Scholar Rock, Inc.

Patent Trials and Appeals Board

Mar 1, 2022

2020005408 (P.T.A.B. Mar. 1, 2022)

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. 15/671,217 08/08/2017 Thomas Schurpf 127036-01712 4674 156136 7590 03/01/2022 MCCARTER & ENGLISH, LLP / Scholar Rock 265 Franklin Street Boston, MA 02110 EXAMINER KEMMERER, ELIZABETH ART UNIT PAPER NUMBER 1646 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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@mccarter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS SCHURPF, NAGESH K. MAHANTHAPPA, and MICHELLE STRAUB Appeal 2020-005408 Application 15/671,217 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and TAWEN CHANG, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims on the grounds of nonstatutory double patenting and lack of written descriptive support for the claimed antibody product. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Scholar Rock, Inc. Appeal Br. 3. Appeal 2020-005408 Application 15/671,217 2 Claims 17-29 are on appeal. Claim 17 is representative and is reproduced in the “Claims Appendix” of Appellant’s Brief. Appeal Br. 27 (emphasis omitted). Examiner has rejected claims 17-29 on the ground of nonstatutory double patenting over claims 1-10 of U.S. Patent No. 9,758,576. See Final Act. 8-10; Ans. 10-12, 24-25. Appellant does not provide any substantive arguments with respect to this rejection stating only that they “will consider submitting a terminal disclaimer in compliance with 37 C.F.R. 1.321(b) and (c), if deemed appropriate, upon allowance of the pending claims, which will obviate this rejection.” Appeal Br. 26. We, therefore, summarily affirm this rejection. See Manual of Patent Examining Procedure § 1205.02 (9th Ed., Rev. 08.2017, Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Examiner rejected claims 17-29 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. See Final Act. 3-8; Ans. 3-9, 12-23. Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports Examiner’s conclusions that the Specification does not provide sufficient written descriptive support for the genus of antibody products claimed. Accordingly, we sustain Examiner’s rejections of each of these claims for the reasons set forth in the Final Office Action (Final Act. 3-8) and Answer (Ans. 3-9, 12-23) which we incorporate herein by reference in their entirety. Appeal 2020-005408 Application 15/671,217 3 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17-29 112 Written Description 17-29 17-29 Nonstatutory Double Patenting US 9,758,576 17-29 Overall Outcome 17-29 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED