Ex Parte Neshich et al

Patent Trials and Appeals Board

Mar 14, 2019

13821792 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/821,792 07/01/2013
23373 7590 03/18/2019
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Goran Neshich
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Q202671 1692
EXAMINER
BORIN, MICHAEL L
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/18/2019 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORAN NESHICH,
IZABELLA AGOSTINHO PENA NESHICH,
JOSE GILBERTO JARDINE, LETICIA NISHIMURA,
IV AN MAZON!, and JOSE SALIM
Appeal2018-006259
Application 13/821, 792 1
Technology Center 1600
Before DONALD E. ADAMS, ROBERT A. POLLOCK, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claim 1 (Final Act. 2
2). Examiner entered rejections under the written description provision of
35 U.S.C. § 112, first paragraph and 35 U.S.C. § 101. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify "EMPRESA BRASILEIRA DE PESQUISA
AGROPECUARIA - EMPRAPA" as the real party in interest (Appellants'
February 2, 2018 Appeal Brief ("Br.") 2).
2 Examiner's August 8, 2017 Final Office Action.
Appeal2018-006259
Application 13/821, 792
STATEMENT OF THE CASE
Appellants' disclosure "relates to a method for identifying target
regions existing in the interface of monomers constituting the PilT protein
with a view to design molecules that are potentially applicable in impairing
the activity of this protein, thus controlling infectious processes" (Spec. 1:5-
8). Appellants' claim 1 is representative and reproduced below:
1. A method for identifying drug candidates that inhibit
motility of PilT-expressing Xylella fastidiosa, comprising:
(a) selecting at least one interface-forming residue from a
PilT protein from a PilT-expressing Xylella fastidiosa as a
therapeutic target site, wherein said at least one interface-
forming residue is selected from the group consisting of residue
D184, E89, K187, E258, E74, K235, K249, R35, R90, D33,
E248, R36, H152, E336, K58, R212, R335 and E65 from
Xylella fastidiosa PilT; and
(b) identifying at least one drug candidate predicted to
bind to said therapeutic target site, wherein said identifying
comprises one or more of de nova drug design and virtual
screenmg.
(Br. 18.)
Grounds of rejection before this Panel for review:
Claim 1 stands rejected under the written description provision of
35 U.S.C. § 112, first paragraph.
Claim 1 stands rejected under 35 U.S.C. § 101.
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Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Appellants' Specification fails to provide written
descriptive support for the claimed invention?
ANALYSIS
To satisfy the written description requirement, "the specification must
describe an invention understandable to [the] skilled artisan and show that the
inventor actually invented the invention claimed." Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). "The
descriptive text needed to meet these requirements varies with the nature and
scope of the invention at issue, and with the scientific and technologic
knowledge already in existence." Capon v. Eshhar, 418 F.3d 1349, 1357
(Fed. Cir. 2005).
On this record, Examiner does not dispute that step (a) of Appellants'
claim identifies the therapeutic target site of a PilT protein from a PilT-
expressing Xylella fastidiosa as at least one interface forming residue is
selected from the group consisting of residue D184, E89, K187, E258, E74,
K235, K249, R35, R90, D33, E248, R36, H152, E336, K58, R212, R335
and E65 fromXylellafastidiosa PilT (see Br. 18). In addition, Examiner
does not dispute that Appellants disclose the proposed method steps and
direct attention to patents and printed publications describing the de nova
drug design and virtual screening methodology required by step (b) of their
claim (see generally Spec. 5-11 and 17-20).
Instead, Examiner asserts that "there is no showing in the application
that [Appellants] knew to be a fact that instructions to identify compounds to
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bind to one of [the recited] ... residues would be sufficient to identify a drug
candidate that inhibits motility of a PilT-expressing proteobacteria" (Ans. 3
6; see also Final Act. 5-7). Stated differently, Examiner finds that
Appellants' claimed invention lacks written descriptive support because
Appellants' Specification fails to disclose a working example of Appellants'
claimed invention. We are not persuaded.
"[T]he written description requirement does not demand either
examples or an actual reduction to practice; a constructive reduction to
practice that in a definite way identifies the claimed invention can satisfy the
written description requirement." Ariad Pharms., 598 F.3d at 1352 (citing
Palko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006)).
In addition, Examiner failed to establish an evidentiary basis to this
record to support a finding that a person of ordinary skill in this art would
not have expected Appellants' disclosed and claimed method to result in the
identification of a drug candidate that inhibits motility of a PilT-expressing
proteobacteria or that such a person would have reasonably considered a
molecule of water to represent a drug candidate within the scope of
Appellants' claim (see Ans. 6 ("One can argue that following such generic
instruction a molecule of water can be identified as a drug candidate that
inhibits motility of PilT-expressing Xylella fastidiosa because a molecule of
water can certainly be predicted to form hydrogen bonds with (bind to) any
of the recited residues")).
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that Appellants' Specification fails to provide written
3 Examiner's March 27, 2018 Answer.
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descriptive support for the claimed invention. The rejection of claim 1 under
the written description provision of 35 U.S.C. § 112, first paragraph is
reversed.
Subject Matter Eligibility:
ISSUE
Does the preponderance of evidence of record support Examiner's
finding that Appellants' claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573
U.S. 208,216 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
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in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Gottschalk and Parker); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
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formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an inventive concept
sufficient to transform the claimed abstract idea into a patent-eligible
application." Alice, 573 U.S. at 221 (quotation marks omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Revised Guidance"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
See 84 Fed. Reg. 54--55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. 51.
ANALYSIS
Examiner finds that Appellants' claimed
method includes the steps of selecting target amino acid
residues corresponding to residues of interest and of identifying
drug candidates predicted to bind thereto. Selecting an amino
acid residue is a decision-making step, and a de nova drug
design and virtual screening are steps of processing information
through mathematical concepts such as algorithms and
calculations.
(Final Act. 3.) Thus, Examiner finds that Appellants' claim is directed to a
mental process and mathematical concept (see id. at 3--4). Specifically,
Examiner finds that "selecting an amino acid residue is a decision-making
step, and [the] de novo drug design and virtual screening are steps of
processing information through mathematical concepts such as algorithms
and calculations" (id. at 4; see Ans. 4 ("step b) [of Appellants' claim] is
viewed as merely a step of processing information by using mathematical
algorithms")). In addition, Examiner finds that Appellants' claim contains
"no additional elements that would amount to significantly more than the
above-identified judicial exception" (id. at 3; see id. at 4 ("There are no
elements in the claims which are in addition to the elements drawn to
judicial exception and which are not drawn to generic technology and are
well understood, routine, or conventional")). We are not persuaded.
Examiner has not established that Appellants' claim is directed to
certain methods of organizing human activity that are recognized in the
Revised Guidance. Examiner also failed to establish an evidentiary basis on
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this record to support a finding that Appellants' claim is a mental process
capable of being performed in the human mind. In this regard, we find no
evidence of record to support a finding that a person of ordinary skill in this
art would have considered a method of identifying drug candidates that
inhibit motility of PilT-expressing Xylella fastidiosa to represent a mental
process capable of being performed in the human mind.
In addition, even if we interpret Appellants' claim 1 to recite a
mathematical concept and, therefore, an abstract idea, we find that
Appellants' claimed invention integrates any such recited mathematical
concept into a practical application, specifically, the identification of drug
candidates that inhibit motility of PilT-expressing Xylella fastidiosa (see Br.
18). Thus, Appellants' claim 1 is a chemical process and is, therefore, a
patent eligible process. See Diehr, 450 U.S. at 192.
CONCLUSION
The preponderance of evidence of record fails to support Examiner's
finding that Appellants' claimed invention is directed to patent ineligible
subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is reversed.
REVERSED
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