Ex parte SIFF

Board of Patent Appeals and Interferences

Mar 29, 2000

08164879 (B.P.A.I. Mar. 29, 2000)

Claims 20 and 21 were submitted when the present1
continuation-in-part application was filed. However, the
continuation-in-part specification has not been substituted
for the parent case specification, and claims 20 and 21 have
1
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not binding precedent of the Board.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 ELLIOTT J. SIFF
__________
Appeal No. 1996-2918
Application 08/164,879
___________
HEARD: March 23, 2000
___________
Before KIMLIN, JOHN D. SMITH and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s second rejection of
claims 19-21, which are all of the claims remaining in the
application.1
Appeal No. 1996-2918
Application 08/164,879
not been formally entered. Upon return of the application to
the examining group, the examiner should have the
continuation-in-part specification and claims 20 and 21
formally entered.
2
THE INVENTION
Appellant’s claimed invention is directed toward a kit
for combating recited types of eye conditions. The kit
includes propanethial S-oxide in a container having a device
for the microscopic dispensing of the propanethial S-oxide.
Claim 19 is illustrative and reads as follows:
19. A kit for combating a pathogenic, benign, dry or
irritated eye condition comprising;
a) a container having a means for the microscopic
dispensing of propane thial-s-oxide in a dosage amount
effective to produce moisture in a mammalian eye; said
container being capable of manipulation with a single hand;
and
b) an amount of propane-thial-s-oxide to provide a
pluarlity of individual dosages of sufficient strength to
induce tearing in a mammalian eye.
THE REFERENCE
Eric Block et al. (Block), “The Lachrymatory Factor of the
Onion: An NMR Study”, 21 Tetrahedron Letters 1277-80 (Pergamon
Press 1980).
THE REJECTION
Claims 19-21 stand rejected under 35 U.S.C. § 103 as
Appeal No. 1996-2918
Application 08/164,879
3
being unpatentable over Block.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
Block discloses that the lachrymatory factor of an onion,
i.e., its ability to bring tears to the eyes, is a 19 to 1
mixture of (Z)- and (E)-propanethial S-oxide (page 1277).
The examiner argues (answer, page 2) that “Block et al.
teach the use of the lachrymatory factor in onion.” This
argument is not supported by the reference. Block does not
disclose a use of propanethial S-oxide but, rather, discloses
the particular ratio of diastereomers of the compound which is
responsible for the tear-forming ability of an onion.
The examiner argues (answer, page 3) that “[a]ny active
ingredient for the pharmaceutical or clinical purposes is
packaged in some type of container of dispenser” and that “to
put such agent in the conventional pharmaceutical dispensers
and determine the proper dosage is within the skill of
Appeal No. 1996-2918
Application 08/164,879
4
artisan.” These arguments are not well taken because the
examiner has not explained where Block discloses, or would
have fairly suggested to one of ordinary skill in the art, a
pharmaceutical or clinical use of propanethial S-oxide.
Moreover, appellant does not merely recite a container but,
rather, recites a container having a means for microscopic
dispensing. The examiner has not explained why Block would
have fairly suggested, to one of ordinary skill in the art,
placing propanethial S-oxide in such a container.
For the above reasons, we find that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the invention recited in any of appellant’s
claims. Consequently, we reverse the examiner’s rejection.
DECISION
The rejection of claims 19-21 under 35 U.S.C. § 103 over
Block is reversed.
REVERSED
Appeal No. 1996-2918
Application 08/164,879
5
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/pgg
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