Ex Parte Alberts

Patent Trial and Appeal Board

Dec 17, 2015

13019005 (P.T.A.B. Dec. 17, 2015)

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.
13/019,005 02/01/2011 David S. Alberts 3254-A-11 9595
77553 7590 12/17/2015
MARVIN A. GLAZER
2141 E. HIGHLAND AVE
SUITE 155
PHOENIX, AZ 85016
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
12/17/2015 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 DAVID S. ALBERTS1
____________

Appeal 2013-002062
Application 13/019,005
Technology Center 1600
____________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
method of enhancing production of vitamin D in a subject. The Examiner
rejects the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the Real Party in Interest is Topical Technologies,
Inc., of Tucson, Arizona. (App. Br. 2.)
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STATEMENT OF THE CASE
Claims 1–14 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows:
1. A method for enhancing production of Vitamin D within
a person’s skin while protecting the person from excessive
exposure to ultraviolet rays of the sun, the method comprising
the steps of:
a) administering Vitamin D to the person;
b) providing the person with an exposure indicator that
changes its state to indicate that the person has been exposed to
sunlight for a predetermined period of time;
c) securing the exposure indicator to the user’s person;
d) exposing the person’s skin and the exposure indicator
to direct sunlight;
e) monitoring the exposure indicator to determine if it has
changed state; and
f) applying sun screen to the person’s skin after the
indicator has changed state.
(App. Br. 14, Claims Appendix.)
Appellant requests review of the following grounds of rejection:
A. Claims 1–5 and 8–14 under 35 U.S.C. § 103(a) as unpatentable
over Funakoshi,2 Davis,3 and Vieth4;
B. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Funakoshi, Davis, and Vieth in view of Rolf5; and

2 Funakoshi et al., US 5,387,798, issued Feb. 7, 1995 (hereinafter
“Funakoshi”).
3 Davis et al., Measurement of Solar Ultraviolet Radiation at a Temperate
and a Tropical Site Using Polysulfone Film, 1 POLYMER DEGRADATION AND
STABILITY 121–132 (1979) (hereinafter “Davis”).
4 Vieth, US 5,532,229, issued July 2, 1996.
5 Rolf et al., US 2003/0152610 A1, published Aug. 14, 2003 (hereinafter
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C. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Funakoshi, Davis, and Vieth in view of Koltisko.6
Obviousness over Funakoshi, Davis, and Vieth
Since all three rejections rely upon the underlying teaching of
Funakoshi, Davis, and Vieth regarding the method of enhancing production
of vitamin D following the steps (a)-(e) as recited in claim 1, the same issue
is dispositive for all of these rejections, so we will consider the rejections
together.
Claim 1
Appellant contends that although Funakoshi discloses sunscreen
formulas, “Funakoshi does not disclose or suggest any schedule for applying
either type of sun protection formulation to a person’s skin relative to the
time when Funakoshi’s UV exposure indicators have changed their state.”
(App. Br. 6.) “Vieth instructs those skilled in the art that his dermal
application of vitamin D should be used in place of, and not in addition to,
UV exposure, so that the risks associated with UV exposure can be
avoided.” (Id. at 7.) Appellant contends that “applying sun screen [sic]
‘prior to or during exposure to UV’ does not make it obvious to defer the
application of sun screen [sic] until after the indicator has changed state.”
(Id. at. 9.)
The Examiner’s position is that Funakoshi teaches a sun exposure
sensor and two types of sunscreen. “[O]ne type [of sunscreen] being for
prevention of both suntan and sunburn, and the other type being for
obtaining an attractive suntan while preventing sunburn.” (Ans. 4.) The

“Rolf”).
6 Koltisko, US 5,256,417, issued Oct. 26, 1993.
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Examiner acknowledges that “[t]he reference fails to specifically teach
incorporating a sun exposure indicator, a sun protectant, and a source of
vitamin D in a kit.” (Id.) The Examiner relies on Davis to teach that UV
light from the sun is a requirement for the production of vitamin D in man,
however, too much exposure can lead to skin cancer. Thus, there is a
interest to measure solar UV and “[t]o meet this requirement electronic UV
sensors have been developed.” (Id.; see also Davis, 121–122.) The
Examiner relies on Vieth to teach “a nutritional supplement comprising
topical and oral administration of vitamin D.” (Ans. 4.) Vieth discloses the
addition of vitamin D or its precursors to topical sunblocking lotions (Vieth,
col. 2, ll. 46-52).
The Examiner concludes that based on the combination of Funakoshi,
Davis, and Vieth “[i]t would have been obvious to one of ordinary skill in
the art at the time of the invention to incorporate a sun exposure indicator, a
sun protectant, and a source of vitamin D in a kit.” (Ans. 4.) With respect to
the timing and order of the steps as recited in the claim, the Examiner
concludes that such “determination of optimal or workable time of the
applying vitamin D and sun exposure by routine experimentation is
obvious.” (Ans. 5, 11.) “[O]ptimization of a result effective parameter, e.g.
applying sun screen after a UV exposure indicator has changed state, is
considered within the skill of the artisan.” (Ans. 8.)
We agree with Appellant’s position that the claim and Specification
provide that a product containing vitamin D is given to the person (Reply Br.
2–3). Claim 1 recites “(a) administering Vitamin D to the person.” (App.
Br. 14; Claims Appendix.) Additionally, the Specification describes that
“administering Vitamin D preferably includes the step of applying Vitamin
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D topically to the person’s skin; alternatively, the Vitamin D may be
administered orally to the person.” (Spec. 5: 2–4.) The method of claim 1
lists six steps (a)-(e) of these steps (b)-(f) appear to require some type of
timing order while step (a) does not appear to have timing requirement and
could occur before or after any one of the other recited steps. Although we
find that the administration of vitamin is recited in the claim, the timing of
administering vitamin D, however, is not set forth in claim 1. “Unless the
steps of a method actually recite an order, the steps are not ordinarily
construed to require one.” Interactive Gift Express, Inc. v. Compuserve Inc.,
231 F.3d 859, 875 (Fed. Cir. 2000).
The Examiner relies on Vieth for teaching “a nutritional supplement
comprising topical and oral administration of vitamin D.” (Ans. 4; see
Vieth, Abstract.) Vieth teaches that “[v]itamin D is very sensitive to
sunlight since it is decomposed readily by ultraviolet light” but also teaches
that “vitamin D or its precursors have been added” to suntan lotions. (Vieth,
col. 2, ll. 35–48.) Even though sunlight may be detrimental for the stability
of vitamin D, a fair reading of Vieth is that the use of the topical application
by the incorporation into a sunscreen is not detrimental to this route of
application.
Funakoshi discloses a UV-A and UV-B discriminatory sensor.
(Funakoshi, Abstract.) Funakoshi attaches the sensor to a person for
example: by attaching the sensor to a necktie (Funakoshi, see Fig. 18) or
incorporating the sensor into a wristband of a watch (Funakoshi, see Fig. 21,
col. 7, ll. 19–21 (“sensor . . . has a thin film form and, moreover, may be
formed to any kind of article or building material”)). Funakoshi explains
that the sensor can be used to determine “a variety of factors, from the
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intensity ratio of UV-A and UV-B to the presence or absence of UV, may be
easily observed as a change in the color of the photochromic material.”
(Funakoshi, col. 7, ll. 28–31.) Funakoshi discusses that the sensor can
distinguish between UV-A and UV-B, and, based on the light
quantum of UV-A and UV-B, to precisely and correctly use, for
example, two types of sun protection formulations. Further,
because it is possible, even on a cloudy or rainy day, to know
the light quantum of UV-A and UV-B reaching the earth’s
surface, it becomes possible to take appropriate
countermeasures against sunburning.
(Funakoshi, col. 7, ll. 10–17; emphasis added.) Thus, Funakoshi discloses
using the change in the indicator as a signal to use countermeasures in order
to prevent sunburn. Here, the countermeasures are reasonably interpreted to
include the application of Funakoshi’s disclosed sunscreen, for example, a
sunscreen incorporating vitamin D as in Vieth. Additionally, in order to
prevent sunburn the indicator would have to change color before the person
is exposed to enough UV-B light that would cause sunburn.
In sum, Funakoshi discloses the claimed method steps (b)-(d) of
providing a person with an exposure indicator that changes its state based on
UV-A and UV-B exposure; securing the indicator to a person, in the form of
a tie or watch, exposing the persons skin and indicator to the sunlight and
monitoring the indicator to determine if it has changed state. Funakoshi
suggests then taking countermeasures such as applying a sunscreen or sun
protection formula. A known sunscreen formulation is one according to
Vieth containing vitamin D. Therefore, the cited prior art additionally
teaches claim steps (a) and (f). Nothing in the claim excludes that the
concurrent administration of vitamin D with the sunscreen.
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The preponderance of the evidence of record supports the Examiner’s
conclusion that the combination of Funakoshi, Davis, and Vieth renders
obvious the method steps recited in claim 1. We thus affirm the rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious, as claims 2, 4, 5–8, 10–
12, and 14 have not been argued separately they fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 3, 9, and 13
Appellant contends that any of claims 3, 9, and 13 requires either the
application or administration of vitamin D before the exposure to direct
sunlight. (See App. Br. 12.)
With respect to these claims we find that Appellant has the better
position. Vieth teaches that vitamin D can be added to sunblock, however,
the reference otherwise recognizes that vitamin D degrades rapidly when
exposed to sunlight. (See Vieth, col. 2, ll. 35–48.) UVB is identified in the
Specification to be required for the activation of vitamin D in the skin.
Additionally, the Specification provides that “a predetermined period of
time, correspond[s] approximately to the time required for the UVB rays of
the sun to activate Vitamin D in the skin.” (Spec. 6: 11–13.) Supplementing
Funakoshi’s sunblock with vitamin D, as suggested by the combination of
references, and applying this product prior to exposure of the skin to sunlight
would not activate vitamin D because the UVB rays are blocked by the
sunscreen. Thus, administering a UVB blocking sunblock containing
vitamin D would not allow for the requisite “exposure to sunlight for a
predetermined period of time.”
On the record before us, the Examiner has not sufficiently articulated
why based on the combination of references, equipped with the knowledge
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that vitamin D degrades upon UV exposure the ordinary artisan would have
administered a vitamin D product onto the skin before sun exposure.
Accordingly, we reverse the rejection of claims 3, 9, and 13.
Claims 10, 11, 12, and 14
Appellant contends that the references do not teach that the indicator
changes colors after “direct sunlight for a period ranging between
approximately 8 minutes and 16 minutes.” (App. Br. 13.)
We are not persuaded. With respect to the timing as recited in the
claims, we agree with the Examiner’s conclusion that “optimization of a
result effective parameter, e.g. applying sun screen [sic] after a UV exposure
indicator has changed state, is considered within the skill of the artisan.”
(Ans. 8.) Here, Funakoshi recognizes that sensors are to be used to prevent
sunburn (see Funakoshi col. 1–2, 7) and they determine “the presence or
absence and quantity of UV-A and UV-B, . . . [without requiring] special
expertise or special devices” (Funakoshi, col. 3, ll. 34–36 (emphasis added)).
Accordingly, we agree with the Examiner’s conclusion that based on the
teaching in Funakoshi, figuring out the timing that allows for the maximum
sun exposure without resulting in a burn would be within the skill of the
ordinary artisan. Accordingly, we affirm the obviousness rejection of claim
10, 11, 12, and 14.
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Funakoshi, Davis, and Vieth. Claims 2, 4, 5, 8, 10–12,
and 14 were not separately argued and fall with claim 1.
We reverse the rejection of claim 3, 9, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Funakoshi, Davis, and Vieth.
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As noted above, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Funakoshi, Davis, and Vieth. Claim 6, relying
on the additional reference of Rolf was not separately argued, nor was the
rejection of claim 7, relying on the additional reference of Koltisko. Thus,
we affirm the rejection of claims 6 and 7 for the same reasons we affirmed
the rejection of claim 1 over Funakoshi, Davis, and Vieth.

AFFIRMED-IN-PART

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