Ex Parte Burch et al

Board of Patent Appeals and Interferences

Mar 23, 2004

09245625 (B.P.A.I. Mar. 23, 2004)

1 Appellants submitted a minor amendment with the Brief to correct the
dependency of two claims (see Paper No. 13 dated Oct. 16, 2001). Although not
specifically noted by the examiner (Answer, page 2, ¶(4)), this amendment has
been physically entered into the file record, as assumed by appellants (Brief,
page 2, ¶(4)). Accordingly, we consider the claims on appeal as amended by
Paper No. 13.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT R. BURCH and ROBERT R. BURCH, JR.
____________
Appeal No. 2003-0645
Application No. 09/245,625
____________
ON BRIEF
____________
Before GARRIS, WARREN and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 22 and 25 through 29, which are
the only claims remaining in this application.1 We have
jurisdiction pursuant to 35 U.S.C. § 134.
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Application No. 09/245,625
2
According to appellants, the invention is directed to an
elastomeric fiber, useful as dental floss, that comprises a
therapeutically effective amount of a chemotherapeutic agent
imbibed in the fiber (Brief, page 2).
Appellants state that the claims do not stand or fall together
(Brief, page 3) and present arguments for each of six groups
(Brief, pages 12-15). As correctly noted by the examiner (Answer,
page 2), appellants do not provide reasonably specific, substantive
arguments for the separate patentability of each group but merely
repeat the claim limitations while reiterating that the references
of record do not suggest these limitations (e.g., see the Brief,
paragraph bridging pages 12-13). Appellants argue that “the
differences in what the claims cover” make the claims of Groups II-
VI separately patentable (Reply Brief, page 2). However, merely
repeating a limitation from one claim in each Group and stating
that the references do not suggest this limitation, without more,
does not qualify as a specific, substantive argument for separate
patentability. See 37 CFR § 1.192(c)(7)(2000), last sentence,
which reads “[m]erely pointing out differences in what the claims
cover is not an argument as to why the claims are separately
patentable.” For example, assuming arguendo that the combination
of Burch and Hill is proper, the Burch reference clearly describes
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the properties of the elastic fiber as set forth in claim 4 on
appeal (i.e., a Group III claim; see Burch, col. 3, l. 59-col. 4,
l. 6). Appellants have not identified any specific, substantive
reasons for the separate patentability of this claim or any Group
III claim other than the reasons given for the Group I claims
(Brief, pages 12-13).
Accordingly, we select independent claim 1 as representative
of the claims on appeal and decide the ground of rejection in this
appeal on the basis of this claim alone. See In re McDaniel, 293
F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002)(“If the
brief fails to meet either requirement [of 37 CFR § 1.192(c)(7)],
the Board is free to select a single claim from each group of
claims subject to a common ground of rejection and to decide the
appeal of that rejection based solely on the selected
representative claim.”). Claim 1 is reproduced below:
1. A fiber comprising:
(a) a fiber of an elastomeric polymer capable of imbibing a
chemotherapeutic agent; and
(b) a therapeutically effective amount of the
chemotherapeutic agent imbibed in the fiber.
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Application No. 09/245,625
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2 We note that Burch is also one of the appellants, and the Burch patent
is assigned to the real party in interest in this appeal (Delta Dental
Hygienics LLC; Brief, page 1, ¶(1)).
3 In the event of further or continuing prosecution of this claimed
subject matter, the examiner and appellants should consider the teaching of
Burch at col. 9, ll. 16-21, where Burch teaches that the “dental floss of the
instant invention” may also comprise added ingredients such as found in U.S.
Patent Nos. 2,667,443, 2,772,205, and 5,280,796. These three patents,
incorporated by reference into Burch, teach the same or similar methods of
adding an active ingredient to the dental floss fiber, as discussed below.
The examiner and appellants should consider whether these teachings, applied
to the dental floss fiber of Burch, would inherently produce an agent
“imbibed” in a fiber as now claimed.
The examiner relies upon the following references as evidence
of obviousness:
Hill et al. (Hill) 5,098,711 Mar. 24, 1992
Burch 5,433,226 Jul. 18, 1995
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Burch in combination with Hill (Answer,
page 3). We affirm this ground of rejection essentially for the
reasons in the Answer and those reasons set forth below.
OPINION
The examiner finds that Burch2 discloses dental floss fibers
with the same structure and properties as recited in the claims on
appeal (Answer, page 3). Appellants do not contest this finding
but agree with the examiner’s further finding that Burch does not
teach “impregnating” these dental floss fibers with a
chemotherapeutic agent (id.; Brief, pages 4 and 8).3 Therefore the
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examiner applies Hill for teaching the loading of multiple stranded
or filamented nylon dental floss with chemotherapeutic agents,
prepared by dipping the floss into an agitated bath containing the
agent (Answer, page 4). From these findings, the examiner
concludes that it would have been obvious to load the
chemotherapeutic agents of Hill into the floss of Burch to provide
an effective means for imparting antimicrobial properties to these
fibers (id.). We agree.
To establish prima facie obviousness, three criteria must be
satisfied. There must be shown a reason, suggestion or motivation
for making the modification suggested by the examiner in combining
references, as well as a reasonable expectation of success in
making this modification, and the combination of references must
disclose or suggest every limitation of the claimed subject matter.
See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991).
Appellants argue that there is no motivation to combine the
references as proposed by the examiner (Reply Brief, page 6). This
argument is not well taken since the examiner has provided a
motivation to combine, namely the teaching by Hill of providing
delivery of chemotherapeutic agents to the oral cavity by
incorporation of these agents into floss for improved dental
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treatment would have suggested such an improvement to the floss
disclosed by Burch (Answer, page 4; Hill, col. 2, ll. 35-45; col.
5, ll. 23-43; and col. 6, ll. 11-16).
Appellants also argue that the person of ordinary skill in the
art would have no reasonable expectation of success in substituting
the elastomeric polymer of Burch for the non-elastomeric polymers
of Hill (Brief, pages 8-10; Reply Brief, pages 6-7). Appellants
submit that there is nothing in Burch or Hill that suggest that an
elastomeric fiber with the recited structure could absorb a
therapeutically effective amount of a chemotherapeutic agent
(Brief, page 12). These arguments are not persuasive. As
correctly stated by the examiner (Answer, pages 4-5), it is the
structure of the fiber that controls the amount of agent that can
be “loaded” (as taught by Hill), and both Burch and Hill teach
dental floss fiber with multiple strands or filaments (see Burch,
Figure 3 and accompanying text; see Hill, col. 6, ll. 17-35; col.
8, ll. 30-33; col. 11, ll. 45-50; and col. 13, ll. 58-66).
Therefore we agree with the examiner that one of ordinary skill in
this art would have had a reasonable belief that the multifilament
elastomeric floss fiber of Burch would have been successfully
loaded with active ingredient in the same manner as the
multifilament floss structure of Hill. Appellants have not shown
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4 E.g., see U.S. Patent No. 2,772,205, where the active ingredient may
be adsorbed upon the dental floss by treating any suitable floss with an
aqueous solution of this active ingredient (col. 2, ll. 40-53), and U.S.
Patent No. 2,667,443, where the yarn (floss) is soaked in a solution of water
and the chemical agent (col. 2, ll. 1-5).
any indication in the prior art that the chemical identity of the
floss fiber would have any effect on the loading or incorporation
of the agent into the floss fiber. To the contrary, Burch teaches
that chemotherapeutic agents may be incorporated into the
elastomeric floss of his invention (col. 9, ll. 16-21),
incorporating by reference three references which teach adding
chemotherapeutic agents to floss fibers by methods which are the
same or similar to those disclosed and claimed by appellants.4
Appellants argue that the combination of Burch and Hill does
not produce the claimed invention since Hill does not teach
imbibing or absorbing a chemotherapeutic agent into the fiber
(Brief, page 7). Appellants further argue that Hill “teaches away”
from imbibing or absorbing ingredients into the dental floss since
this reference teaches that it is “critical” that loading of the
active ingredient be accomplished into the interstitial spaces of
the floss (Brief, page 10; Reply Brief, page 3). Appellants submit
that a dictionary definition for “imbibed” means “absorbed” and
thus “imbibed in the fiber” as claimed is clearly distinguished
from the teachings of Hill that the “compositions employed are
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5 Note also that “imbibition” is defined as the absorption of a liquid
by a solid or a gel and that an “absorbent” is defined as “[a]ny agent which
imbibes or attracts moisture...”. See Hackh’s Chemical Dictionary, 3rd ed.,
pp. 2-3 and 431, The Blakiston Co., Inc., 1953 (a copy is attached to this
decision).
contained essentially in the interstitial spaces between the fibers
of the floss.” Brief, pages 16-18.
During prosecution before the examiner, the language of the
claims is given its broadest reasonable meaning as ordinarily used,
as the language would be understood by one of ordinary skill in
this art, as defined or enlightened by the original disclosure.
See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997). Neither appellants nor the examiner has pointed to any
definitions of “imbibed” in the original disclosure. However, we
note that each of the dictionary definitions cited by the examiner
and appellants define “imbibed” as “absorbed” (Brief, page 18;
final Office action, Paper No. 10, page 5). Accordingly, we
determine that there is no argument directed to the meaning of
“imbibed.”5 The issue is whether the multifilament fiber structure
of Hill “loaded” with active ingredient in the interstitial spaces
reads on the chemotherapeutic agent “imbibed in the fiber” as
recited in claim 1 on appeal.
We agree with the examiner that an active agent “imbibed in
the fiber” as claimed, when construed as broadly as reasonably
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6 See Webster’s II, New Riverside University Dictionary, pp. 68-69, The
Riverside Publishing Co., 1984 (a copy is attached to this decision).
possible, encompasses the loaded multifilament structure of Hill.
As discussed above, “imbibed” means “absorbed.” In turn, “absorb”
means “to take in through or as if through pores or
interstices:soak in or up.”6 Therefore the taking in of active
ingredient into the interstitial spaces of the multifilament
structure of Hill would have reasonably been considered as
“imbibed” into the fiber.
Appellants argue that there is no evidence of record to
support the examiner’s assertion that “imbibing” is equivalent to
coating (Reply Brief, page 4). This argument is not well taken
since the examiner is not asserting that imbibing is equivalent to
coating in any situation but the “imbibing” of active ingredient
into the interstitial spaces of Hill is equivalent to coating each
of the many individual strands (Answer, page 4).
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness in view of the evidence. Appellants argue that,
with respect to the claims of Groups V and VI, unexpected results
have been shown (Brief, pages 13-15; Reply Brief, pages 7-9).
Accordingly, we begin anew and review the evidence for and against
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obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
We agree with the examiner (Answer, page 5) that the evidence
submitted by appellants (Example 1 and Comparative Example 1) is
not commensurate in scope with the subject matter claimed. See In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). It is
incumbent upon the appellants to show that the evidence submitted
as showing “unexpected results” is commensurate with or predictive
of results commensurate in scope with the claimed subject matter.
Appellants state that Example 1 shows a spandex fiber takes up 2300
ppm of fluoride (Brief, page 13; Reply Brief, page 7). However,
this statement is a generalization since this Example actually is
directed to the imbibition of sodium fluoride into a specific
weight (12.3 g) of spandex of 540 denier (see the specification,
page 13, ll. 20-33). None of the claims in Groups V and VI are
limited to the specific fluoride used in Example 1, nor is any
claim limited to the specific fiber and denier used. We also note
that claims 14 and 19 are limited to a process in which the aqueous
solution of a fluoride salt is at a pH of greater than about 1
while Example 1 of the specification does not recite any pH values.
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Appellants state that Comparative Example 1 shows that “a
conventional dental floss” takes up 385 ppm of fluoride (Brief,
page 14; Reply Brief, page 7). We agree with the examiner (Answer,
page 5) that appellants have not shown that the “conventional”
dental floss of Comparative Example 1 is a comparison with the
closest prior art, i.e., Hill. See In re Burckel, 592 F.2d 1175,
1179, 201 USPQ 67, 71 (CCPA 1979)(A showing of unexpected results
must compare the claimed subject matter with the closest prior art
to be effective). There is no evidence of record showing what
constitutes a “conventional” dental floss. The burden of
explaining the evidence of “unexpected results” rests with
appellants. See Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat.
App. & Int. 1992). Furthermore, we note that Comparative Example 1
is limited to the use of sodium fluoride and the materials and
procedure of Jøgensen et al. (specification, page 14) are not
disclosed.
Based on the totality of the record, including due
consideration of appellants’ arguments and evidence, we determine
that the preponderance of evidence weighs most heavily in favor of
obviousness. Accordingly, we affirm the examiner’s rejection of
claims 1-22 and 25-29 under 35 U.S.C. § 103(a) over Burch in
combination with Hill.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
MDS/ki
Appeal No. 2003-0645
Application No. 09/245,625
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