Ex Parte WardDownload PDFPatent Trial and Appeal BoardFeb 25, 201310595033 (P.T.A.B. Feb. 25, 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. 10/595,033 01/04/2006 Warren Ward WAW0101PUSA 1595 22045 7590 02/26/2013 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER KASSA, TIGABU ART UNIT PAPER NUMBER 1619 MAIL DATE DELIVERY MODE 02/26/2013 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 WARREN WARD __________ Appeal 2011-010056 Application 10/595,033 Technology Center 1600 __________ Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C. PRATS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing of the decision entered November 28, 2012 (“Decision”), in which we affirmed the Examiner’s rejections for lack of utility, lack of enablement, and indefiniteness. We have granted Appellant’s request to the extent we have reconsidered our original Decision in light of Appellant’s points, but we decline to change the Decision. DISCUSSION In requesting reconsideration of our Decision, Appellant contends that the Federal Circuit “has repeatedly held that the utility standard threshold is quite low and relatively easy to meet” and urges, therefore, that the Appeal 2011-010056 Application 10/595,033 2 “quantum of proof presented by the Applicant was more than sufficient to satisfy the standard set by the federal circuit as followed by the MPEP to overcome the Examiner’s rejection” (Req. Reh’g 1 (citing MPEP § 2107.02 (IV))). Appellant points out that under In re Brana, 51 F.3d 1560 (Fed. Cir. 1995), “a biomedical invention may possess patentable utility even though it is not yet at the stage of development necessary for sales approval by the U.S. Food & Drug Administration (FDA)” (Req. Reh’g 2). Appellant urges that the claimed invention functions such that sodium chloride placed in or near the body, in a liquid impermeable but vapor permeable coating that allows the body to sense the NaCl, but not physically interact with it, results in improvement to conditions associated with exocrine gland or sweat gland blockage, such as miliaria, migraine, and asthma (see id. at 3-4 (citing Spec. 1:4-7, 6:11-16, 7:1-4, and 10:1-9)). As evidence of the claimed invention’s function, Appellant presents Attachment A to the Request for Rehearing, which reproduces Examples 1-4 from the Specification. Appellant urges that applying the Examiner’s logic, inventions using therapeutic applications of radioactivity or magnetism would also be rejected (see Req. Reh’g 4-5). As stated in 37 C.F.R. § 41.52(a)(1), “[a]rguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section.” In the instant case, Appellant’s Request For Rehearing does not direct us to any specific instance in either the Appeal Brief or Reply Brief where Appeal 2011-010056 Application 10/595,033 3 Appellant argued that the principles outlined in In re Brana mandated reversal of the Examiner’s utility rejection, nor does Appellant direct us to any specific instance in our Decision where we held that the claimed invention lacked utility under 35 U.S.C. § 101 because of the absence of demonstrated FDA approval. Moreover, Appellant has not explained how the new argument regarding In re Brana falls within either of the exceptions to 37 C.F.R. § 41.52(a)(1). Also, our Decision explicitly recognized the principles Appellant asserts as underlying the claimed invention, and addressed Appellant’s arguments in that regard (see Decision 5-9). Thus, while Appellant’s arguments express disagreement with the ultimate conclusions in the Decision, they do not “state with particularity the points believed to have been misapprehended or overlooked by the Board,” as required under 37 C.F.R. § 41.52. That is, while Appellant disagrees with the outcome of the Decision, Appellant has not shown that the Decision failed to adequately appreciate or address the arguments Appellant presented in the Appeal Brief and Reply Brief. Therefore, as we are not persuaded that the Request for Rehearing demonstrates that we misapprehended or overlooked any arguments Appellant made, we are not persuaded that rehearing is proper in this case. SUMMARY We are not persuaded that our decision affirming the Examiner’s rejections for lack of utility, lack of enablement, and indefiniteness misapprehended or overlooked any point of fact or law advanced by Appellant. We therefore decline to modify our original decision entered November 28, 2012. Appeal 2011-010056 Application 10/595,033 4 TIME PERIOD 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 lp Copy with citationCopy as parenthetical citation