90010445 (B.P.A.I. Feb. 16, 2012)

Ex Parte 6506400 et al

Board of Patent Appeals and InterferencesFeb 16, 2012

90010445 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/010,445 03/13/2009 6506400 3744-109 2661 22852 7590 02/16/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER HUANG, EVELYN MEI ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 02/16/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BIMEDA RESEARCH & DEVELOPMENT LIMITED ____________ Appeal 2011-010507 Reexamination Control 90/010,445 Technology Center 3900 Before SALLY GARDNER LANE, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING Patent Owner, who is also the Appellant, requests rehearing pursuant to 37 C.F.R. § 41.52 (“Req. Reh’g”) of the Decision mailed August 19, 2011, (“Dec.”) in which we affirmed the Examiner’s rejection of claims 32- 39 of US 6,506,400 (the ‘400 patent) as failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. Claim 32, the only independent claim on appeal, was added during the reexamination proceeding and was not an original claim. Claim 32 reads as Appeal 2011-010507 Reexamination Control 90/010,445 U.S. Patent No. 6,506,400 2 follows (underlining indicates that the claim was added during reexamination and is not an original claim; emphasis added): 32. A prophylactic method of controlling infection in a mammary gland by a mastitis-causing organism, comprising sealing a teat canal of a mammary gland with an acriflavine- free seal formulation so as to provide a physical barrier seal in the teat canal, wherein the seal formulation comprises a non- toxic heavy metal compound in a gel base. The dispute in the appeal is whether the ‘400 patent contains a written description of “an acriflavine-free seal formulation.” The phrase was added as part of claim 32 during the reexamination proceeding and was not contained in any of the original claims. The written description of the ‘400 patent describes seal formulations which are free of antibiotics and anti- infectives (FFs1 1-3), but does not expressly disclose the anti-infective acriflavine, or a formulation free of it. Appellant contends that the description of a formulation which excludes the genus of anti-infectives “implies the exclusion of every species within the genus. Therefore, being ‘acriflavine-free’ is required by the description of ‘antiinfective-free.’ Accordingly, the ‘400 patent specification clearly evidences possession of an invention that is ‘acriflavine-free.’” (Req. Reh’g 3.) We fully considered this argument in the Decision, but found it unpersuasive because the ‘400 patent described seal formulations that were free of the entire genus of antibiotics and anti-infectives, but did not describe formulations that were free of individual species of antibiotics or anti- infectives, let alone acriflavine. We found that Appellant did not provide 1 “FF” refer to the findings of fact in the Decision. Appeal 2011-010507 Reexamination Control 90/010,445 U.S. Patent No. 6,506,400 3 persuasive evidence that the inventor’s possessed seal formulations which excluded acriflavine, but permitted the presence of other anti-infectives. Acriflavine was known to be present in teat seals In this rehearing, Appellant contends that it was “well known to those of ordinary skill in the art to include acriflavine in teat seals.” (Req. Reh’g. 4.) In support of this argument, Appellant cites several publications said to describe teat seals that specifically include acriflavine (id.) Appellant’s argument and/or evidence were not raised in the Appeal Brief. 37 C.F.R. § 41.52(a) specifically prohibits new arguments and evidence: Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section. Appellant has not shown that the circumstances under (a)(2) and (a)(3) are applicable here. Nonetheless, to the extent that one of ordinary skill in the art knew that acriflavine is anti-infective, that alone does not establish that the ‘400 patent specification describes a formulation which excludes it. The specification must reasonably convey to one of skill in the art that the inventor had possession of the claimed subject matter. Boston Scientific Corp. v. Johnson & Johnson, 99 USPQ2d 1001, 1006 (Fed. Cir. 2011). The focus of the inquiry is therefore what the specification conveys about the invention. The fact the acriflavine was known, and even known to be present in teat seal formulations, does not answer whether this fact, in light Appeal 2011-010507 Reexamination Control 90/010,445 U.S. Patent No. 6,506,400 4 of the patent specification, would have conveyed possession of an acriflavine-free formulation to one of ordinary skill in the art. Claim narrowing Appellant contends that that an applicant is permitted to change his view of the invention during prosecution of his application, and to narrow the claims to reflect such change (Req. Reh’g 5). We do not disagree. However, an amendment that narrows a claim must still comply with the written description requirement of §112, first paragraph. In this case, for the reason discussed in the Decision, we found that the ‘400 patent did not describe a teat formulation in which the only anti-infective that was excluded was acriflavine. In re Ruschig Appellant contends that our citation to In re Ruschig, 379 F.2d 990 (CCPA 1967) was in error. Appellant contends the Ruschig is inapplicable because that case involved naming of a compound to be included in a claim, where the present case involves the lack of a compound (“acriflavine-free”) in a claim (Req. Reh’g 6). We relied on Ruschig to the extent that it was consistent with the analysis that the naming of a broad genus of compounds, in this case “anti- infectives,” did not necessarily support a claim to a specifically identified compound encompassed by the genus, in this case “acriflavine.” While it is true that Ruschig involved a claim which included the compound, where the Appeal 2011-010507 Reexamination Control 90/010,445 U.S. Patent No. 6,506,400 5 compound in this case is excluded from the claim, the principle of whether a disclosure of a genus supports a species is equally applicable. REHEARING DENIED rvb Patent Owner FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 Third Party Requester JUDY JARECKI-BLACK, PHD., J.D. MERIAL LIMITED 3239 SATELLITE BLVD. DULUTH, GA 30096-4640