Ex Parte Castro-Perez et alDownload PDFPatent Trial and Appeal BoardJul 20, 201611809067 (P.T.A.B. Jul. 20, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation