Ex Parte Drew

Patent Trial and Appeal Board

Feb 28, 2014

12641372 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TOUBY A. DREW
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Appeal 2012-001337
Application 12/641,372
Technology Center 3700
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Before TONI R. SCHEINER , LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of the decision entered October 23, 2013
(“Decision”). We have considered the arguments presented, but deny the
requested relief.

Appeal 2012-001337
Application 12/641,372

2
Appellant argues that the Decision did not cite “any passage of Ford,
Lowenstein, or any other art of record that discloses the claimed feature of
calculating an amount of the therapeutic fluid to store in the fluid delivery
device based on the expiration time” (Req. Reh’g 3). Specifically, Appellant
argues that “Ford discloses ‘means for issuing a warning if the current date
is later than the expiration date’ of the given drug … [but that] this passage
is not related to calculating an amount of the therapeutic fluid to store in the
fluid delivery device” (id.). Appellant argues further that “Lowenstein
discloses an ‘intelligent refrigerator system ... [that] indicate[s] that there is a
problem with a particular pharmaceutical (e.g., that it is counterfeit, expired,
suspect, spoiled, recalled or almost depleted)[’] … [but that] this passage . . .
is also not related to calculating an amount of the therapeutic fluid to store
in the fluid delivery device” (id.). Appellant asserts that “one of ordinary
skill in the art . . . would not have had any reason to modify the Ford method
with the disclosure of Lowenstein to arrive at the claimed feature of
calculating an amount of the therapeutic fluid to store in the fluid delivery
device . . . [because both references] already disclose methods related to
issuing a warning once the expiration date has passed” (id. at 3-4).
Those arguments are not persuasive. The Decision does not assert
that either Ford or Lowenstein expressly discloses “calculating an amount of
the therapeutic fluid to store in the fluid delivery device based on the
expiration time.” Rather, the Decision concludes that, based on the
disclosure in Ford and Lowenstein of the necessity of guarding against the
administration of expired or ineffective drugs, “it would have been obvious
for one of skill in the art to calculate an amount of the therapeutic fluid to store
in the fluid delivery device based on the expiration time as a further means of
Appeal 2012-001337
Application 12/641,372

3
ensuring that expired or compromised drug is not delivered to a patient” (Dec.
14). The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398. 418 (2007); see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” (Id.) Thus, we maintain the
conclusion set forth in the Decision that claim 30 would have been obvious
in view of Ford and Lowenstein.
We have reconsidered the evidence and arguments, but deny the
requested relief.
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

Klh