Ex Parte Fikstad et al

Board of Patent Appeals and Interferences

Jun 14, 2011

09871318 (B.P.A.I. Jun. 14, 2011)

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.
09/871,318 05/31/2001 David Fikstad WP 2001.00 1207
23639 7590 06/14/2011
BINGHAM MCCUTCHEN LLP
Three Embarcadero Center
San Francisco, CA 94111-4067
EXAMINER
YOUNG, MICAH PAUL
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
06/14/2011 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 DAVID FIKSTAD and DANYI QUAN
__________

Appeal 2010-001150
Application 09/871,318
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered March 23, 2011
(“Decision”). Appellants argue that we erred in our treatment of the Coop
Declaration because we “never considered all of the evidence anew along
with the testimony of Dr. Coop[,] . . . the Coop declaration being evaluated
only on its ability to overturn th[e] obviousness determination” (Req.
Rhg. 3-4). Appellants also argue that the Coop Declaration rebuts the
Appeal 2010-001150
Application 09/871,318

2
presumption that the cited references are enabled for what they disclose (id.
at 5-8).
We have considered Appellants’ arguments on rehearing but they do
not persuade us of any error in the Decision. The Decision discussed the
evidence provided by Dr. Coop (Decision 4-5, FFs 2-7) and weighed that
evidence (id. at 7) against the evidence provided by the Examiner’s
references (id. at 7-8). The Decision concluded that the prior art “provide[d]
evidence that people working in this field routinely modified transdermal
drug delivery systems to administer different drugs, with different structures
and chemical properties” (id. at 8) and that “the Coop declaration . . . does
not provide an adequate factual basis on which to conclude that undue,
rather than routine, experimentation would have been required to administer
lasofoxifene transdermally” (id.). Thus, the Decision properly considered
Appellants’ declaratory evidence along with the other evidence of record.
While Appellants may disagree with the conclusion we reached upon
weighing the evidence, they have not shown that we overlooked or
misunderstood any issue of fact or law in reaching that conclusion. The
request for rehearing is denied.
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).

REHEARING DENIED

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