William Fowler et al.

Patent Trials and Appeals Board

Sep 4, 2019

14643480 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/643,480 03/10/2015 William Fowler VERDE-002CON 7004
93726 7590 09/04/2019
EPA - BOZICEVIC FIELD & FRANCIS LLP
BOZICEVIC, FIELD & FRANCIS
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
EXAMINER
KRECK, JANINE MUIR
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte WILLIAM FOWLER, CLAYTON ANDERSON,
and CARTER ANDERSON

Appeal 2019-001439
Application 14/643,480
Technology Center 3600

Before CHARLES N. GREENHUT, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant,2 Verde Environmental
Technologies, Inc., appeals from the Examiner’s decision to reject
claims 56–58 and 60–81. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 A closely related Appeal (2019-001441) was taken in Application Number
14/827,744.
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Verde
Environmental Technologies, Inc.. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a general medication disposable system.
Claim 56, reproduced below, is illustrative of the claimed subject matter:
56. A device comprising:
a sealable container dimensioned to accommodate a
pharmaceutical composition;
an amount of activated carbon present inside of the . . .
sealable container, wherein the activated carbon comprises
granulated or pelletized activated carbon and is not present in a
free-flowing form; and
a pharmaceutical composition present inside of the
sealable container.
REFERENCES
The prior art relied upon by the Examiner is:
Sassa US 4,830,643 May 16, 1989
Anderson
(“Anderson ’717”)
Anderson
(“Anderson ’936”)
US 2005/0163717 A1

US 2009/0180936 A1
July 28, 2005

July 16, 2009
REJECTIONS
Claims 71–74 and 76–80 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Anderson ’717. Final Act. 4.
Claims 71–74 and 76–80 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderson ’717 and Anderson ’936. Final Act. 5.
Claims 56–58 and 60–81 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderson ’936 and Sassa. Final Act. 5.

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OPINION
Anticipation by Anderson ’717
The sole argument raised by Appellant regarding the anticipation
rejection is that the phrase “an amount of an unused pharmaceutical
composition” of claim 713 should be interpreted to exclude the discarded
transdermal patch of Anderson ’717 which has been worn by a user but
nonetheless still includes usable drug compounds thereon. App. Br. 5–7;
Final Act. 4 (each citing Anderson ’717, para. 5). Appellant argues that the
Specification refers to the patch, i.e., in its entirety, as a “pharmaceutical
composition” (see, e.g., Spec. 9–10) and also refers to “the active agent from
the pharmaceutical composition” as the drug intended to be deactivated by
the present invention. However, the mere reference to a particular element
with a certain term or phrase, without more, does not necessarily amount to
an express lexicographic definition, particularly one that would disavow a
portion of the disclosed invention. “To act as their own lexicographer, the
applicant must clearly set forth a special definition of a claim term in the
specification that differs from the plain and ordinary meaning it would
otherwise possess.” MPEP § 2111.01(IV) (emphasis added). Under a plain
meaning, we are not apprised of any reason why “pharmaceutical
composition” is not broad enough to include the drug compound or
compounds carried on a transdermal patch either with or without the patch
itself. As the Examiner correctly points out, the portions of the Specification
cited by Appellant sandwich a discussion of the problem associated with

3 Pursuant to 37 C.F.R. § 41.37(c)(1)(iv), claim 71 is representative of
claims 72–74 and 76–80 for purposes of both the anticipation rejection and
the obviousness rejection based on the Anderson references.
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transdermal “patches worn for the full 72-hour wear period” and having “28-
84.4% of the original loading of fentanyl still remained in the patches.”
Spec. 2:6–7 (cited at Ans. 5–6). Appellant’s proposed construction, while
distinguishing the claimed subject matter from that of Anderson ’717, would
also serve to exclude subject matter of Appellant’s own invention which one
skilled in the art would expect to fall within the reach of Appellant’s claims.
This is because Appellant’s Specification indicates Appellant sought to solve
the exact same problem discussed in paragraph 5 of Anderson ’717. Spec.
2:6–7. In light of these circumstances, we agree with the Examiner that a
clearer definition or disavowal of claim scope is required in order to adopt
Appellant’s proposed construction that “an amount of an unused
pharmaceutical composition” should be narrowly interpreted to exclude the
“amounts of drug compound remain[ing] in the patches after patients have
worn them” of Anderson ’717. Spec. 2:1–2.
Furthermore, the Examiner reasonably interprets “unused” to mean
“not consumed.” Ans. 6. This meaning is consistent with the Specification,
which discloses the disposal of such unused pharmaceutical compositions as
pills and liquids. Spec. 10:11–24, 11:18–27. The Examiner correctly finds
that Anderson ’717 disposes of worn thermal patches that still contain some
unconsumed active agent and the patches represent “an amount of an unused
pharmaceutical composition” because a portion (amount) of the worn patch
contains unused (unconsumed) active ingredient. Id. at 5–6. Thus, the patch
is an “unused pharmaceutical composition.” This unused (residual) dosage
is a significant amount of active ingredient. Anderson ’717 ¶ 5; Final Act. 4.
For the foregoing reasons we sustain the anticipation rejection based
on Anderson ’717.
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Obviousness in view of Anderson ’717 and Anderson ’936
As an alternative to the anticipation rejection discussed above, the
Examiner presents an obviousness rejection based on adopting Appellant’s
proposed narrower construction of an amount of “unused pharmaceutical
composition.” Final Act. 5. The Examiner concludes that it would have
been obvious to use Anderson ’717’s device to dispose of unused
pharmaceutical compositions in view of the fact that Anderson ’936
expressly teaches that unused pharmaceutical compositions, which may
include patches, need to be disposed of. Final Act. 5 (citing Anderson ’936,
¶ 15).
As the Examiner points out (Ans. 7), it seems clear from the Anderson
references that the problems associated with discarded pharmaceuticals, such
as the potential for reclamation and abuse, are similar, if not identical,
regardless of whether the active or desired ingredients are present because
they remain after the pharmaceutical has been used at least in part or because
the pharmaceutical has not been used at all. We see no support whatsoever
for Appellant’s naked assertions that “the ’936 device . . . is a completely
different device that serves an entirely different purpose from that of ’717”
and “the Examiner has provided no reason for why one of ordinary skill in
the art would combine the device of ’717 with the device of ’936 or
modify ’717 to incorporate the device of ’936.” App. Br. 9–10.
For the forgoing reasons we sustain the obviousness rejection based
on Anderson ’717 and Anderson ’936.

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Obviousness in view of Anderson ’936 and Sassa
Sassa is relied on by the Examiner concerning, inter alia, the “not . . .
free-flowing” limitation of claim 56. Appellant raises two issues concerning
the obviousness rejection of claim 564 based on Anderson ’936 and Sassa.
First, Appellant argues that Anderson ’936 does not identify the dust
problem purportedly solved by incorporating the carbon enclosure of Sassa.
App. Br. 11–12; Reply. Br. 7–8; see Final Act. 6. However, although an
express suggestion to modify or improve on some aspect of a disclosed
prior-art invention can provide strong evidence of obviousness, there is no
requirement for a primary reference forming the basis for an obviousness
rejection to expressly point out all its shortcomings for which an obvious
improvement may be made. “Under the correct analysis, any need or
problem known in the field of endeavor[5] at the time of [the] invention and
addressed by the patent [or application at issue] can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). Those skilled in the art will often recognize
obvious improvements to machines and methods they themselves did not
invent. Appellant does not dispute that dust is a valid concern or that Sassa
addresses it. Appellant only asserts that Anderson ’936 does not expressly
indicate a recognition of this problem. Anderson ’936’s failure to expressly

4 Claim 56 is representative of claims 57, 58, and 63–81 under 37 C.F.R.
§ 41.37(c)(1)(iv). App. Br. 10.
5 “This does not require that the reference be from the same field of
endeavor as the claimed invention, in light of the Supreme Court’s
instruction that ‘[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one.’” MPEP § 2141.01(a) (citing KSR, 550 U.S. at
417).
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recognize the problem the Examiner proposed to solve by incorporating
Sassa’s teachings does not, without more, demonstrate any error in the
Examiner’s obviousness analysis.
Appellant’s next argument is that Sassa is non-analogous art. App.
Br. 12–16. There does not appear to be any disagreement that two criteria
have evolved for determining whether prior art is analogous: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. See App. Br. 12. Appellant
would define both the field of endeavor and the particular problem as related
to medication disposal. App. Br. 13–16; Reply. Br. 9–10. However, the
Examiner would define both as related to using and handling carbon
adsorbent. Ans. 8. We do not agree fully with either of these formulations.
As far as Appellant’s formulation is concerned, it is not “disposal”
with which Appellant was primarily concerned, but rather the neutralization
or deactivation of the substance disposed. Spec. 1–2. Turning to the
Examiner’s analysis, activated carbon is part of the solution, as opposed to
what defines the problem. Nonetheless, focusing on the second prong of the
analogousness test, formulating the problem as: how to neutralize or
deactivate a medication renders references related to neutralization or
deactivation of other substances, such as Sassa, reasonably pertinent. We
are not apprised of any reason why one skilled in the art would consider the
relevance of references pertaining to substance deactivation limited to only
the specific substance being deactivated. Indeed, Appellant has not
presented any evidence or technical reasoning to demonstrate that the
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problems encountered by Appellant were unique to pharmaceutical
composition disposal. See, e.g., In re Paulsen, 30 F.3d 1475, 1481–82 (Fed.
Cir. 1994). Thus, even though Sassa’s primary concern is the neutralization
of organic vapors, water vapors, or other gaseous components, Sassa’s
teachings are at least reasonably pertinent to the problems associated with
deactivating substances generally, including unused medications. It cannot
reasonably be disputed that activated carbon is a notoriously well-known
substance neutralizer and deactivator. The Supreme Court’s reminder that
“familiar items may have obvious uses beyond their primary purposes” is
appropriate here. KSR, 550 U.S. at 1742; see also In re ICON Health and
Fitness, Inc., 496 F. 3d 1374, 1380 (Fed. Cir. 2007).
Appellant additionally argues with respect to claims 61 and 62 that
Anderson ’936 does not disclose a liquid permeable enclosure and there
would be no reason to include one. The Examiner points out that Sassa, as
opposed to Anderson ’936, discloses an enclosure that may be liquid
permeable. Ans. 8–9 (citing Sassa, col. 1, l. 10). As Anderson ’936
specifically identifies liquids among the forms of medication sought to be
deactivated, the reason to include a liquid-permeable enclosure, which is to
yield a functioning device, is readily apparent.
For the foregoing reasons we sustain the obviousness rejection based
on Anderson ’936 and Sassa.
DECISION
The Examiner’s rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED