Ex Parte Ross

Board of Patent Appeals and Interferences

Aug 26, 2003

09853540 (B.P.A.I. Aug. 26, 2003)

1This claim erroneously has been numbered as “2" in the copy of the claim which appears in the
appendix to the Brief.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JESSE ROSS
____________
Appeal No. 2003-1149
Application No. 09/853,540
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claim 1,1 which
is the only claim pending in this application.
We AFFIRM.
Appeal No. 2003-1149
Application No. 09/853,540
Page 2
BACKGROUND
The appellant's invention relates to a method of treating the symptoms of
scleroderma. Claim 1 has been reproduced in an appendix to the appellant’s Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Ross 5,718,721 Feb. 17, 1998
Azar 5,759,200 Jun. 2, 1998
Zhou et al. (Zhou) 5,849,026 Dec. 15, 1998
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Azar or Zhou in view of Ross.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 11) for the examiner's complete reasoning in support of the rejection, and to
the Brief (Paper No. 10) and Reply Brief (Paper No. 12) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Appeal No. 2003-1149
Application No. 09/853,540
Page 3
2In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982).
The examiner has found that Azar and Zhou each disclose the use of
electromagnetic radiation for treating skin diseases, but do not show the claimed
frequency, rate, power, shape and sizes of the pulses used in the radiation. However,
the examiner has taken the position that one of ordinary skill in the art would have
found it obvious to modify either Azar or Zhou by using the values recited in the
appellant’s claim 1 in view of the teachings of Ross “to improve blood circulation for
optimal treatment result” (Answer, page 4).
The appellant has not taken issue with the examiner’s conclusion. To the
contrary, the appellant’s response can only be taken as agreement with the examiner’s
conclusion, to wit: The appellant has stated on page 4 of the Brief that “[a]pplicant
does not contest the anticipatory application of Ross” and, while the rejection is on the
basis of lack of patentability over the combined teachings of the references under 35
U.S.C.
§ 103 rather than anticipation under 35 U.S.C. § 102, anticipation is the epitome of
obviousness.2 The appellant also has offered the opinion, in the sentence bridging
pages 6 and 7 of the Brief, that
an individual well versed in the art . . . is fully conversant with the fact that
use is made of electromagnetic radiation for treating skin diseases. Thus,
the citation of only the ‘721 patent [Ross] was required in the examination
of applicant’s application on the issue of patentability.
Appeal No. 2003-1149
Application No. 09/853,540
Page 4
3Under the circumstances , we see no need to comment upon the appellant’s arguments
regarding the propriety of a double patenting rejection under 35 U.S.C. § 101, except to state that it would
appear that the steps set forth in the application claim differ from those recited in the two claims in Ross.
This also would indicate that the appellant does not dispute the fact that the invention
claimed in the present application is not patentable. Finally, the appellant has argued
that the only rejection that should have been made is that of double patenting under
35 U.S.C. § 101, which implies that, as far as we are concerned, the invention claimed
in the application is not patentably distinct from that claimed in Ross.
The fact is that the only rejection before us is under 35 U.S.C. § 103,3 and it
stands unchallenged by the appellant. This being the case, we shall consider that the
combined teachings of Azar and Ross, and of Zhou and Ross, establish a prima facie
case of obviousness with regard to the subject matter recited in claim 1, and will sustain
the rejection.
CONCLUSION
The rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over Azar
or Zhou in view of Ross is sustained.
The decision of the examiner is affirmed.
Appeal No. 2003-1149
Application No. 09/853,540
Page 5
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2003-1149
Application No. 09/853,540
Page 6
MYRON AMER, P.C.
114 OLD COUNTRY ROAD
SUITE 310
MINEOLA, NY 11501
APPEAL NO. 2003-1149 - JUDGE ABRAMS
APPLICATION NO. 09/853,540
APJ ABRAMS
APJ STAAB
APJ McQUADE
DECISION: AFFIRMED
Prepared By: Lesley Brooks
GAU: 3700
OB/HD
3 MEM CONF Y N
DRAFT TYPED: 09 Jan 04
FINAL TYPED: