Ex Parte Chaplin et al

Patent Trial and Appeal Board

Nov 15, 2016

13588217 (P.T.A.B. Nov. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/588,217 08/17/2012 PAUL CHAPLIN
76392 7590 11/17/2016
LAW OFFICE OF SALVA TORE ARRIGO AND SCOTT LEE, LLP
2200 Pennsylvania Ave NW
Suite 400E
WASHINGTON, DC 20037
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.
BN35PCT-US-M 8986
EXAMINER
BLUMEL, BENJAMIN P
ART UNIT PAPER NUMBER
1648
NOTIFICATION DATE DELIVERY MODE
11/17/2016 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):
SAL@ ARRIGO. US
scott@arrigo.us
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL CHAPLIN, PAUL HOWLEY,
and CHRISTINE MEISINGER-HENSCHEL 1
Appeal2014-006561
Application 13/5 88,217
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Bavarian Nordic A/S. App. Br.
3.
Appeal2014-006561
Application 13/588,217
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 26-41. 2 Specifically, claims 34--41
stand rejected as unpatentable under the doctrine of nonstatutory
obviousness-type double patenting as being obvious over claims 1 and 2 of
US 7,807,146 B2; claims 1 and 7 of US 8,268,327 B2; and claims 1, 4, and 9
of US 8,268,328 B2.
Claims 34--41 also stand rejected as unpatentable under the doctrine of
nonstatutory obviousness-type double patenting as being obvious over
claims 1, 7, 16, and 19 of US 6,924,137 B2; claims 1, 4, and 15 of
US 7,056,723 B2; claims 1, 15, and 17-20 of US 7,695,939 B2; claims 1
and 6 of US 7,964,395 B2; claims 1, 2, 14, and 24 of US 7,964,396 B2; and
claims 1 and 5-10 ofUS 7,964,398 B2.
Claims 34--41 stand further rejected as unpatentable under the
doctrine of nonstatutory obviousness-type double patenting as being obvious
over claims 1, 6, 7, and 11 of US 7,628,980 B2; claims 1, 11, and 12 of
US 7,892,533 B2; claims 1--4 of US 7,897,156 B2; and claims 1, 2, 3, 10,
and 11 of US 8,372,622 B2.
Claims 34--41 stand further rejected as unpatentable under the
doctrine of nonstatutory obviousness-type double patenting as being obvious
over claims 1, 8, and 9 of US 7,300,658 B2; claims 1, 9, and 11 of US
7,338,662 B2; and claim 1 of US 7,759,116 B2.
2Claims 1-25 are cancelled. App. Br. 41.
2
Appeal2014-006561
Application 13/588,217
Claims 26-41 stand rejected as unpatentable under the doctrine of
nonstatutory obviousness-type double patenting as being obvious over
claims 1-17 of US 7,445,924 B2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to an attenuated virus, MVA-BN,
which is derived from Modified Vaccinia Ankara virus, wherein the MVA-
BN virus, or a derivative thereof, induces at least substantially the same
level of immunity in vaccinia virus prime/vaccinia virus boost regimes when
compared to DNA prime/vaccinia virus boost regimes. Abstract.
REPRESENTATIVE CLAIM
Claim 34 is representative of the claims on appeal and recites:
34. A modified vaccinia Ankara (MVA) virus prepared
by:
a) culturing an MVA virus;
b) isolating an MV A virus that reproductively replicates in
chicken embryo fibroblast cells; and
c) selecting for an MV A virus that is unable to
reproductively replicate in the human keratinocyte cell line
HaCaT, in the human bone osteosarcoma cell line 143B, in the
human cervix adenocarcinoma cell line HeLa, and in the human
embryo kidney cell line 293.
App. Br. 42.
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Appeal2014-006561
Application 13/588,217
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are obvious under the nonstatutory doctrine of
obviousness-type double patenting. We address the arguments raised by
Appellants on appeal below.
Issue
Appellants argue the Examiner erred in failing to explicitly construe
both the claims on appeal and the claims of the patents cited by the
Examiner and then further failed to determine whether the claims on appeal
would have been obvious to a person of ordinary skill in the art over the
claims of the cited patents. App. Br. 14--15.
Analysis
As an initial matter, Appellants' application claims the benefit of the
filing date of international application PCT/EPOI/13628, filed November 22,
2001 (published on May 30, 2002), through a series of continuation
applications. App. Br. 18. Appellants assert that none of the cited patents
have an earlier effective U.S. filing date than the application on appeal. Id.
However, Appellants do not argue that the patents cited by the Examiner are
the results of restrictions imposed by the Examiner on the parent
applications. Thus, the appealed claims are not subject to the safe harbor
provisions of 35 U.S.C. § 121. Consequently, the question before us is
whether Appellants' claims on appeal would be obvious to a person of
ordinary skill in the art over the various patents cited by the Examiner.
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Appeal2014-006561
Application 13/588,217
According to Appellants, the pending claims are not "merely obvious
variants of what has been patented" in the patents cited by the Examiner.
Rather, Appellants argue, the claims of the cited patents are directed to
completely different, separate, and distinct inventions from that recited by
claims 26-41 and, therefore, the double patenting rejections are not
appropriate. App. Br. 13 (citing General Foods Corp. v. Studiengesellschaft
Kahle mbH, 972 F.2d 1272, 1280-81 (Fed. Cir. 1992).
Appellants argue further that the Examiner failed to make the requisite
analysis set forth by our reviewing court in Eli Lilly and Co. v. Barr
Laboratories, Inc., 251F.3d955, 968 (Fed. Cir. 2001). App. Br. 14.
Appellants argue that the Examiner has failed to explicitly define the scope
of the claims at issue. Id. Appellants also assert that the Final Action
neither identifies the differences between the inventions, as defined by the
scope of the conflicting claims, nor provides any reason why a person of
ordinary skill in the art would conclude that the invention defined in the
claim at issue is anticipated by, or would have been an obvious variation of,
the invention defined in a claim in the patent. Id. at 14--15. Rather,
Appellants argue, the Examiner erroneously treated the recitation of the term
"MVA-BN" within the cited patented claims as if it were a prior art
disclosure. Id. at 17. Appellants contend the Examiner's approach ignores
the rules of claim interpretation and uses the patented claims as though they
are a prior art disclosure for everything recited in the claims. Id.
Appellants also argue that none of the cited patents have an earlier
effective U.S. filing date earlier than the claims on appeal and, therefore,
there can be no unjustified timewise extension of the right to exclude by a
patent granted on the pending application. App. Br. 18. Moreover,
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Appeal2014-006561
Application 13/588,217
Appellants assert that, even if the present application were entitled to any
patent term adjustment or extension, these would not be unjustified
extensions, but would be justified. Id. (citing In re Braat, 937 F.2d 589, 595
(Fed. Cir. 1991)).
Nor, Appellants contend, would a patent granted on the pending
application promote multiple infringement suits by different assignees
asserting essentially the same patented invention. App. Br. 19. According
to Appellants, a comparison of claims 26-41 with those of the cited patents
demonstrates that they do not claim "essentially the same patented
invention" and, therefore, this justification for a conclusion of obviousness-
type double patenting is not present in the current case. Id.
We are not persuaded by Appellants' arguments. In their Appeal
Brief, Appellants detail, at considerable length, the differences between the
claims on appeal and each of the prior patent claims cited by the Examiner.
Appellants argue that each of the different inventions claimed by the prior
patents are patentably distinguishable from Appellants' instant claims and
would, therefore, not be obvious over those claims. See App. Br. 20-39.
We do not agree that this is the correct analytical approach to this issue.
The instant appeal is, with respect to its prosecution history, peculiar
in that the claims on appeal are directed to the MVA-BN virus, which has
certain properties defined by the claim, whereas the cited claims of the cited
prior-issued patents are all directed, in one way or another, to various
methods of using that same virus. Appellants do not argue to the contrary.
As we see it, the question at issue before us, then, is not whether the cited
prior patents claim inventions that are patentably distinct from Appellants'
instant claims. Rather, it is whether Appellants' instant claims, reciting the
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Appeal2014-006561
Application 13/588,217
MVA-BN virus that possesses certain defined properties, would have been
obvious to a person of ordinary skill in the art with knowledge of the prior
patents cited by the Examiner.
We conclude that it would. For to practice any of the methods set
forth in the claims of the prior patents, which require the use of MVA-BN, it
would have been, a priori, necessary and obvious for the practitioner to have
knowledge of the very virus that is to be used in the claims recited by the
prior patents, as well as a method for making and selecting for that virus.
Indeed, without that knowledge of the MVA-BN virus, it would not have
been possible for an ordinary artisan to practice the methods recited in the
prior patents.
We conclude, therefore, that the MVA-BN virus recited in the
appealed claims would have been obvious to a person of ordinary skill based
on the inherent teachings of the prior art. Put differently, a skilled artisan
would have had to have knowledge and possession of the MVA-BN virus
(as currently claimed) in order to be able to practice the methods of
employing the MVA-BN virus (as claimed by the prior patents). See, e.g.,
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)
(stating that inherency is established when the cited art "necessarily
functions in accordance with, or includes, the claimed limitations").
Consequently, we conclude that Appellants' claims 26-41 would have
been obvious to a person of ordinary skill in the art over the prior patents
cited by the Examiner.
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Appeal2014-006561
Application 13/588,217
DECISION
The Examiner's rejection of claims 26-41 as unpatentable under the
nonstatutory doctrine of obviousness-type double patenting 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)(l ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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