Ex Parte Castro-Perez et al

Patent Trial and Appeal Board

Jul 20, 2016

11809067 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111809,067
48990 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
05/31/2007
07/22/2016
FIRST NAMED INVENTOR
Jose Castro-Perez
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.
67132CON(49991) 9206
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE CASTRO-PEREZ, ROBERT PLUMB,
and JANE KIRBY
Appeal2014-009167
Application 11/809,067
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHELLE N. ANGENBRAND, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 28, 30-38, 40 and 42---61. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method, apparatus and computer readable
medium for identifying a substance contained in an analyte sample.
Claim 28 is illustrative:
28. A method for identifying a substance contained in an
analyte sample using a mass spectrometer comprising the steps
of:
Appeal2014-009167
Application 11/809,067
storing metabolite data from an analysis of the analyte
sample by the mass spectrometer;
applying a mass filter window to the metabolite data,
wherein the mass filter window specifies a range of decimal
mass values associated with a mass value of a parent
compound;
excluding detected ions having decimal mass values
outside the range of decimal mass values specified by the mass
filter window as unwanted;
creating an inclusion list of detected ions having decimal
mass values within the range of decimal mass values specified
by the mass filter window; and
identifying a metabolite associated with the parent
compound based on the inclusion list.
The Reference
Haiying Zhang et al., A software filter to remove interference ions from drug
metabolites in accurate mass liquid chromatography/mass spectrometric
analysis, 38 J. MASS SPECTROM. 1110-12 (2003) (hereinafter Zhang).
Tlze ,,_Rejections
The claims stand rejected as follows: claims 28, 30-38, 40 and 42---61
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement and under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention, claims 28, 30,
31, 33-38, 40, 42-52 and 54---61 under 35 U.S.C. § 102(a) over Zhang, and
claims 32 and 53 under 35 U.S.C. § 103 over Zhang.
OPINION
We reverse the rejections under 35 U.S.C. § 112 and affirm the
rejections under 35 U.S.C. §§ 102(a) and 103.
2
Appeal2014-009167
Application 11/809,067
Rejection under 35 USC§ 112, second paragraph
"[T]he indefiniteness inquiry asks whether the claims 'circumscribe a
particular area with a reasonable degree of precision and particularity."'
Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir.
2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)).
The Examiner merely questions the meaning of numerous claim terms
(Ans. 9--12). The Examiner provides no substantive explanation as to why
those claim terms, when interpreted by one of ordinary skill in the art in light
of the Appellants' Specification, fail to circumscribe a particular area with a
reasonable degree of precision and particularity.
We therefore reverse the rejection under 35 U.S.C. § 112, second
paragraph.
Rejection under 35 USC§ 112,first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991)).
The Examiner asserts that the Appellants' Specification fails to show
possession of the claimed invention because the meaning of a number of the
Specification's terms is not clear (Ans. 7-9).
The Examiner does not provide a substantive explanation as to why
the alleged lack of clarity of those terms would have caused the Appellants'
3
Appeal2014-009167
Application 11/809,067
Specification to fail to convey to one of ordinary skill in the art that the
Appellants were in possession of the claimed subject matter.
Hence, we reverse the rejection under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 US.C. §§ 102(a) and 103
The Appellants' sole argument regarding the rejections under
35 U.S.C. §§ 102(a) and 103 is that the Appellants have antedated Zhang,
thereby removing it as a prior art reference (App. Br. 20-22).
The Appellants' Specification claims benefit of and priority to two
U.S. provisional applications, no. 60/449,534 (filed Feb. 24, 2003) and
no. 60/531,044 (filed Dec. 19, 2003) (Spec. 1:3-7). Zhang discloses only
the publication year (2003), 1 but states that the article was accepted on
July 11, 2003 (p. 1110), thereby indicating that it was published before the
Appellants' provisional application no. 60/531,044's December 19, 2003
filing date. Hence, for provisional application disclosure to be effective for
antedating Zhang it must be present in provisional application
no. 60/449,534. 2
1 The Appellants' statement that Zhang "is dated October 2003"
(App. Br. 20) is not supported by Zhang.
2 The Appellants assert that "Claim 61 recites ... applying a mass filter
window to the mass of the identified metabolite in order to exclude false
positives, said mass filter window containing a mass of one of a known
starting drug or starting compound (Abstract; page 6, lines 9-11; page 8,
line 12 to page 9, line 23; page 12, line 25 to page 13, line 5; Claim 3). As
the cited sections illustrate, the '534 provisional supports Claim 61 and,
thus, the priority claim is proper" (App. Br. 10-11). The Appellants do not
specifically point out, and it is not apparent, where the cited sections provide
support for a mass filter window.
4
Appeal2014-009167
Application 11/809,067
To antedate Zhang, the Appellants rely upon the Rule 131
Declarations of Jose Castro-Perez and Jane Kirby (App. Br. 20-22).
Castro-Perez asserts that software functional specification documents
for the first working version of the invention indicate reduction to practice
before June 1, 2003 (i-f 4) and that provisional application '044's Figure 5
(which was filed Dec. 19, 2003 and appears to disclose the Appellants'
recited mass filter window) "clearly demonstrates that I was in possession of
the invention well before June 1, 2003 because of the substantial and lengthy
effort required to reduce the invention to practice" (i-f 5).
Castro-Perez's bald assertions regarding the software functional
specification documents and provisional application '044's Figure 5 do not
provide the required evidence of either reduction to practice before Zhang' s
publication date or conception before Zhang's publication date coupled with
due diligence until a subsequent actual reduction to practice or the filing of
the application. See 37 C.F.R. § 1.131(b).
Kirby asserts that her Declaration's Exhibit A, which is dozens of
pages long, shows reduction to practice before Zhang' s publication which,
according to Kirby, was in October 2003 (i1i1 9--11 ).
Kirby does not point to specific disclosures in Exhibit A and establish
that those disclosures show reduction to practice prior to Zhang's
publication date. Kirby's mere assertion does not provide the required
evidence of reduction to practice.
Accordingly, we are not persuaded of reversible error in the rejections
under 35 U.S.C. §§ 102(a) and 103.
5
Appeal2014-009167
Application 11/809,067
DECISION/ORDER
The rejections of claims 28, 30-38, 40 and 42-61 under
35 U.S.C. § 112, first paragraph, written description requirement, and
35 U.S.C. § 112, second paragraph, are reversed. The rejections over Zhang
of claims 28, 30, 31, 33-38, 40, 42-52 and 54--61under35 U.S.C. § 102(a)
and claims 32 and 53 under 35 U.S.C. § 103 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
6