Ex Parte Kasperchik et alDownload PDFPatent Trial and Appeal BoardSep 20, 201611606437 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/606,437 11130/2006 22879 7590 09/22/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Vladek Kasperchik UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 82224119 8414 EXAMINER GWARTNEY, ELIZABETH A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 09/22/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VLADEK KASPERCHIK, SUSAN E. BAILEY, and JOEL MCKAY PRIDDY1 Appeal2015-004089 Application 11/606,437 Technology Center 1700 Before BRADLEY R. GARRIS, PETER F. KRATZ, and BRIAND. RANGE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal from the Examiner's decision rejecting claims 1-3, 5-8, 10-15, and 17-23. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Hewlett-Packard Development Company, LP is identified as the real party in interest. App. Br. 2. Appeal2015-004089 Application 11/606,437 Appellants claim a pharmaceutical comprising an edible coating layer comprising a number of sugars, a number of amino acids, and a number of water-soluble polymeric binders including soluble proteins wherein markings are formed on the coating layer via a Maillard reaction between the sugars and the amino acids (independent claim 1 ). Appellants also claim a corresponding method and system of forming such markings (remaining independent claims 12 and 21 ). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A pharmaceutical, comprising: an edible coating layer disposed on the pharmaceutical compnsmg: a number of sugars; a number of amino acids; a number of water-soluble polymeric binders; and a number of markings disposed on the pharmaceutical via a Maillard reaction between the sugars, and the amino acids, in which, upon irradiation by a laser source, the sugars and amino acids react to form the markings in the coating layer, in which the water-soluble polymeric binders are polysaccharides, polyvinyl pyrrolidone, soluble proteins, hydroxypropyl methyl cellulose, or combinations thereof. App. Br. 19 (Claims Appendix). The Examiner rejects all appealed claims under the 2nd paragraph of 35 U.S.C. § 112 as indefinite on the ground that the independent claim recitation regarding water-soluble polymeric binders "renders the claims indefinite [because] [i]t is unclear if Applicants intend to claim ... more than one water-soluble polymeric binder (i.e. 'a number of) ... or one or more water-soluble polymeric binders (i.e. [']water-soluble polysaccharides, 2 Appeal2015-004089 Application 11/606,437 polyvinyl pyrrolidone, soluble proteins, hydroxypropyl methylcellulose, or combination[ s] thereof)" (Final Action 2). As correctly indicated by Appellants (App. Br. 11; Reply Br. 4) and contrary to the Examiner's above position that the claim phrase "a number of' means more than one, those skilled in the art would understand the phrase to mean one or more (i.e., "a number" includes the number one). We do not sustain, therefore, the§ 112, 2nd paragraph, rejection of the appealed claims. The Examiner also rejects all appealed claims under 35 U.S.C. § 103(a) as unpatentable over Khan (US 6,888,095 B2, issued May 3, 2005) in view of Ashoor (S. H. Ashoor and J. B. Zenta, Research Note Maillard Browning of Common Amino Acids and Sugars, 49 J. FOOD SCI. 1206 (1984) ("Ashoor")) and Wolfrom (Wolfrom et al., Factors Affecting the Maillard Browning Reaction between Sugars and Amino Acids. Studies on the Nonenzymic Browning of Dehydrated Orange Juice, 22 J. AGR. FOOD. CHEM. 796 (1974) ("Wolfrom")) (Final Action 4--9). 2 We will sustain the§ 103 rejection for the reasons given in the Final Action, the Answer, and below. The Examiner concludes that, in view of Ashoor and Wolfrom, it would have been obvious to add amino acids and reducing sugars to the composition of Khan for the purpose of producing brown colored markings 2 Appellants do not present separate arguments specifically directed to the dependent claims in this rejection (App. Br. 12-17). As a consequence, these dependent claims will stand or fall with their parent independent claims of which claim 1 is representative. 3 Appeal2015-004089 Application 11/606,437 (id. at 5). 3 Further, the Examiner determines that the amino acids in Khan's modified composition would satisfy the claim requirements for a number of amino acids and a number of water-soluble polymeric binders including soluble proteins (id. at 6). Appellants challenge the Examiner's determination by arguing that the Examiner improperly relies on the amino acids of the prior art to satisfy the amino acid limitation as well as the water-soluble polymeric binder limitation of the independent claims (App. Br. 14--15). 4 Appellants' argument lacks persuasive merit as most clearly revealed by the Examiner's point that the Specification expressly teaches the claimed water-soluble proteins to be not only binders but participants in the Maillard reaction involving the claimed amino acids (Ans. 11 (citing i-f 20 of the published Specification which corresponds to as-filed Spec. 5 :25-31) ). Appellants discuss the Examiner's point (Reply Br. 6-8) but do not show it to be erroneous. For example, Appellants state that "the amino acids are not water-soluble while the binders are water-soluble" (id. at 7) but do not identify any claim recitation or Specification disclosure in support of their characterization of the amino acids as being not water-soluble. In the Reply Brief, Appellants argue that "the Answer fails to provide appropriate reasoning as to the motivation to combine Khan, Ashoor, and Wolfrom" (Reply Br. 9). This is a new argument that could have been, but 3 Appellants do not contest the Examiner's obviousness conclusion in their Appeal Brief. 4 In addition, Appellants assert that "finality [of the Final Office Action] is improper in this instance" (id. at 14). We will not address this assertion because it relates to a petitionable rather than an appealable matter. 4 Appeal2015-004089 Application 11/606,437 was not, presented in the Appeal Brief. Therefore, we will not consider this new argument in our disposition of the subject appeal. 37 C.F.R. § 41.41(b)(2) (2014). Because Appellants reveal no error on the Examiner's part, we sustain the § 103 rejection of all appealed claims. The decision of the Examiner is affirmed. 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). AFFIRMED 5 Copy with citationCopy as parenthetical citation