Sunscreen application toasted by the Board
Marshall, Gerstein was of record in Ex parte SENGUPTA , directed to a sunscreen composition.
Of waiver,
Appellants do not request review of the rejections over the SenGupta
̳418 patent. (See Final Rej. 8-15; App. Br. 3.) We therefore summarily affirm them. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (―If a ground of rejection stated by the examiner is not addressed in the appellant‘s brief, that ground of rejection will be summarily sustained by the Board.‖). The failure to appeal is a waiver under Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010) (precedential) (―If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection‖).
The Board noted:
Principles of Law
A prior art reference is said to teach away from an Applicant‘s invention ―when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.‖ In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,] 1349 n. 8 [(Fed.Cir.2000)] (―The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.‖). Where the prior art contains ―apparently conflicting‖ teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered ―for its power to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree to which one reference might accurately discredit another.‖ In re Young, 927 F.2d 588, 591 (Fed.Cir.1991).
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
KSR was not cited.
Of a species rendering a later genus obvious:
Because SenGupta rendered obvious the composition comprising Sokalan® PA 30 CL, a species of shear-thinning polymer, it rendered obvious the claim using a broader category of shear-thinning polymer. See Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300 (Fed. Cir. 2007) (disclosure of an obvious species in the prior art renders a later claim to a genus unpatentable as obvious).
In re Best was invoked:
Based on those findings, the Examiner reasoned that the composition suggested by SenGupta would have the same properties. (Id. at 6-7.) We agree. The weight of the evidence is sufficient to shift the burden to Appellants to demonstrate error. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Bottom line: all rejections affirmed.
Of waiver,
Appellants do not request review of the rejections over the SenGupta
̳418 patent. (See Final Rej. 8-15; App. Br. 3.) We therefore summarily affirm them. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (―If a ground of rejection stated by the examiner is not addressed in the appellant‘s brief, that ground of rejection will be summarily sustained by the Board.‖). The failure to appeal is a waiver under Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010) (precedential) (―If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection‖).
The Board noted:
Principles of Law
A prior art reference is said to teach away from an Applicant‘s invention ―when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.‖ In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,] 1349 n. 8 [(Fed.Cir.2000)] (―The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.‖). Where the prior art contains ―apparently conflicting‖ teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered ―for its power to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree to which one reference might accurately discredit another.‖ In re Young, 927 F.2d 588, 591 (Fed.Cir.1991).
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
KSR was not cited.
Of a species rendering a later genus obvious:
Because SenGupta rendered obvious the composition comprising Sokalan® PA 30 CL, a species of shear-thinning polymer, it rendered obvious the claim using a broader category of shear-thinning polymer. See Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1300 (Fed. Cir. 2007) (disclosure of an obvious species in the prior art renders a later claim to a genus unpatentable as obvious).
In re Best was invoked:
Based on those findings, the Examiner reasoned that the composition suggested by SenGupta would have the same properties. (Id. at 6-7.) We agree. The weight of the evidence is sufficient to shift the burden to Appellants to demonstrate error. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Bottom line: all rejections affirmed.
posted by Lawrence B. Ebert at 2:54 PM
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