Ex Parte Haas

Board of Patent Appeals and Interferences

Mar 31, 2006

10046897 (B.P.A.I. Mar. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GERHARD J. HAAS
__________

Appeal No. 2005-1738
Application No. 10/046,897
__________

ON BRIEF
__________

Before ELLIS, ADAMS, and GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1-8. Claim 1 is representative of the subject matter on
appeal, and reads as follows:
1. A method of sanitizing the udders and teats of dairy cows,
comprising washing or dipping said udders and teats with an
aqueous solution an active ingredient of which is a hop compound
in a concentration effective to kill pathogens on said udders and
teats without causing trauma to said cows.

Appeal No. 2005-1738 Page 2
Application No. 10/046,897

The examiner relies upon the following references:
Owades 4,170,638 Oct. 9, 1979
Barney et al. (Barney) 5,370,863 Dec. 6, 1994

Shibata et al. (Shibata)1 JP 172332 Jul. 7, 1989

Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being obvious over
Shibata. In addition, claims 1-8 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Owades and Shibata, and claims 1-7
stand rejected under 35 U.S.C. § 103(a) over the combination of Barney with
Shibata. After careful review of the record and consideration of the issues before
us, we reverse all of the rejections of record.
DISCUSSION
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being obvious over
Shibata.
Shibata is cited for teaching “a method for treating mastitis in a cows using
a water based extract of a solution comprising hops (Humulus lupulus).”
Examiner’s Answer, page 3. The reference is also cited for teaching that the
solution may be used in the form of a dispersion, and that the solution may be
administered through the skin. According to the examiner, Shibata “teaches a
method of killing pathogens by applying an aqueous hops solution to the skin of
cows.” Id. at 4.

1 Translation dated September 26, 2003, a copy of which is attached to the Supplemental
Request for Reconsideration.

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Application No. 10/046,897

The rejection concludes:
The reference does not specifically teach washing or dipping the
udders and teats with this solution. However, a person of ordinary
skill in the art would reasonably expect that the active hops
containing solution should be administered to the skin at the site of
the infection, specifically the skin of the udders and teats. Applying
the active hops containing solution to the infected site would clearly
involve a washing or dipping means of application. Thus, it is
clearly within the skill of one of ordinary skill in the art to expand the
teaching of [Shibata] of skin application of hops containing solution
to include washing and dipping of the infected site. Therefore, an
artisan of ordinary skill would be motivated to modify the teaching
of [Shibata] to include washing and dipping the infected teats of
cows to kill pathogens using the hops solution taught by the
reference.
Id.
“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, all facts must be considered. The
Patent Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases [sic,
basis] supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968) (emphasis in original).

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Application No. 10/046,897

Appellant argues that claim 1 requires washing or dipping the udders and
teats of cows, and that is not disclosed by Shibata. See Appeal Brief, page 3.
Appellant asserts that the examiner incorrectly relies on a single paragraph in the
reference, specifically, the recitation in the translation that the active ingredients
disclosed in the reference may be administered transdermally. See id. Appellant
cites a certified translation of that paragraph, wherein the translator certifies that
“transdermal[ ] is used interchangeably with transcutaneous. It means ‘through
the skin.’” Id. at 4. We agree, and the rejection is reversed.
The Shibata translation teaches that a gelenical, such as hops, may be
used “to prevent and treat bovine mastitis caused by staphylococci, wherein the
galenicals are mixed in feed.” Id. at paragraph 11;2 see also paragraph 14. The
reference teaches further that “[t]hese galenicals are used by administering them
in an original powder form, in an extract solution form, or as an effective galenical
constituent, or by adding these to animal feed, or by processing them into an
agent form such as a liquid agent form, a dispersed agent form, a semi-solid
agent form, a powder agent form, a solid form agent form, a leachate agent form,
an injection agent form and so forth.” Id. at paragraph 38. Moreover, the
examples are drawn to delivering the active agent in feed or drinking water.
Thus, the reference as read as a whole, does not teach or suggest directly
applying the galenical, such as hops, to the teat or udder of a cow.

2 Paragraph numbering was started a Section 3, “Detailed Explanation of the Invention,” with the
paragraph starting with “The present invention pertains to an agent . . .” being numbered as
paragraph 1.

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Application No. 10/046,897

The examiner relies on paragraph 46 of Shibata, which teaches that “[t]he
method of giving it is either oral or non-oral administration. As non-oral
administration, intramuscular, intra stomach, transdermal, nasal and vein
administration can be used.” The examiner asserts that
[t]he reference as translated states that the hops extract can be
applied transdermally or to the skin to treat a pathogenic
Staphylococcus aureus infection. The reference as translated does
not specify that the transdermal administration is performed using a
medicated patch or a syringe. In addition, a person of any degree
of skill in the pharmaceutical art would appreciate that syringe
injection is not transdermal administration. Transdermal
administration means that the active substance is absorbed through
the skin. Syringe injection pierces the skin; thus it is not
administration through the skin. Thus, the appellants conjecture
regarding the teaching of the reference to administer by injection or
medicated patch is outside any suggestion of the reference’s
teaching of transdermal administration.

Examiner’s Answer, pages 6-7 (emphasis in original).
The examiner, however, is ignoring paragraph 45, the paragraph directly
before the relied upon paragraph, which states “[t]he amount to be administered
varies in a range from 0.001 mg/body weight kg/day ~ 100 g/body weight kg/day
in the original weight of galenicals. An amount of an agent for prevention is
different from that of the agent for treatment, and generally the amount to be
administered is larger for the latter.” Thus, that paragraph would not suggest to
the ordinary artisan that the galenical is to be used to wash the teat or udder to
prevent mastitis.
Finally, the examiner is not giving any weight to the Translation Certificate,
attached as Exhibit B to the Appeal Brief, wherein the translator declares, under
the penalty of perjury, that “[t]he word, transdermal, is used Interchangeably with

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Application No. 10/046,897

transcutaneous. It means ‘through the skin’[.] Examples of transdermal
administration would be by syringe injection or the use of a medicated patch.”
For the examiner to disregard that evidence on the conclusory basis that “[t]he
appellant is reading more into the reference than is taught by the reference,”
Examiner’s Answer, page 6, and as “conjecture,” id. at 7, is incorrect. The
examiner provides no countervailing evidence, such as evidence that a person
fluent in both Japanese and English would read “transdermal” in the way that the
examiner asserts it should be read, to support her position. For that reason, and
the reasons set forth above, we are compelled to reverse the rejection.
Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being obvious over
the combination of Owades and Shibata.
Owades is cited for teaching the use of a topical aqueous hops extract to
inhibit the growth of S. aureus. Examiner’s Answer, page 4. The examiner
acknowledges that Owades “does not specifically teach using the hops extract to
sanitize the teats and udders of cows.” Id. Shibata is cited for teaching that S.
aureus is the causative agent of bovine mastitis.
The rejection concludes:
Therefore, since the hops extract of [Owades] is taught to be
topically active against S. aureus, a person of ordinary skill in the
art would reasonably expect that the extract of [Owades] would be
useful in sanitizing the teats and udders of cows. Thus, based on
the teachings of the reference, a person of ordinary skill in the art
would be motivated to use the hops extract of [Owades] to sanitize
the teats and udders of cows.
[Owades] and [Shibata] taken together teach using a topical
hops composition to sanitize the teats and udders of cows. The
references do not specifically teach washing or dipping the teats
and udders to apply the compositions. However, applying this

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Application No. 10/046,897

active solution to the infected site would clearly involve washing or
dipping as an obvious means for applying a transdermally active
substance.

Id. at 4-5.
Appellant argues that Owades does not make up for the deficiencies of
Shibata. See Appeal Brief, page 7. Owades, appellant contends, relates to the
use of a hops extract in the preparation of deodorants for humans to inhibit the
growth of S. aureus, and thus is non-analogous art. See id. Again, we agree,
and the rejection is reversed.
The examiner asserts that the references are analogous, as they both
Owades and Shibata deal with topical control of S. aureus. See Examiner’s
Answer, page 9. As noted above, however, Shibata does not relate to topical
control of S. aureus, and we find that one of ordinary skill in the art interested in
treating bovine mastitis, would not look to the deodorant art for a solution. See In
re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979)(noting that in
determining whether a reference is non-analogous art, first decide whether the
reference is in the inventor’s field on endeavor, and if not, determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved).
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being obvious over
the combination of Barney with Shibata.
Barney is cited for teaching that “various hops acids have topical
antibacterial activity,” and that “tetrahydroisohumulone and other iso forms of
humulone and lupulone function against S. aureus.” Examiner’s Answer, page 5.

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Application No. 10/046,897

The examiner states that “[Barney] does not specifically teach using the hops
extract to sanitize the teats and udders of cows.” Id. The examiner relies on
Shibata for teaching that S. aureus is the causative agent of bovine mastitis. See
id.
The rejection concludes:
Therefore, since the hops extract of [Barney] is taught to be
topically active against S. aureus, a person of ordinary skill in the
art would reasonably expect that the hops acids of [Barney] would
be useful in sanitizing the teats and udders of cows. Thus, based
on the teachings of the references, a person of ordinary skill in the
art would be motivated to use the hops extract of [Barney] to
sanitize the teats and udders of cows.
[Barney] and [Shibata] taken together teach using a topical
composition to sanitize the teats and udders of cows. The
references do not specifically teach washing or dipping the teats
and udders to apply the compositions. However, applying the
active solution to the infected site would clearly involve washing or
dipping as an obvious means for applying a transdermally active
substance.

Id. at 5-6.
Appellant argues again that Barney and Shibata are non-analogous art, as
Barney relates to the use of hops acids in dentrifices, and thus “one seeking to
treat cattle would not look to the dentrifice art, except by pure hindsight.” Appeal
Brief, page 7. We agree yet again for the reasons set forth with respect to the
rejection over the combination of Owades and Shibata, and the rejection is
reversed.

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Application No. 10/046,897

CONCLUSION
Because the examiner has failed to set forth a prima facie case of
obviousness, all three rejections of record made under 35 U.S.C. § 103(a) are
reversed.
REVERSED

Joan Ellis )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

LMG/jlb

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Application No. 10/046,897

Walter D. Ames
6718 Wemberly Way
McLean, VA 22101