Ex Parte SUGIYAMA et al

Patent Trial and Appeal Board

Feb 12, 2019

14838312 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/838,312 08/27/2015 Haruo SUGIYAMA
22852 7590 02/14/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
05273.0134-01 1021
EXAMINER
HUFF, SHEELA JITENDRA
ART UNIT PAPER NUMBER
1643
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUO SUGIYAMA and YUSUKE OJI
Appeal2018-001543
Application 14/83 8,312 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejection of claims 1-3. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons set forth below, we AFFIRM.
1 Appellants identify the real party in interest as International Institute of
Cancer Immunology, Inc. Br. 1.
Appeal2018-001543
Application 14/838,312
BACKGROUND
The Specification relates to methods for detecting cancer and
compositions for prevention and treatment of cancer. Spec. ,r 1. Claim 1 is
illustrative:
1. A method for the treatment of cancer in an HLA-A *2402-
positlve subject, comprising administering to the subject an
eEF2 peptide consisting of an amino acid sequence composed
of contiguous amino acids of an eEF2 protein, wherein the
amino acid sequence is selected from the group consisting of:
(a) Arg Phe Tyr Ala Phe Gly Arg Val Phe (SEQ ID N0:4);
(b) Ala Phe Gly Arg Val Phe Ser Gly Leu (SEQ ID N0:5);
(c) Arg Phe Asp Val His Asp Val Thr Leu (SEQ ID N0:6);
(d) Ala Tyr Leu Pro Val Asn Glu Ser Phe (SEQ ID N0:7); and
(e) any one of the amino acid sequences as shown in (a) to (d)
in which amino acid( s) at position 2 and/ or position 9 is (are)
substituted by another amino acid(s).
Claims Appendix 1. 2
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-3 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the
enablement requirement. Ans. 3.
2. Claims 1-3 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable
over claims 14--22, 24, and 26 of co-pending Application Number
13/143,492 (the '492 application). Ans. 6.
2 The Claims Appendix is appended to the Appeal Brief, and is separately
paginated.
2
Appeal2018-001543
Application 14/838,312
A. Rejection 1
DISCUSSION
The subject of this appeal, Application Number 14/838,312, is a
division of the '492 application. The '492 application was the subject of
Appeal Number 2017-010332 ("Related Appeal"). As in the present appeal,
the Related Appeal featured an enablement rejection premised on the lack of
in vivo studies supporting the method of treatment claims.
In the related appeal, we determined that Appellants had established a
reasonable correlation between the in vitro data provided in the Specification
and in vivo efficacy. See Related Appeal Decision 4--5. We reversed the
enablement rejection. Id. at 5. The factual3 and legal circumstances of the
enablement rejection in the present appeal are essentially the same as those
in the Related Appeal; thus, the facts mandate the same outcome in both
appeals. Accordingly, in the present appeal, we reverse Rejection 1 in its
entirety.
3 In the present appeal, the Examiner acknowledges that "appellant provides
a multitude of examples" including in vitro evidence of binding of SEQ ID
N0:7 to HLA-A*2402 and increased cytotoxic activity. Ans. 3; see also
Non-Final Action dated Aug. 5, 2016 ("Non-Final Action") 6. In addition to
evidence from the Specification, Appellants proffer a Declaration under 3 7
C.F.R. § 1.132 of Dr. Haruo Sugiyama, dated Oct. 25, 2016, examining the
relationship between in vitro and in vivo data in the relevant art. Similarly,
in the Related Appeal, the Examiner acknowledged Appellants' exemplary
in vitro data from the Specification (see Related Appeal Decision 4 n.5); Dr.
Sugiyama also filed a ( different) declaration with evidence supporting a
reasonable correlation between in vitro results and in vivo efficacy (see id. at
4).
3
Appeal2018-001543
Application 14/838,312
B. Rejection 2
Appellants do not argue the merits of the provisional 4 obviousness-
type double patenting rejection. See Br. 5. We summarily affirm Rejection
2.
CONCLUSION
Rejection 1 is reversed. Rejection 2 is affirmed. 5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
4 A notice of allowance in the '492 application was mailed on Dec. 11, 2018.
5 Because the provisional obviousness-type double patenting rejection stands
as to each of the appealed claims, our disposition of this appeal is an
affirmance, not an affirmance-in-part.
4