Ex Parte Wei

Board of Patent Appeals and Interferences

Oct 22, 2010

10928474 (B.P.A.I. Oct. 22, 2010)

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.
10/928,474 08/26/2004 Guangwen Wei 795-A-US 4394
7590 10/22/2010
Albert Wai-Kit Chan
Law Offices of Albert Wai-Kit Chan LLC
World Plaza, Suite 604
141-07 20th Avenue
Whitestone, NY 11357
EXAMINER
SNYDER, STUART
ART UNIT PAPER NUMBER
1648
MAIL DATE DELIVERY MODE
10/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WEI GUANGWEN
__________

Appeal 2009-003870
Application 10/928,474
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of treating Severe Acute Respiratory Syndrome (SARS) using an interferon.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003870
Application 10/928,474

2
The Examiner has rejected the claims for nonenablement, lack of adequate
description, and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We vacate the rejections on appeal and enter a new rejection for
indefiniteness.
STATEMENT OF THE CASE
Claims 1, 3-8, and 31-38 are on appeal. Claim 1 is representative and
reads as follows:
1. A method for preventing or treating Severe Acute Respiratory
Syndrome in a subject comprising administering to the subject an effective
amount of a recombinant interferon encoded by a polynucleotide having the
sequence of SEQ ID NO. 1, wherein the recombinant interferon has
enhanced anti-hepatitis B virus activities as compared to an interferon
having an amino acid sequence of SEQ ID NO. 2 that is not encoded by
SEQ ID NO. 1.

All of the pending claims stand rejected under 35 U.S.C. § 112, first
paragraph, on the basis that the Specification does not adequately describe or
enable the claimed method (Answer 3-10). All of the pending claims also
stand rejected under 35 U.S.C. § 103(a) as obvious in view of Higgins2 and
Cinatl3 (Answer 11).
We vacate these rejections because, even when the claims are read in
light of the Specification, the scope of the claimed method is unclear. Based
on our authority under 37 C.F.R. § 41.50(b), we enter the following new

2 P. G. Higgins et al., Intranasal Interferon as Protection Against
Experimental Respiratory Coronavirus Infection in Volunteers, 24
ANTIMICROBIAL AGENTS AND CHEMOTHERAPY, NO. 5, 713-715 (Nov. 1983)
3 J. Cinatl et al., Treatment of SARS with human interferons, 362 THE
LANCET 293-294 (2003)
Appeal 2010-003870
Application 10/928,474

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ground of rejection: Claims 1, 3-8, and 31-38 are rejected under 35 U.S.C.
§ 112, second paragraph, because they are indefinite.
Claim 1 is directed to a method of using “a recombinant interferon
encoded by a polynucleotide having the sequence of SEQ ID NO.1, wherein
the recombinant interferon has enhanced anti-hepatitis B virus activities as
compared to an interferon having an amino acid sequence of SEQ ID NO.2
that is not encoded by SEQ ID NO.1” (claim 1). Claims 7 and 34, the only
other independent claims, include the same limitation.
The polynucleotide sequence of SEQ ID NO: 1 encodes the amino
acid sequence of SEQ ID NO: 2 (Sequence Listing filed March 15, 2005;
compare encoded amino acid sequence shown in SEQ ID NO: 1 with amino
acid sequence shown in SEQ ID NO: 2). Thus, there is no “amino acid
sequence of SEQ ID NO.2 that is not encoded by SEQ ID NO.1”: a given
nucleic acid sequence, with a fixed reading frame, encodes a defined amino
acid sequence, and SEQ ID NO: 1 encodes SEQ ID NO: 2. Granted, the
amino acid sequence of SEQ ID NO: 2 can also be encoded by other nucleic
acid sequences, but that does not change the fact that it is encoded by SEQ
ID NO: 1.
The Specification does not define what it means for an amino acid
sequence to be “not encoded by” a nucleic acid sequence that encodes it.
Nor does the Specification provide any discussion of this issue that would
assist a person of ordinary skill in the art to reasonably interpret the claim
language in light of the Specification and the background knowledge in the
art.
Appeal 2010-003870
Application 10/928,474

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As a consequence, we are unable to determine what the proper
comparison is for the “enhanced anti-hepatitis B virus activities” of the
interferon required by the claimed method. Because the scope of the
claimed method cannot be determined with reasonable certainty, the claims
are indefinite. See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1342 (Fed. Cir. 2003) (“A claim is indefinite if, when read in light of
the specification, it does not reasonably apprise those skilled in the art of the
scope of the invention.”). See also In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not
the PTO’s. See 35 U.S.C. § 112, ¶ 2. . . . [T]his section puts the burden of
precise claim drafting squarely on the applicant.”).
SUMMARY
We vacate the rejections on appeal and enter a new ground of
rejection for indefiniteness.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
Appeal 2010-003870
Application 10/928,474

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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

VACATED, 37 C.F.R. § 41.50(b)

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ALBERT WAI-KIT CHAN
LAW OFFICES OF ALBERT WAI-KIT CHAN LLC
WORLD PLAZA, SUITE 604
141-07 20TH AVENUE
WHITESTONE NY 11357