Ex Parte Ackley et al

Patent Trial and Appeal Board

Apr 8, 2016

13374184 (P.T.A.B. Apr. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/374, 184 12/15/2011
23117 7590 04/12/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
E. Michael Ackley JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PTB-4389-58 3009
EXAMINER
WALSH, DANIEL I
ART UNIT PAPER NUMBER
2887
NOTIFICATION DATE DELIVERY MODE
04/12/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte E. MICHAEL ACKLEY JR. and
DANIEL J. PALMER
Appeal2014-006388
Application 13/374,184
Technology Center 2800
Before BRUCE R. WINSOR, DANIEL N. FISHMAN, and
JON M. JURGOV AN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a rejection of
claims 13, 14, 17-19, and 27, which constitute the only claims on appeal.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
1 Appellants identify Ackley Machine Corporation as the real party in
interest. (App. Br. 3.)
2 Our decision refers to the Specification filed Dec. 15, 2011 ("Spec."); the
Final Office Action mailed June 4, 2013 ("Final Act."); the Appeal Brief
filed Jan. 13, 2014 ("App. Br."); the Examiner's Answer mailed Mar. 6,
2014 ("Ans."); and the Reply Brief filed May 6, 2014 ("Reply Br.").
Appeal2014-006388
Application 13/374,184
The claims are directed to a pellet-shaped article, such as a
pharmaceutical tablet or dosage, with laser-etched bar code extending into
an applied clear layer. (Spec. Title.) Claim 13, reproduced below, is
illustrative of the claimed subject matter:
13. A pellet-shaped article including at least one exposed surface
including at least one bar code, wherein the at least one exposed
surface includes a clear layer applied thereto, and the at least one
bar code comprises at least one laser-etched bar code extending
into the clear layer, the laser-etched bar code being invisible to
the naked eye.
REJECTIONS
Claims 13, 14, 17-19, and 27 stand rejected under 35 U.S.C. § 103(a)
based on Kettinger (US 2006/0226234 Al; Oct. 12, 2006). (Final Act. 3--4.)
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) based on
Kettinger and Palti (US 5,700,998; Dec. 23, 1997). (Final Act. 4.)
ARGUMENTS
1. Appellants argue Kettinger does not suggest its etched bar codes may
be "invisible to the naked eye." Rather, according to Appellants, they
are overt. (App. Br. 6 citing Kettinger i1i14, 7, 14, 21.)
2. Appellants argue "chemical bar codes" are not "bar codes" as the term
would be understood by a person of ordinary skill. Rather, according
to Appellants, they are covert markers by virtue of their chemical
composition. (App. Br. 7 citing Kettinger i1i145, 47.)
3. Appellants argue it is not obvious to combine overt bar codes with
covert marks such as a chemical composition because Kettinger
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Application 13/374,184
describes them as distinct and complementary. (ii .. pp. Br. 7 citing
Kettinger i-f 45.)
4. Appellants argue laser etching into a clear layer does not necessarily
result in a bar code invisible to the naked eye, merely because it is
devoid of ink. Invisibility is not achieved by size reduction, and the
Examiner has not demonstrated the person of ordinary skill would
understand invisibility is inherent in etching a clear coating. (App. Br.
8-9 citing MPEP § 2112 (IV).)
5. Appellants argue laser etching imparts distinct structural features to a
tablet or pellet-shaped article by producing sharper, finer, and more
detailed mark than other known processes, especially in the context of
edible articles such as pharmaceutical tablets, capsules, etc.
Appellants further argue other processes may not necessarily be
capable of producing a "bar code extending into the clear layer"
because laser etching may allow for better control of etching depth
and, thus, imparts "distinctive structural characteristics" entitled to
patentable weight. (App. Br. 9-10 citing MPEP § 2113.)
ANALYSIS
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and ( 4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
Section 103 forbids issuance of a patent when "the differences between the
subject matter sought to be patented and the prior art are such that the
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Application 13/374,184
subject matter as a \'l1hole \'l/ould have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Appellants present no evidence or argument concerning the level of
skill in the art under factor (3), or secondary considerations under factor (4),
of the Graham analysis. Accordingly, we assume the Specification and cited
references are representative of the level of ordinary skill in the art under
factor (3)3, and proceed in the analysis without evidence of secondary
considerations under factor ( 4).
Turning to factors (1) and (2) of the Graham analysis, we now
consider the scope and content of the prior art, and any differences between
the claimed subject matter and the prior art, considering Appellants
arguments (1) to ( 5) and the Examiner's findings and conclusions of
obviousness.
In argument (1 ), Appellants contend Kettinger does not suggest its
etched bar codes are "invisible to the naked eye." We disagree. Kettinger
teaches use of OP ADRY® film coating systems by Colorcon, Ltd., which
the Examiner finds are well known to include clear coatings for
pharmaceutical or nutritional tablets.4 5 (Final Act. 3; Ans. 3 citing ,-r 22).
3 See, e.g., MPEP § 2141.03 explaining how the level of ordinary skill in the
art is ascertained and used in the obviousness analysis.
4 Although Appellants dispute Kettinger discloses the claimed clear layer,
Appellants do not particularly address the Examiner's finding that
OPADRY® film coating systems by Colorcon, Ltd. are known in the art to
include transparent/clear coatings. See Final Act. 3. Accordingly, we must
consider this finding unrebutted. See, e.g., MPEP § 2144.03(C).
5 Furthermore, Kettinger (i-fi-f 21, 3 5) teaches use of "film coatings" and/ or
"color film coatings," suggesting the possibility the "film coatings" may be
other than colored, i.e., colorless or clear.
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Application 13/374,184
Kettinger also teaches laser etching of a tablet surface and/or film coated
surface (i-fi-f 24, 33) using readily available technology and techniques known
to those of ordinary skill (i-f 24). (Final Act. 3; Ans. 3) Kettinger further
teaches etching of a bar code onto the surface of a tablet and/or film coating
(i-fi-f 7, 28, 29, 41, 42; claims 1-3).
Considering these disclosures and the claimed invention as a whole,
Kettinger at least suggests the structure of a dosage form with a laser-etched
bar code in the clear film coating of a dosage form, as the Examiner finds,
which is equivalent to what is claimed. (Ans. 3; Final Act. 3 citing i1i122,
24.) It stands to reason, then, Kettinger's laser-etched bar code would be
"invisible to the naked eye" absent any language in claims 13 and 27 that
suggests something else that achieves invisibility and is not disclosed by
Kettinger. 6 Accordingly, we are not persuaded of Examiner error.
In argument (2), Appellants argue Kettinger's "chemical bar codes"
are not the claimed "bar codes" as the term would be understood by a person
of ordinary skill. We agree. However, the Examiner did not rely on
Kettinger' s "chemical bar codes" in the rejection. Accordingly, we find this
argument unpersuasive of Examiner error. 7
In argument (3), Appellants contend it is not obvious to combine overt
bar codes with covert markers such as a chemical composition because
Kettinger describes them as distinct and complementary. The Examiner
does not rely upon Kettinger to disclose combining overt and covert
6 The Specification (i-fi-f 3 8--40) states the bar code can be made invisible to
the naked eye by etching a portion of a clear coating, or by making layers of
a pellet-shaped article the same color.
7 Because the "chemical bar codes" are used with covert markings for tablets
or oral solid dosage forms in Kettinger (i-f 45), there is in Kettinger at least a
suggestion that bar codes could be covert, i.e., "invisible to the naked eye."
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Application 13/374,184
markers, but instead upon the findings previously noted. Furthermore,
Appellants' argument is not commensurate in scope with claims 13 and 27
as written, which provide no language relating to overt markers. Thus, we
are not persuaded by this argument.
In argument (4), Appellants contend laser etching into a clear layer
does not necessarily result in a bar code 'invisible to the naked eye" as
claimed. Appellants offer no evidence to support this proposition. Lawyer's
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re Huang, 100 F.3d 135, 139-140 (Fed. Cir.
1996). 8 Furthermore, the Examiner has established Kettinger discloses the
equivalent of the claimed pellet-shaped article with a laser-etched bar code
formed in a clear layer, based on the findings previously noted. It is
reasonable to conclude that Kettinger's equivalent structure produces the
same result as claims 13 and 27, i.e., a laser-etched bar code "invisible to the
naked eye." Accordingly, we are not persuaded there is a difference
between the claimed invention and prior art that would indicate the
Examiner errs in the rejections.
In argument ( 5), Appellants contend laser etching imparts distinct
structural features to a tablet or pellet-shaped article by producing sharper,
finer, and more detailed mark than other known processes. Because
Kettinger also uses laser etching for bar codes (i-fi-f 22, 24 ), this argument
8 If more is required to produce a laser-etched bar code that is "invisible to
the naked eye," then Appellants and the Examiner should evaluate whether
the Specification provides adequate written description and enablement to
support the claims as required under 35 U.S.C. § 112, first paragraph.
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Application 13/374,184
does not establish any distinction bet\'l/een the claimed invention and
Kettinger that could would warrant reversal of the rejection.
Appellants present argument in their Reply Brief that is redundant
with their Appeal Brief. Specifically, Appellants again argue Kettinger does
not disclose a clear coating (Reply Br. 1-2), a contention with which we
disagree for reasons previously explained.
Appellants present several new arguments for the first time in their
Reply Brief. (Reply Br. 1--4.) Absent a showing of good cause by the
Appellants, the Board does not consider new arguments presented in a Reply
Brief. 37 C.F.R. § 41.41(b)(2). Were we to automatically consider such
newly raised arguments, "[r]ather than reviewing a record for error, the
Board would be considering, in the first instance, findings of fact proposed
by the Appellants, but not weighed by the Examiner [in the Examiner's
Answer] against the other evidence of record." Ex parte Borden, 93
USPQ2d 1473, 1475 ( BPAI 2010) (informative). Thus, we need not
consider these arguments.
Nevertheless, even considering these arguments in the interests of
administrative and judicial economy, we do not find them persuasive. In the
Reply Brief (2-3), Appellants argue Kettinger (at i-f 22) contemplates use of
only ink-based markings. We disagree. This Kettinger disclosure,
considered as a whole, contemplates use of ink-based and etched bar codes
(i-f 21 ), and states a film coated surface can be laser etched (i-f 24 ). Thus,
Kettinger teaches use of coatings with laser-etched bar code markings. (See
also Kettinger, claims 1-3 and 7; i-fi-12, 22, 24, 45.)
In the Reply Brief (3--4), Appellants argue Kettinger teaches "overt"
and "covert" markers and that the only disclosed covert markers in Kettinger
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Application 13/374,184
are "chemical bar codes" that are chemical compositions. (Reply Br. 3--4.)
Appellants' argument does not negate the Examiner's findings that the
equivalent of the claimed article (and its method of manufacture) is
disclosed in Kettinger, and one would assume such an equivalent article and
method is capable of producing the same result, specifically, a laser-etched
bar code that is "invisible to the naked eye." (Final Act. 3; Ans. 3.)
CONCLUSION
After considering Appellants' arguments, we agree with the Examiner
that under the Graham analysis, Kettinger renders obvious the subject matter
of Appellants' claims 13 and 27 under§ 103(a). Accordingly, we are not
persuaded the Examiner erred in the findings or conclusion of obviousness.
No separate arguments are presented for the dependent claims and,
therefore, we sustain the rejection for the reasons previously stated. In re
King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989,
991 (Fed. Cir. 1983); 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, the Examiner's Decision to reject claims 13,
14, 17-19, and 27, is 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)(l )(iv).
AFFIRMED
8