Ex parte Antoun

Board of Patent Appeals and Interferences

Jan 14, 2000

08262953 (B.P.A.I. Jan. 14, 2000)

Application for patent filed June 21, 1994. According1
to appellant, the application is a continuation-in-part of
Application 07/863,795, April 6, 1992; which is a
continuation-in-part of Application 07/609,392, filed November
5, 1990, now U.S. Patent No. 5,102,916 issued April 7, 1992;
which is a continuation-in-part of Application 07/547,460,
filed July 3, 1990, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACQUES ANTOUN
__________
Appeal No. 1997-2198
Application 08/262,9531
___________
ON BRIEF
___________
Before KIMLIN, GARRIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
Appeal No. 1997-2198
Application 08/262,953
2
claims 1-12 and 20-25, and refusal to allow claims 13-18 as
amended after final rejection. These are all of the claims
remaining in the application.
THE INVENTION
Appellant claims a composition and method for treating
alopecia areata or male pattern baldness. Claims 1, 8 and 13
are illustrative and read as follows:
1. A pharmaceutical composition comprising 0.143%-3.93%
by weight starch, 1.00%-23.8% by weight of a compound
comprising boron, .625%-15.8% by weight of a compound
comprising zinc, and 69.4%-97.8% water.
8. A pharmaceutical composition, consisting essentially
of:
starch, a compound comprising boron, compound comprising
zinc, and water.
13. A method of treating alopecia areata or male pattern
baldness in a person in need of such treatment comprising:
topically administering to the person in need of
treatment a therapeutically effective amount of a
pharmaceutical composition comprising a compound comprising
zinc, a compound comprising boron, and a suitable carrier for
topical application of the pharmaceutical composition, the
suitable carrier being a mixture of starch and water.
THE REFERENCES
Brodbeck et al. (Brodbeck) 992,937 May 23, 1911
Appeal No. 1997-2198
Application 08/262,953
3
Ercoli et al. (Ercoli) 2,652,355 Sep. 15, 1953
Gibson 5,015,470 May 14, 1991
THE REJECTIONS
Claims 13-18, 20 and 24 stand rejected under 35 U.S.C.
§ 112, first paragraph, on the ground that the specification
fails to provide an enabling disclosure. The claims stand
rejected under 35 U.S.C. § 103 as follows: claims 1-12 over
each of Brodbeck, Ercoli and Gibson, and claims 13-18 and 20-
25 over Gibson.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Rejection under 35 U.S.C. § 112, first paragraph
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223-
24, 169 USPQ 367, 369-70 (CCPA 1971):
Appeal No. 1997-2198
Application 08/262,953
4
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the invention in terms which correspond in
scope to those used in describing and defining the
subject matter sought to be patented must be taken
as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . .
. . . it is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or
reasoning which is
inconsistent with the contested statement. Otherwise,
there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively
accurate disclosure.
The examiner argues that “a method for treating alopecia
areata or male pattern baldness”, recited in the preambles of
claims 13 and 24, encompasses alopecia areata in general,
alopecia totalis, alopecia universalis and male pattern
baldness, and that appellant’s specification does not enable
treating all of these conditions (answer, pages 8 and 10).
The examiner, however, does not explain why there is reason to
Appeal No. 1997-2198
Application 08/262,953
5
doubt the truth of the statements in the specification that
the invention is effective for treating alopecia areata or
male pattern baldness, and provide the required supporting
evidence or reasoning. Consequently, we reverse the rejection
under 35 U.S.C. § 112, first paragraph.
Rejections under 35 U.S.C. § 103
The examiner argues that Brodbeck discloses at page 2,
column 1, fourth full paragraph that the composition can
contain water (answer, page 4). Page 2, column 1 of Brodbeck,
however, does not have a fourth paragraph. Because all of
appellant’s claims require water and the examiner has not
properly explained where Brodbeck discloses or would have
fairly suggested, to one of ordinary skill in the art,
including water in the disclosed nursery powder composition,
the examiner has not carried his burden of establishing a
prima facie case of obviousness over this reference of the
Appeal No. 1997-2198
Application 08/262,953
Appellant states that in this rejection the examiner may2
be referring to Keil, U.S. Patent No. 2,289,125 (brief, page
4). Because this reference is not included in the statement
of the rejection it is not properly before us and, therefore,
is not relied upon in reaching our decision. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
6
invention recited in any of appellant’s claims. 2
The examiner argues that Ercoli discloses a composition
containing boric acid, zinc oxide and starch (answer, page 4).
The examiner, however, does not explain where Ercoli discloses
or would have fairly suggested, to one of ordinary skill in
the art,
use of water in combination with these components. Thus, the
examiner has not established a prima facie case of obviousness
over this reference.
The examiner argues that one of ordinary skill in the art
would have arrived at the ratios of components recited in
appellant’s claims, in view of Brodbeck or Ercoli, through no
more than routine experimentation (answer, page 4). The
examiner does not explain, however, and it is not apparent,
Appeal No. 1997-2198
Application 08/262,953
7
why optimizing Brodbeck’s nursery powder composition or
Ercoli’s fungicidal agent would produce the relative component
proportions recited in appellant’s claims, which appellant has
found to be proper for a composition directed toward a
different use, i.e., treating alopecia areata or male pattern
baldness.
The examiner argues that Gibson discloses in examples 19-
24 a composition containing starch, boric acid and zinc oxide
(answer, page 4). The compositions in these examples,
however, are powders and do not contain water. Other
compositions disclosed by Gibson contain water. The examiner,
however, has not explained why Gibson would have fairly
suggested, to one of ordinary skill in the art, use of starch,
boric acid and zinc oxide in combination with water.
The examiner argues, regarding claim 8, that appellant
should have considered the references in combination (answer,
page 9). The examiner, however, has provided no argument
regarding how the combined teachings of the references would
have fairly suggested, to one of ordinary skill in the art,
Appeal No. 1997-2198
Application 08/262,953
The examiner states (answer, page 10) that he has not3
considered the declaration of Jacques Antoun filed on August
28, 1995 after the final rejection. Because this declaration
has not been considered by the examiner, we have not relied
upon it in reaching our decision.
8
the invention recited in any of appellant’s claims.
For the above reasons, we conclude that the examiner has
not carried his burden of establishing a prima facie case of
obviousness of the invention recited in any of appellant’s
claims.3
DECISION
The rejections of claims 13-18, 20 and 24 under 35 U.S.C.
§ 112, first paragraph, enablement requirement, and the
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Application 08/262,953
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rejections under 35 U.S.C. § 103 of claims 1-12 over each of
Brodbeck, Ercoli and Gibson, and claims 13-18 and 20-25 over
Gibson, are reversed.
REVERSED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/PGG
Seth M. Nehrass
Garvey, Smith, Nehrbass & Dooby
Appeal No. 1997-2198
Application 08/262,953
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