Ex Parte ThorntonDownload PDFPatent Trial and Appeal BoardAug 2, 201612547193 (P.T.A.B. Aug. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/547, 193 08/25/2009 29747 7590 08/04/2016 GREENBERG TRAURIG (L V) 77 West Wacker Drive, Suite 3100 Intellectual Property Department Chicago, IL 60601 FIRST NAMED INVENTOR Joseph P. Thornton 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 119095.010400 4806 EXAMINER GAR YU, LIANKO G ART UNIT PAPER NUMBER 1676 NOTIFICATION DATE DELIVERY MODE 08/04/2016 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): gtipmail@ gtlaw .com clairt@gtlaw.com rupickd@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH P. THORNTON Appeal2014-003221 Application 12/547,193 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, JOHN G. NEW, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134(a) involves claims 1 and 2 (Br. 5).2 Examiner entered a rejection under 35 U.S.C. § 102(b). We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies the Real Party in Interest as "Nevada Medical Resources, LLC" (Br. 3). 2 We recognize Appellant's August 16, 2012 Amendment, which appears to reflect Appellant's intention to cancel claims 3-10 (see Appellant's August 16, 2012 Amendment 2 ("Claims 3-10 have been canceled")). Examiner, however, does not appear to have canceled claims 3-10 (see Final Rej. 2 ("[ c ]laims 3-7 [stand] withdrawn from further consideration")). Appeal2014-003221 Application 12/547,193 STATEMENT OF THE CASE Claim 1 is representative and reproduced below: 1. A soaking agent for the treatment of hemorrhoids comprising: bromelain; and one or more ingredients in combination with said bromelain to form granules or powder dissolvable in water in which a subject may soak to treat a hemorrhoid condition. Claims 1and2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Cho. 3 ISSUE Does the preponderance of evidence on this record support Examiner's finding that Cho teaches Appellant's claimed invention? FACTUAL FINDINGS (FF) FF 1. Cho "provides compositions (e.g., dietary supplements) for reducing pain, inflammation, and/or stiffness associated with inflammatory conditions such as arthritis or OA" (Cho i-f 9; see generally Ans. 3). FF 2. Cho's compositions "are intended to be ingested (e.g., orally or intragastrically), but can be administered to a mammal by other routes ... depend[ing] on a variety of factors, such as the environment (e.g., the circumstances resulting in the condition or symptoms) and therapeutic goals" (Cho i-f 50; see generally Final Rej. 5; Ans. 3). FF 3. Cho' s compositions "can be in the form of a liquid, solution, suspension, tablet, powder, cream, mist, atomized vapor, aerosol, soft gelatin capsules, or hard gelatin capsules" (Cho i-f 53; see id. ("Typically, the compositions provided herein are in a powder or tablet form with a fast disintegration time"); see generally Final Rej. 5; Ans. 3). 3 Cho, US 2003/0143292 Al, published July 31, 2003. 2 Appeal2014-003221 Application 12/547,193 FF 4. Cho's composition can be combined with an aqueous carrier, such as water (Cho i-f 54). FF 5. Cho exemplifies a "[p]owder formulation" comprising bromelain and one or more ingredients in combination with bromelain (Cho i-f 80; see generally Final Rej. 5; Ans. 3 and 4). ANALYSIS Appellant's claim 1 is directed to a product that comprises bro me lain and one or more ingredients in combination with bromelain to form a powder that is dissolvable in water (see Appellant's claim 1; cf FF 1-5). Examiner finds that "Cho discloses a composition used to reduce pain and inflammation comprising bromelain and one or more ingredients in combination with bromelain wherein the composition is in the form of a powder" (Final Rej. 5; Ans. 3 and 4; FF 1-5). We recognize, but are not persuaded by, Appellant's contention that "Cho fails to disclose or suggest a soaking agent for the treatment of hemorrhoids comprising: bromelain; and one or more ingredients in combination with said bromelain to form granules or powder dissolvable in water in which a subject may soak to treat a hemorrhoid condition" (Br. 1 O; id. ("Cho does not disclose, suggest or mention the use of its formulations as a soaking agent")). See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("a new intended use for an old product does not make a claim to that old product patentable"). Cho "provides compositions (e.g., dietary supplements) for reducing pain, inflammation, and/or stiffness associated with inflammatory conditions such as arthritis or OA" (FF 1 (emphasis added)). Cho teaches compositions that can be administered to mammals by routes other than orally or 3 Appeal2014-003221 Application 12/547,193 intragastrically, wherein the route of delivery "depend[s] on a variety of factors, such as the environment (e.g., the circumstances resulting in the condition or symptoms) and therapeutic goals" (FF 2). In addition, Cho teaches powder formulations comprising bromelain and one or more ingredients in combination with bromelain, wherein the formulations have a fast disintegration time and can be used in combination with an aqueous carrier (FF 3-5). For the foregoing reasons, we are not persuaded by Appellant's contention that Cho's "powder forms ... are clearly meant to be injested [sic] and not dissolved in water to act as a soaking agent" (Br. 9). CONCLUSION OF LAW The preponderance of evidence on this record supports Examiner's finding that Cho teaches Appellant's claimed invention. The rejection of claim 1under35 U.S.C. § 102(b) as being anticipated by Cho is affirmed. Claim 2 is not separately argued and fall with claim 1. TIME PERIOD FOR RESPONSE 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 4 Copy with citationCopy as parenthetical citation