RESEARCH DEVELOPMENT FOUNDATION

Patent Trials and Appeals Board

Apr 9, 2020

14510203 - (D) (P.T.A.B. Apr. 9, 2020)

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.
14/510,203 10/09/2014 Beat A. IMHOF CLFR.P0410US 3768
52034 7590 04/09/2020
Parker Highlander PLLC
1120 South Capital of Texas Highway
Bldg. 1, Suite 200
AUSTIN, TX 78746
EXAMINER
HADDAD, MAHER M
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex Parte BEAT A. IMHOF, MARIJANA MILJKOVIC-LICINA, and
PHILIPPE HAMMEL

_________________

Appeal 2019-002357
Application 14/510,203
Technology Center 1600
_________________

Before DEBORAH KATZ, JOHN E. SCHNEIDER, and
MICHAEL A. VALEK, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review2, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–8, 10–15, and 19. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party-in-interest as Research Development Foundation.
(Appeal Br. 3.)
2 We consider the Specification filed October 9, 2014 (“Spec.”), the Final
Office Action issued August 2, 3017 (“Final Act.”), the Appeal Brief filed
May 2, 2018 (“Appeal Br.”), the Examiner’s Answer issued on May 23,
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Appellant’s specification is directed to monoclonal antibodies against
the protein Olfml-3 and methods for using these antibodies to treat
angiogenesis-related conditions. (Spec. ¶ 3.)
Appellants’ claim 1 recites:
An isolated monoclonal antibody, wherein the antibody
specifically binds to Olfml-3 and is selected from the group
consisting of:
(a) an antibody comprising a first VH CDR having the
sequence of VH CDRl of SEQ ID NO: 7, a second VH CDR
having the sequence of VH CDR2 of SEQ ID NO: 8, a third
VH CDR having the sequence of VH CDR3 of SEQ ID NO: 9,
a first VL CDR having the sequence of VL CDRl of SEQ ID
NO: 10, a second VL CDR having the sequence of VL CDR2
of SEQ ID NO: 11, and a third VL CDR having the sequence of
VL CDR3 of SEQ ID NO: 12;
(b) an antibody comprising a first VH CDR having the
sequence of VH CDRl of SEQ ID NO: 21, a second VH CDR
having the sequence of VH CDR2 of SEQ ID NO: 22, a third
VH CDR having the sequence of VH CDR3 of SEQ ID NO: 23,
a first VL CDR having the sequence of VL CDRl of SEQ ID
NO: 24, a second VL CDR having the sequence of VL CDR2
of SEQ ID NO: 25, and a third VL CDR having the sequence
ofVL CDR3 of SEQ ID NO: 26; and
(c) an antibody comprising a first VH CDR having the
sequence of VH CDRl of SEQ ID NO: 13, a second VH CDR
having the sequence of VH CDR2 of SEQ ID NO: 14, a third
VH CDR having the sequence of VH CDR3 of SEQ ID NO: 15,
a first VL CDR having the sequence of VL CDRl of SEQ ID
NO: 16, a second VL CDR having the sequence of VL CDR2
of SEQ ID NO: 17, and a third VL CDR having the sequence
ofVL CDR3 of SEQ ID NO: 18.

2018 (“Ans.”), and the oral argument held on April 1, 2020, in reaching our
decision.
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(Appeal Br. 11.) Appellant’s claim 19 recites: “A method of treating an
angiogenesis-related condition in a subject comprising administering to the
subject an amount of an antibody in accordance with of claim 1 that is
effective to treat the angiogenesis-related condition wherein the
angiogenesis-related condition comprises cancer.” (Appeal Br. 13.)
The Examiner provisionally rejected claims 1–8, 10–15, and 19 under
the doctrine of obviousness-type double-patenting over claims 1, 3, 6, 9–11,
and 15–27 of application 15/227,931. (See Ans. 3–4.) Application
15/227,931 was abandoned on September 12, 2019, after the Examiner’s
Answer issued on May 23, 2018. Accordingly, this rejection is moot.
The Examiner also rejected claims 1–8, 10–15, and 19 under the
doctrine of obviousness-type double-patenting over claims 1–6 of U.S.
Patent 9,096,662 B2, issued Aug. 4, 2015 (“the ’662 patent”) and over
claims 1–15 of U.S. Patent 8,663,637 B2, issued Mar. 4, 2017 (“the ’637
patent”). (See Ans. 4.) The ’662 and ’637 patents name the same inventors
as Appellant’s current application and list the same assignee.
Appellant addresses claim 19 of the current application. (See Appeal
Br. 17.) Accordingly, we focus on claim 19, which depends on claim 1, in
our review. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 of the ’662 patent is drawn to a pharmaceutical composition
and claim 1 of the ’637 patent is drawn to a method of inhibiting angionesis
in a subject with an angiogenic condition. (See ’662 patent 57:33–40 and
’637 patent 57:28–38.) Both claims recite an antibody “wherein the
antibody recognizes and binds to (i) epitope within amino acid positions 86-
99 of SEQ ID NO:l (human Olfml3 protein), or (ii) an epitope within amino
acid positions 390-403 of SEQ ID NO: 1, inhibits the binding of human
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Olfml3 protein to BMP4 protein, and reduces the number of pericytes in
vessels.” (Id.)
The Examiner cites Example 14 and Figure 25 of the ’662 and ’637
patents for the finding that claim 1 of both patents recite antibodies falling
within the scope of Appellant’s currently pending claim 1 and, thus, claim
19. (See Ans. 4; see ’662 patent 39:37–44 (Example 14) and Fig. 25A–B;
see ’637 patent 39:37–44 (Example 14), and Fig. 25A–B.) Specifically,
Example 14 of both patents refers to monoclonal antibodies that recognize
amino acids 390–403 of human/mouse Olfml3 and reduce tumor growth by
half, citing Figures 25A and B. (See ’662 patent 39:37–44; see ’637 patent
39:37–44.) Figures 25A and B of both patents provide results from
antibodies identified as “9F8BO” and “46A9BO.” Thus, Example 14 of the
’662 and ’637 patents indicates that monoclonal antibodies 9F8BO and
46A9BO recognize amino acids 390–403 of Olfml3. Because claim 1 of
each of the ’662 and ’637 patents recite antibodies that recognize and bind to
an epitope within amino acid positions 390–403 of human Olfml3, the
record supports the Examiner’s finding that claim 1 of both patents
encompasses monoclonal antibodies 9F8BO and 46A9BO.
Appellant’s current Specification states in the Summary of the
Invention: “In certain aspects, the antibody may comprise all or part of the
heavy chain variable region and/or the light chain variable region of the
46A9BO, 9F8BO or Z14A7 monoclonal antibodies.” (Spec. ¶ 9.)
Appellant’s Specification also provides Table 1, which recites the heavy
chain and light chain CDR sequences (SEQ ID Nos: 7–9 and 10–12,
respectively) of the monoclonal antibody 46A9BO and the heavy chain and
light chain CDR sequences (SEQ ID Nos: 21–23 and 24–26, respectively) of
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the monoclonal antibody 9F8BO. (See Spec. 40; see also ¶ 123.) Thus, at
least some of the SEQ ID NOs recited in claim 1 and claim 19 (SEQ ID
NOs: 7–12 and 21–26) are the CDR sequences of monoclonal antibodies
with the same designation as those encompassed by claim 1 of both the ’662
and ’637 patents.
Genetic sequences of known proteins have previously been found to
be obvious. See In re Kubin, 561 F.3d 1351, 1356 (Fed. Cir. 2009) (“[T]his
court determines that the Board had substantial evidence to conclude that
appellants used conventional techniques, as taught in Valiante and
Sambrook, to isolate a gene sequence for NAIL.”). Appellant’s description
of how the currently claimed genetic sequences were determined, using
RNA extraction and PCR amplification with previously reported
designations for CDR regions, provides a similar factual basis for the
obviousness of the currently claimed sequences. (See Spec. ¶ 122.)
In light of these facts, the Examiner’s finding is reasonable that even
if the ’662 and ’637 patents do not teach the sequences for the CDRs recited
in claim 1 of Appellant’s current application, these sequences are an inherent
property of the 9F8BO and 46A9BO monoclonal antibodies recited in the
claims of the ’662 and ’637 patents. (See Ans. 4.) Specifically, we agree
that it is reasonable to assume that antibodies developed by the same
inventors working for the same company and named with the same six-
character combination of letters and numbers are the same antibodies, absent
evidence to the contrary. Thus, we agree that claim 1 of both the ’662 and
’637 patents renders obvious claim 1 and claim 19 of Appellant’s currently
pending application.
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Appellant argues that the ’662 and ’637 patents do not provide the
sequences of the 9F8BO or 46A9BO antibodies and, therefore, one of
ordinary skill in the art could not be put in possession of these antibodies
and their sequences. (See Appeal Br. 8.) According to Appellant, the terms
“9F8BO” and “46A9BO” are merely laboratory designations that do not
convey information about how to obtain the antibodies or their sequences.
(See Appeal Br. 8.)
We are not persuaded by these arguments because there is sufficient
basis for the Examiner’s finding that the CDR sequences recited in claim 1
are an inherent property of the 9F8BO and 46A9BO monoclonal antibodies.
Although “9F8BO” and “46A9BO” are merely laboratory designations, as
Appellant argues, absent evidence to the contrary, it is reasonable to find
that one would use the same designation for the same antibody. Therefore, it
is reasonable to find that the antibodies provided as an embodiment of
Appellant’s current claims are the same antibodies described as having the
attributes of those recited in the ’662 and ’637 patents.
Under In re Best, 562 F.2d 1252, 1255 (CCPA 1977),
[w]here . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, supra [441 F.2d 660 (CCPA 1971)]. Whether
the rejection is based on ‘inherency’ under 35 USC 102, on
“prima facie obviousness” under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.

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Given the support in the record that the monoclonal antibodies encompassed
by claim 1 of both the ’662 and ’637 patent are the same as antibodies with
the CDRs recited in Appellant’s current claim 1, it is Appellant’s burden to
present evidence if they are different. Appellant fails to direct us to such
evidence.
Appellant argues that an allegedly inherent feature must be enabled
for there to be anticipation, citing Toro Co. v. Deere & Co., 355 F.3d 1313,
1320 (Fed. Cir. 2004). (See Appeal Br. 8.) According to Appellant, the
elements of the 9F8BO and 46A9BO antibodies that are recited in
Appellant’s current claims are not actually described or enabled in the cited
patents and, therefore, cannot form the basis for an inherent anticipation
rejection. (See Appeal Br. 8.)
We are not persuaded by this argument because there is sufficient
support in the record for the Examiner’s finding that monoclonal antibodies
within the scope of Appellant’s current claim 1 are described and enabled in
the ’662 and ’637 patents. Whether or not antibodies must be sequenced to
be sufficiently described and enabled, there is sufficient support for the
Examiner’s finding that the monoclonal antibodies discussed in the ’662 and
’637 patents would have the CDRs recited in Appellant’s currently pending
claim 1, even if the sequences of those CDRs was not known when the
applications that became those patents were filed.
Appellant argues further that a prior art generic claim cannot
anticipate a claim to a species falling within that claim, given that the genus
recited in the claims of the ’662 and ’637 patents do not specifically name
the currently claimed species. (See Appeal Br. 9–10.) We are not persuaded
by this argument because the Examiner’s rejection is not based on
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anticipation, but rather on obviousness-type double patenting. As here,
where the genus of antibodies recited in the prior claims includes specific
antibodies expressly provided in the specification of both the prior art
patents and the current application, and it would have been obvious to
determine the sequence of the CDRs of those antibodies, we are not
persuaded that the prior claims cannot render the current claims obvious.
Conclusion
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8, 10–
15, 19
Obviousness-type
Double Patenting
over claims 1, 3,
6, 9–11, 15–27 of
application
15/227,931 –
rendered moot by
the abandonment
of application
15/227,931

1–8, 10–
15, 19
Obviousness-type
Double Patenting
over claims 1–6 of
the ’662 patent
and over claims
1–15 of the ’637
patent
1–8, 10–15,
19

Overall
Outcome
1–8, 10–15,
19

Appeal 2019-002357
Application 14/510,203

9

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED