Ex Parte Hassan et alDownload PDFPatent Trial and Appeal BoardSep 16, 201310529984 (P.T.A.B. Sep. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte EMADELDIN M. HASSAN, AQEEL A. FATMI, and NACHIAPPAN CHIDAMBARAM __________ Appeal 2011-013217 Application 10/529,984 Technology Center 1600 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N. FREDMAN, Administrative Patent Judges.1 PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal2 is again before us, on remand from the United States Court of Appeals for the Federal Circuit (see Order (issued August 2, 2013)). Having reviewed the appealed rejections in light of the remand Order, we reverse. 1 Administrative Patent Judge Stephen Walsh, who participated in the original and rehearing decisions in this case, has since retired. 2 Appellants identify Banner Pharmacaps Inc., as the real party in interest (App. Br. 1). Appeal 2011-013217 Application 10/529,984 2 DISCUSSION Claims 20 and 24-40 are on appeal (App. Br. 1-2). Claim 20, the only independent claim, is representative and reads as follows (emphasis added): 20. An enteric soft capsule shell formed from a gel mass composition comprising: (a) a film-forming, water-soluble polymer, (b) an acid-insoluble polymer; and (c) an alkaline aqueous solvent; wherein the ratio of acid-insoluble polymer to film-forming, water-soluble polymer is from 30:70 to 45:55 by weight; the final pH of the gel mass is less than or equal to about 9 pH units; and the moisture content of the enteric soft capsule shell formed from the gel mass composition is from about 2% to about 10%. The original Decision in this appeal affirmed all obviousness rejections based on the Okajima3 reference (see Decision 4-7 (entered October 10, 2012)). On request for reconsideration, this Board reaffirmed that result (see, generally, Decision on Request for Rehearing (entered December 24, 2012)). Having reviewed the rejections based on Okajima in light of the remand Order, we now reverse those rejections for the reasons discussed below. The Examiner rejected claim 20, as well as a number of its dependent claims, under 35 U.S.C. § 103(a) as obvious over Okajima, Ullah ‘188,4 and 3 Yakutaro Okajima, US 4,138,013, issued Feb. 6, 1979. 4 Ismat Ullah et al., US 2001/0051188 A1, published Dec. 13, 2001. Appeal 2011-013217 Application 10/529,984 3 Matthews5 (Ans. 10-12). The Examiner’s position, essentially, was that Ullah suggested preparing a capsule of the type described in Okajima using a gel mass having a pH encompassed by claim 20, that Matthews suggested preparing such capsules with a moisture content encompassed by the claim, and that the range of polymer ratios recited in claim 20 would have been arrived at through obvious optimization based on the teachings in Okajima (see id.). The Examiner reiterated this rejection over Okajima, Ullah ‘316,6 and Matthews (see id. at 13-14). In separate rejections, the Examiner cited an additional reference as evidence that limitations recited in dependent claim 26 would have been obvious features of capsules of the type described in Okajima (see id. at 12, 14-15). Among other things, Appellants argued that Okajima “teaches hard shell pharmaceutical capsules with enteric properties formed by dip molding” (App. Br. 16). The Examiner responded by stating only that “Appellant’s independent claim is not drawn to a method of producing the enteric capsule” (Ans. 22). We are not persuaded that the Examiner has adequately explained why Okajima, even when viewed in light of the other references cited, would have made the soft capsule required by claim 20 obvious to an ordinary artisan. As Appellants point out, Okajima discloses “[p]harmaceutical capsules with telescopically engaged body and cap portions, also known as hard shell capsules, having enteric properties” (Okajima, abstract (emphasis 5 James W. Matthews et al., US 4,816,259, issued Mar. 28, 1989. 6 Ismat Ullah et al., US 6,331,316 B1, issued Dec. 18, 2001. Appeal 2011-013217 Application 10/529,984 4 added)). As Appellants also point out, Okajima expressly states that the “[t]he term ‘capsules’ means hard shell capsules” (id. at col. 1, ll. 29-30). Example 1 of Okajima also describes preparing “hard shell capsules” (id. at col. 5, ll. 26-27). We note, as the Examiner argues, that claim 20 does not recite a process of making a capsule. Claim 20 does, however, recite “[a]n enteric soft capsule shell.” In contrast, Okajima’s disclosure is expressly directed to hard capsules, as noted above. Because the Examiner has not clearly explained why Okajima’s disclosure of hard capsules would have suggested the soft capsules required by claim 20, even when viewed in light of the teachings of the other references, we reverse each of the Examiner’s obviousness rejections based on Okajima. REVERSED cdc Copy with citationCopy as parenthetical citation