Ex Parte Cooper et al

Patent Trials and Appeals Board

May 22, 2019

14026342 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/026,342 09/13/2013
38473 7590 05/24/2019
ELMORE PATENT LAW GROUP, PC
484 Groton Road
Westford, MA 01886
FIRST NAMED INVENTOR
Eugene R. Cooper
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4180.3000 USl 9025
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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@elmorepatents.com
pair_elmore@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE R. COOPER,
EV AN R. THOMPSON, and ELLIOT R. THOMPSON
(APPLICANT: Thompson Cooper Laboratories, LLC)
Appeal2019-000003
Application 14/026,342 1
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal2 under 35 U.S.C. § 134(a) involves claims 1, 4--8, 10-14,
and 23 (Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify "Thompson Cooper Laboratories, LLC" as the real
party in interest (Appellants' April 1 7, 2018 Appeal Brief (Br.) 1 ).
2 This Appeal is related to co-pending Appeal 2019-000006, Application
14/052,088 (see generally Br. 1)
Appeal2019-000003
Application 14/026,342
STATEMENT OF THE CASE
Appellants' disclosure "relates to the field of topical treatments for
infections such as nail infections, particularly fungal infections of the nail
commonly referred to as onychomycosis. Particularly, the invention relates
to novel compositions containing peroxide for the treatment of such nail
infections and other infections" (Spec. 3 1: 11-14). Claims 1, 12, 13, and 23
are representative and reproduced below:
1. An anti-infective composition consisting essentially of at
least 3% peroxide by weight, wherein the peroxide is hydrogen
peroxide or a complex or adduct thereof, 50% to 95% highly
volatile solvent by weight, water and about 0.25% to 2.5%
thickening agent, wherein the thickening agent is a polymer
which is soluble in the mixture of highly volatile solvent and
water.
(Br. 12.)
12. The composition of claim 1, wherein the peroxide is
present in an amount from about 3% to 20% by weight.
(Id. at 13.)
(Id.)
13. The composition of claim 12, wherein the peroxide is
present in an amount from about 6% to 15% by weight.
23. The composition of claim 1, consisting of by weight 3 %
hydrogen peroxide, 3% water, 93.5% isopropanol and 0.5%
hydroxypropylcellulose.
(Id. at 14.)
3 Appellants' September 13, 2013 Specification.
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Application 14/026,342
Grounds of rejection before this Panel for review:
I. Claims 1, 4, 6-8, 10-14, and 23 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofWright, 4 Tichy, 5 and
Omidbakhsh. 6
II. Claims 1, 4, and 6-8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Wright and Tichy.
Rejection II is cumulative to Rejection I. Therefore, we vacate and
will not further discuss cumulative Rejection II.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Wright "provides an anti-septic composition/sanitizing
solution/cosmeceutical" that "includes a drying compound and a sanitizer"
that "can be in a spray or gel soak form" (Wright ,r 5; Ans. 7 4).
FF 2. Wright's "artificial nail sanitizing solution has the preferred
composition of 2-propanol or isopropyl alcohol and 3% hydrogen peroxide.
However, while peroxide is the preferred antiseptic/sanitizer others can be
utilized. Such agents must be able to possess fungistatic or bacteriostatic
properties when added to the composition" (Wright 1, col. 2, 11. 11-16; Ans.
4).
4 Wright, US 2001/0053349 Al, published Dec. 20, 2001.
5 Tichy et al., US 2007/0059255 Al, published Mar. 15, 2007.
6 Omidbakhsh, US 2005/0255172 Al, published Nov. 17, 2005.
7 Examiner's July 31, 2018 Answer.
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Application 14/026,342
FF 3. Wright provides the following reaction schemes:
Formula (A):
Formula (B):
(USP) CH3-CH2-0H + (3%) H202------, CH3-COOH + H20 + 2H
(Wright ,r 5.)
FF 4. Wright's
composition can include non-pharmaceutical additives,
fragrance, aloe vera preparations, etc. The only requirement is
that it must be compatible with both the antiseptic/sanitizer and
drying agent and any products formed by the
antiseptic/sanitizer and drying agent composition without
affecting the properties of the composition. Such compositions
are known by those of skill in the art.
(Wright 1, col. 2, 11. 31-37; Ans. 4.)
FF 5. Tichy discloses:
[M] ethods for treating viral infections, bacterial infections,
fungal infections, and cancerous tissue. The methods include
the administration of an aqueous composition that can comprise
an aqueous vehicle, including water, from 0.0001 wt% to 10.0
wt % of a peroxygen[8J, and optionally, an alcohol.
(Tichy, Abstract; Ans. 4.)
FF 6. Tichy disclose that "alcohol, when present, ... can be present at
from 0.0001 wt% to 95 wt%" (Tichy ,r 20; Ans. 4).
FF 7. Tichy discloses that when its composition is formulated "as a gel or
ointment, the composition can include other excipients and fillers such [as]
8 Tichy discloses that "[t]he term 'peroxygen' refers to[, inter alia,] ...
peroxides such as hydrogen peroxide" (Tichy ,r 9).
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Application 14/026,342
gelling or thickening agents," such as an acrylate copolymer or cellulose
derivative (Tichy ,r 31; Ans. 4).
FF 8. Examiner finds that the combination of Wright and Tichy fails to
suggest hydropropylcellulose as a thickening agent and relies on
Omidbakhsh to make up for this deficiency in the combination of Wright
and Tichy (Ans. 5-6).
FF 9. Omidbakhsh "relates to disinfecting solutions or formulations for use
on skin containing hydrogen peroxide" (Omidbakhsh ,r 2; Ans. 5).
FF 10. Omidbakhsh discloses that in order
[t]o improve the rheological properties and attractiveness of the
solution, the solution can further comprise at least one
thickening agent compatible with hydrogen peroxide ( e.g.
polyacrylic acid polymers, polysaccharides, and cellulose-based
polymers in a concentration of from about 0.01 to about 5%
w/w of the solution, and at least one member chosen from dyes
and fragrances ( as are known in the art) in a concentration of
from about 0.001 to about 0.5% w/w of the solution.
(Omidbakhsh ,r 26; see id. ,r,r 76, 79 (Omidbakhsh discloses
hydroxypropylcellulose as a thickening agent within the scope of its
disclosure); Ans. 5.)
ANALYSIS
Rejection I:
Claim 1:
A composition within the scope of Appellants' claim 1 consists
essentially of at least 3% hydrogen peroxide by weight, 50-95% highly
volatile solvent, such as an alcohol, by weight, water, and about 0.25-2.5%
of a polymer thickening agent that is soluble in the mixture of alcohol and
water (see Br. 12).
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Application 14/026,342
Tichy discloses a composition comprising 0.0001 wt% to 10.0 wt%
hydrogen peroxide, 0.0001 wt% to 95 wt% alcohol, water, and a thickening
agent, such as an acrylate copolymer or cellulose derivative (FF 5-7).
Further, Omidbakhsh discloses that, for a disinfecting composition that
comprises hydrogen peroxide for use on the skin, the rheological properties
and attractiveness of the composition can be improved by the use of a
thickening agent, such as hydroxypropylcellulose, in a concentration of from
about 0.01 to about 5% w/w of the solution (FF 9-10). Thus, at the time of
Appellants' claimed invention, it would have been prima facie obvious to
those of ordinary skill in this art to have used Omidbakhsh's
hydroxypropylcellulose as the cellulose derived thickening agent in Tichy' s
composition.
As found by Examiner, the composition suggested by the combination
of Tichy and Omidbakhsh contains the same ingredients required by
Appellants' claim 1 in concentration ranges that encompass or overlap those
set forth in Appellants' claim 1 (see FF 5-7 and 9-10; cf Br. 12). See Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)
("[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.");
see also In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997) (Overlapping
ranges support a prima facie case of obviousness.).
Thus, we find no error in Examiner's conclusion of obviousness (see
Ans. 6). 9 In this regard, we find no error in Examiner's rationale that
9 Because the combination of Tichy and Omidbakhsh makes obvious
Appellants' claimed invention, we find it unnecessary to address Wright.
The Board may rely upon less than all the references cited by the Examiner.
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Application 14/026,342
because the combination of Tichy and Omidbakhsh set forth ranges that
encompass or overlap the concentration ranges set forth in Appellants'
claimed invention, a person of ordinary skill in this art would have
determined the optimum or workable concentrations for the ingredients
through routine experimentation. See In re Aller, 220 F .2d 454, 456 (CCP A
1955) ("[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation").
For the foregoing reasons, we are not persuaded by Appellants'
contention that Tichy "does not describe any compositions within the scope
of [Appellants'] ... claims (Br. 5, 9). We are also not persuaded by
Appellants' contentions relating to Tichy' s preferred embodiments or
exemplified embodiments (id.). A reference disclosure is not limited only to
its preferred embodiments, but is available for all that it discloses and
suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747,
750 (CCPA 1976); see also In re Susi, 440 F.2d 442,446 n.3 (CCPA 1971)
(Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments.). Therefore,
we are not persuaded by Appellants' discussion of Tichy's "working
examples" (Br. 5---6, 9).
As discussed above, the ingredients of the composition suggested by
the prior art are present in the composition in amounts that encompass or
overlap the concentrations required by Appellants' claim 1 and, thus,
support a prima facie case of obviousness. See Iron Grip Barbell Co. v. USA
See In re May, 574 F.2d 1082, 1090 (CCPA 1978); In re Kronig, 539 F.2d
1300, 1304 (CCPA 1976).
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Application 14/026,342
Sports, Inc., 392 F.3d at 1322; see also In re Geisler, 116 F.3d at 1468.
Therefore, we are not persuaded by Appellants' contentions regarding result-
effective variables (Br. 6, 9). For the reasons provided above, the facts on
this record differ from those in Stephan, wherein our reviewing Court found
"[m]issing from the Board's analysis ... an explanation as to why it would
have been routine optimization to arrive at the claimed invention." See In re
Stephan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017); cf Br. 8, 9.
Claims 13 and 14:
As Appellants explain, "claim 13 depends from claim 12 and limits
the hydrogen peroxide concentration to 6 to 15% by weight. Claim 14
depends from claim 13 and further limits the hydrogen peroxide
concentration to 9 to 12% by weight" (Br. 10). As Appellants' recognize,
these hydrogen peroxide ranges overlap the hydrogen peroxide range set
forth by Tichy (FF 5). For the reasons set forth above, we are not persuaded
by Appellants' contention that "the meaning of the peroxygen concentration
range [ set forth in Tichy] is unclear" (Br. 10). In addition, Tichy expressly
includes hydrogen peroxide in its definition of a peroxygen (supra n. 8).
Therefore, we are not persuaded by Appellants' contention that "[t]here is
nothing in Tichy ... that would motivate one of skill in the art to select
hydrogen peroxide from the broad description of peroxygen compounds and
a concentration as recited in claims 13 and 14 from the concentration range
taught by this reference" (Br. 10). Appellants' non-persuasive contention
regarding the overlapping concentration was discussed above. With respect
to Appellants' contention regarding the selection of hydrogen peroxide as
Tichy's peroxygen compound, we find that "[r]eading a list and selecting a
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Application 14/026,342
known compound to meet known requirements is no more ingenious than
selecting the last piece to put into the last opening in a jig-saw puzzle. It is
not invention." Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S.
327, 335 (1945). To be complete, we are not persuaded by Appellants'
contention regarding Tichy's preferred or exemplified embodiments. See
Br. 10; cf In re Lamberti, 545 F.2d at 750; see also In re Susi, 440 F.2d at
446 n.3
Claim 23:
Appellants' claim 23 depends from and further limits the composition
of Appellants' claim 1 to consist ofby weight 3% hydrogen peroxide, 3%
water, 93.5% isopropanol, and 0.5% hydroxypropylcellulose (see Br. 14).
For the reasons set forth above, Tichy and Omidbakhsh make obvious a
composition within the scope of Appellants' claim 23.
Therefore, for the foregoing reasons, we are not persuaded by
Appellants' contentions that Appellants' claim 23 is "not obvious over the
cited references for the reasons presented for claim 1," "[t]here is nothing in
any of the cited references that would have led one of skill in the art to the
composition of this claim," or that the facts on this record fail to support a
conclusion that a person of ordinary skill in this art would have found it
prima facie obvious to determine, through routine optimization, workable
concentrations for each ingredient of the prior art composition from the
ranges disclosed by the prior art (Br. 10-11).
CONCLUSION
Rejection I: The preponderance of evidence relied upon by Examiner
supports a conclusion of obviousness. The rejection of claims 1, 13, 14, and
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23 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Wright, Tichy, and Omidbakhsh is affirmed. Claims 4, 6-8, 10, and 12 are
not separately argued and fall with claim 1.
Rejection II stands vacated as cumulative to Rejection I.
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
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