Ex Parte Piliponsky et al

Patent Trial and Appeal Board

Jan 22, 2013

11875710 (P.T.A.B. Jan. 22, 2013)

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.
11/875,710 10/19/2007 Adrian Martin Piliponsky STAN-519 (S06-319) 4874
24353 7590 01/22/2013
BOZICEVIC, FIELD & FRANCIS LLP
Bozicevic, Field & Francis
1900 UNIVERSITY AVENUE
SUITE 200
EAST PALO ALTO, CA 94303
EXAMINER
MACFARLANE, STACEY NEE
ART UNIT PAPER NUMBER
1649
MAIL DATE DELIVERY MODE
01/22/2013 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 ADRIAN MARTIN PILIPONSKY, MINDY TSAI,
and STEPHEN J. GALLI
__________

Appeal 2012-002474
Application 11/875,710
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS,
and STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method for the diagnosis of sepsis. The Patent
Examiner rejected the claims for anticipation. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
Appeal 2012-002474
Application 11/875,710

2
STATEMENT OF THE CASE
Claims 1, 3, and 4 are on appeal. The claims read:
1. A method for the diagnosis of sepsis, the method comprising:
determining the level of neurotensin in a blood sample from a
mammalian patient suspected of having sepsis, wherein elevated levels of
neurotensin relative to a normal control is indicative of sepsis.

3. The method according to Claim 1, wherein said patient is a human
patient.

4. The method according to Claim 3, wherein said determining step
comprises measuring the binding of neurotensin to a neurotensin-specific
antibody.

The Examiner rejected claims 1, 3, and 4 under 35 U.S.C. § 102(a) as
anticipated by Powell (US 2006/0052278 A1, published March 9, 2006, filed
Aug. 18, 2005).

DISCUSSION
Appellants contend that the rejection of claim 4 should be reversed
because Powell “fails to disclose the use of an antibody for analysis
generically, and fails to disclose the use of an antibody specific for
neurotensin specifically, and thus fails to teach every element of the claimed
invention, and cannot anticipate the claim.” (App. Br. 2.) We agree. The
rejection of claim 4 is therefore reversed.
Appellants argue claims 1 and 3 together, and contend that Powell
provided “no indication of any kind which cells or biological samples were
tested,” (id. at 5), and that Powell did not teach testing blood from a patient
suspected of having sepsis. The Examiner found that Powell taught
determining the presence of the markers of Table 1, i.e., dozens of
Appeal 2012-002474
Application 11/875,710

3
substances among which neurotension is listed, by chemical tests of blood.
(Ans. 6, citing Powell ¶ [0076].) However, Powell’s ¶ [0076] is directed to
diagnosing human dormancy syndrome, and it states that “[p]ertinent
historical features include symptoms of . . . septic shock . . . .,” among
dozens of other conditions. The fact that septic shock may be pertinent to a
diagnosis of human dormancy syndrome is not a teaching that a person
suspected of having sepsis should be tested for neurotensin levels. We agree
with Appellants that Powell did not teach this element of the claims. The
rejection of claims 1 and 3 is therefore reversed.

SUMMARY
We reverse the rejection of claims 1, 3, and 4 under 35 U.S.C.
§ 102(a) as anticipated by Powell.
REVERSED

cdc