2019005170 (P.T.A.B. Jul. 6, 2020)

Zietchick Research Institute, LLC

Patent Trials and Appeals BoardJul 6, 2020

2019005170 (P.T.A.B. Jul. 6, 2020)

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. 15/322,881 12/29/2016 Tammy Z. Movsas Zietchick P301US2pct 1012 104082 7590 07/06/2020 Mitchell Intellectual Property Law, PLLC 1595 Galbraith Ave. SE Watermark Center Grand Rapids, MI 49546 EXAMINER DILLAHUNT, SANDRA E ART UNIT PAPER NUMBER 1646 NOTIFICATION DATE DELIVERY MODE 07/06/2020 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): svanholstyn@mitchelliplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAMMY Z. MOVSAS ____________ Appeal 2019-005170 Application 15/322,881 Technology Center 1600 ____________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and JAMIE T. WISZ, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the Decision mailed April 29, 2020 (“Decision”) affirming the rejection under the written description provision of 35 U.S.C. § 112(a). We have jurisdiction over this Request under 35 U.S.C. § 6(b). Appellant’s Request is DENIED. Appeal 2019-005170 Application 15/322,881 2 ANALYSIS Appellant contends that the “[D]ecision is internally inconsistent,” because although the Board “agrees that by scientific definition one of ordinary skill in the art recognizes that any ‘hCG/LH receptor antagonist’ defines a function which makes the administration of an hCG/LH receptor antagonist ‘effective to block hormonal induced expression of VEGF and thereby reduce or inhibit the progression of VEGF-associated retinopathy’,” “the Board goes on to” state that it did “not find an evidentiary basis on this record to support a finding that the art knew or described the full genus of hCG/LH receptor antagonists that fall within the scope of Appellant’s claimed method” (Req. Reh’g1 5 (citing Decision 8); see generally Req. Reh’g 4–5). Upon review of this record, we find no inconsistency in the Decision. In review, the Decision makes clear that Appellant’s claimed method “‘encompass[es] an extremely broad genus of agents defined solely by the function of antagonizing hCG/LH’ and reducing the likelihood or inhibiting the progression of a VEGF-associated retinopathy” (Decision 3–4 (alteration in original; emphasis added); see also Req. Reh’g 6 (Appellant contends that “Examiner acknowledge[d] that the genus of hCG/LH antagonists ‘is enormous.’”)). The Decision explains that although “functional claim language can meet the written description requirement when the art has established a correlation between structure and function,” “merely drawing a fence around the outer limits of a purported genus is not an adequate substitute 1 Appellant’s June 12, 2020 Request for Rehearing. Appeal 2019-005170 Application 15/322,881 3 for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” (Decision 10 (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc)). Stated differently, in order to satisfy the written description requirement the hCG/LH receptor antagonist must be described by what it is, not by what it does. See, e.g., Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997) (“A definition by function . . . does not suffice to define the genus because it is only an indication of what the gene does, rather than what it is”). In addition, simply naming a class of compounds, i.e. hCG/LH receptor antagonists, alleged as being capable of the claimed function (inhibiting the progression of VEGF- associated retinopathy), is not sufficient to satisfy the written description requirement on this record, because “naming a type of material generally known to exist, in the absence of knowledge as to what that material consists of, is not a description of that material.” Id. On this record, the Decision found that “Appellant’s claimed method entails the use of . . ., for example, an antibody” (id. at 6). The Decision noted, however, that although those of ordinary skill in this art may understand how to prepare antibodies, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, . . . or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352. In addition, Appellant fails to: Identify which commercially available antibodies would exhibit the functions recited in Appellant’s claims, describe the structural features common to members of the genus that would allow a skilled Appeal 2019-005170 Application 15/322,881 4 artisan to distinguish antibodies encompassed by the claim language from other antibodies, and disclose any correlation between the structure and function of the antibodies encompassed by the claim language. Thus, Appellant’s Specification fails to describe the antibodies required to practice the claimed method in a manner that reasonably conveys to those skilled in the art that Appellant was in possession of the claimed method as of the filing date of the instant application. (Decision 6–7.) Therefore, we are not persuaded by Appellant’s contention that “this [is not] a case where hCG/LH antagonists are unknown to those skilled in the art, such that structural description would be necessary for them to know what constitutes an hCG/LH antagonist” (Req. Reh’g 6). Thus, for the reasons set forth in the Decision, as emphasized above, we are not persuaded by Appellant’s contention that it satisfied the written description requirement on this record simply by naming a class of compounds by function (see Req. Reh’g 6 (“[S]ince it is the defined function which makes the hCG/LH antagonist effective in the treatment, it follows that any hCG/LH antagonist falls within the full scope of the genus” and “by scientific definition, there are NO members of the genus of hCG/LH antagonists which are excluded from the scope of the claims”); see id. at 7 (“[I]n this case, describing the active compound as an hCG/LH receptor antagonist does clearly distinguish a compound who’s use would infringe the claim from a compound which would not”)). For the foregoing reasons, we deny Appellant’s request. Appeal 2019-005170 Application 15/322,881 5 DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–4, 7–10, 14, 15, 17, 18, 20 112(a) Written Description 1–4, 7–10, 14, 15, 17, 18, 20 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7–10, 14, 15, 17, 18, 20 112(a) Written Description 1–4, 7–10, 14, 15, 17, 18, 20 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). DENIED