Ex Parte Aylor et alDownload PDFPatent Trial and Appeal BoardDec 21, 201613815823 (P.T.A.B. Dec. 21, 2016) 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. 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 Copy with citationCopy as parenthetical citation