Ex Parte Sagi et alDownload PDFPatent Trial and Appeal BoardMar 30, 201612766783 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121766,783 04/23/2010 108547 7590 04/01/2016 McDermott Will & Emery LLP 500 North Capitol Street NW Washington, DC 20001 FIRST NAMED INVENTOR AppalaSagi 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. 091500-0390 2258 EXAMINER SANDERS, JAMES M ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): mweipdocket@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte APP ALA SAGI, 1 Joseph C. Trautman, Guohua Chen, Robert Wade Worsham, and Parminder Singh Appeal2014-005087 Application 12/766,783 Technology Center 1700 Before BEYERL YA. FRANKLIN, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appala Sagi, Joseph C. Trautman, Guohua Chen, Robert Wade Worsham, and Parminder Singh ("Corium") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 29--46, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is identified as Corium International, Inc. (Appeal Brief, filed 2 December 2013 ("Br."), 1.) 2 Office action mailed 2 May 2013 ("Final Rejection"; cited as "FR"). Appeal2014-005087 Application 12/766,783 A. Introduction3 OPINION The subject matter on appeal relates to a method of making a microprojection array, i.e., an array of microneedles. Such arrays are said to be useful for delivering drugs through the skin or other biological membranes, as well as for sampling fluids beneath such membranes. (Spec. 1 [0003].) Because the resolution of this case turns entirely on the legal issue of whether the principal reference is disqualified by the Declaration of one of the inventors, we need not review any further aspects of the invention. The Examiner maintains the following ground of rejection4' 5 : Claims 29--46 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Singh '685,6 Zhang,7 and Inganas. 8 3 Application 12/766,783, Methods for manufacturing microprojection arrays, filed 23 April 2010, claiming the benefit of provisional application 61/172,419, filed 24 April 2009. 4 Examiner's Answer mailed 16 January 2014. 5 Because the '783 Application was filed prior to 16 March 2013, we refer to the "pre-AIA" version of the applicable statutes. 6 Parminder Singh et al., Solvent-cast microneedle arrays containing active, US 2008/0269685 Al (30 October 2008), based on application 12/148,180, filed 16 April 2008. 7 Wei Zhang et al., Methods and apparatus for rapid imprint lithography, US 2010/0247698 Al (30 September 2010, based on an application filed 7 June 2010, which was filed as a division of application 11/943,977, filed 21November2007. 8 Olle Inganas et al., Methods for patterning polymer films, and use of the methods, WO 00/70406 (2000). 2 Appeal2014-005087 Application 12/766,783 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner finds that Singh '685 is prior art under 35 U.S.C. § 102(a) and§ 102(e) because it was published less than one year prior to the effective filing date of the '783 application, and because it reports the invention of "others," or "another," to use the language of § § 102( a) and 102( e ), respectively. The Examiner proceeds to make findings regarding the teachings of Singh '685, Zhang, and Inganas, and to hold all claims obvious in view of the combined teachings of these references. (FR 2-7.) Corium urges that the Examiner erred in holding that the Declaration9 filed by co-inventor Parminder Singh does not remove Singh '685 as a prior art reference against the appealed claims. Corium does not dispute, and indeed, Singh testifies, that: 1. I [Parminder Singh] am a co-inventor, along with Appala Sagi, Joseph C. Trautman, Guohua Chen, and Robert Wade Worsham, of the subject matter claimed in U.S. Patent Application No. 12/766,783, filed April 23, 2010 entitled METHODS FOR MANUFACTURING MICROPROJECTION ARRAYS (hereafter "the instant application"), 2. I, along with Robert Wade Worsham, Joseph C. Trautman, Danir Bayramov, Danny Lee Bowers, Andy Klemm, Steven Richard Klemm, and Guohua Chen, am a coinventor of U.S. Patent Application No. 12/148,180 9 Parminder Singh, Declaration under 37 C.F.R. § 1.132, filed 8 April 2013 ("Singh Declaration"). 3 Appeal2014-005087 Application 12/766,783 filed on April 16, 2008 and published as US 2008/0269685 on October 30, 2008 (hereafter "the '180 application"). 3. The '180 application and the instant application have as common inventors: myself, Robert Wade Worsham, Joseph C. Trautman, and Guohua Chen. 4. The subject matter that is common to both the claims of the instant application and the disclosure of the '180 application is the work of myself and my co- inventors Robert Wade Worsham, Joseph C. Trautman, and Guohua Chen. 5. None ofDanir Bayramov, Danny Lee Bowers, Andy Klemm, or Steven Richard Klemm are inventors of the common subject matter claimed in the instant application and disclosed in the '180 application. (Singh Declaration, 1-2.) Singh closes with the standard affirmation and recognition of 18 U.S.C. § 1001. Section 102(a), including the preamble, reads: A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent. 35 U.S.C. § 102(a) (2012); emphasis added. Similarly, § 102( e) reads in most relevant part: (e) the invention was described in-(1) an application for patent, published under section l 22(b ), by another filed in the United States before the invention by the applicant for patent. 35 U.S.C. § 102(e) (2012); emphasis added. 4 Appeal2014-005087 Application 12/766,783 Thus, a reference that meets the date limitations of§§ 102(a) and 102( e) may not be applied against an applicant for patent if the disclosure in that reference is due to the work of the inventor of the application under examination. If, however, the reference is the work of "others" or of "another," i.e., of an inventive entity distinct from the inventors of the application under examination, the reference may be applied under§ 102(a) or under§ 102(e). 35 U.S.C. § 103, in force for the '783 Application, reads in most relevant parts: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would 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. Patentability shall not be negatived by the manner in which the invention was made. * * * * * ( c )(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (/), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. 35 U.S.C. §§ 103(a) and (c) (2012); emphasis added. 5 Appeal2014-005087 Application 12/766,783 In the present case, the exclusion provided for by§ 103(c)(l) for work commonly owned or subject to common assignment does not apply because the '783 Application is also available as prior art under§ 102(a). 10' 11 Corium has not directed our attention to any holding in In re Katz, 687 F.2d 450 (CCPA 1982) or in In re DeBaun, 687 F.2d 459 (CCPA 1982), cited in their Brief12 (Br. 3-5)-and we are aware of no such holding there or elsewhere-that the published work of "others" prior to the date of application for patent is not available under§ 103(a). Because, as noted supra, Corium does not contest the rejection of the appealed claims in view of the three references applied, we are not persuaded of harmful error in the rejection. C. Order It is ORDERED that the rejection of claims 29--46 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED 10 If the '180 Application had not been published prior to the 23 April 2010, filing date of the '783 Application, it would not be available as prior art. If the '180 Application had been published more than one year prior to 23 April 2010, it would, of course, be prior art under § 102(b) and available without restriction under§ 103. 11 It is not apparent from the briefing in this appeal that the '783 application and Singh '685 were owned by the same person or subject to an obligation of assignment to the same person. 12 No Reply Brief was filed. 6 Copy with citationCopy as parenthetical citation