Ex Parte Precopio

Board of Patent Appeals and Interferences

Mar 3, 2010

10382188 - (D) (B.P.A.I. Mar. 3, 2010)

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.
10/382,188 03/04/2003 Michael J. Precopio SU 102 B 7862
7590 03/04/2010
HENRY E. MILLSON, JR.
675 GOLDEN HAWK DRIVE
PRESCOTT, AZ 86301
EXAMINER
LEVY, NEIL S
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
03/04/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL J. PRECOPIO
__________

Appeal 2010-003047
Application 10/382,188
Technology Center 1600
__________

Decided: March 4, 2010
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods for the topical treatment of ectoparasites and lice. The Patent
Examiner rejected the claims on grounds of anticipation, obviousness, and
nonstatutory obviousness-type double patenting. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal 2010-003047
Application 10/382,188

2
STATEMENT OF THE CASE
The claims relate to killing ectoparasites such as lice. The
Specification discloses that:
water-soluble or water-dispersible, substantially air-impermeable
liquid barrier compositions that consist of or contain monohydric
aralkyl alcohols effectively prevent the ectoparasites from closing
their respiratory systems (breathing apparatus), called breathing
spiracles in lice, as well as acting as effective pesticides against both
lice and their nits.
Ectoparasites such as lice, especially head lice, can normally
defend against asphyxiation for prolonged periods of time, even up to
12 hours, by closing their spiracles. With the [] air-impermeable
compositions of the invention death occurs in very much shorter
periods of time . . . since the aralkyl alcohols prevent the ectoparasites
from closing their breathing apparatus.

(Spec. 4:5-15.) Claims 33, 35-38, 40, 44-46, 49-51, 53, 58-61, 64-67 and
69-81, which are all the pending claims, are on appeal. Claim 33 is
representative and reads:
33. A method for the topical treatment of ectoparasites and their eggs on
animal skin and hair comprising the steps of:

A) applying to animal skin and hair containing ectoparasites and
their eggs a water-soluble or water-dispersible, substantially air-
impermeable, pharmacologically acceptable composition comprising
at least one monohydric aralkyl alcohol; wherein the at least one
monohydric aralkyl alcohol is selected from alcohols of formula I
below:
Appeal 2010-003047
Application 10/382,188

3

wherein R is a C1-C12 straight or branched chain, saturated or
olefinically unsaturated alkylene group, and R1 and R2 are
independently selected from the group consisting of hydrogen,
halogen, C1-C4 alkyl, and C1-C4 alkoxy groups; wherein the
composition is substantially free from air; and wherein the
composition is free from pesticides other than any pesticidal activity
exhibited by the alcohols of formula I; and wherein the ectoparasites
are lice and/or mites;

B) leaving the composition in contact with the skin and hair until
at least until most of the ectoparasites have been killed by suffocation
and at least some of their eggs have been killed, which occurs within a
period of time of less than about 45 minutes; and

C) removing the composition and the dead ectoparasites from the
skin and hair.

The Examiner relied on the following evidence:
Lover et al. US 4,368,207 Jan. 11, 1983
Cardin et al US 5,288,483 Feb. 22, 1994
Pearlman US 6,303,581 Oct. 16, 2001
Bessette US 6,974,584 Dec. 13, 2005
Gans et al US 2003/0040504 Feb. 27, 2003
Precopio US SN# 10/519,372 Dec. 23, 2004

The Examiner rejected the claims as follows:
• claims 33, 35-38, 40, 44-46, 49-51, 53, 58-61, 64-67, 69-76, 78 and
80 under 35 U.S.C. § 102(e) as anticipated by Gans;
Appeal 2010-003047
Application 10/382,188

4
• claims 33, 35-38, 40, 44-46, 49-51, 53, 58-61, 64-67 and 69-81
under 35 U.S.C. § 103(a) as unpatentable over Lover, Bessette, Cardin and
Pearlman; and
• claims 33, 35-38, 40, 44-46, 49-51, 53, 58-61, 64-67 and 69-81,
provisionally on the ground of nonstatutory obviousness-type double
patenting over claims 1-9, 11, 13, 15, 16, 18, 20, 22-26, 33-36, 45-53 and
55-63 of copending Application No. 10/519,372.

ANTICIPATION
The Issue
The Examiner’s position is that Gans disclosed all the features of the
claimed invention. (Rej. 2-5.)1 The Examiner was unpersuaded by
Appellant’s contention that § 102(e) does not permit treating Gans as prior
art. (Ans. 4-5.) The Examiner considered Appellant’s arguments against the
merits of the rejection, but found the evidence showed anticipation. (Id. at
5-9.)
Appellant contends that “a) the Gans publication is not a valid
reference against the present application, and b) even if the Board disagrees
with this conclusion, the Gans reference does not anticipate the presently
claimed invention.” (App. Br. 31.)
According to Appellant, Gans did not disclose “a) an air impermeable
composition; b) substantially free from air; c) leaving the composition of the
invention in contact with the skin and hair until at least most of the

1 Citations are to the Non-Final Rejection entered Jan. 21, 2009 as “Rej.,” to
the Examiner’s Answer as “Ans.”, and to Appellant’s Brief dated March 5,
2009 as “App. Br.”
Appeal 2010-003047
Application 10/382,188

5
ectoparasites have been killed by suffocation; d) wherein the compositions
are safe and effective and are free from pesticides other than any pesticidal
action exhibited by the aralkyl alcohols.” (App. Br. 29.)
The issues with respect to this rejection are:
A. did Appellant establish that Gans does not qualify as prior art
under § 102(e); and
B. if Gans qualifies as prior at under § 102(e), has Appellant
shown that the evidence does not support the Examiner’s finding of
anticipation?

Findings of Fact
1. Gans filed its patent application on May 9, 2002. (Gans, title page.)
2. Appellant’s application is said to be a continuation-in-part of
application number 10/195,048 (now US Patent No. 6,973,931), filed
July 11, 2002. (Spec. 1:23-24.)
3. The Gans application was published on Feb. 27, 2003. (Gans, title
page.)
4. Gans described compositions and methods for killing mammalian
ectoparasites and eggs. (Gans, Abstract.)
5. Gans described a composition in which benzyl alcohol was the sole
active ingredient, present in a range from about 0.50% w/w to about
20% w/w. (Gans, 10:[0107]-[0108].)
6. Gans taught topical application to the hair and scalp to treat head lice.
(Gans, 10:[0110].)
7. Gans taught carriers including a gel, a thickening agent such as
polyethylene glycol, and others. (Id.)
Appeal 2010-003047
Application 10/382,188

6
8. “A preferred embodiment of the [Gans] invention comprises applying
a composition to mammalian ectoparasites on mammals for a short
time (for example, without limitation, about 5 to about 30 minutes),
and then rinsing.” (Gans, 11:[0113].)
9. Appellant’s Specification discloses that the compositions employed in
the methods of the invention kill the ectoparasites “by a combination
of suffocation and pesticidal, e.g. pediculicidal, activity of the aralkyl
alcohols where the compositions are air impermeable as the only
mechanisms of action . . . . [T]he ectoparasite eggs are also killed by
the insecticidal activity of the aralkyl alcohols.” (Spec. 7:6-10.)
10. “By substantially air-impermeable is meant that the composition does
not contain sufficient air nor does it permit air to penetrate the
composition in a quantity that would prevent the composition from
suffocating the ectoparasites.” (Id. at 8:12-14.)
11. “The air-impermeable barrier compositions of the invention can be
one or more aralkyl alcohols of formula I as the only component of
the compositions.” (Id. at 9:1-2.)

Appeal 2010-003047
Application 10/382,188

7
Principles of Law
35 U.S.C. § 102 provides:
A person shall be entitled to a patent unless—
***
(e) the invention was described in (1) an application for patent,
published under section 122(b), by another filed in the United
States before the invention by the applicant for patent . . . .

Precedent provides:
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question
whether a claim limitation is inherent in a prior art reference is
a factual issue.

In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
The test for anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990). “An anticipation reference, however,
need not duplicate word for word what is in the claims. Anticipation can
occur when a claimed limitation is ‘inherent’ or otherwise implicit in the
relevant reference.” Standard Havens Prods., Inc. v. Gecor Indus., Inc.,
953 F.2d 1360, 1369 (Fed. Cir. 1991). “[I]n considering the disclosure of a
reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826-
27 (CCPA 1968) (affirming anticipation finding of implicit fact).
“The anticipation analysis asks solely whether the prior art reference
discloses and enables the claimed invention, and not how the prior art
characterizes that disclosure or whether alternatives are also disclosed.”
Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir.
Appeal 2010-003047
Application 10/382,188

8
2003), quoted in Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376
(Fed. Cir. 2005) (affirming anticipation where the prior art’s “disclosed
range of concentration also does not exactly correspond to [the] claimed
range,” 432 F.3d at 1377).

Analysis
A. Gans is prior art under § 102(e).
Appellant argues that Gans’ “filing date is irrelevant” to whether
Gans’ published patent application qualifies as prior art under § 102(e),
because “[s]ince there is no patent based on the Gans published application,
this part of section (e) is inapplicable.” (App. Br. 22-23.)
The version of the statute Appellant relies on (id. at 22, quoting the
statute) has been superseded by a newer version that applies to all patent
applications pending on or filed after Nov. 29, 2000. Since Nov. 29, 2000,
§ 102(e) has denied entitlement to a patent if the invention was described in
a published application “by another filed in the United States before the
invention by the applicant.” That is, the filing date of the published
application, not the publication date, is the effective prior art date.
Gans filed its application on May 9, 2002. (FF1.) Appellant claims
the benefit of a parent application filed on July 11, 2002. (FF2.) Gans filed
before Appellant, and Gans’ published application is therefore available as
prior art under § 102(e).
Appeal 2010-003047
Application 10/382,188

9
B. Gans described the method that Appellant now claims.
Appellant states: “[i]t is agreed that the above claims stand or fall
together.” (App. Br. 19.) We select claim 33 as representative. 37 C.F.R.
§ 41.37(c)(1)(vii).
According to Appellant, Gans did not disclose:
a) an air impermeable composition;
b) substantially free from air;
c) leaving the composition of the invention in contact with the skin
and hair until at least most of the ectoparasites have been killed by
suffocation; and
d) the condition “wherein the compositions are safe and effective and
are free from pesticides other than any pesticidal action exhibited by the
aralkyl alcohols.” (App. Br. 29.)
According to Appellant, Gans’ composition containing only benzyl
alcohol as the sole active ingredient could not have been air impermeable
because Gans ¶[0107] “gives a time of about 20 minutes . . . to kill
ectoparasites.” (App. Br. 26.) According to Appellant, examples show that
a 10 minute contact period is sufficient with Appellant’s composition. (Id.)
This argument is not persuasive. First, Appellant’s claim 33 provides
a contact period of “less than about 45 minutes” for killing “most” of the
ectoparasites and “some” of their eggs. Second, Gans’ 20 minute contact
period is between the 10 minute period demonstrated in Appellant’s
examples and the 45 minute period provided in claim 33. Further, the
evidence does not support Appellant’s reading that Gans required 20
minutes. Gans ¶[0107] states: “Benzyl alcohol, for example, is effective at
killing ectoparasites within about 20 minutes, or preferably less time, of the
Appeal 2010-003047
Application 10/382,188

10
initial application” (emphasis added). Thus, Gans did not teach that 20
minutes was required. The contact period argument does not persuade us
that Gans’ composition was not air impermeable. The Specification states
that the alcohol may be the only component in the air impermeable
composition. (FF11.) The Examiner’s evidence was sufficient to shift the
burden to Appellant to prove that Gans’ composition with benzyl alcohol as
the sole active ingredient was not air impermeable. See Schrieber, 128 F.3d
at 1478.
Appellant’s second contention, that Gans did not disclose “carriers
free from air,” is also unpersuasive. Claim 33 does not require anything but
the alcohol, and the “carrier” argument is therefore misdirected to an
unclaimed limitation. Instead, claim 33 recites that “the composition is
substantially free from air.” Because Gans disclosed a composition in which
benzyl alcohol is the only active ingredient, as Appellant claims, we find the
Examiner’s evidence was sufficient to shift the burden to Appellant to prove
that Gans’ composition was not “substantially free from air.” See Schrieber,
128 F.3d at 1478.
Appellant’s third contention is that Gans did not disclose “leaving the
composition of the invention in contact with the skin and hair until at least
most of the ectoparasites have been killed by suffocation.” We considered
the contact period above. As before, we note the Specification’s evidence
that 10 minutes may be sufficient, that claim 33 states that the suffocation
“occurs within a period of time of less than about 45 minutes,” and that Gans
taught contact times within that range for the purpose of killing
ectoparasites. Again, we find the Examiner’s evidence was sufficient to
Appeal 2010-003047
Application 10/382,188

11
shift the burden to Appellant to prove that Gans’ method did not perform the
killing as Appellant claims it. See Schrieber, 128 F.3d at 1478.
Appellant’s fourth contention is that Gans did not disclose the
condition “wherein the compositions are safe and effective and are free from
pesticides other than any pesticidal action exhibited by the aralkyl alcohols.”
However, because Gans taught a composition in which benzyl alcohol was
the sole pesticide, we find that Gans did teach this condition.

OBVIOUSNESS
The Issue
The Examiner found that each of Lover, Bessette, Cardin and
Pearlman disclosed treating ectoparasite and lice infestations, and that Lover
and Bessette each taught using benzyl alcohol as the sole active ingredient.
(Rej. 5-8.) In view of the prior’s art teachings of various anti-lice
formulations, the Examiner’s position is that it would have been obvious “to
use any of art recognized means, as of Lover, Bessette, Cardin or Pearlman
modified as desired to increase pesticidal efficacy without irritation or side
effects, to increase stability, dispersibility [and] compatibility of ingredients,
[and] reduce toxicity to people infested.” (Id. at 8.)
Appellant states that the obviousness rejection is “over Lover
4368207 and Bessette 6974584 and Cardin et al 5288483, in view of
Pearlman 6303581.” (App. Br. 31.) Appellant’s arguments address
combining the teachings of only certain pairs of references as if there are
three different rejections: (1) Lover and Pearlman (id. at 31-38);
(2) Bessette and Pearlman (id. at 39-42); and (3) Cardin and Pearlman (id. at
42-45).
Appeal 2010-003047
Application 10/382,188

12
The issue with respect to this rejection is whether Appellant has
shown that the combined teachings of Lover, Bessette, Cardin and Pearlman,
taken as a whole, would not have rendered the claimed methods obvious.

Findings of Fact
Lover
12. Lover disclosed that phenyl ethyl alcohol and benzyl alcohol kill
ectoparasites and their eggs, including lice and mites, as evidenced by
the results of two minute immersion tests. (Lover, cols. 3 and 4.)
13. Lover’s Table I shows lice killing ratings (i.e., percent mortality) for
various solutions including benzyl alcohol and 2-phenylethanol.
100% benzyl alcohol had a rating of 90, 25% benzyl alcohol had a
rating of 0, and 15% benzyl alcohol in 25% isopropanol had a rating
of 5. 100% 2-phenylethanol had a rating of 100, and 15% 2-
phenylethanol in 25% isopropanol had a rating of 80. (Id. at col. 3.)
14. We find that isopropanol is an active lice killing agent because
Lover’s Table I disclosed that 100% isopropanol had a kill rating of
65. (Id.)
15. Lover’s Table II shows lice egg killing ratings (i.e., percent mortality)
for various solutions including benzyl alcohol and 2-phenylethanol.
100% benzyl alcohol had a rating of 100, 25% benzyl alcohol had a
rating of 100, and 15% benzyl alcohol in 25% isopropanol had a
rating of 29. 100% 2-phenylethanol had a rating of 100, 25% 2-
phenylethanol had a rating of 100, and 15% 2-phenylethanol in 25%
isopropanol had a rating of 34. (Id. at col. 4.)
Appeal 2010-003047
Application 10/382,188

13
16. Lover’s Table III shows mite killing ratings for various alcohol
solutions. 100% benzyl alcohol and 100% 2-phenylethanol had the
same rating: 100. (Id. at col. 4.)
17. Lover taught that the minimum concentration required for an effective
toxic amount varied depending on the alcohol and carrier used, so that
“in one case a 10% concentration may suffice, while in other cases,
concentrations as high as 30 to 40% may be required to obtain an
effective toxic dose.” (Id. at col. 2, ll. 39-48.)
18. Lover taught end use formulations including gel and shampoo. (Id. at
col. 5.)
Bessette
19. Bessette disclosed using a plant essential oil to control the human
body louse. (Bessette, col. 2, ll. 50-57.)
20. Bessette taught that benzyl alcohol was a plant essential oil that could
be used. (Id. at col. 3, ll. 22-23.)
21. According to Bessette, “[u]se of pesticidal compositions of the present
invention generally results in 100% mortality on contact . . . .
employed as pesticidal agents in uses as . . . shampoos, hair gels, body
cremes, lotions, and other on-skin application for the treatment of
head lice, body lice, and pubic lice.” (Id. at col. 3, ll. 61-67.)
22. Bessette disclosed applying the compound “in an amount sufficient to
effect the desired action.” (Id. at col. 6, ll. 32-37.)
23. The Examiner found that Bessette’s “application must be applied in an
amount sufficient to effect the desired action.” (Ans. 10.)
24. Bessette taught that in general “the effective dosage . . . is of the order
of 0.001 to 5.0% based on total weight of the formulation, though
Appeal 2010-003047
Application 10/382,188

14
under some circumstances the effective concentrations will be as little
as 0.0001% or as much as 20%, on the same basis.” (Id. at col. 6, ll.
35-52.)
Cardin
25. Cardin taught anti-lice compositions comprising “quaternary
ammonium salts, fatty amines, and mixtures thereof with low levels of
specific alkanols.” (Cardin, col. 1, ll. 10-12.)
26. Cardin’s alkanols included phenyl C2-C6 alkanols such as phenyl
ethanol. (Id. at col. 3, ll. 33-47.)
27. Cardin taught using the alkanols at about 0.5% to about 5%. (Id. at
col. 5, l. 64 – col. 6, l. 5.)
28. Cardin taught using thickening agents, gums, and polymers. (Id. at
col. 11, ll. 54-68.)
29. Cardin taught applying the composition to wet hair, “(b) working said
composition through the hair and scalp; (c) leaving the composition
on the hair and scalp for about 6-10 minutes; and (d) rinsing the
composition from the hair.” (Id. at col. 12, ll. 22-33.)
Pearlman
30. Pearlman disclosed a method of treating lice infestations by applying
“an effective amount of a driable pediculostatic agent for a time
sufficient to immobilize the lice, drying the agent onto the application
site and removing the dried agent, thereby removing the lice and nits.”
(Pearlman, Abstract.)
31. Pearlman taught:
A pediculostatic agent is one that elicits the “immersion reflex” in
lice. . . . During submersion, the spiracles and tracheoles, through
which lice breathe, become blocked by water. As the lice become
Appeal 2010-003047
Application 10/382,188

15
anoxic, they rapidly switch to a state of profound suspended
animation, decreasing their need for oxygen . . . . If the reflex
continues too long, however, the lice eventually run completely out of
oxygen and die from anoxia.

(Id. at col. 5, ll. 1-16.)
32. Pearlman’s “driable pediculostatic agent is one that triggers the
immersion reflex when wet, and that maintains the lice in the
immersion reflex when thereafter dried in situ.” (Id. at col. 5, ll. 18-
20.)
33. Pearlman disclosed that “[f]or most driable pediculostatic agents, at
least some of the lice can be killed by leaving the dried agent on the
lice and hair for at least about 8 hours.” (Id. at col. 8, ll. 8-10.)
34. Pearlman taught using surfactants (id. at col. 11, ll. 51-57) and
solvents to hasten the drying time such as phenyl C2-C6 alkanols (id.
at col. 13, ll. 28-32).
35. Pearlman taught using thickeners. (Id. at col. 13, ll. 56-60.)

Principles of Law
“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). “[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417. The obviousness “analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
Appeal 2010-003047
Application 10/382,188

16
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
“In considering [prior art] disclosures, it is proper to take into account
not only specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom.” In
re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (affirming findings and
conclusion of obviousness) (citations omitted). Each prior art reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citation omitted). “Obviousness does not require absolute
predictability of success. . . . [A]ll that is required is a reasonable
expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.”).

Analysis
When references are combined in an obviousness analysis, we must
consider each reference “for what it fairly teaches in combination with the
prior art as a whole.” Merck, 800 F.2d at 1097. Thus, we will not analyze
the obviousness rejection as if it were three separate rejections, with the
references isolated in pairs as Appellant presents them. Instead, we weigh
Appeal 2010-003047
Application 10/382,188

17
together the evidence in all four references, as the Examiner presented the
issue.
Appellant argues that Lover does not teach or suggest the monohydric
aralkyl concentration range of the claims. (App. Br. 32-33.) However,
claim 33 does not limit the method to a concentration range, and we
therefore find this argument inapplicable to all but eight of the claims. The
eight pertinent claims are 58-61 and 72-75, but we find Appellant’s
argument also unpersuasive as to those claims for the following reasons.
The Examiner found that Lover tested alcohols and the results showed that
compositions containing 10-40% alcohol were pesticidally active. However,
Lover did not show that a composition of a monohydric aralkyl alcohol, as
the only active compound, was active in killing both ectoparasites and their
eggs, in that range. (FF13-16.) While we agree that Lover provided general
guidance that effective concentrations would vary according to the alcohol
chosen, the tabular data for benzyl alcohol or phenylethanol (FF13-16), does
not show that either would be effective in the general 10-40% range (FF17).
The evidence is insufficient to support a finding that Lover alone taught or
suggested effective monohydric aralkyl formulations in the 1-50% range of
claim 58 or claim 72.
The Examiner found Bessette disclosed effective benzyl alcohol
formulations of 0.001-5%, up to 20%. The evidence supports that finding.
(FF24.) Appellant argues that Bessette did not disclose using benzyl alcohol
alone (App. Br. 40), but this argument is unpersuasive because Bessette
explicitly taught formulating up to 20% of an active agent alone, such as
benzyl alcohol, to kill ectoparasites, including lice. We conclude that
Bessette’s disclosure supplemented Lover’s disclosure, and rendered the
Appeal 2010-003047
Application 10/382,188

18
ranges of claims 58-61 and 72-75 obvious at the time of Appellant’s
invention.
The Examiner found that Cardin disclosed licicidal formulations of
phenyl alkanols of Appellant’s formula I, free of conventional pesticides.
(Ans. 8.) We agree with Appellant that the evidence does not support that
finding because Cardin’s formulations included quaternary ammonium salts
(FF25), which had pediculicidal activity. However, we find Cardin pertinent
to the subject matter of Lover, Bessette and Pearlman, and that Cardin is
analogous art. We agree with the Examiner that Cardin’s teachings of film
formers, surfactants, gelling and thickening agents, gums and polymers, and
methods of working the licicidal composition into the hair would have been
suggestive to the ordinary artisan.
The Examiner found that “[r]egardless of the particular agent used . . .
treatment for lice is shown by Pearlman to consist of application to the hair
& scalp of a composition by thorough wetting of hair & scalp, leaving in
place for a few minutes, rinsing off & repeating if needed.” (Ans. 13.)
Appellant argues that Pearlman contains “no disclosures relevant to the
presently claimed invention.” (App. Br. 38.) We agree with the Examiner
that Pearlman is analogous art. However, the evidence does not support the
Examiner’s finding that Pearlman taught leaving the composition in place
for only a few minutes. (See FF33.) Although “short time” is not a feature
of the independent claims, pediculicide contact periods up to 10 minutes
recited in dependent claims were known in the art (e.g. FF29), and we agree
with the Examiner that they would have been obvious.
We also agree with the Examiner that Pearlman’s explanation of
suffocating compositions shows that suffocation would have been the
Appeal 2010-003047
Application 10/382,188

19
expected result of the known benzyl alcohol formulations and treatment
methods suggested by Bessette in combination with the other references.
See FF31.
Appellant argues that there is “no basis for an assumption that
Bessette is using air-impermeable carriers or carriers that are free from air,
and the Examiner has provided no basis for making any such assumption.”
(App. Br. 41.) However, Bessette taught using benzyl alcohol alone, in the
claimed range. The Examiner’s finding is therefore supported by the
evidence. Appellant has not given a credible explanation that air
impermeability or suffocating ability could be a property of, e.g.,
Appellant’s 5-20% benzyl alcohol formulation (claim 60) but not a property
of Bessette’s up to 20% benzyl alcohol formulation. Further, none of the
Specification’s examples show comparative data against the closest prior art.
The evidence supports the Examiner’s findings that Appellant’s
claims combine the use of known components for their known properties.
Combining the known formulations and known methods was within the
level of skill in the art, and Appellant has not shown that the ordinary artisan
would not have had a reasonable expectation of success in doing so. In sum,
we agree that the evidence as a whole supports the conclusion of
obviousness.

PROVISIONAL NONSTATUTORY OBVIOUSNESS-TYPE
DOUBLE PATENTING

The Issue
The Examiner concluded that although the claims in this application
and the claims in the copending ‘372 application are not identical, the claims
Appeal 2010-003047
Application 10/382,188

20
in this application are not patentably distinct from the ‘372 claims. (Rej. 12-
14.) The Examiner therefore entered a provisional requirement for terminal
disclaimer. (Id. at 11-12.)
Principles of Law
The analysis employed in an obviousness-type double patenting
rejection is similar to the analysis used in a 35 U.S.C. § 103 obviousness
determination. In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991). Absent
a terminal disclaimer, species claims preclude issuance of a generic claim.
In re Goodman, 11 F.3d 1046, 1053 (Fed. Cir. 1993).
Analysis
Appellant argues for reversal on the ground that two limitations of the
claims of copending application ‘372 are not present in the appealed claims:
“1. The requirement of complete saturation of the hair and skin;”
and
“2. Leaving the composition in contact with the infected skin and
hair until not only the ectoparasites but also most of the eggs
have been killed, and not just some of the eggs as specified in
the appealed claims.” (App. Br. 48-49.)
We take these points in turn.
1. The appealed claims define methods comprising “applying [a
composition] to animal skin and hair containing ectoparasites.” The claims
in the copending ‘372 application define methods comprising applying a
composition to areas of mammal skin and hair infected with ectoparasites
“wherein . . . c) the composition is applied to the infected areas in a quantity
sufficient to completely saturate both the hair and the skin in the infected
areas.” We agree with Appellant that the requirement of “complete
Appeal 2010-003047
Application 10/382,188

21
saturation” is not recited in the appealed claims. However, we agree with
the Examiner’s requirement for a terminal disclaimer because the appealed
claims reciting the generic “applying” cannot issue over a claim that recites
the species “applying . . . to completely saturate” without the disclaimer.
See Goodman, 11 F.3d at 1053. Appellant’s first point is therefore
unpersuasive.
2. Appealed claim 33 defines a method comprising “B) leaving
the composition in contact with the skin and hair until at least until [sic]
most of the ectoparasites have been killed by suffocation and at least some
of their eggs have been killed, which occurs within a period of time of less
than about 45 minutes.” Appealed dependent claims further limit the contact
time to “at least about 10 minutes” (claim 36), and “from about 10 minutes
to about 15 minutes” (claim 37). Claim 1 in the copending ‘372 application
defines a method comprising “B) leaving the composition in contact with the
skin and hair in the infected area until at least most of the ectoparasites,
nymphs and eggs have been killed.” Copending dependent claim 6 limits
the time to “from about 2 minutes to about 10 minutes.” Both sets of claims
define methods with contact times about 10 minutes, and they are therefore
not patentably distinct based on contact time, notwithstanding Appellant’s
distinction between the appealed claims’ reference to killing “some” eggs
and the copending claims’ reference to killing “most” eggs.

SUMMARY
We affirm the rejection of claims 33, 35-38, 40, 44-46, 49-51, 53, 58-
61, 64-67, 69-76, 78 and 80 under 35 U.S.C. § 102(e) as anticipated by
Gans;
Appeal 2010-003047
Application 10/382,188

22
we affirm the rejection of claims 33, 35-38, 40, 44-46, 49-51, 53, 58-
61, 64-67 and 69-81 under 35 U.S.C. § 103(a) as unpatentable over Lover,
Bessette, Cardin and Pearlman; and
we affirm the provisional rejection of claims 33, 35-38, 40, 44-46, 49-
51, 53, 58-61, 64-67 and 69-81 on the ground of nonstatutory obviousness-
type double patenting over claims 1-9, 11, 13, 15, 16, 18, 20, 22-26, 33-36,
45-53 and 55-63 of copending Application No. 10/519,372.

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

lp

HENRY E. MILLSON, JR.
675 GOLDEN HAWK DRIVE
PRESCOTT AZ 86301