Ex Parte Henkel

Board of Patent Appeals and Interferences

Dec 18, 2008

10666440 (B.P.A.I. Dec. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TIMOTHY JOHN HENKEL
__________

Appeal 2008-5916
Application 10/666,440
Technology Center 1600
__________

Decided: December 18, 2008
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of treating recurrences of acute exacerbations of chronic bronchitis. The
Examiner rejected some claims as anticipated, and the remainder of the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-5916
Application 10/666,440

STATEMENT OF THE CASE
The invention involves administering gemifloxacin to treat patients
suffering from recurrences of acute exacerbations of chronic bronchitis.
Representative Claim 1 reads:
1. A method of reducing the recurrences of acute exacerbations of
chronic bronchitis (AECB) in a patient in need thereof comprising
administering a therapeutically effective amount of gemifloxacin, or a
pharmaceutically acceptable salt thereof.
Claims 1-42 are on appeal.
The claims were rejected as follows:
• Claims 1, 4-8, 11-26, 34 and 35 were rejected under 35 U.S.C.
§ 102(a) as anticipated by File.1
• Claims 2, 3, 9, 10, 27-33 and 36-42 were rejected under 35 U.S.C.
§ 103(a) over the combined disclosures of File and Kim et al.2
THE ISSUE: FILE et al.’s PUBLICATION DATE
The Examiner rejected all the claims based on the File article alone or
in combination with another reference. According to the Examiner, File is
prior art because the August 2000 issue of the Journal of Chemotherapy
(“the Journal”) containing the File article would have been available to the
public before Appellant’s Sept. 15, 2000 priority date. (Ans. 6)
Appellant’s sole contention is that the File article is not available as
prior art under any subsection of 35 U.S.C. § 102. (App. Br. 9) According

1 T. File et al., Gemifloxacin versus Amoxicillin/Clavulanate in the
Treatment of Acute Exacerbations of Chronic Bronchitis, 12 JOURNAL OF
CHEMOTHERAPY 314-25 (August 2000).
2 Kim et al., WO 98/42705 (October 1998).
2
Appeal 2008-5916
Application 10/666,440

to Appellant, there is no evidence that the File reference was received by a
member of the public before Sept. 15, 2000, and “[a] journal article is not
available as prior art until it is received by a member of the public.” (App.
Br. 10).
The issue is whether the Examiner established the File article was
accessible to the public before Sept. 15, 2000.
FINDINGS OF FACT
1. The File article was published in the August 2000 issue of the Journal
of Chemotherapy. (Evid. App.)
2. Ms. Kristine Hensle, Reference Librarian at the USPTO, emailed the
Journal and asked for “the publication date (print and online, if the
latter is applicable) and the mail date (date the issue was mailed from
the printer to the subscribers)” of the File article. (Evid. App.)
3. The Managing Editor for the Journal, Ms. Mary C. Forrest, confirmed
the File article was in the August 2000 issue and further responded
“[i]t is in our archives on our website and the print edition was mailed
to subscribers around September 1, 2000.” (Evid. App.)
4. Appellant provided a copy of pages from the August 2000 issue of the
Journal showing one of the pages stamped “LIBRARY NOV 03 2000
National Institutes of Health.” (Evid. App.)
PRINCIPLES OF LAW
A person shall be entitled to a patent unless—
(a) the invention was known or used by others in this country, or
patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for a patent.
35 U.S.C. § 102(a) (emphasis added).
3
Appeal 2008-5916
Application 10/666,440

“The statutory phrase ‘printed publication’ has been interpreted to
mean that before the critical date the reference must have been sufficiently
accessible to the public interested in the art; dissemination and public
accessibility are the keys to the legal determination whether a prior art
reference was ‘published.’ . . . Evidence of routine business practice can be
sufficient to prove that a reference was made accessible before a critical
date. . . . If accessibility is proved, there is no requirement to show that
particular members of the public actually received the information.”
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir.
1988) (citations omitted).
ANALYSIS
The Examiner argues that if the August 2000 issue of the Journal was
mailed to subscribers on Sept. 1, 2000, a Friday, it would have been
available to subscribers via postal service no later than Sept. 4 or 5, 2000.
(Ans. 6). The undisputed evidence is that the Journal was mailed about
Sept. 1, 2000. We agree that the Examiner made a sufficient showing of
routine business practice that the article was accessible to a subscriber before
Sept. 15, 2000.3

3 We give no weight to the Examiner’s arguments about electronic access
because the Journal’s Managing Editor made no specific statement about
electronic access in the critical time period before Sept. 15, 2000. The
Journal’s website, provided in the Managing Editor’s signature block, touts
“Online publication ahead of print” and “Online version of the Journal
published weeks before the print version.” (www.jchemother.it, last visited
Dec. 11, 2008). The Managing Editor did not answer the USPTO
Librarian’s question about online access in the critical time period. There is
4
Appeal 2008-5916
Application 10/666,440

Appellant points to the Manual of Patent Examining Procedure
(MPEP) at § 2128.02 as setting out a rule that a journal article becomes
available as prior art on the date it is received by at least one member of the
public.4 The evidence in this case is that subscribers had access to the File
article before the critical date. Proof of reception by a particular subscriber
is not required. “If accessibility is proved, there is no requirement to show
that particular members of the public actually received the information.”
Constant, 848 F.2d at 1568.
Appellant’s rebuttal evidence is a date stamp alleged to show that the
library at the NIH did not receive the August 2000 issue of the Journal until
Nov. 3, 2000. (App. Br. 9) Assuming that the NIH library uses the stamp to
record the receipt date, this is not evidence that other subscribers did not
receive the August 2000 issue before Sept. 15. (Ans. 6) Moreover, § 102(a)
refers to “publication in this or a foreign country.” After the August 2000
issue of the Journal was mailed around Sept. 1, 2000, whether in Florence,
Italy, where the Journal office is now located, or in another country, some
subscribers likely had access to it before Sept. 15, 2000.

no evidence that the online publication and access features described on the
current website were available in September 2000.
4 The MPEP cites In re Schlitter, 234 F.2d 882 (CCPA 1956), in which
the issue involved the “known or used by others in this country” provision of
§ 102(a), not the “printed publication” provision. The C.C.P.A. later
described the public availability portion of the Schlitter opinion as “clearly
dictum,” but nevertheless agreed that “[t]he knowledge contemplated by
section 102(a) must be accessible to the public.” In re Borst, 345 F.2d 851,
854 (CCPA 1965) (overruling Schlitter’s holding that knowledge of actual
reduction to practice was required).
5
Appeal 2008-5916
Application 10/666,440

CONCLUSIONS OF LAW
We conclude that the Examiner established that the File article was
accessible to the public before Sept. 15, 2000.
SUMMARY
We affirm the rejection of Claims 1, 4-8, 11-26, 34 and 35 under
35 U.S.C. § 102(a) as anticipated by File; and we affirm the rejection of
Claims 2, 3, 9, 10, 27-33 and 36-42 under 35 U.S.C. § 103(a) over the
combined disclosures of File and Kim et al.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

dm

FINNEGAN, HENDERSON, FARABOW, GARRETT
& DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON DC 20001-4413

6