Ex Parte Deorkar et alDownload PDFPatent Trial and Appeal BoardAug 29, 201311813434 (P.T.A.B. Aug. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/813,434 07/06/2007 Nandu Deorkar 2198-18 PCT/US/RCE II 2411 23869 7590 11/29/2013 Hoffmann & Baron LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER ZALASKY, KATHERINE M ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 11/29/2013 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 NANDU DEORKAR, ROBERT C. BUSS, JOSEPH M. MLADOSICH, and PAUL A. BOUIS ____________ Appeal 2012-006357 Application 11/813,434 Technology Center 1700 ____________ Before CHUNG K. PAK, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52(a)(1), Appellants request rehearing of our Decision of August 29, 2013 (“Decision”), wherein we sustained the Examiner’s rejection of claims 6 through 8, 10 through 12, 15, 16, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over either Muranaka ’729 or ’820 in view of Ramsden set forth in the Answer. (See Request for Rehearing filed October 29, 2013 (“Req.”) at 2.) Appellants contend that the Board reversibly erred in not properly considering the problem allegedly addressed and solved by Appellants as Appeal 2011-006357 Application 11/813,434 2 stated in their Specification during the resolution of the propriety of the Examiner’s § 103(a) rejection. In support of this position, Appellants refer to Leo Pharm. Prods., Ltd v. Rea, 726 F.3d 1346, 1354 (Fed. Cir. 2013), which focused on the failure of the applied prior art to recognize and address the storage stability problem associated with combining a vitamin D analog with corticosteroids into one pharmaceutical formulation. However, Leo Pharmaceutical Products, Ltd. does not control the outcome of this case. Unlike Leo Pharm. Prods., Ltd., Muranaka ’729 and ’820, the prior art relied upon by the Examiner, explicitly teach making and using polymeric particles derivatized with polyethyleneimine for separating proteins, which is said to address the stability problem associated with conventional silica particle-based chromatographic media according to page 3 of the Specification. (See Decision 2, 5, and 6.) Although Muranaka ’729 or ’820 does not mention further functionalizing such polymeric particles derivatized with polyethyleneimine for the purpose of separating proteins, there is no dispute that Ramsden would have suggested functionalizing such polymeric particles derivatized with polyethyleneimine for the purpose of separating proteins, which is the same purpose described in the Specification. (See id. at 6.) Thus, Appellants have not identified any reversible error in our affirmance of the Examiner’s rejection of claims 6 through 8, 10 through 12, 15, 16, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over either Muranaka ’729 or ’820 in view of Ramsden. It is important to note that the Court of Appeals for the Federal Circuit limited Leo Pharm. Prods., Ltd. to a situation where the applied prior art did not provide any apparent reason for one of ordinary skill in the art to arrive at the claimed subject matter not only due to the failure of the applied prior Appeal 2011-006357 Application 11/813,434 3 art to recognize and address the problem found by Appellants, but also due to the divergent teachings and express disclaimer in the applied prior art that would have precluded one of ordinary skill in the art from arriving at such combination. This interpretation of Leo Pharmaceutical Products, Ltd. is consistent with KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007), which states in relevant part: The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve. . . . The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Accordingly, based on the foregoing, we have granted Appellants’ request for rehearing to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any changes therein. DENIED bar Copy with citationCopy as parenthetical citation