Ex Parte Jung et al

Patent Trial and Appeal BoardOct 29, 2012

11729301 (P.T.A.B. Oct. 29, 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. 11/729,301 03/27/2007 Edward K.Y. Jung SE1-0179-US 3906 80118 7590 10/30/2012 Constellation Law Group, PLLC P.O. Box 220 Tracyton, WA 98393 EXAMINER EDWARDS, LYDIA E ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 10/30/2012 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 LOWEL L. WOOD, JR. ________________ Appeal 2011-008345 Application 11/729,301 Technology Center 1700 ________________ Before FRED E. MCKELVEY, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008345 Application 11/729,301 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 19-23, 25, 37, 41-45, 47, 49, 63-66, 68, 70, 79-80. We have jurisdiction under 35 U.S.C. § 6. Appellant’s claimed invention relates to a method for detection of one or more pathogens. Spec. 3. Claim 19 is illustrative (disputed claim terms are italicized and underlined): 19. A method comprising: combining one or more samples with one or more magnetically active pathogen indicator binding agents that can bind to one or more pathogen indicators associated with the one or more samples to form one or more magnetically active pathogen indicator complexes; and separating the one or more magnetically active pathogen indicator complexes from the one or more samples through use of one or more magnetic fields and one or more separation fluids, the one or more separation fluids being in substantially parallel flow with the one or more samples without substantial translocation of content from the one or more separation fluids into the one or more samples. The Examiner maintains, and Appellant appeals, the following rejections: 1. Claims 19-23, 25, 37, 41-45, 47, 49, 63-66, 68, 70, and 79-80 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 19, 21-22, 37, 43-44, 63-65, and 79-80 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing Appeal 2011-008345 Application 11/729,301 3 to particularly point out and distinctly claim the subject matter which applicant regards as the invention. OPINION1 The dispositive issues for the rejections are: 1. Did the Examiner err in determining that the Specification, which discloses translocation of active complexes from a sample fluid into a separation fluid, does not provide sufficient support for the claim language “one or more separation fluids being in substantially parallel flow with the one or more samples without substantial translocation of content from the one or more separation fluids into the one or more samples”? 2. Did the Examiner err in determining that the claim terms “substantially parallel” and “without substantial translocation” are relative terms which render the claims indefinite because the Specification does not provide a standard for ascertaining the requisite degree? After review of the arguments and evidence presented by both Appellants and the Examiner, we affirm-in-part the stated rejections. Issue 1: Written Description The Examiner found that the Specification does not “suggest what happens to the active complexes after the initial translocation [from the sample into the separation fluid]. The absence of this language does not 1 Appellant has not presented separate substantive arguments addressing claims 19-23, 25, 37, 41-45, 47, 49, 63-66, 68, 70, and 79-80. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 19 as representative for deciding the issues on appeal. Appeal 2011-008345 Application 11/729,301 4 constitute a result of no back-diffusion of the active complexes from the one or more separation fluids into the one or more samples.” (Ans. 4, 5). Appellants argue that the Examiner has failed to present a prima facie case of lack of written description because the Examiner “has not provided any reasons why a person skilled in the art at the time the application was filed would not have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed.” App. Br. 17. Appellants cite to, as support for the claim language, Figure 100 and pages 4, 35, 101, 124 and 126 among the 522 pages that comprise the Specification. The cited portions of the Specification mention “substantially parallel flow” of the fluid sample with a separation fluid or second fluid and “translocation” of the magnetically active pathogen indicator complexes from one or more samples into one or more separation fluids. (App. Br. 20-22). Appellants’ arguments are not persuasive. The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “When no such description can be found in the specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (citing In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)). After the Examiner identified what was missing from the written description, the burden properly shifted to Appellants. Id. at 1371. Appellants have not met that burden. Appeal 2011-008345 Application 11/729,301 5 Appellants do not adequately address the Examiner’s finding that the Specification does not disclose back diffusion of the active complexes from a separation fluid to a sample fluid and does not suggest what happens to the active complexes after initial translocation from the sample fluid to the separation fluid (see Ans. 5). The portions of the Specification reproduced by Appellants (App. Br. 20-22) do not support Appellants’ assertion that “one skilled in the art would understand Appellant to have possessed this subject matter at the time of filing the instant application.” For the above reasons and the reasons in the Answer, we affirm the rejection of claims 19-23, 25, 37, 41-45, 47, 49, 63-66, 68, 70, and 79-80 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Issue 2: Indefiniteness The Examiner found that the Specification does not define the relative degree of “parallel” and “translocation” that is meant by “substantially parallel” and “substantial translocation.” (Ans. 4-5, 6). Appellants argue that the Examiner has failed to present a prima facie case of indefiniteness because the Examiner “has not produced any evidence as to why one of ordinary skill in the art would not have been able to ascertain with a reasonable degree of particularity the area circumscribed by the claims when read in light of the specification.” (App. Br. 25-26). Appellants assert that one of ordinary skill in the art would understand “substantially parallel” and “without substantial translocation” in light of at least Figure 100 and pages 4, 35, 101, 124 and 126 among the 522 pages that comprise the Specification, which recite “substantially parallel flow” of the fluid sample with a separation fluid or second fluid and “translocation” of Appeal 2011-008345 Application 11/729,301 6 the magnetically active pathogen indicator complexes from one or more samples into one or more separation fluids. (App. Br. 28-30). The terms “substantially” and “substantial” are terms of degree which allow for some variation. We agree with Appellants that the Examiner has not sufficiently explained why such terms of degree would not be understood by persons of ordinary skill in this art. Accordingly, on this record we reverse the rejection of claims 19, 21-22, 37, 43-44, 63-65, and 79-80 as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. 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 tc