Ex Parte Masue

Patent Trial and Appeal Board

Aug 23, 2016

13393053 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/393,053 02/28/2012
25944 7590 08/25/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Yusuke Masue
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.
152434 4665
EXAMINER
LE,HOAT
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUSUKE MASUE
Appeal2015-003269
Application 13/393,053
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant's2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3 and 5. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 We cite to the Specification ("Spec."); Final Office Action ("Final Act.");
Examiner's Answer ("Ans."); and Appellant's Appeal Brief ("App. Br.")
and Reply Brief ("Reply Br.").
2 Appellant identifies Nippon Soda Co., Ltd., as the real party in interest.
App. Br. 1.
Appeal2015-003269
Application 13/393,053
BACKGROUND
The subject matter on appeal regards hydroxypropyl cellulose (HPC)
particles. Spec. 1. Claims 3 and 5 are reproduced from the Claims
Appendix of the Appeal Brief as follows:
3. Hydroxypropyl cellulose particles which contain 100
weight % of particles with a particle size that is larger than 250
µm and not larger than 355 µm, wherein a content of
hydroxypropyl groups is 53.4 to 77.5 weight%, and viscosity at
20°C in a 2% aqueous solution is in a range of 100 to 5000
mPa·s.
5. Hydroxypropyl cellulose particles which contain 100
weight % of particles with a particle size that is larger than 180
µm and not larger than 250 µm, wherein a content of
hydroxypropyl groups is 53.4 to 77.5 weight%, and viscosity at
20°C in a 2% aqueous solution is in a range of 100 to 5000
mPa·s.
REJECTIONS
The Examiner maintained the following ground of rejection: 3
Claims 3 and 5 stand rejected under 35 U.S.C. § 102(b), or§ 103(a),
as unpatentable over "NISSO HPC particles made by Nippon Soda Co."
Shinichi ("Dl"),4 Dohi ("D2"),5 and Nisso HPC ("D3")6 are relied upon as
3 Ans. 2-3; Final Act. 2-3.
4 JP 2002-207030, published Jul. 26, 2002, as translated ("Shinichi").
5 US 2004/0219108 Al, published Nov. 4, 2004 ("Dohi").
6 NISSO HPC, High Viscosity Grade of Hydroxypropyl Cellulose (HPC-H)
for Hydrophilix Matrix, Sustained Release Formulation, Application Note#
CR-2012-AAPS.
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Appeal2015-003269
Application 13/393,053
evidence of physical properties and prior commercial availability of the HPC
particles on which the ground of rejection is based. 7 Ans. 2-3.
DISCUSSION
The Examiner found that D 1 identifies HPC particles containing 70 to
71.66% hydroxypropyl groups, that D2 identifies HPC particles with a
"particles size range with[ in] the claimed range," and that D3 identifies HPC
particles with a viscosity ranging from 300 to 4040 mPa.s. Ans. 2. The
Examiner also found that "D 1, D2 and D3 are three separate documents
disclosing the same commercial product named NISSO HPC particles," such
that, collectively, they identify a single HPC product having all three
properties recited in claims 3 and 5. Id. at 3.
Appellant argues that the evidence of record fails to support a finding
that each of D 1, D2, and D3 describes the same HPC material. App. Br. 8-
9. We agree. The particles mentioned in D 1 are identified only as "Nisso
HPC (made by NIPPON SODA CO. LTD.)." Dl at ,-i 11. D2 identifies the
described particles as "HPC produced by Nippon Soda Co." As Appellant
correctly points out, App. Br. 3, D3 itself discloses four different HPC
products attributable to NISSO, each exhibiting different viscosity and Dso
values. See D3 1. Moreover, Appellant submitted a printout from www.
nissoexcipeints.com ("D4"), dated and made of record May 5, 2014, see
App. Br. 7, which reports a variety of viscosity and particle size data for
7 For consistency, we adopt the designations used by Appellant and the
Examiner in referring to Shinich, Dohi, and NISSO HPC as Dl, D2, and D3,
respectively.
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Appeal2015-003269
Application 13/393,053
multiple NISSO HPC products. 8 On this record, we are unable to find that a
preponderance of evidence supports the Examiner's pivotal finding that each
of D 1, D2, and D3 describes a different property for the same HPC product.
For that reason, we do not sustain the rejection of claims 3 and 5 as
unpatentable under 35 U.S.C. § 102(b ).
In support of the alternative § 103 basis for the rejection, the
Examiner reasoned that "one of ordinary skill in the art would have been
able to select HPC particles provided by Nippon Soda Co. having the
specific hydroxypropyl groups and viscosity, and sort the particles within
[the] particle size range as claimed." Ans. 3. In support of that obviousness
determination, the Examiner characterized particle size as a "result-effective
variable depending on the intended uses." Id.
We agree that the identification of a desired particle size cut from a
broader range of particle sizes ordinarily would represent routine
experimentation toward discovery of a preferred or optimal range.
However, the Examiner's obviousness determination is further premised on
a selection of HPC particles exhibiting both the recited viscosity and
hydroxypropyl group content from which the proposed size cut
experimentation would be made. As Appellant notes, the Examiner does not
point to persuasive evidence of "an HPC product available at the time of the
invention that met both the hydroxypropyl group percentage and viscosity
requirements of claims 3 and 5, and had particle sizes that could be sorted"
in the manner proposed in the ground of rejection. App. Br. 10. Neither
8 NISSO appears to refer to Nippon Soda Co., Ltd. See D4 ("NISSO
(Nippon Soda Co., Ltd) has 45 years experience ... ").
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Application 13/393,053
does the Examiner present technical reasoning tending to show that one
skilled in the art would have had a reason to select particles with these
properties, or would have viewed viscosity and hydroxypropyl group content
as result-effective variables subject to optimization for a given use. In short,
the Examiner presented at least some reasoning as to why one of the three
recited properties would have been obvious, but failed to adequately address
the remaining two.
For the foregoing reasons, we also do not sustain the rejection of
claims 3 and 5 as unpatentable under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 3 and 5 is reversed.
REVERSED
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