Paul Sutich

Patent Trials and Appeals Board

Dec 30, 2020

2020003173 (P.T.A.B. Dec. 30, 2020)

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.
15/976,346 05/10/2018 Paul Sutich 6954B 7667
44386 7590 12/30/2020
CHARLES I. BRODSKY
2 BUCKS LANE
MARLBORO, NJ 07746
EXAMINER
FAY, ZOHREH A
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
12/30/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL SUTICH
Appeal 2020-003173
Application 15/976,346
Technology Center 1600
Before JOHN G. NEW, TAWEN CHANG, and RACHEL H. TOWNSEND,
Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. (See Final Action 1.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Paul Sutich.
(Appeal Br. 1.)
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Application 15/976,346

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STATEMENT OF THE CASE
Appellant’s Specification states that:
Rosacea is a very common red, acne-like benign skin condition
that affects approximately 45 million people worldwide. Its main
symptoms include red or pink facial skin, small dilated blood
vessels, small red bumps sometimes containing pus, cysts, and
pink or irritated eyes.
(Spec. 1.) Appellant’s Specification notes that “many treatment choices are
available depending on the severity and extent of symptoms” including
topical medications. (Id. at 2.) Appellant’s invention is directed at using a
composition that includes zinc pyrithione to treat redness (i.e., skin
erythema) in those having rosacea. (Spec. 3.)
Claims 1–18 are on appeal. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method of treating skin erythema resulting from facial
Rosacea in ·a subject comprising the step of topically
administering to the face of said subject a fluid composition
consisting of an inactive moisturizer carrier and a single active
component, wherein the single active component consists of an
aqueous solution of about 20% to about 30% of the fluid
composition by volume and the inactive moisturizer carrier
comprises the remainder of the fluid composition by volume,
wherein said aqueous solution in the fluid composition includes
pyrithione zinc of 1% to 4% concentration strength, and wherein
said pyrithione zinc is the sole active ingredient in said aqueous
solution and of the fluid composition.
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Application 15/976,346

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kaufman US 6,017,562 Jan. 25, 2000
Blomberg US 8,673,328 B2 Mar. 18, 2014
Kunin US 2008/0194662 A1 Aug. 14, 2008

REJECTIONS
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 2, 9, and 11 are rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Kunin. (Final Action 3.)
Claims 3–8, 10, 12–16, 17, and 18 are rejected under 35 U.S.C. § 103
as being unpatentable over Kunin, Blomberg, and Kaufman. (Final Action
4.)
DISCUSSION
Anticipation
Appellant argues the rejection of claims 1, 2, 9, and 11 as a group.
We focus our analysis on representative claim 1. The Examiner finds that
Kunin teaches application of zinc pyrithione in a composition that includes
water and emulsifiers and emollients that is in the form of a cream, gel,
lotion or ointment. (Final Action 4.)
We agree that Kunin anticipates claim 1. Kunin teaches a skin
composition that provides a “significant and unexpected reduction of
irritation, inflammation, dryness and/or redness, all symptoms of certain
dermatological disorders, when applied topically applied to an affected
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area.” (Kunin ¶¶ 8, 9, claim 30.) Included in the list of such dermatological
disorders is rosacea (see id. at abstr., claim 19). Kunin teaches that
“Rosacea is a common skin condition characterized by redness of the face
and acne.” (Id. ¶ 3.) The composition includes from about 0.01% to 20%
zinc pyrithione and six other ingredients including water. (Id. at abstr.,
¶ 16.) The ingredients are (1) sodium laureth sulfate (“SLS”), which is a
detergent and surfactant (Kunin ¶ 10), (2) cocamidopropyl betaine, which is
a zwitterionic surfactant (id. ¶ 12), (3) glycerol cocoate, which is a nonionic
surfactant (id. ¶ 13), (4) polyquaternium 7, which is a polymer that
neutralizes negative charge (id. ¶ 14), (5) cross-linked polyacrylic acid
polymer, which is an emulsion stabilizer (id. ¶ 15).
Appellant does not dispute that Kunin teaches application of the
disclosed composition to the face of someone that has rosacea. (See Appeal
Br. 5 (“Kunin’s cleanser composition is intended for use to deal with such
skin diseases as . . . rosacea.”).) Instead, Appellant argues that Kunin does
not teach the use of a composition with a “single, sole active ingredient in
the fluid composition” with the “specified volumetric ratios and
concentrations strengths of the treating composition.” (Id. at 11.)
Appellant acknowledges that Kunin teaches including zinc pyrithione
in the described composition at from about 0.01 percent to 20 percent. (Id.
at 8.) However, Appellant argues that Kunin’s composition does not have
one active in its “skin cleansing composition,” but specifically identifies that
it has six active ingredients in water. (Appeal Br. 6–7). We do not find this
argument persuasive of error in the rejection of claim 1.
That Kunin identifies certain ingredients of the composition as
“active” is of little importance as it relates to the claimed invention for the
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reasons discussed below. Appellant’s claimed composition that is to be
applied to the face requires pyrithione zinc and a “moisturizer carrier” that is
said to be “inactive” and that makes up 70 to 80% by volume of the fluid
composition that includes the pyrithione zinc. Claim 2 indicates that such an
“inactive moisturizer carrier” can take on a variety of forms, e.g., lotions,
creams, foams, emulsions. Neither claim 1 nor claim 2 specifies any
particular components that are considered to be within the scope of an
inactive moisturizer carrier. However, we note that the claim language
suggests that having moisturizing activity and ingredients that provide for a
particular viscosity of a cream or lotion form, as well as ingredients that
would provide for emulsion form or foam form, are within that scope.
That conclusion is supported by Appellant’s Specification. The
Specification explains that “acceptable inactive carriers” “are those suitable
for topical applications for the skin, [that] will not cause any safety or
toxicity concerns, and will be compatible with the pyrithione zinc aqueous
solution.” (Spec. 5.) Appellant’s Specification further indicates that the
carrier is not limited to a single ingredient. In particular, the Specification
indicates that the fluid composition can be supplemented with “known
inactive bases such as excipients, binders, lubricants and disintegrants -- or
with selected oily materials or emulsifying agents” and make up “about
70% to about 80% volume” of the fluid composition that is the inactive
moisturizer carrier. (Id.) The ingredients, besides the pyrithione zinc that
Kunin describes as “active” ingredients are excipients or emulsifying agents.
Thus, despite the fact that Kunin denotes these ingredients as being “active,”
they meet the criteria for being considered “inactive carrier” components
required by the claim.
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Moreover, to the extent that “active” is deemed to relate to reducing
erythema, i.e., reddening of the skin, and “inactive” means the ingredient has
a different effect than on the reduction of reddening of the skin, there is
nothing in Kunin to suggest that those ingredients it denotes as “actives”
besides pyrithione zinc are “active” because they reduce redness, rather than,
for example, providing for reduction of irritation, inflammation, and/or
dryness (Kunin ¶ 9) of the affected area to which the composition is applied.
Kunin indicates that sodium laureth sulfate is a detergent/surfactant known
to take moisture from the top layer of skin and its use may cause flare ups on
those with sensitive skin. The betaine ingredient is known to be used in
cosmetics “to reduce irritation that purely ionic surfactants may cause.”
(Kunin ¶ 12.) Kunin explains that glycerol “functions as a water-soluble
emollient,” i.e., a moisturizing ingredient. (Id. ¶ 13.) Cross-linked
polyacrylic acid polymers are known as “emulsion stabilizer[s]” and
“viscosity increasing agent[s].” (Id. ¶ 15.) Thus, Kunin provides evidence
that these ingredients act as a detergent and/or provide reduction of
irritation, inflammation, and dryness. As for the polyquaternium-7, Kunin
notes that this component is known to “neutralize the negative charges of
most shampoos and hair proteins.” (Id. ¶ 14.) There is nothing to suggest
that it is “active” in reducing redness. Thus, for this additional reason,
despite the fact that Kunin denotes these ingredients as being “active,” there
is no evidence to support finding them to be “active” in the sense of the
property that Appellant’s claim requires of the “active.”
Appellant further argues that because Kunin lists 7 different ailments
that the composition can be used to treat and indicates three different
percentage ranges at which the zinc pyrithione may be used, that Kunin does
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not expressly or inherently disclose the use of “a Pyrithione Zinc aqueous
solution of about 20% to about 30% by volume of the fluid composition.”
(Appeal Br. 8–9.) We do not find this argument persuasive. That Kunin
does not include a specific example showing such a treatment (Appeal Br.
11) does not establish lack of anticipation. “It is well settled that a prior art
reference is relevant for all that it teaches to those of ordinary skill in the
art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). Kunin’s disclosure
expressly teaches that .01% to 20% zinc pyrithione in the composition that
includes about .01–80% water and the five other ingredients discussed above
is suitable to be used to treat each one of the 7 different skin disorders noted.
(Kunin ¶¶ 9, 16, claims 1, and 19.) That teaching, i.e. that zinc pyrithione
may be present at 20%, is sufficient to describe a composition that includes
the claimed requirement of 20–30% of the fluid composition being
pyrithione zinc in an aqueous solution.
To the extent Appellant argues that Kunin does not anticipate claim 1
because it does not teach (a) how long the composition has to remain on the
affected area or (b) that rosacea is a condition that could be mild, moderate
or virulent (Appeal Br. 5), we do not find these arguments persuasive. We
note that claim 1 does not include a time period for which the composition
must be applied to the face. All that is required is that the treatment method
includes a step of topical application of the claimed composition to the
affected area. This is taught by Kunin. (See, e.g., Kunin ¶ 3 (describing
Rosacea as skin condition characterized by redness of the face); claims 19
(teaching the use of the composition to treat skin disorders including
rosacea), 30 (teaching a method of treatment includes applying the
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composition to the affected skin area).)2 And the fact that rosacea could be
mild, moderate, or severe is simply irrelevant to the method recited by claim
1,3 which does not require a patient population having a particular intensity
of rosacea and which encompasses topically applying a composition
containing 20%–30% of an aqueous solution that includes pyrithione zinc of
1% concentration strength.

Obviousness
Appellant argues that “no matter what Blomberg or Kaufman et al.
relate to, or disclose, neither alone or in combination . . . cure the infirmities
of Kunin” discussed above. (Appeal Br. 13.) As we noted above, we do not

2 Claims 7 and 18 are the only claims that have a time limit associated with
the application; in particular, that claim indicates that the composition is
rinsed from the face area after about 2–3 minutes. The Examiner rejected
these claims as being obvious from the prior art, noting that “[t]o leave a
dermatological composition on the skin in order to obtain the desired effect
is considered to be within the skill of the artisan.” (Final Action 4–5.)

3 “[T]he Board [has] reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellant has not explained why the teachings of Kunin do not meet the
requirement of claims 9 and 11 that the concentration strength of the
pyrithione zinc is increased from 1% to 4%. We note, further, that these
claims do not require topically administering a 4% concentration strengh
composition to a patient. These claims merely require that the composition
be prepared for treating a patient where Rosacea results from increasing
virulent forms of facial Rosacea, and unlike claim 1 does not require the
modified formulation to be applied; thus we do not see how the claims
further limit the method of treatment recited in claim 1.
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find Appellant’s arguments as to why Kunin does not anticipate claim 1
persuasive. Because we do not find the Examiner’s anticipation rejection to
be lacking in the respects indicated by the Appellant, we consequently
affirm the Examiner’s rejection of claims 3–8, 10, and 12–18 as being
obvious from Kunin, Blomberg, and Kaufman.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 9, 11 102 Kunin 1, 2, 9, 11
3–8, 10, 12–
18
103 Kunin, Blomberg,
Kaufman
3–8, 10, 12–
18

Overall
Outcome
1–18

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED