Ex Parte Howard

Patent Trial and Appeal Board

Feb 3, 2015

12135254 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD GEORGE HOWARD, JR.
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Appeal 2013-003729
Application 12/135,254
Technology Center 1700
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Before TERRY J. OWENS, GEORGE C. BEST, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2, 4–10, and 13–17. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
The Invention
Appellant’s invention relates to laminates prepared in part from
continuous films of chitosan, wherein the chitosan has been reacted with at
least one polyhydroxyalkyl compound. Spec. 1:6–8. Claim 2 is

1 Appellant identifies E.I. DuPont de Nemours and Company as the real
party in interest. App. Br. 2.
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Application 12/135,254

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representative of the claims on appeal, and is reproduced below from the
Claims Appendix to the Appeal Brief:
2. A selectively permeable protective structure comprising:
(a) a continuous chitosan/polyhydroxyalkyl film and
(b) at least one layer of fabric,
wherein the film is obtained by a process comprising the steps:
(i) subjecting chitosan and at least one polyhydroxyalkyl
reactant to heat to promote a reaction between the chitosan and
the at least one polyhydroxyalkyl reactant to form a crude
chitosan/polyhydroxyalkyl film, and
(ii) extracting the crude film with water to remove
unreacted polyhydroxyalkyl reactant to obtain the
chitosan/polyhydroxyl[2] film.
The References
Sparkes US 4,572,906 Feb. 25, 1986
Hosoda US 6,746,762 B1 June 8, 2004
Howard US 2007/0196404 A1 Aug. 23, 2007
The Rejections
1. Claims 2, 5, 6, 9, 10, and 13–15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hosoda in view of Sparkes; and
2. Claims 2, 4–10, and 13–17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Howard in view of Sparkes.

2 The word “polyhydroxyl” in claim 2 appears to be a typographical error,
which Appellant should correct if prosecution of Appellant’s Application
continues.
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OPINION
We reverse the Examiner’s rejections of claims 2, 4–10, and 13–17
under 35 U.S.C. § 103(a).
Rejection 1. The Examiner finally rejected claims 2, 5, 6, 9, 10, and
13–15 as obvious over Hosoda in view of Sparkes. Ans. 3–4.
Because we reverse this rejection, we need only address independent
claim 2. Claim 2 requires a selectively permeable protective structure
comprising a continuous chitosan/polyhydroxyalkyl film and at least one
layer of fabric. App. Br. 6 (Claims App’x).
Hosoda discloses a selectively permeable protective structure
comprising a continuous chitosan laminate film including three layers: an
outer layer, an intermediate layer, and an inner layer. Ans. 3; Hosoda 1:65–
2:12. The film can be used with a substrate layer comprising fabric to form
the selectively permeable protective structure. Hosoda 3:57–63.
Sparkes discloses a surgical dressing for protecting wounds during the
healing process, comprising a blend of gelatin and chitosan. Sparkes 3:21–
29 and abstract. Because unplasticized gelatin/chitosan films are relatively
stiff, Sparkes teaches adding compatible plasticizers, such as glycerol or
sorbitol, to the chitosan/gelatin mixture to provide flexibility to the film. Id.
at 4:36–41, 10:47–11:25, Table 2; Ans. 4.
The Examiner asserts that Appellant’s claims “are not a different
product from that [disclosed by] the Sparkes reference[,]” because Appellant
claims a chitosan/polyhydroxyalkyl film and Sparkes discloses a
chitosan/polyhydroxyalkyl film, wherein the polyhydroxyalkyl compound is
sorbitol or glycerol. Ans. 9.
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Appellant does not merely claim a chitosan/polyhydroxyalkyl film,
but rather, a chitosan/polyhydroxyalkyl film that is the product of a reaction
between chitosan and at least one polyhydroxyalkyl reactant. App. Br. 6
(Claims App’x). Consequently, the Examiner must establish that the
claimed reaction product (i.e., chitosan/polyhydroxyalkyl film) would result
from following Sparkes’s teachings or suggestions. In re Thorpe, 777 F.2d
695, 697 (Fed. Cir. 1985) (explaining that the Examiner has the initial
burden of showing that a product recited in a product-by-process claim is the
same as or obvious from a prior art product).
The Examiner asserts that Sparkes discloses “the process of
subjecting chitosan and at least one polyhydroxyalkyl reactant (sorbitol or
glycerol) to heat” (i.e., a chitosan/polyhydroxyalkyl film that is the reaction
product of the chitosan and at least one polyhydroxyalkyl compound). Ans.
8. The Examiner, however, does not point to any portion of Sparkes to
support this factual assertion. To the contrary, as Appellant argues, Sparkes
indicates that the chitosan/polyhydroxyalkyl film is made by physically
mixing chitosan and a polyhydroxyalkyl compound. Reply Br. 3; Sparkes
4:36–41, 10:47–11:25. As such, the Examiner has not established that
Appellant’s chitosan/polyhydroxyalkyl film formed by reacting chitosan
with the polyhydroxyalkyl compound is the same as or obvious from
Sparkes’s chitosan/polyhydroxyalkyl film made by physically mixing
chitosan with glycol and sorbitol.
Accordingly, we reverse the rejection of independent claim 2 under
35 U.S.C. § 103(a), as well as claims 5, 6, 9, 10, and 13–15, which depend
therefrom.
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Rejection 2. The Examiner finally rejected claims 2, 4–10, and 13–
17 as obvious over the combination of Howard and Sparkes. Ans. 4–7.
Appellant argues that Howard is disqualified as prior art under
35 U.S.C. § 103(c), because Howard only qualifies as prior art under
35 U.S.C. § 102(e) and Appellant’s Application and Howard “were both
subject to assignment to E.I. DuPont de Nemours and Co. at the time the
inventions were made.” App. Br. 6.
The Examiner does not respond to this argument in the Examiner’s
Answer.
Section 103(c)(1) states:
Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections (e), (f), and (g)
of section 102 of this title, shall not preclude patentability under
this section [103] where the subject matter and the claimed
invention were, at the time the claimed invention was made,
owned by the same person or subject to an obligation of
assignment to the same person.
35 U.S.C. § 103(c)(1).
The Manual of Patent Examining Procedure sets forth a procedure for
establishing common ownership of, or the obligation to commonly assign,
patent applications and provides, in relevant part:
Applications and references (whether patents, patent
applications, patent application publications, etc.) will be
considered by the examiner to be owned by, or subject to an
obligation of assignment to the same person, at the time the
invention was made, if the applicant(s) or an attorney or agent
of record makes a statement to the effect that the application
and the reference were, at the time the invention was made,
owned by, or subject to an obligation of assignment to, the
same person.
MPEP § 706.02(l)(2)(II) (8th ed., rev. 9, 2012).
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In the present case, the affirmative statement by Appellant that
Howard and the claimed invention were subject to an obligation of
assignment to the same entity at the time the inventions were made is
sufficient to overcome the section 103(a) rejection because Howard is
disqualified as prior art by section 103(c).
Accordingly, we reverse the rejection of claims 2, 4–10, and 13–17
under 35 U.S.C. § 103(a).
DECISION/ORDER
The Examiner’s rejection of claims 2, 5, 6, 9, 10, and 13–15 under
35 U.S.C. § 103(a) over Hosoda and Sparkes is reversed.
The Examiner’s rejection of claims 2, 4–10, and 13–17 under
35 U.S.C. § 103(a) over Howard and Sparkes is reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED

cdc