David T. Harris et al.Download PDFPatent Trials and Appeals BoardJan 31, 202014315039 - (D) (P.T.A.B. Jan. 31, 2020) Copy Citation 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. 14/315,039 06/25/2014 David T. Harris 122170.00077 7801 34282 7590 01/31/2020 QUARLES & BRADY LLP (TUC) Attn: IP Docket ONE SOUTH CHURCH AVENUE, SUITE 1700 TUCSON, AZ 85701-1621 EXAMINER WEHBE, ANNE MARIE SABRINA ART UNIT PAPER NUMBER 1633 NOTIFICATION DATE DELIVERY MODE 01/31/2020 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): pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID T. HARRIS, TOM C. TSANG, XIANGHUI HE, BRIAN L. PIPES, MICHAEL E. PENNINGTON, and LINDA C. MEADE-TOLLIN ____________ Appeal 2018-009066 Application 14/315,039 Technology Center 1600 ____________ Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and MICHAEL A. VALEK, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as record, Arizona Board of Regents on behalf of The University of Arizona. Appeal Br. 1. Appeal 2018-009066 Application 14/315,039 2 STATEMENT OF THE CASE Claims 1–4 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composition comprising, an antibody against mammalian ubiquitin in a pharmaceutically acceptable carrier and one or more viable human tumor cells. Appeal Br. A-1. REFERENCE The prior art relied upon by Examiner is: Name Reference Date Varki et al. (“Varki”) US 2007/0021378 Al Jan. 25, 2007 Läubli et al., L-Selectin Facilitation of Metastasis Involves Temporal Induction of Fut7-Dependent Ligands at Sites of Tumor Cell Arrest, 66 Cancer Res. 1536–42 (2006) (“Läubli”) St. John et al., Expression Cloning of a Lymphocyte Homing Receptor cDNA: Ubiquitin Is the Reactive Species, 231 Science 845–50 (1986) (“St. John”) REJECTION Appellant requests review of the rejection of claims 1–4 under pre- AIA 35 U.C.C. §103(a) over Läubli in view of St. John and Varki. ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports Examiner’s conclusions that the subject matter of Appellant’s claims 1–4 are unpatentable over the combination of Läubli, St. John, and Varki. Accordingly, we affirm Examiner’s rejections of each Appeal 2018-009066 Application 14/315,039 3 of these claims based on the findings, and for the reasons set forth in the Answer and Final Office Action mailed August 7, 2017, which we incorporate herein and adopt by reference. For emphasis only, we provide the following: We are not persuaded by Appellant’s contention that “a reasonable likelihood of success remains elusive when considering the applicability of mouse data to humans.” Appeal Br. 5. Claim 1 requires the use of viable human tumor cells. The claim does not require treatment in a human being. The claim also does not require that the combination produce any particular effect or end result. All that is necessary to meet the claim elements is for the two components to be together in a composition (e.g., in the same vessel). Examiner’s rejection is relying on substituting the MEL 14 antibody for heparin as taught in Läubli’s experiments using a mouse colon carcinoma cell line for the heparin used in Varki’s experiments. See Ans. 7 (“MEL-14, an anti-ubiquitin antibody, and heparin can [both] be used to inhibit metastases of colon carcinomas.”); see id. at 4 (heparin “is effective in inhibiting the metastasis of melanomas, and both human and mouse colon carcinomas.”). On this record, there would be at least a reasonable expectation of success for Examiner’s proposed substitution in the prior art experimental protocol to form the claimed composition, especially given that the claimed combination does not require achieving any a particular result with the composition. “Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re Droge, 695 F.3d 1334, 1338 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903– 04 (Fed.Cir.1988)); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal 2018-009066 Application 14/315,039 4 821 F.3d 1359 (Fed. Cir. 2016) (explaining that the expectation of success issue involves a showing of “a reasonable expectation of achieving what is claimed”) (emphasis added). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4 103(a) Läubli, St. John, Varki 1–4 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation