Ex Parte Sagi et al

Patent Trial and Appeal Board

Mar 30, 2016

12766783 (P.T.A.B. Mar. 30, 2016)

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).
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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").
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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.
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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.
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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