Ex Parte Arata

Patent Trial and Appeal Board

Jul 30, 2013

12340231 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDREW B. ARATA
__________

Appeal 2012-003081
Application 12/340,231
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of treating acne. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 7, 14, 21, 22 and 28 are on appeal. Claim 21 is
representative and reads as follows:
21. A method to treat acne which comprises topically applying an
acne treatment solution to the site of the acne, wherein said acne treatment
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solution comprises an antimicrobial amount of silver dihydrogen citrate and
citric acid,
wherein the silver dihydrogen citrate and citric acid are contained in a
cosmetic composition,
wherein the cosmetic composition is in the form of a lotion, an
emulsion, a gel or a paste.

Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103 as obvious in view of Arata,
1
Burrell
2
and either Silvetti
3
or Newman.
4

The Examiner finds that Arata discloses a “disinfectant solution formed by
electrolytically generating silver in a solution of citric acid and water, to
form an aqueous solution of silver citrate” (Answer 5), and its use on skin
wounds and lesions (id.). The Examiner finds that Appellants‟ Specification
provides evidence “the electrolytically generated silver citrate taught by
Arata includes silver dihydrogen citrate” (id.).
The Examiner acknowledges that Arata does not disclose the use of its
disinfectant to treat acne or a lotion, emulsion, gel, or paste composition
(id.). The Examiner finds that Newman discloses that “ionic silver
complexes, such as silver citrate, are used to treat acne” (id. at 6) and that
Burrell discloses gel, lotion, paste, or emulsion compositions containing
antimicrobial metals, including silver, for the treatment of acne (id.).
The Examiner concludes that it would have been obvious to use
Arata‟s composition “to treat acne because the use of a silver citrate

1
Arata, WO 99/18790, published Apr. 22, 1999.
2
Burrell et al., US 2002/0192298 A1, published Dec. 19, 2002.
3
Silvetti, Sr. et al., US 5,177,065, issued Jan. 5, 1993.
4
Newman et al., US 6,838,095 B2, issued Jan. 4, 2005.
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composition to treat acne is already known, as taught by Newman” (id. at 7).
The Examiner also concludes that it would have been obvious to formulate
the composition into “one of the forms taught by Burrell … because said
forms are fairly taught and suggested in the art for antimicrobial silver salts”
(id.).
Appellant contends that “the invention is directed to a new use for an
old composition, which old composition is that of the present inventor,
Arata” (Appeal Br. 4). Specifically, Appellant contends that although Arata
discloses a silver dihydrogen citrate solution for use as a disinfectant, it
would not have been obvious to use that solution for the treatment of acne
(id. at 5-7).
The issue presented is: Does the evidence of record support the
Examiner‟s conclusion that the cited references would have made obvious
the use of Arata‟s silver dihydrogen citrate solution for the treatment of
acne?
Findings of Fact
1. Arata discloses “an aqueous disinfectant solution having a stable
ionic form having an extended useful shelf-life” (Arata 7:11-12).
2. Arata discloses that the “disinfectant comprises an aqueous
solution of silver citrate wherein the silver is electrolytically generated in a
solution of citric acid and water. The electrolytically generated silver forms
an organic metal complex with the citric acid.” (Id. at 9:10-13.)
3. The Examiner finds that Arata‟s electrolytically generated
disinfectant comprises silver dihydrogen citrate (Answer 5). Appellant does
not dispute this finding.
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4. Arata discloses that its disinfectant can be used “as a prevention
against contamination by potentially pathogenic bacteria, virus and fungi.
The improved aqueous disinfectant is suitable for use on exposed surfaces.
In addition, the improved aqueous disinfectant is suitable for use on dermal
wound sites and lesions of living organisms such as animals and humans.”
(Arata 9:5-8.)
5. Arata discloses that the disinfectant “may be used on contaminated
open wounds and tissue, dermal wound sites and/or lesions of living
organisms such as animals and humans” (id. at 8:9-10).
6. Newman discloses a composition “containing a complex of citrate
and silver with potassium as a counter ion” (Newman, col. 5, ll. 24-26), that
“may be made by mixing silver oxide, citric acid and tripotassium citrate”
(id. at col. 5, ll. 30-32; col. 7, ll. 50-67 (Example 1)).
7. Newman discloses that a silver-containing solution according to its
invention was used to effectively treat a patient with acne (id. at col. 8, ll. 8-
15 (Example 3)).
8. Burrell discloses the use of an antimicrobial metal, most preferably
silver, for treating acne (Burrell, abstract).
9. Burrell discloses that its antimicrobial metal-containing
compositions can be formulated as gels (id. at 2, ¶ 30), “lotions, pastes …
[or] emulsions” (id. at 2, ¶ 0031).
Analysis
Claim 21 is directed to a method of treating acne by topically applying
a lotion, emulsion, gel or paste that contains a solution comprising an
antimicrobial amount of silver dihydrogen citrate and citric acid.
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The Examiner finds, and Appellant does not dispute, that Arata
discloses an antimicrobial solution comprising silver dihydrogen citrate and
citric acid, as recited in claim 21. Arata discloses that the disinfectant may
be used on dermal wound sites and lesions. Newman discloses that a
composition containing a complex of citrate and silver is effective in treating
acne. Burrell discloses that anti-microbial metals, and preferably silver, are
effective for treating acne and can be formulated as lotions, pastes, gels, or
emulsions.
In view of these disclosures, it would have been obvious for one of
ordinary skill in the art to treat acne with Arata‟s antimicrobial solution
because Arata discloses that the composition is suitable for topical use on
humans as an antimicrobial agent, and Newman discloses that a silver/citrate
complex is effective for treating acne. It would also have been obvious to
formulate the composition as a lotion, emulsion, gel, or paste, because
Burrell teaches such compositions, containing silver, for treating acne.
Appellant argues that Arata does not suggest treating acne with its
composition (Appeal Br. 4). Appellant argues that Arata discloses its
composition as having “antimicrobial activity against common pathogenic
bacteria such as Staphylococcus aureus, Salmonella choleraesuis, and
Pseudomonas aeruginosa, but provides absolutely no indication the solution
would have any effect against Propionibacterium acnes, the particular
bacteria known to contribute to acne” (Reply Br. 2).
This argument is not persuasive. Arata discloses that its composition
is effective against “potentially pathogenic bacteria and virus and [has]
antifungal properties” (Arata 7:17-18) and that it “may be used on exposed
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and/or contaminated surfaces to kill bacteria, virus, fungi and other micro-
organisms” (id. at 8:6-7). Thus, Arata describes its composition as a broadly
effective antimicrobial agent. In addition, Newman and Burrell both
disclose that silver-containing compositions are known for the treatment of
acne. Thus, those of skill in the art would have reasonably expected that
Arata‟s silver-containing composition would be effective to treat acne.
Appellant argues that “Newman is not only irrelevant, but essentially
teaches away from the present invention by requiring a counterion such as
potassium along with the silver citrate complex … so that a preferred
embodiment is silver/potassium monohydrogen citrate” (Appeal Br. 6).
Appellant argues that there “is nothing to tie Newman‟s compositions to
those of the present claims, since silver dihydrogen citrate is specifically
taught away from” (id.). Similarly, Appellant argues that, because Newman
describes “traditional silver citrate” rather than sodium dihydrogen citrate
(SDC) as in Arata, “there is no reason to believe that Arata‟s SDC solution
would release sufficient silver ions to have an effect against acne” (Reply
Br. 6).
This argument is also not persuasive. As discussed above, Arata
discloses that its composition is effective against a variety of
microorganisms; it would therefore have been expected to be effective
against the bacteria that cause acne. In addition to the passages cited above,
Arata states that the “prior art has demonstrated that the presence of copper
and silver ions in an aqueous solution is useful as a disinfectant” (Arata
1:8-9). Arata does not indicate that the specific counterions included to
neutralize the charge of the silver ion affects their antimicrobial effect.
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In addition, as recognized by the Examiner, “Newman specifically
teaches that it is the „source of silver ions‟ that is biologically active, and
responsible for the antimicrobial activity of its compositions … while the
counter ion is present only to balance the charge of the complexing agent”
(Answer 10). See Newman, col. 1, ll. 25-27 (“The most effective form of
silver for antimicrobial use is as ions in solution. Silver ions have been
shown in the past to have antibacterial, antiviral and antifungal qualities.”).
Appellant argues that the “appropriateness of lotions, pastes, gels and
emulsions in formulation [of Burrell‟s] nanocrystalline forms does not
suggest the appropriateness of these formulations for the disinfectant of
Arata” (Appeal Br. 6).
This argument is not persuasive. Burrell discloses formulating its
antimicrobial metal-containing composition as a lotion, paste, emulsion, or
gel for the treatment of acne, and states that these conventional forms can be
applied topically and permit even spreading (Burrell 9, ¶0133). A person of
ordinary skill in the art therefore would have considered it obvious to
formulate Arata‟s composition into one of the recited, conventional forms to
use it for the topical treatment of acne. Appellant has pointed to no
persuasive evidence to show that Arata‟s active agent would not have been
expected to be effective when so formulated.
Thus, we affirm the rejection of claim 21 as obvious in view of Arata,
Newman, and Burrell. Claims 1, 7, 14, 22 and 28 have not been argued
separately and therefore fall with claim 21. 37 C.F.R. § 41.37(c)(1)(iv).
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Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that the
cited references would have made obvious the use of Arata‟s silver
dihydrogen citrate solution for the treatment of acne.
SUMMARY
We affirm the rejection of claims 1, 7, 14, 21, 22, and 28 under 35
U.S.C. § 103.
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).

AFFIRMED

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