Ex Parte Gallinat et al

Patent Trial and Appeal Board

Aug 5, 2016

10581271 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/581,271 08/31/2006
13897 7590 08/09/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Stefan Gallinat
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3321-P29848 3145
EXAMINER
PADMANABHAN, SREENIVASAN
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
08/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN GALLINAT, LUDGER KOLBE,
CHRISTOPHER MUMMERT, RAINER WOLBER, and
FRANZ STAEB 1
Appeal2013-009150
Application 10/581,271
Technology Center 1600
Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
HARLOW, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
composition comprising a 2,3-dibenzylbutyrolactone, or a derivative thereof,
and licochalcone A. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Beiersdorf AG (App.
Br. 3).
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Application 10/581,271
STATEMENT OF THE CASE
"The present invention relates to cosmetic and dermatological
preparations comprising active ingredients for the care and for the protection
of the skin, in particular of sensitive skin, and especially of skin aged or
aging by intrinsic and/or extrinsic factors" (Spec. 1 :3-5).
Claims 14--30, 32-37, and 39--43 are on appeal. 2 Claim 14 is
illustrative and reads as follows:
14. An active ingredient combination comprising
(a) one or more of compounds selected from 2,3-
dibenzylbutyrolactone and derivatives thereof, and
(b) licochalcone A.
The claims stand rejected as follows:
Claims 14--30, 32-37, and 39--43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Korte, 3 Eggers,4 Shibata,5 and
Matsukawa. 6
Claims 14, 15, 20, 24--30, 32, 33, 36, 37, 39 and 40 stand
provisionally rejected under the judicially created doctrine of nonstatutory
obviousness-type double patenting over claims 25--40 of Application
No. 10/571,5307 in combination with Korte.
Claims 14, 15, 20, 24--30 and 32 stand provisionally rejected under
the judicially created doctrine of nonstatutory obviousness-type double
2 Claim 38 has been withdrawn (App. Br. 5).
3 Korte et al., US 7,582,677 B2, issued Sept. 1, 2009.
4 Eggers et al., WO 03/070152 A2, published Aug. 8, 2003.
5 Shibata, S. et al., Inhibitory Effects of Licochalcone A Isolated from
Glycyrrhiza inflata Root on Inflammatory Ear Edema and Tumour
Promotion in Mice, 57 PLANTA MED. 221-224 (1991).
6 Matsukawa, US 6,214,352 Bl, issued Apr. 10, 2001.
7 Blatt et al., US 2007/0196289 Al, published Aug. 23, 2007 (hereinafter
"the '530 Application").
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patenting over claims 87, 89-93 and 99-103 of Application No. 10/889,1148
in combination with Korte.
Claims 14, 15, 20, 24--30, 32, 33, 36 and 37 stand provisionally
rejected under the judicially created doctrine of nonstatutory obviousness-
type double patenting over claims 54, 56-59 and 62---65 of Application
No. 10/985,733 9 in combination with Korte.
I.
Issue
The Examiner has rejected claims 14--30, 32-37, and 39--43 under
35 U.S.C. § 103(a) as being unpatentable over Korte, Eggers, Shibata, and
Matsukawa. We focus our discussion on independent claims 14 and 32,
which are representative. We also address dependent claims 16, 17, 40, 42,
and 43, as they are separately argued. Because they are not separately
argued, claims 15 and 18-30 rise or fall with claim 14, and claims 33-37,
39, and 41 rise or fall with claim 32.
The Examiner finds that Korte and Eggers disclose 2,3-dibenzyl-
butyrolactone derivatives, e.g., matairesinol, arctigenin, and arctiin, in
cosmetic and dermatological compositions (Ans. 5; see also claim 18
(identifying matairesinol, arctigenin, and arctiin as 2,3-dibenzylbutyrol-
actone derivatives)). The Examiner determines, however, that neither
8 Tom Dieck et al., US 2005/0037042 Al, published Feb. 17, 2005
(hereinafter "the '114 Application"). Claims 87-90, 92, 93, 96-99, 101-
103, and 105-123 issued as US 8,470,349 B2 (hereinafter "the '349 Patent")
on June 25, 2013.
9 Stab et al., US 2005/0186295 Al, published Aug. 25, 2005 (hereinafter
"the '733 Application").
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reference teaches a composition that includes licochalcone A in addition to
one or more lignans (Ans. 6).
The Examiner finds that Shibata discloses that licochalcone A has
anti-inflammatory and anti-tumor effects on the skin (id.), and that
Matsukawa teaches cosmetic compositions that include licochalcone A as a
whitening agent (id.).
The Examiner determines that a skilled artisan would have been
motivated to combine Korte, Eggers, Shibata, and Matsukawa to arrive at
the claimed composition and methods (id. at 6-7, 13-17). The Examiner
finds that Korte and Eggers are art-related equivalent references that each
teach arctigenin as active agents in cosmetic anti-aging compositions (id. at
5, 16). The Examiner finds that a skilled artisan would have been motivated
to combine Korte and Shibata, because both references teach dermatological
compositions having anti-inflammatory and anti-tumor effects (id. at 13-14).
The Examiner also finds that a skilled artisan would have been motivated to
combine Korte and Matsukawa, because Korte teaches the use of lignans to
treat irregular pigmentation, which "can require a whitening agent if the skin
has darkened irregular pigmentation" (id. at 15).
With regard to claims 16 and 17, the Examiner determines that it
would have been obvious to optimize the ratio of lignans or lignan esters and
licochalcone A to maximize the cosmetic benefits of the composition
disclosed by Korte, Eggers, Shibata, and Matsukawa (id. at 7).
Concerning claim 40, the Examiner finds that Korte teaches the use of
lignans to treat photoaging and intrinsic aging (id. at 15-16). Regarding
claims 42 and 43, the Examiner finds that the cited references "teach
dermatological compositions which are topical which will treat ceramide
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biosynthesis and barrier function of the skin because ceramides are in
relatively high levels on the outer layer of the skin and dermatological
compositions treat the barrier of the skin" (id. at 16).
Appellants respond that a skilled artisan would not have been
motivated to add licochalcone A, as taught by either Shibata or Matsukawa,
to the compositions taught by Korte and/or Eggers (App. Br. 6-15).
Regarding claims 16 and 17, Appellants assert that no apparent reason
exists to optimize the ratio of lignans and licochalcone A to arrive at the
claimed composition (id. at 15).
Regarding claim 40, Appellants argue that a skilled artisan would not
have had reason to add licochalcone A to a composition for use in a method
of treating symptoms of aging or for treating the harmful effects of
ultraviolet radiation (id. at 16). Appellants offer similar arguments
concerning claims 42 and 43, contending that a skilled artisan would not
have had reason to add licochalcone A to a composition intended for use in a
method to increase ceramide biosynthesis as recited in claim 42, or to
enhance the barrier function of the skin, as recited in claim 43 (id. at 17-19).
The issue presented is whether the combination of Korte, Eggers,
Shibata, and Matsukawa renders obvious claims 14, 16, 17, 32, 40, 42,
and 43.
Findings of Fact
We adopt the Examiner's findings regarding the scope and content of
the prior art, and highlight the following for context.
FF 1. Korte discloses "[a] topical formulation which includes a lignan
or lignan ester in a dermatologically acceptable vehicle. The formulation
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can be either a cosmetic formulation or a pharmaceutical formulation"
(Korte, Abstract).
FF 2. Korte discloses that matairesinol and arctigenin are
"[p ]articularly preferred lignan esters" (id. at 3 :61---65). Korte exemplifies
compositions including lignans such as matairesinol and arctigenin in
amounts ranging from 0.01 % to 20% (id. at 7:36-9:29, Examples 1-8), and
teaches that "[ w ]hen used in combination with a dermatologically acceptable
vehicle to form a topical formulation, the effective amount of the lignan or
lignan ester can be within the range from about 0.01 % to about 50%,
preferably 0.01 % to 20%" (id. at 4:63---66).
FF 3. Korte discloses that "Lignans are known to possess beneficial
effects on human health. The health benefits obtained with lignan rich diet
are, for example, decreased risk for various cancers and cardiovascular
diseases" (id. at 1 :46-53 (citations omitted)). Korte further teaches that
lignans "have powerful antioxidant and anti-inflammatory potential" (id. at
1 :54--58, and that they "may also help prevent skin cancers" (id. at 1 :64---67
(citation omitted)).
FF 4. Korte discloses that
lignans or lignan esters may be useful as active agents in topical
preparations, either cosmetic or pharmaceutical preparations,
especially as anti-aging substances for treating signs of
dermatological aging, both photoaging and intrinsic aging,
including skin wrinkles such as fine wrinkling in the eye area or
"crows feet" or fine wrinkles around the mouth area, irregular
pigmentation, sallowness, loss of skin resilience and elasticity.
The lignans or esters thereof may also be useful as anti-
inflammatory agents or as skin cancer preventing agents.
(Id. at 4:22-31.)
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FF 5. Eggers10 discloses
Surprisingly it was found that Plant extracts [of] the
genus Arctium, especially of the species Arctium lappa, which
also [is referred to] as "Burdock" or "gobo," [protects] [ s ]kin
and hair ... against free radicals. The antioxidant activity was
markedly higher than that of tocopherol and butylated
hydroxytoluene and in the same order of magnitude as
vitamin C. The extracts are also [effective] against UV-A and
UV-B radiation They also have anti-inflammatory
effect ....
(Eggers, Description.)
FF 6. Shibata discloses
In the present paper, we report on the anti-inflammatory effect
and the anti-tumour promoting action of licochalcone A which
were demonstrated in vivo respectively in the models of mouse-
ear edema . . . and papilloma on mouse back skin . . . . In in
vitro experiments, licochalcone A also inhibited 32Pi-
incorporation into phospholipids of HeLa cells, which was
promoted by TP A. The inhibiting potency indicated in this
experiment is parallel to the anti-tumour promoting effect in
vivo. These methods have been used by the present authors to
demonstrate the anti-inflammatory (11) and anti-tumour
promoting effects (12, 13) of glycyrrhetinic acid, its modified
compounds, and some other oleanane-type triterpene
derivatives.
(Shibata, 1.)
FF 7. Matsukawa discloses
The present invention relates to tyrosinase-inhibiting agents and
further specifically relates to tyrosinase-inhibiting agents
containing extracts or fractions prepared from Gardenia fruit,
Sophora root, and Rosa fruit as the active ingredients. The
10 The Examiner relies on a machine translation of Eggers. For convenience,
we rely on the same translation.
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tyrosinase-inhibiting agents of this invention may be used for
improving the skin color and the like.
(Matsukawa, 1 :6-12.)
FF 8. Matsukawa discloses that "[w]hitening agents" include "oil-
soluble Glycyrrhizae extract (Glycyrrhizae hydrophobic flavones, glabridin,
glabrene, licochalcone A) and the like" (id. at 3:11-18).
FF 9. The Examiner finds that
Shibata is considered a reference that reads on licochalcone A
for providing an anti-inflammatory effect and is not limiting the
effect to one particular type of inflammation. In addition,
Shibata was not used to make a correlation between skin aging
and inflammation but was used to show that licochalcone A has
an effect on skin inflammation. Further, Shibata and Korte
(which teaches that lignans can treat skin inflammation) can be
combined to provide obviousness to combine two compounds
each of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition to be used for the
very same purpose (In re Kerkhoven, 626 F.2d 846, 205 USPQ
1069, 1072 (CCPA 1980)).
(Ans. 13; see also id. at 6-7.)
FF 10. The Examiner finds that
Matsukawa teaches a section entitled "Whitening agents" in
which licochalcone A is listed within that section. Further it
teaches Glycyrrhizae extract and in parentheses behind that it
teaches licochalcone A which means that licochalcone A
provides a whitening effect. . . . Matsukawa can be combined
with Korte because Korte teaches that the compositions of the
invention because it is useful for irregular pigmentation in
addition to anti-aging benefits. Irregular pigmentation can
require a whitening agent if the skin has darkened irregular
pigmentation.
(Id. at 15; see also id. at 6-7.)
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Principles of Law
"It is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose." In re
Kerkhoven, 626 F.2d 846, 850 (C.C.P.A. 1980).
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955).
Analysis
We have considered, but do not find persuasive Appellants'
arguments that the Examiner erred in concluding that the challenged claims
are obvious over the combination of Korte, Eggers, Shibata, and Matsukawa.
We address Appellants' arguments below.
Claims 14 and 32
Appellants contend that a skilled artisan would not have been
motivated to add the licochalcone A of Shibata to the cosmetic compositions
of Korte or Eggers because Shibata discloses the suppression of "a specific
type of inflammation," and " [ t] he Examiner has not provided any evidence
which would support an allegation that skin aging is accompanied by
inflammation, let alone has shown that skin aging is accompanied by
inflammation which is caused by an increased production of endogenous
leukotrienes at the inflammation site" (App. Br. 7; see also Reply Br. 2-3).
Appellants also argue that Korte merely speculates that the disclosed lignans
may be useful as anti-inflammatory or skin cancer preventing agents,
without offering experimental evidence (Reply Br. 3; see also App. Br. 8).
Appellants assert that the inventors of Korte "did not know what the effects
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of the lignans and lignan esters in the compositions therein were," and thus,
Korte cannot be said to disclose lignans and lignan esters as anti-
inflammatory agents (Reply Br. 5; see also App. Br. 9).
We do not agree. As an initial matter, we observe that Appellants'
argument concerning the absence of a link between skin aging and
inflammation (App. Br. 7) is inapt. The Examiner does not rely on a link
between skin aging and inflammation to motivate the combination of Korte
and Shibata, but rather, points to the teachings in each reference that the
active agent of the disclosed compositions exhibits anti-inflammatory and
anti-tumor effects (Ans. 6; FF 9).
Furthermore, we find that Korte and Shibata each disclose
compositions having anti-inflammatory and anti-tumor effects. For
example, Korte explicitly teaches that lignans and lignan esters may "be
useful as anti-inflammatory agents or as skin cancer preventing agents"
(FF 4). Korte also describes studies in which lignans were found to "have
powerful antioxidant and anti-inflammatory potential," and identified as
potentially helpful to "prevent skin cancers" (FF 3). Shibata likewise
teaches that licochalcone A has "anti-inflammatory" and "anti-tumour
promoting action" when applied to the skin, via a topical composition
(FF 6).
Accordingly, we agree with the Examiner that it would have been
prima facie obvious to combine the lignans of Korte with the licochalcone A
of Shibata because Korte and Shibata disclose that these respective
compounds are useful anti-inflammatory and anti-tumor agents (FF 9). See
Kerkhoven, 626 F.2d at 850. We similarly agree with the Examiner that it
would have been prima facie obvious to include the lignans of Eggers in this
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composition, as Eggers and Korte each disclose lignans as useful anti-aging
compounds (FF 4, 5). See Kerkhoven, 626 F .2d at 850.
Appellants have not presented evidence or argument sufficient to
rebut the Examiner's prima facie showing of obviousness. We find that an
ordinarily skilled artisan in possession of Korte' s teachings regarding the
anti-inflammatory and anti-tumor effects of lignans would have been
motivated by those teachings to include lignans in a licochalcone A-
containing cosmetic composition to reduce inflammation and/or prevention
of tumors (FFl--4, 6, 9). Contrary to Appellants' intimation (App. Br. 8),
there is no requirement that a prior art reference must disclose detailed
experimental results in order to suggest the use of a compound to achieve a
particular effect. Furthermore, we note that Appellants have not presented
any evidence or argument sufficient to refute the finding that the lignans
disclosed by Korte exhibit anti-inflammatory effects (see App. Br. 6-11;
Reply Br. 2---6).
Regarding Appellants' assertion that Shibata does not show that
licochalcone A effectively treats all types of inflammation, we similarly find
that a skilled artisan in possession of Shibata' s teachings regarding the anti-
inflammatory and anti-tumor effects of licochalcone A in animal models
would have been motivated to include licochalcone A in lignan-containing
composition to reduce inflammation and/ or prevent tumors in humans
(FF 1--4, 6, 9). We also observe that absent some showing by Appellants
that the anti-inflammatory effects of licochalcone A reported by Shibata are
inapplicable to the treatment of skin inflammation or prevention of tumors in
humans, Appellants' argument concerning the possibility that
licochalcone A may be ineffective to treat some (unspecified) types of
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inflammation is not persuasive. See lrz re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (argument by counsel cannot take the place of evidence).
Appellants' submission of the definition of "inflammation" from
dermametics.com is insufficient to establish such a showing.
Appellants' arguments concerning the motivation to combine Korte
and Matsukawa are similarly unavailing. We agree with the Examiner that a
skilled artisan would have been motivated to add licochalcone A, as
disclosed by Matsukawa (FF 7), to the lignan-containing composition of
Korte (FF 1) in view ofMatsukawa's teaching that licochalcone A whitens
the skin (FF 7), and Korte' s teaching that lignans correct pigment
irregularities (FF 4). (FF 10.) We also agree with the Examiner that
"[i]rregular pigmentation can require a whitening agent if the skin has
darkened irregular pigmentation" (id.). Accordingly, we do not find
persuasive Appellants' arguments that Matsukawa does not teach
licochalcone A itself as a whitening agents (App. Br. 13), or that Matsukawa
does not adequately establish the degree to which licochalcone A whitens
the skin (id).
Furthermore, although we are mindful of Appellants' concerns
regarding the risks of hindsight reasoning infecting the obviousness analysis,
we note that in this instance, it is the explicit teachings of Korte and
Matsukawa themselves, concerning the correction of irregular pigmentation
and skin whitening, combined with the knowledge of an ordinarily skilled
artisan, and not knowledge gleaned from the Specification, that motivates
the proposed combination. See In re McLaughlin, 443 F.2d 1392, 1395
(C.C.P.A. 1971) ("Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
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account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.").
Claims 16 and 17
Appellants contend that "it is not seen that there would be an apparent
reason to optimize the ratio of lignans and licochalcone A" to arrive at the
ranges of acceptable ratios recited in claims 16 and 17 (App. Br. 15; see also
Reply Br. 7).
We are not persuaded. Rather, we agree with the Examiner that it
would have been obvious to optimize the ratio of lignans or lignan esters and
licochalcone A to maximize the cosmetic benefits of the composition
disclosed by Korte, Eggers, Shibata, and Matsukawa (Ans. 7.) See In re
Aller, 220 F.2d 454, 456 (C.C.P.A. 1955) ("where the general conditions of
a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.). In reaching this
conclusion, we note that Appellants do not present evidence or argument
sufficient to show either that the results of optimizing the ratio of lignans or
lignan esters to licochalcone A were unexpectedly good. See In re Geisler,
116 F.3d at 1469 ("Only if the 'results of optimizing a variable' are
'unexpectedly good' can a patent be obtained for the claimed critical range."
(quoting In re Antonie, 559 F.2d 618, 620 (C.C.P.A. 1977)).
Claims 40, 42, and 43
Claims 40, 42, and 43 are each drawn to a method of applying "[a]
cosmetic or dermatological preparation comprising the combination of claim
14 and a cosmetically or dermatologically acceptable carrier" (claim 20) to
the skin, in order to treat or otherwise enhance the skin. In particular, claim
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40 recites " [a] method of treating symptoms of intrinsic or extrinsic skin
aging and for treating harmful effects of ultraviolet radiation on skin," claim
42 recites "[a] method of increasing ceramide biosynthesis," and claim 43
recites "[a] method of enhancing the barrier function of skin."
Appellants offer similar arguments against the Examiner's rejection of
each of claims 40, 42, and 43. Specifically, for each claim, Appellants
contend that the Examiner fails to identify why a skilled artisan who intends
to use a composition of Korte or Eggers to achieve the recited function (i.e.,
treating aging, increasing ceramide biosynthesis, or enhancing barrier
function) would be motivated to add licochalcone A to that composition
(App. Br. 16-19; see also Reply Br. 7-8). Appellants assert also that the
Examiner has not explained why the anti-inflammatory or whitening activity
of licochalcone A would be considered to be beneficial properties of a
composition that is to be used for the function recited in each claim (App.
Br. 16-19; see also Reply Br. 7-8).
We do not find Appellants' position persuasive. As discussed in
detail above, we agree with the Examiner that an ordinarily skilled artisan
would have been motivated to combine the lignans of Korte and Eggers with
the licochalcone A of Shibata and Matsukawa (FF 1-10). Furthermore,
contrary to Appellants' position, the fact that the motivation to combine the
cited references proffered by the Examiner differs from Appellants' own
motivation to combine the recited compounds does not demonstrate error in
the Examiner's obviousness analysis. See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) ("In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. What matters is the objective reach of the claim.");
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lrz re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("Although the motivation
to combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.").
Finally, we observe that the Examiner explicitly found that Korte
teaches the use of lignans to treat photoaging and intrinsic aging (Ans. 15-
16), and that the cited references "teach dermatological compositions which
are topical which will treat ceramide biosynthesis and barrier function of the
skin because ceramides are in relatively high levels on the outer layer of the
skin and dermatological compositions treat the barrier of the skin" (Ans. 16).
Appellants have not proffered evidence or argument sufficient to rebut these
findings (see App. Br. 5-19; Reply Br. 2-8).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the combination of Korte, Eggers, Shibata, and Matsukawa
renders claims 14, 16, 17, 32, 40, 42, and 43 obvious. Claims 15, 18-30,
33-37, 39, and 41 have not been argued separately and therefore, fall with
claims 14 and 32, respectively.
II.
The Examiner has provisionally rejected claims 14, 15, 20, 24--30, 32,
33, 36, 37, 39, and 40 under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 25--40 of the
'530 Application in combination with Korte.
The Examiner has provisionally rejected claims 14, 15, 20, 24--30, and
32 under the judicially created doctrine of obviousness-type double
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patenting as being unpatentable over claims 87, 89-93 and 99-103 of the
'114 Application in combination with Korte. On June 25, 2013, subsequent
to the Examiner's Response to Argument, but prior to submission of
Appellants' Reply Brief, claims 87-90, 92, 93, 96-99, 101-103, 105-123,
and 1-13 of the '114 Application issued as US 8,470,349 B2 ("the '349
Patent"). Accordingly, we treat this rejection as a rejection over claims 1-
32 of the '349 Patent in combination with Korte.
The Examiner has provisionally rejected claims 14, 15, 20, 24--30, 32,
33, 36, and 37 under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 54, 56-59 and 62---65 of
the '733 Application in combination with Korte.
Appellants "submit that these provisional rejections are not presented
herein for review," and state that appropriate action will be taken, "if
deemed necessary, once patentable subject matter has been identified by the
Examiner" (App. Br. 19). Because Appellants do not contest the merits of
these rejections, we summarily affirm these rejections.
SUMMARY
We affirm the rejection of claims 14, 16, 17, 32, 40, 42, and 43 under
35 U.S.C. § 103(a) based on Korte, Eggers, Shibata, and Matsukawa.
Claims 15 and 18-30 fall with claim 14. Claims 33-37, 39, and 41 fall with
claim 32.
We summarily affirm the provisional rejection of claims 14, 15, 20,
24--30, 32, 33, 36, 37, 39, and 40 under the judicially created doctrine of
nonstatutory obviousness-type double patenting over claims 25--40 of the
'530 Application in combination with Korte.
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We summarily affirm the rejection of claims 14, 15, 20, 24--30, and 32
under the judicially created doctrine of nonstatutory obviousness-type
double patenting over claims 1-32 of the '349 patent in combination with
Korte.
We summarily affirm the provisional rejection of claims 14, 15, 20,
24--30, 32, 33, 36, and 37 under the judicially created doctrine of
nonstatutory obviousness-type double patenting over claims 54, 56-59, and
62-65 of the '733 Application in combination with Korte.
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)(l )(iv).
AFFIRMED
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