Ex Parte Di Salvo et al

Board of Patent Appeals and Interferences

Jul 28, 2011

11554214 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY DI SALVO,
CAROLYN J. MORDAS, JANETA NIKOLOVSKI,
and BENJAMIN C. WIEGAND
____________

Appeal 2011-006885
Application 11/554,214
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 7-12 and 15 (App.
Br. 2; Ans. 2)2. We have jurisdiction under 35 U.S.C. § 6(b).

1 This Appeal is related to Appeal No. 2009-006370, Application No.
10/979,364 (US Patent No. 7,988,779), decided February 26, 2010, entered
into the record on March 2, 2010 (see App. Br. 2).
2 Pending “claims 13, 14, 16, and 17 have been withdrawn from
consideration” (App. Br. 1; Ans. 2).
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STATEMENT OF THE CASE
The claims are directed to a method of treating enzymatic dermatitis.
Claim 7 is representative and is reproduced below:
7. A method of treating enzymatic dermatitis, comprising topically
applying to an area of skin affected with enzymatic dermatitis an effective
amount of a composite material comprising: (a) an exfoliated nanoparticle
having a surface and (b) a metal selected from Groups 3 to 12, aluminum
and magnesium, wherein the metal is loaded onto the surface of the
nanoparticle.

Claims 7-12 and 15 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Disalvo3 and Buckingham.4
Claims 7-12 and 15 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-10, 19, and 20 of Disalvo in view of Buckingham.
We affirm.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS
FF 1. Appellants admit that “Disalvo relates to absorbent articles
comprising metal-loaded nanoparticles, and the nanoparticle is of the same
general type used in the present invention. The absorbent article may be a
diaper” (App. Br. 3; Ans. 9; see also Disalvo 1: ¶ [0010] and Ans. 5).

3 Disalvo et al., US 2005/0115462 A1, published June 2, 2005.
4 Buckingham, US 4,556,560, December 3, 1985.
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FF 2. Disalvo suggests that the metal is preferably selected from, inter
alia, “silver, copper, [and] zinc” (Disalvo, col. 4, ¶ [0045]; Ans. 10).
FF 3. Disalvo’s composite material “may be incorporated into soft surface
coating compositions . . . to bring about certain, desired benefits, for
example . . . anti-inflammatory properties, anti-microbial properties, [and]
anti-fungal properties” (Disalvo 4: ¶ [0053]; see also Ans. 10; App. Br. 3).
FF 4. The Examiner and Appellants agree that Disalvo fails to explicitly
teach “a method of treating enzymatic dermatitis” (Ans. 5; App. Br. 3).
FF 5. Buckingham suggests “[m]ethods for the treatment and prevention of
diaper rash and diaper dermatitis” (Buckingham, Abstract; Ans. 6).
FF 6. Buckingham suggests that “[t]he methods of the present invention
employ the topical application of a minimum inhibitory concentration of a
pharmaceutically-acceptable lipase-inhibiting agent to the area in need of
such treatment, or the area where prevention is desired” (id.; Ans. 6).
FF 7. Buckingham suggests that agents which are known to inhibit the
action of lipase include silver, copper, and zinc (Buckingham, col. 8, ll. 21-
27; Ans. 10).
FF 8. The Examiner finds that
Buckingham does not use the term ‘enzymatic dermatitis’ but . .
. [since] the reference teaches an enzyme, lipase, as a cause of
diaper dermatitis . . . one of ordinary skill would readily
recognize that the terms diaper dermatitis and enzymatic
dermatitis are equivalent within the context of diaper rash.

(Ans. 6; see Buckingham, col. 7, ll. 14-16 (“Lipase . . . is the trivial or
common term employed to represent what is in fact a group of enzymes
belonging to the esterases”).)
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FF 9. Buckingham suggests that the “inactivation of lipase prevents the
compromise of the barrier function of the skin which in turn prevents
irritants (such as fungi, bacteria, and bile salts and acids) from migrating
through and further irritating and inflaming the skin” (Buckingham, col. 7,
ll. 54-58; Ans. 6; Cf. Appellants’ Spec. 1: 29-30 (“there is evidence that . . .
lipases of intestinal and/or pancreatic origin play a direct role in causing the
skin inflammation of enzymatic dermatitis” )).).
FF 10. Buckingham suggests that “[t]he lipase-inhibiting agents of the
present invention can . . . be incorporated into, or delivered from, diapers,
particularly disposable diapers” (Buckingham, col. 14, ll. 45-47; Ans. 10).
ANALYSIS
The claims have not been argued separately and, therefore, stand or
fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 7 is representative.
In sum, Disalvo suggests the use of a composite material comprising,
inter alia, zinc loaded onto the surface of an exfoliated nanoparticle as a
component of a diaper to bring about certain desired benefits, such as anti-
inflammatory properties, anti-microbial properties, and anti-fungal
properties (FF 1-3). While Disalvo does not entertain the precise
mechanism through which the composite material achieves the desired
benefits, Buckingham fills this void. Buckingham suggests that a diaper
coated with a zinc compound inhibits the action of the lipase enzyme and,
thereby, prevents irritants such as fungi, bacteria, and bile salts and acids
from migrating through and further irritating and inflaming the skin (FF 5-
10). Accordingly, we find no error in the Examiner’s conclusion that, at the
time the invention was made, it would have been prima facie obvious to a
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person of ordinary skill in this art to utilize an effective amount of Disalvo’s
composition in a method of treating enzymatic dermatitis (see Ans. 5-7 and
10-12).
We are not persuaded by Appellants’ contention that the metal
compounds suggested by Disalvo and Buckingham “are completely different
from each other,” wherein “Di[s]alvo uses exfoliated nanoparticles, while
Buckingham uses metallic salts” (App. Br. 3). Both Disalvo and
Buckingham suggest the use of a zinc compound to counter the effects of,
inter alia, inflammation, microbes, and fungi (FF 3 and 9; see Ans. 11).
While Disalvo is silent with regard to the mechanism through which these
effects are achieved, Buckingham suggests that these effects are achieved
through the inhibition of lipase with agents such as zinc (FF 7 and 9; see
Ans. 12). Accordingly, the preponderance of evidence on this record
suggests that while formulated differently, the zinc compounds suggested by
Disalvo and Buckingham are achieving the same result. Therefore, we are
not persuaded by Appellants’ contentions that “[m]erely because they both
may contain zinc does not mean the two materials are obvious variants or
even similar” or that “[t]here is no . . . suggestion that lipase inhibition is
related to the kinds of uses Di[s]alvo enumerates” (App. Br. 3).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 7 under 35 U.S.C § 103(a) as
unpatentable over the combination of Disalvo and Buckingham is affirmed.
Because they are not separately argued claims 8-12 and 15 fall together with
claim 7.
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Obviousness-type Double Patenting:

ISSUE
Does the preponderance of evidence on this record support the
Examiner’s rejection under the judicially created doctrine of obviousness-
type double patenting?
FACTUAL FINDINGS
FF 11. The Examiner finds that Disalvo’s “[c]laims are drawn to . . .
[Appellants’] compositions comprising metal-loaded nanoparticles. The
motivation to combine the composition of . . . [Disalvo] with the method of
the instant Claims is provided by Buckingham who teaches a method for
inhibiting lipase with metal ions to treat diaper dermatitis” (Ans. 8).
ANALYSIS
The claims have not been argued separately and, therefore, stand or
fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 7 is representative.
Appellants contend that “in the present case, as explained infra [sic],
the claims of this application and the Di[s]alvo application (even in view of
Buckingham) are patentably distinct” (App. Br. 4). As discussed above, we
were not persuaded by Appellants’ contentions. Appellants identify no
further error in the Examiner’s rejection. Accordingly, we affirm the
rejection of record.
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner’s provisional rejection under the judicially created doctrine of
obviousness-type double patenting. The provisional rejection of claim 7
under the judicially created doctrine of obviousness-type double patenting as
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being unpatentable over claims 1-10, 19, and 20 of Disalvo in view of
Buckingham is affirmed. Since they are not separately argued, claims 8-12
and 15 fall together with claim 7.
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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