Ex Parte DaneshvarDownload PDFPatent Trial and Appeal BoardOct 31, 201311731945 (P.T.A.B. Oct. 31, 2013) Copy Citation 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. 11/731,945 04/02/2007 Yousef Daneshvar 9944 12937 7590 02/12/2014 Yousef Daneshvar, MD FACC. 3425 Lone Pine Rd. West Bloomfield, MI 48323 EXAMINER SCHMIDT, EMILY LOUISE ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 02/12/2014 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 YOUSEF DANESHVAR ____________ Appeal 2012-001972 Application 11/731,945 Technology Center 3700 ____________ Before DONALD E. ADAMS, ERIC GRIMES, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 Appellant requests rehearing of the decision entered October 31, 2013 (“Decision”) affirming the rejection of, inter alia, claims 55-57, 68, and 69 under 35 U.S.C. § 103(a) as unpatentable over the combination of Groves2 and Mulholland.3 We deny the requested relief. 1 The Real Party in Interest is the inventor, Yousef Daneshvar (App. Br. 2). 2 Groves, US 3,777,755, issued December 11, 1973. 3 Mulholland et al., US 2003/0050612 A1, published March 13, 2003. Appeal 2012-001972 Application 11/731,945 2 ANALYSIS Claim 55: Appellant contends that “the Decision contains no findings of fact (FF) supporting [the] rejection” (Req. Reh’g 2). We are not persuaded (see Decision 8: FF 15 and 18-19; see also id. at 11-12) Appellant contends that the Decision relies on “an incorrect analysis of the secondary reference” (Req. Reh’g 2). In this regard, Appellant quotes two sections of the Appeal Brief (Req. Reh’g 2). Notwithstanding Appellant’s intimation to the contrary, the Decision addressed Appellant’s contention as presented in the Appeal Brief (see Decision 12). Nevertheless, Appellant now embellishes the contentions presented in the Appeal Brief (see Req. Reh’g 3). Recognizing that Appellant is arguing before this Board pro se we will, in this single instance, address Appellant’s embellishment (i.e. new argument) of the contentions set forth in the Appeal Brief. On rehearing Appellant contends that “Mulholland presents no drawing of a mold and Mulholland’s only description . . . specifically says that the mold has separable halves. That simple fact precludes Mulholland’s mold from constituting a ‘receptacle device’ as described in Claims 55, 56, and 68” (Req. Reh’g 3). We are not persuaded. Initially, we note that there is no requirement that the prior art illustrate its disclosure. Next, we find no limitation in any of claims 55, 56, or 68 that requires Appellant’s receptacle to exist as a single, non-halved, unit. Therefore, Mulholland’s receptacle reads on the receptacle of Appellant’s claimed invention when the two halves are combined to form a receptacle as Mulholland suggests to a person of ordinary skill in this art. Appeal 2012-001972 Application 11/731,945 3 Claim 56: Appellant’s Brief grouped claim 56 with claim 55 and failed to provide separate arguments for claim 56 (App. Br. 12-13). Therefore, notwithstanding Appellant’s contention to the contrary, claim 56 properly fell with claim 55 (see Req. Reh’g 3; Cf. Decision 14). Therefore, we will not entertain new arguments relating to the separate patentability of claim 56 on rehearing (Req. Reh’g 3). Claim 68: Appellant contends that “there is no finding of fact (FF), which . . . supports the assertion that Mulholland makes obvious the application of medication to the device by the device being inserted into a container holding medicant” (Req. Reh’g 4). We are not persuaded. As the Decision explained, “[t]o the extent that Examiner’s rationale reverses the order of steps of Appellant’s claimed method, we find that reversing the order of process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 692 (CCPA 1946)” (Decision 12). In this regard, we note that claim 68 depends from claim 55. Appellant’s claim 55 is drawn to “a system for delivering medication both to an internal body cavity through a natural body orifice that opens to the cavity and to external tissue surrounding the orifice” (Appellant’s Claim 55). Appellant’s system claim 55 goes on to structurally and functionally describe the delivery device itself and the receptacle device used to apply medication to the delivery device. Appellant’s system claim 68 places further functional limits on the receptacle device of claim 55. Appeal 2012-001972 Application 11/731,945 4 Therefore, the issue distills down to how the functional limitations of Appellant’s claimed invention distinguish the claimed system from the system suggested by the prior art. We recognize Appellant’s contention that the Decision “dismisses th[e] significance . . . of how Mulholland applies medication . . . [relative to] the context of the specific device recited in the Claim” (Req. Reh’g 3-4). The Decision explained, however, that Appellant presented no new or unexpected result to support a conclusion that the functional limitations, or reversal in the order of prior art steps, resulted in a new or non-obvious system for delivering medication both to an internal body cavity through a natural body orifice that opens to the cavity and to external tissue surrounding the orifice, as required by claim 68 as it depends from claim 55 (see Decision 11-13). Simply stated, the system of Appellant’s claim 68, as it depends from claim 55, requires medicament to be applied to a device prior to the device’s use to deliver medication. The combination of prior art relied upon by Examiner suggests a system, wherein medicament is applied to a device prior to the device’s use to deliver medication. Appellant failed to establish an evidentiary basis on this record to support a conclusion that the functional limitations of claim 68 will result in a system, wherein the medicated device, used to deliver medication, differs structurally from the system suggested by the prior art, which also medicates a device and uses the medicated device to deliver medication. In this regard, we recognize Appellant’s embellishment of the arguments presented in the Appeal Brief, but are nonetheless left in the same position as discussed above (see Req. Reh’g 4-5). Specifically, Appellant failed to establish an evidentiary basis on this record to support a conclusion Appeal 2012-001972 Application 11/731,945 5 that the broad functional limitations set forth in Appellant’s claim structurally distinguish the claimed system from the prior art. Claim 57: For the reasons set forth above, we recognize, but are not persuaded by, Appellant’s contention that “[t]he Decision[] . . . is based on an understanding which is factually incorrect” (Req. Reh’g 5). Consistent with our forgoing discussion, the Decision explained, Mulholland makes obvious the application of medication to a device, whether (a) the device is inserted into a container holding medicament or (b) the medicament is inserted into a container holding the device. As Examiner explains, Appellant’s claim fails to include “specific recitations . . . which distinguish an immersion method per se from a molding method” (Decision 13.) Simply stated, Appellant failed to establish that the claimed method requires the recited steps to be carried out in a specific order, or that changing the order of the prior art process steps provides new or unexpected results. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946). Claim 69: Appellant’s Brief grouped claim 69 with claim 57 and failed to provide separate arguments for claim 69 (App. Br. 13). Therefore, notwithstanding Appellant’s contention to the contrary, claim 69 properly fell with claim 57 (see Req. Reh’g 5; Cf. Decision 14). Therefore, we will not entertain new arguments relating to the separate patentability of claim 69 on rehearing (Req. Reh’g 5). Appeal 2012-001972 Application 11/731,945 6 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). REHEARING DENIED tc Copy with citationCopy as parenthetical citation