Ex Parte Sipp

Patent Trial and Appeal Board

Jan 31, 2018

14170059 (P.T.A.B. Jan. 31, 2018)

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.
14/170,059 01/31/2014 Corey Sipp Sipp04 8911
91892 7590 02/02/2018
Incorporating Innovation LLC dba Incorporating
Innovation With Charlena Thorpe, Patent Attorney
6340 Sugarloaf Parkway
Suite 200
Duluth, GA 30097
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Charlena@incorporatinginnovation.com
charlena. thorpe @ charlenathorpe. com
wayne @ charlenathorpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY SIPP
Appeal 2017-004063
Application 14/170,0591
Technology Center 1600
Before DEMETRA J. MILLS, ELIZABETH A. LaVIER, and
TAWEN CHANG, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON REHEARING
Pursuant to 37 C.F.R. § 41.52(a), Appellant requests rehearing of a
Decision on Appeal dated October 30, 2017,2 affirming the Examiner’s
decision that claims 1—19 are unpatentable over the prior art of record and
reversing the Examiner’s decision that claims 16, 17, and 19 are
unpatentable as failing to comply with the written description requirement.
Appellant only requests rehearing of claims 11 and 12. Req. 3. As in
the Appeal Brief (see Br. 18), Appellant does not separately argue claim 12
in the Request for Rehearing (see Req. 3). Accordingly, we treat claim 11 as
representative. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.52(a).
1 Appellant states the real party in interest is Corey Sipp. Br. 1.
2 Hereinafter “Decision.”
Appeal 2017-004063
Application 14/170,059
As particularly relevant here, the Board’s Decision affirmed the
Examiner’s rejection of claim 11 under 35 U.S.C. § 102(a)(1) as anticipated
by Lovercheck (Rejection 3), the rejection of claim 11 under 35 U.S.C.
§ 103 as unpatentable over Lovercheck (Rejection 5), and the rejection of
claims 11 and 12 under 35 U.S.C. § 103 as unpatentable over Mitchell and
Lovercheck (Rejection 6). Because Appellant did not argue claim 1 (from
which claim 11 depends), we summarily affirmed each of these three
rejections as applied to claim 1.
A. Rejection 3 (§ 102)3
Analyzing the § 102 rejection as applied to claim 11, the Decision
stated:
Appellant maintains that Lovercheck does not disclose
the particular claimed composition. See id. at 10-11. We are
not persuaded. As the Examiner points out, Lovercheck’s
disclosure at paragraph 8 provides that the nutritional
supplement portion of the composition preferably includes “at
least four members” of the following group:
vitamin A, vitamin C (ascorbic acid), vitamin D, vitamin
E, vitamin K, vitamin Bi2, vitamin B6, thiamin,
riboflavin, niacin, foliate, biotin, pantothenic acid,
calcium, iron, phosphorous, iodine, magnesium, zinc,
selenium, copper, manganese, chromium, molybdenum,
chlorine, or potassium nickel, tin, silicon, vanadium,
boron.
Lovercheck | 8; see Ans. 5. This disclosure includes the six
vitamins recited in claim 16, and “at least four” vitamins
disclosed in Lovercheck encompasses six vitamins, as claimed.
3 Arguments relevant to § 102 alone or to both § 102 and § 103 are
addressed under this section; arguments applicable only to the § 103
rejections are addressed infra in section B.
2
Appeal 2017-004063
Application 14/170,059
Accordingly, we discern no error in the Examiner’s finding that
Lovercheck anticipates claim 11.
Dec. 5.
Appellant asserts the Decision “did not address Applicant’s argument
that Lovercheck does not disclose caffeine and the composition recited in
claim 11, which specifically includes K vitamins.” Req. 1. To be sure, the
discussion quoted above from our Decision focuses on Lovercheck’s
vitamin-related disclosures. This is for two reasons: (1) the only additional
limitation of claim 11 (i.e., in addition to those of claim 1) relates to the
vitamin supplement component (see Br. 21—22 (Claims Appendix)); and (2)
Appellant’s arguments specific to paragraph 8 of Lovercheck focus only on
the combination of vitamins disclosed therein (see Br. 10—11).4 5
On Request for Rehearing, Appellant does not address the Decision’s
discussion of paragraph 8 of Lovercheck, but rather asserts that “in all the
examples disclosed in Lovercheck, when Vitamin K is included, caffeine is
not included.” Req. 2. This is not a persuasive argument, as our Decision
did not rely on the teachings of any single Example in Lovercheck to sustain
4 As pointed out above, Appellant did not argue claim 1 on appeal (and does
not attempt to do so on rehearing). Accordingly, the Examiner’s findings
with respect to claim 1 (i.e., that Lovercheck teaches a composition
comprising an NS AID, caffeine, and a vitamin supplement (see final Action
5 (citing Lovercheck || 8, 85)) stand unchallenged. See 37 C.L.R.
§ 41.37(c)(l)(iv); see also Ex parte Borden, 2010 WL 191083 at *2 (BPAI
2010) (informative) (“Any bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived.”).
4 “[T]he question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.” Celeritas Techs. Ltd. v. Rockwell
Inti Corp., 150 L.3d 1354, 1361 (Led. Cir. 1998).
3
Appeal 2017-004063
Application 14/170,059
the Examiner’s rejection of claim 11 under § 102. See Dec. 4—5.
Furthermore, “a reference is not limited to the disclosure of specific working
examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted);
see also In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (explaining
that an exemplary use is not a limiting use absent contrary suggestion in
prior art reference, and affirming anticipation finding). Indeed, “a reference
can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the
limitations arranged or combined as in the claim, if a person of skill in the
art, reading the reference, would ‘at once envisage’ the claimed arrangement
or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681
(CCPA 1962)). Reading Fovercheck, it would be difficult to conclude
otherwise here. Cf. Fovercheck | 87 (introducing discussion of a
multivitamin without vitamin K (as described in Table IV) with
“[alternatively,” where the immediately preceding text and table (1 86 and
Table III) refer to a multivitamin containing vitamin K); Ans. 5 (explaining
that Fovercheck | 87 “teaches that either vitamin formula of Table III or IV
may be used in the following examples, and Example 14 teaches a vitamin
mixture, NS AID and caffeine”).
For these reasons and those already of record, we conclude that
Appellant has not demonstrated in the Request for Rehearing that the Board
misapprehended or overlooked any points in our Decision in affirming the
Examiner’s rejection of claim 11 as anticipated by Fovercheck. See 37
C.F.R. § 41.52(a).
4
Appeal 2017-004063
Application 14/170,059
B. Rejections 5 & 6 (§ 103)
Appellant further argues that the absence of examples in Lovercheck
including both caffeine and vitamin K amounts to a teaching away of such a
combination. Req. 2. This argument, which is only germane to the § 103
rejections,* * * 5 also fails. First, it is waived, as it was not presented in the
Appeal Brief and does not fall within the classes of permitted new
arguments on request for rehearing. See 37 C.F.R. § 41.52(a). Second, it is
not persuasive, because teaching another way is not the same as teaching
away. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if
it merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004)). Appellant directs us to no disclosure in Lovercheck cautioning
against combining caffeine and vitamin K, and we discern none.
Rather, Lovercheck discloses combining commercially-available
multivitamins with commercially-available discomfort relievers by grinding
the source tablets together to make a combined tablet. See e.g., Lovercheck
^Hf 85—89. The multivitamins may or may not include vitamin K (