William Fowler et al.Download PDFPatent Trials and Appeals BoardSep 4, 201914643480 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. Appeal 2019-001439 Application 14/643,480 2 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. Appeal 2019-001439 Application 14/643,480 3 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. Appeal 2019-001439 Application 14/643,480 4 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. Appeal 2019-001439 Application 14/643,480 5 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. Appeal 2019-001439 Application 14/643,480 6 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). Appeal 2019-001439 Application 14/643,480 7 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 Appeal 2019-001439 Application 14/643,480 8 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). Appeal 2019-001439 Application 14/643,480 9 AFFIRMED Copy with citationCopy as parenthetical citation