Ex Parte Jung et al

Patent Trial and Appeal Board

Jul 22, 2014

11286133 (P.T.A.B. Jul. 22, 2014)

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.
11/286,133 11/23/2005 Edward K.Y. Jung SE1-0974-US 6942
80118 7590 07/23/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
07/23/2014 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, ROBERT W. LORD, and
LOWELL L. WOOD, JR.1
__________

Appeal 2012-003666
Application 11/286,133
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to
methods for providing treatment characteristics in response to input of a
treatment parameter, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification states that “[c]ertain properties of the endothelial
layer . . . may enable the targeted delivery of one or more treatment agents to

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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a vicinity of the diseased tissue” (Spec. 8-9, ¶ 38). For example, in the case
of a tumor that has grown over a period of time,
a corresponding growth or development of a site on the
endothelial layer 118 may reflect, or otherwise be correlated
with and/or affected by, the growth of the diseased tissue
(tumor) 114. This correlation between the history or ancestry
of the site on the endothelial layer 118 in the vicinity of the
diseased tissue 114 may result in unique, or almost unique,
properties of the tissue ancestry-correlated site, such as, for
example, a display of specific and identifiable proteins.
(Id. at 9, ¶ 39.) “[S]uch tissue ancestry-correlated sites may be used to direct
treatment agents” (id. at 9, ¶ 40). The Specification’s Figure 5 shows an
example of treatment data, including “Treatment Parameter Direct End
Target” and “Target-Related Tissue Ancestry-Correlated Binding Site” (id.
at 22, ¶ 84, Fig. 5).
The Specification states that
if the patient 106 exhibits the diseased tissue 114, then the
clinician 104 may select the (type of) diseased tissue 114 . . . as
an end target, and the treatment logic 128 may then . . . obtain,
from the treatment data 126, one or more options for providing
the treatment agent to the diseased tissue 114, e.g., one or more
target-related tissue ancestry-correlated binding sites.
(Id. at 12-13, ¶ 48.)
Claims 1, 2, 8, 10, 13, 14, 19-21, 24, 25, 30, 39, 43, 46, and 49 are on
appeal. Claim 1 is illustrative and reads as follows:
1. A method comprising:
accepting, using a suitable microprocessor, an identification of at least one
instance of at least one treatment parameter,
the at least one treatment parameter including at least one target-
related tissue ancestry-correlated binding agent, at least one
direct end target, at least one discriminated end target, at least
one direct intermediate target, at least one discriminated
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intermediate target, at least one treatment agent delivery
mechanism relative to the at least one target-related tissue
ancestry-correlated binding agent, at least one treatment agent,
or at least one treatment agent precursor; and
providing, using a suitable microprocessor, at least two instances of at least
one treatment characteristic for providing a clinician with treatment
information and allowing the update of existing treatment data,
the at least one treatment characteristic including at least one target-
related tissue ancestry-correlated binding site.

DISCUSSION
Issue
The Examiner has rejected claims all of the claims on appeal under
35 U.S.C. § 103(a) as obvious based on Oh2 and Arnaud3 (Ans. 6). The
Examiner finds that Oh teaches “defining an association between at least two
instances of a treatment parameter and at least one instance of a treatment
characteristic and assigning the association to a memory” (Ans. 6). The
Examiner finds that Oh teaches treatment parameters, treatment
characteristics, target-related tissue ancestry-correlated binding sites, and
target-related tissue ancestry-correlated binding agents (id. at 6-7).
Regarding independent claims other than claim 1, the Examiner finds
that Oh does not teach a computer program product and a system to
implement the steps recited in claim 1 but that Arnaud teaches “a program
and system for building a medical database which uses data tags (also
known as attributes; object oriented database) and metadata which are

2 Oh et al., Subtractive proteomic mapping of the endothelial surface in lung
and solid tumours for tissue-specific therapy, 429 NATURE 629-635 (2004).
3Arnaud et al., US 2002/0186818 A1, published Dec. 12, 2002.

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various characteristics of the particular datapoints” (id. at 12). The
Examiner concludes that it would have been obvious “to have completely
automated the methods of Oh et al. by using the formats as taught by Arnaud
et al. to further optimize defining associations amongst tissue-ancestry
correlated binding sites and agents for the purpose of targeted cancer
therapies” (id.).
Appellants argue that the Examiner has not set out a prima facie case
of obviousness (App. Br. 38-43).
We agree with Appellants that the Examiner has not shown that the
inventions defined by the claims on appeal would have been obvious based
on the cited references. Claim 1 is directed to a method having two steps:
(1) accepting, using a microprocessor, identification of a treatment
parameter such as a target-related tissue ancestry-correlated binding agent
and (2) providing, using a microprocessor, “at least two instances of at least
one treatment characteristic,” including a target-related tissue ancestry-
correlated binding site. Claims 39, 43, 46, and 49 are the other independent
claims. Claims 39, 43, and 46 recite substantively the same “accepting” and
“providing” steps as claim 1. Claim 49 is similar but requires using a
microprocessor to accept identification of a treatment parameter that can be
a target-related tissue ancestry-correlated binding site (rather than agent) and
to provide “at least two instances of at least one treatment characteristic”
that includes a target-related tissue ancestry-correlated binding agent (rather
than site).
The Examiner points to no evidence that Oh or Arnaud disclose either
the “accepting” or the “providing” step of the claims. Rather, the Examiner’s
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rejection is based on Oh’s disclosure of “defining an association” between
treatment parameters and treatment characteristics and “assigning the
association to a memory” (Ans. 6). The Examiner does not point to anything
in Arnaud as disclosing the “accepting” and “providing” steps of the claims,
and does not provide persuasive reasoning to show that these steps would
have been obvious based on the steps actually disclosed by Oh.
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). Because the Examiner has not shown that the cited references
disclose the steps required by the claims, and has not provided evidence-
based reasoning to show that those steps would nonetheless have been
obvious based on the cited references, we are constrained to reverse the
rejection on appeal.
SUMMARY
We reverse the rejection of claims 1, 2, 8, 10, 13, 14, 19-21, 24, 25,
30, 39, 43, 46, and 49 under 35 U.S.C. § 103(a) based on Oh and Arnaud.

REVERSED

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