Kevin P. Eaton

Patent Trials and Appeals Board

Nov 7, 2019

15078167 - (D) (P.T.A.B. Nov. 7, 2019)

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.
15/078,167 03/23/2016 Kevin P. Eaton 173.00003 8971
130655 7590 11/07/2019
Harper Bates & Champion LLP
1717 Main Street, Suite 3550
Dallas, TX 75201
EXAMINER
SCHLIENTZ, NATHAN W
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
docketing@harperbates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAN DEVLIN and KEVIN P. EATON1

Appeal 2018–006185
Application 15/078,167
Technology Center 1600
Before ULRIKE W. JENKS, ROBERT A. POLLOCK, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1–4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The ’716 application, entitled “Treatment of Dermatological
Conditions,” relates to a method of treating dermatological conditions such
as psoriasis, dermatitis, or dandruff using a multiple vitamin supplement

1 Appellant identifies Kevin P. Eaton and Daniel Joseph Devlin, IV as real
parties in interest. App. Br. 2.
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compositions comprising folic acid, vitamin B12, and vitamin B6. See, e.g.,
Spec. Title, Abstract, ¶¶ 9–10. In particular, independent claim 1 recites:
1. A method of treating psoriasis by administering to a
person a vitamin supplement composition comprising at least
about 25 micrograms to about 2,200 micrograms of folic acid,
at least about 25 micrograms to about 2,500 micrograms of
vitamin B 12, and at least about 0.5 milligrams to about 20
milligrams of vitamin B6, wherein said composition is
essentially free of anti-oxidants.[2]
Appeal Br. 13 (Appendix A)(italics added).
With respect to the last element of claim 1, the Specification states:
By “essentially free” it is meant that the vitamin
composition should not contain an amount of antioxidants
which would tend to damage and inactivate some of the vitamin
B12 and/or folic acid of the vitamin supplement. The presence
of lower amounts of antioxidants would not render the vitamin
composition of the present invention ineffective or of reduced
effectiveness.
Spec. ¶ 7.
The identical claims currently under appeal were the subject of a prior
appeal to the United States Court of Appeals for the Federal Circuit. In re
Eaton, 545 F. App’x 994 (Fed. Cir. 2013). In reversing the Board’s prior
determination that claims 1–4 were unpatentable over prior art not presently
before us, the Federal Circuit confirmed that “‘essentially free’ of
antioxidants means a composition that ‘should not contain an amount of

2 Depending from claim 1, claim 3 specifies that the “composition comprises
800 micrograms of folic acid, 115 micrograms of vitamin B12, and 10
milligrams of vitamin B6.” Dependent claims 2 and 4 specify that the
“composition is in the form of a tablet.”

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antioxidants which would tend to damage and inactivate some of the vitamin
B12 and/or folic acid of the vitamin supplement.’” Id. at 997. The court
emphasized that the proper construction “does not require ‘no’ added
[antioxidants such as] vitamin C, vitamin E, or the like. Rather, the correct
construction requires that “lower amounts” of antioxidants may be present,
but the effectiveness of the composition must not be reduced. Id. at 997.
Noting that the compositions disclosed in the cited references included
antioxidants (id. at 995–996), the Court determined that the Examiner and
the Board erred in not analyzing those compositions for reduced
effectiveness resulting from the antioxidant component (id. at 997–998).
The instant rejections involve the following five references:
• EP 0 595 005 A1, published May 4, 1994 (“Serfontein”);
• US 5,932,624, issued Aug. 3, 1999 (“Herbert”);
• US 2002/0132800 Al, published Sept. 19, 2002 (“Popp”);
• US 7,115,286 B2, issued Oct. 3, 2006 (“Meredith”);3 and
• US 5,563,126, issued Oct. 8, 1996 (“Allen”).
In the appeal before us, the Examiner maintains three rejections under
pre-AIA 35 U.S.C § 103(a): claims 1–4 in view of Serfontein; claims 1–4 in
view of Herbert, Serfontein, Popp, and Meredith; and claims 1 and 2 in view
of Allen, Serfontein, Popp, and Meredith. Answer 3. The Examiner also
provisionally rejects claims 1–4 for obviousness-type double patenting over

3 Although initially arguing that the Examiner had not shown that Meredith
is prior art (App. Br. 10), Appellant has not rebutted the Examiner’s
reasoned assertion that Meredith qualifies as prior art because it is entitled to
the filing date of Provisional Application No. 60/485,421 (Ans. 6). On this
record we agree with the Examiner that Meredith qualifies as prior art.
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claims 25–47 of copending Application No. 11/145,716. Id.; Final Rej. 24–
26.4 All other rejections have been withdrawn. Id. at 4.
FACTUAL FINDINGS
We have reviewed Appellant’s contentions that the Examiner erred in
rejecting claims 1–4 as unpatentable over the cited art. We disagree with
Appellant’s contentions and adopt the findings concerning the scope and
content of the prior art set forth in the Examiner’s Answer and Final
Rejection (to the extent directed to the references discussed below). For
emphasis, we highlight and address the following:
FF1. Serfontein is a European Patent Application entitled “Pharmaceutical
preparations for lowering homocysteine levels, containing vitamin B6,
folic acid and vitamin B12.” Serfontein claims:
1. The use in the manufacture of a pharmaceutical preparation
for lowering levels of homocysteine or for the prophylaxis or
treatment of elevated levels of homocysteine or of clinical
conditions associated therewith in a patient of a combination
comprising
a) vitamin B6;
b) folate or a suitable active metabolite of folate or a
substance which release folate in vivo;
c) vitamin B12, with or without intrinsic factor.

4 Appellant does not address the obviousness-type double patenting rejection
in this appeal. But see Final Rej. 26 (noting that “Applicant states that they
will submit a Terminal Disclaimer in compliance with 37 C.F.R. § 1.321(c)
or 1.321(d) once the application is allowed”). Because the rejection is
provisional, we do not address it here. See Ex. Parte Moncla, Appeal 2009-
006448 (PTAB June 22, 2010) (Precedential).

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Serfontein, 18:51–56; see also, id. at 4:37–42. According to Serfontein,
the disclosed preparations are “applicable to the lowering of total
homocysteine blood levels if elevated by any known causes, including
. . . psoriasis.” Id. at 4:42–48.
FF2. Further, and as described by the Examiner,
Serfontein teaches that the dosage form may be a tablet (pg. 5,
In. 58; and pg. 6, In. 44–45). Serfontein also teaches that the
preferred dosage is 5 mg vitamin B6, 1,000 μg folic acid and
500 μg vitamin B12 (pg. 8, Table). Serfontein also teaches
tablets comprising 2.5 mg pyridoxal + 2.5 mg pyridoxine (5 mg
vitamin B6), 0.5 mg folic acid and 0.25 mg cyanocobalamin
(vitamin B12) (Example 4); and tablets comprising 2 mg
pyridoxal + 8 mg pyridoxine (10 mg vitamin B6), 0.65 mg
folate and 0.4 mg cyanocobalamin (vitamin B12) (Example 8).
Final Rej. 4.
FF3. Serfontein further teaches that the disclosed compositions may
“optionally” include antioxidants, such as betaine and/or its precursor,
choline. Id. at Abstract, 7:22–27. The reference also states that “the
invention preferably provides for the co-administration . . . of an
antioxidant,” such as vitamin C, vitamin E, selenium, and/or coenzyme
Q10 “preferably incorporated into the same pharmaceutical preparation.”
Id. at 6:58–7:5; see also id. at 21 (claim 23 reciting the addition of one or
more antioxidants to the invention of claims 1–22).
FF4. Herbert teaches vitamin supplement compositions comprising folic
acid, vitamin B12, and vitamin B6 that are “essentially free of
antioxidants,” where that term
means that the vitamin composition of the present invention
must not contain an amount of antioxidants which would tend
to damage and inactivate some of the vitamin B12 and/or folic
acid of the vitamin supplement. The presence lower amounts of
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antioxidants would not render the vitamin composition of the
present invention ineffective or of reduced effectiveness.
Herbert, Abstract, 1:64–2:24, 3:53–59, claim 1.
FF5. Herbert teaches the administration of supplement compositions
comprising folic acid, vitamin B12, and vitamin B6 to “lowering high
serum homocysteine levels to protect against the incidence of heart attack
and other blood vessel related disorders.” 2:1–5. “Preferably, the
supplement is administered orally,” e.g., as tablets. Id. at 3:30–36.
Preferred unit dosages effective to reduce elevated serum homocysteine
levels to normal “generally range from 300 to about 2,000 micrograms of
folic acid, 25 to about 1,000 micrograms of vitamin B12, and 5 to about
20 milligrams of vitamin B6, with 500 micrograms of folic acid, 25
micrograms of vitamin B12 and 10 milligrams of vitamin B6.” Id. at
3:62–4:19; see claims 12–15.
FF6. Allen teaches oral administration of compositions comprising folic
acid, vitamin B6 and vitamin B12 to prevent and treat elevated levels of
serum metabolites, including homocysteine. Allen, Abstract; 1:16–48,
5:62–6:2, claim 1. In one embodiment the composition comprises 0.3–10
mg of vitamin B12, 0.1-0.4 mg folic acid and 5-75 mg vitamin B6. Id. at
6:3–18, 7:15–22, claim 2. The Examiner reasonably infers that Allen
teaches that such compositions may be formulated as tablets. See Final
Rej. 8 (citing Allen 8:11).
FF7. Popp is directed to dietary supplement compositions for improving
and maintaining healthy skin. See e.g., Popp, Title, Abstract, ¶ 3.
According to Popp, “[p]soriasis patients are known to be deficient in folic
acid. Supplementation with folic acid may benefit psoriasis and
seborrheic dermatitis patients.” Id. ¶ 31.
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FF8. Meredith is generally directed to oral compositions “to inhibit insects
from biting a subject” and/or “reduce swelling, itching, redness and/or
inflammation of the local area of an insect bite.” Meredith, Abstract.
Meredith discloses that such compositions may include vitamins. See
e.g., id. Consistent with this disclosure, Meredith “provides general
background information on vitamins” (id. at 14:8–21:31) noting for
example that, “[s]ufferers of psoriasis my consider taking extra folic
acid,” (id. at 16:22–23), vitamin B6 may “assist[] in the prevention of
dandruff, eczema, and psoriasis” (id. at 18:36–39), and a deficiency of
vitamin B12 “may . . . result in the raising of the level of homocysteine in
the blood” (id. at 20:10–13).
ANALYSIS
As an initial matter, Appellant appears to argue that we should allow
claims 1–4 on appeal because the Examiner previously allowed the same
claim language over Serfontein, Meredith, and Popp. See App. Br. 3–7, 11;
Reply, 2 (citing MPEP §§ 1308.01, 706,04). While we appreciate
Appellant’s frustration with the course of prosecution, Appellant points to no
authority for the requested remedy and we find no error in the Examiner’s
reconsideration of the record in light of the Federal Circuit’s guidance in
Eaton, discussed above. We, therefore, proceed to a brief overview of the
Examiner’s rejections.
In rejecting claims 1–4 as obvious in view of Serfontein, the Examiner
finds that “Serfontein teaches that compositions comprising folic acid,
vitamin B6 and vitamin B12 are applicable to the lowering of total
homocysteine blood levels if elevated by any known cause, including
psoriasis.” Final Rej. 5 (citing Serfontein, 4:43–46). According to the
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Examiner, it would have been obvious to use such compositions to treat a
psoriatic patient “because Serfontein teaches that the pharmaceutical
preparations can be used to lower total homocysteine levels caused by
psoriasis.” Id. With respect to claim 1’s requirement that the composition is
essentially free of anti-oxidants, the Examiner reasons that because
Serfontein teaches this limitation because it discloses that inclusion of
antioxidants is optional and “Examples 4 and 8 and Claim 1 of Serfontein do
not contain an antioxidant.” Id.
With respect to the rejection of claims 1–4 in view of Herbert,
Serfontein, Popp, and Meredith, the Examiner relies on Herbert as teaching
vitamin supplement compositions comprising folic acid, vitamin B12, and
vitamin B6 that are expressly described as “essentially free of antioxidants.”
Id. at 7. The Examiner reasons that one of ordinary skill in the art would
have found it obvious to use Herbert’s compositions for the treatment of
psoriasis because Serfontein teaches that compositions comprising folic acid,
vitamin B12, and vitamin B6 can be used to lower homocysteine levels
caused by psoriasis, whereas Meredith and Popp, respectively, teach the
benefits of vitamin B6 and folic acid supplementation in the prevention or
treatment of psoriasis. See id. at 7–8.
With respect to the rejection of claims 1 and 2 in view of Allen,
Serfontein, Popp, and Meredith, the Examiner states:
Allen et al. teach compositions comprising folic acid, vitamin
B6 and vitamin B12 for preventing and treating elevated serum
homocysteine levels. Serfontein teaches that psoriasis can cause
elevated homocysteine levels, and Meredith and Popp et al.
teach that vitamin B6 and folic acid, respectively, may be
beneficial in the treatment of psoriasis. Therefore, it would have
been prima facie obvious for a person having ordinary skill in
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the art to treat psoriasis with a composition according to Allen
et al. comprising vitamin B6, folic acid and vitamin B12.
Id. at 14–15; see id. at 12–13.
Appellant argues that, “[t]he Examiner has not shown that Meredith,
Serfontein, or Popp et al. disclose the essentially free of antioxidants
limitation, and all of them teach away from it anyway.” App. Br. 8. We do
not find Appellant’s arguments persuasive.
Teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Accordingly, “a teaching that a composition may be
optimal or standard does not criticize, discredit, or otherwise discourage
investigation into other compositions.” Galderma Labs., LP v. Tolmar, Inc.
737 F.3d 731, 738–39 (Fed. Cir. 2013).
With respect to Meredith, Appellant points to the passage at column
16, lines 34–36 of the reference stating: “Folic acid is more effective when
taken with the B group vitamins–especially vitamin B12 and vitamin B6.
Vitamin C is also recommended.” Id. at 9 (emphasis added). While we do
not dispute that vitamin C has antioxidant properties, the Examiner relies on
Meredith’s “general background information on vitamins,” and in particular,
Meredith’s teaching that vitamin B6 may be beneficial in the treatment of
psoriasis. See, e.g., Ans. 5 (“Meredith teaches that sufferers of psoriasis
may consider taking extra folic acid; pyridoxine may be of benefit for
assisting in the prevention of psoriasis; and a deficiency in vitamin B12 may
result in the raising of the level of homocysteine in the blood.”); FF8. At
best, the passage quoted by Appellant merely suggests that, in some
embodiments, vitamin B6 may be administered in conjunction with
vitamin C. This is insufficient to show teaching away from administering
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vitamin B6 in the absence of vitamin C or any other antioxidant because
“mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d at 1201.
The Examiner similarly relies on Popp as teaching that “psoriasis
patients are known to be deficient in folic acid, and supplementation with
folic acid may benefit psoriasis patients.” Ans. 5–6; see Popp ¶ 31.
Although Appellant appears to argue that Popp’s disclosure of a dietary
supplement comprising, inter alia, lycopene carotenoids as an essential
ingredient (App. Br. 8–9), comprises a teaching away, the information relied
on by the Examiner appears as part of a general description of the biological
uses of various vitamins and minerals. See Popp ¶¶ 20–35. In determining
obviousness, “[a] reference must be considered for everything that it teaches,
not simply the described invention or a preferred embodiment.” In re
Applied Materials, 692 F.3d 1289, 1298 (Fed. Cir. 2012). Here, the
reference, particularly as relied on by the Examiner, does not teach away
from the use of folic acid in the absence of lycopene carotenoids or
antioxidants generally.
Appellant further focuses on Serfontein’s statement that “the
invention preferably provides for the co-administration with the aforesaid
substances . . . of an antioxidant, more particularly [] vitamin C . . . .” App.
Br. 9 (quoting Serfontein 6:58–7:1). The case law is clear, however, that
even an expressed preference for certain embodiments does not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442 (CCPA 1971). Here, as the Examiner points out,
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Serfontein discloses that inclusion of antioxidants is optional, whereas
“Examples 4 and 8 and Claim 1 of Serfontein do not contain an antioxidant.”
See Final Rej. 4–5; Ans. 6–7; FF1–3. As such, we agree with the Examiner
that rather than teach away from any claim element, Serfontein expressly
discloses the antioxidant-free compositions set forth in the appealed claims.
Appellant further argues that the Examiner’s rejections fail because
neither Serfontein nor Meredith are analogous art. App. Br. 9–10. We do
not find Appellant’s arguments persuasive.
“Prior art is analogous if it is from the same field of endeavor or if it is
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
2015). Serfontein, discloses “pharmaceutical preparation[s] for lowering
levels of homocysteine or for the prophylaxis or treatment of elevated levels
of homocysteine or of clinical conditions associated therewith in a patient.”
Serfontein, claim 1. Given Serfontein’s explanation that such preparations
are “applicable to the lowering of total homocysteine blood levels if elevated
by any known causes, including . . . psoriasis” (id. at 4:42–48), the reference
is both within the same field of endeavor, and reasonably pertinent to
applicant’s invention.
Appellant argues that Meredith is not analogous art because it is “an
insect repellant reference.” App. Br. 9. We do not entirely agree with
Appellant’s characterization. Meredith is generally directed to oral
compositions “to inhibit insects from biting a subject” and/or “reduce
swelling, itching, redness and/or inflammation of the local area of an insect
bite.” Meredith, Abstract (emphasis added). Accordingly, Meredith teaches
vitamin-containing compositions for the amelioration of skin conditions (i.e.,
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swelling, itching, redness and/or inflammation in the local area of an insect
bite), which, broadly speaking, is in the same field of endeavor as the
treatment of the specific skin conditions set for in the Specification. See
Spec. ¶ 2 (“The present invention relates generally to the treatment of
dermatological conditions, including but not limited to psoriasis, dermatitis,
and dandruff.”). Moreover, given that Meredith’s “general background
information on vitamins” explains that that, “[s]ufferers of psoriasis my
consider taking extra folic acid,” (id. at 16:22–23), and vitamin B6 “may
assist in the prevention of dandruff, eczema, and psoriasis” (id. at 18:36–39),
the reference is at least reasonably pertinent to the treatment of the
dermatological conditions highlighted in Appellant’s Specification. See e.g.,
Spec. ¶¶ 9–10. (disclosing multiple vitamin supplement compositions for
the “[t]herapeutic treatment of dermatological conditions such as psoriasis,
dermatitis, or dandruff”).
In view of the above, we conclude that the Examiner has established a
prima facie case of unpatentability, which Appellant has not rebutted.
SUMMARY
We affirm the rejection of claims 1–4 under 35 U.S.C. § 103(a) as
unpatentable over the cited art as set forth in the table below.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4 103(a) Serfontein 1–4
1–4 103(a) Herbert, Serfontein, Popp, and Meredith 1–4
1, 2 103(a) Allen, Serfontein, Popp, and Meredith 1, 2
TIME PERIOD FOR RESPONSE
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