Ex Parte Shaw

Board of Patent Appeals and Interferences

Dec 29, 2003

09580232 (B.P.A.I. Dec. 29, 2003)

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written for publication and is not binding precedent of the Board.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. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JIAJIU SHAW
______________

Appeal No. 2003-0631
Application 09/580,232
______________

ON BRIEF
_______________

Before SCHEINER, MILLS, and PAWLIKOWSKI, Administrative Patent
Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 6. We note that
on page 3 of Paper No. 4, the examiner has indicated that claims
7 through 19 have been objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base
claim and any intervening claims.

Appeal No. 2003-0631
Application No. 09/580,232

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Claims 1 is representative of the subject matter on appeal
and is set forth below:

1. A delivery system comprising the following:

A main compartment confined by a pharmaceutically
acceptable membrane, with the inside of the main
compartment comprising (a) a pharmaceutical
composition, and (b) one or a plurality of sub-
compartments confined by membrane, which is porous or
becomes porous upon contacting aqueous environment,
with the inside of the sub-compartment or sub-
compartments comprising a pharmaceutical composition,
wherein the main compartment and the sub-compartment or
compartments are independent of each other.

The examiner relies on the following reference as evidence
of unpatentability:
Faour et al. (Faour) 6,004,582 Dec. 21, 1999
(filed May 29, 1998)

Claims 1 through 6 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Faour.
Claims 1 through 6 also stand rejected under 35 U.S.C. § 103
as being obvious over Faour.

OPINION
We reverse each of the rejections made by the examiner for
the following reasons.
Appellant’s arguments are summarized as follows. Appellant
argues that Faour does not teach or suggest a compartment within
a compartment. Brief, pages 6-7. Appellant argues that Faour
does not teach or suggest at least two pharmaceutical
compositions on the inside of the outermost membrane of the
device. Brief, pages 7-9. Appellant also argues that Faour does
not teach or suggest at least two compartment-confining
Appeal No. 2003-0631
Application No. 09/580,232

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membranes, and does not teach or suggest a main compartment and a
sub-compartment that are independent of each other. Brief, pages
8-10. Appellant further argues that Faour does not describe the
delivery systems of the instant claims on appeal. Brief, pages
10-11.
The critical issue before us is whether the examiner is
correct in concluding that Faour’s coating layer (8) is the same
as appellant’s membrane (1). Answer, page 4. We find that the
examiner is incorrect for the following reasons.
We note that during patent examination, the pending claims
must be interpreted as broadly as their terms reasonably allow.
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.Cir.
1989). In determining the patentability of claims, the PTO gives
claim language its “broadest reasonable interpretation”
consistent with the specification and claims. In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (citations
omitted).
In the instant case, claim 1 recites “[a] main compartment
confined by a pharmaceutically acceptable membrane”. The word
“membrane” is defined as “a thin soft pliable sheet or layer esp.
of animal or plant origin”. See Merriam-Webster’s Collegiate
Dictionary, 10th Edition (2000), pg. 723. Appellant’s
specification, on page 4, also sets forth examples of suitable
membranes. The examiner fails to adequately explain how Faour’s
coating (8), which is described in Faour’s Abstract as “a final
finish coat”, can be a membrane. We have carefully reviewed the
entire disclosure of Faour and also cannot find how final finish
coat (8) can be a membrane. Because of this failing made by the
examiner, we agree with appellant’s arguments, and determine that
the examiner has not set forth a prima facie case of anticipation
or obviousness.

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Application No. 09/580,232

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We therefore reverse each of the rejections.

REVERSED

TONI R.SCHEINER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DEMETRA J. MILLS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/vsh
Appeal No. 2003-0631
Application No. 09/580,232

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BRINKS HOFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60611