This is a story about a patent application prosecuted by a clever patent attorney that seemingly obtained a great outcome for her client. The application is U.S. Pat. App. 13/113,174.
The Owner of the ‘174 Application – Amerilab Technologies
The first character in this patent story is Fred Wehling. Mr. Wehling graduated from South Dakota State University in 1977 with majors in biology and chemistry. He worked in Minnesota for a veterinary drug manufacturer and then for a human drug manufacturer. In 1986, he founded his own pharmaceutical company called CIMA Labs, Inc. The CIMA company manufactured effervescent tablet products (similar to products like Alka Seltzer). Mr. Wehling helped take the company public, though he himself transitioned out in 1992. The CIMA company was eventually purchased in 2004 by Cephalon (a Pennsylvania company) for around $515 million. The Cephalon company went on to be purchased in 2011 by an Israel-based pharma company (Teva) for around $6.8 billion.
Mr. Wehling founded a new Minnesota based effervescent tablet company in 1996. The new company is called Amerilab Technologies. Mr. Wehling is still now the CEO of Amerilab. And Amerilab is the apparent owner of the ‘174 application that is at the heart of this story.
Have you ever made a tasty Jell-O brand gelatin dessert? If yes, you probably remember boiling and stirring liquid on a hot stove. Then, that hot liquid had to be transferred from the pan into some sort of alternate container such as a bowl or mold. It is a bit like being a blacksmith in the kitchen but working with scalding hot tasty liquid instead of smelted metal. The point is that making a Jell-O snack can be a risky operation.
The Specification of the ‘174 application describes a similar but different method of making a gelled composition. The method includes using an effervescent tablet containing gelatin instead of something like that powder that your mom let you dump out of that little Jell-O box. The tablet simplifies the process at least because it does not require creating and then transferring a scalding hot liquid. According to the Specification, “[t]he single serving and single dose formulations of the invention provide gelatin in a form that enables consumers to easily prepare a dessert or a tasty vehicle for delivering an active agent such as a medicament or a vitamin.”
The hero in this story is Allison Johnson, the owner and founder of Allison Johnson, P.A. (www.ajiplaw.com). Ms. Johnson is the attorney who prosecuted the ‘174 application on behalf of Amerilab Technologies. She was awarded a chemistry degree with honors from the University of Indiana in 1987. Ms. Johnson worked as a scientist for the Drug Enforcement Administration, G.D. Searle and Northern Telecom. She obtained a J.D. from Santa Clara University in 1992. As a lawyer Ms. Johnson worked first in patent litigation at a nationwide litigation firm, and then in patent prosecution at a nationwide patent prosecution firm.
The Prosecution History
The ‘174 application ended up going to appeal when no agreement for allowance was reached after five office actions and an RCE. Only claims 21—27 and 40-42 reached appeal. Claim 21 is illustrative and reproduced below:
21. An effervescent composition comprising:
from about 10 % by weight to about 30 % by weight of an effervescent couple comprising an acid and a base;
from at least 5 % by weight to about 20 % by weight of the acid;
from at least 1 % by weight to about 15 % by weight of the base; and
at least 200 mg of a gelatin that forms a gel, the gelatin comprising gelatin derived from a cow, gelatin derived from a pig, or a mixture thereof,
the effervescent composition forming a gel when the effervescent composition is dissolved in heated water to form an aqueous composition and the aqueous composition is subsequently chilled.
Ms. Johnson made the bold decision to double down on a motivation to combine argument and take it to the Appeal Board. Perhaps it is has something to do with her background in litigation, or perhaps she is just a darn fine patent attorney. But one would be hard pressed to find a better approach on appeal in a motivation to combine issue. She brings laser focus to the primary issue. And she presents masterful persuasive reasoning in her documents on appeal.
Practitioners young and old are encouraged to read the excellent Reply Brief written, which can be accessed simply by clicking on the following link:
The Outcome on Appeal
In an Appeal Decision issued on in September of 2017, the Board completely reversed the Examiner. In other words, the battle was won by Attorney Johnson. : ) Congratulations to Ms. Johnson, Mr. Wheling, and Amerilab Technologies on the grant of U.S. Patent No. 9,907,324. Following is a link to the Board’s decision:
The New Gelatin Product Line by Amerilab Technologies
This image was extracted from the Amerilab website in order to demonstrate that the patented solution is now seemingly being commercially offered for sale. This is the way that the patent system should work, right?