Ex Parte BernsteinDownload PDFPatent Trial and Appeal BoardOct 20, 201412761953 (P.T.A.B. Oct. 20, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOEL E. BERNSTEIN __________ Appeal 2014-000362 Application 12/761,953 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requested rehearing of the decision entered August 8, 2014 (“Decision”). That Decision affirmed the Examiner’s rejection of claims 1, 3–6, and 9–11 as obvious. Appellant’s request has been denied with respect to making any modifications to the Decision affirming the Examiner’s rejection under 35 U.S.C. § 103(a). Appeal 2014-000362 Application 12/761,953 2 DISCUSSION Appellant reargues two points fully addressed in the Decision, specifically oral administration of the medicaments and reasons to use azelaic acid for treatment. We have reviewed our Decision in light of these arguments. However, we are not persuaded that our Decision misapprehended or overlooked these points. Appellant contends that our “findings do not support the examiner’s use of Hebert1 to ‘support oral administration of azelaic acid.’” (Req. Reh’g 4.) We remain unpersuaded by this argument. As we and the Examiner previously pointed out, Hebert not only teaches administration of azelaic acid by routes other than topical (Dec. 5; FF 10), but Hebert actually claims oral dosage forms for the administration of azelaic acid (Dec. 6; FF 12), which would reasonably suggest oral administration to the ordinary artisan (see Dec. 9–10; Ans. 6). Appellant contends that the “combination of nicotinamide and azelaic acid was not ‘established’ to treat acne” (Req. Reh’g 5). We remain unpersuaded by this argument. As we noted in the Decision, Bernstein ’9482 teaches that formulations containing nicotinamide and small amounts of nicotinic acid “could be combined with other known chemical agents known to be effective in treating acne and such resulting formulations would be more effective at treating acne than would be 1 Hebert, US 2001/0034321 A1, published Oct. 25, 2001. 2 Bernstein, US 2005/0169948 A1, published Aug. 4, 2005. Appeal 2014-000362 Application 12/761,953 3 expected by treatment with the individual agents themselves. Such formulations include . . . azelaic acid” (Bernstein ’948 1 ¶ 0005; Dec. 5; FF 6). This is a direct suggestion in the prior art to treat acne using nicotinamide and azelaic acid. SUMMARY We have carefully reviewed the original Decision in light of Appellant’s request, but we find no other point of law or fact which we overlooked or misapprehended in arriving at our decision. Therefore, Appellant’s request is denied with respect to making any modifications to the decision affirming the Examiner’s rejection. DENIED cdc Copy with citationCopy as parenthetical citation