Ex Parte AkridgeDownload PDFPatent Trial and Appeal BoardMar 7, 201611531488 (P.T.A.B. Mar. 7, 2016) Copy Citation 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). Appeal 2013-010561 Application 11/531,488 2 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). Appeal 2013-010561 Application 11/531,488 3 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. Appeal 2013-010561 Application 11/531,488 4 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 Appeal 2013-010561 Application 11/531,488 5 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) Appeal 2013-010561 Application 11/531,488 6 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 Copy with citationCopy as parenthetical citation