Ex parte Hardy

Board of Patent Appeals and Interferences

Aug 31, 1999

08201522 (B.P.A.I. Aug. 31, 1999)

Application for patent filed February 25, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CRAIG J. HARDY
__________
Appeal No. 1997-2175
Application No. 08/201,5221
__________
ON BRIEF
__________
Before GARRIS, OWENS and KRATZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-2175
Application No. 08/201,522
2
This is a decision on an appeal from the final rejection
of claims 1 through 19 which are all of the claims in the
application.
The subject matter on appeal relates to a water swellable
wound dressing material comprising from 5 to 50% of an
alginate ester of a C -C polyhydric alcohol, from 50 to 95% of1 6
a humectant and less than 1.5% of polyvinyl alcohol. This
appealed subject matter is adequately illustrated by
independent claim 1, the sole independent claim on appeal,
which reads as follows:
1. A water swellable wound dressing material comprising,
by weight based on the weight of the material when anhydrous:
from 5% to 50% of an alginate ester of a C -C polyhydric1 6
alcohol;
from 50% to 95% of a humectant consisting of one or more
C -C monohydric or polyhydric alcohols; and1 6
from 0% to 30% of water,
provided that the wound dressing material comprises less
than 1.5% by weight of polyvinyl alcohol.
The reference relied upon by the examiner as evidence of
obviousness is:
European Patent Application 0 095 892 Dec. 7, 1983
(Nambu)
Appeal No. 1997-2175
Application No. 08/201,522
3
Claims 9, 15 and 16 stand rejected under the second
paragraph of 35 U.S.C. § 112 for failing to particularly point
out and distinctly claim the subject matter which the
appellant regards as his invention. According to the
examiner, these claims are indefinite by virtue of the
recitation "biopolymers other than an alginate" in claim 9,
"polysaccharide other than an alginate" in claim 15, and
"derivative" in claim 16.
All of the claims on appeal stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Nambu. While acknowledging
that "Nambu does not teach that the polyvinyl alcohol is
present in less than 1.5 weight percent," the examiner
nevertheless has taken the position that a conclusion of
obviousness is appropriate and that the "[b]urden is shifted
to Applicant to establish the criticality and/or asserted
differences and properties due to the differences in weight
percentages of polyvinyl alcohol" (Answer, page 3).
We refer to the Brief and to the Answer for a complete
exposition of the opposing viewpoints expressed by the
Appeal No. 1997-2175
Application No. 08/201,522
4
appellant and the examiner concerning the above noted
rejections.
OPINION
Neither of these rejections can be sustained.
We consider the examiner to have provided little if any
rationale or evidence in support of her burden of establishing
a prima facie case of claim indefiniteness with respect to the
§ 112, second paragraph, rejection of claims 9, 15 and 16. In
any event, whatever case for indefiniteness the examiner may
have established is more than counterbalanced by the argument
and evidence provided by the appellant in support of his
contrary view. Thus, for the reasons expressed in the Brief,
we will not sustain the rejection under consideration.
The examiner's § 103 rejection of the appealed claims
likewise cannot be sustained. As properly noted by the
appellant, the examiner's obviousness conclusion appears to be
based upon her clearly incorrect view that Nambu discloses a
wound dressing material of the type here claimed wherein the
polyvinyl alcohol component thereof may be present in an
amount as small as 1.5% by weight. The appellant has
Appeal No. 1997-2175
Application No. 08/201,522
5
thoroughly explained in the Brief, however, that the 1.5%
concentration disclosed by Nambu relates to the aqueous
solution used for producing Nambu's dressing material, and,
because this solution is ultimately subjected to a required
dehydration step, the final concentration of polyvinyl alcohol
will necessarily be greater than 1.5%.
The examiner in her Answer has not disputed or even
acknowledged the above noted explanation. Further, the
examiner has offered utterly no reason as to why one with
ordinary skill in the art would have lowered the polyvinyl
alcohol concentration of Nambu's dehydrated product from a
value which is above 1.5% (i.e., the lowest value of Nambu's
range) to less than 1.5% (i.e., the highest value of the
appellant's claimed range). Indeed, Nambu teaches away from
lowering his polyvinyl alcohol concentration to a value within
the here claimed range for the reasons detailed in the Brief.
In light of the foregoing, it is clear to us that the
examiner has failed to carry her burden establishing a prima
facie case of obviousness and accordingly that the examiner
improvidently shifted to the appellant the burden of
establishing "criticality" or nonobviousness. Under these
Appeal No. 1997-2175
Application No. 08/201,522
6
circumstances, it is clear that the examiner's § 103 rejection
is inappropriate and cannot be sustained.
Appeal No. 1997-2175
Application No. 08/201,522
7
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
bae
Appeal No. 1997-2175
Application No. 08/201,522
8
Robert L. Minier
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003