Ex Parte Bernstein

Board of Patent Appeals and Interferences

Nov 18, 2010

12036901 (B.P.A.I. Nov. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOEL E. BERNSTEIN
__________

Appeal 2010-009998
Application 12/036,901
Technology Center 1600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of treating inflammatory acne vulgaris in patients having
inflammatory acne vulgaris lesions. The Patent Examiner rejected the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
Claims 1-3 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of treating inflammatory acne vulgaris in patients having
inflammatory acne vulgaris lesions the method consisting essentially of
administering a therapeutically effective amount of carbamide peroxide in a
vehicle suitable for topical application to the skin of a patient with such
lesions.

The Examiner rejected all of the claims under 35 U.S.C. §102(b) as
anticipated by Bernstein.2
Claims 2 and 3 have not been argued separately and therefore stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
ANTICIPATION
The Issue
The Examiner’s position is that Bernstein disclosed a method for
treating inflammatory lesions of acne vulgaris by administering carbamide
peroxide when both open and closed comedones are present on the subject.
(Ans. 3.) According to the Examiner, Bernstein also taught incorporating
carbamide peroxide ranging from 1-15% into solutions, lotions, creams,
gels, and ointments. (Id.) Therefore, according to the Examiner, Bernstein
anticipated the claimed invention. (Id.)
Appellant contends that Bernstein “does not teach or suggest use of
carbamide peroxide as the sole active ingredient to treat inflammatory acne

2 US Patent No. 4,607,101 issued to Joel. E. Bernstein, Aug. 19, 1986.
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vulgaris.” (App. Br. 3; Reply 3.) Appellant asserts that Bernstein only
disclosed treating non-inflammatory acne vulgaris, characterized by the
presence of comedones (blackheads or whiteheads), with carbamide
peroxide as the only active ingredient. (App. Br. 3, 5.) In support,
Appellant refers to Bernstein Examples 1-5 involving treatment of
comedones with carbamide peroxide as the only active ingredient, and
Bernstein claim 1 reciting a method of decreasing comedones of acne
vulgaris by administering carbamide peroxide. (App. Br. 3-4; Reply Br. 2-
3.)
According to Appellant, Bernstein’s Examples 6-11 and claim 6
distinguished the treatment of inflammatory acne vulgaris, characterized by
the presence of papules, pustules, and/or cysts, as comprising a combination
of carbamide peroxide and an additional active ingredient known to have
anti-inflammatory properties. (Id.) Appellant further asserts that a skilled
artisan who read Bernstein “would not be enabled to treat patients with
inflammatory acne vulgaris using carbamide peroxide alone.” (Reply Br. 3.)
The issue with respect to this rejection is whether Bernstein disclosed
a method of treating inflammatory acne vulgaris in patients having
inflammatory acne vulgaris lesions by administering carbamide peroxide
alone, i.e., not in combination with another active ingredient.
Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the content
of Bernstein’s disclosure. (See Ans. 3).
2. Bernstein stated that its invention provided “[a]n improved method of
treating acne vulgaris comprising administering a therapeutically effective
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amount of carbamide peroxide alone or in combination with one or more of
a topical antibiotic, nicotinic acid or nicotinamide….” (Bernstein Abstract.)
3. Bernstein described treating two young adults with carbamide
peroxide drops (Debrox® Drops) to cleanse their ears of earwax and “noted
that . . . some acne papules and pustules in front of the ears cleared rapidly,”
likely resulting from spillage of the carbamide peroxide out of the ear or
inadvertent application of the eardrops to these areas. (Id. at col. 1, ll. 39-
43.)
4. The Specification states that “[i]nflammatory acne vulgaris is
characterized by the presence of erythematous papules, pustules and cysts.”
(Spec. [0006].)
Principle of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Analysis
Bernstein expressly disclosed the effectiveness of carbamide peroxide
alone, i.e., not in combination with another active ingredient, to treat acne
vulgaris. (FF-1, 2.) More specifically, Bernstein expressly disclosed
discovering the effectiveness of carbamide peroxide alone to treat acne
vulgaris papules and pustules. (FF-3.) Appellant’s Specification and
arguments acknowledge that inflammatory acne vulgaris is characterized by
the presence of such acne papules and pustules. (FF-4, App. Br. 5, Reply
Br. 2.) Therefore, contrary to Appellant’s contention, we find that Bernstein
disclosed treating inflammatory acne vulgaris with carbamide peroxide as
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the sole active ingredient. This result is unchanged by reference to
Bernstein’s examples and claims that do not recite such use. (See App. Br.
3-4; Reply Br. 2-3.) As the Examiner explained (Ans. 4) the anticipation
rejection was based upon the prior art’s whole disclosure. See Verdegaal
Bros., 814 F.2d at 631.
Appellant asserts (Reply Br. 3) that a skilled artisan would not have
been enabled by Bernstein’s disclosure to treat inflammatory acne vulgaris
using carbamide peroxide as the only active ingredient. We are unpersuaded
because a skilled artisan would have evaluated the prior art disclosure as a
whole, rather than relying solely on the working examples or recited claims.
CONCLUSION OF LAW
Bernstein disclosed a method of treating inflammatory acne vulgaris
in patients having inflammatory acne vulgaris lesions by administering
carbamide peroxide alone, i.e., not in combination with another active
ingredient.
SUMMARY
We affirm the rejection of claims 1-3 under 35 U.S.C. §102(b) as
anticipated by Bernstein.

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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