Ex Parte Chettier et al

Patent Trial and Appeal BoardJan 11, 2017

13364378 (P.T.A.B. Jan. 11, 2017)

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. 13/364,378 02/02/2012 Rakesh N. Chettier ABI-0038-1 8446 52966 7590 S chramm-Personal-ACT Michael R. Schramm 350 West 2000 South Perry, UT 84302 EXAMINER KAPUSHOC, STEPHEN THOMAS ART UNIT PAPER NUMBER 1634 NOTIFICATION DATE DELIVERY MODE 01/13/2017 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): mikeschramm @ besstek. net mschramm @juneaubiosciences.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAKESH N. CHETTIER, LESA M. NELSON, KENNETH WARD, JAMES W. OGILVIE, and ROBERTO A. MACINA Appeal 2016-003639 Application 13/364,378 Technology Center 1600 Before ERIC B. GRIMES, ULRIKE W. JENKS, and TIMOTHY G. MAJORS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered August 25, 2016 (“Decision”). Appellants argue that, for various reasons, the Board erred in affirming the rejections based on an improper Markush grouping, ineligible subject matter, nonenablement, anticipation, and obviousness. (Req. Reh’g 2.) Appellants have not shown that we misapprehended or overlooked any issues of fact or law in the Decision. The request for rehearing is denied.1 1 On November 23, 2016, Appellants filed a “Supplemental Request for Rehearing.” Appellants state that the Supplemental Request was filed “[pjursuant to 37 C.F.R. § 41.52 and 37 C.F.R. § 41.8(2).” Rule 41.52(a)(1), Appeal 2016-003639 Application 13/364,378 With regard to the rejection for an improper Markush group, Appellants argue that “the requirement of ‘a single structural similarity’ does not mean and is decidedly different that [sic] a requirement of having an identical structure.” (Id.) Appellants argue that “the PTAB is imposing an ‘identical structure’ were [sic] the rules only require a ‘similar structure’” and “the PTAB has clearly imposed a rule of its own creation, an ‘identical’ rule, as opposed to the actual written rule a ‘similar’ rule.” (Id. at 3.) Although Appellants do not characterize it as such, we will consider this argument to be based on the position that we misapprehended the applicable legal standard for Markush groups. See 37 C.F.R. § 41.52 (“The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.”). We are not persuaded by Appellants’ argument, because the Decision did not impose a requirement for identical structure. We stated that “[t]he sequences shown in Table 1 do not share any common sequence, and therefore do not share a common structure.” (Decision 4.) With reference to the first two sequences in the Specification’s Table 1, we pointed out that “they do not share any significant similarity in the order in which th[eir] however, states that “Appellant may file a single request for rehearing within two months of the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1) (emphasis added). Rule 41.4(b)(2) (there is no 37 C.F.R. § 41.8(2)), states that a late filing can be excused under certain circumstances. The Supplemental Request for Rehearing is both an unexcused late filing (coming nearly a month after the deadline for filing a request for rehearing and the decision that allegedly prompted the Supplemental Request), and an additional filing that is not permitted under our rules. We have not considered the Supplemental Request for Rehearing. 2 Appeal 2016-003639 Application 13/364,378 bases are arranged.” (Id., emphasis added.) We did not impose a requirement for identical structure among members of a Markush group. With regard to the rejection based on ineligible subject matter, Appellants argue that the claims on appeal are distinguishable from those at issue in Mayo. (Req. Reh’g 5—6.) We will not consider Appellants’ Mayo-based argument, because it could, and should, have been raised in the Appeal Brief if Appellants wished to rely on it. Mayo was decided in 2012 and the Appeal Brief was filed in 2015, so Appellants had the opportunity to raise an argument based on Mayo, but they chose not to (Decision 11 (“Appellants make no attempt to distinguish the facts of this case from those of Mayo.”)). The Examiner also relied extensively on Mayo in making the rejections for ineligible subject matter that are the subject of this appeal. (See 3/16/15 Final Action at IS IS.) See 31 C.F.R. § 41.37(c)(l)(iv) (The appeal brief shall contain “[t]he arguments of appellant with respect to each ground of rejection.”); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (“A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration.”). Appellants also argue that “[i]n US 9,370,431, the PTAB reversed the examiner and allowed inter alia claim 1,” which is similar to claim 68 on appeal. (Req. Reh’g 6.) Appellants make a similar argument with respect to the rejection for nonenablement. (Id. at 8.) A request for rehearing can include arguments based on a recent relevant decision of the Board. 37 C.F.R. § 41.52(a)(2). USPTO records show that U.S. Patent 9,370,431 issued from application 14/170,691, which 3 Appeal 2016-003639 Application 13/364,378 was the subject of Appeal 2016-001939. However, that appeal only involved rejections under 35 U.S.C. §§ 102(b) and 103(a), not subject matter eligibility or enablement. Appellants’ arguments are therefore unpersuasive. With regard to the rejection for nonenablement, Appellants argue that the “Board has applied an unduly and impermissibly high burden of enablement on appellant.” (Req. Reh’g 7.) Although Appellants may disagree with our analysis, however, they have not pointed to any issue of fact or law that we overlooked or misunderstood in reaching our conclusion that the Specification does not enable the full scope of claims 68, 72—75, 79- 81, and 85—87. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52. An applicant dissatisfied with the outcome of a Board decision is entitled to appeal the decision, see 35 U.S.C. §§ 141 and 145, but is not entitled to have the same issue decided multiple times on the same record. Appellants also raise a new argument based on a 2014 decision of the Federal Circuit. (Req. Reh’g 7—8.) As noted above, however, the Appeal Brief was filed in 2015, so Appellants could, and should, have raised this argument in the Appeal Brief if they wished to rely on it. New arguments are not permitted in a request for rehearing, with exceptions not relevant here. 37 C.F.R. § 41.52(a)(1). With respect to the rejection under 35 U.S.C. § 102(b), Appellants argue that requiring Appellants’ Specification to provide a disclosure that enables the full scope of the claims, while finding that Seki anticipates because it describes a single embodiment within the claims, represents “a 4 Appeal 2016-003639 Application 13/364,378 blatant double standard.” (Req. Reh’g 9.) Appellants argue that “[t]he Board does not have the latitude to pick and choose. If the Board believes it is permissible to apply differing standards at the Board’s pleasure, let the Board cite such authority.” (Id.) The Decision cited the relevant authority: A prior art reference that enables a single embodiment within the scope of a claim anticipates that claim, even if the same embodiment would not enable the full scope of the later-claimed invention. Cf. In re Lukach, 442 F.2d 967, 970 (CCPA 1971) (“[T]he description of a single embodiment of broadly described subject matter constitutes a description of the invention for anticipation purposes . . . , whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure.”). (Decision 14.) Appellants also argue that “the Board has completely misunderstood appellant’s argument or has otherwise failed to address it.” (Req. Reh’g 10.) Specifically, Appellants argue that “the Board has failed to address” Appellants’ argument that Seki does not disclose whether the 1184C allele is the major allele or minor allele. (Id.) Appellants’ argument in the Appeal Brief, however, was that Seki did not disclose whether the 1184C allele was associated with increased risk, or decreased risk, of LDD. (See Appeal Br. 21.) The Decision expressly stated that a “person of ordinary skill in the art would understand Seki’s description to indicate that the single nucleotide polymorphism (SNP) in which C (cytosine) is present at position 1184 of the CILP gene is associated with an increased risk of (susceptibility to) lumbar disc disease.” (Decision 5 Appeal 2016-003639 Application 13/364,378 10.) Thus, we did not overlook any argument that was made in the Appeal Brief. With regard to the rejection based on obviousness, Appellants again argue that Seki did not teach whether the 1184C allele is the major allele or minor allele when it is associated with increased risk of LDD. (Req. Reh’g 12.) Again, however, this argument was not made in the Appeal Brief (see Appeal Br. 22—23), so it cannot be a point that we overlooked or misapprehended in rendering the Decision. In sum, we have considered the Request for Rehearing but decline to make any change in the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REHEARING DENIED 6