Ex Parte Fikstad et alDownload PDFBoard of Patent Appeals and InterferencesJun 14, 201109871318 (B.P.A.I. Jun. 14, 2011) 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. 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 lp Copy with citationCopy as parenthetical citation