Ex Parte Schwartz et alDownload PDFPatent Trial and Appeal BoardSep 22, 201610392104 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/392,104 03/18/2003 27752 7590 09/26/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR James R. Schwartz 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 8901M& 8698 EXAMINER KANTAMNENI, SHOBHA ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES R. SCHWARTZ, GEORGE POLSON, PATRICIA A. TURLEY, JOHN D. NELSON, DAVID F. GAVIN, KATHERINE P. ROBERTS, CARL HINZ MARGRAF III, DAVID JOSEPH KAUFMAN, and RANDALL GLENN MARSH 1 Appeal2014-002817 Application 10/392, 104 Technology Center 1600 Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and RICHARD J. SMITH, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to a method of delivering zinc to eukaryotic cells. The Examiner rejects claims 2--4, 6-8, 21-22, 29-31, and 36-37 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is The Procter & Gamble Company of Cincinnati, Ohio. (Br. 1.) Appeal2014-002817 Application 10/392, 104 STATEMENT OF THE CASE Claims 2--4, 6-8, 21, 22, 29-31, 36, and 37 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. 2 Claim 2 is representative of the claims on appeal, and reads as follows (formatting added): 2. A method for delivering excess zinc to eukaryotic cells of skin or scalp to inhibit the metabolism of the cells, the method comprising treating the cells with a composition comprising a zinc ionophoric material being zinc pyrithione that is capable of delivering a zinc ion across a cellular membrane, and a zinc-containing layered material other than zinc pyrithione, wherein the zinc-containing layered material is selected from the group consisting of zinc carbonate hydroxide, basic zinc carbonate, zinc copper carbonate, copper zinc carbonate hydroxide, phyllosilicate containing zinc ions, layered double hydroxide, hydroxy double salts and mixtures thereof, said zinc-containing layered material being present in a concentration of 5 ppm or less, said method providing increased antifungal activity with at least a 50% reduction in the amount of zinc ionophoric material necessary to inhibit cell growth, as compared to treatment in the absence of the zinc-containing layered material. Appellants request review of the Examiner's rejection of claims 2--4, 6-8, 21, 22, 29-31, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over Gavin3 in view of Ramachandra. 4 2 Claim 1 has been cancelled and claims 12-16 and 23-28 have been withdrawn (see Br. 1 ). 3 Gavin et al., WO 01/00151 Al, published Jan. 4, 2001 ("Gavin"). 4 Ramachandra et al., WO 96/25913, published Aug. 29, 1996 ("Ramachandra"). 2 Appeal2014-002817 Application 10/392, 104 As Appellants do not argue the claims separately, we focus our analysis on claim 2, and claims 3, 4, 6-8, 21, 22, 29-31, 36, and 37 stand or fall with that claim. 37 C.F.R. § 41.37 (c)(l)(iv). Obviousness over Gavin and Ramachandra The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that the combination of references renders obvious a zinc containing layered material at a concentration of less than 5ppm as claimed? Findings of Fact We adopt the Examiner's findings concerning the scope and content of the prior art as set forth in the Final Action5 and Answer. For emphasis only we highlight the following: FF 1. Ramachandra teaches "[ z ]inc hydroxycarbonate is ... an antimicrobial compound, ... [and] in the presence of a surfactant such as soap and/ or synthetic detergent shows a synergistic enhancement of the antimicrobial effect" (Ramachandra 2: 19-26; Final Act. 3). FF2. Ramachandra teaches "[ s ]ynergistic action of zinc hydroxycarbonate with detergent and/or antidandruff actives like zinc pyrithione [(ZPT)] in shampoos/hair dressings" (Ramachandra 8: 1-3; Final Act. 3). FF3. Gavin teaches that "[z]inc and copper pyrithione are especially useful as anti-microbial agents in personal care compositions. Zinc pyrithione is known as an anti-dandruff component in shampoos" (Gavin 2:3--4). 5 Office Action mailed Feb. 1, 2013. 3 Appeal2014-002817 Application 10/392,104 FF4. Gavin teaches "that antidandruff etlicacy can be dramatically increased in topical compositions by the use of ... zinc pyrithione, in combination with a metal ion source such as copper and zinc salts" (Gavin 3:7-10). Gavin teaches that zinc salts "include zinc acetate, zinc oxide, zinc carbonate, zinc hydroxide, zinc chloride, [ect.]" (Gavin 6: 1-2; Final Act. 2-3). FF5. Gavin teaches that the concentration of zinc pyrithione and zinc salts is each present ranging in a concentration form about 0.001 % to about 10% by weight (Gavin 3, Summary of Invention). "The metal ion source is present in the composition at a ratio to polyvalent metal salt of pyrithione of from about 5: 100 to about 5: 1; preferably from about 2:10 to about 3:1; more preferably from about 1:2 to 2:1." (Gavin 6:17-19). FF6. Table 1 of Gavin reproduced below shows that the inclusion of Zn(2+) or Cu(2+) ion reduces the concentration of ZPT needed to achieve minimal inhibitory concentration (MIC). i-------~.._.._.._.._ ______________________ _ I f\.-UC: {ppm of mem1 ion) * MlC.;:n"' 8pprn Table 1, reproduced above shows that the addition of metal ions [including Zn(2+ )] served to potentiate the ZPT, thereby achieving MIC with sub-MIC levels of ZPT. For instance, it is shown that a combination of 4ppm ZPT with less than 0.005ppm of copper ions achieved the MIC. However, 4 Appeal2014-002817 Application 10/392, 104 neither 4ppm of ZPT or 0.005ppm of copper ion would achieve the MIC level alone (Gavin 52:10-14; see also Final Act. 3 ("using ZPT alone, it requires 8 ppm to inhibit fungal growth, whereas when ZPT is used in combination with 5 ppm of zinc ion, only 4 ppm ZPT achieved the MIC i.e[.,] Gavin discloses that the amount of ZPT can be reduced by employing zinc ion source")). Principle of Law "In considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made." In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). Analysis After considering the evidence and the arguments, we conclude the weight of the evidence favors the Examiner's conclusion of obviousness. Accordingly, we adopt the Examiner's reasoning (see Grounds of Rejection, Final Act. 2-5), and agree that the Examiner properly found Appellants' arguments unpersuasive (see Response to Argument, Ans. 3-11 and Final Act. 5-11 ). We provide the following points for emphasis. Appellants contend that the references do not recite all the elements as claimed. Specifically, that Gavin "does not specifically teach the concentration of zinc containing material as 5ppm or less, as required in the instant invention" (Br. 7). We are not persuaded. As pointed out by the Examiner that "it has been well established that consideration of a reference is not limited to the preferred embodiments or working examples, but extends to the entire disclosure for what it fairly teaches" citing among others In re Lamberti, 545 5 Appeal2014-002817 Application 10/392, 104 F.2d 747, 750 (CCPA 1976). The Examiner explains that Gavin discloses the use and application of a much broader concentration of metal ions than the 10 ppm to 100,000 ppm taught in the preferred embodiments (see Final Act. 10; FF4). Specifically, the Examiner finds Gavin teaches that the amount of ZPT can be reduced by employing metal ion sources zinc salts such as zinc acetate, zinc oxide, zinc carbonate, zinc hydroxide, zinc chloride etc. or copper salts, and provides an example with 4 ppm of ZPT. For, example Gavin teaches that one can employ 4 ppm of ZPT, and 5 ppm of zinc ion source or <0.005 ppm of copper ion source i.e Gavin provides examples with different amounts of metal ion source such as <0,005 ppm copper ion source outside of 10 ppm to 100,000 ppm of a metal ion source. (Final Act. 10; see FF3-FF6). We agree with the Examiner's finding that Gavin recognized that metal ion concentration of Cu2+ or Zn2+ in combination with ZPT as being a result effective variable that may be adjusted to within the claimed range of in order to achieve optimal levels of MIC. See Irz re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (overlap of prior art range with claimed range "provides sufficient motivation to optimize the ranges"); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art"); In re Aller, 220 F.2d 454, 456 (CCPA 1965) ("Normally, it is to be expected that a change ... in concentration ... would be an unpatentable modification .... it is not inventive to discover the optimum or workable ranges by routine experimentation"). Appellants acknowledge that Ramachandra "provides a single reference to a combination of zinc hydroxycarbonate with zinc pyrithione as providing a synergistic effect," but contend that Ramachandra does not 6 Appeal2014-002817 Application 10/392, 104 otherwise exemplify nor recognize the effect of zinc hydroxycarbonate on the microbial cell wall (Br. 6). Appellants contend that in light of Ramachandra's teaching "one skilled in the art would not rely on additional components such zinc salts to enhance the zinc hydroxycarbonate-surfactant synergistic combination" (Br. 6). We are not persuaded. As explained by the Examiner, the reason to modify or combine the references does not have to be the same as the one suggested by the inventor, see MPEP § 2144 citing among others In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (Final Act. 6). Here, the Examiner's reason for combining the references was not the effect on the microbial cell wall but for the purpose of teaching that zinc hydroxycarbonate [discussed in Ramachandra] has antimicrobial activity and is useful in antidandruff preparation, and not for the amount of zinc source . . . . [T]hat zinc containing layered material such as Zinc hydroxycarbonate gives synergistic action with detergent and/or antidandr11ff actives like zinc pyrithione \'l1hen employed in antidandruff preparation (Final Act. 7; Ans. 5). We agree with the Examiner that based on the combination of references "one of ordinary skill in the art would have reasonably expected that zinc containing layered material such as zinc carbonate hydroxide would have achieved [the] same or substantially similar equivalent effects as zinc oxide or zinc chloride in antidandruff compositions" in addition to their action as antimicrobials (Final Act. 7; Ans. 5). Here, the evidence is sufficient to establish that there are two different reasons for modify the references: (1) is for the purpose of producing an antimicrobial composition (FF1-FF3, FF6), and (2) is for the purpose of producing an antidandruff composition (see FF2 and FF4). Thus, 7 Appeal2014-002817 Application 10/392, 104 Appellants argument that Ramachandra does not recognize the effect of zinc hydroxycarbonate on the microbial cell wall is not persuasive because the Examiner's finding that references can be combined for other reasons is sufficient to establish a prima facie case of obviousness. We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 2, and Appellants have not provided sufficient rebuttal evidence or evidence of secondary considerations that outweighs the evidence supporting the prima facie case. SUMMARY We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) over Gavin and Ramachandra. Claims 3, 4, 6-8, 21, 22, 29-31, 36, and 37 were not separately argued and fall with claim 2. 37 C.F.R. § 41.37 (c)(l)(iv). 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)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation