Ex Parte Wang

Board of Patent Appeals and Interferences

Mar 22, 2011

10496561 (B.P.A.I. Mar. 22, 2011)

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.
10/496,561 05/21/2004 Wei Wang W477.312-0001 7532
164 7590 03/22/2011
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
CHONG, YONG SOO
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
03/22/2011 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 WEI WANG
__________

Appeal 2010-007233
Application 10/496,561
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to
antiviral and antibacterial pharmaceutical compositions comprising

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 2010-007233
Application 10/496,561

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cantharidic anhydride. The Patent Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Claims 1-5, 10, 14, and 18 are on appeal. Claim 1 is representative
and reads as follows:
1. An antiviral and antibacterial pharmaceutical composition comprising
cantharidic anhydride as the effective ingredient and a pharmaceutically
acceptable vehicle or excipient,
wherein the cantharidic anhydride is dissolved in essential oils or a
single constituent of essential oils at 40 - 160°C to form a cantharidic
anhydride-essential oils preparation,
wherein the essential oils are selected from the group consisting of
ethereal oil, volatile oil and aromatic oil,
and the cantharidic anhydride is dissolved in a range of 0.05% - 0.7%
by weight based on a total weight of the cantharidic anhydride-essential oils
preparation.

(Paragraphing added, see 37 CFR §1.75(i).)

The Examiner rejected claims 1-5, 10, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Weber2 and Schmolka.3

OBVIOUSNESS
The Issue
The Examiner’s position is that Weber disclosed a pharmaceutical
composition for treating warts with tazarotene that may be formulated as an
oily gel or solution and may contain adjuvants such as gelling agents,

2 US Patent No. 6,114,348 issued to Paul J. Weber et al., Sep. 5, 2000.
3 US Patent No. 4,678,664 issued to Irving R. Schmolka, Jul. 7, 1987.

Appeal 2010-007233
Application 10/496,561

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solvents, and fillers. (Ans. 4.) The Examiner also found that Weber
disclosed adding essential oils to the composition for extra moisturizing or
skin softening benefits. (Id.) However, the Examiner found that Weber did
not disclose cantharidic anhydride. (Id.)
The Examiner found that Schmolka disclosed a wart-treating gel
composition comprising cantharidin. (Id.) The Examiner found that
Schmolka disclosed preparing the composition by dissolving polymers in
water at 60-80 °C to form a homogeneous solution. (Id.) Additionally, the
Examiner found that Schmolka Example 12 disclosed a gel composition
comprising cantharidin in an amount of 1.8 parts (i.e., percent) by weight.
(Id.)
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to combine the
composition disclosed in Weber with the composition disclosed by
Schmolka because both references disclosed compositions useful to treat
warts, and for the additive therapeutic effect of the combination. (Id. at 6.)
According to the Examiner, it would have been obvious to optimize the
amount of cantharidin to the claimed range of 0.05-0.7% by weight because
the general range for the cantharidin was disclosed in the art and there is no
evidence that the claimed range was critical. (Id. at 4.)
With respect to the claim recitation of dissolving cantharidic
anhydride in the essential oil at 40-160 °C, the Examiner found that the prior
art met the limitation because both Weber and Schmolka taught that their
compositions were prepared as homogeneous solutions, and Schmolka
further taught a heating step to fully dissolve all of its components. (Id. at
5.) The Examiner determined that it would have been obvious to a skilled
Appeal 2010-007233
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artisan at the time of the invention to prepare a fully homogeneous solution,
even if heating was necessary to dissolve all the components of the
composition. (Id.)
Appellant contends that the combination of Weber and Schmolka “do
not teach a composition wherein cantharidic anhydride is dissolved … in
essential oils or a single constituent of essential oils at a range of 0.05%-
0.7% by weight….” (App. Br. 5.) In particular, Appellant asserts that
Schmolka stated that cantharidin is suspended in the gel matrix of its
exemplary formulation. (Id. at 6.) According to Appellant, the combination
of Weber and Schmolka therefore would have resulted “in a composition in
which cantharidin is suspended [in a gel matrix] (not dissolved) and
essentials oils would function only as a skin softener.” (Id. at 6.)
Additionally, Appellant asserts that the Examiner did not articulate
reasoning with some rational underpinning explaining why a person of
ordinary skill in the art would have combined Schmolka and Weber “in the
way the claimed invention does (i.e., to dissolve a high concentration of
cantharidic anhydride)” absent impermissible hindsight. (App. Br. 7; Reply
Br. 3.)
The issue with respect to this rejection is whether the record supports
the Examiner’s finding that the cited references suggested dissolving the
cantharidic anhydride in essential oils, as instantly claimed.

Findings of Fact
1. Schmolka stated that “cantharidin is suspended in the gel matrix” of
its exemplary gel composition formulation. (Schmolka col. 7, ll. 1-5.)

Appeal 2010-007233
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Principles of Law
“The presence or absence of a motivation to combine references . . .
is a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). A conclusion that the claimed subject matter is prima facie obvious
must be supported by evidence, as shown by some objective teaching in the
prior art or by knowledge generally available to one of ordinary skill in the
art that would have led that individual to combine the relevant teachings of
the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074 (Fed. Cir. 1988).

Analysis
We agree with Appellant that the combination of Weber and
Schmolka does not “teach a composition wherein cantharidic anhydride is
dissolved … in essential oils or a single constituent of essential oils at a
range of 0.05%-0.7% by weight….” (App. Br. 5.) While the Examiner
correctly found that Schmolka disclosed a composition comprising a
homogeneous gel, this disclosure does not suggest that the cantharidin is
dissolved in the gel, much less in an added essential oil, as required by the
instant claims. Indeed, as Appellant correctly asserted (see id. at 6)
Schmolka explicitly stated that “cantharidin is suspended in the gel matrix”
of its exemplary formulation (FF 1, emphasis added). Consequently, we
find that the Examiner has not supported the obviousness rejection with the
required evidence. See Fine, 837 F.2d at 1074.
Accordingly, we reverse the obviousness rejection.

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CONCLUSION OF LAW
The record does not support the Examiner’s finding that the references
suggested dissolving the cantharidic anhydride in essential oils, as instantly
claimed.
SUMMARY
We reverse the rejection of claims 1-5, 10, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Weber and Schmolka.

REVERSED

alw

KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002