Ex Parte Grassauer et al

Patent Trial and Appeal Board

Aug 1, 2016

12376419 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/376,419 0210412009
32425 7590 08/03/2016
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Andreas Grassauer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SONN:l47US/10900368 6433
EXAMINER
CRAIGO, BAHAR ALA WI
ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
08/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS GRAS SAUER and EV A PRIECHL 1
Appeal2014-004494
Application 12/376,419
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JOHN G. NEW, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a type I
allergy treatment method. 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 13, 19, and 21-30 are on appeal (App. Br. 1). The claims
subject to each rejection have not been argued separately and therefore stand
or fall together. 37 C.F.R. § 41.37(c)(l)(iv). Claim 13 is representative and
reads as follows:
1 Appellants identify the real party in interest as Marinomed Biotechnologie
GMBH (App. Br. 1 ).
Appeal2014-004494
Application 12/376,419
13. A method of treating a type I allergy comprising:
obtaining a pharmaceutical preparation comprising escin; and
administering the preparation to a subject;
wherein a type I allergy is treated in the subject.
Claim 19 depends from claim 13 and recites that the type I allergy is, among
other things, allergic rhinitis (App. Br. 7).
Claims 13, 19, 21-25, and 27-30 stand rejected under 35 U.S.C.
§ 103(a) as obvious Regoeczy2 (as evidenced by an "English abstract from
CAPlus, and raw machine translation") in view of van Cauwenberge3
(Ans. 3).
Claims 13, 19, and 21-30 stand rejected under 35 U.S.C. § 103(a) as
obvious Regoeczy in view of van Cauwenberge and Beutler4 (Ans. 6).
The Examiner relies on Regoeczy for teaching "administering a
composition comprising escin to treat rhinitis" (id. at 3). However, the
Examiner finds that "Regoeczy does not expressly disclose treating allergic
rhinitis" (id.).
The Examiner relies on van Cauwenberge for teaching "allergic
rhinitis can be treated by administering a decongestant, i.e. a
vasoconstrictor" (id.). The Examiner concludes that "[i]t would have been
obvious at the time the invention was made to administer escin to treat
allergic rhinitis" (id.).
2 Regoczy, DE 3,402,259 Al, published Aug. 1, 1985.
3 P. van Cauwenberge et al., Consensus Statement on the Treatment of
Allergic Rhinitis, 55 Allergy 116-134 (2000).
4 Beutler et al., EP 1,676,561 A2, published July 5, 2006.
2
Appeal2014-004494
Application 12/376,419
ISSUE
With regard to both grounds of rejection, the following issue is
dispositive: Does the evidence support the Examiner's conclusion that
Regoeczy and van Cauwenberge suggest the method of claim 13?
ANALYSIS
The Examiner provided evidence indicating that Regoeczy discloses
that a mixture of reduced ergot alkaloids, together with rutin, escin, or horse
chestnut extract, is useful for the treatment of rhinitis (Ans. 3, citing
Regoeczy Abstract & Translation). In addition, van Cauwenberge discloses
that allergic rhinitis can be treated by a decongestant (van Cauwenberge 116
& 122). We conclude that it would have been prima facie obvious to use
Regoeczy' s composition to treat allergic rhinitis.
Appellants argue:
A proper translation ... shows that Regoezcy [sic] does not teach
that escin is effective in the treatment of infectious germs,
bacteria, and viruses. Instead, Regoeczy teaches the use of the
three DH-Ergo-compounds ... in a composition for the treatment
of infectious germs, bacteria, and viruses . . . . The composition
can be combined with either Rutin . . . or escin . . . . Thus,
Regoezcy [sic] does not teach that escin is effective in the
treatment of infectious germs, bacteria, and viruses, but rather
that it is an optional alternative additive useful in some
compositions.
(App. Br. 2-3.) We are not persuaded.
As noted by the Examiner (Ans. 9), claim 13 recites "a pharma-
ceutical preparation comprising escin" (App. Br. 7). We agree with the
Examiner that Regoeczy suggests administering a pharmaceutical
preparation comprising escin to treat rhinitis (Ans. 9).
3
Appeal2014-004494
Application 12/376,419
Appellants also argue:
[I]t is clear that a composition containing the three DH-Ergo-
compounds that is combined with Rutin ... is said to be effective
in the treatment of rhinitis ... , leading to a flow of secretes from
the nose. Thus, contrary to the assertions in the Action,
Regoezcy [sic] does not teach or suggest the use of escin to treat
any form of rhinitis.
(App. Br. 3.) We are not persuaded.
According to the translation provided by the Examiner, Regoeczy
discloses:
At first symptoms of a common cold one takes preferably a
mixture consisting of the above-mentioned three DH Ergo
compounds ... , including an amount of ... rutoside.
30 minutes after ingestion of this product, there is a massive
secretion of the nasal mucosa . . . . In many cases, it was
confirmed that after a further 10 - 15 minutes the rhinitis ceases
altogether. All symptoms disappear ....
(Regoeczy Translation 111111-12.) Even if we agree with Appellants that
this teaching specifically relates to a composition containing DH Ergo
compounds and rutin, the translation clearly indicates that escin can be used
instead of rutin (id. i-f 8). Thus, we conclude that it would have been obvious
to use a compositing comprising escin to treat rhinitis.
In addition, Appellants argue that Regoeczy "does not teach or
suggest the ability of escin to act as a decongestant" (App. Br. 3). Instead,
Appellants argue that "Regoeczy teaches that the administration of the
composition causes 'massive secretion' ... which is the opposite effect of a
decongestant" (id.). We are not persuaded.
Van Cauwenberge discloses that "decongestant (or vasoconstrictor)
drugs affect the sympathetic tone regulation of blood vessels by acting on
4
Appeal2014-004494
Application 12/376,419
adrenergic receptors and provoking vasoconstriction" (van Cauwenberge
122). However, even if we assume that escin (or even Regoeczy's
composition comprising escin) would not have been considered a
decongestant, as this term is used in van Cauwenberge, we conclude that the
teaching in Regoeczy of treating the symptoms of rhinitis, together with the
teaching of allergic rhinitis in van Cauwenberge, is sufficient to support a
prima facie case that it would have been obvious to treat the symptoms of
allergic rhinitis with Regoeczy' s composition comprising escin.
Appellants also argue:
Van Cauwenberge discloses that many decongestants have
unwanted side effects and should not be used . . . . Therefore,
one cannot automatically conclude that any decongestant would
be suitable as a medicament. This is particularly true in the case
of escin. Escin is a saponin, which is a class of compounds which
has detergent, soap-like activity. Detergents are usually
excluded from use on the nasal mucosa, and it simply could not
be expected that the use of escin \vould have any positive effects
in the treatment of allergic rhinitis.
(App. Br. 3--4.) We are not persuaded.
Van Cauwenberge discloses that "[p ]rolonged use ( > 10 days) of
topical vasoconstrictors may lead to tachyphylaxis, rebound swelling of the
nasal mucosa, and 'drug-induced rhinitis' (rhinitis medicamentosa)" (van
Cauwenberge 122). However, we do not agree that van Cauwenberge
teaches away from using decongestants, much less from the use of escin,
which is specifically taught in Regoeczy.
In addition, Appellants argue that "Beutler does not remedy the
failures ofRegoeczy and[ ]Van Cauwenberge" (App. Br. 4 (emphasis
omitted)). However, having found no deficiency in Regoeczy and van
5
Appeal2014-004494
Application 12/376,419
Cauwenberge with respect to representative claim 13, we are not persuaded
by this argument.
CONCLUSION
The evidence support the Examiner's conclusion that Regoeczy and
van Cauwenberge suggest the method of representative claim 13. We
therefore affirm the obviousness rejections of record.
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
6