Ex Parte Trosser et al

Patent Trial and Appeal Board

Aug 21, 2013

10399713 (P.T.A.B. Aug. 21, 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.
10/399,713 08/25/2003 Heinrich Trosser 25421 5639
34375 7590 08/22/2013
NATH, GOLDBERG & MEYER
112 South West Street
Alexandria, VA 22314
EXAMINER
PALENIK, JEFFREY T
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
08/22/2013 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 HEINRICH TROSSER and JULIANE BRUGGEMANN
__________

Appeal 2011-013408
Application 10/399,713
Technology Center 1600
__________

Before ERIC GRIMES, ERICA A. FRANKLIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
rehydrated aqueous magaldrate composition and processes for producing a
rehydrated aqueous magaldrate composition. The Patent Examiner rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
STATEMENT OF THE CASE
“Magaldrate has been used for a long time as [an] antacid product….”
(Spec. 1.) The claimed invention concerns a “process for producing
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Application 10/399,713

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rehydrated magaldrate preparations from magaldrate powder by mechanical
treatment of aqueous suspensions of magaldrate powder.” (Id. at 2.)
Claims 7-12, 15-20, 22, 23 and 26 are on appeal.1 Claims 7 and 15
are representative and read as follows:
7. A process for producing a rehydrated aqueous magaldrate
composition from magaldrate powder, comprising:
mixing magaldrate powder and water to form an aqueous suspension;
and
mechanically treating the aqueous suspension to produce the
rehydrated aqueous magaldrate composition,
wherein the rehydrated aqueous magaldrate composition consists of
magaldrate powder, water and optionally one or more of a preservative, a
flavoring, a flocculation preventing agent, a thickener, and a sweetener.

15. A rehydrated aqueous magaldrate composition, consisting of a
mechanically treated mixture of magaldrate powder and water and optionally
one or more of a preservative, a flavoring, a flocculation-preventing agent, a
thickener, and a sweetener, wherein the composition is an aqueous
suspension.

(Emphasis added.)

The Examiner rejected2 the claims as follows:

1 Claim 21 is also pending (App. Br. 5, Ans. 3) but is not included in any of
the rejections on appeal.
2 Appellants request review of objections to (a) the Oath/Declaration as
defective, subsequently withdrawn by the Examiner (Ans. 13) and (b) of
claims 15, 17 and 26 under 37 C.F.R. § 1.75 as duplicate claims of each
other. (App. Br. 10.) As these objections are not rejections of claims, they
are not appealable matters; review should be sought by petition, not appeal.
See MPEP §1201 (“The Board will not ordinarily hear a question that should
be decided by the Director on petition ....”); see also MPEP § 1002.02(c)(4)
(petitions relating to objections or requirements made by Examiners).
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• claims 7-11, 15-20, 22 and 26 under 35 U.S.C. §102(b) as
anticipated by Wu;3
• claims 15-17 and 26 under 35 U.S.C. §102(b) as anticipated by
Phadke;4
• claims 7, 8, 11, 15-17 and 26 under 35 U.S.C. §102(b) as
anticipated by Brown;5 and
• claims 12 and 23 under 35 U.S.C. § 103(a) as unpatentable over
Brown and Bühler.6

ANTICIPATION
I. Wu
The Examiner found that Wu taught the claimed invention. (Ans. 7-
8.)
Appellants contend that Wu does not teach the claimed processes and
composition because Wu requires the inclusion of polyhydric alcohol, a first
fluidizer of aluminum hydroxide gel and a second fluidizer of potassium
citrate, which are “components outside of those recited in the present
claims,” which limit the composition components with “consists of” and
“consisting of” language. (App. Br. 13.)
The Examiner responds that the claims recite “a sweetener” and that
polyhydric alcohol is a sugar alcohol known in the art as a sweetener.

3US Patent No. 4,676,984 issued to Chien-Chin Wu et al., Jun. 30, 1987.
4US Patent No. 5,302,396 issued to Deepak S. Phadke et al., Apr. 12, 1994.
5US Patent No. 3,579,634 issued to Garland Richard Brown et al., May 18,
1971.
6 US Patent No. 4,304,362 issued to Gerhard Bühler, Dec. 8, 1981.
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Application 10/399,713

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(Ans. 14.) Additionally, the Examiner responds that the claims recite “a
preservative” and that Wu’s second fluidizer of a citric acid (e.g., potassium
citrate) is a natural preservative. (Id.)
However, as Appellants have asserted, Wu also required the inclusion
of a first fluidizer of aluminum hydroxide gel, which the Examiner has not
established was within the bounds of the claim limitations. Therefore, we
agree with Appellants that the Examiner has not established that Wu
disclosed the claimed invention. See Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987).
Accordingly, we reverse the rejection of claims 7-11, 15-20, 22 and
26 as anticipated by Wu.
II. Phadke
The Examiner’s position is that Phadke’s Example 2 taught the
claimed processes and composition. (Ans. 8-9.) In particular, the Examiner
found
Example 2 expressly discusses employing a powder form
of magaldrate as evidenced by the fact that it is sifted through a
20 mesh screen prior to being admixed with other reagents.
Once sifted, the magaldrate and other components are admixed
with simple syrup. Simple syrup, as known in the art is a
mixture of sugar dissolved into boiling distilled water in the
desired ratio. The website www.thebar.com teaches a 1:1 ratio
of sugar to boiling water whereas the British Pharmacopoeia
teaches a 2: 1 ratio (see "Non-medicated syrup" at
http://en.wildpedia.org/wiki/Syrup). A wet granulation is
formed via mechanical treatment (e.g., mixing), dried and then
milled.
Thus, the reference is considered by the Examiner as
teaching each of the instantly recited limitations.

(Id.)
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Appellants contend that “Phadke et al. fail[s] to teach each and every
element of the presently pending claims….” (App. Br. 15.) We agree.
Specifically, we find that the Examiner has not established that Phadke’s
Example 2 provided a rehydrated aqueous magaldrate composition, as
required by claims 15-17 and 26, much less the further requirement of
claims 15 and 16, wherein the composition is an aqueous suspension.
Rather, Phadke’s Example 2 provides a dried granulation that is milled,
lubricated, flavored, and then compressed into tablets. (Phadke col. 6, ll. 5-
19.)
Accordingly, we reverse the rejection of claims 15-17 and 26 as
anticipated by Phadke.
III. Brown
The Examiner found that Brown’s Example 1 taught the claimed
invention. (Ans. 9.)
Appellants contend only that Brown does not teach the claimed
processes and composition because Brown additionally requires the
inclusion of a gelation agent, which is outside of the components recited in
the present claims. (App. Br. 17.)
However, the claims include “a thickener” as one of their optional
components. (App. Br. 24-27, Claims App’x.) As the Examiner correctly
explained (Ans. 17), Brown disclosed using a gelation agent as a thickener
or viscosity producing agent (see Brown col. 5, ll. 65-73; col. 6, ll. 42-63).
Accordingly, we affirm the rejection of claims 7, 8, 11, 15-17 and 26
as anticipated by Brown.
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OBVIOUSNESS
The Examiner’s position is that Brown taught the claimed processes
of claims 12 and 23, except that Brown did not expressly teach using an
annular gap bead mill to grind the aqueous suspension. (Ans. 11.)
However, the Examiner found that Bühler taught this limitation. (Id.)
Appellants contend that Brown does not teach or suggest the claimed
processes because Brown’s method requires the inclusion of a gelation agent
in its composition, which component is outside of the scope of the claims.
(App. Br. 22.) Further, Appellants assert that Bühler does not cure this
alleged deficiency of Brown. (Id.)
As discussed, we found that Brown taught that its gelation agent is
included in its composition as a thickener, which is specifically recited as an
optional component in the claimed invention.
Accordingly, we affirm the obviousness rejection of claims 12 and 23
over Brown and Bühler.

SUMMARY
We reverse the rejection of claims 7-11, 15-20, 22 and 26 under
35 U.S.C. §102(b) as anticipated by Wu;
we reverse the rejection of claims 15-17 and 26 under 35 U.S.C.
§102(b) as anticipated by Phadke;
we affirm the rejection of claims 7, 8, 11, 15-17 and 26 under
35 U.S.C. §102(b) as anticipated by Brown; and
we affirm the rejection of claims 12 and 23 under 35 U.S.C. § 103(a)
as unpatentable over Brown and Bühler.

Appeal 2011-013408
Application 10/399,713

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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