Ex Parte Jung et al

Patent Trial and Appeal Board

Nov 17, 2014

11810358 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/810,358 06/04/2007 Edward K.Y. Jung SE1-0979-US 2285
80118 7590 11/17/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
LIN, JERRY
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
11/17/2014 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 EDWARD K. Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, and LOWELL L. WOOD, JR.
__________

Appeal 2012-006110
Application 11/810,358
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a data
analysis method and system for providing a medical treatment agent, which
have been rejected on obviousness and obviousness-type double patenting
grounds. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the Real Party in Interest is Searete LLC, which
is wholly owned by Intellectual Ventures Management, LLC (App. Br. 5).
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STATEMENT OF THE CASE
Claims 37, 74, 82, 93–96, and 107–116 are on appeal. Independent
claim 37 is illustrative and reads as follows:
37. A method comprising:
accepting an input identifying a treatment target in search of an agent
at one or more user interfaces, the input associated with at least one query
parameter; and
transmitting data from the one or more user interfaces to at least one
data analysis system, the data including at least the treatment target in search
of an agent and the at least one query parameter;
the data analysis system being capable of identifying at least one
agent for use in the context of the at least one treatment target;
the data analysis system further being capable of determining at least
one subset of study data based on the input, the at least one subset including
at least one subpopulation for which at least one adverse event profile
associated with administration of the at least one agent is acceptable within a
defined limit relative to a general population; and
the data analysis system further being capable of sending a signal to
either the one or more user interfaces or a different user interface in response
to the at least one subset and the at least one query parameter, which signal
transmits the at least one agent.

The Examiner has rejected claims 37, 74, 82, 93–96, and 107–116
under 35 U.S.C. § 103(a) as obvious based on Mohanlal2 and Filvaroff3
(Ans. 5–6). The Examiner also provisionally rejected the claims on the
ground of nonstatutory double patenting as being unpatentable over claims
1, 2, 13–38, 39, 50–52, and 75–81 of copending Application No. 11/647533
in view of Filvaroff (id. at 7).

2 Mohanlal, US 7,198,895 B2, issued Apr. 3, 2007.
3 Filvaroff, US 2006/0015952 A1, published Jan. 19, 2006.
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I. OBVIOUSNESS REJECTION
The Examiner finds that
Filvaroff teaches a method comprising accepting an input
identifying a treatment target in search of an agent, the input
associated with at least one query parameter (i.e. Filvaroff
teaches studying the mechanism of a particular drug, which
would include identifying a treatment target in search of an
agent, designing a therapeutic regime, which would include
where the inputs would be associated with a query parameter,
and screening the drug which would identify and present the
agent) (paragraph 0158); and presenting the agent, based on the
at least one subset and the at least one query parameter
(paragraph 0158 and Figure 2). Filvaroff also teaches using a
computer with their method, which would utilize a user
interface and transmitting the data from the interface to a
processor (i.e. data analysis system) (paragraphs 0117 and
0280).
(Ans. 5).
The Examiner acknowledges that Filvaroff does not teach
determining based on the input, at least one subset of study data
for which at least one adverse event profile associated with
administration of at least one agent is acceptable within a
defined time limit relative to a population for which the at least
one adverse event profile is unacceptable with respect to the
defined time limit

(id. at 6), but relies upon Mohanlal’s teaching “that a subset of participants
in clinical trials have an unacceptable adverse event profile within a time
period” (col. 1, ll. 24–45 and col. 18, ll. 15–67) to make up for this
deficiency (id.).
The Examiner concludes that “[a]t the time of the invention, it would
have been obvious for one of ordinary skill in the art to have modified the
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teachings of Filvaroff with the teachings from Mohanlal with the motivation
of having a means of ensuring that the agents have efficacy” (id.).
Appellants argue that the Examiner has not set out a prima facie case of
obviousness (App. Br. 20–67). We have considered Appellants’ arguments,
but do not find them convincing.
With respect to independent claim 37, Appellants’ arguments consist
of little more than repeating the claim language and the cited portions of the
prior art references, and asserting that the PTO has not met its burden
“insofar as that [Filvaroff and Mohanlal] do[] not recite the text of at least
Clauses [a] or [b] of Applicant’s Independent Claim 37, and insofar as that
the USPTO has provided no objectively verifiable evidence, or argument
based on objectively verifiable evidence, as to how [Filvaroff or Mohanlal]
could be modified/combined to teach at least Clauses [a] or [b] of
Independent Claim 37” (App. Br. 41, 47). Appellants take a similar
approach for dependent claims 93, 94, and 107 (id. at 60–67).
These arguments are unpersuasive. “[A]ll that is required of the office
to meet its prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Section 132, in
turn, requires notice to the applicant sufficient to inform him of the reasons
for rejection, “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application.” 35 U.S.C. § 132.
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Here, the Examiner notified Appellants that the claims were being
rejected as unpatentable under 35 U.S.C. § 103(a) and cited specific
passages in Mohanlal and Filvaroff, by paragraph or column and line that
were the basis for the conclusion of obviousness (Ans. 5–6). The
Examiner’s rejection satisfies the notice requirement of § 132, and therefore
meets the burden of establishing a prima facie case of unpatentability. Cf.
Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of the theory of
invalidity . . . , the prior art basis for the rejection . . . , and the identification
of where each limitation of the rejected claims is shown in the prior art
reference by specific column and line number was more than sufficient to
meet this burden.”).
Appellants also argue that “the USPTO assertions regarding a
teaching to modify/combine to meet the recitations of independent Claim 37
are based on ‘mere conclusory statements’ without evidentiary support”
(App. Br. 49–50 (capitalization omitted), citing KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007)).
This argument is unpersuasive because the Examiner provided a
reasoned basis for the conclusion of obviousness, i.e., “the motivation of
having a means of ensuring that the [therapeutic] agents have efficacy”
(Ans. 6). The Examiner’s conclusion is supported by the evidence (see id.,
citing Mohanlal, col. 1, ll. 24–45 and col. 18, ll. 15–35).
Appellants also argue that combining Mohanlal and Filvaroff in the
manner proposed by the Examiner would change Mohanlal’s principle of
operation (App. Br. 50–54) and “render Mohanlal unsatisfactory for its
intended purpose” (id. at 54–59).
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These arguments are also unpersuasive. Appellants have not
persuasively shown that combining Mohanalal’s screening methods with
Filvaroff’s screening assays would change either Mohanlal’s or Filvaroff’s
principle of operation or render either of them unsatisfactory for its intended
purpose. Appellants do not explain why “Filvaroff would no longer have
screening of candidate molecules for the treatment of tumor metastasis, and
treatment methods using such molecules” when combined with the screening
method taught by Mohanlal (id. at 53). Nor do Appellants explain why the
intended purpose of such a screening method would be rendered
unsatisfactory by the combination (id. at 57).
Finally, Appellants argue that “[w]hether or not the Patent Office has
carried its burden in establishing a prima facie case of unpatentability is a
question of law, not fact” (Reply Br. 7). Appellants argue that “[s]ince the
resolution of this question controls whether or not Appellant must produce
evidence in rebuttal of the prima facie case, Appellant asserts that it would
be premature/improper for the Board to decide this appeal on the issue of the
Patent Office fact finding” (id. at 7–8). Appellants request that, for those
claims where we conclude that the Examiner has made out a prima facie
case, “the Board should remand with instructions to the Patent Office to
reopen prosecution for the purpose of receiving evidence/argument in
rebuttal of the prima facie case” (id. at 8).
The Court of Appeals for the Federal Circuit has specifically rejected
this argument. See In re Jung, 637 F.3d at 1363:
Jung, without any basis, would have this court impose
additional prima facie procedural requirements and give
applicants the right first to procedurally challenge and appeal
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the prima facie procedural showing before having to
substantively respond to the merits of the rejection. Such a
process is both manifestly inefficient and entirely unnecessary.
Appellants have had the opportunity to provide “evidence/argument in
rebuttal of the prima facie case” (Reply Br. 8) throughout the prosecution of
this Application. That they have chosen not to do so reflects their choice of
prosecution strategy and does not merit a remand of this Application to the
Examiner.
In summary, the Examiner has made a prima facie case that claims 37,
93, 94, and 107 would have been obvious to a person of ordinary skill in the
art, and Appellants have not provided persuasive evidence or reasoning to
support a contrary conclusion. Appellants acknowledge that independent
claims 74, 110, and 114 contain similar recitations as claim 37 (App. Br.
59), and we, therefore, also affirm the rejection of those claims as obvious
based on Mohanlal and Filvaroff for the same reasons. Appellants do not
make any separate arguments for dependent claims 82, 95, 96, 108, 109,
111–113, 115, and 116 and those claims therefore fall with their respective
independent claims. 37 C.F.R. § 41.37(c)(1)(vii).
II. OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Similar to the obviousness rejection, Appellants argue with respect to
the provisional obviousness-type double patenting rejection that “[t]he PTO
has provided no objectively verifiable evidence, nor argument based on
objectively verifiable evidence, in support of PTO assertions regarding what
the copending applications ‘teach’” and that “[i]nsofar as the cited
copending references do not literally recite what PTO asserts would have
been ‘obvious’ based on their disclosures, Applicant respectfully asserts that
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PTO must have relied on ‘personal knowledge’ or taken improper ‘official
notice’ of one or more factors to reach its assertions” (App. Br. 67). We are
not persuaded. The Examiner’s obviousness-type double patenting rejection
satisfies the notice requirements of § 132 by providing the basis for the
rejection with citations to the relevant claims and the teachings of the prior
art, which support a conclusion that differences between the two applications
are obvious (Ans. 8). We therefore affirm the provisional obviousness-type
double patenting rejection.
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a).
We affirm the provisional obviousness-type double patenting
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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