Ex Parte Jung et al

Patent Trial and Appeal Board

Jul 24, 2014

11516689 (P.T.A.B. Jul. 24, 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.
11/516,689 09/05/2006 Edward K.Y. Jung SE1-0975-US 8552
80118 7590 07/25/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
07/25/2014 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 2012-004581
Application 11/516,689
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 a
treatment system, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse, and enter a new ground of
rejection.
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”
(Spec. 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, 5, 7, 8, 11, 12, 15-18, 20-25, 27-38, 49-57, and 59-61 are
on appeal. Claim 1 is illustrative and reads as follows:
1. A treatment system comprising:
means for accepting from a clinician 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 intermediate target, at least one treatment
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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
means for providing at least two instances of at least one treatment
characteristic, the at least one treatment characteristic including at least one
target-related tissue ancestry-correlated binding site.

Claims 49 and 61 are also independent. Claim 49 is similar to claim 1
but requires means for accepting identification of a treatment parameter that
can be a target-related tissue ancestry-correlated binding site (rather than
agent) and means for providing “at least two instances of at least one
treatment characteristic” that includes a target-related tissue ancestry-
correlated binding agent (rather than site). Claim 61 defines a computer
program product bearing instructions for providing “at least two instances of
at least one treatment characteristic” that includes a target-related tissue
ancestry-correlated binding agent and instructions for accepting
identification of a treatment parameter that can be a target-related tissue
ancestry-correlated binding site.
I.
The Examiner has rejected claims 1, 2, 5, 7, 8, 11, 12, 15-18, 20-22,
24, 25, 27-33, 35-38, 49-53, 55-57, and 59-61 under 35 U.S.C. § 103(a) as
obvious based on Oh2 and Arnaud3 (Ans. 6). The Examiner has rejected
claims 1, 23, 34, 49, and 54 under 35 U.S.C. § 103(a) as obvious based on

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).
3 Arnaud et al., US 2002/0186818 A1, published Dec. 12, 2002.

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Oh, Arnaud, and Hood4 (Ans. 22). The same issue is dispositive for both
rejections.
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. 7).
More specifically, the Examiner finds that Oh teaches “target related tissue
ancestry binding sites [including] aminopeptidase P (APP) and OX-45” (id.),
as well as “target related binding agents, such as APP and OX-45
monoclonal antibodies” (id.). The Examiner finds that “the use of
monoclonal antibodies to target aminopeptidase and OX-45 are two targets
and target-related binding agents. These are parameters a clinician can assess
for the treatment of epithelial cells.” (Id.)
The Examiner finds that Oh does not teach a computer program
product or a system 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 various characteristics of
the particular datapoints” (id. at 22). The Examiner concludes that it would
have been obvious to “automate[ ] 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.).

4 Hood et al., Tumor Regression by Targeted Gene Delivery to the
Neovasculature, 296 SCIENCE 2404-2407 (2002).

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Appellants contend that the Examiner has not presented a prima facie
case of obviousness (App. Br. 35-41).
We agree with Appellants that the Examiner has not shown that the
inventions defined by claims 1 and 49 would have been obvious based on
the cited references. Claim 1 is directed to a system having two structural
elements: (1) “means for accepting” identification of a treatment parameter
such as a target-related tissue ancestry-correlated binding agent and (2)
“means for providing at least two instances of” a target-related tissue
ancestry-correlated binding site. Claim 49 is similar but requires means for
accepting identification of a treatment parameter such as a target-related
tissue ancestry-correlated binding site (rather than agent) and “means for
providing at least two instances of” a target-related tissue ancestry-correlated
binding agent (rather than site).
“Section 112, paragraph 6 provides that a patentee [or applicant] may
define the structure for performing a particular function generically through
the use of a means expression, provided that it discloses specific structure(s)
corresponding to that means in the patent specification.” Kemco Sales, Inc.
v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000). “A computer-
implemented means-plus-function term is limited to the corresponding
structure disclosed in the specification and equivalents thereof, and the
corresponding structure is the algorithm.” Harris Corp. v. Ericsson Inc.,
417 F.3d 1241, 1253 (Fed. Cir. 2005).
Here, the Examiner has not addressed the scope of the means-plus-
function limitations of claims 1 and 49 based on their description in the
Specification. The Examiner’s rejections, in fact, do not address the means-
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plus-function limitations at all, but are based on the disclosure in Oh of a
method that defines an association between treatment parameters and a
treatment characteristic, and assigns the association to memory (see Ans. 7,
23), combined with Arnaud’s database system and method (id. at 22) and
Hood’s integrin avB3-targeting ligand (id. at 24). The Examiner has not
explained how Oh’s steps, even combined with Arnaud’s system and Hood’s
ligand, would have made obvious the structures disclosed in the
Specification as corresponding to the “means for accepting” and “means for
providing” required by claims 1 and 49, and claims dependent on them.
Claim 61 is not written in means-plus-function language, but is
directed to a computer program product with instructions for providing “at
least two instances of at least one treatment characteristic” that includes a
target-related tissue ancestry-correlated binding agent and instructions for
accepting identification of a treatment parameter that can be a target-related
tissue ancestry-correlated binding site.
The Examiner again cited Oh’s teaching of “defining an association”
between treatment parameters and a treatment characteristic (Ans. 21) and
Arnaud’s teaching of “a program and system for building a medical database
which uses data tags (also known as attributes; object oriented database) and
metadata which are various characteristics of the particular datapoints” (id.
at 22). The Examiner’s concludes that the combined teachings would have
made it obvious to automate Oh’s methods “to further optimize defining
associations amongst tissue-ancestry correlated binding sites and agents for
the purpose of targeted cancer therapies” (id. at 22). This conclusion,
however, does not address whether the combined teachings would have
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made obvious a computer program product having “instructions for
providing at least two instances of” a target-related tissue ancestry-correlated
binding agent and “instructions for accepting” identification of a treatment
parameter such as a target-related tissue ancestry-correlated binding site.
Because the Examiner has not shown that a product meeting the limitations
of claim 61 would have been obvious based on Oh and Arnaud, we are
constrained to reverse the rejection of claim 61.
II.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: Claims 1, 2, 5, 7, 8, 11, 12, 15-18, 20-25, 27-38,
49-57, 59, and 60 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite because the Specification does not disclose structures that
correspond to the “means for accepting” and “means for providing” that are
recited in independent claims 1 and 49 in a way that allows a person of
ordinary skill in the art to ascertain the scope of the claims.
“Use of the term ‘means’ in a claim limitation creates a presumption
that section 112, paragraph 6 has been invoked, but that presumption may be
rebutted if the properly construed claim limitation itself recites sufficiently
definite structure to perform the claimed function.” Kemco Sales, 208 F.3d
at 1361. In this case, claims 1 and 49 use the term “means” and recite no
structures to perform the claimed functions. We therefore conclude that the
claims invoke 35 U.S.C. § 112, sixth paragraph.
Section 112, paragraph 6 provides that a patentee [or
applicant] may define the structure for performing a particular
function generically through the use of a means expression,
provided that it discloses specific structure(s) corresponding to
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that means in the patent specification. . . . As such, [the court
has] referred to section 112, paragraph 6 as embodying a
statutory quid pro quo. . . . If a patentee [or applicant] fails to
satisfy the bargain because of a failure to disclose adequate
structure, the claim will be rendered . . . indefinite under section
112, paragraph 2.
Id. at 1360-61. The rules that “structure corresponding to the claimed
function must be disclosed in the specification with clear linkage between
the structure and the claimed function serve worthy goals. Such rules are
intended to produce certainty in result.” Medical Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220 (Fed. Cir. 2003). “A
computer-implemented means-plus-function term is limited to the
corresponding structure disclosed in the specification and equivalents
thereof, and the corresponding structure is the algorithm.” Harris Corp.,
417 F.3d at 1253.
An Appeal Brief must include a summary of the claimed subject
matter, and
[f]or each independent claim involved in the appeal . . . every
means plus function and step plus function as permitted by 35
U.S.C. 112, sixth paragraph, must be identified and the
structure, material, or acts described in the specification as
corresponding to each claimed function must be set forth with
reference to the specification by page and line number, and to
the drawing, if any, by reference characters.
37 C.F.R. § 41.37(c)(1)(v) (2004).
In the Summary of Claimed Subject Matter section of the Appeal
Brief, Appellants stated that both the “means for accepting” and “means for
providing” recited in claim 1 are described in the Specification at “page 51,
ll. 3-14 of specification (Independent Claim 1); and/or para [0006] of
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specification” (Appeal Br. 8). Appellants stated that both the “means for
accepting” and “means for providing” recited in claim 49 are described in
the Specification at “page 64, ll. 1-12 of specification (Independent Claim
49); and/or para [00156] of specification; and/or FIG 18” (id. at 17).
Original claims 1 and 49 are both directed to methods, not systems,
and do not include any recitation of structure for carrying out the methods
defined in those claims. Original claims 1 and 49 therefore do not disclose
structures corresponding to the “means for accepting” and “means for
providing” recited in claims 1 and 49 on appeal.
Paragraph 6 of the Specification describes a method that includes
accepting an identification of a target parameter such as a target-related
tissue ancestry-correlated binding site and providing a treatment
characteristic that includes a target-related tissue ancestry-correlated binding
agent (Spec. 4, ¶ 6). It does not, however, describe any structure for
accepting identification of a treatment parameter or any structure for
providing a treatment characteristic.
Paragraph 156 of the Specification describes a computer program
product that includes instructions for accepting identification of a treatment
parameter that can be a target-related tissue ancestry-correlated binding
agent and instructions for providing a treatment characteristic that includes a
target-related tissue ancestry-correlated binding site (Spec. 39-40, ¶ 156).
Figure 18 shows a computer program product 1800 that includes the
instructions described in paragraph 156. Neither paragraph 156 nor Figure
18, however, describe any structure, such as an algorithm, for accepting
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identification of a treatment parameter or any structure, such as an
algorithm, for providing a treatment characteristic.
Thus, Appellants have not identified any description in the
Specification of structures corresponding to the means-plus-function
limitations of claims 1 and 49. Our review of the Specification for a
disclosure of such structures included word searches for the phrase means
for” and the word “means.” The search for the phrase “means for” in the
Specification did not identify any use of that phrase. The search for the
word “means” identified only a single use, in an unrelated context.5
In summary, the Specification does not disclose any structures that
correspond to the means-plus-function limitations of claims 1 and 49. Those
claims, and the claims that depend from them, are therefore unpatentable
under 35 U.S.C. § 112, second paragraph, because they are indefinite.
SUMMARY
We reverse the rejection of claims 1, 2, 5, 7, 8, 11, 12, 15-18, 20-22,
24, 25, 27-33, 35-38, 49-53, 55-57, and 59-61 under 35 U.S.C. § 103(a)
based on Oh and Arnaud. We reverse the rejection of claims 1, 23, 34, 49,
and 54 under 35 U.S.C. § 103(a) based on Oh, Arnaud, and Hood.
We enter a new ground of rejection of claims 1, 2, 5, 7, 8, 11, 12, 15-
18, 20-25, 27-38, 49-57, 59, and 60 under 35 U.S.C. § 112, second
paragraph.

5 The word “means” appears only in a sentence reading, in part: “the bare
recitation of ‘two recitations,’ without other modifiers, typically means at
least two recitations” (Spec. 50, ¶ 184).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED, 37 C.F.R. § 41.50(b)
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