Ex Parte Zang

Patent Trial and Appeal Board

Feb 8, 2018

12777487 (P.T.A.B. Feb. 8, 2018)

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.
12/777,487 05/11/2010 Jingwu Z. Zang 5102/PCT/US/2 4477
28381 7590 02/12/2018
Arnold & Porter Kaye Scholer LLP
601 Massachusetts Ave., NW
Washington, DC 20001-3743
EXAMINER
EWOLDT, GERALD R
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
02/12/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing @ apks.com
ipdocketing @ aporter. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINGWU Z. ZANG1
Appeal 2016-004457
Application 12/777,487
Technology Center 1600
Before DEBORAH KATZ, ULRIKE W. JENKS, and DAVID COTTA,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 19, 23, and 24. (Appeal Brief (“App.
Br.”) 5—7.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 The real party-in-interest is reported to be Baylor College of Medicine and
Opexa Therapeutics, Inc. (App. Br. 1.)
Appeal 2016-004457
Application 12/777,487
The Examiner rejected claims 19, 23, and 24 under pre-AIA 35 U.S.C.
§ 101. Appellant does not argue for the separate patentability of the claims
that depend on claim 19. Accordingly, these claims stand or fall with claim
19, which is our focus. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 19 recites:
A vaccine capable of inducing an anti-idiotypic immune response
against autoreactive T cells comprising a peptide, said peptide
comprising a sequence of SEQ ID NO: 5 and a pharmaceutically
acceptable carrier.
(App. Br. 8.) Appellant’s Specification explains that T-cell receptors
(“TCRs”) comprising the peptide SEQ ID NO: 5 may be present in normal
individuals and patients suffering from autoimmune diseases. (See Spec.
172.)
Under the Examiner’s reasoning and the holding of Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013), we
affirm the Examiner’s rejection because claim 19 is drawn to a naturally
occurring fragment of a T cell receptor. (See Ans. 2.)
Appellant argues that the peptide of the instantly claimed vaccine has
markedly different characteristics than its naturally occurring counterpart in
its natural state. (See App. Br. 6.) According to Appellant, fragments of T
cell receptor do not occur naturally because T cell receptors are
transmembrane heterodimers composed of two chains connected by a
disulfide bond in the membrane of the T cell, but the claimed peptide does
not associate with another peptide chain. (See App. Br. 6.)
We are not persuaded by Appellant’s argument. In Myriad, the
claimed DNA was a fragment thousands of nucleotides long and “isolated”
2
Appeal 2016-004457
Application 12/777,487
from a chromosome many millions of nucleotides long. See Myriad, 569
U.S. at 583. Nevertheless, the Court held that reciting only an isolated
portion of a naturally occurring molecule would not make the molecule
patentable. See id. at 593. According to the Court, Myriad did not create or
alter any of the genetic information encoded in the recited genetic sequences
and so they were naturally occurring. See id.at 590.
Similarly, even though SEQ ID NO: 5 recited in Appellant’s claims is
only a portion of the full T cell receptor, the recited sequence has not been
altered from the naturally occurring sequence. Furthermore, as the
Examiner notes, Appellant’s claim 19 is not limited to the fragment of SEQ
ID NO: 5 because the transitional term “comprising” does not exclude the
full, naturally occurring protein. Accordingly, under the holding in Myriad,
the claimed peptide is not patentable subject matter.
Appellant argues further that the claimed vaccine differs functionally
from the naturally occurring T cell receptor because it induces an anti-
idiotypic immune response. (See App. Br. 6—7.) Appellant notes that SEQ
ID NO: 5 occurs in 50% of patients with multiple sclerosis, but in only 6.7%
of control patients, suggesting to Appellant that the naturally occurring
“counterpart” to SEQ ID NO: 5 is not capable of inducing an anti-idiotypic
immune response.2 (See App. Br. 6—7, citing Spec. 24, Table 2.)
We are not persuaded by this argument because Appellant does not
direct us to evidence in support of the assertion that the difference in the
occurrence of SEQ ID NO: 5 necessarily indicates a difference in the way
2 We note that Appellants’ argument is an admission that SEQ ID NO: 5
occurs naturally in multiple sclerosis patients.
3
Appeal 2016-004457
Application 12/777,487
the claimed peptide functions in these populations. Argument of counsel
does not persuade us that the immune response to the claimed peptide is
different from the response to its naturally occurring counterpart. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Appellant has not directed us to
such specific evidence.
Conclusion
Upon consideration of the record and for the reasons given, the
rejection of claims 19, 23, and 24 under 35 U.S.C. § 101 is sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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