Ex Parte Rosenberg

Board of Patent Appeals and Interferences

Nov 22, 2010

10182498 (B.P.A.I. Nov. 22, 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.
10/182,498 12/02/2002 Lior Rosenberg 501116.20503 1568
7590 11/22/2010
William H Dippert
Reed Smith
599 Lexington Avenue
New York, NY 10022-7650
EXAMINER
JACKSON, BRANDON LEE
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
11/22/2010 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 LIOR ROSENBERG
__________

Appeal 2009-015209
Application 10/182,498
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C. PRATS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a pad for
treating hemorrhoids. The Examiner has rejected the claims as obvious in

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015209
Application 10/182,498

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view of the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
Claims 1, 3-24, 26, 27, 20, and 30 are on appeal. Claim 1 is the only
independent claim and reads as follows:
1. Pad for the treatment of hemorrhoidal inflammatory afflictions,
which comprises:
an absorbing matrix;
a medicament that is a hypertonic substance;
a functional backing for directing and limiting the activity of the
medicament to a desired body surface; and
an impermeable bag containing the medicament and being configured
in a such a way so as to be ruptured when pressure is applied thereto
permitting the medicament to be absorbed into the matrix,
said pad being free from any supporting means that are attachable to
male genitalia.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1, 3-9, 11-14, 17-22, 24, 26, and 29 based on Sohn,2
Feeney,3 Konishi,4 and Biener5 (Answer 3);
• Claim 15 based on Sohn, Feeney, Konishi, Biener, and O’Connell6
(Answer 5);
• Claims 16 and 23 based on Sohn, Feeney, Konishi, Biener, and
Addison7 (Answer 5); and

2 Sohn et al., US 4,484,919, Nov. 27, 1984
3 Feeney, US 4,505,707, Mar. 19, 1985
4 Konishi US 4,858,604, Aug. 22, 1989
5 Biener, US 4,943,432, July 24, 1990
6 O’Connell, US 4,097,943, July 4, 1978
7 Addison, US 5,981,822, Nov. 9, 1999
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• Claim 30 based on Sohn, Feeney, Konishi, Biener, and Cartmell8
(Answer 6).
Each of the Examiner’s rejections is based on combining Sohn,
Feeney, Konishi, and Biener. The Examiner finds that Sohn teaches an
absorbent pad for treatment of hemorrhoids (Answer 3), Konishi teaches a
capsule of medicine used to impregnate a pad attached to a wound (id. at 4),
and “Biener teaches the use of an inorganic alkali-earth metal . . . as an anti-
inflammatory” (id.). The Examiner concludes that “[i]t would have been
obvious to one of ordinary skill in the art to use the anti-inflammatory of
[Biener] in the Sohn/Konishi device because the Biener solution reduces
itching and inflammation” (id.).
Appellant argues that the cited references would not suggest the
claimed invention because “Sohn discloses a rectal area dressing for
controlling discharge. . . . Konishi discloses delivering an active principle to
the body rather than withdrawing fluids from it as in the claimed invention.
And Biener refers to the treatment of skin diseases, whereas hemorrhoids are
neither a skin situation nor a disease.” (Appeal Br. 8.)
We agree with Appellant that the Examiner has not adequately
explained why a person of ordinary skill in the art would have been led to
combine the cited references. Sohn and Feeney both disclose sanitary
absorbent devices (Sohn, abstract; Feeney, abstract). Konishi discloses an
adhesive bandage that includes medicine that can be encapsulated in a
capsule and released when the bandage is applied (Konishi, col. 2, ll. 12-19).

8 Cartmell et al., US 5,695,456, Dec. 9, 1997
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Application 10/182,498

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Biener discloses a salt solution useful for treating psoriasis (Biener, col. 2, ll.
12-14) and certain other skin diseases (id. at col. 3, ll. 28-33).
The Examiner has not adequately explained the reasoning that would
have led a person of ordinary skill in the art to combine these teachings.
Although the Examiner finds that Sohn’s device is “for treatment of
hemorrhoids” (Answer 3), he cites no disclosure in the reference to support
that finding, which appears to be in error: the reference describes its device
as “a rectal area dressing. . . for use by incontinent persons” (Sohn, abstract),
rather than for treating hemorrhoids or any other condition. The Examiner
therefore has not provided evidence to support his conclusion that it would
have been obvious to use Sohn’s device to treat hemorrhoids.
The Examiner’s finding that “Biener teaches the use of an inorganic
alkali-earth metal . . . as an anti-inflammatory” (Answer 4) also appears to
be erroneous, as Appellant points out (Reply Br. 10). The Examiner has not
pointed to any part of Biener that describes its salt composition as “anti-
inflammatory,” or provided any other explanation of why a skilled worker
would have expected it to have anti-inflammatory activity based on Biener’s
disclosure.
Finally, although the Examiner interprets hemorrhoids to be a skin
disease (Answer 10, citing Stedman’s Medical Dictionary), Appellant has
provided a declaration of Dr. Shlomo Walfisch, which rebuts the Examiner’s
finding. Dr. Walfisch declares that he has expertise in the treatment of
hemorrhoids (Walfisch Declaration, ¶ 1) and that “hemorrhoids are not a
skin situation or disease” (id. at ¶ 4).
In our view, Dr. Walfisch’s testimony is entitled to greater weight on
this issue than the Examiner’s dictionary definition, since it comes from a
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Application 10/182,498

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person skilled in the relevant art and is addressed to the specific question of
whether hemorrhoids are considered in the art to be a skin disease. The
preponderance of the evidence of record therefore supports Appellant’s
position (Appeal Br. 11) that Biener’s disclosure of using certain salt
compositions to treat skin diseases would not have made it obvious to use
the same compositions to treat hemorrhoids.
SUMMARY
We reverse the rejection of claims 1, 3-24, 26, 27, 20, and 30 as
obvious based on Sohn, Feeney, Konishi, and Biener, by themselves or
further combined with O’Connell, Addison, or Cartmell.

REVERSED

lp

WILLIAM H DIPPERT
REED SMITH
599 LEXINGTON AVENUE
NEW YORK NY 10022-7650