Ex Parte Jung et al

Patent Trial and Appeal BoardDec 19, 2012

11900637 (P.T.A.B. Dec. 19, 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. 11/900,637 09/11/2007 Edward K.Y. Jung 1105-002-044-000000 2954 44765 7590 12/19/2012 THE INVENTION SCIENCE FUND CLARENCE T. TEGREENE 11235 SE 6TH STREET SUITE 200 BELLEVUE, WA 98004 EXAMINER WHALEY, PABLO S ART UNIT PAPER NUMBER 1631 MAIL DATE DELIVERY MODE 12/19/2012 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 EDWARD K.Y. JUNG, ERIC C. LEUTHARDT, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO, JR., and LOWELL L. WOOD, JR. ________________ Appeal 2011-01787 Application 11/900,637 Technology Center 1600 ________________ Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010787 Application 11/900,637 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 3-5, 10, 15, 21-26, 28-38, 40-42, 44, 47, 49, 52, 58-63, and 65.1 We have jurisdiction under 35 U.S.C. § 6. Appellant’s claimed invention relates to a method for detection of one or more pathogens and determining one or more agents in response to pathogen detection. Spec. 10. Claim 1 is illustrative (bracketed material added): 1. A method comprising: [step a] identifying one or more pathogens present within one or more samples obtained from an individual through assaying the one or more samples with one or more microfluidic chips; [step b] accepting input associated with the individual from whom the one or more samples were obtained; and [step c] determining one or more agents that can be used to reduce the pathogenicity of at least one of the one or more pathogens identified through assaying the one or more samples with the one or more microfluidic chips. The Examiner relied on the following references in rejecting the appealed subject matter: Lagally et al., Anal. Chem., Vol. 76, pp. 3162-3317 (June 2004). Leibovici et al., IEEE Transactions On Knowledge and Data Engineering, Vol. 12, No. 4, pp. 517-528 (2000). 1 Appellants have indicated that claims 7, 12, 16-20 and 53-57 have been withdrawn from consideration and claims 2, 6, 8-9, 11, 13-14, 27, 39, 43, 45-46, 48, 50-51 and 64 have been cancelled. App. Br. 16. Appeal 2011-010787 Application 11/900,637 3 Evans et al., The New England Journal of Medicine, Vol. 338, pp. 232-238 (1998). Li, US 2004/0220498, Published Nov. 4, 2004. The Examiner maintains, and Appellants appeal, the following rejections: 1. Claims 1, 3-5, 15, 29, 30, 32, 33, 35, 36, 38, 40-42, 44, and 472 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lagally in view of Leibovici. 2. Claims 10, 21 and 58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lagally in view of Leibovici and further in view of Evans. 3. Claims 22-26, 28, 31, 34, 37, 59-63, and 65 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lagally in view of Leibovici, in view of Evans, and further in view of Li. 4. Claims 1, 3-5, 10, 21-26, 28-38, 40-42, 44, 47, 49, 52, 58-63, and 65 also stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 4, 5, 7, 10, 11, 14, 15, 17, 20-33, 36, 37, 39, 42, 43, 48, 49, 52-55 of co-pending Application No. 11/900,660 (now US 8,068,991) in view of Lagally and Leibovici. 2 Although claim 48 appears in the Examiner’s statement of the rejection, Answer 5, Appellants have indicated that claim 48 has been canceled. App. Br. 16. Appeal 2011-010787 Application 11/900,637 4 OPINION Prior Art Rejections Upon consideration of the appeal, and for the reasons given by the Examiner in the Answer, the decision of the Examiner rejecting all of the claims over the prior art is affirmed. Obviousness-Type Double Patenting Rejection Appellant has failed to address the above listed double patenting rejection from the Final Office Action dated December 2, 2009, from which this appeal has been taken. Appellants have therefore waived the right for further appellate review of this rejection. The Board will generally not reach the merits of any issues not contested by the Appellants. See 37 C.F.R. § 41.37(c)(1)(vii) (2010) (“Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown.”); Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments the appellant failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). Accordingly, we summarily affirm this uncontested rejection. 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)(v). AFFIRMED McKELVEY, Administrative Patent Judge, concurring. I concur with, and join, the decision and opinion of the Board. However, it is not apparent to me how Claim 1 on appeal is patentable Appeal 2011-010787 Application 11/900,637 5 under 35 U.S.C. § 101, particularly in light of Appellants’ argument that the Examiner has failed to show how the “determining” step is met. See Mayo Collaborative Service v. Prometheus Laboratories, 132 S.Ct. 1289 (2012). Mayo was decided after entry of the Examiner’s Answer. The gathering and analysis steps are known in the art, as shown by the prior art relied upon by the Examiner. The only significant step is “determining” a material which would counteract a pathogen. Further discussion concerning § 101, however, is not necessary given our affirmance of the Examiner’s § 103 rejections. tc