Ex Parte Stomp et al

Board of Patent Appeals and Interferences

Aug 28, 2012

11590071 (B.P.A.I. Aug. 28, 2012)

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.
11/590,071 10/31/2006 Anne-Marie Stomp 5051-337DVCT4 5159
20792 7590 08/28/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
ZHENG, LI
ART UNIT PAPER NUMBER
1638
MAIL DATE DELIVERY MODE
08/28/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANNE-MARIE STOMP and NIRMALA RAJBHANDARI
__________

Appeal 2010-012076
Application 11/590,071
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a stably
transformed duckweed tissue culture. The Examiner entered rejections for
obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants direct our attention to a related appeal in application serial
number 10/677,441 (App. Br. 1). In that case, on similar facts and
substantially the same arguments presented here, we also affirmed rejections
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Application 11/590,071

2
for obviousness-type double patenting, in a decision entered August 8, 2011
(Appeal No. 2010-007367).
Claims 1-29 stand rejected and appealed (App. Br. 2). Claims 1 and 7
are representative and read as follows:
1. A stably transformed duckweed tissue culture produced
according to a method comprising the steps of:
(a) providing a duckweed tissue target, the cells of the
duckweed tissue culture including cell walls; and
(b) propelling a heterologous nucleotide sequence of
interest at the duckweed tissue target at a velocity sufficient to pierce
the cell walls and deposit the heterologous nucleotide sequence within
a cell of the tissue,
wherein the heterologous nucleotide sequence is carried
by a microprojectile; and
wherein the heterologous nucleotide sequence is
propelled at the tissue by propelling the microprojectile at the tissue;
and
(c) producing a stably transformed duckweed tissue
culture.

7. The stably transformed duckweed tissue culture
according to Claim 1, wherein the nucleotide sequence encodes at
least one protein or peptide subunit of a multimeric protein selected
from the group consisting of hemoglobin, collagen, P450 oxidase, and
a monoclonal antibody.

The following rejections are before us for review:
(1) Claims 1-6, 8-21, and 23-29, on the ground of obviousness-type
double patenting over claims 1-17 of U.S. Patent No. 6,815,184
1
(Ans. 3-5);
2

and

1
Anne-Marie Stomp et al., U.S. Patent No. 6,815,184 B2 (filed July 26,
2001).
2
Examiner‟s Answer entered February 5, 2010.
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(2) Claims 7 and 22, on the ground of obviousness-type double
patenting over claims 1-17 of the „184 patent in view of Dieryck
3
(see Ans.
6-7).
4

DISCUSSION
Appellants argue, for a variety of reasons, that the Examiner‟s
obviousness-type double patenting rejection of claims 1-6, 8-21, and 23-29,
over claims 1-17 of the „184 patent, is improper. In particular, Appellants
argue, since this application was filed nearly four years before the
application that matured into the „184 patent, there is no danger of any
improper or unjustified timewise extension of Appellants‟ patent rights
(App. Br. 4-5).
Appellants also note that “the present application and the „184 patent
are owned and have always been owned by two separate entities” (id. at 4).
In contrast, Appellants reason, “whenever the courts have discussed the
concern of harassment by multiple assignees [as a rationale for making
double patenting rejections] it has always been in terms of commonly owned
patents that might subsequently be assigned or transferred to different
parties” (id. at 5 (emphasis added); see also id. at 5-6 (citing In re Van
Ornum, 686 F.2d 937, 945, 948 (CCPA 1982) and DONALD S. CHISUM,
CHISUM ON PATENTS, Chapter 9, section 9.04[2][b][ii])).

3
W. Dieryck et al., Expression of recombinant human hemoglobin in plants,
2 TRANSFUS. CLIN. BIOL. 441-447 (1995) (as translated).
4
The Examiner also entered a provisional obviousness-type double
patenting rejection over claims in application serial number 11/778,480
(Ans. 7-8). However, as our review of that application indicates that it has
been abandoned, that rejection is moot and we will not address it.
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Thus, Appellants argue, since the inventions in the rejected claims and
the patented claims “were never commonly owned and the inventors in each
case were by law required to assign to different owners (employers)[,] . . .
the issue of harassment by multiple assignees does not apply to this case”
(App. Br. 6; see also Reply Br. 2-3).
5
Appellants further argue that, based
on the direction provided in the MPEP, an obviousness-type double
patenting rejection is improper, since the instant application was filed before
the application that matured into the „184 patent, and the „184 patent is
therefore not prior art as to the instant application (see App. Br. 8, 11-12).
Appellants further argue that the Examiner‟s double patenting
rejections do not properly fall under the provisions of the CREATE Act,
since there was no joint research agreement involved in the invention of the
subject matter recited in the conflicting sets of claims (id. at 9-11; see also
Reply Br. 3-4). Appellants argue further that, since they were not in control
of the rate of prosecution of both the instant application and the application
that matured into the „184 patent, the conflicting sets of claims should be
analyzed under a two-way test, in which the obviousness of the instant
claims is assessed in view of the patented claims, and also in which the
obviousness of the patented claims is assessed in view of the instant claims
(App. Br. 12-15; Reply Br. 5-8).
Appellants argue:
[I]t is unfair to penalize an entity with an earlier filed
application by allowing a later filed application of completely
different entity to block the earlier filed application simply
because the first entity employed an inventor who decided to
pursue a career with the second entity and invent improvements

5
Reply Brief entered February 19, 2010.
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to the first entity‟s invention. As it stands, the USPTO‟s
position on the present double patenting rejection achieves
absurd results. Since the application and patent at issue were
filed as two separate inventions under the auspices of two
separate entities, a terminal disclaimer cannot be filed to
overcome the rejection. Thus, in this case, the senior party
would appear to be blocked from obtaining a patent by a junior
party. If this rejection is maintained, the only way to achieve
any fairness is to apply the two-way obviousness test.
Therefore, Appellants contend that if a double patenting
rejection is found to be proper then the appropriate test for such
a rejection is the two-way obviousness test.

(App. Br. 15.)
We have carefully considered all of Appellants‟ arguments, but are
not persuaded that the Examiner erred in maintaining this rejection.
Appellants allege no error in the Examiner‟s conclusion that the instant
claims would have been obvious over claims 1-17 of the „184 patent, and we
perceive none.
Specifically, claim 1, which we select as representative of the rejected
claims (see 37 C.F.R. § 41.37(c)(1)(vii)), recites “[a] stably transformed
duckweed tissue culture” produced according to a method in which a
heterologous nucleotide sequence is introduced into the culture cells by a
microprojectile carrier that pierces the cell walls.
Claim 1 of the „184 patent recites, in relevant part, “[a] method of
producing biologically active α-2b-interferon in a duckweed plant culture or
a duckweed nodule culture, comprising . . . culturing . . . wherein said
duckweed plant culture or said duckweed nodule culture is stably
transformed to express said biologically active α-2b-interferon . . .” (the „184
patent, col. 31, ll. 33-40). Claim 17 of the „184 patent in turn recites “[t]he
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stably transformed duckweed plant culture or duckweed nodule culture
according claim 1” (id. at col. 34, ll. 18-19).
We agree with the Examiner that an ordinary artisan would have
considered the stably transformed duckweed tissue culture of Appellants‟
claim 1 obvious in view of the stably transformed duckweed α-2b-
interferon-expressing plant/nodule culture of claim 17 of the „184 patent.
We do not agree, however, that Appellants are entitled to a two-way test of
obviousness-type double patenting.
Rather, we agree with the Examiner that Appellants “do not meet the
initial burden to show . . . that there was an administrative delay during the
prosecution of instant application” (Ans. 12). Including amendatory
markings, Appellants‟ Specification states:
This application is a continuation of U.S. Patent
Application No, 10/273,974, filed October 18, 2002No.
7,161,064, issued January 9, 2007, which is a continuation of
U.S. Patent Application Serial No. 09/448,105 filed 23
November 1999 (now abandoned), which is a divisional of U.S.
Patent Application Serial No. 09/132,536 filed 11 August
1998No. 6,040,498 issued March 21, 2000, which claims the
benefit of U.S. Provisional Application No. 60/055,474 filed 12
August 1997, the disclosures of which are incorporated by
reference herein in their entirety.

(Spec. 1 (as amended January 8, 2008).) Thus, the instant application is a
second continuation of an application originally filed in November of 1999.
Given the multiple continuations filed in this case, we are not
persuaded that the PTO is solely responsible for delays in the prosecution of
the subject matter recited in the appealed claims. Cf. In re Goodman, 11
F.3d 1046, 1053 (Fed. Cir. 1993) (two-way test denied in view of filing of
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continuation); see also In re Emert, 124 F.3d 1458, 1461 (Fed. Cir. 1997)
(same).
Thus, we are not persuaded that Appellants are entitled to the two-way
test, despite the fact that they did not control the rate of prosecution both in
this case, and in the case of the application that matured into the „184 patent.
We acknowledge that the Federal Circuit has stated, for example in Emert,
that “[b]ecause Emert orchestrated the rate of prosecution for the two
applications, this court applies a one-way analysis.” In re Emert, 124 F.3d at
1461. We see nothing, however, in any of the cases cited by Appellants, or
Emert or Goodman, suggesting that the one-way test requires a common
assignee to controls the rate of prosecution in both applications.
We are also not persuaded that this application‟s status as the earlier
filed application allows it to avoid a double patenting rejection. Rather,
when evaluating obviousness-type double patenting, the Federal Circuit has
explicitly “endorsed an obviousness determination similar to, but not
necessarily the same as, that undertaken under 35 USC § 103 in determining
the propriety of a rejection for double patenting.” In re Braat, 937 F.2d 589,
592-93 (Fed. Cir. 1991).
Accordingly, under the “one way” test we conclude is applicable here,
the Examiner “asks whether the application claims are obvious over the
patent claims.” In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 1998).
We have reviewed the sections of the MPEP cited by Appellants, but
are not persuaded that anything in those sections, or in any of the relevant
case law, suggests that obviousness-type double patenting rejections require
any analysis beyond obviousness assessment of the one- and two-way tests.
We are therefore not persuaded that such rejections are only proper when the
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claims under consideration have an effective filing date later than the
conflicting patented claims.
We are also not persuaded that the present fact situation, in which the
two sets of conflicting claims are separately owned, precludes an
obviousness-type double patenting rejection grounded in the possibility of
harassment by multiple assignees. It may be true that issuance of the instant
application would not result in unjustified timewise extension of patent
rights.
However, in In re Van Ornum, 686 F.2d 937 (CCPA 1982), in a fact
situation similar to that presented here, the Court of Customs and Patent
Appeals affirmed an obviousness-type double patenting rejection over a
patent with a common inventor, despite a lack of common ownership. The
court reasoned there that the concern over potential harassment of an
infringer by multiple assignees asserting essentially the same patented
invention outweighed the applicant‟s inability to proffer a terminal
disclaimer tying together ownership of the application and conflicting
patent. Id. at 944-48.
In In re Fallaux, 564 F.3d 1313 (2009), the Court of Appeals for the
Federal Circuit reaffirmed the Van Ornum rationale:
The harassment justification for obviousness-type double
patenting is particularly pertinent here because the Fallaux
application and the Vogels patents are not commonly owned. If
the Fallaux application and the Vogels patents were commonly
owned, the terminal disclaimer filed in this case would have
been effective to overcome the double patenting rejection. We
note that this defect was of the applicant‟s creation as through
assignment it allowed ownership of the applications to be
divided among different entities.

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Id. at 1319 (footnote omitted).
We note that the Fallaux court explicitly stated that its opinion
“should not be read to decide or endorse the PTO‟s view” as to “whether a
patent may be used as a reference for an obviousness-type double patenting
rejection where the patent shares only a common inventor with the
application, rather than an identical inventive entity or a common assignee.”
Id. at 1315 (citing MPEP § 804 ¶ I.A. (the same passage we quote above)).
However, given the multiple assignee harassment rationale applied in
Van Ornum, and its endorsement in Fallaux, we are not persuaded that
common ownership is properly considered a required element of an
obviousness-type double patenting rejection when the rejection is based on
the possibility of harassment by multiple assignees. Moreover, given that
the possibility of multiple assignee harassment is not avoided when the
conflicting subject matter is separately owned at the time the applications are
filed, we are not persuaded that an obviousness-type double patenting
rejection is only proper when the claimed subject matter is potentially
transferred to separate assignees after the applications are filed.
In sum, as discussed above, we agree with the Examiner that
representative claim 1 would have been obvious over claims 1-17 of the
„184 patent. As Appellants‟ arguments do not persuade us that the Examiner
improperly maintained the rejection, we affirm the rejection of claim 1 for
obviousness-type double patenting. Claims 2-6, 8-21, and 23-29 fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner also rejected claims 7 and 22 for obviousness-type
double patenting over claims 1-17 of the „184 patent in view of Dieryck (see
Ans. 6-7). Appellants did not dispute the Examiner‟s findings regarding
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Dieryck, nor did Appellants substantively dispute the Examiner‟s conclusion
that claims 7 and 22 would have been obvious in view of claims 1-17 of the
„184 patent and Dieryck.
Rather, Appellants reiterated essentially the same arguments that were
advanced against the rejection over the „184 patent alone. As discussed
above, we do not find those arguments persuasive. We therefore affirm the
Examiner‟s obviousness-type double patenting rejection of claims 7 and 22.

SUMMARY
For the reasons discussed, we affirm the Examiner‟s rejection of
claims 1-6, 8-21, and 23-29, on the ground of obviousness-type double
patenting over claims 1-17 of U.S. Patent No. 6,815,184.
We also affirm the Examiner‟s obviousness-type double patenting
rejection of claims 7 and 22 over claims 1-17 of the „184 patent in view of
Dieryck.

TIME PERIOD
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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