Ex parte HAYNES et al.

Board of Patent Appeals and Interferences

Sep 22, 1997

08035002 (B.P.A.I. Sep. 22, 1997)

Application for patent filed March 22, 1993.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CARLA A. HAYNES
and WILSON HARVEY
_____________
Appeal No. 95-4890
Application 08/035,0021
______________
ON BRIEF
_______________
Before WINTERS and WILLIAM F. SMITH, Administrative Patent
Judges and McKELVEY, Senior Administrative Patent Judge.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner’s decision
rejecting claims 2 through 9, 11 and 12, which are all of the
claims remaining in the application.
Appeal No. 95-4890
Application 08/035,002
2
REPRESENTATIVE CLAIMS
Claims 11 and 12, which are illustrative of the subject
matter on appeal, read as follows:
11. A method of treating burns or wounds comprising
applying to the surface of the burn or wound an effective
amount of an oil-in-water emulsion comprising from 1% to 50%
by weight of an oil, from 0.5% to 25% by weight of an
insoluble protein and from 25% to 98.5% by weight of water.
12. An ointment for the treatment of burns or wounds
comprising an oil-in-water emulsion comprising from 1% to 50%
by weight of an oil, from 0.5% to 25% by weight of an
insoluble protein and from 25% to 98.5% by weight of water.
THE REFERENCES
As a preliminary matter, we find it necessary to clarify
the record respecting the citation of a Japanese reference
relied on by the examiner. This reference is Koho No. 60-
34923, which is an examined patent application published
August 12, 1985, based on Application No. 53-159001 filed
December 20, 1978. That same application was “Laid open” June
Appeal No. 95-4890
Application 08/035,002
The examiner cites the Yanagibashi reference in the Answer, page 2, last line.2
Likewise, applicants cite this reference in their Brief before the Board, page 2, last
paragraph. Neither citation is correct.
3
25, 1980, as Laid-open Patent Application (Kokai) No. S 55-
84167. We shall hereinafter refer to this reference by the
name of its lead inventor, namely, Yanagibashi. For the2
purposes of this appeal, we have relied on an English
Translation of Kokai No. S 55-84167 which was supplied by
applicants and is of record. We further observe that the
Board obtained an English Translation of Koho No. 60-34923,
after this case was appealed. For the sake of completeness,
we enclose a copy of the latter translation with this opinion.
In rejecting the appealed claims on prior art grounds,
the examiner also relies on U.S. Patent No. 3,435,117, issued
March 25, 1969, to Joseph Nichols (Nichols).
THE ISSUE
The issue presented for review is whether the examiner
erred in rejecting claims 2 through 9, 11 and 12 under 35 USC
§ 103 as unpatentable over the combined disclosures of Nichols
and Yanagibashi.
Appeal No. 95-4890
Application 08/035,002
4
DELIBERATIONS
Our deliberations in this matter have included evaluation
and review of the following materials:
(1) The instant specification, including all of the
claims on appeal;
(2) Applicants’ Brief before the Board;
(3) The Examiner’s Answer; and
(4) The Nichols and Yanagibashi references relied on
by the examiner.
On consideration of the record, including the above-
listed materials, we affirm the rejection of claims 2 through
9 and 12. We vacate the rejection of claim 11.
CLAIMS 2 THROUGH 9 AND 12
As stated in the Brief before the Board, page 3, section
V, “[f]or purposes of this Appeal, claims 12, and 2-9 are
grouped together”. Accordingly, for the purposes of this
appeal, we shall treat dependent claims 2-9 as standing or
falling together with claim 12.
Although the Examiner’s Answer is not a model of clarity,
Appeal No. 95-4890
Application 08/035,002
5
nevertheless, the examiner invites attention to Example V of
Nichols (Answer, pages 3 and 4). Likewise, applicants focus
on Example V of Nichols in the Brief before the Board, pages 5
and 6. We agree with applicants and the examiner that the
Example V composition of Nichols constitutes the closest prior
art with respect to composition claim 12.
In Example V, Nichols discloses an oil-in-water emulsion
containing 500 parts by weight liquid petrolatum (oil) where
the total composition contains 1,000 parts. That is, the
Example V emulsion contains 50% by weight oil which meets the
terms of claim 12. Without question, the amount of water in
Example V is within the range recited in claim 12 (25% to
98.5% by weight water). The only remaining question is the
precise percent by weight of collagen solids contained in the
oil-in-water emulsion of Example V.
The collagen dispersion used in Example V is that of
Example I of Nichols. In Example I, Nichols discloses the
following:
To one hundred parts of a mass of
swollen collagen fibrils, prepared as
described in Example I of United States
Patent No. 3,123,482 is slowly added with
Appeal No. 95-4890
Application 08/035,002
6
stirring 640 parts of a dilute solution of
lactic acid in water (1.2% lactic acid).
The resulting dispersion of swollen
collagen fibrils is homogenized and
filtered through a 7-mil filter screen.
Thus, to determine the percent by weight of collagen solids
contained in the oil-in-water emulsion of Example V, one would
have to obtain U.S. Patent No. 3,123,482, review Example I
therein, and make an appropriate calculation. On this record,
neither applicants nor the examiner have done so.
Be that as it may, there is a factual basis on this
record to conclude that the percent by weight of collagen
solids in the oil-in-water emulsion of Example V is identical
or substantially identical to the percent by weight of
insoluble protein recited in claim 12. See column 1, lines 59
through 62 of Nichols, stating that
Preferably, the amount of collagen present
in said composition will amount to from
about 0.2% to about 0.9% by weight
(calculated on the basis of dry collagen
solids).
That preferred range brackets the lower end of the range
recited in claim 12, i.e., 0.5% by weight of insoluble
Appeal No. 95-4890
Application 08/035,002
7
protein. Under these circumstances, it is reasonable to shift
the burden of persuasion to applicants to establish that the
oil-in-water emulsion of claim 12 patentably distinguishes
from the oil-in-water emulsion disclosed by Nichols in Example
V. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977).
Applicants argue that the claim 12 oil-in-water emulsion
is intended for use as an ointment for treating burns or
wounds, whereas the oil-in-water emulsion disclosed by Nichols
in Example V is described as a “laxative product”. First, the
terms “an ointment for the treatment of burns or wounds”
merely set forth the intended use for, or a property inherent
in, applicants’ composition. Those terms do not differentiate
the claimed composition from those known to the prior art,
i.e., oil-in-water emulsions containing the same percentages
by weight of oil, insoluble protein, and water. In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974).
Second, assuming arguendo that the percent by weight of
collagen solids in the Example V emulsion of Nichols does not
meet the terms of claim 12, nevertheless, it would have been
obvious to vary that amount per the teachings in Nichols,
Appeal No. 95-4890
Application 08/035,002
In the Examiner’s Answer, page 2, Section (5), the examiner states that all of3
the appealed claims are presumed to stand or fall together because applicants fail to
8
column 1, lines 59 through 62. In this manner, a person
having ordinary skill in the art would have arrived at the
subject matter sought to be patented in claim 12 including a
percent by weight of insoluble protein at the lower end of the
range recited therein (0.5%). In this regard, the motivation
to modify a prior art reference to arrive at the claimed
subject matter does not have to be identical to that of
applicants to establish obviousness. See In re Kemps, 97 F.3d
1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
For these reasons, we affirm the examiner’s decision
rejecting claim 12 under 35 USC § 103. As previously
indicated, claims 2 through 9 fall together with claim 12.
CLAIM 11
As stated in the Brief before the Board, page 3, section
V, claim 11 stands alone. Further, at pages 7 and 8 of the
Brief, applicants argue claim 11 separately. Accordingly, for
the purposes of this appeal, we have treated claim 11
separately.3
Appeal No. 95-4890
Application 08/035,002
present reasons supporting the separate patentability of any claim. This is factually
incorrect.
9
All of the appealed claims, including claim 11, stand
rejected under 35 USC § 103 based on the combined disclosures
of Yanagibashi and Nichols. However, the examiner does not
present a cogent explanation why the method of treating burns
or wounds
defined in claim 11, would have been obvious from a
consideration of Yanagibashi and Nichols.
In setting forth the rejection under 35 USC § 103, the
examiner states that
it would be [sic, would have been] obvious
to one of ordinary skill in the art at the
time of the invention, motivated by a
reasonable expectation of success, to
obtain the [claimed] o/w emulsion because
JP-85/034923 [Yanagibashi] discloses water,
oil, drug, a protein (gelatin), alginate,
etc.; the motivation to substitute one
protein with another (gelatin for collagen)
is derived from Nichols (column 1, lines
35-44, Examples III and V).
See the Examiner’s Answer, paragraph bridging pages 3 and 4.
On its face, that statement of obviousness is directed to the
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Application 08/035,002
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claimed composition, not to the claimed method. In fact, that
statement does not mention claim 11.
The only specific reference to claim 11 in the Examiner’s
Answer is found at page 7. There, the examiner states that
The assertion that claim 11 is directed to
a method and is therefore somehow not
obvious is not found persuasive. The
claimed method is inherent to the claimed
composition because “treating burns or
wounds” with the o/w emulsion ointments
disclosed in the art is within the scope of
the cited art. Contrary to the appellants’
statement, no significant advance in the
treatment of burns and wounds has been
accomplished. For example, no criticality
of the specific concentrations of the
claimed ingredients has been established.
The examiner’s treatment of claim 11 is incomprehensible.
Apparently, the standard applied by the examiner is that “no
significant advance in the treatment of burns and wounds has
been accomplished” (emphasis in original). That, however, is
not the statutory standard of non-obviousness. See 35 USC §
103; Graham v. John Deere Co., 383 U.S. 1 (1966).
In light of the foregoing, it is our judgment that the
patentability of claim 11 has not been properly determined on
this record and that a justiciable issue has not been
presented for review. Accordingly, we vacate the examiner’s
Appeal No. 95-4890
Application 08/035,002
11
decision rejecting claim 11 under 35 USC § 103 based on the
combined disclosures of Yanagibashi and Nichols.
CONCLUSION
For the reasons set forth in the body of this opinion, we
affirm the rejection of claims 2 through 9 and 12 under 35 USC
§ 103 as unpatentable over the combined disclosures of
Yanagibashi and Nichols. We vacate the rejection of claim 11
on the same grounds. On return of this application to the
examining corps, the examiner should reevaluate the
patentability of claim 11 using appropriate legal standards.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
VACATED-IN-PART
Appeal No. 95-4890
Application 08/035,002
12
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
Robert L. Minier
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New Brunswick, NJ 08933-7003