Ex Parte Kokubo et al

Board of Patent Appeals and Interferences

Sep 20, 2010

09842466 (B.P.A.I. Sep. 20, 2010)

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.
09/842,466 04/26/2001 Hiroyasu Kokubo 35576/233803 8005
826 7590 09/21/2010
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
SHEIKH, HUMERA N
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
09/21/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HIROYASU KOKUBO and SAKAE OBARA
__________

Appeal 2010-010550
Application 09/842,466
Technology Center 1600
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Hiroyasu Kokubo and Sakae Obara (Appellants) request rehearing
under 37 C.F.R. § 41.52 of the Decision on Appeal entered April 12, 2010,
which affirmed a rejection of all the pending claims for obviousness.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 09/842,466

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ISSUES
The Request for Rehearing presents two issues:
(1) “the Board erred as a matter of fact in finding that Hogan
teaches a multi-colored and continuous coating” (Req Reh’g 1-2); and
(2) “the Board erred in not separately addressing the patentability
of” claims 18-20 and 44-47, which recite that the pattern comprises a logo,
barcode, or letters. (Id. at 2.)
ISSUE 1
We adhere to our Decision that the evidence supports the finding that
Hogan taught a multi-colored and continuous coating.
The Request argues that this issue “basically turns on whether the
multi-colored coating in Hogan can be considered continuous.” (Req. Reh’g
2.) Appellants argue that “it cannot be [continuous] for the same reasons the
coating of Berta cannot be considered continuous.” (Id.) In the Decision, we
found that Berta formed the coating by dipping, and explicitly taught that the
coating would have a seam. (E.g., Dec. 4, FF 2.) Because Berta’s coating
was expressly described as having a seam, we found it was not continuous in
the ordinary sense of the term. (Dec. 7.)
Hogan did not teach forming a coating by dipping and did not teach
that the coating has a seam. Hogan explicitly taught that its coating was
“continuous,” using exactly that word to describe it. (Dec. 5, FF 8, 9.)
Appellants contend that Hogan’s description of producing a multi-colored
tablet “is very similar to the first step in the two-dip process described in
Berta, which the Board agreed did not produce a continuous coating.” (Req.
Reh’g 3.) As Appellants note, however, after Hogan applied two different
colorants electrostatically, Hogan then exposed the tablet to heat or
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electromagnetic radiation. (Id.) According to Hogan, exposure to heat or
radiation forms a continuous coating. (Dec. 5, FF 8, 9.) Hogan’s process
was different from Berta’s. We see no evidence that, contrary to Hogan’s
explicit teaching, the coating on Hogan’s tablet would not have been
continuous.
We are also not persuaded by the additional arguments that Hogan did
not teach a continuous multi-colored coating. (Req. Reh’g 3-4.) Where
Hogan taught that different faces of the tablet could have different colors
(Dec. 6, FF 11), we find no indication that, contrary to Hogan’s teaching of a
continuous coating, the multi-colored embodiment did not have a continuous
coating. FF 11 quoted only part of Hogan, col. 12, ll. 30-44, to which the
Examiner had referred. (Compare FF 11 with Ans. 5 and Hogan, col. 12, ll.
30-44.) The omitted portion of the sentence quoted partially in FF 11 reads
in full: “[i]n that way a coating may easily be provided over the entire
surface of the tablet core, and different coating materials may be used for
coating different parts of the core.” We again find this a disclosure of one
coating over the entire surface; the one coating may be multi-colored, and it
is continuous.
ISSUE 2
We erred by not separately addressing claims 18-20 and 44-47.
Appellants correctly point out that the Appeal Brief presented separate
arguments for claims 18-20 and 44-47 (App. Br. 10-11), and our Decision
overlooked it (Req. Reh’g 4-5). We address the overlooked arguments now.
Claims 18-20 and 45-47 define preparations having a pattern
comprising a logo, bar code, or letters. Claim 44 defines a preparation
having a pattern of two or more colors. Claim 18 is representative of the
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Application 09/842,466

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separately argued claims 18-20 and 45-47. Claim 18 depends from claim
17, which in turn depends from claim 31. Incorporating claims 31 and 17,
claim 18 reads:
18. [A solid preparation coated with a multi-colored continuous film
coating layer, prepared by the process of
coating a solid preparation with a continuous film coating layer
having one or more colorants; and,
exposing a first part of the coating layer to a first amount of radiation
and exposing a second part of the coating layer to a second amount of
radiation under conditions sufficient to result in the first and second parts of
the coating layer having different coloration;
wherein said film coating layer has a pattern of two or more different
colors;]
wherein said pattern comprises a logo.

The Issue
The Examiner found that Berta did not teach a logo, letters, or a bar
code on the medicament, but found they were routinely used. (Ans. 4.)
According to the Examiner, “[w]hile the combin[ed] references do not
explicitly state the use of logos, patterns, or bar codes, the inclusion of such
would provide for an aesthetically pleasing appearance as well as for easier
identification of tablets, as is well known to one of ordinary skill in this art.”
(Ans. 11.)
Appellants contend that the rejection “completely fails to disclose
how such a coating could be obtained by modifying the cited references.”
(App. Br. 10.)
Principles of Law
“Obviousness does not require absolute predictability of success. . . .
[A]ll that is required is a reasonable expectation of success.” In re
O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
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Analysis
Because Appellants object that the rejection does not disclose “how” a
coating with a logo could be obtained, we have reviewed the record for
guidance on that technique in the prior art. We find none. It may be, as the
Examiner found, that logos, etc., would have aesthetic and identification
advantages. (Ans. 11.) However, without further evidence or explanation
from the Examiner on this record, there is insufficient evidence to support
finding a reasonable expectation of success in so modifying the prior art
preparations.
Claim 44 defines a preparation having a pattern of two or more colors,
and stands separately from claim 18. We find that Hogan’s example of
different colors on the each of the opposite faces of a tablet disclosed a
pattern of two or more colors. (Dec. 6, FF 11.) The disclosure in Hogan’s
patent is presumed enabled. See Amgen Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). Appellants have not met the
burden of showing that Hogan’s teaching of a tablet with different colors on
the opposite faces was not enabled, and that there would not have been a
reasonable expectation of success in following Hogan’s teaching.
CONCLUSIONS
We have reconsidered Hogan’s disclosure, but again find the evidence
supports the Examiner’s finding that Hogan taught a continuous film layer
with at least two differently colored parts.
The rejection provided insufficient evidence or explanation to support
finding a reasonable expectation of success in modifying the prior art to
produce a tablet with a pattern comprising a logo, a bar code, or pattern of
letters.
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SUMMARY
We reaffirm the rejection of claims 6-9, 11, 13-17 and 31-44 under
35 U.S.C. § 103 over Berta and Hogan.
We reverse the rejection of claims 18-20 and 45-47 under 35 U.S.C.
§ 103 over Berta and Hogan.
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 GRANTED-IN-PART

cdc
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000