Ex Parte Verrall et al

Patent Trial and Appeal BoardMar 6, 2017

12184458 (P.T.A.B. Mar. 6, 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. 12/184,458 08/01/2008 Andrew P. Verrall 30658/43145A 7451 4743 7590 03/08/2017 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER TARAZANO, DONALD LAWRENCE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 03/08/2017 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW P. VERRALL and SOLOMON E. BROWN1 Appeal 2016-003280 Application 12/184,458 Technology Center 1700 Before GEORGE C. BEST, DONNA M. PRAISS, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’ rejection of claims 1, 2, 6—24, and 37—39. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 Monosol, LLC is identified as the real party in interest. App. Br. 4. Appeal 2016-003280 Application 12/184,458 SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter: 1. An edible film comprising: a water-soluble mixture of an edible carboxymethyl cellulose film-forming resin; an edible plasticizer; an edible surfactant; and, an edible tackifier, wherein the edible carboxymethyl cellulose film-forming resin comprises a low molecular weight component and a high molecular weight component, the low molecular weight component having a molecular weight less than that of the high molecular weight component; and wherein the low molecular weight component is characterized by a 2%-aqueous solution viscosity in a range of about 10 cP to about 100 cP at 25 °C and the high molecular weight component is characterized by a 2%- aqueous solution viscosity in a range of about 100 cP to about 1000 cP at 25 °C. REJECTION The following rejection is before us on appeal: Claims 1, 2, 6—24, and 37—39 under 35 U.S.C. § 103(a) as unpatentable over Weibel (US 2005/0129814 Al, published June 16, 2005) in view of Singh et al. (US 2005/0208110 Al, published Sept. 22, 2005, hereinafter “Singh”), and Carroll et al. (US 2006/0073190, published Apr. 6, 2006, hereinafter “Carroll”), as evidenced by Cellogen Sodium Carboxymethyl Cellulose, Dai-Ichi Kogyo Seiyaku Co., Ltd., pp. 1—12 (hereinafter “Cellogen”) (Final Act. 3—13; Ans. 2—12). ANALYSIS The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed 2 Appeal 2016-003280 Application 12/184,458 subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Furthermore, “[t]he Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In the rejection of independent claims 1 and 14, the Examiner finds that Carroll teaches that hydroxypropylmethyl cellulose (hereinafter “HPMC”) and carboxymethyl cellulose (hereinafter “CMC”) are equivalents for the purpose of the invention. Final Act. 6, 10. Based on this finding, the Examiner reasons that “when Carroll uses different viscosities of HPMC . . . the use of different viscosities of CMC is also disclosed,” thus making it obvious to the ordinary skilled artisan to “use different grades of CMC with different viscosities . . . and further that the grades of CMC can be modified to include ‘a low viscosity and a medium viscosity CMC cellulosic gel[].”’ Id. at 6, 7, 8. In response, Appellants contend that “Carroll’s teaching regarding use of materials with two different viscosities is limited to HPMC.” App. Br. 9. Appellants contend further that “Carroll does not recognize an equivalency 3 Appeal 2016-003280 Application 12/184,458 of HPMC and CMC,” but rather teaches that these polymers are listed among preferred polymers that include mixtures and combinations of those polymers identified. Id. at 16. Appellants urge that, because combinations of HPMC and CMC are identified as a potential embodiment, Carroll actually recognizes the non-equivalence of these polymers because both polymers would be needed for some embodiments of Carroll’s film. Id. We agree with Appellants that the Examiner has failed to establish that Carroll recognizes the equivalence of HPMC and CMC. As correctly noted by Appellants {id.), to rely on equivalence as a rationale supporting an obviousness rejection, the equivalence must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590, 596 (CCPA 1958). Here, the Examiner does not establish that HPMC was an art- recognized equivalent to CMC, or for what purposes HMPC and CMC were regarded as equivalent. Rather, the Examiner asserts in a conclusory manner that the polymers are equivalents “for the purpose[] of [the] invention.” Final Act. 6, 10. The Examiner indicates that “Carroll states many times that CMC and HPMC are equivalent” and cites to Tflf 10, 11, 18, 20, and 38 of Carroll for support. Id. at 14—15. The Examiner, however, does not point us to any evidence—either in the cited paragraphs or otherwise—that establishes the art-recognized equivalence of any of the preferred and/or suitable polymers listed in these paragraphs, much less the equivalence of CMC and HPMC specifically. Thus, we are left to speculate regarding the basis for the Examiner’s assertion of equivalence. We refuse to engage in such speculation. 4 Appeal 2016-003280 Application 12/184,458 We also emphasize that the Examiner does not respond with any specificity to Appellants’ argument that Carroll does not recognize the equivalence of HPMC and CMC “because both are needed” in the embodiment using combinations of these polymers. App. Br. 16. Rather, in the Answer, the Examiner restates the grounds of rejection multiple times (Ans. 2—12, 14—17), and summarizes Appellants’ arguments in a list (Ans. 12—14) with no substantive response thereto. On this record, therefore, we find that the Examiner has failed to articulate reasoning that adequately explains why the claimed subject matter is either a combination of prior art elements according to known methods to yield predictable results, or a simple substitution of one known element for another to obtain predictable results as alleged. Final Act. 5, 8; Ans. 5, 7, 17, 18. Because the Examiner has not established a prima facie case of obviousness of independent claims 1 and 14, we are constrained to reverse the Examiner’s rejection of these claims, as well as the rejection of dependent claims 2, 6—13, 15—24, 37, and 39. We additionally note that, with respect to independent claim 38, Appellants correctly point out that “[t]he final official action did not address this claim individually.” App. Br. 21. Because the Examiner did not articulate the reasons for rejecting this claim in either the Final Action or the Answer, we reverse the rejection of claim 38 as well. DECISION We reverse the Examiner’s rejection of claims 1, 2, 6—24, and 37—39 under 35 U.S.C. § 103(a). REVERSED 5