Ex Parte Ackley et al

Patent Trial and Appeal BoardApr 8, 2016

13374184 (P.T.A.B. Apr. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/374, 184 12/15/2011 23117 7590 04/12/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR E. Michael Ackley JR. 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. PTB-4389-58 3009 EXAMINER WALSH, DANIEL I ART UNIT PAPER NUMBER 2887 NOTIFICATION DATE DELIVERY MODE 04/12/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte E. MICHAEL ACKLEY JR. and DANIEL J. PALMER Appeal2014-006388 Application 13/374,184 Technology Center 2800 Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and JON M. JURGOV AN, Administrative Patent Judges. JURGOV AN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek review under 35 U.S.C. Â§ 134(a) from a rejection of claims 13, 14, 17-19, and 27, which constitute the only claims on appeal. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm.2 1 Appellants identify Ackley Machine Corporation as the real party in interest. (App. Br. 3.) 2 Our decision refers to the Specification filed Dec. 15, 2011 ("Spec."); the Final Office Action mailed June 4, 2013 ("Final Act."); the Appeal Brief filed Jan. 13, 2014 ("App. Br."); the Examiner's Answer mailed Mar. 6, 2014 ("Ans."); and the Reply Brief filed May 6, 2014 ("Reply Br."). Appeal2014-006388 Application 13/374,184 The claims are directed to a pellet-shaped article, such as a pharmaceutical tablet or dosage, with laser-etched bar code extending into an applied clear layer. (Spec. Title.) Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A pellet-shaped article including at least one exposed surface including at least one bar code, wherein the at least one exposed surface includes a clear layer applied thereto, and the at least one bar code comprises at least one laser-etched bar code extending into the clear layer, the laser-etched bar code being invisible to the naked eye. REJECTIONS Claims 13, 14, 17-19, and 27 stand rejected under 35 U.S.C. Â§ 103(a) based on Kettinger (US 2006/0226234 Al; Oct. 12, 2006). (Final Act. 3--4.) Claims 18 and 19 stand rejected under 35 U.S.C. Â§ 103(a) based on Kettinger and Palti (US 5,700,998; Dec. 23, 1997). (Final Act. 4.) ARGUMENTS 1. Appellants argue Kettinger does not suggest its etched bar codes may be "invisible to the naked eye." Rather, according to Appellants, they are overt. (App. Br. 6 citing Kettinger i1i14, 7, 14, 21.) 2. Appellants argue "chemical bar codes" are not "bar codes" as the term would be understood by a person of ordinary skill. Rather, according to Appellants, they are covert markers by virtue of their chemical composition. (App. Br. 7 citing Kettinger i1i145, 47.) 3. Appellants argue it is not obvious to combine overt bar codes with covert marks such as a chemical composition because Kettinger 2 Appeal2014-006388 Application 13/374,184 describes them as distinct and complementary. (ii .. pp. Br. 7 citing Kettinger i-f 45.) 4. Appellants argue laser etching into a clear layer does not necessarily result in a bar code invisible to the naked eye, merely because it is devoid of ink. Invisibility is not achieved by size reduction, and the Examiner has not demonstrated the person of ordinary skill would understand invisibility is inherent in etching a clear coating. (App. Br. 8-9 citing MPEP Â§ 2112 (IV).) 5. Appellants argue laser etching imparts distinct structural features to a tablet or pellet-shaped article by producing sharper, finer, and more detailed mark than other known processes, especially in the context of edible articles such as pharmaceutical tablets, capsules, etc. Appellants further argue other processes may not necessarily be capable of producing a "bar code extending into the clear layer" because laser etching may allow for better control of etching depth and, thus, imparts "distinctive structural characteristics" entitled to patentable weight. (App. Br. 9-10 citing MPEP Â§ 2113.) ANALYSIS The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and ( 4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Section 103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the 3 Appeal2014-006388 Application 13/374,184 subject matter as a \'l1hole \'l/ould have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Appellants present no evidence or argument concerning the level of skill in the art under factor (3), or secondary considerations under factor (4), of the Graham analysis. Accordingly, we assume the Specification and cited references are representative of the level of ordinary skill in the art under factor (3)3, and proceed in the analysis without evidence of secondary considerations under factor ( 4). Turning to factors (1) and (2) of the Graham analysis, we now consider the scope and content of the prior art, and any differences between the claimed subject matter and the prior art, considering Appellants arguments (1) to ( 5) and the Examiner's findings and conclusions of obviousness. In argument (1 ), Appellants contend Kettinger does not suggest its etched bar codes are "invisible to the naked eye." We disagree. Kettinger teaches use of OP ADRYÂ® film coating systems by Colorcon, Ltd., which the Examiner finds are well known to include clear coatings for pharmaceutical or nutritional tablets.4 5 (Final Act. 3; Ans. 3 citing ,-r 22). 3 See, e.g., MPEP Â§ 2141.03 explaining how the level of ordinary skill in the art is ascertained and used in the obviousness analysis. 4 Although Appellants dispute Kettinger discloses the claimed clear layer, Appellants do not particularly address the Examiner's finding that OPADRYÂ® film coating systems by Colorcon, Ltd. are known in the art to include transparent/clear coatings. See Final Act. 3. Accordingly, we must consider this finding unrebutted. See, e.g., MPEP Â§ 2144.03(C). 5 Furthermore, Kettinger (i-fi-f 21, 3 5) teaches use of "film coatings" and/ or "color film coatings," suggesting the possibility the "film coatings" may be other than colored, i.e., colorless or clear. 4 Appeal2014-006388 Application 13/374,184 Kettinger also teaches laser etching of a tablet surface and/or film coated surface (i-fi-f 24, 33) using readily available technology and techniques known to those of ordinary skill (i-f 24). (Final Act. 3; Ans. 3) Kettinger further teaches etching of a bar code onto the surface of a tablet and/or film coating (i-fi-f 7, 28, 29, 41, 42; claims 1-3). Considering these disclosures and the claimed invention as a whole, Kettinger at least suggests the structure of a dosage form with a laser-etched bar code in the clear film coating of a dosage form, as the Examiner finds, which is equivalent to what is claimed. (Ans. 3; Final Act. 3 citing i1i122, 24.) It stands to reason, then, Kettinger's laser-etched bar code would be "invisible to the naked eye" absent any language in claims 13 and 27 that suggests something else that achieves invisibility and is not disclosed by Kettinger. 6 Accordingly, we are not persuaded of Examiner error. In argument (2), Appellants argue Kettinger's "chemical bar codes" are not the claimed "bar codes" as the term would be understood by a person of ordinary skill. We agree. However, the Examiner did not rely on Kettinger' s "chemical bar codes" in the rejection. Accordingly, we find this argument unpersuasive of Examiner error. 7 In argument (3), Appellants contend it is not obvious to combine overt bar codes with covert markers such as a chemical composition because Kettinger describes them as distinct and complementary. The Examiner does not rely upon Kettinger to disclose combining overt and covert 6 The Specification (i-fi-f 3 8--40) states the bar code can be made invisible to the naked eye by etching a portion of a clear coating, or by making layers of a pellet-shaped article the same color. 7 Because the "chemical bar codes" are used with covert markings for tablets or oral solid dosage forms in Kettinger (i-f 45), there is in Kettinger at least a suggestion that bar codes could be covert, i.e., "invisible to the naked eye." 5 Appeal2014-006388 Application 13/374,184 markers, but instead upon the findings previously noted. Furthermore, Appellants' argument is not commensurate in scope with claims 13 and 27 as written, which provide no language relating to overt markers. Thus, we are not persuaded by this argument. In argument (4), Appellants contend laser etching into a clear layer does not necessarily result in a bar code 'invisible to the naked eye" as claimed. Appellants offer no evidence to support this proposition. Lawyer's arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). 8 Furthermore, the Examiner has established Kettinger discloses the equivalent of the claimed pellet-shaped article with a laser-etched bar code formed in a clear layer, based on the findings previously noted. It is reasonable to conclude that Kettinger's equivalent structure produces the same result as claims 13 and 27, i.e., a laser-etched bar code "invisible to the naked eye." Accordingly, we are not persuaded there is a difference between the claimed invention and prior art that would indicate the Examiner errs in the rejections. In argument ( 5), Appellants contend laser etching imparts distinct structural features to a tablet or pellet-shaped article by producing sharper, finer, and more detailed mark than other known processes. Because Kettinger also uses laser etching for bar codes (i-fi-f 22, 24 ), this argument 8 If more is required to produce a laser-etched bar code that is "invisible to the naked eye," then Appellants and the Examiner should evaluate whether the Specification provides adequate written description and enablement to support the claims as required under 35 U.S.C. Â§ 112, first paragraph. 6 Appeal2014-006388 Application 13/374,184 does not establish any distinction bet\'l/een the claimed invention and Kettinger that could would warrant reversal of the rejection. Appellants present argument in their Reply Brief that is redundant with their Appeal Brief. Specifically, Appellants again argue Kettinger does not disclose a clear coating (Reply Br. 1-2), a contention with which we disagree for reasons previously explained. Appellants present several new arguments for the first time in their Reply Brief. (Reply Br. 1--4.) Absent a showing of good cause by the Appellants, the Board does not consider new arguments presented in a Reply Brief. 37 C.F.R. Â§ 41.41(b)(2). Were we to automatically consider such newly raised arguments, "[r]ather than reviewing a record for error, the Board would be considering, in the first instance, findings of fact proposed by the Appellants, but not weighed by the Examiner [in the Examiner's Answer] against the other evidence of record." Ex parte Borden, 93 USPQ2d 1473, 1475 ( BPAI 2010) (informative). Thus, we need not consider these arguments. Nevertheless, even considering these arguments in the interests of administrative and judicial economy, we do not find them persuasive. In the Reply Brief (2-3), Appellants argue Kettinger (at i-f 22) contemplates use of only ink-based markings. We disagree. This Kettinger disclosure, considered as a whole, contemplates use of ink-based and etched bar codes (i-f 21 ), and states a film coated surface can be laser etched (i-f 24 ). Thus, Kettinger teaches use of coatings with laser-etched bar code markings. (See also Kettinger, claims 1-3 and 7; i-fi-12, 22, 24, 45.) In the Reply Brief (3--4), Appellants argue Kettinger teaches "overt" and "covert" markers and that the only disclosed covert markers in Kettinger 7 Appeal2014-006388 Application 13/374,184 are "chemical bar codes" that are chemical compositions. (Reply Br. 3--4.) Appellants' argument does not negate the Examiner's findings that the equivalent of the claimed article (and its method of manufacture) is disclosed in Kettinger, and one would assume such an equivalent article and method is capable of producing the same result, specifically, a laser-etched bar code that is "invisible to the naked eye." (Final Act. 3; Ans. 3.) CONCLUSION After considering Appellants' arguments, we agree with the Examiner that under the Graham analysis, Kettinger renders obvious the subject matter of Appellants' claims 13 and 27 underÂ§ 103(a). Accordingly, we are not persuaded the Examiner erred in the findings or conclusion of obviousness. No separate arguments are presented for the dependent claims and, therefore, we sustain the rejection for the reasons previously stated. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983); 37 C.F.R. Â§ 41.37(c)(l)(iv). DECISION For the above reasons, the Examiner's Decision to reject claims 13, 14, 17-19, and 27, is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8