Ex Parte BOON et al

Board of Patent Appeals and Interferences

Jan 16, 2009

08819669 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUDWIG INSTITUTE FOR CANCER RESEARCH
____________

Appeal 2009-0273
Application 08/819,669
Technology Center 1600
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Decided: January 16, 2009
____________

Before RICHARD TORCZON, MICHAEL P. TIERNEY, and SALLY
GARDNER LANE, Administrative Patent Judges.

TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
All pending claims have been rejected. The appellant (Ludwig) seeks
review of the rejection under 35 U.S.C. 134. We REVERSE.
Appeal 2009-0273
Application 08/819,669

2
CLAIMS ON APPEAL
Claims 183-191 are pending and have been rejected. When claims
subject to the same rejection1 are not argued separately, we select one of the
rejected claims as the focus for our analysis.2 We select claim 183 which
defines the invention as follows:3
An isolated, MAGE tumor rejection antigen precursor protein,
wherein said protein is encoded by a nucleic acid molecule, the
complementary sequence of which hybridizes to SEQ ID NO: 8
at 0.lxSSC, 0.1% SDS, wherein said tumor rejection antigen
precursor is obtainable from melanoma cells.

THE REJECTION
The examiner rejected the claims as having been anticipated4 or,
alternatively, obvious5 in view of a Chen patent6 because "the applicants did
not invent the claimed subject matter essentially for the reasons of record."7

1 While we are aware that the examiner has advanced alternative statutory
bases for the rejection, both the examiner and Ludwig focus on the evidence
of prior invention rather than on the niceties of anticipation versus
obviousness. Indeed, the appeal brief only identifies the § 102(f) rejection
as the rejection to be reviewed. Br. at 10. Hence, on this record, we treat
the two bases as the same rejection.
2 Bd.R. 37(c)(1)(vii).
3 All claim language reproduced from the claims appendix of the appeal
brief.
4 35 U.S.C. 102(f).
5 35 U.S.C. 103.
6 Tumor rejection antigen precursor, U.S. Patent 5,843,448 (1998).
7 Answer at 6.
Appeal 2009-0273
Application 08/819,669

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The reasons of record are best summarized in one of the non-final
rejections:8
...SEQ ID NO: 8 of the instant USSN 08/819,669 is the same
sequence as SEQ ID NO: 1 disclosed in Example 5 of U.S.
Patent No. 5,843,448 (see 892, mailed 3/28/01) (e.g., see
Example 5 on columns 7-8 of U.S. Patent No. 5,843,448). The
patented claims of U.S. Patent No. 5,843,448 are drawn to
MAGE-1 tumor rejection antigen precursor proteins and
immunogenic compositions, which anticipate the instant
MAGE tumor rejection antigen precursor proteins and
compositions thereof. * * *
Given…that no inventors are in common between the
instant USSN 08/819,669 and [the Chen patent],
there is ambiguity as to who invented the claims drawn to
MAGE-1 and the MAGE tumor rejection antigen precursor
proteins.
Because of this ambiguity, it is incumbent on applicants
to provide a satisfactory showing [that] would lead to a
reasonable conclusion that the instant listed inventors[] are the
sole inventors of the claimed invention.

In the answer, the examiner noted:9
With respect to the inventorship in [the Chen patent];
it is noted that the Petition to Correct Inventorship ...was
…granted 07/26/2007; which was over eight (8) years
subsequent to the issue date for [the Chen patent].
Prior to 2007, there was no inventor in common between
[the Chen patent] and the instant USSN 08/819,669.

8 Office action at 4 (6 December 2006) (emphasis added).
9 Answer at 14 (original emphasis).
Appeal 2009-0273
Application 08/819,669

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FINDINGS
1 — The inventors for the Chen patent and the present invention are not the
same.
2 — The Chen patent as issued listed seven inventors, all from New York
or Germany.10
3 — The Chen patent was corrected in 2007 to add two inventors: Thierry
Boon-Falleur and Pierre van der Bruggen.11
4 — The application on appeal lists as its inventors Boon-Falleur and van
der Bruggen plus six different inventors from Belgium or Italy.
5 — Thus, Boon-Falleur and Pierre van der Bruggen represent an overlap
in the inventors for the Chen patent and the present application.
6 — Ludwig does not in this appeal contest communication between any of
the various relevant inventive entities.
ANALYSIS
An applicant may claim neither subject matter that "he himself did not
invent"12 nor subject matter that would have been obvious from the

10 Chen patent, cover.
11 Chen patent, certificate.
12 § 102(f). This provision has been distinguished from other forms of
anticipation in requiring some channel of communication from the "real"
inventor to the present applicant. E.g., Agawam Woolen Co. v. Jordan,
74 U.S. (7 Wall.) 583, 602-03 (1868). Ludwig has not contested
communication.
Appeal 2009-0273
Application 08/819,669

5
invention of another.13 Named inventors, however, are presumed to be the
correct inventors.14
Presumptions evaporate in the face of probative evidence.15 The
evidence of record shows that the Chen patent and the present application
have different inventive entities and that the reported inventorship of the
Chen patent was corrected by the granting of a petition in 2007. The
presumption of correctness for inventorship places the burden squarely on
the examiner to articulate a reason to doubt the inventorship. This burden
cannot be very high since, necessarily, the applicant is in the best position to
know the proper inventorship. The examiner must, however, provide some
threshold basis for doubt.16 The examiner's theory was two-fold. First, that
there was no overlap in the inventorship, which ceased to be true when a
petition to correct the Chen patent was granted. Second, that there was no
overlapping inventorship before 2007. This second theory is the only one to
survive into appeal.
The premise of the second theory is flawed. A correction means that
the state-to-be-corrected has been found to be in error. The inventorship did

13 Agawam Woolen Co., 74 U.S. at 602-03; see also § 103(c)(1) (excluding
some situations not established on this record).
14 Cook Biotech Inc. v. ACell Inc., 460 F.3d 1365, 1381 (Fed. Cir. 2006).
Ludwig cites (Br. at 13) older precedent for the proposition that a higher
evidentiary standard also applies. The Supreme Court, however, foreclosed
such arguments, holding that the preponderance standard applies in all
Federal civil proceedings, even those involving allegations of fraud. Grogan
v. Garner, 498 U.S. 279, 288-89 (1991).
15 Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1579 (Fed.
Cir. 1984).
16 Cf. Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007) (noting the
initial burden is a procedural device, not an insurmountable barrier).
Appeal 2009-0273
Application 08/819,669

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not change in 2007, instead the listed inventors did. The corrected listing is
itself presumed to be correct.17 Thus, the burden lies squarely with the
examiner to adduce some additional reason why the inventorship for the
claims of the present application is wrong. The examiner's finding that there
was no overlapping inventorship before 2007 is technically wrong.
We understand the examiner's ill-ease with the evolving inventorship
in the present case. The differences in inventorship raise several reasonable
questions such as—
Why are there more than the two overlapping inventors for the
present invention?

Should the double-patenting rejection have been withdrawn?

Fortunately, to the extent the examiner considers these questions
unanswered on the present record, he has tools at his disposal to compel
answers, including reinstating the double-patenting rejection or seeking
additional evidence18 regarding the inventorship. The Board, however, lacks
a basis in the record to pursue any of these possibilities.
HOLDING
The rejection of claims 183-191 under both § 102(f) and § 103 is—

17 Winbond Elec. Corp. v. Int'l Trade Comm'n, 262 F.3d 1363, 1371 (Fed.
Cir. 2001). We decline to read the rejection as suggesting an error in the
petition decision without some new evidence or showing of a clear flaw.
18 Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284 (Fed. Cir. 2005)
(explaining why a burden shift can make sense procedurally when the
applicant has the best access to the relevant facts).
Appeal 2009-0273
Application 08/819,669

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REVERSED
ack

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Norman D. Hanson
FULBRIGHT & JAWORSKI, L.L.P.
666 Fifth Avenue
New York, New York 10103-3198