Ex Parte Joffre

Patent Trial and Appeal Board

Feb 21, 2013

11885092 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC JUDE JOFFRE
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Appeal 2011-010461
Application 11/885,092
Technology Center 1600
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Before ERIC GRIMES, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 On November 29, 2012, Appellant filed a paper entitled “Response.” This
paper does not request any amendment to the claims, nor does it present new
evidence that was not previously in the record. The paper therefore did not
present a basis on which the Examiner could withdraw the rejection. See 37
C.F.R. § 41.50(b)(1) (“The new ground of rejection is binding upon the
examiner unless an amendment or new evidence not previously of record is
made which, in the opinion of the examiner, overcomes the new ground of
rejection designated in the decision.”). The MPEP states: “If the appellant
submits an argument without either an appropriate amendment or new
evidence as to any of the claims rejected by the Board, it will be treated as a
Appeal 2011-010461
Application 11/885,092

2
Appellant has requested rehearing of the Decision entered October 2,
2012. This Decision affirmed the rejection of claims 1-8 and 15 under
35 U.S.C. § 103(a), but designated the affirmance as a new ground of
rejection under 37 C.F.R. § 41.50(b). We deny the request.
STATEMENT OF THE CASE
The Examiner rejected claims 1-8 and 15 as obvious over Hamachi et
al. (US 2004/0138373 A1, Jul. 15, 2004) in view of Pate et al. (US
6,783,766 B2, Aug. 31, 2004) (Ans. 3). In affirming the rejection, we
concluded “that it would have been prima facie obvious to include sodium
taurocholate[, as disclosed in Pate,] in Hamachi’s emulsion composition to
maintain its stability” (Decision 3-4).
PRINCIPLES OF LAW
“[I]t is well settled that unexpected results must be established by
factual evidence. ‘Mere argument or conclusory statements in the
specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
ANALYSIS
Appellant argues that “the present claims are non-obvious over
Hamachi in view of Pate because of unexpected results” (Req. Reh’g 2). In
particular, Appellant “requests the present claims be reconsidered in view of
the comparative examples as provided in the specification” (id.). We are not
persuaded.

request for rehearing under 37 CFR 41.50(b)(2).” MPEP § 1214.01. We
have therefore treated Appellant’s response as a request for rehearing.
Appeal 2011-010461
Application 11/885,092

3
We have reviewed the examples provided in the Specification. We
note that the use of sodium taurocholate (Example 1) appears to provide a
difference in the amount of D4, which “is an abbreviation for
octamethylcyclotetrasiloxane” (Spec. 20, ¶ [0079]), as compared to the
surfactants used in Comparative Examples 1 and 2 (id. at Figure 1).
However, Appellant has not pointed to any evidence indicating that this is an
unexpectedly superior result. We therefore conclude that Appellant has not
provided sufficient evidence to rebut the prima facie case of obviousness.
CONCLUSION
Appellant’s Request for Rehearing does not persuade us of any error
in our decision affirming the rejection of claims 1-8 and 15 under 35 U.S.C.
§ 103(a). We have considered all of Appellant’s arguments but decline to
modify the original decision. The Request for Rehearing is denied.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

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