Ex Parte Schierstedt

Patent Trial and Appeal Board

Dec 19, 2016

13817539 (P.T.A.B. Dec. 19, 2016)

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.
13/817,539 02/19/2013 Detlef Schierstedt 5610 3220
22474 7590 12/21/2016
P1e.me.nts RemarH Walker PT T P
EXAMINER
4500 Cameron Valley Parkway
Suite 350
ALAWADI, SARAH
Charlotte, NC 28211 ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patlaw @ worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF SCHIERSTEDT1
Appeal 2015-004923
Application 13/817,539
Technology Center 1600
Before ULRIKE W. JENKS, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
medicinal product. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is the inventor Detlef
Schierstedt. (Appeal Br. 1.)
Appeal 2015-004923
Application 13/817,539
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—3, 5, 8, 11, 12, and 15 are on appeal.2 (Claims Appendix,
Appeal Br. 8—9.) Claim 1 is illustrative and reads as follows:
1. A sympathomimetic-free medicinal product for treating irritations
of the nasal mucosa by a cold, by hay fever, a dry nose and/or
sympathomimetic dependence in the form of drops, sprays, or rinses
characterized by comprising either a) mint oil and camphor, or b) menthol,
mint oil, and camphor with a) and b) also including: i) at least one humectant
comprising water-soluble or water-dispersible natural or synthetic polymers
that form gels or viscous solutions in aqueous systems, said at least one
humectant present in said sympathomimetic-free medicinal product an
amount of from 0.1 to 5% by weight, ii) essential oils, and iii) pH control
agents and/or tonicizing agents.
Examiner’s Rejection
Claims 1—3, 5, 8, 11, 12, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Friedlaender3 and Zellner.4 (Ans. 2.)
FINDINGS OF FACT
We adopt as our own the Examiner’s findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
2 Claims 9—10 and 13—14 are withdrawn from consideration as being drawn
to non-elected inventions. (Final Act. 2, dated March 11, 2014.) Claims 4,
6, and 7 are cancelled pursuant to an amendment entered by the Advisory
Action dated July 25, 2014, at 2.
3 Friedlaender et al., US 2008/0145459 Al, published June 19, 2008
(“Friedlaender”).
4 Zellner, US 6,528,081, issued Mar. 4, 2003 (“Zellner”).
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Appeal 2015-004923
Application 13/817,539
FF 1. Friedlaender teaches a method for treating epiphora (excessive
tearing or watering of the eyes), most commonly caused by nasal congestion,
by administering a composition to the nasal cavity, such as by a nasal spray.
(Friedlaender Abstract; H 5, 7, and 75.)
FF 2. The Examiner finds that Friedlaender’s composition is a
medicinal product in accordance with the limitations of claims 1 and 3, but
does not expressly teach that the nasal spray comprises mint oil. (Final Act.
7—8, citing Friedlaender Abstract; || 5—8, 10, 12—17, 35, 39, 55—57, 61—63,
and 75.)
FF 3. The Examiner finds that the Friedlaender composition “can be
in spray form and can comprise camphor, eucalyptus oil (essential oil), and
menthol.” (Id. at 7, citing Friedlaender Abstract; || 7, 12—15, 35, 39, 63,
and 75.)
FF 4. The Examiner finds that Friedlaender teaches that its
composition “can comprise up to 2% lipids in addition to the already present
eucalyptus oil.” (Final Act. 7, citing Friedlaender | 52.)
FF 5. The Examiner finds that Zellner teaches a nasal spray solution
that can “contain essential oils including mint oil, eucalyptus oil, and
camphor oil. . . [t]he mint oil provides for an antiseptic and refreshing
effect, and stimulates concentration.” (Final Act. 8, citing Zellner Abstract;
col. 2,11. 20-58.)
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Appeal 2015-004923
Application 13/817,539
ISSUE
Whether a preponderance of evidence of record supports the
Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a).
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 Inti Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[W]hen a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” Id. at 417.
ANALYSIS
We adopt the Examiner’s findings and agree with the Examiner’s
conclusion that claims 1—3, 5, 8, 11, 12, and 15 would have been obvious to
a person of ordinary skill in the art at the time of the invention. (Final Act.
7—13; Adv. Act. dated June 30, 2014; Adv. Act. dated July 25, 2014; Ans.
3—16.) Appellant’s arguments are addressed below. Our consideration of
the rejection is limited to separately argued claims 1 and 3.
Claim 1
Appellant argues that Friedlaender is “directed to the treatment of
epiphora” and that “[t]he solution to swelling of the mucous membranes of
the nose and dry nose, is not a treatment for epiphora.” (Appeal Br. 6.)
Appellant also argues that a person of ordinary skill “would not look to the
treatment of epiphora as it is not in the relevant field,” and thus would not
consider the Friedlaender reference or the combination of Friedlaender and
Zellner. (Id. at 6—7.)
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Appeal 2015-004923
Application 13/817,539
Appellant argues further that Friedlaender teaches away “from
employing any other essential oils other than eucalyptus oil.” {Id. at 7,
citing Friedlaender Abstract; || 10, 19—22, and 26.) In particular, Appellant
argues that the treatment for epiphora, as taught by Friedlaender, is
substantially free of lipids and “a lipid is light oil — such as mint oil.”
(Appeal Br. 7.) According to Appellant, one of skill in the art would avoid
mint oil and therefore not consider the combination of Friedlaender in view
of Zellner. {Id., citing Friedlaender || 36 and 37.)
We are not persuaded by Appellant’s arguments, and address each
below.
Intended Use
Appellant argues that “[e]ven though the method of administering
treatment by Friedlaender [] is via the nose, the medical condition is not the
same nor is it related. The solution to swelling of the mucous membranes of
the nose and dry nose, is not a treatment for epiphora.” (Appeal Br. 6.)
We are not persuaded. Appellant’s claim 1 is directed to a
composition “for treating irritations of the nasal mucosa,” not a method of
treatment. (Appeal Br. 8.) Moreover, the preamble language of claim 1
merely states a purpose or intended use of the composition, and is not a
claim limitation. (Ans. 3^4); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997); see also Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002) (“[T]he patentability of apparatus or composition
claims depends on the claimed structure, not on the use or purpose of that
structure.”).
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Appeal 2015-004923
Application 13/817,539
Relevance of Friedlaender
Appellant argues that “a person of ordinary skill in the art would not
look to the treatment of epiphora as it is not in the relevant field.” (Appeal
Br. 6.) We understand Appellant’s argument to be that Friedlaender is non-
analogous art, but we are not persuaded.
It is well settled that “[tjjwo separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 201 l)(citing In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). Here, Friedlaender is in the same field of
endeavor as Appellant; namely, compositions to alleviate nasal congestion5
by administration of the composition to nasal passages via a nasal spray.
(Ans. 7—9; FF 1 4.) For the same reason, Friedlaender is also reasonably
pertinent to the problem addressed by Appellant’s claimed invention.
Teaching Away
Appellant argues that Friedlaender “teach[es] away from employing
any other essential oils other than eucalyptus oil. . . . More specifically a
lipid is a light oil — such as mint oil.” (Appeal Br. 7.) Appellant asks,
“[w]hen the treatment for epiphora is substantially free of lipids other than
eucalyptus oil, and the reasoning (why one of ordinary skill in the art would
5 The Specification states that “[i]n common cold [], hay fever, ... or dry
nose, the nasal mucosa is subject to swelling.” (Spec. 1,12.)
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Appeal 2015-004923
Application 13/817,539
avoid mint oil) is clearly explained in [Friedlaender], why would one seek to
combine these references?” (Id.)
We are not persuaded. Friedlaender teaches that “substantially free”
does not mean no other lipids; rather, lipids other than eucalyptus oil may be
present up to about 2% by weight of the composition. (Ans. 14—15; FF 4.)
Here, claim 1 does not recite an amount of any lipid, such as (apparently)
mint oil.6 7(Appeal Br. 8.) Moreover, Friedlaender does not teach away
because it does not criticize, discredit, or otherwise discourage the claimed
invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As for the combination of Friedlaender and Zellner, we are persuaded
by the Examiner’s conclusion that:
One of ordinary skill in the art would have been motivated to
[incorporate the mint oil of Zellner into the nasal spray
composition of Friedlaender] to provide antiseptic properties to
the nasal spray of Friedlaender with the additional benefit of
stimulating concentration. There would have been a reasonable
expectation of success as [Friedlaender] teach[es] that additional
lipids other than eucalyptus oil can be incorporated into the
composition up to 2% by weight. . . and both [Friedlaender and
Zellner] teach nasal spray compositions which comprise
eucalyptus oil in combination with camphor.
(Final Act. 9.)
Accordingly, for the reasons of record and the reasons set forth above,
we affirm the rejection of claim 1 for obviousness.
6 We acknowledge Appellant’s statement in the Reply Brief that “mint oil is
not a lipid.” (Reply Br. 1.) However, this appears to be contrary to
Appellant’s statement that “lipid is a light oil — such as mint oil.” (Appeal
Br. 7.) In any event, if mint oil is not a lipid, it would not be subject to the
lipid percentages taught by Friedlaender. (See Friedlaender H 13 and 52.)
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Claim 3
Claim 3 is dependent on claim 1 and further recites that the medicinal
product is “characterized by further containing panthenol.” (Appeal Br. 8.)
Appellant argues that “[tjhere is no disclosure in Friedlaender [] or Zellner
for panthenol” and therefore “no proper rejection against claim 3 can be
made by the combination of these references under 35 U.S.C. § 103.” (Id.)
We are not persuaded. As pointed out by the Examiner,
Friedlaender’s composition “can comprise D-panthenol.” (Final Act. 7,
citing Friedlaender | 55.) Accordingly, for this reason, and for the reasons
of record and as set forth above, we affirm the rejection of claim 3 for
obviousness.
CONCLUSION OF LAW
A preponderance of evidence of record supports the Examiner’s
conclusion that claims 1 and 3 are obvious under 35 U.S.C. § 103(a).
Claims 2, 5, 8, 11, 12, and 15 were not separately argued and fall with claim
1.
SUMMARY
We affirm the rejection of all claims on appeal.
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
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