Ex Parte EatonDownload PDFPatent Trial and Appeal BoardMay 13, 201511145716 (P.T.A.B. May. 13, 2015) 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. 11/145,716 06/06/2005 Kevin P. Eaton AZEAT.0001 3770 22858 7590 05/14/2015 CARSTENS & CAHOON, LLP P.O. Box 802334 DALLAS, TX 75380-2334 EXAMINER SCHLIENTZ, NATHAN W ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 05/14/2015 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte KEVIN P. EATON __________ Appeal 2011-013161 Application 11/145,716 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC B. GRIMES, and LORA M. GREEN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 8–11, and 14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Claim 1 is representative of the claims on appeal, and reads as follows (emphasis added): 1. A method of treating psoriasis by administering to a person a vitamin supplement composition comprising at least about 25 micrograms to about 2,200 micrograms of folic acid, at least about 25 micrograms to about 2,500 micrograms of Appeal 2011-013161 Application 11/145,716 2 vitamin B12, and at least about 0.5 milligrams to about 20 milligrams of vitamin B6, wherein said composition is essentially free of antioxidants. The Examiner made the following grounds of rejection: I. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Jungkeit;1 II. Claim 11 under 35 U.S.C. § 102(e) as being anticipated by Meredith;2 III. Claims 1 and 8–10 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Jungkeit and Mantynen;3 and IV. Claims 11 and 14 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Bereston,4 Plewig,5 and Mantynen. DISCUSSION This appeal is before us on remand from our reviewing court, the Court of Appeals for the Federal Circuit. In re Eaton, 545 Fed. Appx. 994 (Fed. Cir. 2013) (non-precedential). The Examiner’s rejections, as set forth above, were initially affirmed by the Board in a Decision dated June 20, 2012 (hereinafter, “Decision”). In that Decision, the Examiner’s interpretation of the claim terminology 1 Erika Jungkeit, DE 10053155 A1, May 8, 2002. 2 Sarah Meredith, US 7,115,286 B2, effective date July 8, 2003. 3 Philip R. Mantynen, US 6,107,349, August 22, 2000. 4 Bereston, Vitamins in Dermatology, 2 THE AMERICAN JOURNAL OF CLINICAL NUTRITION 133 (1954). 5 Gerd Plewig et al., Seborrheic Dermatitis , ch. 126, DERMATOLOGY IN GENERAL MEDICINE, 5th ed. 1–17 (The McGraw-Hill Companies 1999). Appeal 2011-013161 Application 11/145,716 3 “essentially free of anti-oxidants” was adopted (Decision 3, citing Ans. 5, 10–12). That interpretation was based on the disclosure in the Specification that: By “essentially free” it is meant that the vitamin composition should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement. The presence of lower amounts of antioxidants would not render the vitamin composition of the present invention ineffective or of reduced effectiveness. (Spec. 4:6–10.) Appellant requested rehearing of the Decision on June 20, 2012, which request was denied by the Board on August 27, 2012 (hereinafter “Decision on Rehearing”). The Decision on Rehearing noted that the definition of “essentially free” as set forth in the Specification allowed for 200μg of vitamin C as taught by Jungkeit. Decision on Rehearing, 2–4. Appellant appealed the affirmance of the rejection of claim 1 as being anticipated by Jungkeit, and the affirmance of the rejection of claims 1 and 8–10 over Jungkeit and Mantynen, to the Court of Appeals for the Federal Circuit. Eaton, slip. op. at 5. In its Opinion, the court concluded that substantial evidence did not support the Board’s reasoning, id. at 8, because Jungkeit did not disclose 200 μg of vitamin C, but in fact taught the use of 200 mg of vitamin C. Id. at 4–5. Noting that the Specification supports a construction of “essentially free of antioxidants” as requiring that any antioxidant present must not reduce the effectiveness of the composition, the court found that the “Office has not established that the cited references disclose compositions whose effectiveness is not reduced at all due to the presence of the antioxidants.” Id. at 6–8. As to the obviousness rejection Appeal 2011-013161 Application 11/145,716 4 over the combination of Jungkeit and Mantynen, the Federal Circuit noted further that the Office had not provided any reasoning as to why the composition suggested by the combination should be modified to be essentially free of antioxidants. Id. at 9. The Court of Appeals, therefore, reversed the Board’s affirmance of claim 1 rejected under 35 U.S.C. § 102(b) as being anticipated by Jungkeit, and also reversed the Board’s affirmance of the rejection of claims 1 and 8–10 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Jungkeit and Mantynen, and remanded the case back to the Board “for further proceedings consistent with this opinion.” Id. at 10. Thus, consistent with the opinion of the Federal Circuit, the rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Jungkeit is reversed, as is the rejection of claims 1 and 8–10 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Jungkeit and Mantynen. In short, the Examiner’s rejections rely on incorrect fact-finding, and the Examiner has provided no basis for concluding that 200 mg, as opposed to 200 µg, of vitamin C falls under the Specification’s definition of “essentially free of antioxidants.” The rejection of claim 11 under 35 U.S.C. § 102(e) as being anticipated by Meredith, as well as the rejection of claims 11 and 14 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Bereston, Plewig, and Mantynen, stand on different footing. Appellant did not appeal the affirmance of those rejections. Thus, those rejections remain affirmed as set forth in the Board’s Decision of June 20, 2012. Appeal 2011-013161 Application 11/145,716 5 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). AFFIRMED-IN-PART lp Copy with citationCopy as parenthetical citation