Ex Parte Bechert et alDownload PDFPatent Trial and Appeal BoardNov 1, 201710570230 (P.T.A.B. Nov. 1, 2017) Copy Citation 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. 10/570,230 08/17/2006 Thorsten Bechert 6460-0115PUS1 7580 2292 7590 11/03/2017 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East FALLS CHURCH, VA 22042-1248 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 11/03/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THORSTEN BECHERT, MICHAEL WAGENER, and PETER STEINRUCKE1 Appeal 2016-005732 Application 10/570,230 Technology Center 1600 Before ERIC B. GRIMES, RYAN H. FLAX, and DEVON ZASTROW NEWMAN Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to a topical body care product comprising porous particles in a carrier material for application to skin and/or mucosa. Claims 32-45, 47— 50, and 71—73 are on appeal as rejected under 35 U.S.C. §§ 102 and 103.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Bio-Gate AG. Br. 1. 2 Claims 51—64 and 66—70 stand withdrawn from consideration. Final Action 1. Appeal 2016-005732 Application 10/570,230 STATEMENT OF THE CASE The Specification states: WO 00/78281 A1 discloses an antimicrobial body care product which exhibits an organic matrix in a part which contacts human or animal skin and/or mucosa. This matrix contains homogeneously dispersed particles of metallic silver. In this case, the particles are between 1 and 50 nm in size. Particles of this size are what are termed nanoparticles. These particles are present in a quantity which, on the surface of the part which contacts the skin and/or mucosa, provides a concentration which is antimicrobially effective but less than cytotoxic. The body care product can, for example, be an ointment or a cream. It is known from Brumfiel, G. Nature (2003), Vol. 424, pages 246 to 248, that nanoparticles can be taken up by animals. For example, nanoparticles can pass from the lung into the bloodstream. It is not yet clear what effects nanoparticles have on human health when they have penetrated into the body. Spec. 1:16—34. The Specification further states, “[t]he object of the present invention is to provide a body care product which possesses antimicrobial activity and which does not exhibit the nanoparticle-associated disadvantages of the body care product disclosed in WO 00/78281 Al.” Id. 2:37-3:4. Claim 32 is the sole independent claim, is representative, and is reproduced below (paragraph returns added for clarity): 32. A topical body care product comprising porous particles in a carrier material for application to skin and/or mucosa, said particles being formed of metal and containing metallic silver, said particles having a mean diameter of between from about 1 micron to about 100 microns and a mean internal porosity of at least 65%, and 2 Appeal 2016-005732 Application 10/570,230 said carrier material being suitable for application to skin and/or mucosa and containing an effective amount of said particles for topical treatment of infection and/or inflammation, wherein the body care product is a preparation selected from the group consisting of a cosmetic, a tooth care product, a toothpaste, or a mouthwash, wherein said cosmetic and said tooth care product are formulated as an emulsion, a lotion, a gel, a cream, or an ointment. Br. 15 (Claims App’x). The following rejections are on appeal: Claims 32-44, 47—50, and 73 stand rejected under 35 U.S.C. § 102(b) as anticipated by Bechert,3 as evidenced by Cosmetic Dental4 and Tateosian.5 Final Action 3. Claims 32-45, 47—50, and 71—73 stand rejected under 35 U.S.C. § 103(a) over Bechert, Hanke,6 and De Cuellar.7 Id. at 3; see also Answer 5. Claims 32-45, 47—50, and 71—73 stand rejected under 35 U.S.C. § 103(a) over Bechert, as evidenced by Cosmetic Dental and Tateosian. Final Action 5. 3 WO 02/17984 A1 (published Mar. 7, 2002), where US 6,984,392 B2 (issued Jan. 10, 2006), which claims priority to the aforementioned publication, is an English translation (“Bechert”). We cite and refer to the English translation herein. 4 Woodbury Dental Care, Cosmetic (White) Fillings, http://www.woodburydentalcare.com/dental-care/restorative- dentistry/cosmetic-whitefillings/; a copy of the reference was made of record Jan. 12, 2015 (“Cosmetic Dental”). 5 US 4,698,373 (issued Oct. 6, 1987) (“Tateosian”). 6 US 6,720,006 B2 (issued Apr. 13, 2004) (“Hanke”). 7 US 4,828,832 (issued May 9, 1989) (“De Cuellar”). 3 Appeal 2016-005732 Application 10/570,230 FINDINGS OF FACT We adopt the Examiner’s findings of fact, reasoning on scope and content of the claims and prior art, and conclusions set out in the Final Office Action and Examiner’s Answer. The findings of fact set forth below are provided to highlight certain evidence. FF1. Bechert discloses: The proposed material is distinguished by an excellent antimicrobial activity. A sufficiently high concentration of silver ions is made available on the surface of the material. Moreover the rate of diffusion of silver ions into the surrounding tissue is particularly low. This means that the antimicrobial activity remains confined to the surface of the material. It is possible with the material of the invention to produce, for example, bone cements, implants or else implantable devices such as catheters, with improved antimicrobial properties. No unwanted cytotoxic effects occur. Bechert 2:18—27; see also Final Action 3—9, and Answer 2—20 (discussing Bechert). FF2. Bechert further discloses: In an advantageous embodiment, the aggregates have an average particle size of from 1 to 20 pm, preferably 10 to 20 pm. The surface area of the aggregates is expediently from 3 to 6 m2/g. They may have a porosity of up to 95%. The porosity is expediently between 70 and 95%. The aforementioned features contribute to a uniform and cytotoxically unobjectionable delivery of silver ions on the surface of the material. Bechert 2:30—38; see also Final Action 3—9, and Answer 2—20 (discussing Bechert). FF3. Bechert discloses “[sjilver is expediently used as [the] metal” for the disclosed particles. Bechert 2:49; see also Final Action 3—9, and Answer 2—20 (discussing Bechert). 4 Appeal 2016-005732 Application 10/570,230 FF4. Bechert discloses “the aggregates [can] be completely infiltrated with the matrix material,” and “[t]he matrix material may be a polymer preferably formed from a plurality of components. The polymer may essentially comprise acrylic esters and/or methacrylic esters.” Bechert 2:52—53, 2:58—60; see also Final Action 3—9, and Answer 2—20 (discussing Bechert). FF5. Bechert discloses several suitable uses for its antimicrobial matrix-silver particle composition, including as “dental fillings.” Bechert 2:63—3:2; see also Final Action 3—9, and Answer 2— 20 (discussing Bechert). FF6. Cosmetic Dental confirms that a type of dental filling is “Cosmetic (White) Fillings,” “made from composite resin, a tooth- colored material,” useful as “an attractive and discreet option for restoring oral health” and “beauty,” which “[a]dd cosmetic appeal to your smile.” Cosmetic Dental 1; see also Final Action 3—5, 7, and Answer 2, 4, 7, 9—11, 16—17, 19-20 (discussing Cosmetic Dental). FF7. Tateosian confirms that dental filling material can be methyl methacrylate, which is a gel, polymerized by ultraviolet radiation for photo-curing. Tateosian 22:5—31; see also Final Action 3, 5, 7, and Answer 2, 4, 7—11, 17—18 (discussing Tateosian). FF8. Hanke discloses: An anti-microbial body care product comprising in the part contacting the human or animal skin and/or mucosa and organic matrix containing homogeneously dispersed particles of a metallic silver having a particle size in the range of 1 to 50 nm (silver nanoparticles) in an amount providing on the surface of said part an[] anti-microbially effective but less than cytotoxic 5 Appeal 2016-005732 Application 10/570,230 silver concentration. Preferred body care products are disposable absorbent articles, toothbrushes, cosmetic products and baby comforting products. Hanke, Abstr.; see also Final Action 5, 9, and Answer 5—7, 12—17 (discussing Hanke). FF9. Hanke discloses “[b]ody care products are products which are brought into contact with human or animal skin and/or mucosa to provide a cleaning, protective, therapeutic, cosmetic benefit or soothing” and can be provided “as emulsions, lotions, creams, ointments, salves, powders, suspensions, gels, soaps, etc.” Hanke 1:17—27; see also Final Action 5, 9, and Answer 5—7, 12—17 (discussing Hanke). FF10. Hanke discloses “[i]t is already known as well to use silver in various forms as an anti-microbial agent.” Hanke 1:41—42; see also Final Action 5, 9 and Answer 5—7, 12—17 (discussing Hanke). FF11. Hanke discloses “silver nanoparticles homogeneously dispersed in [an] organic matrix [that] have a particle size of 2 to 10 nm” and that the “organic polymer of the solid organic matrix preferably comprises a thermoplastic resin, such as . . . (meth) acrylate homopolymer, copolymer or terpolymer.” Hanke 2:61—61, 3:7—10; see also Final Action 5, 9, and Answer 5—7, 12—17 (discussing Hanke). FF12. De Cuellar discloses “a composition for treating skin lesions made up of metallic silver particles dispersed within a carrier which includes applying the composition to the skin lesion.” De 6 Appeal 2016-005732 Application 10/570,230 Cuellar, Abstr.; see also Final Action 5 and Answer 5—6, 12 (discussing De Cuellar). FF13. De Cuellar discloses “[t]he silver ion is an effective antiseptic and germicide . . . used extensively in hospitals in either a cream or spray form to provide topical antimicrobial action.” De Cuellar 1:33—48; see also Final Action 5, and Answer 5—6, 12 (discussing De Cuellar). FF14. De Cuellar discloses: The composition of the present invention is formed from finely divided metallic silver particles and an optional oxidizing agent dispersed within a carrier. The silver particles are preferably from 1 to 10 microns in size and form at least 3%, by weight, of the total composition. This particular silver particle size and range provides sufficient amount of particle surface area in contact with the lesion and yet the particles are not so small as to be impractical and expensive to manufacture and handle. De Cuellar 2:57—66; see also Final Action 5, and Answer 5—6, 12 (discussing De Cuellar). FF15. De Cuellar discloses that using the composition identified in the preceding finding of fact prevented infection by Salmonella, Klebsiella aerobacter, Proteus mirabilis, Staphylococci, and Escherichia coli. De Cuellar 7:20—38; see also Final Action 5, and Answer 5—6, 12 (discussing De Cuellar). DISCUSSION Only those arguments made by Appellants in the Brief have been considered in this Decision. Arguments not presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(l)(iv). 7 Appeal 2016-005732 Application 10/570,230 Anticipation A patent claim is invalid for anticipation under 35 U.S.C. § 102 when a prior art reference describes “each and every claim limitation and enable[s] one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011)). “[Ujnless a prior art reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]f a reference is ambiguous and can be interpreted so that it may or may no[t] constitute an anticipation of an appellant’s claims, an anticipation rejection under 35 U.S.C. § 102 based upon the ambiguous reference is improper.” In re Brink, 419 F.2d 914, 917 (CCPA 1970). We find, in view of the above-identified precedent and findings of fact, the Examiner has not established that claim 32 is anticipated by Bechert, as evidenced by Cosmetic Dental and Tateosian. While Bechert discloses a carrier with silver particles of about 1—100 pm and a porosity of at least 65%, as recited by the claim (see FF1—FF5), the Examiner points to Bechert’s disclosure of this composition in the form of a dental filling as supplying the recited “cosmetic, a tooth care product, a toothpaste, or a mouthwash” claim element. Cosmetic Dental supports that a dental filling can be a cosmetic composition (FF6) and Tateosian supports that a dental 8 Appeal 2016-005732 Application 10/570,230 filling can be a polymerized gel (FF7); however, there is no evidence that a dental filling, as disclosed by Bechert, is a cosmetic composition in the form of a gel because dental fillings are not always or necessarily cosmetic in form or function, or made by polymerizing a gel. Therefore, Bechert is at least ambiguous as to whether it discloses these claim elements. For this reason, we reverse the anticipation rejection of claim 32 and its dependent claims. Obviousness Over Bechert, Hanke, and De Cuellar “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). We find the Examiner has established a prima facie case that claim 32 would have been obvious over the cited prior art combination. For example, Bechert teaches an antimicrobial composition for use on or in the body, including a carrier (Bechert discloses methacrylic esters) with silver particles of about 1—100 pm (Bechert discloses 1—20 pm) having a porosity of at least 65% (Bechert discloses up to 95%), as recited by the claim. FF1—FF5. The foundation of Bechert’s disclosure is the antimicrobial properties of silver. FF1. Hanke is also focused on the antimicrobial properties of silver particles and discloses using the same in body care products, e.g., cosmetics or toothbrushes, for contacting the human skin or mucosa, which can be in the form of creams or gels. FF8—FF10. Similar to Bechert, Hanke teaches that silver particles can be dispersed in a matrix of methacrylate. FF11. De 9 Appeal 2016-005732 Application 10/570,230 Cuellar, like Bechert and Hanke, is focused on the antimicrobial, i.e., antiseptic and germicidal, properties of silver particles and discloses using the same in creams or sprays as a skin treatment. FF12, FF13, FF15. Similar to Bechert, De Cuellar discloses that silver particles should be 1— 10 pm in size so that they are effective for antimicrobial action on the skin and not so small to be impractical. FF14. Appellants have not presented persuasive argument or evidence that the Examiner’s determination of obviousness over the prior art combination is incorrect. We address Appellants’ arguments below. Appellants argue Bechert, Hanke, and De Cuellar are not properly combinable because they are non-analogous art. This is not persuasive. Appellants themselves identify that prior art references directed to the same field of endeavor or that are reasonably pertinent to a particular problem are combinable for the purposes of an obviousness analysis. See Br. 10 (citing Innovention Toys LLC v. MGA Entertainment Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)); see also Unwired Planet, LLCv. Google Inc., 841 F.3d 995, 1000-01 (Fed. Cir. 2016) (quoting In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992)). Here, each prior art reference focuses on the antimicrobial characteristics of and function achieved using silver particles in a composition; therefore, it makes logical sense for the skilled artisan to have consulted among and between these references when addressing the same issue. Thus, we conclude the references are properly combined. Appellants argue “the claimed invention achieves unexpectedly superior results due to the claimed particle size” and cite the Specification at 10 Appeal 2016-005732 Application 10/570,230 paragraph 158 as support for this contention. See, e.g., Br. 10. This paragraph of the Specification does not indicate that any result achieved with the invention was unexpected, in general, or as compared to the closest prior art. “To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014). “[I]t is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). Appellants’ argument is not supported by data, or any other evidence, showing unexpected results that would persuasively rebut the Examiner’s strong prima facie case for obviousness. Appellants separately argue the patentability of claim 71, which recites that “the body care product is a cream” and contend the prior art combination fails to disclose this. Br. 12—13. Hanke teaches and suggests that silver-particle-comprising body care products can be creams. FF9. De Cuellar teaches and suggests that silver-particle-comprising topical skin-care products can be creams. FF13. Therefore, we conclude the argued claim limitation was well known. Appellants’ argument is not persuasive. Appellants separately ague the patentability of claim 72, which recites “the particles are sized and constructed to not penetrate through deeper skin *See Spec. 5:9—6:9. 11 Appeal 2016-005732 Application 10/570,230 layers whereby the particles[’] effects are primarily restricted to the skin surface and the internal porosity of the particles enables sufficient antimicrobial effects as a topical medicament.” Br. 13—14. Appellants contend sizing the particles to be 1—100 pm provides this claimed function. Id. (citing Spec. 115). Both Bechert and De Cuellar disclose silver particles within this claimed range (FF2, FF14); thus, we conclude such particles would provide this claimed functionality. Appellants’ argument is not persuasive. Appellants also separately argue the patentability of claim 73, which recites “the body care product is a cosmetic.” Br. 15—16. Appellants contend the prior art combination, specifically the dental filling of Bechert, does not teach or suggest this limitation. Id. As evidenced by Cosmetic Dental, a dental filling as taught by Bechert can be a cosmetic. FF6. Even were this not so, Hanke teaches cosmetic products that incorporate silver particles. FF8. Therefore, Appellants’argument is not persuasive. For the reasons above, we affirm the obviousness rejection over Bechert, Hanke, and De Cuellar. Obviousness Over Bechert, Cosmetic Dental, and Tateosian We find the Examiner has established a prima facie case that claim 32 would have been obvious over Bechert, as supported by Cosmetic Dental and Tateosian. For example, Bechert teaches an antimicrobial composition for use on or in the body, including a carrier (Bechert discloses methacrylic esters) with silver particles of about 1—100 pm (Bechert discloses 1—20 pm) having a porosity of at least 65% (Bechert discloses up to 95%), as recited by the claim. FF1—FF5. Bechert discloses that its silver-particle-containing 12 Appeal 2016-005732 Application 10/570,230 composition can be a dental filling. FF5. Cosmetic Dental confirms that dental fillings can be cosmetic (or cosmetics). FF6. Tateosian confirms that Becherf s methacrylic-ester-dental-filling would be a gel composition. FF7. Appellants have not presented persuasive argument or evidence that the Examiner’s determination of obviousness over Bechert, Cosmetic Dental, and Tateosian is incorrect. We address Appellants’ arguments below. Appellants argue Bechert fails to disclose the toothpaste or mouthwash of the recited group of claim 32. Br. 16. Even were this correct, it is immaterial because Bechert discloses a dental filling, which is reasonably understood, in view of Cosmetic Dental, to be a cosmetic. Appellants also argue Bechert does not disclose its dental filling is, e.g., a gel. Id. at 17. This is incorrect in view of the Tateosian disclosure, which discloses a dental filling of the same or similar material as in Bechert is a gel. Appellants’ arguments are not persuasive. Appellants separately argue the patentability of claim 72, which recites “the particles are sized and constructed to not penetrate through deeper skin layers whereby the particles effects are primarily restricted to the skin surface and the internal porosity of the particles enables sufficient antimicrobial effects as a topical medicament.” Br. 17—18. Appellants contend sizing the particles to be 1—100 pm provides this claimed function. Id. (citing Spec. 115). Bechert discloses silver particles within this claimed range; thus, we conclude its particles would provide this claimed functionality. 13 Appeal 2016-005732 Application 10/570,230 Appellants also separately argue the patentability of claim 73, which recites “the body care product is a cosmetic.” Br. 19-20. Appellants contend the dental filling of Bechert does not teach or suggest this limitation. Id. As evidence by Cosmetic Dental, a dental filling, as taught by Bechert (and Tateosian) can be a cosmetic. FF6, FF7. Appellants’ argument is not persuasive. For the reasons above, we affirm the obviousness rejection over Bechert, Cosmetic Dental, and Tateosian. SUMMARY The rejection under 35 U.S.C. § 102(b) over Bechert is reversed. The rejection under 35 U.S.C. § 103(a) over Bechert, Hanke, and De Cuellar is affirmed. The rejection under 35 U.S.C. § 103(a) over Bechert, Cosmetic Dental, and Tateosian is affirmed. 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 14 Copy with citationCopy as parenthetical citation