10192575 (B.P.A.I. Aug. 31, 2010)

Ex Parte Bodmeier

Board of Patent Appeals and InterferencesAug 31, 2010

10192575 (B.P.A.I. Aug. 31, 2010)

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. 10/192,575 07/10/2002 Roland Bodmeier BOD-1 8888 24039 7590 08/31/2010 INNOVAR, LLC P O BOX 250647 PLANO, TX 75025 EXAMINER WITCZAK, CATHERINE ART UNIT PAPER NUMBER 3767 MAIL DATE DELIVERY MODE 08/31/2010 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 ROLAND BODMEIER ____________________ Appeal 2009-011007 Application 10/192,575 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and MICHAEL W. O’NEILL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge McCARTHY Opinion Concurring filed by Administrative Patent Judge BAHR McCARTHY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011007 Application 10/192,575 2 The Appellant appeals under 35 U.S.C. § 134 of the Examiner’s final 1 decision rejecting claims 1-3, 5-8, 10-15, 17, 29, 30 and 35-41 under 35 2 U.S.C. § 102(e) as being anticipated by Dunn ′846 (US 2004/0127846 A1, 3 publ. July 1, 2004); and rejecting claims 1, 3, 4, 8, 9 and 14-16 under 35 4 U.S.C. § 102(b) as being anticipated by Dunn ′763 (US 4,938,763, issued 5 July 3, 1990). The Examiner has withdrawn claims 18-28 and 31-34. We 6 have jurisdiction over the appeal under 35 U.S.C. § 6(b). 7 We REVERSE. 8 Claim 1 is the only independent claim: 9 1. A kit for the preparation of a composition 10 comprising a carrier phase, which forms an 11 implant or particles in a body, on a body or under 12 physiological conditions, the kit comprising: 13 a first container containing at least one solid or 14 semisolid carrier material; and 15 a second container containing an amount of 16 solvent sufficient to dissolve the carrier material, 17 wherein the carrier material is separate from the 18 solvent; 19 wherein the carrier material is sufficiently soluble 20 in the solvent 21 so that it dissolves in the solvent 22 within less than 60 minutes, if placed 23 in contact with and mixed therewith, 24 thereby rapidly forming an administrable carrier 25 phase comprising a polymer solution ; 26 the carrier material is a powder or lyophile; 27 the solvent comprises water and/or one or more 28 water-miscible organic solvents when the carrier 29 material is water soluble; 30 the solvent comprises one or more organic solvents 31 Appeal 2009-011007 Application 10/192,575 3 when the carrier material is water insoluble; 1 and wherein the administrable carrier phase forms 2 an implant or particles in situ after being placed in 3 a body, on a body or under physiological 4 conditions. 5 (Indentation added for emphasis and line breaks added for clarity.) 6 This appeal may be resolved by finding whether or not either Dunn 7 ′846 or Dunn ′763 describes a carrier material sufficiently soluble in the 8 solvent so that the carrier material might dissolve in the solvent within less 9 than 60 minutes, if placed in contact with, and mixed with, the solvent.2 10 Rejection for anticipation or lack of novelty 11 requires, as the first step of the inquiry, that all the 12 elements of the claimed invention be described in a 13 single reference . . . Further, the reference must 14 describe the applicant’s claimed invention 15 sufficiently to have placed a person of ordinary 16 skill in the field of the invention in possession of 17 it. 18 In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations omitted). The 19 Examiner correctly finds that neither Dunn ′846 nor Dunn ′763 “expressly 20 disclose[s] the carrier dissolving in the solvent within less than 60 21 minutes[.]” (Ans. 4 and 5). 22 The Appellant correctly contends that dissolution time in both Dunn 23 ′846 and Dunn ′763 is not inherent. (App. Br. 16). The Examiner concludes 24 for both Dunn ′846 and ′763 that “it would be very easy for one of ordinary 25 skill in the art to determine conditions under which the mixing of the carrier 26 and solvent in the method of Dunn et al. would result in the carrier 27 2 For the sake of brevity, we address only this one dispositive issue here. No conclusion should be drawn from the Board’s choice not to address other arguments made by the Appellant. Appeal 2009-011007 Application 10/192,575 4 dissolving in the solvent in less than 60 minutes.” (Ans. 6; accord Ans. 5). 1 The Examiner’s statement is not a finding that either Dunn ′846 or Dunn 2 ′763 inherently discloses that the carrier material is capable of dissolving in 3 the solvent in less than 60 minutes if placed in contact with, and mixed with, 4 the solvent. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) 5 (“‘Inherency . . . may not be established by probabilities or possibilities. The 6 mere fact that a certain thing may result from a given set of circumstances is 7 not sufficient.’” (citations omitted)). 8 Dunn ′846 and Dunn ′763 do not expressly or inherently describe the 9 carrier material capable of dissolving in the solvent in less than 60 minutes if 10 placed in contact with, and mixed with, the solvent. We do not sustain the 11 rejection of claims 1-3, 5-8, 10-15, 17, 29, 30 and 35-41 under 35 U.S.C. 12 § 102(e) or the rejection of claims 1, 3, 4, 8, 9 and 14-16 under 35 U.S.C. 13 § 102(b). 14 15 DECISION 16 We REVERSE the Examiner’s decision rejecting claims 1-17, 29, 30 17 and 35-41. 18 19 REVERSED 20 21 BAHR, Administrative Patent Judge, concurring. 22 I concur in the decision to reverse the rejections. 23 JDB 24 Appeal 2009-011007 Application 10/192,575 5 Klh 1 2 3 4 INNOVAR, L.L.C. 5 P.O. BOX 250647 6 PLANO, TX 75025-0647 7