Ex Parte Leadbeater et al

Patent Trial and Appeal Board

Feb 23, 2016

10520786 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/520,786 0111112005
23373 7590 06/02/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
John Michael Leadbeater
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.
Q85726 2429
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MICHAEL LEADBEATER, VICTOR HEALD, and
NICHOLAS ALAN COOPER
Appeal2014-006572
Application 10/520,786
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants request rehearing of our Decision (Req. 1 ), wherein
the Examiner's decision to reject the appealed claims under 35 U.S.C. §
103(a) was affirmed. In accordance with Appellants' Request, we have
reconsidered our Decision in light of the Request, but we find no reason to
modify our Decision in any material respect.
Appellants contend in the Request that the Board misapprehended or
overlooked: ( 1) "Beringer's disclosure regarding granulation versus
pelletization temperatures"; (2) "the minor difference in the tested
composition as compared to the teachings of Beringer"; and (3) "the
Appeal2014-006572
Application 10/520,786
experiments were made by Dr. Neergaard by carefully following the
teachings of Beringer" (Req. 3).
Contrary to Appellants' contentions, the Board did not err in its
Decision by failing to "properly accord the Declaration evidence sufficient
weight" "by misapprehending the teachings [of] Beringer and the evidence
reported in the Declaration" as contended by Appellants (Req. 2-9). In
particular, the Board was apprised of Beringer's disclosures with respect to
both the granulation temperature and the pelletization temperature of the
Figure 10 embodiment for making a multi-layer tablet and took such
disclosures into account in considering the Declaration evidence.
The Board did not discount the Declaration evidence based on failing
to use granulate mixing and pelletizing (tableting) temperature that is in
accord with the about 18 °C granulate mixer and pelletization temperature
disclosed by Beringer (Beringer (col. 6, 11. 60-62). In this regard, our
reference to Beringer's caution with respect to the granulate being cooler so
as not to adversely affect pelletization as set forth in the Decision obviously
pertains to Beringer's teachings concerning an effect of cooler granulate
temperature as to the pelletizing of the granulate notwithstanding the lack of
a specific citation to Beringer by column and line (Dec. 1 O; Beringer, col. 6,
11. 63-64).
Rather and as set forth in the Decision, the Declaration evidence was
found wanting in failing to buttress Appellants' argument sufficiently to
outweigh the evidence of obviousness, in part, because "the attempts to
make a tablet with a plastic mass granulate said to be according to the Figure
10 embodiment of Beringer were conducted by cooling to -75°C according
to the Experimental setup and plastic mass preparation reported in the
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Appeal2014-006572
Application 10/520,786
Declaration by Dr. Neergaard (Deel. 11, Exhibit A)" notwithstanding that
Beringer discloses that the appropriate temperature for granulating the
chewing gum mass is "a temperature between - 20 to + 10°C" (Dec. 1 O;
Beringer, col. 6, 11. 56--59).
The Declaration evidence and the argument presented in the Appeal
Brief fail to articulate how the use of a significantly lower granulation
cooling temperature of -75°C that is significantly outside the disclosed range
of temperatures taught by Beringer as being appropriate for cooling during
granulation is consistent with the disclosure of Beringer. In addition and as
indicated in the Decision, the effect of the omission of some of the
ingredients of the composition employed in Example 6 of Beringer from the
effort to duplicate that Example's ingredients in the tablet examples of the
Declaration has not been adequately accounted for by the Experimental
Report's statement indicating that the omitted ingredients were not available
at the time of the experiment and by the mere assertion of a belief that the
omission is unimportant because of the relatively small amount of the
omitted ingredients (Dec. 10; Deel. II, Exhibit A).
Consequently, Appellants have not established that the Board erred in
its Decision by failing to properly weigh the Declaration evidence as a result
of overlooking and/ or misapprehending certain disclosures of Beringer and
certain aspects of the Declaration evidence as contended by Appellants in
the Request (Req. 2-9).
For the reasons noted above and those set forth in our Decision, the
Request does not identify substantive error in the Examiner's obviousness
determination that was made manifest by argument set forth in the Appeal
Brief, as buttressed by the Declaration evidence relied upon, and/or timely
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Appeal2014-006572
Application 10/520,786
presented for the first time in the Reply Brief that the Board misapprehended
and/ or overlooked in rendering its Decision.
ORDER
Appellants' request is granted to the extent that we have reconsidered
our Decision, but is denied with respect to making any change therein.
DENIED
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