Ex Parte Albert et al

Patent Trial and Appeal Board

Nov 30, 2016

13195194 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/195,194 08/01/2011 Rory J. Albert 6671-A-2 1495
77553 7590 11/30/2016
MARVTN A flT A7FR
EXAMINER
2141 E. HIGHLAND AVE JEAN-LOUIS, SAMIRA JM
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1627
MAIL DATE DELIVERY MODE
11/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RORY J. ALBERT and MICHAEL R. BLAIRE1
Appeal 2015-005276
Application 13/195,194
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition for topical treatment of ear infections in animals. The
Examiner entered final rejections for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“The present invention relates to a liquid composition which is
effective in the topical treatment of animal ear infections, its method of
1 Appellants identify the Real Party in Interest as the joint inventors named
above. Br. 3.
Appeal 2015-005276
Application 13/195,194
formulation, and its manner of use to treat ear infections in animals. The
composition includes an antifungal agent, an antibiotic agent, a steroidal
anti-inflammatory agent, and an acid. In the preferred embodiment, the
composition further includes dehydrated alcohol and propylene glycol to
dissolve and combine the previously-mentioned components.” Spec. 2:18—
24.
Claims 1—13 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A composition for topical treatment of ear infections in
animals comprising:
a. an antifungal agent;
b. an antibiotic agent;
c. a steroidal anti-inflammatory agent; and
d. an anhydrous organic acid;
e. liquid dehydrated alcohol; and
f. propylene glycol.
Br. Claims App’x. 19.
The claims stand rejected as follows:
Claims 1—12 are rejected under 35 U.S.C. § 103(a) as obvious over
Jones,2 Rosenberg,3 Lipsky,4 and Erowid.5 Ans. 4.
2 U.S. 6,126,920, issued Oct. 3, 2000 (“Jones”)
3 U.S. 4,569,935, issued Feb. 11, 1986 (“Rosenberg”)
4 BA Lipsky, et al., Ofloxacin versus cephalexin for treating skin and soft
tissue infections, 31(6) Int. J. Dermatol., 443-445(1992) (“Lipsky”)
5 Erowid Alcohol Vault: Alcohol Chemistry (entry regarding “ethyl
alcohol”) published online Nov. 1999, printed by Examiner October 24,
2012, pp. 1-2 (“Erowid”)
2
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Application 13/195,194
Claim 13 is rejected under 35 U.S.C. § 103(a) as obvious over Jones,
Rosenberg, Lipsky, Erowid, and Gleich.6 Ans. 9.
I
The Examiner has rejected claims 1—12 on appeal as obvious based on
Jones, Rosenberg, Lipsky, and Erowid. The Examiner finds that Jones
teaches “a foamable pharmaceutical composition comprising a corticosteroid
active substance, a quick break foaming agent, a propellant and a buffering
agent for the treatment of various skin diseases.” Ans. 5. The Examiner
additionally finds that Jones teaches “addition of alcohol to the quick break
agent and other additives including humectants such as propylene glycol in
order to reduce the drying effects of the alcohol,” “triamcinolone acetonide
as the corticosteroid,” and “anhydrous citric acid/potassium citrate” as the
preferred buffering agent. Id. at 6.
The Examiner finds that Jones does not “teach addition of an
antifungal agent, an antibiotic agent, or that the alcohol is dehydrated
alcohol.” Id. The Examiner relies on Rosenberg for its disclosure that
imidazole can be used to “treat skin diseases including psoriasis and
seborrheic dermatitis ... is preferably ketoconazole . . . and “is useful in
controlling or inhibiting growth of. . . fungi.” Id. at 6—7. The Examiner
relies on Lipsky’s teaching that “ofloxacin is a good alternate antibiotic for
treating skin and skin structure infections caused by a variety of pathogens.”
Id. at 7. The Examiner relies on Erowid to demonstrate that “dehydrated
alcohol is known as ethanol or ethyl alcohol in the art” and “dehydrated
6U.S. 5,837,713, issued Nov. 17, 1998 (“Gleich”)
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Application 13/195,194
alcohol is useful in the art as a solvent or a pharmaceutical aid and useful as
an antiseptic.” Id. at 7.
The Examiner concludes that,
[g]iven the teachings of Jones, Rosenberg, Lipsky, and Erowid,
one of ordinary skill would have been motivated to add
ketoconazole, ofloxacin and dehydrated alcohol to the modified
composition of Jones with the reasonable expectation of
providing a topical composition that is effective in treating
various skin diseases and a composition with enhanced
antiseptic properties.
Id. at 8.
Appellants argue, among other points, that
Lipsky teaches the oral administration of ofloxacin (“300 mg
orally, [twice daily]”) to treat acute localized skin or soft tissue
infections. In contrast, Jones is directed to a foamable
composition that applies an anti-inflammatory for treating skin
diseases like psoriasis and eczema, wherein the quick-break
foam breaks down at skin temperature to a liquid to saturate the
treatment site []. Jones and Lipsky are directed to two different
types of skin maladies, and are practiced using two different
administration modalities (oral v. topical). Rather than finding
it “obvious” to combine such teachings, those skilled in the art
would be discouraged from even attempting to combine such
techniques, since they are directed to two different maladies,
and since Lipsky teaches oral administration, while Jones
teaches topical administration.
Br. 12.
In response, the Examiner finds
[w]hile Lipsky teaches oral administration of ofloxacin, ... it is
well known in the art that ofloxacin can be applied orally,
topically, intravenously, ocularly or as ear drops. Moreover,
. . . Lipsky was provided to demonstrate that ofloxacin is
known to be effective for treating skin and skin structure
infections and thus one skilled in the art would have found it
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Application 13/195,194
obvious to further add ofloxacin in the modified composition of
Jones if the desire is to enhance [] the anti-skin disease effect
and in light of Kerkhoven7 who teaches that it is prima facie
obvious to combine compositions known individually for the
same purpose into a third composition for the very same
purpose.
Ans. 12.
We are persuaded by Appellants that a preponderance of the evidence
does not support the Examiner’s finding that Lipsky’s teachings render the
topical use of oflaxacin for skin maladies obvious. The Examiner does not
supply any teaching in Lipsky or any of the other references to support the
finding that “it is well known in the art that ofloxacin can be applied orally,
topically, intravenously, ocularly or as ear drops.” Id. Without such a
teaching, we agree that the Examiner has not shown that a person of
ordinary skill in the art would be motivated to use the oflaxacin of Lipsky,
which is taught for oral use only, in a modified composition of Jones
intended for topical application. Because the Examiner has not provided
evidence sufficient to support a prima facie case of obviousness, we reverse the
rejection of claims 1—12 as obvious based on Jones, Rosenberg, Lipsky, and
Erowid. See In reRijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (“In rejecting
claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. Only if that burden is met, does
the burden of coming forward with evidence or argument shift to the
applicant.”).
7 The Examiner cites In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
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Application 13/195,194
II
The Examiner has rejected claim 13 as obvious over Jones, Rosenberg,
Lipsky, Erowid, and Gleich. As discussed above, however, the Examiner has
not shown that Jones, Rosenberg, Lipsky, and Erowid teach all of the
limitations of claim 1, from which claim 13 depends. We therefore reverse the
rejection under 35 U.S.C. § 103(a).
SUMMARY
The Examiner’s rejection of claims 1—13 is reversed.
REVERSED
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