Ex Parte Ward

Patent Trial and Appeal Board

Feb 25, 2013

10595033 (P.T.A.B. Feb. 25, 2013)

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.
10/595,033 01/04/2006 Warren Ward WAW0101PUSA 1595
22045 7590 02/26/2013
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
KASSA, TIGABU
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
02/26/2013 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 WARREN WARD
__________

Appeal 2011-010056
Application 10/595,033
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered November
28, 2012 (“Decision”), in which we affirmed the Examiner’s rejections for
lack of utility, lack of enablement, and indefiniteness. We have granted
Appellant’s request to the extent we have reconsidered our original Decision
in light of Appellant’s points, but we decline to change the Decision.
DISCUSSION
In requesting reconsideration of our Decision, Appellant contends that
the Federal Circuit “has repeatedly held that the utility standard threshold is
quite low and relatively easy to meet” and urges, therefore, that the
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Application 10/595,033

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“quantum of proof presented by the Applicant was more than sufficient to
satisfy the standard set by the federal circuit as followed by the MPEP to
overcome the Examiner’s rejection” (Req. Reh’g 1 (citing MPEP § 2107.02
(IV))).
Appellant points out that under In re Brana, 51 F.3d 1560 (Fed. Cir.
1995), “a biomedical invention may possess patentable utility even though it
is not yet at the stage of development necessary for sales approval by the
U.S. Food & Drug Administration (FDA)” (Req. Reh’g 2).
Appellant urges that the claimed invention functions such that sodium
chloride placed in or near the body, in a liquid impermeable but vapor
permeable coating that allows the body to sense the NaCl, but not physically
interact with it, results in improvement to conditions associated with
exocrine gland or sweat gland blockage, such as miliaria, migraine, and
asthma (see id. at 3-4 (citing Spec. 1:4-7, 6:11-16, 7:1-4, and 10:1-9)). As
evidence of the claimed invention’s function, Appellant presents Attachment
A to the Request for Rehearing, which reproduces Examples 1-4 from the
Specification.
Appellant urges that applying the Examiner’s logic, inventions using
therapeutic applications of radioactivity or magnetism would also be rejected
(see Req. Reh’g 4-5).
As stated in 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.”
In the instant case, Appellant’s Request For Rehearing does not direct
us to any specific instance in either the Appeal Brief or Reply Brief where
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Appellant argued that the principles outlined in In re Brana mandated
reversal of the Examiner’s utility rejection, nor does Appellant direct us to
any specific instance in our Decision where we held that the claimed
invention lacked utility under 35 U.S.C. § 101 because of the absence of
demonstrated FDA approval. Moreover, Appellant has not explained how
the new argument regarding In re Brana falls within either of the exceptions
to 37 C.F.R. § 41.52(a)(1).
Also, our Decision explicitly recognized the principles Appellant
asserts as underlying the claimed invention, and addressed Appellant’s
arguments in that regard (see Decision 5-9). Thus, while Appellant’s
arguments express disagreement with the ultimate conclusions in the
Decision, they do not “state with particularity the points believed to have
been misapprehended or overlooked by the Board,” as required under 37
C.F.R. § 41.52.
That is, while Appellant disagrees with the outcome of the Decision,
Appellant has not shown that the Decision failed to adequately appreciate or
address the arguments Appellant presented in the Appeal Brief and Reply
Brief. Therefore, as we are not persuaded that the Request for Rehearing
demonstrates that we misapprehended or overlooked any arguments
Appellant made, we are not persuaded that rehearing is proper in this case.
SUMMARY
We are not persuaded that our decision affirming the Examiner’s
rejections for lack of utility, lack of enablement, and indefiniteness
misapprehended or overlooked any point of fact or law advanced by
Appellant. We therefore decline to modify our original decision entered
November 28, 2012.
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Application 10/595,033

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED

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