Ex Parte Gee

Patent Trial and Appeal BoardAug 1, 2014

10602404 (P.T.A.B. Aug. 1, 2014)

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. 10/602,404 06/23/2003 Gilbert C. Gee 5157-001 1676 24112 7590 08/01/2014 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 EXAMINER WARE, DEBORAH K ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 08/01/2014 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 GILBERT C. GEE ____________ Appeal 2012-001041 Application 10/602,404 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1) of the Board’s decision entered April 11, 2014 (Decision) affirming the indefiniteness rejection under 35 U.S.C. § 112, second paragraph of claims 38 and 41-43 and the obviousness rejection under 35 U.S.C. § 103(a) of claims 38, 39, and 41-43. We have reconsidered the Decision in light of Appellant’s arguments, but adhere to the original Decision affirming the Examiner’s rejections. BACKGROUND Appellant claims a method of treating a viral infection with a mixture of coffee grounds and honey. The Examiner found, and Appellant does not rebut, that the prior art individually taught that coffee grounds or honey could be used to treat sores Appeal 2012-001041 Application 10/602,404 2 caused by herpes virus (see Ans. 6-9; see also Req. Reh’g 5 and Br. 8). The Examiner reasoned that it would be obvious to combine two compounds that each possess equivalent properties, in that they both treat herpes simplex virus, in order to form another composition to treat herpes virus (see Ans. 14). The Decision affirmed the rejection. GROUNDS PRESENTED. Appellant’s request presents two issues: 1. The Board has confused the breadth of the claim with indefiniteness. (Req. Reh’g 2.) 2. The “obvious to try” rationale does not apply to the facts in this case. (Req. Reh’g 4.) DISCUSSION 1. With respect to the indefiniteness rejection under 35 U.S.C. § 112, second paragraph, Appellant’s prior argument in the Appeal Brief is that “in ‘treating’ the viral infection, those of ordinary skill in the art would appreciate that claim 38 inherently requires the resultant mixture to be topically applied.” (App. Br. 6.) Appellant now “concedes that the phrase ‘treating a virus’ includes forms of treatment other than topical application.” (Req. Reh’g 2.) Appellant contends, however, that “[t]he fact that some forms of treatment may not be effective doesn’t make the term ‘treat’ indefinite.” (Req. Reh’g 3.) “The question raised by the Board regarding the efficacy of other forms of treatment does not demonstrate indefiniteness.” (Id.) On reconsideration, we find the Examiner’s position and response to the previously raised arguments is still correct. The Examiner’s position is that the claim is vague because there is no positive recitation of Appeal 2012-001041 Application 10/602,404 3 administering in claim 38 step (b) (see Final Office Action 2-3; see also Ans. 6). According to the Examiner, “the ‘treating’ step is not clear and precise because it can read on orally administering.” (Ans. 12.) However, the Examiner finds that “[t]he complete disclosure of this application, including the Brief filed by Appellant, provide clear and convincing evidence that Appellant believes the claimed invention is a coffee grounds- honey mixture used in a method for topically applying to skin having a viral infection (e.g. sores), and particularly sores on the skin of which the sores are the viral infection.” (Ans. 10.) Here, the ambiguity is whether the virus itself is being treated, or whether it is the infection caused by the virus (in the form of sores) that is being treated. As explained in our Decision, Appellant’s interpretation that one skilled in the art would inherently know not to drink or consume a mixture of coffee grounds and honey confirms that there is ambiguity in what is encompassed by “treating a virus that causes the viral infection with said coffee grounds-honey mixture” as recited in claim 38. “[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Appellant has argued, first in the Appeal Brief and now in the Request for Rehearing, two different interpretations of the claim language. Whichever interpretation Appellant has settled on can be incorporated into the claim language and thereby remove any ambiguity as to what is required by “treating a virus.” See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (During prosecution, “a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application.”). Appeal 2012-001041 Application 10/602,404 4 2. With respect to the obviousness rejection under 35 U.S.C. § 103(a), Appellant contends that the “obvious to try” rationale is not applicable in cases that do not present a finite and selectively small number of options to choose from citing Sanofi-Aventis Deutschland GmbH v. Glenmark Pharmaceutical, 748 F.3d 1354 (Fed. Cir. 2014) (Req. Reh’g 4.) Specifically, Appellant argues that in Sanofi “the Court found the claim for a combination of a known ACE inhibitor with a known calcium antagonist to be non-obvious” (Req. Reh’g 4). In Sanofi-Aventis, our reviewing Court has held that the “obvious to try” rationale does not apply when a combination of known components “was found to have longer-lasting efficacy than either component separately” See Sanofi-Aventis 748 F.3d at 1361, citing Pozen Inc. v. Par Pharmaceutical, Inc., 696 F.3d 1151, 1165 (Fed. Cir. 2012). In Sanofi- Aventis the combination of known products into a single unit produced longer lasting hypertension treatment which was unexpected “because of the widespread belief [by those of skill in the art] that double-ring inhibitors would not fit the pocket structure of the ACE.” See Sanofi-Aventis at 1361. The present Specification, however, provides insufficient evidence in the form of data to establish any unexpected result with the mixture of coffee grounds and honey. In contrast, consistent with the criteria in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) our reviewing Court in Sanofi- Aventis has held that the “obvious to try” rationale is applicable when a combination had “no ‘unexpectedly good’ properties compared with the separate components” or “no unexpected properties were asserted” for a combination of known products. See Sanofi-Aventis 748 F.3d at 1361, citing Appeal 2012-001041 Application 10/602,404 5 Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804 (Fed. Cir. 1989) and Richardson–Vicks Inc. v. Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997). The “obvious to try” rationale is applicable to the facts of the present case because there is insufficient evidence in the Specification to establish unexpected results. The Specification provides that “[i]t is suspected that the combination of a bee product and caffeine produces such a synergistic effect that inhibits replication of the virus more so than would treatment with either caffeine or bee product alone.” (Spec. 6, ll. 6-8 (emphasis added).) However, the mere assertion of a possible synergistic effect in the Specification without supporting evidence is not enough to overcome a prima facie case of obviousness. Appellant has not identified any persuasive evidence in the form of data or other showing from which the ordinary artisan would conclude that the combination of coffee grounds and honey produces some unexpected result. We have considered the reason Appellant provides as grounds for reversal, but adhere to the original Decision. The Examiner relies on the rationale in In re Kerkhoven, 626 F.2d 846 (CCPA 1980), to support the conclusion that “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose” Id. at 850. (Ans. 14; see also Decision 5-7.) After reviewing the facts and arguments, we remain persuaded that the Examiner has not erred in rejecting the claims as obvious based on the combination of references. SUMMARY We have reconsidered the evidence and arguments, but deny the requested relief. Appeal 2012-001041 Application 10/602,404 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED lp