Ex Parte Akridge

Patent Trial and Appeal Board

Mar 7, 2016

11531488 (P.T.A.B. Mar. 7, 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.
11/531,488 09/13/2006 Robert E. Akridge 1120-18 1294
30621 7590 03/07/2016
JENSEN + PUNTIGAM, P.S.
2033 6th Ave, Suite 1020
SEATTLE, WA 98121
EXAMINER
CORNET, JEAN P
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
03/07/2016 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 ROBERT E. AKRIDGE
__________

Appeal 2013-010561
Application 11/531,488
Technology Center 1600
__________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a kit for
treatment of hair loss. The Examiner finally rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellant identifies the Real Party in Interest as L’Oreal, Inc.
(see App. Br. 3).
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Statement of the Case
Background
“In the United States, approximately 35 million men younger than 50
have discernable hair loss” (Spec. 1, ll. 13–16). “Since hair loss does have a
significant negative effect on many individuals and since the problem is
quite widespread, it would be desirable to have a treatment which is
effective in preventing hair loss or stimulating regrowth” (Spec. 1, ll. 32–
37).
The Claims
Claims 12–14, 24 and 25 are on appeal.2 Independent claim 12 is
representative and reads as follows:
12. A kit for treatment of hair loss and/or potential hair
loss, comprising:
a power skin brush;
an amount of acidic shampoo, which when applied to
the scalp of the user by action of the skin brush results in
cleaning of the scalp and the hair follicles sufficient to
permit the absorption of an effective amount of anti-viral
medication; and
an effective amount of an antiviral medication which
is applied to the scalp sufficient to suppress viral replication
or viral activation intrinsically present in certain nerves of
the scalp which lead to hair loss.

The Issue
The Examiner rejected claims 12–14, 24, and 25 under 35 U.S.C.
§ 103(a) over Murad3 and Abura4 (Ans. 5–7).

2 Claims 1–11 and 15–23 were withdrawn from consideration (see
Non-final Action 3/17/2010).
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The issue presented is: Does the evidence of record support the
Examiner’s conclusion that Murad and Abura suggest the kit required by
claim 12?
Findings of fact
1. Murad teaches “a pharmaceutical composition for treating,
preventing, or managing a dermatological condition selected from the group
consisting of . . . a hair condition . . . comprising . . . one or more
dermatological agents selected from an antimicrobial agent in an amount
sufficient to inhibit microorganisms on the scalp [or] hair” (Murad ¶ 32).
2. Murad teaches that “the antimicrobial agent [is] selected from
an . . . antiviral . . . In another preferred embodiment, the antiviral is selected
from acyclovir” (Murad ¶ 35).
3. Murad teaches that the “the dermatological agent further
includes an exfoliant . . . The exfoliant may be an . . . acidic exfoliant”
(Murad ¶¶ 58–59).
4. Murad teaches that “[t]he term ‘hair conditions,’ as used herein,
means conditions . . . including . . . thinning of hair” (Murad ¶ 46).
5. Murad teaches that the “antimicrobial agent inhibits the
formation of, and may further reduce the presence of, microbes that cause
redness, inflammation, and irritation of the skin, scalp, or nails” (Murad
¶ 68).
6. Murad teaches that “1 to 2 unit doses of the present invention
are typically administered per day . . . Desirably, each unit dose, e.g., gel,

3 Murad, US 2003/0007939 A1, published Jan. 9, 2003.
4 Abura et al., US 4,203,431, issued May 20, 1980.
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cream, or ointment, contains from about 1 mg to 2,000 mg of the active
ingredient . . . Suitable dosage forms include . . . shampoos” (Murad ¶¶ 106–
107).
7. The Specification teaches that
for initial suppression, as an example, Acyclovir can be
taken at 400 milligrams three times a day for five days, 200
milligrams five times a day for five days, or 800 milligrams
twice a day for five days. . . . For suppressive therapy to
prevent hair loss, possible effective protocols include
Acyclovir for 400 milligrams twice a day

(Spec. 7, ll. 21–30).
8. Abura teaches a power skin brush (see, e.g., Abura, col. 2, ll.
48–68).
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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 5–7; FF 1–8) and agree that the
claims are rendered obvious by Murad and Abura. We address Appellant’s
arguments below.
Appellant contends that “[n]othing in Murad indicates any
understanding of the role of viruses in the nerves in the scalp relative to hair
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loss. This discovery is discussed in some detail in the specification. The
discovery led to the subject matter forth in independent claim 1” (Br. 9).
We do not find this argument persuasive because a “mere statement of
a new use for an otherwise old or obvious composition cannot render a claim
to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328 (CCPA
1969). That is, even if Appellant has discovered a new use for an antiviral
medication regarding hair loss, that new use does not render the product
claims patentable.5 In this case, Murad reasonably suggests treatment of
thinning hair with the antiviral acyclovir with acid exfoliants and shampoos
(FF 1–6).
Appellant contends that: “the limitation of ‘an effective amount’ was
not given any patentable weight. . . The key difference between applicant’s
claimed invention and Murad is the limitation to an effective amount of an
antiviral medication to suppress the presence of virus on certain selected
nerves of the scalp” (Br. 10).
We are not persuaded. Murad teaches the use of “an antimicrobial
agent in an amount sufficient to inhibit microorganisms on the scalp [or]
hair” (FF 1). Also, Murad teaches specific effective dosages of
antimicrobial agents (FF 6) that overlap with the dosages recited in
Appellant’s own specification (FF 7). See In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight overlap in range

5 We also note that it “is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the process
again patentable.” In re Woodruff, 919 F.2d 1575, 1577–78 (Fed.
Cir. 1990)
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establishes a prima facie case of obviousness.”) Appellant has not
established that the claimed amounts are any different from those described
and suggested in the cited prior art. The Examiner further correctly stated
that the “mechanism [of action] does not have a bearing on the patentability
of the invention if the invention is already known or obvious” (Ans. 9). Mere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention. In re Wiseman, 596 F.2d 1019, 1023 (CCPA
1979).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Murad and Abura suggest the kit required by claim 12.

SUMMARY
We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Murad and Abura. Claims 13, 14, 24, and 25 fall with claim
12. 37 C.F.R. § 41.37(c)(1)(iv).

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