Ex Parte Gee

Patent Trial and Appeal Board

Aug 1, 2014

10602404 (P.T.A.B. Aug. 1, 2014)

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.
10/602,404 06/23/2003 Gilbert C. Gee 5157-001 1676
24112 7590 08/01/2014
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
WARE, DEBORAH K
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
08/01/2014 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 GILBERT C. GEE
____________

Appeal 2012-001041
Application 10/602,404
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1) of the
Board’s decision entered April 11, 2014 (Decision) affirming the
indefiniteness rejection under 35 U.S.C. § 112, second paragraph of claims
38 and 41-43 and the obviousness rejection under 35 U.S.C. § 103(a) of
claims 38, 39, and 41-43. We have reconsidered the Decision in light of
Appellant’s arguments, but adhere to the original Decision affirming the
Examiner’s rejections.
BACKGROUND
Appellant claims a method of treating a viral infection with a mixture
of coffee grounds and honey.
The Examiner found, and Appellant does not rebut, that the prior art
individually taught that coffee grounds or honey could be used to treat sores
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caused by herpes virus (see Ans. 6-9; see also Req. Reh’g 5 and Br. 8). The
Examiner reasoned that it would be obvious to combine two compounds that
each possess equivalent properties, in that they both treat herpes simplex
virus, in order to form another composition to treat herpes virus (see Ans.
14). The Decision affirmed the rejection.
GROUNDS PRESENTED.
Appellant’s request presents two issues:
1. The Board has confused the breadth of the claim with
indefiniteness. (Req. Reh’g 2.)
2. The “obvious to try” rationale does not apply to the facts in this
case. (Req. Reh’g 4.)
DISCUSSION
1. With respect to the indefiniteness rejection under
35 U.S.C. § 112, second paragraph, Appellant’s prior argument in the
Appeal Brief is that “in ‘treating’ the viral infection, those of ordinary skill
in the art would appreciate that claim 38 inherently requires the resultant
mixture to be topically applied.” (App. Br. 6.) Appellant now “concedes
that the phrase ‘treating a virus’ includes forms of treatment other than
topical application.” (Req. Reh’g 2.) Appellant contends, however, that
“[t]he fact that some forms of treatment may not be effective doesn’t make
the term ‘treat’ indefinite.” (Req. Reh’g 3.) “The question raised by the
Board regarding the efficacy of other forms of treatment does not
demonstrate indefiniteness.” (Id.)
On reconsideration, we find the Examiner’s position and response to
the previously raised arguments is still correct. The Examiner’s position is
that the claim is vague because there is no positive recitation of
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administering in claim 38 step (b) (see Final Office Action 2-3; see also
Ans. 6). According to the Examiner, “the ‘treating’ step is not clear and
precise because it can read on orally administering.” (Ans. 12.) However,
the Examiner finds that “[t]he complete disclosure of this application,
including the Brief filed by Appellant, provide clear and convincing
evidence that Appellant believes the claimed invention is a coffee grounds-
honey mixture used in a method for topically applying to skin having a viral
infection (e.g. sores), and particularly sores on the skin of which the sores
are the viral infection.” (Ans. 10.) Here, the ambiguity is whether the virus
itself is being treated, or whether it is the infection caused by the virus (in
the form of sores) that is being treated.
As explained in our Decision, Appellant’s interpretation that one
skilled in the art would inherently know not to drink or consume a mixture
of coffee grounds and honey confirms that there is ambiguity in what is
encompassed by “treating a virus that causes the viral infection with said
coffee grounds-honey mixture” as recited in claim 38. “[D]uring patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Appellant has argued, first in the
Appeal Brief and now in the Request for Rehearing, two different
interpretations of the claim language. Whichever interpretation Appellant
has settled on can be incorporated into the claim language and thereby
remove any ambiguity as to what is required by “treating a virus.” See In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (During prosecution, “a patent
applicant has the opportunity and responsibility to remove any ambiguity in
claim term meaning by amending the application.”).
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2. With respect to the obviousness rejection under 35 U.S.C.
§ 103(a), Appellant contends that the “obvious to try” rationale is not
applicable in cases that do not present a finite and selectively small number
of options to choose from citing Sanofi-Aventis Deutschland GmbH v.
Glenmark Pharmaceutical, 748 F.3d 1354 (Fed. Cir. 2014) (Req. Reh’g 4.)
Specifically, Appellant argues that in Sanofi “the Court found the claim for a
combination of a known ACE inhibitor with a known calcium antagonist to
be non-obvious” (Req. Reh’g 4).
In Sanofi-Aventis, our reviewing Court has held that the “obvious to
try” rationale does not apply when a combination of known components
“was found to have longer-lasting efficacy than either component
separately” See Sanofi-Aventis 748 F.3d at 1361, citing Pozen Inc. v. Par
Pharmaceutical, Inc., 696 F.3d 1151, 1165 (Fed. Cir. 2012). In Sanofi-
Aventis the combination of known products into a single unit produced
longer lasting hypertension treatment which was unexpected “because of the
widespread belief [by those of skill in the art] that double-ring inhibitors
would not fit the pocket structure of the ACE.” See Sanofi-Aventis at 1361.
The present Specification, however, provides insufficient evidence in the
form of data to establish any unexpected result with the mixture of coffee
grounds and honey.
In contrast, consistent with the criteria in KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) our reviewing Court in Sanofi-
Aventis has held that the “obvious to try” rationale is applicable when a
combination had “no ‘unexpectedly good’ properties compared with the
separate components” or “no unexpected properties were asserted” for a
combination of known products. See Sanofi-Aventis 748 F.3d at 1361, citing
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Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804 (Fed. Cir. 1989)
and Richardson–Vicks Inc. v. Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997).
The “obvious to try” rationale is applicable to the facts of the present
case because there is insufficient evidence in the Specification to establish
unexpected results. The Specification provides that “[i]t is suspected that
the combination of a bee product and caffeine produces such a synergistic
effect that inhibits replication of the virus more so than would treatment with
either caffeine or bee product alone.” (Spec. 6, ll. 6-8 (emphasis added).)
However, the mere assertion of a possible synergistic effect in the
Specification without supporting evidence is not enough to overcome a
prima facie case of obviousness. Appellant has not identified any persuasive
evidence in the form of data or other showing from which the ordinary
artisan would conclude that the combination of coffee grounds and honey
produces some unexpected result.
We have considered the reason Appellant provides as grounds for
reversal, but adhere to the original Decision. The Examiner relies on the
rationale in In re Kerkhoven, 626 F.2d 846 (CCPA 1980), to support the
conclusion that “[i]t is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same purpose”
Id. at 850. (Ans. 14; see also Decision 5-7.) After reviewing the facts and
arguments, we remain persuaded that the Examiner has not erred in rejecting
the claims as obvious based on the combination of references.

SUMMARY
We have reconsidered the evidence and arguments, but deny the
requested relief.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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