Ex Parte Prior et al

Patent Trial and Appeal Board

Jul 10, 2015

10900352 (P.T.A.B. Jul. 10, 2015)

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.
10/900,352 07/28/2004 Steven David Prior GMU-04-041U 7193
28598 7590 07/13/2015
GEORGE MASON UNIVERSITY
OFFICE OF TECHNOLOGY TRANSFER, MSN 5G5
4400 UNIVERSITY DRIVE
FAIRFAX, VA 22030
EXAMINER
CLOW, LORI A
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
07/13/2015 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 STEVEN DAVID PRIOR, KENNETH A. DE JONG,
and JAYSHREE SARMA1
__________

Appeal 2012-011462
Application 10/900,352
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and ULRIKE W.
JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of modeling host-pathogen interactions, which have been rejected for lack of
adequate written description and for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Real Parties in Interest as George Mason
Intellectual Properties and Potomac Institute for Policy and Studies. (Appeal
Br. 3.)
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STATEMENT OF THE CASE
The Specification discloses “methods and systems for developing
models of the relationships that occur between a host and a pathogen.”
(Spec. ¶ 19.) “[T]hese methods and systems enable practitioners to explore
‘what if’ scenarios and develop predictive data that may be used in
experimental design and the testing of hypotheses of disease and other
biological states.” (Id.)
Claims 1–6 and 8–19 are on appeal. Claim 1 is illustrative and is
directed to a “predictive data development method that models host-
pathogen interactions based on simulated actions, interactions and at least
one feedback loop executed by a suitably programmed computer,” where the
method comprises, among other steps, “simulating a temporal course of said
modeling using said plurality of biological events, said at least one host
agent and said pathogen agent, said at least one action, and said at least one
interaction,” “wherein said simulating is accomplished using an agent-based
simulation system comprising: 1) bidirectional flow at least of at least one
of said at least one pathogen agent between at least two of said plurality of
grids.” (Appeal Br. 26–27, claim 1, steps (e) and (g).) The full text of claim
1 is reproduced in the Claims Appendix of the Appeal Brief.
Claims 14 and 15, the only other independent claims, include the
same relevant limitations.
The claims stand rejected as follows:
Claims 1–6 and 8–19 under 35 U.S.C. § 112, first paragraph, for lack
of adequate written description (Ans. 5);
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Claims 1–4, 9, 10, 12, 14–16, 18, and 19 under 35 U.S.C. § 103(a)
based on An,2 Bagni,3 Minar,4 Langton,5 and Epstein6 (Ans. 7);
Claims 5, 6, and 8 under 35 U.S.C. § 103(a) based on An, Bagni,
Minar, Langton, Epstein, and Dixon7 (Ans. 12);
Claims 13 and 17 under 35 U.S.C. § 103(a) based on An, Bagni,
Minar, Langton, Epstein, and González8 (Ans. 13); and
Claims 1 and 11 under 35 U.S.C. § 103(a) based on An, Bagni, Minar,
Langton, Epstein, and Yahja9 (Ans. 14).
I.
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 112, first paragraph, on the basis that the Specification does not provide

2 Gary An, Agent-Based Computer Simulation and SIRS: Building a Bridge
Between Basic Science and Clinical Trials, 16 SHOCK 266–273 (2001).
3 Bagni et al., A comparison of simulation models applied to epidemics, 5 J.
OF ARTIFICIAL SOCIETIES AND SOCIAL SIMULATION 1–25 (2002).
4 Minar et al. The Swarm Simulation System: A Toolkit for Building Multi-
Agent Simulations, WORKING PAPER 96-06-042, SANTA FE INSTITUTE 1–11
(1996).
5 Langton et al., The Swarm Simulation System: A Tool for Studying
Complex Systems, SANTA FE INSTITUTE 1–9 (1995)
6 Epstein et al., Toward a Containment Strategy for Smallpox Bioterror: An
Individual-Based Computational Approach, CENTER ON SOCIAL AND
ECONOMIC DYNAMICS, Working Paper No. 31, 1–24 (2002).
7 Dixon et al. Early Bacillus anthracis-macrophage interactions:
intracellular survival and escape, 2 CELLULAR MICROBIOLOGY 453–463
(2000).
8 González et al. Cellulat: an agent-based intracellular signalling model, 68
BIOSYSTEMS 171–185 (2003).
9 Yahja, BioWar Simulation and Causality, CASOS CONFERENCE DAY 55–
68 (2002).
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adequate descriptive support for the limitation of “bidirectional flow of at
least one of said at least one pathogen agent between at least two of said
plurality of grids” (Ans. 5). The Examiner finds that the Specification’s
Figure 7 “shows unidirectional linkages between various panels of a model.
The disclosure does not show or suggest bidirectional flow.” (Id.) The
Examiner also finds that a “search of the []specification for the term[] flow
only results in 3 references that are directed to flow charts. The term
‘bidirectional’ does not occur in the specification.” (Id. at 5–6.) The
Examiner concludes that “the amendment to include limitations to a
‘bidirectional flow’ introduces new matter.” (Id. at 6.)
Appellants argue that
[t]he application conveys with reasonable clarity in some
aspects of embodiments at paragraph [0051] and FIG. 7 that
infection may move into the lymphatic system, the reticulo-
endothelial system (RES) and into the circulatory system. The
application further conveys with reasonably clarity in other
aspects of embodiments at paragraph [0051] and FIG. 7 that
host fluids (e.g., lymph) can flow from the circulatory system
and/or the RES to the lymph system.
(Appeal Br. 17.)
The Examiner, however, maintains that “if one refers to the Drawings
at Figure 7, the flow chart clearly shows only unidirectional flow from one
system to another, as in from the circulatory system to the lungs or from the
lymph system to the lungs, etc.” (Ans. 15.) The Examiner also states that
“[i]n Figure 7, two panels can flow into one panel, as in the RES and
circulatory system into the lymph OR three panels can flow into one, as in
the circulatory system[,] RES, and lymph into the lungs. Again, this does
not indicate bidirectional flow.” (Id. at 16.)
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We will reverse this rejection. “In order to satisfy the written
description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir.
2000). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
The Specification’s Figure 7 is reproduced below:

Figure 7 shows “a schematic diagram of an Anthrax Model.” (Spec. 4
¶ 14.)
The Specification states that Figure 7
illustrates which host components (e.g., tissues, organs,
systems) can become affected after inhalational exposure to
anthrax spores. The lungs are the primary site of infection. As
the disease spreads, infection moves into the lymphatic system,
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into the organs that comprise the reticulo-endothelial system
(RES) (e.g., liver, spleen, kidneys) and into the circulatory
system.
(Id. at 21 ¶ 51.) The Specification’s paragraph 51 thus describes flow of
“infection,” meaning the anthrax pathogenic agent, from the lungs to the
lymphatic system, then to the RES, then to the circulatory system.
The Examiner states that the Specification’s Figure 7 shows
movement “from the circulatory system to the lungs or from the lymph
system to the lungs” (Ans. 15) and shows flow from “the RES and
circulatory system into the lymph OR . . . the circulatory system[,] RES, and
lymph into the lungs.” (Id. at 16.) The Examiner’s analysis shows that she
interprets the arrows in Figure 7 to indicate flow of, e.g., lymph from the
circulatory system into the lymphatic system.
Thus, the Specification describes Figure 7 as showing flow of
pathogenic agent in one direction, and the Examiner’s analysis demonstrates
that those of skill in the art (such as the Examiner) understand the Figure to
also show flow in the other direction. The evidence of record therefore
shows that a skilled artisan would recognize—from the Specification’s
Figure 7 and its accompanying disclosure—a description of flow in two
directions, or bidirectional flow, of a pathogenic agent. The rejection of
claims 1–6 and 8–19 under 35 U.S.C. § 112, first paragraph, for lack of
adequate description is reversed.
II.
The Examiner has rejected all of the claims on appeal as obvious
based on An, Bagni, Minar, Langton, and Epstein, by themselves or
combined with another reference (Ans. 7–15). The same issue is dispositive
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for all of the § 103 rejections: whether the cited references teach or suggest
modeling host-pathogen interactions by simulating a temporal course of the
modeling, where the simulating is accomplished using an agent-based
simulation system comprising bidirectional flow of a pathogen agent
between two grids, as required by each of the independent claims on appeal.
The Examiner finds that this limitation is disclosed by Epstein:
“Epstein et al. shows an agent-based model in which agents move
bidirectionally between sets of grids of agents (figure 1). Epstein et al. show
an individual (agent) commutes from ‘home’ panel to the ‘work’, ‘school’,
or ‘hospital’ grids (p. 4).” (Ans. 9.)
Appellants argue that the cited references do not disclose
“bidirectional flow of at least one pathogen agent. This is apparent, since
Epstein discloses that the agents flowing in landscapes (i.e., social units) are
people (i.e., individuals) and not pathogen agents.” (Appeal Br. 21.)
We agree with Appellants that the Examiner has not shown that the
disputed limitation is disclosed by Epstein. “[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). “[C]laims are to be interpreted in light of the specification and
with a view to ascertaining the invention.” Sjolund v. Musland, 847 F.2d
1573, 1581 (Fed. Cir. 1988).
Appellants’ Specification states that a
host can be any organism, both unicellular and multicellular,
including animals, plants, protista or bacteria. Animals include,
e.g., mammals, humans, livestock, cows, sheep, pigs, monkeys,
dogs, cats, rats, arthropods, birds, reptiles, fish, insects, etc. A
pathogenic agent can include, but is not limited to: bacteria;
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viruses; rickettsia; bacteriophages; subviral pathogens (such as
prions and viroids); protista; monera; plants; algae; and fungi.
(Spec. 8–9 ¶ 26.) The Specification thus distinguishes between a host (e.g.,
a human being) and a pathogenic agent (e.g., smallpox virus).
Epstein discloses “an individual-based computational modeling
environment for the study of epidemic dynamics in general. . . . Here, we
develop an individual-based model of smallpox at the county level.”
(Epstein 1.) Epstein states that “the agent-based approach explicitly tracks
the progression of the disease through each individual . . . and tracks the
contacts of each individual with others in the relevant social networks and
geographical areas (e.g., family members, co-workers, schoolmates).” (Id. at
2.)
Epstein states that, in the smallpox model described, “[e]ach modeling
day is equally divided between a ‘Daytime,’ when adults work and children
attend school, and a ‘Nighttime,’ when family members (exclusively)
interact at home. . . . The essential event that occurs when an individual is
active is that she is contacted by other individuals.” (Id. at 3.) “As runs
progress, individuals return home at night, and go to work and school during
day, a process that iterates indefinitely.” (Id. at 4.)
Thus, the model disclosed by Epstein includes bidirectional flow (e.g.,
home to work and back) of model human beings, who may have contact
with other human beings. The instant Specification, however, expressly
distinguishes between hosts such as the human beings modeled by Epstein,
and the pathogenic agents that are recited in the claims on appeal.
The Examiner reasons that “tracking the infected individuals in
[Epstein’s] agent-based system is inherently tracking the pathogen, as well.”
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(Ans. 18.) That may be true, but the claims on appeal require simulating
using a system that comprises bidirectional flow of a pathogen agent, not an
infected host, and the Specification makes clear that a host is not a pathogen
agent.
In summary, the rejections under § 103 are based on an unreasonably
broad interpretation of the claims, and are therefore reversed.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

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