Ex Parte Smith

Board of Patent Appeals and Interferences

May 27, 2011

10294509 (B.P.A.I. May. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCIS X. SMITH
__________

Appeal 2010-010125
Application 10/294,509
Technology Center 1600
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Francis X. Smith (Appellant) requests reconsideration of the Decision
on Appeal entered February 28, 2011, which affirmed the rejection of both
of Appellant’s pending claims. More specifically, Appellant requests that
the appeal be “reheard and reconsidered by an expanded panel on the written
record, as supplemented below.” (Request 1.)

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BACKGROUND
Appellant claims an ophthalmic solution comprising creatine, a buffer,
and water, and characterized as “suitable for ophthalmic applications” (claim
26) or “suitable for ophthalmic applications [a]s a contact lens solution”
(claim 27). The Patent Examiner found that (1) an earlier patent described a
creatine containing, buffered, aqueous pharmaceutical formulation
(Kaddurah-Daouk), and (2) another earlier patent describing a creatine
containing beverage taught that creatine gradually decomposes in neutral to
acidic solutions but not in alkaline solutions (Sueoka). The Examiner found
that Sueoka suggested buffering aqueous creatine solutions at alkaline pH, as
Appellant claims, to preserve the creatine. This Board agreed with the
Examiner that the solution suggested by the prior art would have been
“suitable” for ophthalmic applications, including a contact lens solution.
Finding that the pertinent art is “creatine preparations for administration to
human beings,” this Board rejected Appellant’s contention that the prior art
references were not “analogous” art.
Appellant requests rehearing on the grounds that:
“the Board decision failed to fully address all of the arguments set
forth in the Appeal Brief;” and
“the Board decision has misapplied the Clay test in application to
analogous art.” (Request 4.)

ANALYSIS
Principles of Law
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
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of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay,
966 F.2d 656, 658-59 (Fed. Cir. 1992). “A reference is reasonably pertinent
if, even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
considering his problem.” Id. at 659.
When obviousness over a combination of prior art teachings is
considered, the proper question to ask is whether a person of ordinary skill
in the art, facing the wide range of needs created by developments in the
field of endeavor, would have seen a benefit to combining the prior art
teachings. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007). “One of
the ways in which a patent’s subject matter can be proved obvious is by
noting that there existed at the time of invention a known problem for which
there was an obvious solution encompassed by the patent’s claims.” Id. at
419-420.

Discussion
As an initial matter, Appellant requested rehearing by an expanded
panel. The original Decision was rendered by a three judge panel.
35 U.S.C. § 6(b). Appellant’s request did not identify a reason for
appointing an expanded panel. There being no reason to grant the request, it
is denied.
Appellant first contends that because neither the Kaddurah-Daouk or
the Sueka reference is directed to opthalmic solutions, and because neither
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reference is directed to reducing protein or other cationic depositions on
contact lenses, they are nonanalogous art. (Request 4.) The Decision found
to the contrary that because both references concern creatine preparations for
administration to human beings, they are analogous art. (Decision at 4.)
Appellant contends that because “Kaddurah-Daouk is in the field of tablets,
capsules, injections, ointments and lotions containing creatine, and Sueka is
in the field of creatine fortified beverages, both references fail the first prong
of the Clay test.” (Request 5.) According to Appellant, “neither reference is
reasonably pertinent to the problem with which the inventor was concerned,”
and “both references fail the second prong of the Clay test.” (Id.)
We adhere to the Decision’s finding that the field of invention is
“creatine preparations for administration to human beings,” because the
claims define a creatine solution for administration to human beings.
(Decision at 4.) Both prior art references describe creatine solutions for
administration to human beings, and we adhere to the Decision’s finding that
both references are “analogous” art. (Id.) We again reject Appellant’s
contention that because the claimed solution is suitable for ophthalmic
applications, a person of ordinary skill in the ophthalmic application art, who
is working with creatine solutions, would be ignorant of prior art
descriptions of creatine solutions, or would not find descriptions of prior art
creatine solutions pertinent to their own problem.
We continue to agree with the Examiner that the solution suggested
by the prior art is the same as the solution Appellant now defines as
“suitable” for ophthalmic applications. We adhere to the Decision’s
affirmance of the obviousness rejections because “it is not necessary in order
to establish a prima facie case of obviousness that there be a suggestion in or
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expectation from the prior art that the claimed compound or composition
will have the same or a similar utility as one newly discovered by applicant.”
In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (emphasis in original);
Appellant also contends “combining the references does not result in
the claimed invention.” (Request 7.) That is, the claims require an
ophthalmic solution, but in Appellant’s view the references do not provide it.
We agree that this record does not show awareness in the prior art that
creatine containing solutions were suitable for ophthalmic applications.
Appellant’s discovery that the solution suggested by the prior art is suitable
for those applications does not render the obvious solution patentable to
Appellant. See In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (rejecting
the notion that “a structure suggested by the prior art, and, hence, potentially
in the possession of the public, is patentable to [Appellants] because it also
possesses an inherent, but hitherto unknown, function which they claim to
have discovered. This is not the law. A patent on such a structure would
remove from the public that which is in the public domain by virtue of its
inclusion in, or obviousness from, the prior art”).

SUMMARY
We deny the requested relief.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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