Ex Parte HowardDownload PDFPatent Trial and Appeal BoardFeb 3, 201512135254 (P.T.A.B. Feb. 3, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EDWARD GEORGE HOWARD, JR. ____________ Appeal 2013-003729 Application 12/135,254 Technology Center 1700 ____________ Before TERRY J. OWENS, GEORGE C. BEST, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 2, 4–10, and 13–17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Appellant’s invention relates to laminates prepared in part from continuous films of chitosan, wherein the chitosan has been reacted with at least one polyhydroxyalkyl compound. Spec. 1:6–8. Claim 2 is 1 Appellant identifies E.I. DuPont de Nemours and Company as the real party in interest. App. Br. 2. Appeal 2013-003729 Application 12/135,254 2 representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 2. A selectively permeable protective structure comprising: (a) a continuous chitosan/polyhydroxyalkyl film and (b) at least one layer of fabric, wherein the film is obtained by a process comprising the steps: (i) subjecting chitosan and at least one polyhydroxyalkyl reactant to heat to promote a reaction between the chitosan and the at least one polyhydroxyalkyl reactant to form a crude chitosan/polyhydroxyalkyl film, and (ii) extracting the crude film with water to remove unreacted polyhydroxyalkyl reactant to obtain the chitosan/polyhydroxyl[2] film. The References Sparkes US 4,572,906 Feb. 25, 1986 Hosoda US 6,746,762 B1 June 8, 2004 Howard US 2007/0196404 A1 Aug. 23, 2007 The Rejections 1. Claims 2, 5, 6, 9, 10, and 13–15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hosoda in view of Sparkes; and 2. Claims 2, 4–10, and 13–17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Howard in view of Sparkes. 2 The word “polyhydroxyl” in claim 2 appears to be a typographical error, which Appellant should correct if prosecution of Appellant’s Application continues. Appeal 2013-003729 Application 12/135,254 3 OPINION We reverse the Examiner’s rejections of claims 2, 4–10, and 13–17 under 35 U.S.C. § 103(a). Rejection 1. The Examiner finally rejected claims 2, 5, 6, 9, 10, and 13–15 as obvious over Hosoda in view of Sparkes. Ans. 3–4. Because we reverse this rejection, we need only address independent claim 2. Claim 2 requires a selectively permeable protective structure comprising a continuous chitosan/polyhydroxyalkyl film and at least one layer of fabric. App. Br. 6 (Claims App’x). Hosoda discloses a selectively permeable protective structure comprising a continuous chitosan laminate film including three layers: an outer layer, an intermediate layer, and an inner layer. Ans. 3; Hosoda 1:65– 2:12. The film can be used with a substrate layer comprising fabric to form the selectively permeable protective structure. Hosoda 3:57–63. Sparkes discloses a surgical dressing for protecting wounds during the healing process, comprising a blend of gelatin and chitosan. Sparkes 3:21– 29 and abstract. Because unplasticized gelatin/chitosan films are relatively stiff, Sparkes teaches adding compatible plasticizers, such as glycerol or sorbitol, to the chitosan/gelatin mixture to provide flexibility to the film. Id. at 4:36–41, 10:47–11:25, Table 2; Ans. 4. The Examiner asserts that Appellant’s claims “are not a different product from that [disclosed by] the Sparkes reference[,]” because Appellant claims a chitosan/polyhydroxyalkyl film and Sparkes discloses a chitosan/polyhydroxyalkyl film, wherein the polyhydroxyalkyl compound is sorbitol or glycerol. Ans. 9. Appeal 2013-003729 Application 12/135,254 4 Appellant does not merely claim a chitosan/polyhydroxyalkyl film, but rather, a chitosan/polyhydroxyalkyl film that is the product of a reaction between chitosan and at least one polyhydroxyalkyl reactant. App. Br. 6 (Claims App’x). Consequently, the Examiner must establish that the claimed reaction product (i.e., chitosan/polyhydroxyalkyl film) would result from following Sparkes’s teachings or suggestions. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (explaining that the Examiner has the initial burden of showing that a product recited in a product-by-process claim is the same as or obvious from a prior art product). The Examiner asserts that Sparkes discloses “the process of subjecting chitosan and at least one polyhydroxyalkyl reactant (sorbitol or glycerol) to heat” (i.e., a chitosan/polyhydroxyalkyl film that is the reaction product of the chitosan and at least one polyhydroxyalkyl compound). Ans. 8. The Examiner, however, does not point to any portion of Sparkes to support this factual assertion. To the contrary, as Appellant argues, Sparkes indicates that the chitosan/polyhydroxyalkyl film is made by physically mixing chitosan and a polyhydroxyalkyl compound. Reply Br. 3; Sparkes 4:36–41, 10:47–11:25. As such, the Examiner has not established that Appellant’s chitosan/polyhydroxyalkyl film formed by reacting chitosan with the polyhydroxyalkyl compound is the same as or obvious from Sparkes’s chitosan/polyhydroxyalkyl film made by physically mixing chitosan with glycol and sorbitol. Accordingly, we reverse the rejection of independent claim 2 under 35 U.S.C. § 103(a), as well as claims 5, 6, 9, 10, and 13–15, which depend therefrom. Appeal 2013-003729 Application 12/135,254 5 Rejection 2. The Examiner finally rejected claims 2, 4–10, and 13– 17 as obvious over the combination of Howard and Sparkes. Ans. 4–7. Appellant argues that Howard is disqualified as prior art under 35 U.S.C. § 103(c), because Howard only qualifies as prior art under 35 U.S.C. § 102(e) and Appellant’s Application and Howard “were both subject to assignment to E.I. DuPont de Nemours and Co. at the time the inventions were made.” App. Br. 6. The Examiner does not respond to this argument in the Examiner’s Answer. Section 103(c)(1) states: Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section [103] where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. 35 U.S.C. § 103(c)(1). The Manual of Patent Examining Procedure sets forth a procedure for establishing common ownership of, or the obligation to commonly assign, patent applications and provides, in relevant part: Applications and references (whether patents, patent applications, patent application publications, etc.) will be considered by the examiner to be owned by, or subject to an obligation of assignment to the same person, at the time the invention was made, if the applicant(s) or an attorney or agent of record makes a statement to the effect that the application and the reference were, at the time the invention was made, owned by, or subject to an obligation of assignment to, the same person. MPEP § 706.02(l)(2)(II) (8th ed., rev. 9, 2012). Appeal 2013-003729 Application 12/135,254 6 In the present case, the affirmative statement by Appellant that Howard and the claimed invention were subject to an obligation of assignment to the same entity at the time the inventions were made is sufficient to overcome the section 103(a) rejection because Howard is disqualified as prior art by section 103(c). Accordingly, we reverse the rejection of claims 2, 4–10, and 13–17 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner’s rejection of claims 2, 5, 6, 9, 10, and 13–15 under 35 U.S.C. § 103(a) over Hosoda and Sparkes is reversed. The Examiner’s rejection of claims 2, 4–10, and 13–17 under 35 U.S.C. § 103(a) over Howard and Sparkes is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation