Ex Parte Zaknoen

Board of Patent Appeals and Interferences

Jan 25, 2005

09767424 (B.P.A.I. Jan. 25, 2005)

Page 1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SARA L. ZAKNOEN
__________
Appeal No. 2004-1974
Application No. 09/767,424
__________
REQUEST FOR REHEARING
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Before WILLIAM F. SMITH, SCHEINER, and MILLS, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant requests rehearing of our decision of September 22, 2004, in which we
affirmed the examiner’s decision that claims 1-22 were unpatentable under 35 U.S.C.
§ 103(a). Appellant argues that we overlooked arguments from the Reply Brief
regarding pegylated interferon alpha, non-pegylated interferon alpha, and the varying
molecular and pharmacokinetic properties that exist between the two compounds.
Request, page 5.
We did not overlook the arguments made in the Reply Brief. See slip opinion,
pages 3 and 5. Failure to specifically address an argument does not mean that that
argument was overlooked.
Appeal No. 2004-1974
Application No. 09/767,424
Page 2
We have reviewed the arguments once more and again we do not find them
persuasive. Appellant argues that the total drug exposure and peak plasma level of
pegylated interferon alpha and nonppegylated interferon alpha are different and that
one of skill in the art could not predict the effect the use of pegylated interferon alpha
would have in treating cancer.
First, a conclusion of obviousness need only rest on a reasonable expectation of
success, not absolute predictability. In re O'Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988); In re Longi, 759 F.2d 887, 897, 225 USPQ2d 645, 652
(Fed. Cir. 1985). Second, we stated that Kline describes pegylated interferon alpha as
being useful in treating renal cell carcinoma and AIDS-related Kaposi’s sarcoma. Slip
opinion, page 3. Thus, the evidence of obviousness relied upon by the examiner
suggests the use of pegylated interferon alpha in treating cancer.
We also note that appellant renews the argument regarding synergistic
combination of the claimed active ingredients. Request, page 7. However, as
previously pointed out, the arguments based upon synergism are not supported by
objective evidence of non-obviousness. Slip opinion, page 4.
Appeal No. 2004-1974
Application No. 09/767,424
Page 3
We have considered appellant’s request to the extent indicated but decline to
change our decision in any manner.
REHEARING DENIED
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
)
) INTERFERENCES
Demetra J. Mills )
Administrative Patent Judge )
Appeal No. 2004-1974
Application No. 09/767,424
Page 4
Schering-Plough Corporation
Patent Department (K-6-1, 1990)
2000 Galloping Hill Road
Kenilworth, NJ 07033-0530
dem