11481210 (B.P.A.I. Mar. 1, 2011)

Ex Parte Siegel et al

Board of Patent Appeals and InterferencesMar 1, 2011

11481210 (B.P.A.I. Mar. 1, 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. 11/481,210 07/05/2006 Gregg Siegel 1050-11 3303 7590 03/01/2011 JOHN LEZDEY & ASSOCIATES Suite 118 2401 West Bay Drive Largo, FL 33770 EXAMINER PRYOR, ALTON NATHANIEL ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 03/01/2011 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 GREGG SIEGEL and PHYLLIS SIEGEL ____________ Appeal 2011-000721 Application 11/481,210 Technology Center 1600 ____________ Before DONALD E. ADAMS, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-9 and 11-13 (App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b). 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 2011-000721 Application 11/481,210 2 STATEMENT OF THE CASE The claims are directed to a method for treating urinary tract infections. The claims have not been argued separately and therefore stand or fall together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and is reproduced in the “Claims Appendix” of Appellants’ Brief (App. Br. 5). Claims 1-9 and 11-13 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Siegel.2,3 We affirm. ISSUE Does the preponderance of evidence on this record support the Examiner’s finding that Siegel teaches the claimed invention? FINDINGS OF FACT FF 1. Siegel has the filing date of April 15, 2005 and published December 20, 2007. FF 2. The filing date of the present application is July 5, 2006. FF 3. Siegel has a different inventive entity than the present application. FF 4. It is undisputed that Siegel discloses a composition having all of the claimed ingredients, in the claimed concentrations, and that Siegel teaches administering the composition into the mouth of its users, which is the only method step required in Appellants’ claims. 2 Siegel et al., US 2007/0292360 A1, December 20, 2007. 3 The Examiner withdrew the rejection under 35 U.S.C. § 102(b) and the provisional obviousness-type double patenting rejection (Ans. 2-3). Appeal 2011-000721 Application 11/481,210 3 ANALYSIS Appellants contend that Siegel “published after the filing date of the present application and has the same assignee” (App. Br. 3). We are not persuaded that these facts avoid the Examiner’s § 102(e) rejection. As the Examiner explains, Siegel’s filing date is earlier than the present application and Siegel’s inventive entity is different than that of the present application (Ans. 4-5; FF 1-3). Patent Office records fail to support Appellants’ contention that Siegel’s inventorship is the same as the instant application (Reply Br. 1). In addition, while Lezdey declares that the instant application and Siegel were invented simultaneously, Patent Office records establish that the two documents have different filing dates (Cf. Lezdey Declaration4 and FF 1-2). Notwithstanding Appellants’ contention to the contrary, a terminal disclaimer does not remove the outstanding rejection under 35 U.S.C. § 102(e) (see Reply Br. 1). In addition, the unsupported arguments of Appellants’ attorney regarding predictability and expectation of success are not persuasive (see id.). Lastly, Appellants’ claims encompass administering the claimed composition to any individual having any microoganism, including normal flora, in any part of the urinary tract, and Appellants have failed to establish that the urinary tract of an individual using Siegel’s mouthwash would not contain microorganisms that would be treated using Siegel’s mouthwash. Accordingly we are not persuaded by Appellants’ unsupported intimation that Siegel fails to inherently treat urinary tract infection (id.). 4 Lezdey Declaration, executed April 5, 2010. Appeal 2011-000721 Application 11/481,210 4 CONCLUSION OF LAW The preponderance of evidence on this record supports the Examiner’s finding that Siegel teaches the claimed invention. The rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by Siegel is affirmed. Claims 2-9 and 11-13 fall together with claim 1. TIME PERIOD FOR RESPONSE 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 alw JOHN LEZDEY & ASSOCIATES SUITE 118 2401 WEST BAY DRIVE LARGO, FL 33770