Ex Parte Sipp

Patent Trial and Appeal Board

Oct 26, 2017

14170059 (P.T.A.B. Oct. 26, 2017)

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.
14/170,059 01/31/2014 Corey Sipp Sipp04 8911
91892 7590 10/30/2017
Incorporating Innovation LLC dba Incorporating
Innovation With Charlena Thorpe, Patent Attorney
6340 Sugarloaf Parkway
Suite 200
Duluth, GA 30097
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
Charlena@incorporatinginnovation.com
charlena. thorpe @ charlenathorpe. com
wayne @ charlenathorpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY SIPP
Appeal 2017-004063
Application 14/170,0591
Technology Center 1600
Before DEMETRA J. MILLS, ELIZABETH A. LaVIER, and
TAWEN CHANG, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner’s rejections of claims 1—19. We have jurisdiction under 35 U.S.C.
§ 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification describes pharmaceutical compositions “used to
help treat pain, reduce inflammation and fatigue, provide vital nutrients, and
increase alertness.” Spec. 17.
1 Appellant states the real party in interest is Corey Sipp. Br. 1.
Appeal 2017-004063
Application 14/170,059
Claim 1 is illustrative:
1. A pharmaceutical composition, comprised of:
a first composition comprising an effective amount of a non­
steroidal anti-inflammatory drug;
a second composition comprising an effective amount of
caffeine; and
a third composition comprised of a vitamin supplement.
Br. 21 (Claims Appendix).2
REJECTIONS MAINTAINED ON APPEAL
1. Claims 16, 17, and 19 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Ans. 3.
2. Claims 1—4, 7, 10, and 18 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Mitchell.3 Ans. 4.
3. Claims 1^4 and 7—11 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Lovercheck.4 Ans. 5.
4. Claims 1—7, 10, and 16—19 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Mitchell. Ans. 5.
5. Claims 1—4, 7—11, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Lovercheck. Ans. 7.
6. Claims 1—19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mitchell and Lovercheck. Ans. 8.
2 For the text of the additional claims discussed herein, please see the Claims
Appendix to the Appeal Brief.
3 Mitchell, US 2010/0298258 Al, published Nov. 25, 2010.
4 Lovercheck, US 2002/0022058 Al, published Feb. 21, 2002.
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DISCUSSION
For the reasons of record and those set forth herein, we affirm each of
the Examiner’s § 102 and § 103 rejections (Rejections 2—6), but reverse the
§ 112(a) rejection (Rejection 1).
A. Rejection 1
Claims 16, 17, and 19 depend from claim 1, and recite particular
ranges of non-steroidal anti-inflammatory drugs (NSAIDs) or caffeine. See
Br. 23 (Claims Appendix). For example, claim 16 recites “between 850 mg
to 1000 mg of at least one [NS AID] selected from a group consisting of
ibuprofen, naproxen and aspirin.” Id. Claims 16, 17, and 19 were added
during prosecution, and the Examiner rejected them because “there is not
support in the Specification or the original claims for the range of 850—
1000 mg of NSAID in Claim 16, for the range of 300—1000 mg of NSAID in
Claim 17, or for the range of 250-400 mg caffeine in Claim 19.” Final
Action 3.
In response, Appellant points to the Specification’s disclosure of
ranges of 100-1000 mg of NSAID, and 100-400 mg of caffeine, as well as
to subranges therein. See Br. 8—9 (citing Spec. ]Hf 10, 12). We agree with
Appellant that these disclosures provide adequate written description support
for claims 16, 17, and 19. See In re Wertheim, 541 F.2d 257, 264—65
(CCPA 1976) (finding broader range can provide written description support
of claims to narrower, subsumed range, in the absence of evidence of “any
distinction, in terms of the operability of appellants’ process or of the
achieving of any desired result” between claimed range and disclosed
range).
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Accordingly, we reverse Rejection 1.
B. Rejection 2
In regard to claim 1, the Examiner finds that Mitchell teaches a
composition comprising an NS AID, caffeine, and a vitamin supplement such
as a B vitamin. Final Action 4 (citing Mitchell 23, 29—31, claims 1, 2,
and 6). Appellant does not argue claims 1—4, 7, or 10. We summarily
affirm the rejection as to these claims. See 37 C.F.R. § 41.37(c)(l)(iv);
MPEP § 1205.02.
Appellant’s argument is specific to claim 18, which depends from
claim 1 and recites that the composition comprises “between 100 mg to 1000
mg of naxopren.” Br. 9—10, 23. The Examiner responds that Mitchell
teaches this very range of analgesic (see Ans. 4 (citing Mitchell 21—24)),
as well as 125—500 mg of naxopren {id. (citing Mitchell 1 59)). This is
sufficient to support the Examiner’s finding that Mitchell anticipates claim
18. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985) (“[Wjhen, as by a recitation of ranges or otherwise, a claim covers
several compositions, the claim is ‘anticipated’ if one of them is in the prior
art.”) (citing In re Petering, 301 F.2d 676, 682 (CCPA 1962)).
We affirm Rejection 2.
C. Rejection 3
In regard to claim 1, the Examiner finds that Lovercheck teaches a
composition comprising an NS AID, caffeine, and a vitamin supplement.
Final Action 5 (citing Lovercheck || 8, 85). Appellant does not argue
claims 1—4 or 7—10. We summarily affirm the rejection as to these claims.
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Appellant’s argument is specific to claim 11, which depends from
claim 1 and recites “the third composition is comprised of A vitamins, B
vitamins, C vitamins, D vitamins, E vitamins, and K vitamins.” Br. 10—11,
22. Appellant maintains that Lovercheck does not disclose the particular
claimed composition. See id. at 10-11. We are not persuaded. As the
Examiner points out, Lovercheck’s disclosure at paragraph 8 provides that
the nutritional supplement portion of the composition preferably includes “at
least four members” of the following group:
vitamin A, vitamin C (ascorbic acid), vitamin D, vitamin E,
vitamin K, vitamin Bi2, vitamin B6, thiamin, riboflavin, niacin,
foliate, biotin, pantothenic acid, calcium, iron, phosphorous,
iodine, magnesium, zinc, selenium, copper, manganese,
chromium, molybdenum, chlorine, or potassium nickel, tin,
silicon, vanadium, boron.
Lovercheck | 8; see Ans. 5. This disclosure includes the six vitamins recited
in claim 16, and “at least four” vitamins disclosed in Lovercheck
encompasses six vitamins, as claimed. Accordingly, we discern no error in
the Examiner’s finding that Lovercheck anticipates claim 11.
We affirm Rejection 3.
D. Rejection 4
Appellant does not argue claims 1—7 or 10. We summarily affirm the
rejection as to these claims.
As to claim 16, Appellant argues* * * 5 that Mitchelfs disclosure of 100-
1000 mg of an analgesic does not render obvious claim 16, because claim 16
5 Appellant also “incorporates by reference the arguments set forth in section
IV(B)(1)” of the Appeal Brief. Br. 11. That section of the Appeal Brief
discusses Appellant’s arguments regarding claim 18 (pertaining to the § 102
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Application 14/170,059
is specific to an NSAID, and “not all analgesics are NSAIDs.” Br. 12—13.
This is not persuasive. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).* * * * * 6 We agree with the Examiner’s assessment that “[t]he
fact that other suitable analgesics are not NSAID-type drugs does not teach
away from selecting an NSAID, which are clearly described and exemplified
by Mitchell.” Ans. 10; see also Mitchell 23—24.
As to claims 17 and 18, Appellant argues solely through incorporation
by reference to previously-made arguments. See Br. 13. We have already
dispensed with these arguments.
As to claim 19, which depends from claim 1 and recites a range of
250-400 mg of caffeine, Appellant asserts the Examiner has not provided a
“reasoned statement” supporting obviousness. Br.14. We disagree. The
Examiner finds that Mitchell teaches a significantly overlapping range, and
that claim 19 is obvious as a result. See Final Action 7 (citing Mitchell
129); Ans. 6. Appellant offers no evidence or analysis to rebut this prima
facie case of obviousness. See In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (explaining that “slightly different ranges” between claims and
prior art are obvious absent a showing the claimed range is critical).
We affirm Rejection 4.
rejection over Mitchell), not claim 16. See id. at 9—10. These arguments are
neither applicable to claim 16, nor persuasive in their own right.
6 Appellant’s arguments with respect to each of the § 103 rejections
(Rejections 4—6) are equally unpersuasive, insofar as they are underpinned by
an implicit failure follow this guidance from KSR.
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E. Rejection 5
Appellant does not argue claims 1—4 or 7—10. We summarily affirm
the rejection as to these claims. Appellant only argues claims 11 and 18
through incorporation by reference to previously-made arguments. See Br.
15—16. These arguments are unpersuasive for the reasons already discussed.
As to claim 17, Appellant asserts that Examples 16 and 17 of
Lovercheck, as cited by the Examiner, do not include caffeine.* * * * 7 Id.
Accordingly, Appellant maintains that the Examiner has not provided
evidence or reasoning to support the combination of elements from
Lovercheck to arrive at claim 17. See id. at 16. This is not persuasive. The
Examiner states:
While Examples 16 and 17 do not comprise caffeine,
Lovercheck clearly discloses the combination of NS AID,
vitamin mixture and caffeine. While there is not a single
example comprising each of the claimed components, the
ingredients are included among a short list of preferred
ingredients. It would have been obvious to one of ordinary skill
in the art at the time of the instant invention to combine the
elements as claimed by known methods with no change in their
respective functions, and the combination yielding nothing
more than predictable results.
Ans. 7. The Examiner follows this reasoning with an extensive discussion
of KSR v. Teleflex. See id. at 7—8. As the Examiner’s analysis indicates, the
present rejection falls squarely within the scenarios deemed obvious by the
Supreme Court in KSR.
1 Claim 17 requires caffeine through its dependency on claim 1. Claim 17
further recites “wherein the first composition is comprised of between 300 mg
to 1000 mg of at least one [NSAID] selected from a group consisting of
naproxen and aspirin.” Br. 23 (Claims Appendix).
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We affirm Rejection 5.
F. Rejection 6
Appellant does not argue claims 1—8, 10, or 13. We summarily affirm
the rejection as to these claims. Appellant only argues claims 9, 12, and 15—
19 through incorporation by reference to previously-made arguments. See
Br. 16—20. These arguments are unpersuasive for the reasons already
discussed.
Appellant’s argument as to claim 11 also largely argues via
incorporation by reference, but further argues that the Examiner has not
provided a sufficient rationale or evidence supporting the combination and
modification of Mitchell and Lovercheck. See id. at 17—18. We disagree, as
we discern no inadequacy or error in the Examiner’s rationale:
It would have been obvious to one of ordinary skill in the art at
the time of the instant invention to combine the elements as
claimed by known methods with no change in their respective
functions, and the combination yielding nothing more than
predictable results. Both of the compositions are useful pain
relievers comprising NSAIDs, caffeine, and vitamins, and one
of ordinary skill would have been motivated in order to provide
the benefits of the additional vitamins of reduced storage space,
smaller tablet size, reduced waste and cost, and the combined
tablets improve nutrition through more consistent consumption
of nutritional supplements, as taught by Lovercheck.
Final Action 8—9; see also Ans. 8—9.
For claim 14, again Appellant largely argues via incorporation by
reference, but further argues that the Examiner has engaged in impermissible
hindsight, because “[t]he references do not teach the ranges for naproxen
and caffeine claimed,” and that the Examiner has failed to provide a
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reasoned statement as to obviousness. Br. 18—20. To the contrary, the
Examiner’s obviousness rationale is based on findings of overlapping ranges
between claim 14 and the cited art, and a further finding that varying these
parameters would have been within the level of the ordinarily skilled artisan.
See Final Action 9—10; Ans. 9—10. This is not an exercise in impermissible
hindsight, but one of common sense. See KSR, 550 U.S. at 421 (explaining
that pursuing known options within technical grasp of ordinarily skilled
artisan is “likely the product not of innovation but of ordinary skill and
common sense”).
We affirm Rejection 6.
CONCLUSION
We affirm the rejections of claims 1—19 under 35 U.S.C. §§ 102 and
103 (Rejections 2—6), for the reasons of record and those described herein.
We reverse the rejection of claims 16—19 under § 112(a) (Rejection 1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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