Ex Parte Romero et al

Patent Trials and Appeals Board

Mar 28, 2019

14748959 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/748,959
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
FILING DATE
06/24/2015
04/01/2019
Germantown, MD 20874
FIRST NAMED INVENTOR
Raul M. Romero
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUP22903 9443
EXAMINER
SASAN, ARADHANA
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair@sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAUL M. ROMERO and VAN JONES 1
Appeal 2017-011230
Application 14/748,959
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Raul M. Romero, one of the named inventors, as the
real party-in-interest. App. Br. 2.
Appeal 2017-011230
Application 14/748,959
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-18 as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of McCadden (US
2003/0077304 Al, April 24, 2003) ("McCadden") and Fourman et al. (US
4,963,591, October 16, 1990) ("Fourman").
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention relates to a topical relief cream formulation for
allergic reactions to poison ivy, poison oak, poison sumac, minor skin
irritations and insect bites through chemical means. Spec. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A topical relief cream formulation for allergic reactions to
poison ivy, poison oak, poison sumac, minor skin
irritations and insect bites comprises:
a quantity of zinc acetate;
a quantity of zinc oxide;
a quantity of pramoxine;
a quantity of camphor;
a quantity of menthol;
a quantity of antibiotics;
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Application 14/748,959
App. Br. 10.
a topical lotion base; and
the quantity of zinc acetate, the quantity of zinc oxide, the
quantity of pramoxine, the quantity of camphor, and the
quantity of menthol being homogeneously suspended
within the topical lotion base.
ISSUES AND ANALYSIS
We adopt the Examiner's findings, reasoning, and conclusion that
Appellants' claims 1-18 are prima facie obvious over the combined prior
art. We address the arguments raised by Appellants below.
Issue 1
Appellants argue that the Examiner erred because F ourman neither
teaches nor suggests a single cream formulation containing zinc acetate, zinc
oxide, pramoxine, camphor, menthol, antibiotics and a lotion base, as
required by independent claims 1 and 11. App. Br. 6.
Analysis
The Examiner finds that McCadden teaches a composition for the
treatment of rashes, dermatoses or skin eruptions including acute,
inflammatory reactions of the skin caused by an allergic or irritant reaction
(such as that caused by poison ivy, poison oak or poison sumac, or other
forms of allergic or irritant contact dermatitis, etc.). Final Act. 4 ( citing
McCadden Abstr., ,r 2, claims 1, 8, 11, 13-18, 20, 24, 28). The Examiner
finds that McCadden also teaches: (1) that individual therapies do not bring
relief of all the symptoms of pruritis, (2) that combination therapy is
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Application 14/748,959
preferred; and (3) that the composition may be in the form of a lotion or
cream for topical therapy. Id. (citing McCadden ,r,r 5, 14--15, 19--20, 63).
The Examiner finds that, although McCadden teaches the inclusion of
zinc acetate, zinc oxide, pramoxine, camphor, menthol, and a lotion base in
suspension formulations, it does not teach a single cream formulation
including an antibiotic. Final Act 4--5.
However, the Examiner finds that Fourman teaches skin care
formulations useful for treating poison ivy, poison oak, poison sumac, diaper
rash, insect bite, analgesic, anesthetic, antipruritic, and antibiotic, topical
formulations in the form of lotions and creams. Final Act. 5 ( citing F ourman
Abstr., col. 2, 11. 10-16, Formula 10, cols. 11-12). The Examiner finds that
Fourman teaches an exemplary formulation for treating poisons ivy, oak,
and sumac containing camphor, diphenhydramine hydrochloride, menthol,
and zinc acetate. Id. (citing Fourman Formula 6, cols. 7-10). The Examiner
finds that F ourman also teaches that zinc oxide is also a component of the
lotion formulation. Id. (citing Fourman Formula 8, cols. 9--10).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to prepare, from the combined teachings of the
prior art, a lotion-based topical composition for the treatment of skin
irritation containing zinc oxide, an anti-itch agent such as camphor, menthol,
pramoxine, and zinc acetate. Final Act. 5. The Examiner further concludes
that a skilled artisan would have been motivated to combine the teachings of
McCadden and Fourman, because both references are drawn to topical lotion
formulations for skin relief and contain individual components known in the
art to provide relief of skin irritation. Id. at 6. The Examiner further notes
that it is generally obvious to combine known prior art elements, according
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to known methods, to yield predictable results. Id.; see KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007).
Appellants argue that Fourman teaches various formulations
(Formulae 1-20) that are prepared according to their specific utilities for
various conditions. App. Br. 5. By way of example, Appellants point to
Formula 6, containing camphor, diphenhydramine, menthol and zinc acetate,
but no antibiotics, for treatment of poisons ivy, oak and sumac. Id. In
contrast, Appellants argue, Formula 8 contains camphor, menthol, zinc
oxide, but no antibiotics. Id. at 5---6. Formula 20, contend Appellants,
contains bacitracin, an antibiotic, but without zinc acetate, zinc oxide,
pramoxine, camphor, or menthol as an antibiotic lotion. Id. at 6. However,
Appellants assert, none of the exemplary formulations taught by Fourman
contain all of the claimed ingredients: viz., zinc acetate, zinc oxide,
pramoxine, camphor, menthol, and antibiotics, in a lotion base, as required
by claims 1 and 11. Id.
We are not persuaded by Appellants' arguments. McCadden teaches
all of the elements in composition 1, including zinc acetate, zinc oxide,
pramoxine, camphor, menthol and a lotion base, with the exception of an
antibiotic. See McCadden, claims 1, 8, 11, 13-18, 20, 24, 28. McCadden
teaches that its compositions are useful in:
[T]he treatment of rashes, dermatoses or skin eruptions, which
are known to be treated topically to improve or favorably alter
the disease condition. Such rashes, dermatoses or skin eruptions
include acute, inflammatory reactions of the skin caused by an
allergic or irritant reaction (such as that caused by poison ivy,
poison oak or poison sumac, or other forms of allergic or irritant
contact dermatitis).
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Id. at ,r 2. Furthermore, McCadden emphasizes that, for the treatment of
such conditions, "combination therapy is preferred." Id. at ,r 5.
The Examiner relies upon F ourman as teaching many of the same
constituents for the treatment of, inter alia: "antifungal, poison ivy, poison
oak, poison sumac, diaper rash, insect bite, analgesic, anesthetic, antipruritic,
... antibiotic" in topical applications. Fourman col. 2, 11. 11-14. Fourman
also teaches that, among the essential ingredients in its compositions are:
"specifically tailored cosmetic composition having particular beneficial
effects, i.e., sunscreens, antifungals, antibiotics, insect repellents,
moisturizers, astringents, deodorants, and the like." Id. at 11. 30-33 emphasis
added); see also Formula 20.
We agree with the Examiner that it would have been obvious to
combine the teachings to add the antibiotics of Fourman to the compositions
of McCadden. Both references are directed to lotions that can be used for
the relief of skin irritation through a combination of elements. Appellants
argue that Fourman fails to teach, in any one of its exemplary formulations,
all of the claimed constituents recited in claim 1. However, "one cannot
show non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413,426 (C.C.P.A. 1981). In the appeal before us, as we have explained,
the Examiner relies upon the combination of the teachings of McCadden and
Fourman, and not Fourman alone.
Furthermore:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
Keller, 642 F.2d at 425. We agree with the Examiner that, given the
teaching of McCadden that combination therapy is preferable, a person of
ordinary skill in the art would have found it obvious and advantageous to
add an antibiotic, as taught by F ourman, to the compositions taught by
McCadden for the topical relief of irritating skin conditions.
Issue 2
Appellants argue that a person of ordinary skill in the art would not
have been motivated to combine the teachings of McCadden and Fourman.
App. Br. 6.
Analysis
Appellants argue that, McCadden teaches a composition that contains
a drying agent for topical treatment of rashes, especially moist exudative
rashes and/or rashes in moist areas, whereas Fourman teaches a cosmetic
composition comprising a cellulosic polymer/solvent system and
cosmetically active materials that prevent loss of water from the skin surface
to the environment. App. Br. 6. Appellants therefore argue that, because the
purposes of these two preparations (healing moist exudative rashes in
McCadden versus preventing loss of water from the skin surface to the
environment in Fourman) are different, there would have been no motivation
to combine the references to reach the claimed invention. Id. at 6-7.
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Furthermore, Appellants contend, McCadden expressly teaches the
use of low-potency steroids, such as hydrocortisone, for treating infections
arising from open wounds. App. Br. 7 (citing McCadden ,r 76). Appellants
assert that, because McCadden advocates use of a low potency steroid such
as hydrocortisone, and not an antibiotic for the treatment of infections, there
is no apparent motivation to combine the teachings of McCadden with
Fourman for adding an antibiotic to the McCadden's formulations. Id.
We are not persuaded by Appellants' arguments. As we explained
supra, both Mc Cadden and F ourman teach that their formulations are useful
for the treatment of skin irritations, including rashes, poisons ivy, oak, and
sumac, contact dermatitis, and other irritations. See McCadden ,r 2;
Fourman col. 2, 11. 11-13. Furthermore, McCadden expressly teaches that
combination therapy is preferable. See McCadden ,r 5. We therefore agree
with the Examiner that a person of ordinary skill in the art would have been
motivated to combine the antibiotics of Fourman with the compositions of
McCadden to obtain the maximum benefit of combination therapy.
With respect to Appellants' argument that there would have been no
motivation to combine because McCadden teaches inclusion of low-potency
steroids, independent claim 1 recites: "A topical relief cream formulation
for allergic reactions ... comprises" ( emphasis added). Independent claim
11 makes a similar recital. The use of the transitional claim term
"comprising" creates a presumption that the claim does not exclude
additional, unrecited elements. See Crystal Semiconductor Corp. v. TriTech
Microelectronics Int'!, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001).
Consequently, the scope of the claims does not preclude the addition of low-
potency steroids nor, we find, would a person of ordinary skill be deterred
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from adding antibiotics to a composition additionally containing low-
potency steroids because it was well known in the art at the time of
invention that steroids are primarily anti-inflammatory agents, whereas
antibiotics are primarily microbiocidal. Furthermore, McCadden's teaching
of: "the risk of undesirable side effects such as secondary infection caused
by the presence of moist, open wounds" (McCadden ,r 7 6) would have
served to additionally motivate a person of ordinary skill in the art to include
an antibiotic agent, as taught by F ourman, into the compositions of
Mc Cadden.
Consequently, we affirm the Examiner's rejection of claims 1-18.
DECISION
The Examiner's rejection of claims 1-18 as unpatentable under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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