10431131 (B.P.A.I. Jan. 25, 2011)

Ex Parte Rau et al

Board of Patent Appeals and InterferencesJan 25, 2011

10431131 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/431,131 05/07/2003 Allen H. Rau 130113 4509 7590 01/25/2011 John S. Munday 27170 Lakewood Drive, NW Isanti, MN 55040 EXAMINER GEMBEH, SHIRLEY V ART UNIT PAPER NUMBER 1628 MAIL DATE DELIVERY MODE 01/25/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALLEN H. RAU, SCOTT JACOBS and ALLISON J. LEGENDRE ____________ Appeal 2011-000754 Application 10/431,131 Technology Center 1600 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-15, 17-26, and 28, the only claims pending in this application (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). Appellants do not separately brief or argue the claims. Claim 1 is representative and is reproduced in “Appendix A” of Appellants’ Brief (App. Br. 9). Claim 1 stands rejected under 35 U.S.C. § 103(a) as 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2011-000754 Application 10/431,131 2 unpatentable over Bolt2 alone, or in combination with Lilley,3 Howell,4 and Lawlor.5 In addition, claim 1 stands provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-5 of Rau.6 Upon consideration of the evidence on this record, including the Rau Declaration,7 and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of claim 1 is prima facie obvious over Bolt alone, or in combination with Lilley, Howell, and Lawlor. In sum, Appellants contend that Bolt fails to suggest a chewable tablet having less than 0.2% water as required by Appellants’ claim 1 (App. Br. 6 and 7; see also Reply Br. 2). In this regard, Appellants rely on the Rau Declaration to establish that “Amoxicillin Trihydrate contains three molecules of water”, therefore “it is impossible for the product described . . . and shown in Bolt[’s examples] to have less than 0.5% water” (Rau Declaration 1-2). We are not persuaded. While Bolt’s examples exemplify the use of Bolt’s preferred antibiotic, amoxycillin trihydrate, Bolt discloses the use of, inter alia, amoxicillin and ampicillin, of which amoxycilin trihydrate is preferred (Bolt, col. 2, ll. 27-28). Thus, the general terms “amoxicillin and ampicillin” would include the non-trihydrate forms of the antibiotics, and thus 2 Bolt et al., US 5,225,197, issued July 6, 1993. 3 Lilley et al., WO 02/07690 A1, published January 31, 2002. 4 Howell, US 3,962,417, issued June 8, 1976. 5 Lawlor, US 6,702,999 B2, issued March 9, 2004. 6 Rau, US 2006/0057078 A1, issued March 16, 2006. 7 Rau Declaration, executed July 7, 2009. Appeal 2011-000754 Application 10/431,131 3 encompass those forms of those antibiotics that contain less water. We find the use of a non-trihydrate form of the antibiotic to be prima facie obvious in view of Bolt’s teachings. Appellants failed to establish that the use of non- trihydrate forms of the antibiotic in Bolt’s tablet would result in a water content that exceeds the requirements of Appellants’ claim 1. Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Bolt alone, or in combination with Lilley, Howell, and Lawlor. Claims 2-5, 7, 14, 15, 17, 18, 25, 26, and 28 fall together with the rejection of claim 1 over Bolt alone. Claims 3, 8-13, 19, 21-24, and 28 fall together with the rejection of claim 1 over Bolt in combination with Lilley, Howell, and Lawlor. However, because our reasoning differs from that of the Examiner we designate the affirmance as a new ground of rejection (Cf. Ans. 4, 6, and 10-12). Appellants request the reversal of the provisional rejection under the judicially created doctrine of obviousness-type double patenting because the two applications are not currently commonly owned (App. Br. 8; Reply Br. 2). We are not persuaded. The two applications share a common inventor, Rau. Therefore, a provisional rejection under the judicially created doctrine of obviousness-type double patenting is available on this record. Since Appellants failed to identify an error in the rejection of record we are constrained to affirm the rejection of claim 1 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-5 of Rau. Claims 2-15, 17-26, and 28 fall together with claim 1. Appeal 2011-000754 Application 10/431,131 4 TIME PERIOD FOR RESPONSE Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejection(s) of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Appeal 2011-000754 Application 10/431,131 5 If the Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. AFFIRMED; 41.50(b) alw John S. Munday 27170 Lakewood Drive, NW Isanti, MN 55040