Ex Parte Kling

Patent Trial and Appeal Board

Dec 12, 2012

10440395 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/440,395 05/19/2003 William O. Kling 50174-P003US 8000
61060 7590 12/12/2012
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
12/12/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte WILLIAM O. KLING
__________

Appeal 2011-011237
Application 10/440,395
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N. FREDMAN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
24, 31, and 33, directed to a method of reducing sebum levels on a human or
animal. The claims have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appeal 2011-011237
Application 10/440,395

2
STATEMENT OF THE CASE
Claims 24, 31, and 33 are pending and on appeal. Claims 32 and 34
are also pending, but have been withdrawn from consideration; claims 1-23
and 25-30 have been canceled (App. Br. 5).
Claim 24 is representative of the subject matter on appeal:
24. A method of reducing sebum levels on a human or animal
comprising the steps of:
applying an effective amount of an aqueous composition comprising
0.005 wt% to 0.5 wt % of chlorine dioxide gas dissolved in water, and
further comprising at least one drying agent, a carbomer, at least one
moisturizing agent,
and at least one of benzalkonium chloride or benzethonium chloride,
topically to an area on a human or animal; and
reducing the sebum level at the area of application between 78% to
83%, wherein the chlorine dioxide gas causes the reduction in the level of
sebum within four minutes of application.
Claims 24, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Alliger,
1
Witt,
2
Boris,
3
Kundsin,
4
and Kross.
5

FACT FINDINGS
1. Alliger teaches that compositions comprising chlorine dioxide
have been “applied as a disinfectant on such skin lesions as acne” and “as a
skin cleanser” (Alliger, col. 1, ll. 16, 21), but “may redden and/or irritate the
tissue” (id. at col. 1, ll. 25-26). Alliger discloses “chlorine dioxide
generating compositions including solutions and gel formulations . . . which

1
US 5,616,347, issued April 1, 1997 to Alliger et al.
2
US 6,077,502, issued June 20, 2000 to Witt et al.
3
US 4,588,750, issued May 13, 1986 to Boris.
4
US 5,767,163, issued June 16, 1998 to Kundsin.
5
US Patent No. 5,820,822, issued October 13, 1998 to Kross.
Appeal 2011-011237
Application 10/440,395

3
may be applied to animal, especially human, skin and which evidence
substantially reduced irritation of the skin” (Alliger, col. 2, ll. 44-48).
2. Alliger’s compositions comprise:
[A]n aqueous soluble salt of chlorite in combination with a
protic acid, the salt of chlorite and acid being included in the
composition in amounts effective to generate at least about 1
part per million (ppm), preferably at least about 5 ppm, more
preferably at least about 10-20 ppm and up to about 50 ppm or
more chlorine dioxide within a period of time no greater than
about 15 minutes, the composition also including water and at
[l]east one irritation reducing compound selected from the
group consisting of allantoin, glycerine, aloe vera and mixtures,
thereof, in an amount effective to substantially reduce skin
irritation caused by chlorine dioxide.
(Alliger, col. 6, ll. 55-67.) According to Alliger, the combination of a salt of
chlorite (such as sodium chlorite) and a protic acid releases chlorine dioxide
gas (id. at col. 2, ll. 1-2; col. 3, ll. 20-21).
3. Alliger teaches that “1 part per million is equal to 0.0001% by
weight” (Alliger, col. 5, ll. 51-52), thus Alliger discloses aqueous solutions
comprising 0.005% or more (50 ppm or more) chlorine dioxide gas.
4. The present Specification teaches that:
The liquid cleansers of the present invention comprise
one or more chlorine dioxide compounds to provide
antimicrobial functionality, as well as to assist in the removal of
sebum from the area of application. Examples of such chlorine
dioxide compounds include, but are not limited to, sodium
chlorite, sodium chlorate and chlorite ion. The terms "chlorine
dioxide generating compound" and "chlorine dioxide
compound" are used interchangeably herein. In an embodiment
of the invention, the chlorine dioxide compound is an aqueous
solution comprising chlorine dioxide. The aqueous solution is
prepared by dissolving chlorine dioxide gas in purified water.
(Spec. 4: 3-10.)
Appeal 2011-011237
Application 10/440,395

4
5. The present Specification teaches that “[t]he compositions of
the present invention comprise an effective amount of a chlorine dioxide
compound that is efficacious in removing sebum . . . from the area of
application via oxidation” (Spec. 2: 21-22), and “the concentration of
chlorine dioxide compound present in the compositions ranges from about
0.005 wt% to about 0.5 wt%” (id. at 4: 14-15).
DISCUSSION
The Examiner finds that Alliger discloses a method of cleansing an
external body surface using an aqueous composition comprising chlorine
dioxide in the amount required by the claims, and further comprising a
drying agent, a humectant, a gelling agent (i.e., a thickening agent), and a
moisturizing agent (Ans. 5-6). The Examiner acknowledges that Alliger’s
composition does not include a carbomer as a thickening agent, a silicone
based material as a drying agent, or benzalkonium chloride as a preservative.
However, the Examiner finds that Witt and Kross disclose these components
in chlorine dioxide-containing compositions, while Kundsin discloses a
topical composition containing benzalkonium chloride, and concludes that it
would have been obvious for one of ordinary skill in the art to include these
conventional components in Alliger’s cleansing composition (id. at 6-7).
In addition, the Examiner acknowledges that the references do not
disclose that “the chlorine dioxide gas causes the reduction in the level of
sebum within four minutes of application’” (id. at 7), as required by the
claims. However, the Examiner finds that this is an inherent effect of
Alliger’s method because Alliger discloses “the same patient . . . being
administered the same active agent (chlorine dioxide) by the same mode of
administration (topically applying to the skin) in the same amount” (id. at 9).
Appeal 2011-011237
Application 10/440,395

5
Appellant contends that “the cited references either singly or in
combination fail to teach or suggest the reduction of sebum by 78% to 83%
through the use of chlorine dioxide-containing compositions that are
prepared by dissolving chlorine dioxide gas in water” (App. Br. 17).
Thus, Appellant takes issue with two different aspects of the Examiner’s
rejection, which we will address in turn.
First, Appellant contends that claim 24 “is directed to a method of
reducing sebum at an area of application using a chlorine dioxide-containing
composition that is prepared by dissolving chlorine gas in water” (id. at
14-15), but “Alliger specifically discloses only chlorine dioxide generating
compositions, which is not the same as chlorine dioxide gas stably dissolved
in water” (id. at 17-18).
This argument is not persuasive. Claim 24 does not require a
composition prepared by dissolving chlorine dioxide gas in water, it merely
requires a composition comprising chlorine dioxide gas dissolved in water.
The Examiner finds that Alliger’s aqueous cleansing composition contains
chlorine dioxide gas (Ans. 8). This finding is supported by Alliger, which
teaches that the combination of a salt of chlorite (such as sodium chlorite)
and a protic acid releases chlorine dioxide gas (Alliger, col. 2, ll. 1-2, col. 3,
ll. 20-21; FF2), and also by the present Specification, which teaches that
sodium chlorite is a chlorine dioxide generating compound (Spec. 4; FF4).
Second, Appellant contends that claim 24 requires that “the chlorine
dioxide gas causes the reduction in the level of sebum by 78% to 83% within
four minutes of application” (App. Br. 15), while “Alliger does not disclose
or otherwise suggest methods of cleansing . . . resulting in the removal of
sebum” (id. at 18).
Appeal 2011-011237
Application 10/440,395

6
This argument is not persuasive. When “a claimed new benefit or
characteristic of an invention otherwise in the prior art” is an inherent
property of the old invention, “the new realization alone does not render the
old invention patentable.” Perricone v. Medicis Pharm. Corp., 432 F.3d
1368, 1377 (Fed. Cir. 2005). Here, according to the Specification, chlorine
dioxide gas removes sebum from the area of application through oxidation
(Spec. 2: 21-22; FF5), and an amount effective to reduce the sebum level
78% to 83% within 4 minutes comprises 0.005 wt% to about 0.5 wt%
(Spec. 4: 14-15; FF5; claim 24). Alliger discloses aqueous solutions
comprising 0.005% or more chlorine dioxide gas (FF3). Thus, the
Examiner’s finding that Alliger inherently meets this limitation of the claims
is supported by the evidence of record, and Appellant has not established
otherwise.
Finally, to the extent Appellant contends that “Alliger teaches that the
oxidative properties of chlorine dioxide are undesirable . . . and thus teaches
away from the claimed invention” (App. Br. 18), we disagree. Alliger
teaches that chlorine dioxide gas is an effective disinfectant, although it can
irritate skin. However, Alliger also teaches that this effect is easily avoided
by including a compound such as glycerine (one of the same moisturizing
agents used in Appellant’s compositions (Spec. 5: 18)).
SUMMARY
The rejection of claim 24 as unpatentable over Alliger, Witt, Boris,
Kundsin, and Kross is affirmed. Claims 31 and 33 were not separately
argued (App. Br. 15) and therefore fall with claim 24 and the rejection is
affirmed with respect to these claims as well. 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2011-011237
Application 10/440,395

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

cdc