Ex Parte Mey et al

Board of Patent Appeals and Interferences

Mar 3, 2008

10177209 (B.P.A.I. Mar. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM MEY and WILLIAM J. GRANDE,
APPELLANTS

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Appeal 2007-3293
Application 10/177,2091
Technology Center 1700
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Decided: 3 March 2008
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Before ADRIENE LEPIANE HANLON, THOMAS A. WALTZ, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed 21 June 2002. The real party in interest is listed as Tiger
Microsystems, Inc. (Appeal Brief filed 1 November 2006 ("App. Br."),
at 3.)
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A. Introduction
William Mey and William J. Grande ("Appellants") seek review under
35 U.S.C. § 134(a) of the final rejection of claims 43–76 and 78–80. The
only other claims pending in the application, claims 81–83, have been
indicated as allowed by the Primary Examiner2. We have jurisdiction under
35 U.S.C. § 6. We AFFIRM.
The claimed subject matter relates to an apparatus for coating a
plurality of substrates for a pill, tablet, or capsule, with a powder.
Oversimplifying slightly, Appellants seek patent protection for an
electrographic printer adapted to deposit dry powder to a plurality of
pharmaceutical substrates. (Specification ("Spec.") at 4:13–15.) The
powder may be, for example, a drug, a protective coating, or ink for text,
barcode, or logo. (Spec. at 24:23–28.)
Claim 43 is representative and reads as follows:
An apparatus for coating substrates for a pill, tablet or capsule
with a powder comprising:
a magnetic brush having a rotational magnetic core and a
stationary outer shell;
a magnetic powder supply for supplying a magnetic developer
powder to the magnetic brush;
a print head on the outer shell, the print head defining an array
of microchannels for forming a plurality of parallel lines of
magnetic developer powder in the microchannels,
a transfer station spaced from the array of microchannels for
transferring simultaneously powder from the print head to a
plurality of the substrates for a pill, tablet or capsule;

2 (Final Office Action, ("Final"), mailed 19 October 2005, Summary Page.)
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control circuitry for operating the print head to transfer
simultaneously magnetic development powder to a plurality of
the substrates for a pill, tablet or capsule;
a fuser for fixing the transferred magnetic development powder
to a plurality of the substrates for a pill, tablet or capsule; and
a conveyor carrying simultaneously past the print head and past
the transfer station a plurality of substrates for a pill, tablet or
capsule where the substrates for a pill, tablet or capsule
simultaneously receive deposits of magnetic developer powder
and carrying a plurality of the substrates for a pill, tablet or
capsule with deposited magnetic developer powder past the
fuser where the magnetic developer powder is simultaneously
fixed to a plurality of the substrates for a pill, tablet or capsule.
(App. Br. Claims App'x at 16.)
Allowed claim 81 is identical to claim 43 up to the last paragraph,
which reads:
a carriage having a plurality of pockets for holding the
substrates and for carrying the substrates past the print head,
transfer station and fuser.
(App. Br. Claims App'x at 22.)
The Examiner has maintained the following rejections3:
a) Claims 58–60, 73–76, and 78–80 have been rejected under
35 U.S.C. § 112(2). (Final Rejection mailed 19 October 2005,
at 2; Ans. at 3.)

3 Examiner's Answer ("Ans.") mailed 25 January 2007.
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b) Claims 43–54, 57, 61, 63, 65, and 68–72 have been rejected under
35 U.S.C. § 102(b) in view of Mey4, "as evidenced by
Mlodozeniec5." (Ans. at 12.)
c) Claims 43–57, 61, 63–65, and 68–72 have been rejected under 35
U.S.C. § 102(e) in view of Grande6, "as evidenced by
Mlodozeniec." (Ans. at 14.)
d) Claim 65 has been rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of either Mey or Grande, as evidenced by
Mlodozeniec, with Saitoh7. (Ans. at 17.)
e) Claims 43–57, 61, 63–65, and 68–72 have been rejected
(obviousness double patenting) over the subject matter of Grande,
claims 1, 5, and 7, combined with the teachings of Mey and
Mlodozeniec. (Ans. at 4.)
f) Claims 43–54, 61, 63, and 69–72 have been rejected (obviousness
double patenting) over the subject matter of Mey, claims 1 and 11,
combined with the teachings of Mlodozeniec. (Ans. at 9.)

4 William T. Mey et al., Electrographic Printer with Multiple Transfer
Electrodes, U.S. Patent 5,889,544, issued 30 March 1999; William J. Grande
is listed as a co-inventor.
5 Arthur R. Mlodozeniec and Arthur H. Goldberg, System for Producing
Dosage Forms, U.S. Patent 4,307,555, issued 29 December 1981.
6 William J. Grande, William Mey, et al., Microchannel Print Head for
Electrographic Printer, U.S. Patent 6,400,385 B1, issued 4 June 2002, based
on application 08/782,272 filed 13 January 1997.
7 Masatoshi Saitoh et al., Method and Apparatus for Removing Image
Forming Substance from Image Holding Member, U.S. Patent 6,095,164,
issued 1 August 2000.
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g) Claim 65 has been rejected (obviousness double patenting) over
the subject matter of Grande, claims 1–12, combined with the
teachings of Mey, Mlodozeniec, and Saitoh. (Ans. at 11.)
B. Issues
The central substantive issue in this appeal may be stated as follows:
is the meaning of the term "plurality of substrates for a pill, tablet, or
capsule" as it and grammatical variants are used in the claims, broad enough
such that references Mey and Grande, which teach apparatuses printing a
plurality of parallel lines on a receiver, teach or suggest, in combination with
the applied secondary references, the claimed invention?
C. Discussion
The procedural burden is on Appellants to demonstrate reversible
error by the Examiner. Any argument not raised in the principal brief on
appeal is waived. 37 C.F.R. § 41.37(c)(vii).
Indefiniteness
Initially, we observe that Appellants have not contested in their
principal Brief on Appeal (“App. Br.”), filed 30 October 2006, the rejection
of claims 58–60, 73–76, and 78–80 under 35 U.S.C. § 112(2) set out in the
final rejection (Final at 2). As Appellants stated, "[a]pplicants did not
submit an amendment after final." (App. Br. at 3.) Moreover, Appellants
did not explain in their Reply Brief ("Reply Br.") filed 26 March 2007, why
any argument regarding that rejection could not have been made. We
therefore summarily AFFIRM the rejection under § 112(2).
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Rejections based on Mey or Grande
The Examiner finds that Mey describes an electrographic printer
comprising a magnetic brush and magnetic developer powder, a print head, a
transfer station that transfers magnetic powder from the print head to a
receiver, control circuitry for operating the print head, and a fuser for fixing
the transferred powder. (Ans. at 12; see e.g., Mey at 1:50 to 2:11.) The
Examiner finds further that all the subsidiary limitations recited in the claims
are fully met. (Ans. at 12.) In particular, the Examiner finds that the Mey
apparatus moves a "receiver tablet" or "web" (Ans. at 12, 2d full paragraph,
last two sentences) through a transfer region past the print head and the other
stations of the apparatus.
The Examiner cites Mlodozeniec as teaching that a web can be coated
with a powder and then cut into strips that are then formed into tablets.
(Ans. at 5–6 and at 12-13.) The Examiner reasons that the webs taught by
Mey (see, e.g., Mey at 3:40–45, describing a receiver 34, such as a dielectric
coated or plain paper as the thing coated by the powder) can thus be the
"plurality of substrates" required by the claims.
For parallel reasons, the Examiner finds that Grande describes an
electrographic printing apparatus comprising elements meeting all the
limitations of the claimed apparatus.
In response to each of the rejections based on Mey or Grande—
whether on the basis of obviousness or obviousness-type double patenting,
Appellants argue only the limitations of claim 43. (App. Br. at 6 to 14.)
Accordingly, all the claims stand or fall with the rejections as applied to
claim 43. 37 C.F.R. § 41.37(c)(vii).
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Moreover, Appellants do not dispute the Examiner's findings that the
apparatuses described by Mey or by Grande comprise the various elements
recited in the claims—for example, the magnetic brush and developer
power, the print head, transfer station, control circuitry, fuser, conveyor, etc.
Rather, Appellants argue only that they are "claiming an invention that coats
simultaneously multiple substrates such as pills, capsules or tablets not web
materials. The invention coats blank tablets." (App. Br. at 11, traversing the
rejection for anticipation over Mey.) Mlodozeniec, Appellants insist,
"teaches depositing active ingredients onto a single sheet, called a 'web'
(col. 17, lines 9–28). Once the active ingredient is deposited on the web,
which is a single sheet, it is fabricated into smaller pieces." (App. Br. at 8.)
Appellants argue that "[d]epositing materials on a paper or 'web' is not the
same as coating a three-dimensional object such as a pill, tablet, or capsule."
(App. Br. at 8.)
The Federal Circuit has instructed that during examination, "the PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The reason is that "during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed. . . . An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
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uncertainties of claim scope be removed, as much as possible, during the
administrative process." In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989).
The claims on appeal are drawn to an apparatus. We therefore must
consider what structures the claim language requires the apparatus have in
order to accomplish the recited functions that the apparatus must perform.
By this inquiry we can distinguish verbiage that is merely "intended use"
from verbiage that recites structural claim limitations. Having construed the
claims, we must then determine whether the claims "read on" embodiments
described by the references cited by the Examiner. As the Federal Circuit
has explained, "[t]he law of anticipation does not require that the reference
'teach' what the subject patent teaches. . . . it is only necessary that the claims
under attack, as construed by the court, 'read on' something disclosed in the
reference, i.e., all limitations of the claim are found in the reference, or 'fully
met' by it." Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).
We begin by considering, in light of the specification, what one of
ordinary skill in the art would have thought constitutes "substrates for a pill,
tablet, or capsule," as that phrase is used in claim 43. The specification
describes a prior art method in which an electrostatic charge is created on a
specific area of a substrate using an ionographic print head. (Spec.
at 2:10ff.) According to the specification, "[t]he receiving substrate may be
a tablet, open ended capsule, edible materials such as starch, as examples."
(Id. at 2:18–19.) Describing the invented subject matter, the specification
states that it "describes a technology to be used for electrostatic deposition of
dry powder to a specific area of a pharmaceutical substrate."
(Id. at 4:13-14.) Examples of suitable substrates are said to include "a
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specific area of a tablet, capsule or other types of pharmaceutical substrates."
(Id. at 4:16–17; emphasis added.) It is clear that a wide variety of
pharmaceutical substrates are known to the skilled artisans.
We conclude that the term "substrates for a pill, tablet, or capsule"
encompasses more than pills, tablets, or capsules themselves. The plain
language indicates that a broader class of things is encompassed, including
substrates such as those described by Mlodozeniec that can be made into a
pill, tablet, or capsule. Moreover, the specification indicates that materials
comprised of starch and other edible materials are recognized in the art as
pharmaceutical substrates. Appellants' argument that they are "claiming an
invention that coats simultaneously multiple substrates such as pills,
capsules or tablets not web materials. The invention coats blank tablets"
(App. Br. at 11), is unavailing. Solomon v. Kimberly-Clark Corp., 216 F.3d
1372, 1379 (Fed Cir. 2000) ("what the patentee subjectively intended his
claims to mean is largely irrelevant to the claim's objective meaning and
scope.")
We are further aided in our inquiry into the meaning of the term
"plurality of substrates for a pill . . . " in claim 43 by the language of allowed
independent claim 81. Claim 81 is identical to claim 43 except for the final
paragraph, which, instead of reciting a more generic "conveyor," recites:
a carriage having a plurality of pockets for holding the
substrates and for carrying the substrates past the print head,
transfer station and fuser.
(App. Br. Claims App'x at 22.) In the case of claim 81, the Examiner found
that the recited structure—the plurality of pockets—was neither described
nor suggested by the prior art of record. We note that the plurality of
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pockets for the substrates requires that the substrates be physically separated
from one another.
Unlike claim 81, however, nothing in the language of claim 43
requires apparatus structures that in turn require that the substrates on which
the apparatus coats powders be physically separated from one another while
they are being coated. The situation is similar to the sheets carrying multi-
column arrays of labels that are run through photocopiers or laser-jet
printers. It is fair to describe each label as being a distinct substrate that can
be printed with distinct text or images. Applying this insight to the language
of claim 43, we understand that the recitation of "plural substrates" need not,
in and of itself, require that the claimed apparatus contain special structures
to accommodate plural substrates. An apparatus within the scope of the
claims must, however, be capable of powder coating plural substrates.
We conclude that an apparatus that meets all the limitations of
claim 43 may operate on multiple substrates or on a single substrate,
depending on the choice of the operator. Put another way, we hold that the
recitations of "plural substrates" in claim 43 are expressions of intended use.
As the Examiner recognized, any apparatus containing structures capable of
performing the required functions on any substrate that can be plural
substrates, meets broadly recited claim 43.
Appellants' Response to Erroneous Findings (App. Br. at 13–14) are
premised on a misapprehension of the subject matter covered by their
claims. As the Examiner has shown, the machine they claim, that
"simultaneously processes multiple substrates," is not "markedly different
from prior art machines that process one substrate at a time." (App. Br.
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at 14, ¶ 4.) The Examiner recognized that claims 81–83 recite limitations
that the prior art neither described nor rendered obvious. Appellants have
not shown, however, that the Examiner failed to recognize any limitations
that prevent the proper rejection of the claims on appeal.
Accordingly, we AFFIRM the rejections under § 102(b) and § 102(e)
over May and over Grande, respectively. As the basis for traversal of the
rejections under § 103 and under obviousness-type double patenting are the
same as the traversal of the anticipation rejections, we also AFFIRM the
remaining rejections.
E. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 58–60, 73–76,
and 78–80 under 35 U.S.C. § 112(2) is AFFIRMED;
FURTHER ORDERED that the rejection of claims 43-54, 57,
61, 63, 65, and 68–72 under 35 U.S.C. § 102(b) in view of Mey, as
evidenced by Mlodozeniec, is AFFIRMED;
FURTHER ORDERED that the rejection of claims 43-57, 61,
63–65, and 68–72 under 35 U.S.C. § 102(e) in view of Grande, as
evidenced by Mlodozeniec, is AFFIRMED;
FURTHER ORDERED that the rejection of claim 65 under
35 U.S.C. § 103(a) in view of the combined teachings of either Mey
or Grande, as evidenced by Mlodozeniec, and Saitoh is AFFIRMED;
FURTHER ORDERED that the rejection of claims 43-57, 61,
63–65, and 68–72 as obvious over the subject matter of Grande,
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claims 1, 5, and 7, combined with the teachings of Mey and
Mlodozeniec is AFFIRMED;
FURTHER ORDERED that the rejection of claims 43-54, 61,
63, and 69–72 as obvious over the subject matter of Mey, claims 1
and 11, combined with the teachings of Mlodozeniec is AFFIRMED;
FURTHER ORDERED that the rejection of claim 65 as
obvious over the subject matter of Grande, claims 1–12, combined with the
teachings of Mey, Mlodozeniec, and Saitoh is AFFIRMED;
FURTHER ORDERED that 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

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