Ex Parte Murley et al

Board of Patent Appeals and Interferences

Sep 30, 2003

08769596 (B.P.A.I. Sep. 30, 2003)

1 Application for patent filed December 18, 1996.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACK C. MURLEY and JOHN C. BRERETON
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Appeal No. 2003-0934
Application No. 08/769,5961
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ON BRIEF
__________
Before WILLIAM F. SMITH, SCHEINER and ADAMS, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of
claims 8-10, the only claims remaining in the application.
Claim 8 is representative of the subject matter on appeal and reads as follows:
8. A therapeutic wound gel consisting essentially of, by weight percentage,
about 88-97% water, about 0.4-0.6% carbomer, about 1.2-7.8% propylene glycol, about
0.6-1.3% glycerin, about 0.5% DMDM Hydantoin, about 0-0.95% citric acid, about 0.1%
chondroitin sulfate and animal protein, and about 0-0.75% triethanolamine.
The references relied on by the examiner are:
Andermann 5,036,095 Jul. 30, 1991
Rosenthal et al. (Rosenthal) 5,565,210 Oct. 15, 1996
Cornell et al. (Cornell) 5,670,169 Sep. 23, 1997
Claims 8-10 stand rejected under 35 U.S.C. § 103 as unpatentable over Cornell,
Appeal No. 2003-0934
Application No. 08/769,596
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2 Carbopols® are acrylates/C10-30 alkyl acrylate crosspolymers, with the
CTFA/INCI designation “carbomer.”
Andermann and Cornell. The examiner’s Answer refers to paper no. 13 for the
statement of the rejection. We reverse the examiner’s rejection of the claims.
DISCUSSION
Claim 8 is directed to a therapeutic wound gel consisting essentially of, by weight
percentage, about 88-97% water, about 0.4-0.6% carbomer, about 1.2-7.8% propylene
glycol, about 0.6-1.3% glycerin, about 0.5% DMDM Hydantoin, and about 0.1% of a
chondroitin sulfate and animal protein. According to the specification (page 2), “about
0.1% chondroitin sulfate and animal protein” refers to a mixture of chondroitin sulfate
and animal protein, present in the gel at about 0.1% by weight. The gel may also
include citric acid and triethanolamine.
Cornell describes “a non-cytotoxic wound hydrating gel comprising a) a
hydrocolloid mixture of sodium carboxymethylcellulose and sodium/calcium alginate,
and b) and a preservative system” (column 2, lines 16-20). “Hydrocolloids which can
optionally be used [ ] additionally . . . include Carbopol, including Carbopol 940 [at
about 0.5-0.75%],2 carrageenan, agar, and gelatin” while “[t]he preservative system
comprises dimethylol dimethylhydantoin (DMDM hydantoin)” at about “0.05-0.1% by
weight (not 0.05-1% as asserted by the examiner on page 3 of paper no. 13) and “an
antimicrobial agent and a mold and yeast inhibitor” (column 2, lines 46-60). Cornell’s
gel is anywhere from 87-97.9% deionized water, and may also contain 0.5%
triethanolamine, and as much as 10% propylene glycol or 10% glycerin. See Examples
8 and 10.
Andermann teaches that DMDM Hydantoin-containing formulations are “effective
in the treatment of malconditions of the skin, including acne” and “may also be useful in
Appeal No. 2003-0934
Application No. 08/769,596
Page 3
the treatment of burns, skin grafts and skin lacerations.” “[V]arious preparations for
application to the human skin [include], for example, creams, lotions, gels, ointments,”
etc. (column 2, lines 16-35). Example 2 describes aqueous DMDM Hydantoin-
containing creams for the treatment of acne which also include 1.0-5.0% Carbopol®
and 0.35-1.5% triethanolamine.
While neither reference “expressly [teaches] the . . . specific amounts of
ingredients” required (paper no. 13, page 3), “discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art.” In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) (citations omitted).
According to Andermann, “[f]ormulations with DMDM Hydantoin . . . may contain DMDM
Hydantoin concentrations of anything up to approximately 30%, depending on the
intended use of the particular formulation . . . but concentrations from 0.5 percent to 10
percent by weight are preferred” (column 2, lines 45-53). We think it is fair to say that
Andermann identifies the concentration of DMDM Hydantoin as a “result effective
variable,” and we agree with the examiner that certain of “[t]he amount[s] of ingredients
[required by the claims] are similar to the prior art” (e.g., water, carbomer, propylene
glycol, triethanolamine) and “the optimization of amounts of [certain other] ingredients
to be employed is [ ] within the skill of [the] artisan” (e.g., DMDM Hydantoin). Paper no.
13, page 4.
Nevertheless, neither Cornell nor Andermann describes wound gels which
additionally include chondroitin sulfate and animal protein. The examiner relies on
Rosenthal to make up this deficiency, but we cannot agree that Rosenthal’s teachings
would have “motivated [one skilled in the art] to modify the gel or composition in [the]
prior art by the addition of chondroitin and animal protein” (paper no. 13, page 4) as the
examiner proposes.
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Application No. 08/769,596
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According to the examiner, Rosenthal “teach[es] that chondroitin sulfate and
animal protein are known to be useful for wound healing.” Paper no. 13, page 4. While
Rosenthal does teach that “all collagen types, tenascin, laminin, chondroitin sulfate,
hyaluronic acid, dermatan sulfate, heparin sulfate, heparin, elastin, fibrin, fibronectin,
vitronectin, dextran, or oxidized regenerated cellulose” are suitable materials “for use in
the repair of full and partial thickness defects of the skin,” the materials are used in the
form of a freeze-dried, bioabsorbable “fibrous mass,” “sponge” or “film” which “is readily
invaded by cells of the host organism,” and which is “strong and resilient enough to
resist collapse and may be cut and/or formed so as to conform to a wound shape so
that it protects and/or fills a wound bed.” Column 2, lines 37-48; and column 3, lines 1-
38. The examiner has not explained how or why Rosenthal’s teachings would have led
one skilled in the art to include chondroitin sulfate and animal protein as integral
components of a viscous, but flowable gel, and in a comparatively minor amount (about
0.1%).
As explained in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [ ] Close adherence
to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one “to fall victim
to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher.” [ ]
. . . to establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by the applicant. [citations omitted]
In other words, “there still must be evidence that ‘a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
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Application No. 08/769,596
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references for combination in the manner claimed.’” Ecolochem Inc. v. Southern
California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000).
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Here, the evidence relied on by the examiner does not establish that all of
limitations of the claims on appeal were taught or would have been suggested by the
prior art. Accordingly, we are constrained to reverse the examiner’s rejection of claims
8-10 under 35 U.S.C. § 103.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
Toni R. Scheiner ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
Donald E. Adams )
Administrative Patent Judge )
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