Ex Parte Chen et al

Patent Trial and Appeal BoardOct 12, 2012

10723955 (P.T.A.B. Oct. 12, 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. 10/723,955 11/26/2003 Ruoping Chen AREN-007CON2(7.US29.CON) 3273 65643 7590 10/15/2012 Arena Pharmaceuticals, Inc. Bozicevic, Field & Francis LLP 1900 University Avenue, Suite 200 East Palo Alto, CA 94303 EXAMINER LI, RUIXIANG ART UNIT PAPER NUMBER 1646 MAIL DATE DELIVERY MODE 10/15/2012 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte RUOPING CHEN, CHEN W. LIAW, KEVIN LOWITZ, DEREK T. CHALMERS, and DOMINIC P. BEHAN __________ Appeal 2011-010477 Application 10/723,955 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC GRIMES, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a screening method. The Examiner has rejected the claims as lacking utility and being nonenabled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 69-88 are pending and on appeal (App. Br. 3). We will focus on claim 69, the only independent claim on appeal, which reads as follows: Appeal 2011-010477 Application 10/723,955 2 69. A method of screening for a compound that increases cAMP levels in peripheral blood leukocytes, comprising: (a) contacting a candidate compound with a G protein-coupled receptor (GPCR) that is present on the surface of a recombinant host cell or isolated membrane thereof, wherein said GPCR comprises an amino acid sequence that is at least 80% identical to the amino acid sequence of SEQ ID NO:82; and (b) determining that said candidate compound is an agonist of said GPCR; wherein an agonist of said GPCR is capable of increasing cAMP levels in peripheral blood leukocytes. Claims 69-88 stand rejected under 35 U.S.C. § 101 “because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility” (Ans. 4). In view of the alleged lack of utility, claims 69-88 also stand rejected under 35 U.S.C. § 112, first paragraph, because “one skilled in the art clearly would not know how to use the claimed invention” (id. at 6). Appellants argue that “one of skill in the art would immediately appreciate that the claims have a clear utility in identifying compounds that have anti-inflammatory activity” (App. Br. 7). ANALYSIS The Examiner finds that “there is no evidence showing that TDAG8 actually mediates inflammation and that an agonist of TDAG8 inhibits inflammation in vivo in a mammal” (Ans. 8) and, in fact, “nowhere in the instant specification does it state that an agonist of TDAG8 inhibits inflammation in a mammal” (id. at 13). However, the utility of an invention need not be set forth in the Specification if it is well-established. See Application of Folkers, 344 F.2d 970, 975 (CCPA 1965) (“Since appellants’ newly discovered compounds belong to a class of compounds, the members Appeal 2011-010477 Application 10/723,955 3 of which have become well recognized as useful for a particular purpose because of a particular property, the only reasonable conclusion is that the new compounds, also possessing that property, are similarly useful.”). In the present case, the Specification states that “TDAG8 is predominantly expressed in the lymphoid tissues, specifically . . . peripheral blood leukocytes . . .” (Spec. 14) and provides data supporting this statement (Fig. 6). The Specification also states that “Figure 2A evidences that ATP and ADP bind to TDAG8, resulting in an increase in cAMP” (id. at 20). In addition, we conclude that the evidence of record supports Appellants’ contentions that “[e]levated cAMP accumulation in peripheral blood leukocytes [was] known to inhibit inflammation” and that the “role of ATP and ADP in modulating inflammation [was] known” (App. Br. 6, citing several references (of record) that support these contentions). Thus, based on the totality of the evidence of record, we conclude that the evidence supports Appellants’ position that “one of skill in the art would immediately appreciate that the claims have a clear utility in identifying compounds that have anti-inflammatory activity” (id. at 7). We are not persuaded by the Examiner’s arguments to the contrary for the reasons set forth in the Appeal and Reply Briefs. In particular, we agree with Appellants’ analogy that “the presence of the square marble and/or the triangular marble does not exclude the circular marble from one’s hand” (Reply Br. 3). That is, only one utility is required to support patentability, even if a claimed invention might later prove to have additional uses that were not appreciated at the time the patent application was filed. Appeal 2011-010477 Application 10/723,955 4 CONCLUSION The preponderance of evidence on this record supports Appellants’ argument that “one of skill in the art would immediately appreciate that the claims have a clear utility in identifying compounds that have anti- inflammatory activity” (App. Br. 7). We therefore reverse the rejections under 35 U.S.C. § 101 and § 112, first paragraph. REVERSED alw