Ex Parte Hrkach

Board of Patent Appeals and Interferences

Feb 9, 2011

10867375 (B.P.A.I. Feb. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY S. HRKACH
__________

Appeal 2010-000380
Application 10/867,375
Technology Center 1600
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Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000380
Application 10/867,375

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This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 43-56 and 58-67.2 We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are drawn to a method of delivering an agent to the
pulmonary system of a compromised patient, and may be found in the
Claims Appendix to the Appeal Brief (App. Br. 22-24).
The following grounds of rejection are before us for review:
I. Claims 43-56 and 58-79 stand rejected under 35 U.S.C. § 112,
second paragraph.
II. Claims 43-56 and 58-79 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-71 of U.S. Patent No. 6,766,799 to
Edwards3 (Edwards ’799) in view of Edwards ’799,
Radhakrishnan,4 and Tarara.5
III. Claims 43-56 and 58-79 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being

2 Claims 43-79 are pending, and claim 57 stands withdrawn from
consideration. (App. Br. 2.) Appellant states that claims 68-79 are not being
appealed (id.), thus upon return to the Examiner, those claims should be
cancelled. Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential).
3 Edwards et al., US 6,766,799 B2, July 27, 2004.
4 Radhakrishnan et al., US 5,192,528, March 9, 1993.
5 Tarara et al., US 6,565,885 B1, May 20, 2003.
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unpatentable over claims 15, 20, and 27 of U.S. Patent No.
6,732,7326 in view of Edwards ’799, Radhakrishnan, and Tarara.
IV. Claims 43-56 and 58-79 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-17 of U.S. Patent No. 7,146,9787 in
view of Edwards ’799, Radhakrishnan, and Tarara.
We reverse all of the above rejections.
ISSUE (Rejection I)
The Examiner finds that “it is unclear what are the metes and bounds
of the following claimed ranges: (1) less than about 20 liters per minute and
(2) at least about 50%,” because, according to the Examiner, the “phrases ‘at
least about’ and ‘less than about’ . . . simultaneously claim[ ] two different
ranges” (Ans. 4).
The Examiner further finds that claims 44, 47-49, 54, 55, 63, 65 and
66, are “vague and indefinite, because the metes and bounds of the claimed
ranges cannot be determined unambiguously, due to the combination of the
vague descriptor ‘about’ and the following phrases/terms: between, less
than, and greater than” (id.).
Appellant argues that the scope of the claims is clear, and would be
understood by the skilled practitioner (see App. Br. 5-7).
The issue to be decided is thus whether the use of “about” renders the
claims on appeal indefinite?

6 Edwards et al., US 6,732,732 B2, May 11, 2004.
7 Edwards et al., US 7,146,978 B2, December 12, 2006.
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PRINCIPLES OF LAW
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir.
1993). Claims are in compliance with 35 U.S.C. § 112, second paragraph, if
“the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits.” Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986). “Such
broadening usages as ‘about’ must be given reasonable scope; they must be
viewed by the decisionmaker as they would be understood by persons
experienced in the field of the invention. Although it is rarely feasible to
attach a precise limit to ‘about,’ the usage can usually be understood in light
of the technology embodied in the invention.” Modine Manufacturing Co. v.
U.S. ITC, 75 F.3d 1545, 1554 (Fed. Cir. 1996)(internal citations omitted).

ANALYSIS
While we agree with the Examiner that the Specification does not
define the term “about” (Ans. 9), we conclude that the metes and bounds of
the claims would be reasonably clear to the skilled artisan. To the extent
that the Examiner is concerned about the breadth of the claims, “breadth is
not to be equated with indefiniteness.” In re Miller, 441 F.2d 689, 693
(CCPA 1971); see also In re Hyatt, 708 F.2d 712, 714-15 (Fed. Cir. 1983).
We acknowledge that the phrase “at least about 160,000” has been
held to be indefinite based on a specific set of facts, see Amgen Inc. v.
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Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991). However,
the Amgen court specifically “caution[ed] that [its] holding that the term
‘about’ renders indefinite claims 4 and 6 should not be understood as ruling
out any and all uses of this term in patent claims. It may be acceptable in
appropriate fact situations . . . , even though it is not here.” Id. The
Examiner has not explained why the specific facts of this case cause the
scope of the claims to be indefinite.

CONCLUSION OF LAW
We conclude that the use of “about” does not render the claims on
appeal indefinite. We thus reverse the rejection under 35 U.S.C. § 112,
second paragraph (Rejection I).

ISSUE (Rejections II-IV)
The Examiner relies on Edwards ’799 as prior art in making all of the
obviousness-type double patenting rejections (Ans. 4-9). Specifically, the
Examiner has relied upon the disclosure of Edwards ’799 in making the
obviousness-type double patenting rejection over Edwards ’799 (see
Rejection II), and has relied upon it as prior art in making the remainder of
the obviousness-type double-patenting rejections (see Rejections III and IV).
Appellant argues that in the obviousness-type double patenting
rejection over Edwards ’799 that the Examiner has improperly relied upon
the disclosure of that patent in making the rejection (App. Br. 8). As to the
other obviousness-type double-patenting rejections, Appellant argues that
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Edwards ’799 is not available as a prior art secondary reference, as the
instant application and the ’799 patent are commonly owned (App. Br. 9.)
Thus, the issues before us are: Whether the Examiner properly relied
on the disclosure of the ’799 patent in making the obviousness-type double
patenting rejection over the ’799 patent? And whether the Examiner
properly relied on the disclosure of the ’799 patent in making the
obviousness-type double patenting rejection over the ’732 and ’978 patents?

PRINCIPLES OF LAW
The key question in any obviousness double patenting analysis is:
“Does any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?”
General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)).
As stated by our reviewing court in In re Braat, 937 F.2d 589, 592-93 (Fed.
Cir. 1991) (citation omitted):
Obviousness-type double patenting is a judicially created
doctrine intended to prevent improper timewise extension of
the patent right by prohibiting the issuance of claims in a
second patent which are not “patentably distinct” from the
claims of a first patent.

An analysis analogous to an obviousness analysis under 35 U.S.C.
§ 103(a) comes into play during the step of determining the obviousness of
the “difference” between the claimed invention and the patented invention.
See Studiengesellschaft Kohle mbH v. N. Petrochemical Co., 784 F.2d 351,
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355 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).
The disclosure of a patent cited in support of a double patenting rejection
cannot be used as though it were prior art, even where the disclosure is
found in the claims. In re Braat, 937 F.2d 589, 594 n.5 (Fed. Cir. 1991. “It
is the claims, not the specification, that define an invention. … And it is the
claims that are compared when assessing double patenting.” Ortho
Pharmaceutical Corp. v. Smith, 959 F.2d 936, 943 (Fed. Cir. 1992).
However, the disclosure of a patent may be used to learn the meaning of
terms and in “interpreting the coverage of [a] claim.” Vogel, 422 F.2d at
441.
ANALYSIS
Appellant argues that the ’799 patent falls within the exception of 35
U.S.C. § 103(c), as the application and the patent were commonly owned at
the time of invention, and thus the ’799 patent cannot be relied upon as prior
art in making the obviousness-type double patenting rejections (App. Br. 9).
The Examiner relies on MPEP8 § 2146, asserting that section “clearly states
that the 103(c) exception cannot be used to overcome or to avoid a double
patenting rejection” (Ans. 15.)
35 U.S.C. § 103(c) states, in relevant part, that:
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 where the subject matter and the claimed invention

8 MANUAL OF PATENT EXAMINING PROCEDURE, Eighth ed., Rev. 7 (July
2008), was in effect at the time of the final rejection issued Aug. 15, 2008.
Revision 8 (July 2010) is in effect at the time of this Decision. The texts
quoted in this Decision are the same in both Revisions.
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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). As noted by the Court of Appeals for the Federal
Circuit, “[i]t is historically very clear that this provision was intended to
avoid the invalidation of patents under § 103 on the basis of the work of
fellow employees engaged in team research.” Oddzon Products, Inc. v. Just
Toys, Inc., 122 F.3d 1396,1403 (Fed. Cir. 1997).
The Section of the MPEP relied upon by the Examiner, MPEP § 2146,
states:
35 U.S.C. 103(c), as amended by the CREATE Act, applies
only to subject matter which qualifies as prior art under 35
U.S.C. 102(e), (f), or (g), and which is being relied upon in a
rejection under 35 U.S.C. 103. If the rejection is anticipation
under 35 U.S.C. 102(e), (f), or (g), 35 U.S.C. 103(c) cannot be
relied upon to disqualify the subject matter in order to
overcome or prevent the anticipation rejection. Likewise,
35 U.S.C. 103(c) cannot be relied upon to overcome or prevent
a double patenting rejection. See 37 CFR 1.78(c) and MPEP §
804.

Section 804, referenced by § 2146, states:
When considering whether the invention defined in a claim of
an application would have been an obvious variation of the
invention defined in the claim of a patent, the disclosure of the
patent may not be used as prior art. General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1279, 23
USPQ2d 1839, 1846 (Fed. Cir. 1992). This does not mean that
one is precluded from all uses of the patent disclosure. The
specification can be used as a dictionary to learn the meaning of
a term in the patent claim.

MPEP § 804(II)(B)(1)
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Thus, when the purpose of § 103(c) is considered with the case law
stating that the disclosure of a commonly owned application cannot be used
as prior art in determining obviousness, we agree with Appellant that § 2146
of the MPEP cannot be read as stating that the disclosure of a commonly
owned patent that meets the requirements of 35 U.S.C. § 103(c)9 may be
used as prior art in making an obviousness-type double patenting rejection.
The statement in § 2146 of the MPEP that “35 U.S.C. 103(c) cannot be
relied upon to overcome or prevent a double patenting rejection” thus can
only be read to mean that the claims of a patent that meet the requirements
of 35 U.S.C. § 103(c) can still be used as the basis of an obviousness-type
double patenting rejection, not that the disclosure of the patent may be used
as prior art in setting forth why the claims of the same or another commonly
owned patent are obvious over the claims under examination. We thus agree
with Appellant that the disclosure of the ’799 patent cannot be used as prior
art in determining whether the claims on appeal are obvious over the claims
of the ’799, ’732, and ’978 patents.
To the extent that the Examiner is using the disclosure of the ’799
patent to interpret and define the claims of the ’799 patent (see Rejection II),
the Examiner cites to portions of the disclosure of the ’799 patent, but does
not explain how they are being relied upon only to interpret the claims of the
’799 patent. Thus, the Examiner has failed to set forth a prima facie case as

9 As noted by Appellant, and not challenged by the Examiner, “[i]t does not
appear to be in dispute that Edwards ’799 falls within the exception set forth
in 35 USC 103(c) . . . .” (App. Br. 9.)
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to why the appealed claims are obvious variants of the claims of the ’799
patent.

CONCLUSIONS OF LAW
We conclude that the Examiner improperly relied on the disclosure of
the ’799 patent in making the obviousness-type double patenting rejection
over the ’799 patent. We conclude further that the Examiner also
improperly relied on the disclosure of the ’799 patent in making the
obviousness-type double patenting rejection over the ’732 and ’978 patents.
We are thus compelled to reverse the obviousness-type double
patenting rejections (Rejections II, III, and IV).

REVERSED

alw

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