Khallar Alikhanov et al.

Patent Trials and Appeals BoardMar 23, 2021

2020001916 (P.T.A.B. Mar. 23, 2021)

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. 12/798,027 03/29/2010 Khallar Abdumuslimovich Alikhanov 22754-042 4604 7590 03/23/2021 PATEL & ALUMIT, P.C. 16830 Ventura Boulevard, Suite 360 Encino, CA 91364 EXAMINER BUNNER, BRIDGET E ART UNIT PAPER NUMBER 1647 MAIL DATE DELIVERY MODE 03/23/2021 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 KHALLAR ABDUMUSLIMOVICH ALIKHANOV, LEONID YAZONOVICH KACHARAVA, BAGOADI ASUMUSUMOVICH ALIKHANOV, and PETER GEORGIEVICH PROKOPENKO Appeal 2020-001916 Application 12/798,027 Technology Center 1600 Before JEFFEREY N. FREDMAN, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the decision entered December 18, 2020 (hereinafter “Decision”), which affirmed the Examiner’s rejection of claims 1–4 and 10–12 under 35 U.S.C. § 101 as being directed to a judicial exception (i.e., a product of nature or a natural phenomenon) to patent- eligible subject matter, without significantly more. We DENY the requested relief. Appeal 2020-001916 Application 12/798,027 2 DISCUSSION Appellant contends that the Board’s reliance on Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), is misplaced because the instant claims are “directed to a combination of components and there is a counterpart combination found in nature, namely venal and retroplacental blood samples taken after vaginal deliveries,” whereas “in Funk Brothers the claims at issue were directed to a combination of bacteria, but there was no combination of the claimed bacteria found in nature.” Reh’g Req. 1–2. Appellant contends that in this case, the “closest natural counterpart” for purposes of performing the markedly different characteristics analysis is a venal and retroplacental blood sample taken after vaginal deliveries, rather than the individual components in the claimed combination. Id. We are not persuaded because, for the reasons discussed in the Decision, we do not agree that venous or retroplacental blood samples taken after vaginal deliveries, which comprises a large number of other biological molecules, would be a closer naturally occurring counterpart to the claimed “[a]gent . . . that consists essentially of trophoblastic ß-1-glycoprotein (TBG), and immunoglobulin (Ig),” than the combination of naturally occurring TBG and immunoglobulin molecules. Dec. 8–12 (emphasis added). Appellant acknowledges that “the independent claims in the present case recite the ‘consisting essentially of’ transitional [phrase],” but contends that “there is no reason that this would prevent the [venous or retroplacental blood] samples from being considered to be the closest natural counterpart,” because the claims “encompass compositions comprising a combination of components that includes other biological molecules (so long as the other Appeal 2020-001916 Application 12/798,027 3 biological molecules do not materially affect the basic and novel characteristics of the claimed invention.” Reh’g Req. 1–2. This contention is not persuasive. Appellant offers no affirmative rationale why the blood samples would be closer to the claimed combination “consist[ing] essentially of” TBG and Ig than the combination of these individual, naturally occurring components. Indeed, Appellant’s argument that the claimed combination does not encompass a product of nature hinges on the contention that the other biological molecules in the blood samples “materially affect” the alleged “basic and novel characteristics of the claimed invention” such that the claimed combination is “markedly different” from such blood samples. Appellant similarly offers no persuasive reasoning for its sweeping generalization that “where . . . a claim is directed to a combination of components and a nature-based product comprising the combination of components exists, the nature-based product comprising the combination is always a closer counterpart than nature-based products comprising the components individually.” Reh’g Req. 3 (emphasis added). To the contrary, as we explained in the Decision, the MPEP makes clear that, in determining the appropriate natural counterpart for purposes of § 101 analysis, care should be taken “not to confuse the counterpart with other material that may occur naturally with, or adjacent to, the counterpart.” Dec. 10.1 1 In the Request for Rehearing, Appellant also cites to Example 9 of Appendix 2 of the July 2015 Update: Subject Matter Eligibility (i.e., Example 1 of the Examples: Nature-Based Products issued on December 16, 2014) to argue that the closest natural counterpart to its claimed agent is venous or retroplacental blood samples taken after vaginal deliveries. Reh’g Req. 2–3. As an initial matter, to the extent Appellant did not cite to Appeal 2020-001916 Application 12/798,027 4 Neither has Appellant persuasively addressed the Supreme Court’s holding in Ass’n Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), that simply “separating [an important and useful] gene from its surrounding genetic material is not an act of invention.” Id. at 591. As we discussed in our Decision, this holding cuts against Appellant’s implicit argument that the claimed combination may be patent-eligible merely because TBG and Ig have been isolated from “other material that may occur naturally with, or adjacent to” these molecules in, e.g., the venal and retroplacental blood samples taken after vaginal deliveries. Dec. 10. Appellant contends that Myriad is “inapposite insofar as it does not relate to a claim directed to a combination of components or to a markedly different characteristics analysis involving selection of an appropriate nature-based counterpart involving a combination of components.” Reh’g Req. 3. We are not persuaded. The central question in Myriad, as it is in this case, is whether a claimed invention is a product of nature and thus Example 9 in its Appeal Brief, Appellant has waived this argument. 37 C.F.R. § 41.52(a)(1) (stating that, with limited exceptions not applicable here, “[a]rguments not raised, and [e]vidence not previously relied upon . . . are not permitted in the request for rehearing.”). In any event, for the same reasons discussed above and in our Decision with regard to the applicability of Funk Brothers to the instant case, we are not persuaded by Appellant’s citation to Example 9. That is, example 9 merely explains, in the context of a claim to gunpowder comprising a mixture of three naturally occurring substances, that since “there is no naturally occurring counterpart to the claimed combination (the components do not occur together in nature), . . . the combination is compared to the individual components as they occur in nature.” Examples: Nature-Based Products 1. However, as we discussed above and in our Decision, Appellant likewise has pointed us to no naturally occurring counterpart to the claimed combination of an agent “consisting essentially of” TBG and Ig. Appeal 2020-001916 Application 12/798,027 5 patent-ineligible. Myriad, 569 U.S. at 580. Moreover, as we explained above and in our Decision, Appellant’s argument that its claimed agent should be compared to the venal and retroplacental blood samples taken after vaginal deliveries is undercut by Myriad’s holding that “separating a gene from its surrounding genetic material is not an act of invention,” because Appellant’s claimed invention may similarly be arrived at by simply isolating the two claimed components (TBG and Ig) from their surrounding biological environment. Dec. 10. Appellant contends without explanation that “the Board’s conclusion from Myriad—that isolating two naturally occurring molecules from their surrounding biological material and putting them together is not ‘an act of invention’—is . . . not supported by . . . Myriad” and “improperly dispenses with, and supersedes, the required markedly different characteristics entirely.” Reh’g Req. 3. We are not persuaded. Appellant does not dispute Myriad holds that simply “separating [an important and useful] gene from its surrounding genetic material is not an act of invention.” Myriad, 569 U.S. at 591. This holding directly supports our conclusion that, by itself, isolating two naturally occurring molecules from their biological environment and combining them—i.e., without the combination resulting in markedly different characteristics from the individual molecules—does not result in a patent-eligible invention. Appellant “has not shown that the claimed mixtures are a ‘transformation’ of the natural products, or that the claimed mixtures have properties not possessed by these products in nature.” In re Bhagat, 726 Fed. Appx. 772, 779 (Fed. Cir. 2018). Finally, Appellant disagreed with the Board’s finding that, assuming the counter-suppressive activity of the TBG/Ig combination alleged by Appeal 2020-001916 Application 12/798,027 6 Appellant would establish the claimed agent as “markedly different” from the proteins individually, “Appellant has not shown that the combination of TBG and immunoglobulin as claimed does not encompass products of nature (e.g., in the cases where the claimed agent/composition does not exhibit counter-suppressor activity).” Dec. 18; Reh’g Req. 3–4. Instead, Appellant contends that “if the claimed composition provides counter- suppressor activity in any portion of the population and that activity is not provided by the components of the composition, either in combination or individually, this shows that the composition does not encompass products of nature.” Reh’g Req. 4. We are not persuaded. Appellant provides no authority supporting this contention.2 In this regard, as well as with regard to Appellant’s other arguments above, we note that a request for rehearing must do more than dispute issues that have already been decided. Instead, it “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). CONCLUSION We have carefully reviewed the original decision in light of Appellant’s request, but we find no point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, 2 It is unclear how the claimed composition can provide counter-suppressor activity that “is not provided by components of the composition, either in combination or individually,” since the claimed composition “consists essentially of . . . TBG . . . and . . . Ig.” Reh’g Req. 4 (emphasis added). Appeal 2020-001916 Application 12/798,027 7 Appellant’s request is denied with respect to making any modifications to the Decision. Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 1–4, 10–12 101 Eligibility 1–4, 10–12 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1–4, 10–12 101 Eligibility 1–4, 10–12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED