Ex Parte Kling

Patent Trial and Appeal Board

Oct 21, 2014

10394619 (P.T.A.B. Oct. 21, 2014)

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.
10/394,619 03/26/2003 William O. Kling 50174-P002US 2293
61060 7590 10/23/2014
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
FAY, ZOHREH A
ART UNIT PAPER NUMBER
1621
MAIL DATE DELIVERY MODE
10/23/2014 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 2012-001054
Application 10/394,619
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2012-001054
Application 10/394,619

2
STATEMENT OF CASE
The following claim is representative.
1. A method for the treatment of an infection, comprising the steps
of,
topically administering to an area of application on a nail of a
test subject exhibiting a diseased nail condition, a composition
comprising 60 wt% water and chlorine dioxide gas present at a
concentration ranging from about 0.005 to about 0.5 weight percent,
wherein said composition is prepared by dissolving chlorine dioxide
gas in water,
carrying out an oxidation process at the point of application,
removing cellular debris from the area of application,
suppressing growth of microorganisms in and around the area
of application of the composition at a kill rate of 2 - 4 log within 5
minutes of application, and
providing the test subject with an improvement of the nail
condition, from a nail that is opaque, discolored and brittle, to a nail
that is normal and healthy.

Cited References

Danner 5,855,922 Jan. 5, 1999
Karageozian 6,488,965 B1 Dec. 3, 2002

Grounds of Rejection
Claims 1 and 10-11 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Danner in view of Karageozian.
Appeal 2012-001054
Application 10/394,619

3
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 5-
7.

Discussion
ISSUE
The issue is: Does the cited prior art support the Examiner’s finding
that the claimed subject matter is obvious?

PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board “determines the scope of claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
Appeal 2012-001054
Application 10/394,619

4
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product…. Whether the rejection is
based on “inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)
“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.” In re Papesch,
315 F.2d 381, 391 (CCPA 1963).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the response
set forth in the Answer.
Appeal 2012-001054
Application 10/394,619

5
The Examiner has provided evidence in the prior art that the claimed
and prior art products are substantially identical. In particular, the claimed
and prior art products have the similar concentrations (Ans. 5), similar pH
ranges (Spec. 6; Danner, col 6, ll. 16-24), and are aqueous solutions (greater
than 60% water, Spec. 6; Karageozian, col. 9, Example 1) of chlorine
dioxide used as a dermal antiseptic and for the treatment of dermal disorders.
Furthermore, Danner, col. 3, ll. 49-53, disclose that it was well known at the
time of the invention to introduce chlorine dioxide by bubbling into aqueous
solution. Therefore, we agree with the Examiner that the “composition of
Danner et al. is expected to have the same effect in suppressing growth of
microorganism as the claimed composition in the absence of evidence to the
contrary.” (Ans. 7.) In other words, under the principles set forth in In re
Best, the burden of proof has shifted to Appellant to show that the
composition of Danner and Karageozian is not the same or substantially the
same as that used in Appellant’s method, and would not have provided the
same suppression of microorganism results.
We further note that Appellant’s claims do not exclude the use of
stabilizers, do not require any specific process for generation of the chlorine
dioxide gas in water, and do not require any specific solution stability
beyond that necessary to effectuate treatment. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . .
. they are not based on limitations appearing in the claims.”)
Appellant has provided insufficient evidence of unexpected results or
a showing that the composition used in the prior art does not provide the
same results as the composition used in the claimed method. The
obviousness rejection is affirmed.
Appeal 2012-001054
Application 10/394,619

6

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection,
which is affirmed for the reasons of record.

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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