Ex Parte Hermsmeyer

Patent Trial and Appeal Board

Jul 11, 2016

12800611 (P.T.A.B. Jul. 11, 2016)

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.
12/800,611 05/19/2010 R. Kent Hermsmeyer 796.0037 1120
29085 7590 07/11/2016
HOWARD EISENBERG, ESQ.
1220 LIMBERLOST LANE
GLADWYNE, PA 19035
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
07/11/2016 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 R. KENT HERMSMEYER
__________

Appeal 2013-010635
Application 12/800,611
Technology Center 1600
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requested rehearing of the decision entered May 10, 2016
(“Dec.”). That decision affirmed the Examiner’s rejection of claims 1, 5,
and 31–38 as obvious.
Appellant’s request has been granted to the extent that the decision
has been reconsidered, but such request is denied with respect to making any
modifications to the decision affirming the Examiner’s rejections under
35 U.S.C. § 103(a).

Appeal 2013-010635
Application 12/800,611

2

DISCUSSION
Appellant contends that “the Examiner and the Board have incorrectly
determined that magnesium sulphate is an equivalent vasodilator to
nitroglycerine and, accordingly, the finding that the present claims are
obvious in view of the disclosure of the cited prior art is improper” (Req.
Reh’g 3). Appellant specifically contends that:
what Coleman discloses is that nitroglycerine and magnesium
sulphate are equivalent in interfering with conversion of soft
fibrin to insoluble fibrin and thus in preventing closure of the
Capillary Gate Mechanism and[] thereby reducing systemic
vascular resistance and ultimately lowering blood pressure.
This mechanism is one that works, as stated by Coleman at
column 20, lines 24-25, to improve capillary blood function
and, in contrast to the disclosed method of the present
application, is not involved in enlargement of large vessels such
as arteries or veins.

(Req. Reh’g 5). Lastly, Appellant contends that he “defined the term
‘vasodilator’ narrowly to mean ‘a compound that causes enlargement of
superficial veins in accordance with the method of the invention’” (Req.
Reh’g 6).
We do not find these arguments persuasive, substantially for the
reasons already given in our Decision (see Dec. 6–7) based on the finding
that Coleman1 expressly identifies both nitroglycerine and MgSO4 as
vasodilator drugs (Dec. 4, FF 4).
We recognize, but find unpersuasive, Appellant’s reliance on
Coleman’s theoretical discussion that attempts to identify the mechanism of
action of nitroglycerine and MgSO4, specifically that the “therapeutic effects

1 Coleman, US 8,071,545 B2, issued Dec. 6, 2011.
Appeal 2013-010635
Application 12/800,611

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of these drugs may be explained by their ability to improve capillary bed
perfusion” (Coleman, col. 20, ll. 23–25). Insofar as Coleman identifies both
drugs as vasodilators, the precise mechanism of action is irrelevant because
Coleman provides evidence establishing that the ordinary artisan would find
MgSO4 and nitroglycerine equivalent vasodilators (Dec. 4, FF 4).
Appellant provides attorney argument that this mechanism is “not
involved in enlargement of large vessels such as arteries or veins” (Req.
Reh’g 5), but points to no evidence in the record supporting this argument.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”).
We agree that the Specification defines “vasodilator” as “a compound
that causes enlargement of superficial veins” (Spec. 4, ll. 4–5). Coleman
teaches that both nitroglycerine and MgSO4 are “‘vasodilator’ drugs” (Dec.
4, FF 4), and there is no dispute that topical nitroglycerine functions to cause
enlargement of superficial veins (Dec. 4, FF 2). Coleman’s treatment of the
two compounds, nitroglycerine and MgSO4, as equivalents provides
evidence that MgSO4 would function as a vasodilator and necessarily result
in enlargement of superficial veins. Therefore, as we noted in the Decision,
the preponderance of the evidence of record reasonably supports the
Examiner’s finding that “the ordinary artisan would also expect magnesium
sulphate to function as a topical vasodilator [to] relax a vein and thus enlarge
the vein with blood” (Ans. 5; Dec. 7).
As we noted in the Decision, Appellant provides no evidence
rebutting the Examiner’s evidence-based position, only argument (Dec. 7).
However, “attorney argument [is] not the kind of factual evidence that is
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Application 12/800,611

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required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).

SUMMARY
We have carefully reviewed the original opinion in light of
Appellant’s request, but we find no point of law or fact which we
overlooked or misapprehended in arriving at our decision. Therefore,
Appellant’s request has been granted to the extent that the decision has been
reconsidered, but such request is denied with respect to making any
modifications to the decision affirming the Examiner’s rejection.

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

DENIED