Ex Parte Fehre et al

Patent Trial and Appeal Board

Dec 18, 2012

12203268 (P.T.A.B. Dec. 18, 2012)

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.
12/203,268 09/03/2008 Jens Fehre P08,0244 2839
26574 7590 12/19/2012
SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
EXAMINER
LI, BAO Q
ART UNIT PAPER NUMBER
1648
MAIL DATE DELIVERY MODE
12/19/2012 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 JENS FEHRE, RALF NANKE, and MARTIN STETTER
__________

Appeal 2011-013515
Application 12/203,268
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
diagnosis substance for application in a method for diagnosis of pathological
tissue. The Patent Examiner rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Claims 1-4 are on appeal. Claim 1 is representative and reads as
follows:

Appeal 2011-013515
Application 12/203,268

2
1. A diagnosis substance for application in a method for diagnosis of
pathological tissue, said diagnosis substance comprising at least one virus
population with virus particles specifically binding to vascular endothelial
growth factor (VEGF) target molecules typical of a specific pathological
tissue, and a label respectively bound to the virus particles, said label
comprising a label property that is detectable with a detection device.

The Examiner rejected claims 1-4 under 35 U.S.C. §102(b) as
anticipated by Yan.
1

Claims 2-4 have not been argued separately and therefore stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

ANTICIPATION
The Examiner found that Yan described a technique using a phage
antibody peptide library display to identify a human single chain antibody
binding to VEGF. (Ans. 5.) The Examiner found that Yan‟s method
comprised using a single chain antibody peptide library expressed by the
M13 bacteriophages to screen, identify and isolate an M13 bacteriophage
expressing such single chain antibody capable of binding to VEGF, wherein
the phage is further detected by an antibody labeled with a detectable agent,
e.g., Horseradish peroxides (HRP) and measured with an ELISA reader.
(Id.) Additionally, the Examiner found that Yan described using a
detectable agent of an HRP labeled anti-M-13 antibody (62) to specifically
bind a population of M13 bacteriophages that express the anti-VEGF single
chain antibody with a Bio-Rad model 550 plate read device. (Id.)

1
Xiyun Yan et al., Human single chain antibody to vascular endothelial
growth factor: gene cloning, high-level expression, affinity maturation and
bioactivity, 43 SCIENCE IN CHINA, 232-238 (2000).

Appeal 2011-013515
Application 12/203,268

3
Therefore, according to the Examiner, this population of M13
bacteriophages taught by Yan meets the limitations of claims 1-4. (Id.)
Appellants contend that Yan concerns the cloning of an antibody to
VEGF and describes the development of a single chain antibody from a
human synthetic antibody library, which antibody was then expressed on a
high level, and its binding affinity was improved. (App. Br. 5.) Appellants
assert that Yan describes various techniques for achieving these results,
including using the HRP-labeled anti-M13 antibody. (Id.) According to
Appellants, because this product is an antibody and not a virus or a virus
population, Yan “does not disclose all of the elements of claim 1 as arranged
and operating in that claim,” i.e., that the labeling agent is bound to the virus
particles. (Id. at 5-6.)
In the Response to Argument, the Examiner explained that
anticipation by Yan comes not from the antibody product itself, but from the
disclosure of “a population of M13 bacteriophages itself that expresses a
single chain antibody binding to VEGF and detected by a detectable agent
HRP labeled anti-M13 antibody….” (Ans. 6.) According to the Examiner,
“[t]his population of M13 bacteriophages harboring the anti-VEGF single
chain antibody comprises the property of binding to VEGF and [having] a
detectable agent upon it is recognized and bound by the detectable agent
HRP conjugated anti-M13 antibody by an ELISA reader device.” (Id.)
Having considered the evidence and the arguments, we agree with the
Examiner, for the reasons provided by the Examiner, that Yan‟s disclosure
anticipated the claimed diagnosis substance. Specifically, Yan discloses a
population of M13 bacteriophage that includes complexes formed by M13
bacteriophage that express an anti-VEGF single chain antibody, bound by
Appeal 2011-013515
Application 12/203,268

4
HRP-labeled anti-M13 antibodies; this population comprises each of the
elements required by claim 1. While Appellants assert that “[t]he subject
matter of the present invention is not concerned with viruses that display
antibodies on their surface” (App. Br. 3)(addressing a withdrawn rejection)
such a limitation is not recited in the claims. Moreover, Appellants have not
established with evidence that “the diagnosis substance of the claims on
appeal has a structure that inherently „customizes‟ that diagnosis substance
for the type of binding that is specifically claimed in claim 1.” (Reply Br.
3.) Attorney‟s arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Accordingly, we affirm the Examiner‟s anticipation rejection.

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

AFFIRMED

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