Ex Parte Swinson et alDownload PDFPatent Trial and Appeal BoardJun 9, 201511571967 (P.T.A.B. Jun. 9, 2015) Copy Citation 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. 11/571,967 05/09/2007 Joel Swinson 100746-70 KGB 2647 27384 7590 06/09/2015 Briscoe, Kurt G. Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 EXAMINER ROGERS, JAMES WILLIAM ART UNIT PAPER NUMBER 1618 MAIL DATE DELIVERY MODE 06/09/2015 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOEL SWINSON, BARRY JONES, and MARK REID FRYE1 __________ Appeal 2012-010958 Application 11/571,967 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, CHRISTOPHER G. PAULRAJ, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The present invention relates to “a container constructed from a material comprising a copolymer of acrylonitrile, methyl acrylate, and butadiene” (Spec. ¶ 10) and “a fluoroether-containing inhalation anesthetic 1 Appellants identify the Real Party in Interest as Halocarbon Products Corporation. App. Br. 1. Appeal 2012-010958 Application 11/571,967 2 [such as sevoflurane] is contained in the interior space of the container” (id. ¶ 11, see id. ¶ 16). Claims 1–16 are before us. Independent claim 1 is illustrative and reads as follows: 1. An inhalation anesthetic product comprising: a container constructed from a material comprising a copolymer of acrylonitrile, methyl acrylate, and butadiene, said container defining an interior space constructed to contain therein, external to a patient’s body, an inhalation anesthetic; and a volume of a fluoroether inhalation anesthetic compound contained in said interior space defined by said container. The following ground of rejection is before us for review: I. The Examiner rejects claims 1–16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Flament-Garcia,2 Horian,3 and Rausing.4 FACTUAL FINDINGS We have reviewed Appellants’ contentions that the Examiner erred in rejecting claims 1–16 as unpatentable over the cited art. (App. Br. 5–10; Reply 1–5.) To the extent not otherwise discussed below, we disagree with Appellants’ conclusions and adopt as our own the factual findings and analysis set forth in the Examiner’s Answer.5 For clarity, we highlight and address the following: 2 Flament-Garcia et al., US 6,074,668, issued June 13, 2000. 3 Horian, US 6,769,436 B2, issued Aug. 3, 2004. 4 Rausing, US 4,512,832, issued April 23, 1985. 5 The Examiner’s typographical errors in the Flament-Garcia patent number (US 6,074,668) does not affect our analysis. Appeal 2012-010958 Application 11/571,967 3 FF1. Flament-Garcia teaches that fluoroether inhalation anesthetic agents, such as sevoflurane, are typically distributed in containers constructed of Type III glass, which comprises silicon dioxide, calcium hydroxide, sodium hydroxide, and aluminum oxide. Flament-Garcia 1:12–39. “However, the aluminum oxide contained in glass materials such as type III glass tend to act as Lewis acids when exposed directly to the fluoroether agent, thereby facilitating degradation of the fluoroether agent.” Id. at 1:39–43. Thus, reactions between the fluoroether anesthetics and the aluminum oxide in glass can result in degradation of both the anesthetic and the structural integrity of the glass container. Id. at 1:39–50. Accordingly, Flament-Garcia teaches the desirability of “a container constructed from a material other than glass in order to store, transport, and dispense inhalation anesthetics, thereby avoiding the above-discussed shortcomings of glass.” Id. at 2:11–14. FF2. To avoid the shortcomings of glass, Flament-Garcia teaches a container comprising polyethylene naphthalate for use with fluoroether inhalation anesthetics such as sevoflurane. See, e.g., id. at Abstract, 2:11–14, claim 1. “The preferred material does not contain Lewis acids which can promote the degradation of the inhalation anesthetic agent, provides a sufficient barrier to vapor transmission into and out of the container, and increases the container’s resistance to breakage relative to a glass container.” Id. at 2:14–19. FF3. Horian discloses an inhaler for volatiles such as nicotine comprising the engineered barrier plastic Barex. Horian 2:40–67. Horian teaches that “Barex is . . . used by many food and drug manufactures to preserve Appeal 2012-010958 Application 11/571,967 4 volatile and or perishable chemicals and foods in the packaging process.” Id. at 2:63–65. FF4. According to the Specification, “[a]n example of a copolymer of acrylonitrile, methyl acrylate, and butadiene material useful in connection with the present invention is a copolymer of acrylonitrile, methyl acrylate, and butadiene called Barex® resin (trademark of BP Petrochemicals Company), a covalently crosslinked 1,3-butadiene-based copolymer of methyl acrylate and acrylonitrile.” Spec. ¶ 20. FF5. Rausing teaches the use of Barex plastic for packaging containers, noting that it “has the advantage that it is easy to extrude, to orientate and very easy to weld . . . has very good gas-tightness, especially for oxygen, and the material is resistant, moreover, to most chemicals and solvents.” Rausing 1:8–9; 2:17–336. PRINCIPLES OF LAW Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Obviousness does not require absolute predictability of success. In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). However, rejections on obviousness grounds cannot be sustained by mere conclusory statements. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). There must be some rational unpinning to support the legal conclusion of obviousness. Id. Appeal 2012-010958 Application 11/571,967 5 ANALYSIS The Examiner finds that Horian and Rausing teach that Barex was well known in the art as a packaging material to preserve volatile and/or perishable chemicals, and that it has the advantages of (1) very good gas impermeability; (2) resistance to most chemicals and solvents; and (3) superior processability as compared to other types of plastics “including ease of extruding and the ability to weld the material with ultrasonic techniques.” Ans. 5. Accordingly, [because] the primary and secondary references are all drawn to containers containing volatile compounds one of ordinary skill in the art would have a high expectation of success in substituting the plastic Barex for the plastic polyethylene napthalate used to make the inhaler container of Flament- Garcia. The reason to make such a modification to Flament- Garcia would be to provide an inhaler with the disclosed advantages of the plastic Barex, which include good processability and good air tightness which provides a barrier to vapor seeping into and out of the container. Id. at 5–6. The Examiner further notes that Flament-Garcia teaches that glass containers were disadvantageous because the Lewis-acids in the glass could react with fluoroether anesthetics to produce degradation products. Id. at 6– 7. Thus, the substitution of Barex (a plastic) for the type III glass known to produce Lewis-acid induced degradation products is consistent Flament- Garcia’s stated desirability for “a container constructed from a material other than glass in order to store, transport, and dispense inhalation anesthetics.”6 6 We take no position on the Examiner’s statement that “one of ordinary skill in the art would expect that the container would not produce Lewis-acid Appeal 2012-010958 Application 11/571,967 6 Flament-Garcia 2:11–14. Flament-Garcia thus provides “good reasoning for one of ordinary skill in the art to use other materials and not glass to contain fluoroether anesthetics.” Ans. 8–9; see FF 1. Appellants argue that the Examiner fails to establish a reason one of ordinary skill in the art would expect Barex to be nonreactive with fluoroether anesthetics such as sevoflurane. App. Br. 6–10; Reply 3. Appellants assert that “[a]t best, Horian and Rausing show Barex® has been used in connection with volatile materials, namely nicotine and food products,” but “[n]either reference evidences that Barex® has been used in connection with anesthetics generally, or in connection with degradation labile fluoroether anesthetics.” App. Br. 9 (emphasis omitted). Contrary to the implication of Appellants’ position, “[o]bviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903–904 (Fed. Cir. 1988)) On the present record, we agree with the Examiner’s finding that, “since the primary and secondary references are all drawn to the field of containers for volatile compounds one of ordinary skill in the art would have a high expectation of success in substituting the plastic Barex for the plastic polyethylene napthalate used to make the inhaler container of Flament- Garcia.” Ans. 8. One of ordinary skill in the art would have reason to make that substitution in light of the advantageous properties of Barex including resistance to most chemicals and solvents as taught by Rausing (FF 5) and Horian’s teaching that “Barex is . . . used by many food and drug induced degradation products” (see Ans. 6, 7), nor is that statement necessary to our Decision. Appeal 2012-010958 Application 11/571,967 7 manufactures to preserve volatile and or perishable chemicals and foods in the packaging process,” and as an inhaler for volatiles such as nicotine (FF 3). For the reasons set forth above, we find that the Examiner has set forth sufficient rational unpinning to support a legal conclusion of obviousness. SUMMARY We affirm the rejection of claims 1–16 under 35 U.S.C. § 103(a) as unpatentable over the combination of Flament-Garcia, Horian, and Rausing. 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 bar Copy with citationCopy as parenthetical citation