Ex parte Gluzman et al.

Board of Patent Appeals and Interferences

Jun 23, 1998

07839728 (B.P.A.I. Jun. 23, 1998)

Application for patent filed February 19, 1992. 1
According to applicants, this application is a continuation of
Application 07/547,889, filed July 3, 1990, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte YAKOV GLUZMAN and MICHAEL OSTRANDER
____________
Appeal No. 94-0432
Application 07/839,7281
____________
ON BRIEF
____________
Before WINTERS, GRON, and PAK, Administrative Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Appeal No. 94-0432
Application 07/839,728
The examiner cited Eriksson et al. (Eriksson II), 2
U.S. 4,665,062, patented May 12, 1987, in the listing of prior
art of record on page 2 of the Examiner’s Answer, as
illustrating
the state of the art. There appears to be some confusion as
to whether appellants’ claims stand finally rejected over the
cited prior art teaching including Eriksson I (C.A. 112,
18103b (1989), cited above), or Eriksson II (U.S. 4,665,062).
The confusion
is apparent from appellants’ references to the description of
phosphonoformic acid in Eriksson II (Appellants’ Brief, p. 2,
last three lines; Appellants’ Reply Brief, p. 4, l. 4-13) and
the examiner’s statement that “[t]he Eriksson et al reference
does not mention phosphonoformic acid” (Examiner’s Answer, p.
7, l. 8-9).
We have considered the merits of the examiner’s rejection in
view
of the teaching of Eriksson I and Eriksson II.
The examiner has rejected appellants’ claims in view3
of
the published abstracts of four journal articles. The
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This is an appeal from an examiner’s final rejection of
Claims 1, 4, 7, 9-11 and 14-16, all claims pending in this
application. Claims 1, 4, 7, 9-11 and 14-16 stand rejected
under 35 U.S.C. § 103, as being unpatentable in view of the
combined teachings of Marquez et al. (Marquez), U.S.
4,968,690, patented November 6, 1990, filed Jan. 19, 1989;
Chemical Abstracts (Eriksson ), Vol. 112, 18103b (1989);2
Chemical Abstracts (Yokata), Vol. 113, 184252q (1990);
Chemical Abstracts (Webb), Vol. 109, 23303j (1988); and
Chemical Abstracts (Kraus), Vol. 113, 147783t (1990).3
Appeal No. 94-0432
Application 07/839,728
articles themselves are not of record, and we have not
retrieved them.
We have considered the merits of the examiner’s rejection as
based
on the four cited abstracts. Lest there be any doubt, we
abhor examiners’ rejections of appellants’ claims based on
abstracts
of publications when the publications themselves are
retrievable.
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The examiner clearly erred in stating that “claims 1, 4,
7, 9-11 and 14-16 stand or fall together because appellant’s
[sic] brief does not include a statement that this grouping of
claims does not stand or fall together” (Examiner’s Answer, p.
2). To the contrary, see the express statement that “the
claims do not stand or fall together” at page 3 of Appellants’
Brief.
For purposes of this appeal, we need only consider the
examiner’s rejection as it applies to Claim 1. Claim 1 reads:
1. A method for controlling or treating RNA
viral infections and not DNA viral infections in plants
or animals, said method comprising: administering to
said plants or animals an RNA-terminating amount of
3'-deoxyribocytosine, 3'-deoxyribouracil, 3'-deoxyribo-
guanine or combinations thereof.
We have considered all the evidence and arguments in
favor of patentability and all the evidence of record to the
contrary. We have attempted to decipher the examiner’s
explanations, arguments and support in this case to no avail.
Appeal No. 94-0432
Application 07/839,728
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“[T]he examiner bears the initial burden, on review of
the prior art or on any other ground, of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443,
1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “The PTO has the
burden under section 103 to establish a prima facie case of
obviousness.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). We hold that the examiner in this case
has not made out a prima facie case of unpatentability under
35 U.S.C. § 103 in view of the applied prior art.
It is our considered opinion that any further comment in
this case by this panel would belabor the record with
criticism. Suffice to say that Appellants’ Reply Brief filed
November 15, 1993 (Paper No. 29) soundly rebutted many of the
findings and arguments made in the Examiner’s Answer. In a
Letter dated August 25, 1995 (Paper No. 32), a Primary
Examiner stated,
“The reply brief filed November 15, 1993 has been entered and
considered but no further response by the Examiner is deemed
necessary.” We respond in kind to the case of unpatentability
established by the examiner in this case and summarily reverse
Appeal No. 94-0432
Application 07/839,728
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the rejection of Claims 1, 4, 7, 9-11 and 14-16 under 35
U.S.C.
§ 103 based on the record before us.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Chung K. Pak )
Administrative Patent Judge )
Elizabeth M. Barnhard
American Home Products Corp.
Patent Law Department - 2B
One Campus Drive
Parsippany, NJ 07054