Ex Parte Heng

Board of Patent Appeals and Interferences

Mar 30, 2009

10884231 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MADALENE C.Y. HENG
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Appeal 2008-5826
Application 10/884,231
Technology Center 1600
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Decided:1 March 30, 2009
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Before TONI R. SCHEINER, DONALD E. ADAMS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5826
Application 10/884,231

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claimed invention is directed to a method of inhibiting the
proliferation of psoriatic epidermal cells by applying curcumin and/or
curcuminoids to affected skin (Spec. 2-3).
Claim 1 is representative of the subject matter on appeal:
1. A method of inhibiting proliferation of psoriatic epidermal cells
within an affected area comprising the steps of:
utilizing of curcumin and/or curcuminoids dispersed in a gel by
immediately applying said gel to the affected area that has been pre-treated
by first soaking the affected area with an alcohol solution to inhibit the
proliferation of psoriatic epidermal cells within an affected area so that said
alcohol can freshly dissolve the (nascent) curcumin and/or circuminoids [sic]
functioning as a solvent and a carrier for the curcumin to penetrate the skin
with the penetration not only occurring within the stratum corneum layer of
the skin but also in the epithelial layer of the skin.

The Examiner relies on the following evidence:
Heng US 2001/0051184 A1 Dec. 13, 2001

The Examiner rejected claims 1-4 under 35 U.S.C. § 103(a) as
unpatentable over Heng.2
THE ISSUE
Has the Examiner established that pre-treating psoriatic skin by
soaking it in alcohol before applying a curcumin-containing gel to the skin
would have been obvious over Heng’s disclosure?

2 The Examiner withdrew a rejection of 1 under 35 U.S.C § 112, first
paragraph, in response to Appellant’s amendment of claim 1 (Ans. 3).
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Application 10/884,231

FINDINGS OF FACT
FF1 Appellant claims a method of inhibiting proliferation of
psoriatic epidermal cells within an affected area by applying curcumin
(and/or curcuminoids) dispersed in a gel to affected skin, immediately after
soaking the affected skin with an alcohol, so that the alcohol freshly
dissolves the curcumin and the curcumin penetrates both the stratum
corneum and epidermal layers of the skin (claim 1).
FF2 According to the Specification, “substantially increased
penetration by the curcumin and/or curcuminoids . . . can be achieved by
first applying [alcohol] to the skin” (Spec. 5: 3-4), and “then immediately
applying to the alcohol layer on the skin before it has a chance to evaporate a
gel, such as an aloe vera gel . . . contain[ing] between .001 percent to ten
percent by volume of curcumin” (id. at 5: 21-24).
FF3 According to the Specification, “[a]lcohol easily penetrates
skin, and not only penetrates the outer layer (stratum corneum) . . . of the
skin but also seeps into and penetrates the inner layer (epithelial layer) of the
skin” (Spec. 4: 23-26). In addition, “[c]urcumin is readily dissolvable in
alcohol” (id. at 4: 23). Thus, “[t]he alcohol provides the solvent and the
carrier for the curcumin” (id. at 5: 6-7).
FF4 Heng discloses topical application of curcumin “to inhibit
phosphorylase kinase in inflammatory diseases” (Heng ¶¶ 3, 171, 174),
including psoriasis (id. at ¶ 130).
FF5 Heng teaches that curcumin’s “anti-phosphorylase kinase
activity and its anti-inflammatory effect depend[ ] on the presence of
curcumin in a dissolved state” (Heng ¶ 15), thus, “administration of
curcumin in solution greatly improves the activity of curcumin in inhibiting
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Appeal 2008-5826
Application 10/884,231

phosphorylase kinase and exerting [its] anti-inflammatory and other
physiological effects” (id. at ¶ 17).
FF6 Heng teaches that curcumin “is almost completely insoluble in
water or in oils, but is soluble in alcohols” (Heng, Abstract, ¶ 292).
FF7 Heng discloses topical administration of curcumin dissolved in
a gel, typically a 1% curcumin aloe vera-based gel containing about 10-30%
alcohol, for example, ethyl or isopropyl alcohol (Heng ¶¶ 174, 180).
PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
___, 127 S. Ct. 1727, 1741 (2007). Nevertheless, “it can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” Id.
ANALYSIS
The Examiner acknowledges that Heng discloses treating psoriasis by
applying “1% curcumin gel in an aloe vera base . . . [containing] at least one
alcohol” to affected skin (Ans. 3), but “does not teach the step of soaking the
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Appeal 2008-5826
Application 10/884,231

affected area with alcohol” (id. at 4) prior to applying the gel. However, the
Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art . . . to soak the affected area with alcohol” and “immediately
apply curcumin gel to the [pre-treated] affected area” (id.), because Heng
teaches that curcumin is only effective when dissolved, and it is readily
dissolved in alcohol (id.).
Appellant contends that “the Examiner has not provided any evidence
. . . [or] example in the history of medical and dermatologic practice” (App.
Br. 7), of applying alcohol to the skin prior to applying a medicament in
order to dissolve the medicament. Appellant further contends that the
“[p]rior art methods included curcumin that has already been dissolved in
the alcoholic gel, thereby negating any need to further dissolve the curcumin
by further applying alcohol to the skin” (id. at 7-8).
Appellant’s argument is persuasive. The Examiner has provided no
evidence that pre-treating the skin by applying alcohol, or a solvent of any
kind, prior to applying a topical medicament, is a practice known in the art.
That being the case, we agree with Appellant that the Examiner has not
established that one of skill in the art would have had a reason to pre-treat
psoriatic skin with alcohol before applying Heng’s alcohol-based curcumin-
containing gel, especially as Heng teaches that the curcumin is already
dissolved in the gel (FF7).
CONCLUSIONS OF LAW
The Examiner has not established that pre-treating psoriatic skin by
soaking it in alcohol before applying a curcumin-containing gel to the skin
would have been obvious over Heng’s disclosure.
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Application 10/884,231

Accordingly, the rejection of claims 1-4 under 35 U.S.C. § 103(a) as
unpatentable over Heng is reversed.

REVERSED

cdc

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