Ex Parte Sowden et al

Board of Patent Appeals and Interferences

Jul 15, 2011

10476529 (B.P.A.I. Jul. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HARRY S. SNOWDEN, FRANK J. BUNICK,
GERARD P. McNALLY, DER-YANG LEE, and MARTIN THOMAS
__________

Appeal 2011-003835
Application 10/476,529
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
composite dosage forms. The Patent Examiner rejected the claims as
anticipated, obvious, and on the ground of non-statutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 1-9, 11, 20-39, 41, 43-48, 50-52, 54 and 55 are on appeal.
Claim 1 is representative and reads as follows:
1. A dosage form comprising:
at least one active ingredient,
a first portion comprising a first molded material, and
a second portion comprising a second material which is a compressed
powder material,
wherein the compressed powder material comprises a lubricant and is
compositionally different from the first material,
wherein the first portion and the second portions are joined at an
interface, and wherein a surface of the first portion at the interface resides
substantially conformally upon a surface of the second portion at the
interface, and
in which wherein the first portion and the second portions interlock in
a tongue and groove fashion at the interface.

The Examiner rejected the claims as follows:
• claims 1, 2, 7, 11, 20-31, 33-39, 41, 44, 48, 50-52, 54, and 55 under
35 U.S.C. §102(b) as anticipated by Beringer;1
• claims 1-9, 11, 20-39, 41, 43-48, 50-52, 54, and 55 under 35 U.S.C.
§ 103(a) as unpatentable over Beringer and Strumor;2 and
• claims 1-3, 6,7, 9, 11, 20-39, 41, 44, 47, 48, 50-52, 54, and 55
provisionally on the ground of non-statutory obviousness-type double
patenting as unpatentable over claims 18-36 and 38-42 of Lee.3

1 US Patent No. 4,139, 589 issued to Monique Beringer et al., Feb. 13, 1979.
2 US Patent No. 6,149, 939 issued to Matthew A. Strumor et al., Nov. 21,
2000.
3 Application Serial No. 10/476, 388 issued as Patent No. US 7,807,197 B2
to Der-Yang Lee et al., Oct. 5, 2010.

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Application 10/476,529

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Claims 2-9, 11, 20-39, 41, 43-48, 50-52, 54 and 55 have not been
argued separately and therefore stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

ANTICIPATION/OBVIOUSNESS
The Issue
The Examiner’s position is that Beringer taught the dosage form
recited in claim 1, including the limitation “wherein the first portion and the
second portions interlock in a tongue and groove fashion at the interface.”
(Ans. 10.) Specifically, the Examiner found that Beringer’s figure 6A
illustrated a tongue and groove design. (Id. at 10, 13-14.)
Appellants challenge both the anticipation and obviousness rejections
by contending that Beringer did “not disclose a dosage form having a first
portion and second portion that interlock in a tongue and groove fashion at
an interface as claimed.” (App. Br. 7, 8.) In support of this contention,
Appellants state, “[c]ompare Figure 6A of Beringer et al. to Figures 8A-8C
of the present application.” (Id. at 7.)
The issue with respect to these rejections is whether Beringer taught a
dosage form “wherein the first portion and the second portions interlock in a
tongue and groove fashion at the interface.”

Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of Beringer’s disclosure. (See Ans. 9-11, 13-15.)
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2. “Interlock,” when used as a verb, is generally defined as “to lock
together: unite: to connect so that the motion or operation of any part is
constrained by another.” (Merriam-Webster Online Dictionary.4)
3. “Tongue and groove” is generally defined as “a joint made by a
tongue on one edge of a board fitting into a corresponding groove on the
edge of another board.” (Merriam-Webster Online Dictionary.)5

Principles of Law
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Analysis
Appellants did not provide a limiting definition for the terms
“interlock” or “tongue and groove” in the claims or the Specification. Nor
have Appellants asserted in their Appeal Brief that a definition other than the
common and ordinary meaning of these terms should apply.

4 Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/interlock (last visited July 7, 2011).
5Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/tongueandgroove (Last visited July 7, 2011).

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We find that the ordinary meaning of the term “interlock” requires
two or more things to lock together, i.e., unite. (FF-2.) We also find that the
ordinary meaning of the term “tongue and groove” generally refers to a joint
made by a tongue on one edge of a component fitting into a corresponding
groove on the edge of another component. (See FF-3.) We have reviewed
Specification Figures 8A-8C as directed by Appellants’ argument. (see App.
Br. 23, Fig. App’x). It is not readily apparent that figure 8A illustrates the
first portion and second portion interlocking in a tongue and groove fashion,
as these terms are generally defined. When we consider the ordinary
meaning of these terms and compare the Specification figures 8A and 8C
with Beringer’s figure 6A (see Ans. 14) we conclude that the claims do not
exclude the arrangement Beringer depicts: fitting together by projections and
recesses (interlocking). We agree with the Examiner that Beringer’s figure
6A may be interpreted in more than one way as illustrating an interlock in a
tongue and groove fashion at the interface. (See Ans. 14.) In particular, as
the Examiner explained, Beringer described figure 6A as depicting a
lowermost layer 19 provided with a conical surface 21 and a central recess
22 (i.e., groove) and a preformed element of plastic mass 24 (i.e., tongue)
that is fitted into the central recess/groove. (Ans. 13.) Appellants have not
established with persuasive evidence that a different interpretation should
apply. See Bigio, 381 F.3d at 1325. Consequently, we find that Beringer
disclosed a dosage form “wherein the first portion and the second portions
interlock in a tongue and groove fashion at the interface,” as recited in
independent claim 1.
Accordingly, we affirm the anticipation and obviousness rejections.
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OBVIOUSNESS-TYPE DOUBLE PATENTING
The Examiner’s position is that instant claims 1-3, 6-7, 9, 11, 20-39,
41, 44, 47-48, 50-52, and 54-55 are not identical to, but are not patentably
distinct from, claims 18-36 and 38-42 of Lee because the current application
and Lee recite “multiportion dosage forms comprising active agents, shells,
indentations, interfaces, colors, molds, compressed materials, inserts,
microelectric device, openings through shell, and patterns.” (Ans. 13.) The
Examiner provisionally rejected the claims because, at the time of the
rejection, the conflicting claims had not been patented. (Id.)
Without challenging the Examiner’s position, Appellants respond by
stating that they “will submit a terminal disclaimer if appropriate upon an
indication that all rejections except for the double patenting rejections have
been removed in this application.” (App. Br. 9.)
Accordingly, we affirm the rejection.

CONCLUSIONS OF LAW
Beringer taught a dosage form “wherein the first portion and the
second portions interlock in a tongue and groove fashion at the interface,” as
instantly claimed.
Appellants have not established that instant claims 1-3, 6-7, 9, 11,
20-39, 41, 44, 47-48, 50-52, and 54-55 are not patentably distinct from
claims 18-36 and 38-42 of Lee.

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SUMMARY
We affirm the rejection of claims 1, 2, 7, 11, 20-31, 33-39, 41, 44, 48,
50-52, 54, and 55 under 35 U.S.C. §102(b) as anticipated by Beringer;
we affirm the rejection of claims 1-9, 11, 20-39, 41, 43-48, 50-52, 54,
and 55 under 35 U.S.C. § 103(a) as unpatentable over Beringer and Strumor;
and
we affirm the rejection of claims 1-3, 6, 7, 9, 11, 20-39, 41, 44, 47, 48,
50-52, 54, and 55 on the ground of non-statutory obviousness-type double
patenting as unpatentable over claims 18-36 and 38-42 of Lee.

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

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