Ex parte Milner

Board of Patent Appeals and Interferences

Sep 14, 1999

07988023 (B.P.A.I. Sep. 14, 1999)

Application for patent filed December 9, 1992. 1
According to appellant, this application is a division of
Application No. 07/335,750, filed April 10, 1989; which is a
continuation-in-part of Application No. 07/157,720, filed
February 19, 1988; which is a division of Application No.
06/891,342, filed July 31, 1986; which is a continuation-in-
part of Application No. 06/699,088, filed February 7, 1985;
which is a continuation-in-part of Application No. 06/569,760,
filed January 10, 1984; all which have been abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JEREMIAH MILNER
________________
Appeal No. 1995-4434
Application No. 07/988,0231
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and LORIN, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1995-4434
Application No. 07/988,023
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This appeal was taken from the examiner's decision
rejecting claim 1. Claims 3 through 15, which are the only
other claims remaining in the application, stand allowed.
Claim 1 reads as follows:
1. An aqueous peritoneal dialysis composition sterile
and free from pyrogens which is used for introduction into the
abdominal cavity for removal of water and waste products by
dialysis across the peritoneal membrane comprising a water
soluble glucose polymer mixture derived from the hydrolysis of
starch containing at least 36.7% by weight of glucose polymers
having a degree of polymerization (D.P.) of more than 12
glucose units, said glucose polymer mixture being present in
the peritoneal dialysis composition as an osmotic agent and
said peritoneal dialysis composition having an osmolality of
about 265 to 378 mOsm/kg. [Emphasis added].
The reference relied on by the examiner is:
Silk et al. (Silk) WO 82/03329 Oct. 14, 1982
(International patent application)
The issue presented for review is whether the examiner
erred in rejecting claim 1 under 35 U.S.C. § 103 as
unpatentable over Silk.
On consideration of the record, we shall not sustain this
rejection.
DISCUSSION
We first invite attention to parent Application No.
07/335,750 filed April 10, 1989 (Paper No. 15), where another
Appeal No. 1995-4434
Application No. 07/988,023
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merits panel of this Board evaluated the patentability of
appellant's aqueous peritoneal dialysis composition (Appeal No.
91-1972 mailed September 16, 1992). The previous Board panel
affirmed-in-part the examiner's decision rejecting claims 1
through 14 on prior art grounds. Silk was the sole reference
relied on in the previous appeal.
Instant claim 1 differs from claim 1 in the previous
appeal in view of the recitations "sterile and free from
pyrogens" and "said peritoneal dialysis composition having a
osmolality of about 265 to 378 mOsm/kg" added to the instant
claim. We have evaluated patentability anew in light of the
new claim language presented.
The claimed aqueous peritoneal dialysis composition is
"sterile and free from pyrogens." That recitation is a
positive limitation in the claim and, in our judgment, Silk
does not constitute sufficient evidence to support a conclusion
of obviousness of a claim containing that limitation. For the
reasons succinctly stated in appellant's main brief, pages 11
and 12, the examiner has not established that there is adequate
reason, suggestion, or motivation stemming from the cited prior
art which would have led a person having ordinary skill to
Appeal No. 1995-4434
Application No. 07/988,023
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modify Silk's compositions by making them sterile and free from
pyrogens.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
SDW:clm
Appeal No. 1995-4434
Application No. 07/988,023
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William E. O'Brien
Depaoli & O'Brien
2231 Crystal Dr.
Ste. 1103
Arlington, VA 22202