Ex Parte Watanabe et al

Patent Trial and Appeal Board

Nov 18, 2014

10568761 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKAMASA WATANABE and KAORU KIKUCHI
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Appeal 2012-006416
Application 10/568,761
Technology Center 1600
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Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 19, 20, and 31–37
(App. Br. 4). Examiner entered rejections under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is DAINIPPON SUMITOMO PHARMA CO.,
LTD. (App. Br. 2.)
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2
STATEMENT OF THE CASE
The claims are directed to a method for improving or treating
inflammatory bowel disease. Claims 19 and 31 are representative and are
reproduced in the Claims Appendix of Appellants’ Brief.
Claims 19, 20, 32, and 35–37 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Fleming.2
Claims 19, 20, and 31–37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fleming in view of He3 or Stoyanova.4
Claims 31, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fleming in view of Owens.5
We vacate the following grounds of rejection as cumulative to the
foregoing rejections:
The rejection of claims 19, 20, 32, and 35–37 under
35 U.S.C. § 102(b) as being anticipated by Fleming ’647.6
The rejection of claims 19, 20, 31, 32, and 35–37 under
35 U.S.C. § 102(b) as being anticipated by Curd.7
The rejection of claims 19, 20, and 31–37 under
35 U.S.C. § 103(a) as unpatentable over the combination of
Fleming ’647 in view of He or Stoyanova.
The rejection of claims 19, 20, and 31–37 under

2 Fleming et al., US 6,423,501 B2, issued July 23, 2002.
3 Shao-Heng He, Key role of mast cells and their major secretory products
in inflammatory bowel disease, 10(3) WORLD J. GASTROENTEROL 309–318
(2004).
4 Irina I. Stoyanova & Maya V. Gulubova, Mast cells and inflammatory
mediators in chronic ulcerative colitis, 104(2) ACTA HISTOCHEMICA 185–
192 (2002).
5 Raymond J. Owens & Robert J. Young, The genetic engineering of
monoclonal antibodies, 168 JOURNAL OF IMMUNOLOGICAL METHODS 149–
165 (1994).
6 Fleming et al., WO 98/25647, published June 18, 1998.
7 Curd et al., WO 00/67796, published Nov. 16, 2000.
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35 U.S.C. § 103(a) as unpatentable over the combination of
Fleming ’2838 in view of Stoyanova.
The rejection of claims 19, 20, and 31–37 under
35 U.S.C. § 103(a) as unpatentable over Curd.
The rejection of claim 31 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fleming or Fleming ’647
in view of Owens.
The rejection of claims 31, 33, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Fleming ’647
or Curd in view of Owens.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Fleming teaches a method of treating inflammatory
bowel disease comprising the administration of an effective amount of anti-
CD-81 antibody to a patient in need thereof?
FACTUAL FINDINGS (FF)
FF 1. Fleming’s invention “pertains to a method of treating an . . .
inflammatory condition[, for example inflammatory bowel disease,] in a
mammal comprising administering to the mammal an effective amount of an
agent which induces CD81-mediated signal transduction” (Fleming, col. 13,
ll. 34–38; Ans. 5).
FF 2. Fleming’s “[a]gents . . . can be anything which binds to or interacts
with CD81 and induces (i.e., activates) or enhances CD81-mediated signal
transduction. For example, . . . the 5D1 or 1A12” anti-CD81 antibodies
(Fleming, col. 9, l. 65–col. 10, l. 3; see generally id. at col. 8, l. 35 (“1A12
and 5D1 recognize . . . CD81”); Ans. 5).

8 Fleming et al., US 7,026,283 B2, issued Apr. 11, 2006.
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ANALYSIS
Fleming teaches a method of treating inflammatory bowel disease
comprising the administration of an effective amount of anti-CD81 antibody
to a patient in need thereof (FF 1–2; Ans. 5). For the foregoing reason, we
are not persuaded by Appellants’ contention that Fleming fails to teach “the
treatment of inflammatory bowel disease with an anti-CD81 antibody in a
way that would be ‘at once envisaged’ by a person of ordinary skill in the
art” (App. Br. 11; Reply Br. 5; see also App. Br. 10–16). See Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court
rejects the notion that one of these [fourteen skin benefit] ingredients cannot
anticipate because it appears without special emphasis in a longer list. To
the contrary, the disclosure is prior art to the extent of its enabling
disclosure”). Here, as in Perricone, “the prior art does not merely disclose a
genus . . . without disclosing the particular claimed” disease (inflammatory
bowel disease) or antibody (1A12 and 5D1). Id. at 1377. To the contrary,
Fleming specifically discloses the treatment of inflammatory bowel disease
with anti-CD81 antibodies (FF 1–2). “Th[is] specific disclosure, even in a
list, makes this case different from cases involving disclosure of a broad
genus without reference to the potentially anticipating species.” Perricone,
432 F.3d at 1377. Appellants’ contention to the contrary is not persuasive.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Fleming teaches a method of treating inflammatory bowel
disease comprising the administration of an effective amount of anti-CD-81
antibody to a patient in need thereof. The rejection of claim 19 under
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35 U.S.C. § 102(b) as being anticipated by Fleming is affirmed. Claims 20,
32, and 35–37 are not separately argued and fall with claim 19.

Obviousness:
The rejection over the combination of Fleming in view of He or Stoyanova:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness with respect to Appellants’ claim 19?
ANALYSIS
For the reasons discussed above, claim 19 is anticipated by Fleming.
“[A]nticipation is the epitome of obviousness.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). For the reasons set forth
above, Appellants failed to present persuasive evidence or argument to rebut
Examiner’s conclusion that claim 19 is anticipated by Fleming. He and
Stoyanova are superfluous additions to Fleming with respect to the rejection
of Appellants’ claim 19. See In re Bush, 296 F.2d 491, 495 (CCPA 1961).
Appellants also failed to provide separate arguments with respect to claims
20 and 31–37 (see App. Br. 17–22).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 19 under 35 U.S.C.
§ 103(a) as unpatentable over Fleming is affirmed. Claims 20 and 31–37 are
not separately argued and fall with claim 19.

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The rejection over the combination of Fleming in view of Owens:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
For the reasons set forth above, we are not persuaded by Appellants’
contention that Fleming fails to “anticipate . . . claim[ 19] from which
[c]laims 31, 33[,] and 34 depend” (App. Br. 16). For the foregoing reasons
we are not persuaded by Appellants’ contention that “those of ordinary skill
in the art would not have reasonably expected success in performing the
presently claimed method” for the reasons set forth in Appellants’ arguments
concerning the obviousness rejection of claim 19 (App. Br. 16; see also App.
Br. 17–22).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 31 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Fleming and Owens is
affirmed. Claims 33 and 34 are not separately argued and fall with claim 31.

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. § 1.136(a).

AFFIRMED

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