Ex Parte Aylor et al

Patent Trial and Appeal Board

Dec 21, 2016

13815823 (P.T.A.B. Dec. 21, 2016)

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.
13/815,823 03/16/2013 Robert Benson Aylor AYLOR-USCIP2 1557
7590
Robert B. Ay lor
9502 Bluewing Terrace
Cincinnati, OH 45241
05/11/2017 EXAMINER
GEMBEH, SHIRLEY V
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
05/11/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BENSON AYLOR, LEIGH HEATHER MAKOVER,
and ROBYN AYLOR HAINES1
Appeal 2015-007901
Application 13/815,823
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered December 21,
2016 (“Decision”). Appellants assert the decision was in error because the
Board “misapprehended or overlooked certain arguments and factual
evidence” presented in the Appeal Brief and Reply Brief with respect to the
rejection based on anticipation. Req. Reh’g 2. We have considered the
arguments presented by Appellants and are not persuaded that we
1 Appellants identify the Real Party in Interest as the inventors, Robert B.
Aylor, Leigh Heather Makover, and Robyn Aylor Haines. Appeal Br. 1.
Appeal 2016-003639
Application 13/364,378
misapprehended or overlooked any issues of fact or law in the Decision. The
request for rehearing is denied.
In the Request for Rehearing, Appellants argue that instructions for
using the claimed composition are functional in that how the composition is
used is important to achieving the desired result. Req. Reh’g 2—3. We are
unpersuaded. As our reviewing court has held, informing someone about an
inherent property does not impart novelty to that which is anticipated by the
prior art. King Pharmaceuticals, Inc. v Eon Labs, Inc., 616 F.3d 1267, 1278
(Fed. Cor. 2010). Moreover, the properties of the claimed composition are
not dependent on the instructions. Thus, the instructions do not render the
subject matter of claim 1 patentable. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004).
Appellants also argue that the labeling laws for medicines compel a
finding that the written instructions are functional and render claim 1
patentable. Req. Reh’g 3. However, even if we assume that the present
claims require a drug product that is regulated by the FDA, it is not clear to
us how this need for instructions creates a functional relationship between
the product and the instructions. We are not persuaded that Appellants have
demonstrated how the present situation differs from In re Ngai, 367 F.3d
1336 (Fed. Cir. 2004).
Finally, we find Appellants’ public policy argument unpersuasive.
Req. Reh’g 4. If we were to adopt Appellants’ position, “anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.” In re Ngai, 367 F.3d at 1339. Perpetual
extensions of patents is against public policy. See Sears, Roebuck & Co. v.
2
Appeal 2016-003639
Application 13/364,378
Stiffel Co., 376 U.S. 225, 228 (1964) (Extending patent protection beyond
term of a patent would “run counter to the policy of Congress of granting
patents ... for a limited time.”). In any event, we are bound by the
precedent of our reviewing court, and any policy-based arguments should be
directed to either the U.S. Court of Appeals for the Federal Circuit or the
Congress.
In sum, we have considered the Request for Rehearing but decline to
make any change in the Decision.
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).
REHEARING DENIED
3