Ex Parte Lindell et al

Board of Patent Appeals and Interferences

Jul 28, 2011

10481053 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KATARINA E.A. LINDELL,
NILS-OLOF LINDBERG and ROLAND OLSSON
____________

Appeal 2010-007856
Application 10/481,053
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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This is in response to a Request, filed June 30, 2011, for rehearing of
our Decision, decided May 3, 2011.
Appellants contend that the Board’s framing of the issue as one of
“reversible error” gives undue deference to the Examiner and does not
comport with the duty to review adverse decisions of the Examiner upon
applications for patents (Request 3-4). However, the Federal Circuit has
approved of the long time practice of the Board to require an appellant to
identify alleged error (i.e., reversible error) in the Examiner’s rejections. In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Moreover, Appellants’ mere
allegation that the Board did not review the Examiner’s decision de novo is
unpersuasive. Our analysis on pages 3-12 of the Decision reflects that we
reviewed the Examiner’s rejections de novo in light of the applied prior art
in order to determine whether the Examiner had met the initial burden of
establishing a prima facie case.
Appellants further contend that we based our decision on portions
(i.e., page 36, lines 3-6) of the Cherukuri reference that were not relied upon
by the Examiner, which revealed that the Examiner’s finding could not
support a prima facie case of obviousness (Request 4-5). Appellants further
argue the Board’s reliance on the page 36 disclosure of Cherukuri presents
an interpretation that differs from the Examiner’s interpretation which
constitutes a new ground of rejection (id. at 5-6). Citing In re Wiechert, 370
F.2d 927, 933 (CCPA 1967), Appellants contend that they were deprived of
an opportunity to respond to the Board’s position based on Cherukuri’s page
36 teaching (id. at 6).
Cherukuri’s page 36 teaching regarding the use of the buffer system
with any type of confectionery formulation in which a controlled release
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under proper pH is warranted, merely reiterates the Examiner’s position that
Cherukuri’s “significant teachings” would have led one skilled in the art to
use a buffer system anywhere nicotine is used for oral absorption to aide in
the uptake of the nicotine (Ans. 4). Moreover, Cherukuri’s page 36 teaching
regarding the buffer location is readily apparent from a cursory reading of
the reference and is part of Cherukuri’s disclosure taken as a whole. To
restrict the Board to simply verbatim repetition of an examiner’s office
actions would ill-serve our duty as a reviewing body. Jung, 637 F.3d at
1365.
Appellants’ reliance on Wiechert is misplaced because this appeal is
not on the same factual footing as Wiechert. Specifically, Wiechert
concerned a claim to a dihydrotestosterone compound that had particular
structural characteristics claimed. Wiechert, 370 F.2d at 929. The examiner
in Wiechert rejected the claims under 35 U.S.C. § 103 based on the Ringold
I reference teaching dihydrotestosterones which are 1-desalkyl derivatives of
the compound claimed by the appellant. Id. The court found that the Board
affirmed a § 103 rejection based upon the examiner’s rationale and added
that another structure shown in Ringold I was a “position isomer” of the
claimed compound. Id. at 932. The court found that the Board’s “position
isomer” basis for affirmance constituted a new ground of rejection because
the examiner had not relied on that particular isomeric structure and it was
first pointed out by the Board. Id. at 933. The court further reasoned that,
because appellant provided a showing of unexpected results based on the
particular structure relied upon by the examiner and it is not practical to
provide such a showing with regard to all compounds mentioned in a
particular reference, under these circumstances when a rejection is based on
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an entirely different portion of an existing reference, appellant should be
afforded an opportunity to respond with a showing of nonobviousness. Id.
In contrast, the Board’s reliance in the present appeal on Cherukuri’s
page 36 teaching does not change the Examiner’s stated rejection or
rationale. Cherukuri’s teachings do not amount to a separate structure or
embodiment that Appellants were not apprised of as in Wiechert. Rather,
the thrust of the rejection remains the same and, thus, we do not agree that
our reliance on Cherukuri’s page 36 disclosure amounts to a new ground of
rejection. In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976).
In responding to our citation to Cherukuri’s page 36 teachings,
Appellants contend that Cherukuri fails to address Appellants’ claim
limitation concerning buffer location (Request 6). Appellants contend that
the term “confectionery products” is not defined by the Board, but it appears
that “products” as used in Cherukuri would relate to discrete entities such as
lozenges or lollipops rather than a component of a multi-component product
(id.). Appellants contend that the Board’s belated reliance on Cherukuri’s
page 36 disclosure is based on impermissible hindsight (id. at 7).
Appellants’ arguments are unpersuasive for two reasons. First,
Cherukuri’s page 36 disclosure that teaches using the buffer system in any
type of confectionery formulation in which controlled release under proper
pH is warranted coupled with Cherukuri’s page 24 disclosure cited by the
Examiner that the gum may be coated with a confectionery-shell that may
contain nicotine would have suggested using a buffer in a confectionery
coating. The obviousness analysis is based on the teachings of the reference
as a whole. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, the
combination of the buffer with a coating is not based on impermissible
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hindsight as argued but rather a fair reading of the teachings of the reference
as a whole.
Second, Cherukuri teaches placing the buffer in “confectionery
formulations” not “confectionary products” as argued by Appellants.
Therefore, Appellants’ arguments regarding how to interpret “confectionary
products” are misleading. Rather, the proper inquiry is what Cherukuri’s
teachings would have reasonably suggested to one of ordinary skill as
constituting a “confectionery formulation.” We agree with the Examiner
that a confectionary-type shell (i.e., coating) that contains nicotine would
constitute a confectionery formulation where a buffer that controls nicotine
release and absorption would be desired (Ans. 3-4; Decision 5-6).
Appellants argue that the Board’s interpretation of Cherukuri as
addressing the Tmax claim limitation is contrary to Federal Circuit
precedent (Request 7). Appellants contend that the Board’s indication that
Cherukuri suggests a Tmax value which its own data does not support is
improper because obviousness cannot be predicated on what is unknown (id.
at 8).
We are unpersuaded and adhere to our analysis on page 7 of the
Decision. As explained on page 7 of the Decision, the Examiner’s position
is that once Cherukuri’s buffer system is combined with the confectionery-
type shell coating of the gum as suggested by Cherukuri, the particular Tmax
property would have flowed naturally therefrom because the structure and
content of the product would be the same (Decision 7). Our decision is not
based on what is unknown but rather would have been suggested by
Cherukuri. Simply because Cherukuri may teach the Tmax for an
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embodiment that is outside the claimed range, this teaching does not detract
from the Examiner’s analysis which Appellants do not specifically address.
Appellants contend that Cherukuri does not recognize the amount of
buffer to be a result-effective variable (Request 8). Appellants contend that
the Board’s result-effective analysis is based on Cherukuri’s disclosure that
the buffer system is optimized, but such a finding fails to account for
Cherukuri’s disclosure that formulating the appropriate chemistry to achieve
the proper pH over the entire release period has been quite difficult (id. at 8-
9). Appellants contend that Cherukuri teaches that this area is unpredictable
and thus the Board’s determination that Tmax would have been achieved by
optimization is contrary to established precedent (id. at 9).
The analysis in the Decision concerning the result-effective nature of
the buffer system, which includes amount of buffer, is based on Cherukuri’s
teachings. Though Cherukuri teaches that it has been quite difficult to
achieve the proper pH over the entire release period, Cherukuri further
teaches that the buffer system provides predictable and highly effective
sustained release of nicotine and optimization of the buffer system as stated
on page 8 of the Decision. Accordingly, the result-effective variable
analysis is based on Cherukuri’s own teachings of predictability and
optimization of the buffer system. We view Cherukuri’s disclosure of
difficulty with achieving the proper pH over the entire release period cited
by Appellants as a description of the prior art buffer system, not Cherukuri’s
buffer system.
Appellants contend that we misapprehended Appellants’ objective
evidence of nonobviousness by dismissing the evidence as merely showing
what is expected (Request 9). Appellants further argue that the Board’s
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suggestion that Appellants’ evidence merely demonstrates what would have
been suggested conflates inherency with obviousness (id. at 10). Appellants
maintain that the Board’s analysis effectively assumes that because placing
buffer in the coating inherently leads to superior performance, it would be
obvious to do so (id. at 10).
Though we agreed with Appellants that the evidence of unexpected
results was probative of nonobviousness (Decision 10), whether the
evidence is probative merely opens the door for consideration of the
evidence. In considering the evidence we, like the Examiner, find that the
evidence merely demonstrates what would have been expected.
Specifically, adding more buffer to the confectionary composition would
result in greater absorption of nicotine into the bloodstream. Our analysis
does not confuse inherency and obviousness as alleged by Appellants.
Rather, as discussed above, it would have been obvious to add buffer to the
coating of the gum based on Cherukuri’s teachings. Appellants’ evidence, in
our view, merely demonstrates the expected result of such a combination;
increased nicotine absorption in the blood.
For all of the above reasons, we adhere to our Decision and the
Request for Rehearing is denied.

DENIED

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