Ex Parte Simard

Patent Trial and Appeal Board

Oct 31, 2016

13437159 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/437, 159 04/02/2012
88684 7590 11/02/2016
XBiotech, Inc,
5425 Park Central Court
Suite 111
Naples, FL 34109
FIRST NAMED INVENTOR
John Simard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5407-0115 7932
EXAMINER
ALLEN, MARIANNE P
ART UNIT PAPER NUMBER
1647
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
sakptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SIMARD
Appeal2014-005641
Application 13/437,159
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and RICHARD J. SMITH,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING 1
Appellant requests rehearing of the Decision, entered into the record
July 27, 2016, affirming the rejection of: Claims 1--4 and 8 under 35 U.S.C.
§ 102(b) as anticipated by Witte2 ; Claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Witte, Simard,3 Mizutani,4 and
Skurkovich;5 and, Claims 1-7 under the judicially created doctrine of
1 Appellant identifies the Real Party in Interest as "XBiotech, Inc." (Br. 3.)
2 Witte et al., US 2003/0026806 Al, published Feb. 6, 2003.
3 Simard, US 2009/0298096 Al, published Dec. 3, 2009.
4 Hitoshi Mizutani et al., Endogenous neutralizing anti-IL-la autoantibodies
in inflammatory skin diseases: possible natural inhibitor for over expressed
epidermal JL-1, 20 J. DERM. SCI. 63-71 (1999).
5 Skurkovich et al., US 2005/0276807 Al, published Dec. 15, 2005.
Appeal2014-005641
Application 13/437,159
obviousness-type double patenting as being unpatentable over claims 1-6 of
copending Application 13/644,976 (Decision 1-6).
The method of Appellant's claim 1 comprises administering, to a
subject, a composition comprising: (1) a pharmaceutically acceptable carrier
and (2) an amount of an agent (e.g., an anti-IL-la antibody) that selectively
binds IL-1 a and is effective to reduce skin inflammation in the subject
(Decision 2). Claims 2-8 depend directly or indirectly from claim 1 (id.).
Appellant contends that "Witte does not directly state that an anti-IL-
lalpha antibody is effective to reduce skin inflammation in particular" (Req.
Reh' g ,-i,-i 1, 4, and 5). We are not persuaded (see Decision 4, citing FF 1-7).
In this regard, Witte "relates to antibodies ... , compositions, uses and
methods for treating ... IL-1 mediated disorders," such as "psoriasis" that
comprises the administration of a composition comprising a
pharmaceutically acceptable carrier and an effective amount of an anti-IL-I a
monoclonal antibody to treat the IL-1 mediated disorder, psoriasis (FF 1-7).
Appellant fails to establish an evidentiary basis on this record to support a
finding that psoriasis is not a condition that involves skin inflammation in
the subject.
Appellant contends that the Decision failed to establish "that any of
the conditions Witte lists as 'IL-1 mediated diseases' are specifically
associated with IL-la as opposed to IL-lW' (Req. Reh'g ,-i,-i 2, 3, and 7). We
are not persuaded. Appellant's claimed invention does not require the skin
inflammation to be "specifically associated with IL-1 a as opposed to IL-1 W'
(see id.; cf id. ,-i 6, citing Richardson v. Suzuki Motor Co., 868 F.2d, 1226,
1236 (Fed. Cir. 1989), ("To find anticipation '[t]he identical invention must
be shown in as complete detail as is contained in the ... claim") (alteration
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Appeal2014-005641
Application 13/437,159
original)). To the contrary, Appellant's claim requires only the
administration of a composition comprising a pharmaceutically acceptable
carrier and an amount of IL-1 a antibody that is effective to reduce skin
inflammation in the subject (Decision 2). Appellant provides no persuasive
evidence or argument to support a different finding.
Notwithstanding Appellant's contention to the contrary, Witte
expressly defines an antibody as an agent "that binds 'IL-1 a or IL-1 W or
both of IL-1 a and IL-1 W' (Decision 3: FF 2). Thus, Witte teaches that anti-
IL-1 a and/or IL-1 B antibodies are effective in treating psoriasis (Decision 3-
4). Appellant provides no persuasive evidence or argument to support a
different finding.
Having found no deficiency in Witte, we are not persuaded by
Appellant's contention regarding Examiner's rejection under 35 U.S.C.
§ 103(a) involving the combination of Witte, Simard, Mizutani, and
Skurkovich (Req. Reh' g ,-i 9; cf Decision 5-6).
To be complete, Appellant does not address the rejection under the
judicially created doctrine of obviousness-type double patenting (see
Decision 3).
In conclusion, Appellant failed to identify an issue of fact or law that
was overlooked or misunderstood. Therefore the Request for Rehearing is
denied.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
REHEARING DENIED
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