Lars Winther et al.

Patent Trials and Appeals Board

Aug 18, 2021

2020005320 (P.T.A.B. Aug. 18, 2021)

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.
10/097,106 03/13/2002 Lars Winther IMDX-001US0 8528
159930 7590 08/18/2021
Plant & Planet Law Firm
11440 W. Bernardo Court, Suite 300
San Diego, CA 92127
EXAMINER
DIBRINO, MARIANNE
ART UNIT PAPER NUMBER
1644
NOTIFICATION DATE DELIVERY MODE
08/18/2021 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):
USPTO@dockettrak.com
ipdocket@pnplf.com
mgodfrey@pnplf.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARS WINTHER,
LARS OESTERGAARD PETERSEN,
SOEREN BUUS, JOERGEN SCHOELLER,
ERIC RUUD, and OEYSTEIN AAMELLEM
Appeal 2020-005320
Application 10/097,106
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered May 27, 2021
(hereinafter “Decision”), which affirmed the Examiner’s rejections of claims
1–4, 7, 9, 11, 26, 27, 29–33, and 36 as obvious over (1) Lihme1 and
Wucherpfennig,2 and (2) Lihme, Wucherpfennig, and Romero.3
We DENY the requested relief.

1 Lihme et al., WO 93/01498, published Jan. 21, 1993 (“Lihme”).
2 Wucherpfennig et al., WO 99/42597, published Aug. 26, 1999
(“Wucherpfennig”).
3 Romero et al., WO 99/50637, published Oct. 7, 1999 (“Romero”).
Appeal 2020-005320
Application 10/097,106
2

DISCUSSION
Appellant contends that the Board erred in declining to credit the
evidence of allegedly unexpected results presented in the Hansen
Declaration,4 namely evidence that “there is an optimal range of Major
Histocompatibility Complex (MHC) molecules rather than the expected
result that ‘more is more.’” Req. Reh’g 1–2. More specifically, Appellant
contends that, to “negate” Appellant’s evidence of unexpected results, “the
Board at least in part based its decision on a conclusion that the number of
MHC molecules is dependent on density . . . , thus discrediting the Hansen
Declaration’s characterization of Wucherpfennig as a ‘more is more’
approach as compared with the invention’s ‘less is more’ approach.” Req.
Reh’g 2. Appellant contends, however, that the Board’s interpretation of
Wucherpfennig is inconsistent with how a skilled artisan would have
interpreted that reference. Id.
In particular, Appellant argues that “[a] careful review of
Wucherpfennig indicates that the densities described in Wucherpfennig all
are densities calculated for spherical molecules” whereas “[t]he claimed
invention, as limited to dextran, is not spherical.” Req. Reh’g 2. Appellant
also purports to calculate the average density of MHC molecules in the
claimed MHC constructs and the approximate “mean distance between
MHCs on the construct” for the claimed MHC constructs and the constructs
described in Wucherpfennig. Id. at 2–3. Appellant argues that,
even if someone were to apply the density standards of
Wucherpfennig to the claimed invention, the density range

4 Declaration of Bjarke Endel Hansen under 37 C.F.R. § 1.132 (Sept. 20,
2017).
Appeal 2020-005320
Application 10/097,106
3
would still fall outside of the range provided in Wucherpfennig.
Specifically, the density of the claimed invention is calculated
to be lower than described for the spherical structures
described, e.g., on page 7 and 8 in Wucherpfennig, providing
further evidence against the expected “more is more” result.
Id. at 2.
We are not persuaded. As for Appellant’s argument that
Wucherpfennig teaches spherical carriers whereas the claimed invention
recites dextran, a carrier that is not spherical, we addressed this argument in
the Decision. See, e.g., Dec. 9 (explaining that “Wucherpfennig does not
limit carriers for its constructs to spherical . . . carriers” but, rather, teaches
that “‘carrier’ simply means ‘a molecule, particle, composition, or other
microscopic object to which may be conjugated . . . MHC binding domains,
so as to form a multimeric binding domain conjugate”). A Request for
Rehearing is not an opportunity to reargue points merely because Appellant
does not agree with the result of the Board’s Decision. See 37 C.F.R.
§ 41.52.
We are similarly unpersuaded by Appellant’s purported analysis of
density. Req. Reh’g 2–3. As an initial matter, Appellant’s calculations, and
contentions based thereon, are attorney arguments, which cannot take the
place of evidence. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir.
1989). Furthermore, Appellant’s claims recite a number of MHC molecules
per construct, not density, and, as explained in our Decision,
“Wucherpfennig teaches a range of MHC binding domains per carrier that
overlaps the claimed range of 5 to 25 MHC molecules per construct,” and
“Appellant has not provided persuasive evidence the claim limitation in
question is not obvious despite the overlapping range.” Dec. 12–13. Nor do
Appellant’s arguments negate the reasons for which we cited
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Application 10/097,106
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Wucherpfennig’s disclosure of MHC binding domain density, i.e., that the
prior art suggests that the number of MHC molecules per construct is a
result-effective variable, the discovery of an optimum value of which is
normally within the skill of art, and that, contrary to Dr. Hansen’s statement,
it is not unexpected that “more HLA molecule correlate with increased
binding only up to a certain optimum.” Dec. 13, 22.
Appellant further contends that
what was standard in the art for detection of T-cells at the time
of filing was a MHC tetramer construct . . . and so any
unexpected result obtained by the claimed invention should be
compared to the available MHC tetramers and not to a
hypothetical and unmotivated combination product of the prior
art (Wucherp[f]ennig and [Lihme]).
Req. Reh’g 3–4.
We are not persuaded. Appellant cites to no authority, and we are
aware of none, that unexpected results are to be shown against what was
standard in the art rather than the closest prior art. Neither does the
Decision suggest that the claimed invention should be compared to “a
hypothetical and unmotivated combination product” of Wucherpfennig and
Lihme. Req. Reh’g 3 (emphasis added). Rather, the Decision explained that
unexpected results must be shown to be unexpected compared with the
closest prior art, and that Appellant has not explained why the constructs of
Wucherpfennig would not be the closest prior art. Dec. 21. Finally, we have
explained in the Decision why the Hansen Declaration does not persuade us
“the claimed invention unexpectedly . . . detects low-affinity T cells which
were completely undetectable with conventional MHC tetramer constructs.”
Req. Reh’g 3–4; Dec. 20–25. We reiterate that a Request for Rehearing is
Appeal 2020-005320
Application 10/097,106
5
not an opportunity to reargue points merely because Appellant does not
agree with the result of the Board’s Decision. See 37 C.F.R. § 41.52.
CONCLUSION
We have carefully reviewed the original decision in light of
Appellant’s request, but we find no point of law or fact which we
overlooked or misapprehended in arriving at our decision. Therefore,
Appellant’s request is denied with respect to making any modifications to
the Decision.

Outcome of Decision on Rehearing:

Claims 35 U.S.C § Reference(s)/Basis Denied Granted
1–4, 7, 9,
11, 26, 27,
29–33, 36
103(a) Lihme,
Wucherpfennig
1–4, 7, 9, 11,
26, 27, 29–33,
36

1–4, 7, 9,
11, 26, 27,
29–33, 36
103(a) Lihme,
Wucherpfennig,
Romero
1–4, 7, 9, 11,
26, 27, 29–33,
36

Overall
Outcome
1–4, 7, 9, 11,
26, 27, 29–33,
36

Final Outcome of Appeal after Rehearing:

Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7, 9,
11, 26, 27,
29–33, 36
103(a) Lihme,
Wucherpfennig
1–4, 7, 9, 11,
26, 27, 29–33,
36

1–4, 7, 9,
11, 26, 27,
29–33, 36
103(a) Lihme,
Wucherpfennig,
Romero
1–4, 7, 9, 11,
26, 27, 29–33,
36

Overall
Outcome
1–4, 7, 9, 11,
26, 27, 29–33,
36

Appeal 2020-005320
Application 10/097,106
6

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REHEARING DENIED