Ex Parte Yla-Herttuala

Patent Trial and Appeal Board

Aug 18, 2017

13969763 (P.T.A.B. Aug. 18, 2017)

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.
13/969,763 08/19/2013 Seppo YLA-HERTTUALA FKD - 61/692,828 6511
22925 7590 08/22/2017
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EXAMINER
PAK, MICHAEL D
ART UNIT PAPER NUMBER
1646
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08/22/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEPPO YLA-HERTTUALA
Appeal 2016-007395
Application 13/969,763
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
REQUEST FOR REHEARING
Appellant requested reconsideration of the Decision on Appeal
entered March 27, 2017 (“DOA”) in which all the Examiner’s rejections
were affirmed. Under 37 CFR § 41.52(a)(1), “Appellant may file a single
request for rehearing within two months of the date of the original decision
of the Board.” The request was filed May 29, 2017 (the 27th fell on a
Saturday). Consequently, we treat it as a proper Request for Rehearing
under 37 CFR § 41.52(a)(1) (“Req. Reh’g”).
Appellant had appealed from the Examiner’s final rejection of claims
1—11 under three separate grounds of rejection. DO A 2. Appellant
contends that the Board erred in affirming the rejections. We address the
arguments below.
Appeal 2016-007395
Application 13/969,763
REJECTION BASED ON BALDWIN
Claims 1—6 and 8—10 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Baldwin. DOA 2. Baldwin is U.S. Pat. App. Publ.
2013/0344065 Al, publ. Dec. 26, 2013. Id. Baldwin claims benefit to PCT
(filing date of Apr. 5, 2011) and provisional (filing date of Apr. 15, 2010)
applications. Appellant provided declarations under 37 CFR § 1.131 by the
inventor in an attempt to antedate the Baldwin publication by establishing a
reduction to practice of the claimed invention prior to Baldwin’s PCT filing
date and prior to Baldwin’s provisional application filing date, respectively.
DOA 5-6.
In the final rejection, the Examiner stated that he had considered a
declaration filed by the inventor on Mar. 13, 2015 but found it ineffective to
antedate Baldwin because it did not allege a reduction to practice prior to
Baldwin’s provisional application filing date. Final Act. 2—3.
In response to the Examiner, Appellant provided a second declaration
entered into the record on Jul. 15, 2015 in which a reduction to practice at
least as early as Apr. 14, 2010 was alleged, the filing date of the provisional
application by Baldwin. The Examiner responded that this declaration, too,
was ineffective because the “laboratory notebook page is in foreign language
and it is not clear that the treatment of tumor was successful as claimed.”
Advisory Action (entered Sept. 28, 2015). This second declaration was filed
after a final rejection had been mailed.
In a third attempt to antedate Baldwin, Appellant provided a third
declaration by the inventor (received Oct. 8, 2015) which included an
English translation of the laboratory notebook page. The third declaration
was filed along with the Notice of Appeal and Appeal Brief (dated Oct. 8,
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Appeal 2016-007395
Application 13/969,763
2015). The Examiner did not enter the third declaration into the record
“because the appellant failed to provide a showing of good and sufficient
reason why it was necessary and not earlier presented. Furthermore,
appellant arguments does not discuss the information within the Declaration
(Oct. 2015).” Ans. 8.
In each of the declarations, the inventor provided the same laboratory
notebook page, stating that “I respectfully believe this laboratory animal
printed form corroborates conception and reduction to practice of my
invention.” While the inventor contends that the laboratory animal printed
form “corroborates” conception and reduction to practice of the claimed
invention, the form is in a foreign language and an English translation was
not provided to permit the Examiner to verify the corroboration. 37 CFR §
1.131 specifically states:
(b) The showing of facts for an oath or declaration under
paragraph (a) of this section shall be such, in character and
weight, as to establish reduction to practice prior to the
effective date of the reference, or conception of the invention
prior to the effective date of the reference coupled with due
diligence from prior to said date to a subsequent reduction to
practice or to the filing of the application. Original exhibits of
drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained.
Thus, the Examiner properly found the Declaration ineffective because it
failed to provide an English translation of the only record proffered as
evidence to antedate Baldwin. Lacking such translation, the Examiner could
not determine whether the laboratory animal printed form was adequate “in
character and weight... to establish reduction to practice prior to the
effective date of the reference.” Despite being on notice of the requirements
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Appeal 2016-007395
Application 13/969,763
of 37 CFR § 1.131, and after having filed two successive declarations,
Appellant did not provide such translation until after the Final Action when
the Notice of Appeal and Appeal Brief were filed. 37 CFR § 41.37(c)(2)
specifically states that “A brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other Evidence.”
Consequently, the Examiner acted in compliance with the rules in not
entering the declaration.
In the Decision on Appeal, we considered the translation to give the
inventor the benefit of it, despite it being tardily produced and hence not
entered by the Examiner. Appellant now complains that we raised new
grounds of rejection in considering it. Req. Reh’g 4.
Upon reconsideration, to avoid any impropriety of raising a new
ground of rejection, we shall strike from the Decision on Appeal any
discussion of the third declaration, and the English translation included in it,
and we shall not rely on such discussion in affirming the Examiner’s
decision that the first and second declarations are ineffective in antedating
Baldwin. Accordingly, we do not rely on the discussion of whether a
“control” was performed, the issue Appellant contends constitutes a new
ground of rejection. DOA 6; Req. Reh’g 5.
Instead, we affirm the Examiner’s decision in finding the first and
second declarations ineffective because the “laboratory notebook page is in
foreign language and it is not clear that the treatment of tumor was
successful as claimed” and because of the lack of explanation. Advisory
Action (entered Sept. 28, 2015). For example, the declaration states that
“Assessment includes measurement of tumor size by MRI” but does not
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Application 13/969,763
disclose or explain the results of the MRI and how it established success of
the treatment. DO A 6.
In Decision on Appeal, it was stated “Dr. Yla Herttuala did not make
a statement in his declaration that the cancer was treated.” Id. Appellant
contends that the inventor did not have to make such a statement in the
declaration because the statement was made in the Specification. Req.
Reh’g 5—6.
We disagree. In a § 1.131 Declaration, the “showing of facts for an
oath or declaration under paragraph (a) of this section shall be such, in
character and weight, as to establish reduction to practice prior to the
effective date of the reference . . . .” 37 CFR § 1.131(b). Accordingly, it is
clear from the rule that the Declaration must contain such a showing. The
application, itself, was filed later than the experiment described in the
Declaration; consequently, it must be established that the inventor
recognized at the time of the purported reduction to practice that the cancer
was treated, not at the later time when the subsequent application was filed.
Appellant also contends that it is new ground of rejection in the
Decision on Appeal to have found that the inventor failed to make a
statement that the cancer was treated. Req. Reh’g. 6.
The Examiner found in the Advisory Action that it was not clear that
the tumor treatment was successful and formed a basis for finding the
declaration ineffective to antedate Baldwin. The further discussion in the
Decision on Appeal that the inventor, himself, did not make such a statement
in the declaration is wholly consistent with the Examiner’s reasoning and did
not change the basis of the rejection, but rather simply expounded on it in a
more thorough explanation. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
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Appeal 2016-007395
Application 13/969,763
2011). Neither new facts nor rationale was cited to advance the rejection.
Rather, the Board merely agreed with the Examiner’s rationale in the
Advisory Action, further noting that the inventor failed to state in the
Declaration that the cancer treatment was successful. Consequently, the
further explanation provided in the Decision on Appeal does not constitute a
new ground of rejection. See In re Stepan, 660 F.3d. 1341, 1344^45 (Fed.
Cir. 2011).
Indeed, despite the Examiner’s indication that it was not clear that
tumor treatment was successful, Appellant stated erroneously in the Brief
that “Examiner found no defect in that Declaration.” Appeal Br. 5.
Furthermore, Appellant, on notice that the Examiner considered the
declaration ineffective because there was no showing that the tumor
treatment was successful, did not avail himself of the opportunity to address
this substantive concern by the Examiner.
In sum, Appellant did not identify an error in the rejection.
HU
Claims 1—5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Hu. DO A 2. Appellant contends that he did not have an opportunity to
provide evidence responding to the Holash publication. Req. Reh’g 7—8.
Holash was cited in the Final Action in response to Appellant’s
contention that Hu did not utilize a VEGF trap with an Fc portion “adequate
to ensure efficient dimerization of said decoy receptor” as required by the
claim. Final Act. 6—7. The Holash publication was identified from a
publication provided by Appellant. Id. at 6. The Examiner explained in the
Final Action:
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Application 13/969,763
Applicants argue that VEGF Trap does not form a dimer
because the evidence of record fails to say exactly what
fragments are included nor whether these fragments have been
modified to include the dimer binding sites nor whether these
fragments have been modified to exclude the tyrosine kinase
domains. Applicants refer to passage in Hu et al. describing
VEGF-Trap with reference to Byrne et al. However, Hu et al.
cite Byrne et al. (2003) for the VEGF-trap and Byrne et al.
(2003) cite Holash et al. (PNAS, 2002) regarding the VEGF-
Trap construction. Holash et al. provide evidence that the
VEGF-TRAP of Hu et al. comprises the same construction as
claimed — the extracellular portion of the VEGF receptor
without the transmembrane and tyrosine kinase domains is
fused to the constant region (Fc) of the human IwgGl.
Id. at 6—7.
The citation to Holash, in response to Appellant’s argument, did not
change the basis of the rejection in any way, i.e., that Hu’s construct was
capable of dimerization, meeting the corresponding limitation of the claim.
Holash was cited by the Examiner as additional evidence of this fact.
Appellant, at no time, before or since, provided adequate evidence that Hu’s
construct did not dimerize as found by the Examiner. As stated in the
Decision on Appeal, despite the fact the Holash was of record prior to the
filing of the Appeal Brief, no attempt by Appellant could be found to rebut
the Examiner’s findings regarding this publication despite the opportunity to
do so after the Final Action, and in the subsequently filed Appeal and Reply
Briefs. DOA 9—10. Consequently, Appellant’s argument that somehow
there was error in not giving Appellant opportunity to respond to Holash,
merely confirmatory evidence of a finding made by the Examiner when the
initial rejection over Hu was set forth, is unavailing.
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Application 13/969,763
SUMMARY
We decline to modify the Decision on Appeal affirming the
Examiner’s decision that claims 1—11 are unpatentable. See DO A 2 for a list
of the affirmed rejections.
However, we modify the Decision on Appeal to the extent that we do
not rely on the third declaration containing an English translation of the
laboratory printed form.
REHEARING DENIED
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