Inre: Bentwich , 566 F. App'x 941 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE ITZHAK BENTWICH
______________________
2013-1460
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
10/536,560.
______________________
Decided: June 6, 2014
______________________
TEDDY C. SCOTT, JR., Polsinelli PC, of Chicago, Illi-
nois, argued for appellant. With him on the brief was
MARK T. DEMING.
FARHEENA Y. RASHEED, Associate Solicitor, Office of
the Solicitor, United States Patent and Trademark Office,
of Alexandria, Virginia, argued for appellee. With her on
the brief were NATHAN K. KELLEY, Deputy General Coun-
sel for Intellectual Property Law and Solicitor, and
THOMAS W. KRAUSE, Associate Solicitor.
______________________
Before LOURIE, CLEVENGER, and REYNA, Circuit
Judges.
2 IN RE BENTWICH
LOURIE, Circuit Judge.
Itzhak Bentwich (“Bentwich”) appeals from the deci-
sion of the United States Patent and Trademark Office
(“PTO”) Patent Trial and Appeal Board (the “Board”)
rejecting claim 21 of U.S. Patent Application 10/536,560
(the “’560 application”) as anticipated by Wang et al., 45
Antimicrob. Agents Chemother. 1043 (2001) (“Wang”) as
evidenced by Klump et al., 64 J. Virology 1573 (1990)
(“Klump”). See Ex Parte Bentwich, No. 2012-001111, 2012
WL 6562733, at *5 (P.T.A.B. Dec. 11, 2012) (“Board
Decision”), aff’d on reh’g, 2013 WL 958316, at *1 (P.T.A.B.
Mar. 11, 2013) (“Rehearing Decision”). Because Bentwich
conceded on appeal that claim 21 contains patent ineligi-
ble subject matter under 35 U.S.C. § 101, and other
pending claims were not acted upon, we affirm the rejec-
tion of claim 21 and remand for further proceedings with
respect to the remaining application claims.
BACKGROUND
The ’560 application, entitled “Bioinformatically De-
tectable Group of Novel Viral Regulatory Genes and Uses
Thereof,” claims isolated viral nucleic acids that can
regulate viral gene expression as well as probes and
vectors comprising those viral nucleic acids. Claim 21,
the only claim at issue in this appeal, reads as follows:
21. An isolated first viral nucleic acid or
complement thereof, wherein
(a) the first viral nucleic acid consists of
15–24 nucleotides;
(b) a second viral nucleic acid consisting of 50
to 131 nucleotides comprises the first viral
nucleic acid;
(c) the second viral nucleic acid is capable of
forming a hairpin, wherein
IN RE: BENTWICH 3
(i) the hairpin comprises two stem seg-
ments and an intervening loop segment;
(ii) the two stem segments each consists
of 14–71 nucleotides;
(iii) the loop segment consists of 3 to 19
nucleotides;
(iv) the first and second stem segments
are at least 30.8% complementary; and
(v) one of the stem segments of the hair-
pin comprises the first viral nucleic acid;
(d) the first viral nucleic acid is capable of
binding to a binding site of a [sic] mRNA;
and
(e) the first viral nucleic acid is capable of in-
hibiting expression of a protein encoded by
a [sic] mRNA, wherein the mRNA compris-
es the binding site;
wherein a viral genome comprises the
sequence of the first and second viral nucleic
acids.
Appeal Brief, No. 10/536,560, at 25 (May 21, 2011). In the
’560 application, claims 22–34, 50, 52, and 53 depend from
claim 21 and are presently pending. Id. at 25–28. Claims
35–48, 51, 54, and 55 have been withdrawn and claims
1–20 and 49 have been canceled by Bentwich. Id. at 1.
The PTO examiner rejected claims 21–34, 50, 52, and
53 on the grounds of indefiniteness, anticipation, and
obviousness and made those rejections final. Bentwich
appealed to the Board, which reversed all of the examin-
er’s rejections. Board Decision at *5. The Board, howev-
er, entered a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), rejecting independent claim 21 as
anticipated by Wang as evidenced by Klump under 35
4 IN RE BENTWICH
U.S.C. § 102(b) (2006). Id. at *4–5. The Board “le[ft] it to
the Examiner to determine the applicability of [Wang] to
the remaining claims” and therefore did not address the
patentability of dependent claims 22–34, 50, 52, and 53 in
view of Wang and Klump. Id. at *5. Bentwich timely
requested rehearing and argued against the rejection of
claim 21. The Board granted Bentwich’s request, but
maintained the anticipation rejection after considering his
arguments, thus making the rejection of claim 21 final.
Rehearing Decision at *1; see also 37 C.F.R. § 41.52.
Bentwich appealed to this court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
In the briefing, both parties focus their arguments on
the anticipation rejection of claim 21. The Director also
notes that the Board issued its decisions before the Su-
preme Court decided Association for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), concern-
ing the patent eligibility of certain genetic materials
under § 101. The Director argues that, although the
Board did not address the issue of patent eligibility of
Bentwich’s application claims, claim 21 covers patent
ineligible subject matter under Myriad. Bentwich re-
sponds that § 101 and Myriad did not form the basis of
any rejection by the examiner or the Board. Bentwich
also generally maintains that some of the pending claims
are directed to patent eligible subject matter.
During oral argument, Bentwich conceded that both
the isolated viral nucleic acid and complement thereof as
claimed in claim 21 are naturally occurring and patent
ineligible under § 101 and Myriad. Oral Argument at
2:00–59, 4:14–23, 8:46–51, In re Bentwich, No. 2013-1460,
available at http://www.cafc.uscourts.gov/oral-argument-
recordings/all/bentwich.html. Bentwich, however, argues
that the probes and vectors that are claimed in claims 33
IN RE: BENTWICH 5
and 34 and the withdrawn claims 47 and 48 are eligible
for patent protection. Id. at 3:18–38.
Because Bentwich has conceded that claim 21 covers
patent ineligible subject matter, we affirm the rejection of
that claim and need not address the merits of the antici-
pation rejection issued by the Board. If the claim is not
patent eligible, patentability over prior art does not
matter. See In re Comiskey, 554 F.3d 967, 969 (Fed. Cir.
2009) (concluding that the appealed claims recite patent
ineligible subject matter without addressing the merits of
the examiner’s obviousness rejection). Moreover, we
decline to consider the patent eligibility or patentability of
claims 33 and 34 and the withdrawn claims 47 and 48 of
the ’560 application, because those claims do not present-
ly stand rejected by either the examiner or the Board. In
re Margolis, 785 F.2d 1029, 1032 (Fed. Cir. 1986) (“In the
interest of an orderly and fair administrative process, it is
inappropriate for this court to consider rejections that had
not been considered by or relied upon by the Board.”)
(citing In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986);
In re Hounsfield, 699 F.2d 1320, 1324 (Fed. Cir. 1983)).
We therefore remand for any further proceedings at the
PTO with respect to the remaining, presently unrejected
claims of the ’560 application.
CONCLUSION
For the foregoing reasons, we affirm the rejection of
claim 21 and remand for further proceedings consistent
with this decision.
AFFIRMED