Ex Parte BrownDownload PDFPatent Trial and Appeal BoardNov 29, 201713135552 (P.T.A.B. Nov. 29, 2017) 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. 13/135,552 07/08/2011 Timothy Brown 32866/52457 9914 4743 7590 12/01/2017 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER LO, ANDREW S ART UNIT PAPER NUMBER 3764 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY BROWN Appeal 2016-004120 Application 13/135,552 Technology Center 3700 Before CHARLES N. GREENHUT, LISA M. GUIJT, and JEFFREY A. STEPHENS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3, 4, 6-11, 13, 15, 17, 18, and 20-23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appeal 2016-004120 Application 13/135,552 CLAIMED SUBJECT MATTER The claims are directed to an article of clothing for applying a pharmaceutical, a pharmaceutical delivery kit and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An article of clothing suitable for applying a topical, pharmaceutical composition to a portion of a wearer's body comprising: an inner, first layer for contact with a wearer's body, the topical pharmaceutical composition applied and infused with the inner, first layer and the inner, first layer facilitating application of the pharmaceutical composition to the portion of the wearer's body; and a second layer over the inner, first layer comprising a barrier material to prevent the pharmaceutical composition from passing through the second layer as a liquid from the inner layer, the second layer allowing the transmission of air and water vapor from the inner, first layer but preventing any liquid or bulk solid pharmaceutical composition from migrating from the inner, first layer through the second layer. REJECTIONS Claims 1, 3, 6-11, 13, 15, 17, and 20-21 are rejected under 35 U.S.C. § 103(a) as obvious over Close (US PG Pub. No. 2007/002602 8A1, Feb. 1, 2007) and Carroll (US PG Pub. No. 2002/0019187 Al, Feb. 14, 2002). Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Close, Carroll, and Altman (US PG Pub. No. 2007/0021023 Al, Jan. 25, 2007). Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Close, Carroll, and Le ((US PG Pub. No. 2009/0053273 Al, Feb. 26, 2009). 2 Appeal 2016-004120 Application 13/135,552 OPINION The sole issue raised by Appellant concerning the rejection of the independent claims, claims 1,11, and 15, relates to the term “infused.” App. Br. 4-5. The Examiner provided a sound basis, based on Close’s description of the inner fibrous layer, the aqueous solution, the application process, and the described activity of the water-impermeable layer, to support the Examiner’s finding that Close’s formulation inherently becomes “infused” in Close’s inner fibrous layer. See Final Act. 4 and Ans. 8-9 (both citing, inter alia. Close paras. 35-36.). At this point the burden shifted to Appellant to come forward with evidence or argument to rebut the Examiner’s finding of inherency. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); MPEP §2112. Appellant did not do so. Appellant argues only the meaning of the word “infuse” coupled with the general assertion that Close does not disclose infusion. App. Br. 4-5. The meaning of infuse is not a point of contention nor is the absence of express disclosure of infusion in Close. Ans. 9. Appellant has not apprised us, and we are not informed, of any flaws in the Examiner’s well-reasoned analysis in support of the Examiner’s inherency finding. The Examiner’s finding in this regard stands uncontroverted. As this is the sole issue raised by Appellant, we are not apprised of error in the Examiner’s rejection of claims 1,11, and 15. Appellant argues claims 22 and 23 together despite those claims differing significantly in scope. See App. Br. 5-6. The two issues raised are: “Le does not disclose (1) that the elastic waist band and leg openings are separate from the short and (2) that shorts have a pharmaceutical applied to it before being encircled with an elastic band.” App. Br. 6. The Examiner responds that these limitations are nowhere to be found in claims 22 or 23. 3 Appeal 2016-004120 Application 13/135,552 Ans. 11-12. The Examiner is correct regarding the first point, that neither claim expressly requires a separate elastic band. The Examiner is also correct concerning the second limitation argued, but only with respect to claim 23, which, contrary to Appellant’s assertion (App. Br. 6), is not a method claim. However, with regard to claim 22, Appellant is essentially arguing the order of steps in the method. That is, the recited phrase, “encircling the outside of the article of clothing adjacent at least a portion of the inner layer having the applied pharmaceutical with an elastic band” means the “encircling” step must follow the pharmaceutical application step. The claim language, which, in describing the “encircling” step, refers back to “the applied pharmaceutical” implies that the “applying the pharmaceutical composition” step of claim 11, must precede the “encircling” step of claim 22. Here, the language of the claim itself suffices to rebut the general presumption that no specific order of steps in a method claim is required where “as a matter of logic or grammar, the language of the method claims [do] not impose a specific order on the performance of the method steps, and the specification [does] not directly or implicitly require a particular order.” MPEP § 2111.01 (discussing Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003)). As the Examiner’s combination of Close, Carroll, and Le does not address this particular aspect of claim 22, we do not sustain the Examiner’s rejection of claim 22. Appellant next argues the Examiner’s objection to claims 22 and 23 merely by stating that no statutory basis was provided by the Examiner and asserting the claims may be broader that the embodiment depicted in Figure 3. The Examiner states the general rule that objections are petitionable and not appealable. Ans. 13 (citing MPEP § 706.01). Appellant does not 4 Appeal 2016-004120 Application 13/135,552 provide any reasons for us to deviate from that rule.1 Accordingly, we do not reach the objection to claims 22 and 23. The arguments presented regarding claim 21 depend on the assumption that Appellant’s petition (Aug. 4, 2015) for entry of the after- final amendment to claim 22 (Jun. 3, 2015) would be granted. As this petition was not granted (Oct. 6, 2015), Appellant’s arguments with respect to claim 21 are directed to a proposed version of claim 21 not actually before us for review. Accordingly, we deem any arguments concerning pending claim 21 as waived and summarily sustain the Examiner’s rejection of claim 21. See 37 C.F.R. § 41.37(c)(l)(iv); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). DECISION The Examiner’s rejection of claim 22 is reversed. The remaining rejections are affirmed. We do not reach the objections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 1 We note that the lack of antecedent basis for “that at least part of the first layer” in claim 23 may be a source of confusion. 5 Copy with citationCopy as parenthetical citation