Ex Parte Bookbinder et alDownload PDFPatent Trial and Appeal BoardOct 20, 201611238171 (P.T.A.B. Oct. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111238,171 13565 7590 Dentons US LLP 4655 Executive Drive Suite 700 San Diego, CA 92121 0912712005 10/20/2016 FIRST NAMED INVENTOR Louis H. Bookbinder 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 33320.03053.US20/3053 6477 EXAMINER NASHED, NASHAAT T ART UNIT PAPER NUMBER 1656 MAILDATE DELIVERY MODE 10/20/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte LOUIS H. BOOKBINDER, ANIRBAN KUNDU, and GREGORY I. FROST Appeal2014-001770 Application 11/238,171 Technology Center 1600 Before DONALD E. ADAMS, ERIC B. GRIMES, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered July 27, 2016 ("Decision"). Appellants argue that the Decision misapprehended and/or overlooked Appellants' arguments ( 1) against a prima facie case of obviousness, and (2) for consideration of unexpected results. (Req. Reh'g 2-3.) We have considered Appellants' arguments but are not persuaded that we either misapprehended or overlooked any relevant issue of fact or law in reaching the conclusions set out in the Decision. The request for rehearing is denied. Appeal2014-001770 Application 11/238,1 71 Prima F acie Obviousness ANALYSIS Appellants argue that we "did not consider Appellant's [sic] arguments that [Braxton and Thompson] do not address the effects of PEGylation on higher molecular proteins, such as hyaluronidases, whose short half-life derives from their structure." (Req. Reh'g 7.) This argument is based on our statement that "Appellants acknowledge that human hyaluronidases may have a low molecular weight," and Appellants' contention that such statement is incorrect. (Decision 6; Req. Reh'g 7.) Regardless of what Appellants said, or meant to say, Appellants' argument that Braxton and Thompson are "not relevant" because they are directed to PEGylation of low molecular proteins (Req. Reh' g 3--4, 8) was considered and found unpersuasive for the reasons set forth in the Decision. (Decision 6.) In particular, the Decision states that the Bookbinder reference "teaches all of the limitation[ s] of the claimed composition except for 'about three to six PEG moieties"' and that both Braxton and Thompson teach and suggest PEGylation of proteins to increase half-life. (Id.) Unexpected Results Appellants argue that their "arguments for consideration of unexpected results were misapprehended and/ or overlooked by the Board, since the only reason provided by the Board for not considering such results is that they are not recited in claim 264." (Req. Reh'g 9.) Furthermore, Appellants point to the "results" in the Bookbinder Declaration and argue that it "describes that it is possible to achieve a level of PEGylation that results in a sufficient half-life for sustained activity." (Id.) 2 Appeal2014-001770 Application 11/238,1 71 Contrary to Appellants' argument, the results set forth in the Bookbinder Declaration were considered and not found to be persuasive of nonobviousness. (Decision 7.) Moreover, to the extent Appellants characterize the results set forth in the Bookbinder Declaration as "unexpected," the Decision makes clear that the combination of the Bookbinder reference and Braxton teaches that it is possible to achieve a level of PEGylation that results in sufficient half-life without abolishing activity. (Id. at 3--4 and 6-7 .) Thus, the Bookbinder Declaration "results" were expected, not unexpected. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appellants also argue, based on the incorrect conclusion that we did not consider the results set forth in the Bookbinder Declaration, that "the Board should have considered whether the limitations in dependent claims 293, 295-298 and 300 present additional reasons for nonobviousness." (Req. Reh'g 9.) However, because Appellants failed to set forth separate, comprehensive arguments for patentability of those dependent claims, in addition to advancing such arguments under separate subheadings, our affirmance of the rejection of those claims in the Decision was proper. (Decision 9.) See 37 C.F.R. § 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). 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). REHEARING DENIED 3 Copy with citationCopy as parenthetical citation