197657u, "Effect of D-Tetrandrine and Thalicarpine,
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Antitumor Plant Alkaloids, on HeLaCells" (1980)
Fuska, Chemical Abstract No. 104CA:84939q, "Microbial Transformations of Neoplasm
Inhibitors Isolated from Higher Plants" (1986)
Shiraishi et al. (Shiraishi), "Effect of Bisbenzyl-isoquinoline (Biscoclaurine) Alkaloids on
Multidrug Resistance in KB Human Cancer Cells," Cancer Research, Vol. 47, pp. 2413-
2416 (1987)
Kawashima et al. (Kawashima), "Structure and Hypotensive Activity Relationships of
Tetrandrine Derivatives in Stroke-Prone Spontaneously Hypertensive Rats," Gen.
Pharmacy, Vol. 21, No. 3, pp. 343-347 (1990)
Merck Index, 10th ed., Abstract Nos. 9056 and 2136, pages 1321 and 304-305
(Windholz et al. (Windholz) ed., Merck & Co., Rahway, NJ (1985))
The Rejection
Claims 66 through 83, 89 through 99, and 105 through 156 stand rejected under
35 U.S.C. § 103 as unpatentable over the combined disclosures of the Merck Index,
Kawashima, Kuroda, Fuska, Liao, the acknowledged state of the prior art, Shiraishi, and
Kato.
Deliberations
Our deliberations in this matter have included evaluation and review of the
following materials: (1) the instant specification, including all of the claims on appeal;
(2) applicant's amended Brief (Paper No. 44) and the Reply Brief (Paper No. 46);
(3) the Examiner's Answer (Paper No. 45) and the communication mailed by the
examiner October 12, 2000 (Paper No. 47); (4) the above-cited prior art references;
(5) the DECLARATION OF DARYL BARNETT, executed August 19, 1994; (6) the
SECOND DECLARATION OF DARYL BARNETT, executed October 14, 1995; (7) the
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THIRD DECLARATION OF DARYL BARNETT, executed January 8, 1998; and (8) the
Van Dyke Declaration, executed March 17, 1992.
On consideration of the record, including the above-listed materials, we reverse
the examiner's prior art rejection.
Discussion
Review of the examiner's position in this case has proven difficult. In the
amended Brief (Paper No. 44), applicant clearly and unambiguously argues the
patentability of claims separately. See the amended Brief, section VII, where applicant
sets forth nine groups of claims; and see section VIII E, where applicant presents
separate arguments with respect to the patentability of each group of claims. The
examiner's position, that applicant "fails to provide any reason why the grouped claims
are separately patentable over the prior art of record," is factually incorrect. See the
Examiner's Answer (Paper No. 45), page 2, fourth paragraph. Applicant strenuously
pursues this point in the Reply Brief (Paper No. 46), pages 1 and 2, disputing the
examiner's conclusion with respect to the grouping of claims. In a communication
mailed by the examiner October 12, 2000 (Paper No. 47), the examiner states that "[t]he
reply brief filed August 1, 2000 has been entered and considered." On this record,
however, we have no statement from the examiner responding substantively to
applicant's separate arguments with respect to nine groups of claims.
Compounding the examiner's error, with respect to grouping of the claims, is the
treatment of rebuttal evidence attached to the Reply Brief. Specifically, applicant has
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1 §1.195 Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the case has been
appealed will not be admitted without a showing of good and sufficient
reasons why they were not earlier presented.
relied on additional evidence of non-obviousness attached to the Reply Brief, viz.,
Exhibits 1, 2, 3, and 4. Although it does not appear that applicant made a showing
under Rule 195,1 nevertheless, the examiner has not favored the record with a
statement respecting the entry of this additional evidence. The examiner has not stated
whether Exhibits 1, 2, 3, and 4 have been entered and considered. If those exhibits
have been entered and considered, the examiner has offered no explanation why they
do not provide an effective rebuttal of the rejection under 35 U.S.C. § 103.
We are presented in this appeal with a large number of claims of varying scope.
These claims include:
(1) a method for treating, and thereby reducing, specified drug resistant
cancers in a patient;
(2) a pharmaceutical composition for treating multidrug resistant disease
other than tuberculosis;
(3) a pharmaceutical kit;
(4) a method for treating a multidrug resistant disease;
(5) a method for treating, and thereby reducing, multidrug resistant cancer in
a patient by potentiating a primary anti-cancer drug to which said cancer
exhibits multidrug resistance;
(6) a method for treating, and thereby reducing drug resistant cancer in a
patient; and
(7) a pharmaceutical composition for reducing specified drug resistant
cancers in a patient.
The examiner lumps all of applicant's claims together, rejecting them as a group
under 35 U.S.C. § 103 as unpatentable over a combination of seven prior art references
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and the acknowledged state of the prior art. The examiner's statement of rejection,
however, is short on specifics. As best we can judge, the examiner has not applied the
teachings of any reference or references against any individual claim with a reasonable
degree of specificity. Conspicuous by its absence from the Examiner's Answer (Paper
No. 45), is application of the cited prior art to any individual claim. This is particularly
egregious where, as here, applicant has presented extensive argument with respect to
nine groups of claims, and relies on extensive evidence of non-obviousness in the
record. See the instant specification; the DECLARATION OF DARYL BARNETT,
executed August 19, 1994; the SECOND DECLARATION OF DARYL BARNETT,
executed October 14, 1995; the THIRD DECLARATION OF DARYL BARNETT,
executed January 8, 1998; and the Van Dyke Declaration, executed March 17, 1992.
Having carefully reviewed the Examiner's Answer, we find that the examiner's
position with respect to applicant's rebuttal evidence may best be summarized as
follows: "[a]bsent claims commensurate with the showing of unexpected benefits, or a
showing reasonably commensurate with the instant claims, such claims remain properly
rejected under 35 USC 103" (Paper No. 45, page 13). That critique of rebuttal evidence
is less than satisfactory because (1) the examiner has not explained with a reasonable
degree of specificity why any claim or claims would have been prima facie obvious
under 35 U.S.C. § 103 based on the cited prior art; and (2) the examiner has
essentially ignored arguments presented in applicant's Appeal Brief pertaining to the
separate patentability of nine groups of claims. On this record, we think it fair to say
that the examiner's shotgun statement of rejection and broad-brush critique of
applicant's rebuttal evidence do not come to grips with the specific categories of claims
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and claim limitations presented in this appeal. It is not the rebuttal evidence itself, but
rather the shotgun statement of rejection and critique of applicant's rebuttal evidence
which are not "commensurate in scope with the claims."
Under these circumstances, absent a statement of rejection and response to
applicant's rebuttal evidence permitting meaningful review of the patentability of
individual claims, we reverse the rejection of all of the appealed claims under 35 U.S.C.
§ 103.
The examiner's decision, rejecting claims 66 through 83, 89 through 99, and 105
through 156, is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Donald E. Adams )
Administrative Patent Judge )
Appeal No. 2001-1164
Application No. 08/293,745
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James A. Mitchell
Price, Heneveld, Cooper, DeWitt & Litton
695 Kenmoor , SE
P.O. Box 2567
Grand Rapids, MI 49501
dem