Ex Parte Uematsu

Patent Trial and Appeal Board

May 30, 2017

12159449 (P.T.A.B. May. 30, 2017)

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.
12/159,449 07/20/2010 Masanori Uematsu 037209.60447US 7690
23911 7590 06/01/2017
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
LEE, JOSHUA S
ART UNIT PAPER NUMBER
3764
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASANORIUEMATSU
Appeal 2015-000423
Application 12/159,449
Technology Center 3700
Before LEE L. STEPINA, PAUL J. KORNICZKY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-000423
Application 12/159,449
STATEMENT OF THE CASE
Appellant Masanori Uematsu1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision, as set forth in the Final Action dated September 25,
2013 (“Final Act.”), rejecting claims 1—17. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to an adhesive patch. Claim 1, the only
independent claim, is reproduced below:
1. An adhesive patch having a multilayer structure
comprising
a backing, an adhesive drug-containing matrix that is
spread substantially entirely over one surface of the backing and
is of a uniform thickness, and a liner that adheres to a surface of
the adhesive drug-containing matrix, wherein
(a) the liner adhering to the surface of the adhesive drug-
containing matrix comprises first and second liners;
(b) the first liner is folded at a middle thereof, the middle
being equidistant from ends of the first liner, so that the first liner
is divided by a fold into first and second sections that together
form a V-shaped liner, the first section adhering to the surface of
the adhesive drug-containing matrix from one end of the surface
of the adhesive drug-containing matrix with the fold arranged in
the vicinity of a middle of the adhesive drug-containing matrix,
the second section serving as a tab of the V-shaped liner; and
(c) the second liner adheres to a remaining part of the
surface of the adhesive drug-containing matrix with one end of
the second liner covering the fold of the V-shaped first liner to
form a laminated part that serves as a tab.
1 Appellant identifies Teikoku Seiyaku Co., Ltd. as the real party in
interest. Appeal Br. 1.
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Appeal 2015-000423
Application 12/159,449
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Hansen US 6,140,548 Oct. 31, 2000
Mizota US 2003/0138479 A1 July 24, 2003
Kobayashi JP 2000-219622 Aug. 8, 2000
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—7 and 11—17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hansen and Kobayashi.
2. Claims 8—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hansen, Kobayashi, and Mizota.
Appellant seeks our review of these rejections.
DISCUSSION
The Rejection of Claims 1—7 and 11—17
as Unpatentable Over Hansen and Kobayashi
Appellant argues claims 1—7 and 11—17 as a group. Appeal Br. 11—12.
We select independent claim 1 as the representative claim, and claims 2—7
and 11—12 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Hansen discloses substantially all of the
limitations of independent claim 1, including an adhesive matrix “of a
uniform thickness” and “the second liner covering the fold of the V-shaped
first liner.” Final Act. 4. The Examiner finds that Hansen does not disclose
an adhesive matrix that contains a drug, which is disclosed by Kobayashi.
Id. The Examiner determines it would have been obvious “to modify
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Appeal 2015-000423
Application 12/159,449
Hansen’s adhesive layer with Kobayashi’s adhesive layer in order to utilize
medicinal properties to promote a healing effect.” Id.
Appellant contends that the Examiner’s rejection is erroneous for
several reasons.2 First, Appellant argues that the Examiner’s definition of
cover, based on the ordinary definition in the Merriam-Webster Dictionary,
as “something that conceals or obscures” and “something that is placed over
or about another thing” is incorrect. Reply Br. 2—3 (citing Ans. 9); Appeal
Br. 7—8. Instead of proposing an alternate definition of cover, Appellant
merely asserts that the Specification states that “the second liner in Figure 1 .
. . covers the fold (44) of the first liner . . . and Appellant’s Figure 1.2
depicts the second liner covering the fold (44).” Reply Br. 3 (citing Spec. Tflf
74—88). The Examiner’s proposed definition, however, is consistent with
the usage of the term “cover” and “covering” in the Specification.
In response to the Examiner’s finding that Hansen’s protective layer
24 (i.e., second liner) is “covering the fold of the V-shaped first liner”
recited in claim 1, Appellant attempts to differentiate Hansen and the
Specification by arguing, for example, that Hansen “discusses the flow of
the adhesive matrix around the fold. ‘The adhesive material in the adhesive
layer 23 has almost no tendency to flow to each side of the area of bending
28 of the V-shaped tab member 25 during manufacture’ . . . and discloses
Hansen’s invention decreases the amount of adhesive layer in front of the
fold that is exposed to air.” Reply Br. 3^4 (citing Hansen 7:26—29, 4:53—57,
Abstract). However, Hansen’s second liner 24 “conceals or obscures” fold
28 and “is placed over or about” fold 28 of the V-shaped first liner 25 and,
2 Appellant withdrew the argument that Hansen fails to disclose a first
liner with equidistant folds. Reply Br. 1; see Appeal Br. 8—9.
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Appeal 2015-000423
Application 12/159,449
thus, “covers” fold 28 as recited in claim 28. Appellant does not
persuasively identify error in the Examiner’s finding.
Second, Appellant argues that Hansen “fails to teach an adhesive
matrix of uniform thickness.” Appeal Br. 9—11. According to Appellant,
Hansen discloses that a problem of the prior art patches is the
presence of two areas of reduced thickness, area (11) as well as
an area (10), wherein area (10) is influenced by the air channel
(9) between the folded liners of the prior art and the adhesive
layer as seen prior art Figures 1 and 2 (Hansen Col. 7, lines 3-6).
Hansen discloses that his novel V-shaped tab eliminates
the air channel (9) as seen in prior art Figure 1 and therefore area
(10) (reproduced above). The goal of Hansen is to reduce the air
channel (9) and thereby eliminate area (10), but Hansen
explicitly demonstrates that the adhesive layer still has a reduced
area of thickness, i.e., area (31) seen in Figures 3 and 4. “The
thickness of area 31 along the line of conjunction 28 has been
diminished considerably, resulting in a reduced stepwise change
of the thickness.” Col 7., lines 23-26. . . .
Hansen’s Figures 3 and 4 depict the adhesive layer (23)
with the area of reduced thickness (31). The figures demonstrate
that while area (10) from the air pocket is eliminated, the reduced
thickness area (31) is still present in adhesive layer (23). Thus
Hansen does not teach an adhesive layer with a uniform
thickness.
Appeal Br. 9—11 (figures omitted).
In response to Appellant’s argument, the Examiner states that
Applicant has misinterpreted Hansen. Ans. 11—12. The Examiner correctly
explains that
Hansen discloses a problem of adhesive material being forced to
flow to each side of the line of bending of the two flaps, which
result in a local reduced thickness of the adhesive layer . . . and
Hansen further discloses a solution with the embodiments of Figs
3 and 8 by preventing adhesive material in the adhesive layer 23
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Appeal 2015-000423
Application 12/159,449
to have almost no tendency to flow to each side of the area of
bending 28 of the V-shaped tab member 25 during manufacture
. . . , thus effectively preserving a uniform distribution of
adhesive material in the adhesive layer.
Ans. 11—12 (citing Hansen 3:10—22, 6:59-65, 7:26—29, 8:20-23, Figs. 1—2).
The Examiner’s findings regarding Hansen are reasonable, and
Appellant does not persuasively identify any errors in the Examiner’s
findings. We agree with the Examiner that Hansen describes the prior art
illustrated in Figs. 1—2 as having a large folded area 8 which causes the
adhesive to flow to each side of the folded area 8, resulting in a reduced
thickness of the adhesive layer (which Hansen defines as “a stepwise change
of thickness”). See, e.g., Hansen 3:10—22, 6:59—7:8. Hansen corrects the
prior art problems such that the “stepwise change of thickness” (i.e., any
changes in the original thickness of the adhesive layer) is “reduced,” and
“the adhesive layer 23 has almost no tendency to flow to each side” of fold
28 shown in Fig. 3. Hansen, 7:18—29. Stated another way, the original
thickness of the adhesive layer is not reduced by fold 28.
Appellant misinterprets Hansen’s admittedly awkward statement that
Hansen’s fold 28 results in a “reduced stepwise change of thickness.”
Hansen, 7:25—26 (emphasis added), Reply Br. 5—7, Appeal Br. 9-11.
Contrary to Appellant’s argument, Hansen’s phrase does not mean that the
thickness of the adhesive layer is reduced. Id. In context of Hansen’s usage
of “stepwise change of thickness,” this phrase means the any change in
thickness is reduced; that is, the thickness of the adhesive layer remains
essentially unchanged.
For the reasons above, the rejection of independent claim 1 is
sustained. Claims 2—7 and 11—17 fall with claim 1.
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Appeal 2015-000423
Application 12/159,449
The Rejection of Claims 8—10
as Unpatentable Over Hansen, Kobayashi, and Mizota
Appellant argues that, “[a]s claims 8—10 depend on claim 1, for the
same reasons that the combination of Hansen and Kobayashi fails to render
obvious claims 1—7 and 11—17, Hansen and Kobayashi fail to render claims
8—10 obvious. Any disclosure by Mizota of the elements recited in claims
8—10 does not cure the failures of Hansen and Kobayashi.” Appeal Br. 12.
As the rejection of claim 1 is sustained, as discussed supra, Appellant’s
argument is not persuasive. The rejection of claims 8—10 is sustained.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—17 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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