Ex Parte Holicza

Patent Trial and Appeal Board

Jan 18, 2018

12523240 (P.T.A.B. Jan. 18, 2018)

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.
12/523,240 07/15/2009 Peter J. Holicza 14223.22 8066
64167 7590
Evan R. Witt
Kirton & McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@kmclaw.com
ewitt@kmclaw.com
abirch@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER J. HOLICZA
Appeal 2017-005455
Application 12/523,240
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to reject claims 1—20, 24, and 28. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a method for preserving untanned and non-salt-cured
hides, and a preserved, fatliquored, pickled, dried, untanned hide made
according to the method. Corrected Appeal Brief filed September 8, 2016
(“Corrected App. Br.”), 2; claim 24. Claims 1 and 24 illustrate the subject
1 Appellant identifies the real party in interest as Leatherteq Limited.
Appeal Brief filed March 7, 2016 (“App. Br.”), 2.
Appeal 2017-005455
Application 12/523,240
matter on appeal and are reproduced below:
1. A method for preserving untanned and non-salt-cured
hides in which the hides are subject to the steps consisting of
washing, fleshing, liming, unhairing, deliming, optionally
splitting, and bating, characterized in that the method consists
of the steps, after the step of bating, of fatliquoring, pickling
and lastly drying, and optionally staking.
24. A preserved, fatliquored, pickled, dried, untanned hide
made according to the method of claim 1.
App. Br. 16, 19 (Claims Appendix).
The References
Ayles
Ushakoff
Karaghiosoff
Robinson
Brehn
Taeger
Bowker
Moenus
US 1,734,106
US 2,868,614
US 3,638,562
US 4,434,196
US 5,391,784
US 2007/0022541 A1
US 7,578,970 B2
GB 1,138,099
November 5, 1929
January 13, 1959
February 1, 1972
February 28, 1984
February 21, 1995
February 1, 2007
August 25, 2009
December 27, 1968
Famham, Home Tanning and Leather Making Guide, (A.R. Harding
1922).
Derwent Abstract 1996-115110 (Karlsson, SE 9401735 A, November
20, 1995).
The Rejections
The Examiner enters the following rejections in the Non-Final Office
Action mailed August 11, 2015 (“Office Act.”), and maintains the rejections
in the Examiner’s Answer mailed December 15, 2016 (“Ans.”):
I. Claims 1, 2, 4, 24, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff in view of Famham;
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II. Claims 13—18 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Famham as evidenced by Taeger;
III. Claims 3,5,6, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Ushakoff in view of Famham as evidenced by Brehn;
IV. Claims 1,10, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Ushakoff in view of Famham and Karaghiosoff;
V. Claims 1 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Famham and Moenus;
VI. Claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Famham and Ayles;
VII. Claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Famham, Karaghiosoff, and Ayles;
VIII. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Ushakoff in view of Famham and Karaghiosoff as evidenced Bowker,
Robinson, and the Derwent abstract; and
IX. Claims 1—20, 24, and 28 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1—23 and 26 of
copending Application No. 12/541,084.
In addition, the Examiner sets forth the following new ground of
rejection in the Answer:
X. Claims 1—20, 24, and 28 under 35 U.S.C. § 112, second
paragraph as indefinite for failing to particularly point out and distinctly
claim the subject matter that the Applicant regards as the invention.
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DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1—20, 24, and 28 under 35 U.S.C. § 112, second paragraph, and
rejections of claims 1—20, 24, and 28 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Office Action, the Examiner’s Answer, and
below. We summarily affirm the Examiner’s provisional rejection of claims
1—20, 24, and 28 for non-statutory obviousness-type double patenting
because Appellant does not contest this rejection.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
Rejection X
The Examiner finds that the recitation of “consisting of’ in claim 1
following the preamble of the claim restricts or limits the clamed method to
only those steps that directly follow this transitional phrase. Ans. 12. The
Examiner finds that the recitation of additional steps following the
subsequent recitation of “consists of’ improperly adds steps to claim 1 that
are excluded by the initial recitation of “consisting of.” Id.
Appellant argues that the structure of claim 1 conforms to the
guidelines of the PCT and many foreign patent agencies in that it includes a
“characterizing portion.” Reply Br. 2. Appellant further asserts that claim 1
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recites a method that includes a number of known steps, and then presents
the technical features for which protection is desired after the second
recitation of “consists of,” which “adds clarity to the claims by emphasizing
important elements of the invention.” Id.
However, we note initially that the Examiner does not take issue with
the “characterizing” language of claim 1. Ans. 12. Rather, the Examiner
rejects claim 1 as indefinite for including additional steps after the second
recitation of the transitional phrase “consists of’ beyond those steps that
follow the initial “consisting of’ transitional phrase. Id.
“‘[Cjlosed’ transition phrases such as ‘consisting of are understood
to exclude any elements, steps, or ingredients not specified in the claim.”
AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1244-45 (Fed. Cir.
2001); see also In re Gray, 53 F.2d 520, 521 (CCPA 1931) (use of the claim
term “consists” is limited to the claim’s enumerated alloy metals without
other elements, unlike the term “comprising” which permits the inclusion of
other metals than those claimed). Therefore, the recitation of “consisting of’
in claim 1 following the preamble of the claim (“method for preserving
untanned and non-salt-cured hides”) closes the claim to the inclusion of
additional steps beyond the recited steps of “washing, fleshing, liming,
unhairing, deliming, optionally splitting, and bating.” Accordingly, the
subsequent recitation in claim 1 of “characterized in that the method consists
of the steps, after the step of bating, of fatliquoring, pickling and lastly
drying, and optionally staking” is inconsistent with the initial, closed
“consisting of’ transitional phrase. Therefore, the second “consists of’
transitional phrase renders the scope of claim 1 unclear because one of
ordinary skill in the art would be uncertain as to whether the steps recited
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after the second “consists of’ transition are excluded by the first “consisting
of’ transition that follows the preamble of the claim. Amgen, Inc. v. Chugai
Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is
considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not
reasonably apprise those skilled in the art of its scope).
We accordingly sustain the Examiner’s rejection of claims 1—20, 24,
and 28 under 35 U.S.C. § 112, second paragraph as indefinite. However, for
the purposes of this appeal, we treat claim 1 as if all of the steps recited in
the claim are included after the initial “consisting of’ transitional phrase. In
other words, we treat the claim as if it did not include a second “consists of’
transitional phrase.
Rejections I—VIII
Appellant argues Rejections I—VIII together on the basis of claim 1.
App. Br. 3—14. Therefore, although Appellant does not provide separate
arguments for claims 1 (method) and 24 (product-by-process), we decide the
appeal as to method claims 1—20 and 28 based on representative claim 1, and
separately address product-by-process claim 24. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 1—20 and 28
Ushakoff discloses a process of applying a fatting agent to a skin or
hide that involves substantially dehydrating the skin by contacting it with a
an organic solvent to extract water present in the skin, applying a surface
coating of a fatting agent to the solvated skin, and applying external heat to
the skin to dry the skin of the organic solvent and distribute the fatting agent
throughout the skin. Col. 1,11. 15—20, 60-61; col. 2,11. 22—34; col. 3,11. 52—
58. Ushakoff discloses that this process “results in the skin having a far
greater tear resistance and tensile strength than is imparted by other fat
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liquoring processes.” Col. 1,11.60—64. Ushakoff discloses that preferred
fatting agents include fatty acids, such as oleic acid. Col. 3,11. 26—30.
Ushakoff discloses that “although ordinarily a fatty acid will be applied to a
skin after it has been treated with a tanning agent, the presence of the
tanning agent is not essential to the strengthening effect of the fatty acid.”
Col. 6,11. 1—5. Ushakoff further discloses that “[a] solvated skin, free of any
tanning agent, if similarly treated with a fatty acid, will have the enhanced
tear resistance and tensile strength imparted by the fatty acid.” Col. 6,11. 5—
8.
Ushakoff describes an embodiment of Ushakoff s invention that
involves pickling a bated cowhide, tanning the pickled cowhide, solvent
dehydrating the hide with acetone, applying a surface coating of oleic acid
(fatliquoring or fatting agent) to the solvated hide, and removing the solvent
from the non-salt-cured, pickled, solvent dehydrated, fatliquored hide by
applying external heat to the hide. Col. 3,1. 61—col. 5,1. 43.
The Examiner finds that Ushakoff does not disclose washing,
fleshing, liming, unhairing and deliming, and the Examiner relies on
Famham’s disclosure that all hides undergo preliminary “soaking
(washing), fleshing, liming, unhairing, deliming, washing out, and rinsing
(also washing).” Ans. 3^4 (citing Famham pg. 77). The Examiner finds that
one of ordinary skill in the art would have been led to modify Ushakoff s
method to include preliminary steps of washing, fleshing, liming, unhairing,
and deliming in view of Famham’s disclosure that these steps are
conventional preliminary steps in hide treatment. Ans. 4.
The Examiner further determines that it would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention to modify
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the order of steps in Ushakoff s method to the order recited in claim 1
because “[cjhanging the order of steps does not render a claimed process
non-obvious over the prior art, see Ex parte Rubin, 128 USPQ 440,441,442
([BPAI] 1959).” Ans. 4.
Appellant argues that Ushakoff is directed to a process for tanning
skins, and Ushakoff discloses that a tanning agent will always be present
when a fatting agent is applied to a solvated skin. App. Br. 4—7. Appellant
contends that Ushakoff therefore does not disclose application of a fatting
agent to an untanned skin. App. Br. 8—9. Appellant asserts that Ushakoff s
disclosure that “[a] solvated skin, free of any tanning agent, if similarly
treated with a fatty acid, will have the enhanced tear resistance and tensile
strength imparted by the fatty acid,” indicates that “a tanning agent could be
applied to a skin and then thoroughly rinsed/removed from the skin prior to
applying the fatting agent.” App. Br. 6 (quoting Ushakoff col. 6,11. 5—8).
Appellant further contends that the Examiner’s “piecemeal analysis” in
which the Examiner treats the method steps of fatliquoring, pickling, and
lastly drying in isolation ignores the fact that the hides recited in claim 1
remain untanned and non-salt-cured after the claimed method is performed.
App. Br. 10-11. Appellant asserts that the applied prior art “provides no
indication whatsoever that it was even contemplated to perform fatliquoring
on an untanned and non-salt-cured hide” to preserve a hide for subsequent
tanning, and the Examiner’s rejection is therefore based on impermissible
hindsight. App. Br. 11—12.
However, Ushakoff s disclosure that the presence of a tanning agent is
not essential to the strengthening effect of a fatty acid, and disclosure of
treating a solvated skin, free of any tanning agent, with a fatty acid,
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reasonably would have suggested treating an untanned, solvated skin with a
fatty acid before application of a tanning agent. In other words, given the
limited possible alternatives for treating a solvated skin, free of any tanning
agent, with a fatty acid—such as treating the skin with the fatty acid before
application of a tanning agent, or treating with the fatty acid after complete
removal of a previously applied tanning agent—one of ordinary skill in the
art would have readily envisaged all such alternatives. Bristol-Myers Squibb
Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001) (“[T]he
disclosure of a small genus may anticipate the species of that genus even if
the species are not themselves recited.”); see also In re Cleave, 560 F.3d
1331, 1337—38 (Fed. Cir. 2009); Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1377 (Fed. Cir. 2005); In re Schaumann, 572 F.2d 312, 315
(CCPA 1978); In re Petering, 301 F.2d 676, 682 (CCPA 1962).
Accordingly, one of ordinary skill in the art seeking to impart
enhanced tear resistance and tensile strength to a skin or hide with a fatting
agent as disclosed in Ushakoff reasonably would have been led, through no
more than ordinary skill and creativity, to apply the fatting agent to the hide
before application of a tanning agent. In re Preda, 401 F.2d 825, 826
(CCPA 1968) (it is well established that in evaluating references it is proper
to take into account not only the specific teachings of the references but also
the inferences which one skilled in the art would reasonably be expected to
draw therefrom). Ushakoff s disclosure of pickling, tanning, solvent
dehydrating, and fatliquoring a hide, and failure to mention salt-curing, in
view of Ushakoff s suggestion of applying a fatting agent to a hide before
application of a tanning agent, reasonably would have suggested applying a
fatting agent to a non-salt-cured, pickled, solvent dehydrated hide before
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application of a tanning agent to the hide, as recited in claim 1. It follows
that Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection.
Appellant further argues that Ex parte Rubin, 128 USPQ 440 (BPAI
1959), cited by the Examiner to support the proposition that “merely
reordering method steps is obvious,” is not relevant to the present claims.
App. Br. 12. Appellant argues that regardless of whether fatliquoring or
pickling is performed first on an untanned and non-salt-cured hide, the
claimed method would still be patentably distinct from applying a fatting
agent to a solvated skin as part of the tanning process, as disclosed in
Ushakoff. App. Br. 13. Appellant contends that Ex parte Rubin “therefore
supports a finding that the present claims are nonobvious and patentable
over the cited art.” Id.
However, as discussed above, Ushakoff s disclosures as a whole
would have suggested applying a fatting agent to a non-salt-cured, pickled,
solvent dehydrated hide before applying a tanning agent to the hide, as
recited in claim 1. It follows that Appellant’s arguments are unpersuasive of
reversible error.
Appellant further argues that Ushakoff discloses applying a fatting
agent to skins after they have been dried through a solvent drying process,
and Ushakoff thus discloses drying the skins before fatliquoring, contrary to
claim 1, which requires drying to be lastly performed after fatliquoring and
pickling. Appeal Br. 10; Reply Br. 3—5. Appellant contends that his
Specification defines “drying” as reducing the moisture content to a desired
level, and the Specification indicates that solvent drying is a conventional
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drying method in which a hide is treated with an organic solvent to drive out
water. Reply Br. 3 (citing Spec. 6,11. 10-11, 25—26).
Appellant’s Specification states that “drying” “means reducing the
moisture content to a desired level. The moisture level of the dried hides is
typically up to about 25 weight %. Preferred moisture levels are in the range
of 5 to 25 weight %, more preferably 10 to 15 weight %.” Spec. 6,11. 10-13.
Appellant’s Specification describes several ways that drying can be carried
out, which include solvent drying “in which a hide is treated with an organic
solvent that drives out the water” and toggle drying “in which hides are
stretched on a rack with toggles at their edges and passed through a heating
chamber.” Spec. 6,11. 15—26.
Accordingly, under a broadest reasonable interpretation consistent
with Appellant’s Specification as it would be interpreted by one of ordinary
skill in the art, the term “drying” used in claim 1 refers to reducing the
moisture content of a hide to any desired level, which may be carried out by
solvent drying or passing the hide through a heating chamber. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).
As discussed above, Ushakoff discloses a process of applying a fatting
agent to a skin or hide that involves “substantially” dehydrating the skin by
contacting it with an organic solvent to extract water present in the skin,
applying a surface coating of a fatting agent to the solvated skin, and
applying external heat to the skin to dry the skin of the organic solvent and
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distribute the fatting agent throughout the skin. Col. 1,11. 15—20, 60-61; col.
2.11. 22—34; col. 3,11. 52—58. Ushakoff discloses that a suitable apparatus
for applying heat to a skin to dry the skin of the organic solvent consists of a
heated platen filled with holes, and an overlying diaphragm. Col. 5,11. 25—
34. Ushakoff discloses using the apparatus by placing a solvated skin
supported on a porous tray between the heated platen and the diaphragm,
and inflating the diaphragm with steam so that it contacts the skin, “thereby
subjecting the skin to rapid heating from its top and bottom surfaces.” Col.
5.11. 25-39.
One of ordinary skill in the art would have understood that a
“substantially” dehydrated skin as disclosed in Ushakoff would contain
some amount of moisture, by virtue of the fact that is it substantially—rather
than completely—dehydrated. One of ordinary skill in the art would have
further understood that heating a substantially dehydrated skin by contacting
it with a steam-inflated diaphragm as disclosed in Ushakoff would heat the
skin to a temperature approaching that of steam (100-C), which would drive
off moisture present in the skin, along with the solvent. Accordingly,
Ushakoff s disclosure of drying a skin that has been “substantially”
dehydrated with an organic solvent by contacting the skin with a steam-
inflated diaphragm, reasonably would have suggested that the level of
moisture present in the skin would be reduced by at least some extent during
this process, corresponding to “drying” the skin as recited in claim 1 as we
have interpreted it. Therefore, contrary to Appellant’s arguments, because
Ushakoff discloses performing this drying process as the last step in
Ushakoff s method, Ushakoff would have suggested “lastly drying” a hide
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as recited in claim 1. Consequently, Appellant’s arguments are unpersuasive
of reversible error in the Examiner’s rejection.
Appellant argues that the combined disclosures of Famham and
Ushakoff would have led one of ordinary skill in the art to cure skins with
salt, and then use the tanning techniques disclosed in Ushakoff on the salt-
cured skins, because “Famham discloses only salt curing as a manner for
preserving hides for later tanning.” App. Br. 9.
However, Appellant’s arguments do not address the basis for the
Examiner’s reliance on Famham, and the arguments are therefore
unpersuasive of reversible error in the actual rejection presented by the
Examiner. As discussed above, the Examiner relies on Famham’s disclosure
that all hides undergo preliminary “soaking (washing), fleshing, liming,
unhairing, deliming, washing out, and rinsing (also washing).” Ans. 3^4
(citing Famham pg. 77). The combined disclosures of Ushakoff and
Famham, therefore, would have suggested incorporating the preliminary
steps of washing, fleshing, liming, unhairing, and deliming as disclosed in
Famham into the method suggested by Ushakoff (discussed above).
Appellant argues that his invention addresses a long-felt need because
it allows an untanned hide to be preserved without salt curing. App. Br. 13.
Appellant contends that employing fatliquoring to preserve untanned hides
in accordance with his invention preserves the untanned hides for at least six
months, whereas Munch2 addresses the disadvantages of salt curing by
applying sodium chlorite with an additional hydrotropic compound, which
2 Munch, US 4,935,031, issued June 19, 1990.
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only preserves hides for 2—3 weeks. App. Br. 13—14 (citing Spec. 1373;
Miinch col. 3,11. 35—40).
However, Appellant does not provide sufficient evidence to
demonstrate that there was a long-felt need that was solved by his invention.
App. Br. 13-14; In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973). Appellant
does not show that the solution to the problem of developing a method for
preserving an untanned hide without salt curing would not have been
apparent to one of ordinary skill in the art from the teachings of the applied
prior art, particularly Ushakoff in view of Miinch. App. Br. 13—14; In re
Gershon, 372 F.2d 535, 538—39 (CCPA 1967) (Establishing long-felt need
requires objective evidence showing existence of a persistent problem
recognized by those of ordinary skill in the art for which a solution was not
known.). In fact, as Appellant points out, Miinch discloses preserving hides
without salt curing for 2—3 weeks. App. Br. 13—14. In addition, as
discussed above, Ushakoff would have suggested fatliquoring a non-salt
cured, untanned, pickled, solvent dehydrated hide, which would have
preserved the hide, as evidenced by Miinch’s disclosure that solvent
dehydrating preserves hides. Miinch col. 2,11. 7—14; Newell Cos., Inc. v.
Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (The long-felt need
must not have been satisfied by another before the invention by applicant.).
Therefore, considering the totality of the evidence relied upon in this
appeal, we find that a preponderance of the evidence supports the
Examiner’s conclusion of obviousness. We accordingly sustain the
Examiner’s rejections of claims 1—20 and 28 under 35 U.S.C. § 103(a).
3 Paragraph 37 of Appellant’s Specification as published corresponds to
page 12, lines 8—14 of the Specification as originally filed.
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Claim 24
As set forth above, claim 24 is a product-by-process claim that recites
a preserved, fatliquored, pickled, dried, untanned hide made according to the
method of claim 1.
“[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.”
In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). “Where a product-by­
process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.” In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983).
As discussed above, Appellant does not provide arguments for the
separate patentability of claim 24. App. Br. 4—14. Nonetheless, we point
out that Appellant’s arguments discussed above in connection with claim 1
do not identify any structural distinction, or unobvious difference, between
the preserved, fatliquored, pickled, dried, untanned hide recited in claim 24
and a hide subjected to the preliminary steps of washing, fleshing, liming,
unhairing, and deliming as suggested by Famham, and then preserved,
pickled, fatliquored, untanned, solvent dehydrated, and dried as suggested by
Ushakoff. App. Br. 4—14; Reply Br. 2—5. Accordingly, Appellant does not
meet his burden of production by coming forward with evidence establishing
a material difference between the hide recited in claim 24, and the hide
suggested by the combined disclosures of Ushakoff and Famham. Marosi,
710 F.2d at 803. We accordingly sustain the Examiner’s rejection of claim
24 under 35 U.S.C. § 103(a).
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Rejection IX
Appellant does not contest the Examiner’s provisional rejection of
claims 1—20, 24, and 28 on the ground of non-statutory obviousness-type
double patenting over claims 1—23 and 26 of copending patent application
number 12/541,084. See generally App. Br. Therefore, we summarily
sustain this rejection without comment. 37 C.F.R. § 41.37(c)(l)(iv); see also
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Mar.
2014) (“If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
DECISION
We affirm the Examiner’s rejection of claims 1—20, 24, and 28 under
35 U.S.C. § 112, second paragraph, rejections of claims 1—20, 24, and 28
under 35 U.S.C. § 103(a), and provisional rejection of claims 1—20, 24, and
28 for non-statutory obviousness-type double patenting.
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
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