Ex Parte BernsteinDownload PDFPatent Trial and Appeal BoardFeb 9, 201512854788 (P.T.A.B. Feb. 9, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOEL E. BERNSTEIN __________ Appeal 2013-008219 Application 12/854,788 Technology Center 1600 __________ Before ERIC B. GRIMES, MELANIE L. McCOLLUM, and ERICA A. FRANKLIN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of the decision entered Nov. 24, 2014 (“Decision”). We have considered Appellant’s arguments but are not persuaded that they show that we misapprehended or overlooked any relevant issues of fact or law in reaching the conclusions set out in the Decision. The request for rehearing is denied. Appellant argues that “a ‘cream’ is not equivalent to a ‘shampoo’” (Req. Reh’g 2). Appellant argues that “if surfactants are not in the claimed shampoo by definition, there would be no need to use encapsulated anthralin as in the claimed method. No evidence should be needed to support that Appeal 2013-008219 Application 12/854,788 2 logic, and adding ‘surfactant’ to a ‘shampoo’ claim would be redundant.” (Id. at 3.) This argument does not persuade us that we misapprehended or overlooked any issue of fact or law in the Decision. As noted therein, the Specification expressly states that “[w]hen the composition is a shampoo, surfactants may be incorporated into the shampoo” (Decision 6, quoting Spec. 2, ¶ 13 (emphasis added)). Thus, the broadest reasonable interpretation of the “shampoo composition” recited in the claims does not require a surfactant. Appellant also argues that “[n]ot only are creams not identical to shampoos, but the steps for application of the creams in the 2 ads are not identical to the steps in the claimed methods in which the shampoo itself contains the active ingredient to treat psoriasis” (Req. Reh’g 4). This argument is also unpersuasive. The Decision expressly compares the steps that are required by claim 16 with the steps described by Drugs.com and concludes that “Drugs.com discloses a method that meets, or at a minimum would have made obvious, all of the limitations of claim 16” (Decision 5). Appellant has not shown that we misapprehended or overlooked any issues in reaching that conclusion. Appellant also argues that we should have considered both the evidence and dictionary definitions that were submitted as exhibitsto the Appeal Brief and Reply Brief (Req. Reh’g 4-5). With regard to the dictionary definitions submitted by Appellant with the Appeal Brief, we made clear that those definitions, as well as the definition provided by the Examiner, were considered (Decision 7, n.5 and 6 Appeal 2013-008219 Application 12/854,788 3 (quoted at Req. Reh’g 5)). With regard to the advertisements and additional material submitted by Appellant with the Appeal Brief and Reply Brief, we noted in the Decision that such evidence “can only be admitted if prosecution is re-opened, 37 C.F.R. § 41.33(d)(2)” (Decision 6, n.4). Appellant has not shown that we misinterpreted or misapplied the appropriate rule. In summary, Appellant has not shown that we misapprehended or overlooked any issue of law or fact in affirming the rejection on appeal. The request for rehearing is denied. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REHEARING DENIED jgr Copy with citationCopy as parenthetical citation