Ex Parte Larson et al

Board of Patent Appeals and Interferences

Dec 22, 2011

11510358 (B.P.A.I. Dec. 22, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/510,358 08/25/2006 Brian Larson 34102-010 [7755/US/NP] 7400
26691 7590 12/22/2011
POTTER ANDERSON & CORROON LLP
ATTN: JANET E. REED, PH.D.
P.O. BOX 951
WILMINGTON, DE 19899-0951
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
12/22/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN LARSON and YUANLONG PAN
__________

Appeal 2011-008197
Application 11/510,358
Technology Center 1600
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Patent
Examiner’s final rejection of the claims on grounds of anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-008197
Application 11/510,358

2
STATEMENT OF THE CASE
Claim 15 is representative and reads as follows:
15. A method for reducing ischemia-induced brain injury in an
animal, comprising the steps of:
(a) identifying an animal having one or more risk factors for an
ischemic episode in the brain; and
(b) administering to the animal on a regular basis a composition
comprising one or more LCPUFA [long chain polyunsaturated
fatty acid] and one or more NORC [nitric oxide releasing
compound] in an amount effective to reduce ischemia-induced
brain injury in the event of an ischemic episode in the brain of
the animal.

The Examiner rejected the claims as follows:
 claims 15, 16, 18, 20-23, 34, and 35 under 35 U.S.C. § 102(b) as
anticipated by Schmitz1 (Ans. 3-4); and
 claims 15-23, 34, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Schmitz and Schneider2 (id. at 7-10).
ANTICIPATION
Appellants dispute that Schmitz disclosed administering a
composition that contained both a NORC and an LCPUFA. (App. Br. 9.)
Appellants cite paragraph [0021] of Schmitz as stating “only that ‘[t]he
composition may optionally contain L-arginine . . . or a mono or
polyunsaturated fatty acid (e.g., omega-3 fatty acid)’ (emphasis added).”
(Id.) According to Appellants, the other paragraphs of Schmitz, including
paragraphs [0040] and [0041], are “similar,” and “those paragraphs also fail

1 Harold H. Schmitz et al., US 2002/0018807 A1, published Feb. 14, 2002.
2 Heinz Schneider et al., US 5,902,829, issued May 11, 1999.
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Application 11/510,358

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to disclose administration of a composition comprising a NORC and a
LCPUFA.” (Id. at 9-10.)
The Examiner responds that Schmitz’ paragraphs [0040] and [0041]
indicate that the composition may contain arginine [0040] and “may also
contain . . . polyunsaturated fatty acid (e.g. omega-3 fatty acid)” [0041].
(Ans. 6.) This evidence supports the Examiner and the rejection because
“may also” is Schmitz’s explicit teaching. The Examiner further rebuts
Appellants’ contentions by quoting Schmitz [0045], which explicitly
combines arginine and omega-3 fatty acid with “and/or,” showing again that
the Examiner’s original reading of paragraphs [0040] and [0041] was
correct. (Ans. 6.) The evidence compels affirmance, for the reasons stated
in the Grounds of Rejection and Response to Argument. (See Ans. 3-7.)
Claims 16, 18, 20-23, 34, and 35 have not been argued separately and,
therefore, stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS
The Issue
Appellants first contend that
contrary to the examiner's assertions, and as discussed in detail
above, Schmitz fails to teach or even suggest the administration
of a composition that includes both a LCPUFA and a NORC.
Because of that, the additional alleged teachings of Schneider
cited by the examiner relating to the specific LCPUFA being
employed would fail to correct the deficiencies of Schmitz.
Therefore, even when taken in combination, the cited references
fail to teach or suggest the present invention.

(App. Br. 11.) This argument is unpersuasive for the reasons given in the
“Anticipation” section above.
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Application 11/510,358

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Appellants next contend that Schneider failed to disclose the use of
arginine and LCPUFA for treatment of the brain. This argument is
unpersuasive because Schmitz taught administering a composition
containing arginine and LCPUFA to an animal having one or more risk
factors for an ischemic episode in the brain, i.e., an animal having one or
more risk factors recited in claim 34. Each reference “must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted). We affirm for the reasons given in the Grounds of
Rejection and Response to Argument. (See Ans. 7-12.)
Claims 16-23, 34, and 35 have not been argued separately and,
therefore, stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the rejection of claims 15, 16, 18, 20-23, 34, and 35 under
35 U.S.C. § 102(b) as anticipated by Schmitz.
We affirm the rejection of claims 15-23, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Schmitz and Schneider.
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

clj