Ex Parte Daneshvar

Patent Trial and Appeal Board

Oct 31, 2013

11731945 (P.T.A.B. Oct. 31, 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.
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

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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

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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

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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

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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

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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