10164363 (B.P.A.I. Feb. 23, 2011)

Ex Parte Xu

Board of Patent Appeals and InterferencesFeb 23, 2011

10164363 (B.P.A.I. Feb. 23, 2011)

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. 10/164,363 06/06/2002 Kai Y. Xu 404326 9650 7590 02/23/2011 Eli Weiss / Oakwood Law Group, LLP Suite 386 14 Bond Street Great Neck, NY 11021 EXAMINER HADDAD, MAHER M ART UNIT PAPER NUMBER 1644 MAIL DATE DELIVERY MODE 02/23/2011 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 KAI Y. XU __________ Appeal 2010-007331 Application 10/164,363 Technology Center 1600 __________ Before ERIC GRIMES, JEFFREY N. FREDMAN, 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 composition comprising an antibody. The Examiner has rejected the claims 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 2010-007331 Application 10/164,363 2 on several grounds. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s Notice of Appeal stated that the appeal was “from the decision of the Examiner mailed September 5, 2005, rejecting the following claims: 8, 10, 12 and 14” (Notice of Appeal, filed Feb. 5, 2009), even though claims 1, 3-8, and 10-14 were pending and had been rejected (Appeal Br. 5). The Appeal Brief stated that “the rejections of claims 1, 3-8, and 10-14 under provisional nonstatutory, obviousness-type double patenting, under §103(a), and under 35 U.S.C. § 112, first and second paragraph, . . . are not the subject of this Appeal” (id.). In response to Appellant’s statements that only claims 8, 10, 12, and 14 were being appealed, the Examiner cancelled claims 1, 3-7, 11, and 13 by Examiner’s Amendment (mailed July 24, 2009). In the Reply Brief, Appellant stated that the claims cancelled by Examiner’s Amendment, “through inadvertence and mistake, . . . were not specifically identified by claim number. . . . [W]ithdrawal of the Examiner’s cancellation of claims 1, 3-7, 11, and 13 is respectfully requested.” (Reply Br. 4.) An Examiner’s decision to enter an Examiner’s Amendment, like a decision to refuse entry of an amendment after final, does not address the patentability of a claimed invention, and is therefore not an appealable issue. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971): There are a host of various kinds of decision an examiner makes in the examination proceeding—mostly matters of a discretionary, procedural or nonsubstantive nature—which have not been and are not now appealable to the board . . . when they are not directly connected with the merits of issues involving Appeal 2010-007331 Application 10/164,363 3 rejections of claims, but traditionally have been settled by petition to the Commissioner. The Examiner’s decision to cancel claims 1, 3-7, 11, and 13 by Examiner’s Amendment can only be reviewed by way of petition, not appeal. Claims 8, 10, 12, and 14 are pending and on appeal. The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 8 is representative and reads as follows: 8. A therapeutically effective composition comprising: a therapeutically active isolated and purified antibody, which specifically binds to an amino acid sequence, VPAISLAYEQAESD (SEQ ID NO: 2) of the α-subunit of (Na+ + K+)-ATPase enzyme, and cardiac isoforms thereof wherein binding of the antibody to the amino acid sequence, VPAISLAYEQAESD (SEQ ID NO: 2) increases myocyte intracellular diastolic or systolic calcium. I. The Examiner has rejected claim 12 under 35 U.S.C. § 112, second paragraph (Answer 5), and has rejected claims 8, 10, 12, and 14 under the enablement provision of 35 U.S.C. § 112, first paragraph (id. at 6) and under 35 U.S.C. § 103(a) (id. at 10-13). The Examiner has also provisionally rejected claims 8, 10, 12, and 14 for obviousness-type double patenting (id. at 5). Appellant stated in the Appeal Brief that “with respect to the rejections of claims 1, 3-8, and 10-14 under provisional nonstatutory, obviousness-type double patenting, under §103(a), and under 35 U.S.C. § 112, first and second paragraph, Appellant intends to make appropriate Appeal 2010-007331 Application 10/164,363 4 amendments, and as such, these rejections are not the subject of this Appeal” (Appeal Br. 5). Thus, Appellant affirmatively waived the opportunity for appellate review of the Examiner’s rejections based on indefiniteness, nonenablement, obviousness, and double patenting. Since these rejections are not being appealed, we need not address them. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). In the Reply Brief, Appellant presented arguments directed to the § 103 rejections (Reply Br. 12, 19-21). We will not consider these arguments because arguments newly made in a Reply Brief will not be considered unless good cause is shown. See Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010). Here, Appellant not only has not shown good cause for why the § 103 arguments were not presented in the Appeal Brief, but affirmatively waived the opportunity to contest the Examiner’s § 103 rejections in the Appeal Brief. II. The Examiner has rejected claims 8, 10, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by Ovchinnikov,2 with evidence provided by 2 Yu. A. Ovchinnikov et al., Topology of Na+,K+-ATPase - Identification of the extra-and intracellular hydrophilic loops of the catalytic subunit by specific antibodies¸227 FEBS LETT., 230-234 (1988). Appeal 2010-007331 Application 10/164,363 5 Mohraz3 (Answer 9). We agree with analysis and response to arguments set out in the Examiner’s Answer (pages 9-10 and 14-21) and adopt them as our own. SUMMARY We affirm the rejection of claims 8, 10, 12, and 14 under 35 U.S.C. § 102(b). 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 lp ELI WEISS / OAKWOOD LAW GROUP, LLP SUITE 386 14 BOND STREET GREAT NECK NY 11021 3 Manijeh Mohraz et al., Immunoelectron microscopy of epitopes on Na, K-ATPase catalytic subunit. Implications for the transmembrane organization of the C-terminal domain, 269 J. BIOL. CHEM., 2929-36 (1994).