Ex parte Tsushima et al.

Board of Patent Appeals and Interferences

Sep 14, 1999

08127555 (B.P.A.I. Sep. 14, 1999)

Application for patent filed September 28, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YUKI TSUSHIMA,
KAZUHIDE ASHIZAWA, and SUMIO WATANABE
__________
Appeal No. 97-2159
Application 08/127,5551
__________
ON BRIEF
__________
Before GARRIS, WALTZ, and SPIEGEL, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 3 through 5 and 10 through 17. Subsequent to the
Appeal No. 97-2159
Application No. 08/127,555
2
final rejection, the appellants submitted an amendment adding
new independent claim 27 (see the amendment filed December 13,
1995 as Paper No. 14), and the examiner entered this amendment
(see the advisory action mailed January 16, 1996 as Paper No.
15). Thus, claims 3 through 5, 10 through 17 and 27 are
before us on this appeal (see the notice of appeal filed
January 16, 1996 as Paper No. 16).
The subject matter on appeal relates to a method of
preparing a molded, rapid disintegration human ingestible
tablet in which a wetted paste of tablet material is placed in
a mold cavity, compressed at a pressure of 5 to 100 Kg per 10
mm of tablet diameter, removed from the mold and dried to a
rapid disintegration tablet. This appealed subject matter is
adequately illustrated by independent claim 10 which reads as
follows:
10. In a method of preparing a molded, rapid
disintegration human ingestible tablet where a mold cavity is
filled with a wetted paste of material forming the tablet to
shape the wetted paste into a wetted tablet, the wetted tablet
is removed from the mold cavity and dried to a rapid
disintegration tablet, the improvement comprising compressing
the wetted tablet while in the mold cavity at a pressure of 5
to 100 Kg per 10 mm of tablet diameter.
The reference relied upon by the examiner in the
rejections before us is:
Appeal No. 97-2159
Application No. 08/127,555
By an apparently inadvertent oversight, the examiner has2
failed to include independent claim 27 in the rejections
advanced on this appeal. In order to completely disposed of
the issues before us, we will assume that the above noted
rejections include independent claim 27.
3
Schmitt 4,004,036 Jan. 18,
1977
As indicated by the examiner on pages 2 and 3 of the
answer, claims 5 and 10 through 15 are rejected under 35
U.S.C. § 102(b) as being anticipated by Schmitt, and claims 3,
4, 16 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Schmitt. 2
We will not sustain either of these rejections.
In order for a section 102 rejection to be proper, the
applied reference must clearly and unequivocally disclose the
claimed invention or direct those skilled in the art to the
claimed invention without any need for picking, choosing and
combining various disclosures not directly related to each
other by the teachings of the reference. In re Arkley, 455
F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972). In making her
section 102 rejection of claims 5 and 10 through 15, it is
apparent that the examiner has inappropriately picked, chosen
and combined various disclosures of the Schmitt reference
Appeal No. 97-2159
Application No. 08/127,555
4
which are not directly related to each other.
An example of this inappropriate action by the examiner
involves the limitation in the appealed independent claims
concerning a wetted paste of material (claim 10) or a wetted
powder (claim 27). Regarding this feature, Schmitt discloses
that molded tablet triturates were “originally made from moist
materials on a triturate mold and [are] now usually made on a
tablet machine” (column 9, lines 53-55). Because patentee’s
triturate mold disclosure is not directly related to his
tablet machine disclosure, the “moist materials” feature which
is attributed by Schmitt to a triturate mold cannot also be
attributed to a tablet machine as the examiner necessarily has
done in her section 102 rejection.
In light of the foregoing, it is clear that the
examiner’s rejection under 35 U.S.C. § 102 cannot be
sustained.
As for the section 103 rejection, it is here appropriate
to clarify that the examiner’s obviousness position is limited
to the powder coating features of dependent claims 3, 4, 16
and 17. Thus, the section 103 rejection formulated by the
examiner does not even address much less cure the deficiencies
Appeal No. 97-2159
Application No. 08/127,555
5
discussed above with respect to her section 102 rejection.
Because of these deficiencies, we also cannot sustain the
examiner’s rejection under 35 U.S.C. § 103.
Appeal No. 97-2159
Application No. 08/127,555
6
For the above stated reasons, the decision of the
examiner rejecting claims 3 through 5, 10 through 17 and 27
must be reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Thomas A. Waltz ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Carol A. Spiegel )
Administrative Patent Judge )
tdc
Appeal No. 97-2159
Application No. 08/127,555
7
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