Ex Parte Wellisz et alDownload PDFPatent Trial and Appeal BoardSep 20, 201613406489 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/406,489 02/27/2012 23117 7590 09/22/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Tadeusz WELLISZ 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. GRT/4278-32 6375 EXAMINER SELLERS, ROBERT E ART UNIT PAPER NUMBER 1765 NOTIFICATION DATE DELIVERY MODE 09/22/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TADEUSZ WELLISZ, TIMOTHY C. FISHER, JONATHAN K. ARMSTRONG, and JOHN CAMBRIDGE 1 Appeal2015-002993 Application 13/406,489 Technology Center 1700 Before N. WHITNEY WILSON, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-8 in the above-identified application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is SYNCERA INC. Appeal Br. 3. 2 Appellants also appealed the Examiner's decision rejecting claims 9, 10, and 14--19. See Appeal Br. 1. However, the sole rejection affecting these claims has been withdrawn, so that these claims are no longer on appeal. See Answer 7 (withdrawing rejection, see Final Action 3--4, of claims 1-10 and 14--19 under 35 U.S.C. § 112, first paragraph as non-enabling). Appeal2015-002993 Application 13/406,489 BACKGROUND Appellants' invention relates to polymeric compositions, of a particular structure, for use in medicine, surgery, dentistry, and other fields. See Spec. 8. Independent claim 1 is representative: 1. A composition made by a process comprising blending (i) at least one random copolymer consisting of ethylene oxide and one or more other alkylene oxide(s) and (ii) at least one non- random polymer consisting of one or more poly( alkylene oxide )s; wherein said composition adheres to bone, skin, or other hard tissue. Appeal Br. 14 (emphasis added). The Examiner maintains the following grounds of rejection: I. Claims 1--4, 6, and 7 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a), as obvious over Canadian Patent Application No. 2,063,278 Al (published Dec. 6, 1992). Answer 2. II. Claims 1-5 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a), as obvious over German Patent Application No. DE 2546371 Al (published Apr. 21, 1977). Answer 3. III. Claims 1---6 and 8 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a), as obvious over Japanese Patent Application No. 55-147597 (published Nov. 17, 1980). Answer4. IV. Claims 1, 4---6, and 8 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a), as obvious over German Patent Application No. DE 3224784 Al (published Jan. 5, 1984). Answer 5. 2 Appeal2015-002993 Application 13/406,489 V. Claims 1, 4, 6, and 8 are rejected under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a), as obvious over U.S. Patent No. 3,634,305 (issued Jan. 11, 1972). Answer 6. In the Appeal Brief, Appellants divide the claims separately into five groups, based on which rejections the claims have in common. See Appeal Br. 9. Nevertheless, Appellants address each rejection separately, and argue the claims as a group with respect to each rejection. See Appeal Br. 9-13. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and for each rejection, all other claims stand or fall together with claim 1. The Final Action also contains an objection to claims 9, 10, and 14--19 as being dependent upon a rejected independent claim 1. See Final Action 3; see also Appeal Br. 5, 8-9 (arguing that this objection has been overcome, and that withdrawn claim 22 should be rejoined). However, this objection is not before us for decision on appeal. See In re Hengehold, 440 F.2d 1395, 1404 (CCPA 1971). DISCUSSION For each of rejections I-V, the Examiner cites a single reference, and finds that the reference discloses a chemical structure obtained by the blending process specified in claim 1. See Answer 2---6. Appellants do not contest these findings. See Appeal Br. 9-13. The Examiner also determines, with respect to each rejection, that "[t]he claimed composition exhibiting the feature of adhering to bone, skin or other hard tissue is an inherent property of the composition and is not an affirmative limitation." Answer 2---6. Thus, the Examiner determines that "the prior art blend inherently adheres to bone, skin or other hard tissue. The burden of proof 3 Appeal2015-002993 Application 13/406,489 shifts to appellants to provide evidence that the prior art blend would not be capable of adhering to bone, skin or other hard tissue." Id. Separately for each rejection, Appellants note that the claims "require that the composition adheres to bone, skin, or other hard tissue." Appeal Br. 10-12. However, Appellants argue that in each of the cited references, the "polymer composition does not adhere to bone, skin, or other hard tissue. Therefore, the cited patent does not anticipate or render obvious Appellants' claimed invention." Id. at 10-13. We do not find Appellants' arguments persuasive of reversible error in the Examiner's rejections. The Examiner has shown, and Appellants do not contest, that the five cited references disclose chemical structures obtained by the blending process of claim 1. Because the prior art structures are produced by an identical or substantially identical process to that specified in claim 1, the Examiner has established a prima facie case of both anticipation and obviousness. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). ivioreover, the requirement in claim l that the "composition adheres to bone, skin, or other hard tissue" is a functional limitation. If the Examiner has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, [the Examiner] possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Therefore, the burden has shifted to Appellants "to show that the prior art structures did not inherently 4 Appeal2015-002993 Application 13/406,489 possess the functionally defined limitations" of the claimed compositions. Id. In response to the Examiner's findings and conclusions, Appellants have merely pointed to the claim limitations and stated that those limitations are not disclosed by each prior art reference. Appeal Br. 10-13. Appellants' arguments lack any citation to factual evidence to distinguish the structure of the prior art compositions from the composition of claim 1, or to rebut the Examiner's conclusion that the functional limitation is inherently found in the prior art references. See id. Therefore, we are not persuaded of reversible error in the Examiner's decision to reject claim 1 as set forth in rejections I-V. For the same reasons, we find no reversible error in the Examiner's decision to reject claims 2-8. DECISION The Examiner's decision is 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 5 Copy with citationCopy as parenthetical citation