11647533 - (D) (P.T.A.B. Jul. 31, 2014)

Ex Parte Jung et al

Patent Trials and Appeals BoardJul 31, 2014

11647533 - (D) (P.T.A.B. Jul. 31, 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. 11/647,533 12/27/2006 Edward K.Y. Jung SE1-0977-US 9287 80118 7590 08/01/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER PAULS, JOHN A ART UNIT PAPER NUMBER 3686 MAIL DATE DELIVERY MODE 08/01/2014 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, MARK A. MALAMUD, and LOWELL L. WOOD, JR. ____________ Appeal 2012-002246 Application 11/647,533 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 6, 10, 13–16, 19, 32, 37–39, 43–45, 47, 50–53, 56, 63–65, 69, and 74–81. 1, 2 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 We refer to the Appeal Brief (filed Nov. 30, 2010, hereinafter “App. Br.”), the Reply Brief (filed Feb. 28, 2011, hereinafter “Reply Br.”), and the Answer (mailed Dec. 27, 2010, hereinafter “Ans.”) for the respective positions of Appellants and the Examiner. Appellants also filed a Supplemental Reply Brief on Oct. 25, 2011. The Supplemental Reply Brief discussed the Federal Circuit’s opinion in In re Jung, 637 F.3d 1356 (Fed. Appeal 2012-002246 Application 11/647,533 2 Introduction Appellants’ disclosure relates to a method, system, and computer product for identifying a target of treatment and presenting a therapeutic agent with an acceptable adverse event profile. Spec. ¶¶ 2, 37. Claims 1, 16, 37, 38, 53, 74, 75, and 79 are the independent claims on appeal. Claim 1 is illustrative and reads as follows: 1. A method comprising: accepting an input identifying a treatment target in search of an agent, the input associated with at least one query parameter; determining, using a microprocessor, 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 limit relative to a population for which the at least one adverse event profile is unacceptable with respect to the defined limit; and presenting the agent, based on the at least one subset and the at least one query parameter. App. Br. 170, Claims App’x. Prior Art Relied Upon Filvaroff US 2006/0015952 A1 Jan. 19, 2006 Mohanlal US 7,198,895 B2 Apr. 3, 2007 Cir. 2011), in which the Court explained that an Examiner’s citation to prior art satisfied the notice requirement of 35 U.S.C. § 132. 2 The real party in interest identified by Appellants is Searete LLC, which is an entity wholly owned by Intellectual Ventures Management LLC. App. Br. 12. Appeal 2012-002246 Application 11/647,533 3 Rejections On Appeal The Examiner maintains, and the Appellants appeal, the following rejection: Claims 1, 2, 6, 10, 13–16, 19, 32, 37–39, 43–45, 47, 50–53, 56, 63– 65, 69, and 74–81 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Filvaroff and Mohanlal. ANALYSIS Independent claim 1 and dependent claims 2, 6, 10, 13–15 Appellants argue, inter alia, that Filvaroff and Mohanlal do not meet any of the elements of claim 1 (App. Br. 50–64, 75), i.e., that the Examiner has failed to establish a prima facie case of obviousness. The Examiner relies on Mohanlal (col. 1, ll. 24–45 and col. 18, ll. 15–35) for the step of “determining, using a microprocessor, 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 limit relative to a population for which the at least one adverse event profile is unacceptable with respect to the defined limit,” as recited by claim 1. Ans. 4. We have carefully reviewed the cited portions of Mohanlal on which the Examiner relies, and we can find nothing in these portions of Mohanlal that discloses “determining . . . at least one adverse event profile associated with administration of at least one agent is acceptable within a defined limit relative to a population for which the at least one adverse event profile is unacceptable with respect to the defined limit.” Mohanlal (col. 1, ll. 24–45) explains in the “Background of the Invention” that there is a high rate of failure of clinical trials because new Appeal 2012-002246 Application 11/647,533 4 chemical entities that are screened in vitro or in vivo animal models may fail in humans for lack of efficacy or due to unacceptable adverse events. Mohanlal (col. 18, ll. 15–35) introduces an example of ascertaining drug efficacy in conjunction with albuterol in asthma, sets forth statistics about the prevalence of asthma, lists the major classes of asthma drugs, and notes that there are 28 new chemical entities under study. However, we find nothing in the cited portions of Mohanlal which discloses a “defined limit” that is acceptable for an adverse event profile, as required by claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we do not sustain the Examiner’s rejections of claim 2, 6, 10, and 13–15, which depend from claim 1. Independent claims 16, 37, 38, 53, 74, 75, and 79 and dependent claims 19, 32, 39, 43–45, 47, 50–52, 56, 63–65, 69, 76–78, 80, and 81 Independent claims 16 and 37 contain language that is substantially identical to the language of claim 1, discussed above. Further, although independent claims 38, 53, 74, 75, and 79 are directed to systems and computer products rather than methods, these claims also include language substantially identical to the language of claim 1. Therefore, we do not sustain the Examiner’s rejection of claims 16, 37, 38, 53, 74, 75, and 79 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to claim 1. For the same reasons, we also do not sustain the Examiner’s rejection of claims 19, 32, 39, 43–45, 47, 50–52, 56, 63–65, 69, 76–78, 80, and 81, each of which depends from one of claims 16, 38, 53, 75, and 79. Appeal 2012-002246 Application 11/647,533 5 DECISION The decision of the Examiner to reject claims 1, 2, 6, 10, 13–16, 19, 32, 37–39, 43–45, 47, 50–53, 56, 63–65, 69, and 74–81 is reversed. REVERSED3 llw 3 In the event of further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance with 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent-eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.