Ex parte BECK et al.

Board of Patent Appeals and Interferences

Aug 11, 1998

07815630 (B.P.A.I. Aug. 11, 1998)

Application for patent filed December 30, 1991. 1
According to applicants, this application is a continuation
of Application 07/548,419, filed July 5, 1990, now abandoned;
which is (1) a continuation-in-part of Application 07/431,639,
filed November 6, 1989, now U.S. 5,130,128, issued July 14, 1992;
and (2) a continuation-in-part of Application 07/177,223, filed
April 4, 1988, now U.S. 4,956,349, issued September 11, 1990.
Application 07/431,639 is a continuation-in-part of Application
07/161,039, filed February 26, 1988, now U.S. 4,879,110, issued
November 7, 1989. Both Applications 07/161,039 and 07/177,223
are continuations-in-part of Application 07/001,848, filed
January 9, 1987, now U.S. 4,897,265, issued January 30, 1990;
which is a divisional of Application 06/546,162, filed October 27,
1983, now U.S. 4,636,384, issued October 23, 1990; which is a
continuation-in-part of Application 06/384,625, filed June 3,
1982, now abandoned. U.S. 4,636,384 was reissued as U.S. Re.
33,403 on October 23, 1990.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEE R. BECK and RALPH J. STOLLE
____________
Appeal No. 94-3222
Application 07/815,6301
____________
HEARING: July 16, 1998
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____________
Before WINTERS, WILLIAM F. SMITH, and GRON, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal under 35 U.S.C. § 134 from an
examiner’s final rejection of Claims 2 and 6-9.
On consideration of the record of this case in its
entirety, it is hereby ORDERED that
the examiner’s final rejections in this case are
VACATED, and that
this application is REMANDED to the examiner for
further action consistent with the following opinion.
1. Introduction
Claims 1-9 are pending in this application. In
accordance with 37 CFR § 1.142(b), Claims 1 and 3-5 have been
withdrawn from further consideration by the examiner as
directed to non-elected subject matter under a restriction
requirement. Claims 2 and 6-9 stand rejected as unpatentable
under 35 U.S.C. § 101 purportedly as drawn to subject matter
without practical utility and under
Appeal No. 94-3222
Application 07/815,630
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35 U.S.C. § 112, first paragraph, as supported by a
specification which purportedly would not have enabled persons
skilled in the art to use the full scope of products and
methods claimed for the utility indicated.
According to appellants, Claims 2 and 6-9 stand or fall
together (Brief on Appeal, p. 4). Claims 2 and 6 represent
the subject matter claimed and read:
2. A food product comprising a composition wherein
said composition comprises a non-antibody fraction of
milk
and wherein said non-antibody fraction of milk
ameliorates,
in a subject with an allergy to an allergen, the symptoms
of said allergy of said subject to said allergen when
said
fraction is ingested by said subject and wherein said
fraction is produced by the process comprising:
(a) administering said allergy to a milk-
producing animal;
(b) collecting the milk from said animal of
part (a);
(c) filtering the milk of part (b) through
a filter which excludes molecules of greater than
100,000 daltons; and
(d) collecting the effluent from the filtration
of part (c) wherein said effluent contains said fraction.
6. A method for desensitizing a subject to an
allergen wherein said method comprises orally
administering to said subject a food product, in an
amount and for a time
sufficient to produce an amelioration in said subject of
Appeal No. 94-3222
Application 07/815,630
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symptoms of allergy to said allergen, wherein said food
product comprises a non-antibody fraction of milk from a
milk-producing animal that has been immunized with said
allergen.
2. Discussion
It should have been apparent from the questions this
panel of the Board asked counsel at Oral Hearing on July 16,
1998, that we should not rule on the merits of this appeal
because, as a matter of law, it would be incorrect to do so.
Accordingly, we vacate the examiner’s decision finally
rejecting the subject matter on appeal under 35 U.S.C. § 101
and under 35 U.S.C. § 112, first paragraph, for reasons which
follow.
We have searched the record of this case and do not find
any indication that the metes and bounds of the subject matter
claimed have been established. Where, as here, the issues
presented for our review concern the practical utility of the
full scope of the subject matter claimed and the
specification’s capacity to enable one skilled in the art to
make and use the full scope of the subject matter claimed,
claim interpretation is a necessary prerequisite to resolution
of the merits of the issues presented. See In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962)(When an analysis
Appeal No. 94-3222
Application 07/815,630
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of the claims leaves the reviewing body in a quandary as to
what they cover, the examiner and the Board may not rely on
speculation as to the meaning of the claims in support of a
rejection.) In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA
1971) instructs at 1235, 169 USPQ at 238 [footnotes omitted]:
[The] . . . first inquiry therefore is merely to
determine
whether the claims do . . . set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of the
language employed must be analyzed--not in a vacuum, but
always in light of the teachings of the prior art and of
the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill
in the pertinent art.
Once having determined that the subject matter defined by
the claims is particular and definite, the analysis then
turns to the first paragraph of section 112 to determine
whether the scope of protection sought is supported and
justified by the specification disclosure.
For example, the examiner appears not to have interpreted
the term “allergen” in Claims 2 and 6, the phrases “allergy to
an allergen” in Claim 2 and “allergy to said allergen” in
Claim 6, the phrases “ameliorates . . . the symptoms of said
allergy” in Claim 2 and “an amelioration . . . of symptoms of
allergy” in Claim 6, the term “non-antibody fraction” in
Claims 2 and 6, the phrase “a non-antibody fraction of milk
from a milk-producing animal that has been immunized with said
Appeal No. 94-3222
Application 07/815,630
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allergen” in Claim 6 (emphasis added), and the phrase
“excludes molecules of greater than 100,000 daltons” in Claim
2. We will refrain from considering the patentability of the
claimed subject matter under 35 U.S.C. § 101 and under 35
U.S.C. § 112, first paragraph, until the examiner has first
interpreted the meaning and breadth of the aforementioned
terms and phrases in light of the description of the claimed
subject matter in the specification and the teachings of the
prior art. Id. at 1235, 169 USPQ at 238.
Moreover, we do not understand how it is possible for the
examiner of this application to consider the meaning and
breadth of the terms and phrases in appellants’ claims in
light of the prior art or to determine whether this
specification would have enabled persons skilled in the art at
the pertinent time to make and use the full scope of invention
claimed without having first determined the effective filing
date of the subject matter claimed. Unless and until the
effective filing date of the subject matter presently claimed
is established, what is and what is not prior art as to the
subject matter presently claimed can be no more than
speculative.
Appeal No. 94-3222
Application 07/815,630
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For example, applicants claim the benefit of priority
under 35 U.S.C. § 120 through two lineages (Spec., p. 1, first
para.):
(1)07/815,630
December 30, 1991
I
(continuation)
(2)07/548,419
July 5, 1990
/ \
(continuation-in-part) \
(3)07/431,639 \
(November 6, 1989) (continuation-in-part)
I (5)07/177,223
(Continuation-in-part) (April 4, 1988)
(4)07/161,039 /
(February 26, 1988) /
\ /
(continuation-in-part)

(6)07/001,848
(January 9, 1987)
I
(divisional)
(7)06/546,162
(October 27, 1983)
I
(continuation-in-part)
(8)06/384,625
(June 3, 1982)
With those two lines in mind, we list the following
information:
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Application 07/815,630
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(1) Application 07/815,630 for “IMMUNE SUPPRESSIVE
PRODUCT,” was filed December 30, 1991, in the names of Beck
and Stolle.
(2) Application 07/548,419 was filed July 5, 1990, also
in the names of Beck and Stolle and is said to be the parent
of continuation Application 07/815,630 (this application);
(3) Application 07/431,639 for “USE OF HONEY AS VACCINE”
was filed November 6, 1989, in the sole name of Stolle and
issued July 14, 1992, as U.S. 5,130,128;
(4) Application 07/161,039 for “ANTIHYPERTENSIVE
HYPERIMMUNE MILK, PRODUCTION, COMPOSITION, AND USE” was filed
February 26, 1988, in the names of Beck and Stolle and issued
November 7, 1989, as U.S. 4,879,110;
(5) Application 07/177,223 for “ANTI-INFLAMMATORY FACTOR,
METHOD OF ISOLATION, AND USE” was filed April 4, 1988, in the
sole name of Beck and issued September 11, 1990, as U.S.
4,956,349;
(6) Application 07/001,848 for “METHOD FOR TREATING
DISORDERS OF THE VASCULAR AND PULMONARY SYSTEMS” was filed
January 9, 1987, in the names of Stolle and Beck and issued
January 30, 1990, as U.S. 4,897,265;
Appeal No. 94-3222
Application 07/815,630
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(7) Application 07/546,162 for “METHOD FOR TREATING
DISORDERS OF THE VASCULAR AND PULMONARY SYSTEMS” was filed
October 27, 1983, in the names of Stolle and Beck and issued
January 13, 1987, as U.S. 4,636,384; and
(8) Application 07/384,625, now abandoned, was filed June
3, 1982, in the names of Stolle and Beck.
We note from the above listing that while the subject
matter appellants claim appears to be entitled to the July 5,
1990, filing date of (2) Application 07/548,419 filed in the
names of Beck and Stolle as a file-wrapper continuation of
this application, it is not at all apparent that the full
scope of the subject matter presently claimed is entitled
either to the November 6, 1989, filing date of (3) Application
07/431,639 for “USE OF HONEY AS VACCINE” filed in the sole
name of Stolle or the April 4, 1988, filing date or (5)
Application 07/177,223 for “ANTI-INFLAMMATORY FACTOR, METHOD
OF ISOLATION, AND USE” filed in the sole name of Beck. In
fact, this record is noticeably devoid of any indication that
the effective filing date of the subject matter claimed has
been determined. Accordingly, it is our view that claim
interpretation in light of the prior art cannot have been
adequately done without first determining the merits of
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Application 07/815,630
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applicants’ claims under 35 U.S.C. § 120 so as to enable one
to establish what constitutes the prior art under 35 U.S.C. §
102.
Moreover, while compliance with the requirements of
35 U.S.C. § 112, first paragraph, is normally determined as of
the filing date of the pending application, the examiner, when
faced with an intervening reference, may be required to focus
on the filing date of a prior application as the result of the
applicants’ claims for priority under 35 U.S.C. § 120. United
States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247,
1251, 9 USPQ2d 1461, 1464 (Fed. Cir. 1989). We appear to have
just such a case before us.
On their face, Stolle, U.S. 5,130,128, filed November 6,
1989, and Beck, U.S. 4,956,349, filed April 4, 1988, appear to
be prior art under 35 U.S.C. § 102(e) whether or not they are
commonly assigned with this application filed in the names of
Beck and Stolle. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d
1885 (Fed. Cir. 1991). Moreover, Stolle and Beck, U.S.
4,636,384 and U.S. 4,732,757 may be prior art under 35 U.S.C.
§ 102(b). Accordingly, faced with what prima facie appears at
least in part to be prior art of record and applicants’ claims
for priority under 35 U.S.C. § 120 in this case, the examiner
Appeal No. 94-3222
Application 07/815,630
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should determine the effective filing date of the subject
matter here claimed before ruling on patentability under
either 35 U.S.C. § 112, first paragraph, § 101, § 102, or §
103. It is as of the
effective filing date that compliance with 35 U.S.C. §§ 112,
first paragraph, and 101 and prior art availability must be
determined.
Only after determining the effective filing date of the
subject matter claimed may the examiner (1) determine whether
appellants’ claims satisfy 35 U.S.C. § 112, second paragraph,
in light of applicants’ disclosure and the prior art, (2)
consider whether the subject matter claimed is patentable
under 35 U.S.C. § 101 or whether applicants’ disclosure would
have enabled one skilled in the art to make and use the full
scope of the claimed subject matter as required by 35 U.S.C. §
112, first paragraph, (3) determine patentability under 35
U.S.C. §§ 102 and 103 in view of the prior art (compare
Chester v. Miller, 906 F.2d 1574,
1576, 15 USPQ2d 1333, 1336 (Fed. Cir. 1990), citing In re
Gosteli, 872 F.2d 1008, 1010-1011, 10 USPQ2d 1614, 1616 (Fed.
Cir. 1989)), and (4) determine whether the subject matter
claimed in this case is unpatentable for obviousness-type
Appeal No. 94-3222
Application 07/815,630
The examiner may wish to consider obviousness-type2
double-patenting issues. However, take note that if questions of
obviousness-type double patenting of subject matter claimed in
issued patents come to light, the examiner may want to consider
whether adhering to unpatentability determinations under 35 U.S.C.
§ 101 or 112, first paragraph, for lack of utility is consistent
with the presumption of validity of the patented subject matter.
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double-patenting of subject matter claimed in any one or more
of the U.S. patents which have issued from applications for
which
priority under 35 U.S.C. § 120 here is claimed.2
We will allow the examiner of this case to determine in
the first instance the effective filing date of the subject
matter claimed, the scope and content of the pertinent prior
art, compliance with the requirements of the second paragraph
of Section 112, compliance with Section 101 and the first
paragraph of Section 112, and patentability of the claimed
subject matter under 35 U.S.C. § 102, under 35 U.S.C. § 103,
and over subject matter claimed in commonly assigned patents
absent the filing of effective terminal disclaimers. For this
panel to review the merits of the examiner’s decision
rejecting the claims on appeal under 35 U.S.C. § 101 and under
35 U.S.C. § 112, first paragraph, at this time without those
preliminary determinations having been made by an examiner is
Appeal No. 94-3222
Application 07/815,630
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inconsistent with our review function. See 35 U.S.C. § 7
(“The Board . . . shall . . . review adverse decisions of
examiners . . . .”) Accordingly, we vacate the examiner’s
final rejections and remand the case to the examining corps
for action consistent with this opinion.
This application, by virtue of its “special” status,
requires an immediate action, M.P.E.P. § 708.01(d). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
VACATED and REMANDED
SHERMAN D. WINTERS )
Administrative Patent Judge)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
TEDDY S. GRON )
Appeal No. 94-3222
Application 07/815,630
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Administrative Patent Judge)
Appeal No. 94-3222
Application 07/815,630
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