Ex Parte Kepka et al

Patent Trial and Appeal Board

Jun 11, 2013

12316009 (P.T.A.B. Jun. 11, 2013)

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.
12/316,009 12/09/2008 Stanley W. Kepka NMD-130-Con.1 1104
2387 7590 06/11/2013
Olson & Cepuritis, LTD.
20 NORTH WACKER DRIVE
36TH FLOOR
CHICAGO, IL 60606
EXAMINER
SZNAIDMAN, MARCOS L
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
06/11/2013 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 STANLEY W. KEPKA, Y. JOSEPH MO, HANG-YONG WANG,
MINGQI LU, and WILLIAM R. PFISTER
1

__________

Appeal 2012-001528
Application 12/316,009
Technology Center 1600
__________

Before ERIC GRIMES, JOHN G. NEW, and SHERIDAN K. SNEDDEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
antifungal nail coating, which have been rejected for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Appellants state that the Real Party in Interest is NexMed Holdings, Inc.
(Appeal Br. 1).
Appeal 2012-001528
Application 12/316,009

2
STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claim 1 is representative and reads as
follows:
1. An antifungal nail coat composition comprising:
a fungicidal amount of an allylamine;
a penetration enhancer capable of enhancing penetration of an
allylamine fungicide through the nail, the enhancer being selected from an
N,N-di(C1-C8) alkylamino substituted, (C4-C18) carboxylic ester or
pharmaceutically acceptable acid addition salt thereof;
a film-forming amount of a hydrophilic polymer; and
a pharmaceutically acceptable, volatile organic carrier,
the composition providing a substantially water-soluble,
fungicidal coating on contacting a fungally susceptible or infected nail.

As a result of an election of species requirement, examination has
been limited to the following species: terbinafine as the species of
allylamine, 2-dodecyl-2-(N,N-dimethylamino) isopropionate (DDAIP) as the
species of penetration enhancer, polyvinylpyrrolidone as the species of
hydrophilic polymer, and ethanol as the species of carrier (Answer 4-5).
Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Gyurik
2
and Fujii
3
(Answer 5). The Examiner
finds that Gyurik discloses an antifungal composition comprising an
antifungal agent, a permeation enhancer, a film-forming polymer, and a

2
Gyurik, WO 01/60325 A1, published Aug. 23, 2001.
3
Fujii et al., Enhancement of skin permeation of miconazole by phospholipid
and dodecyl 2-(N,N-dimethyl amino)propionate (DDAIP), 234
INTERNATIONAL JOURNAL OF PHARMACEUTICS 121-128 (2002).
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3
solvent (id.), and suggests each of the elected species except for DDAIP,
instead suggesting lipophilic enhancers like isopropyl myristate or myristil
myristate (id. at 5-6).
The Examiner finds that “Fujii teaches that DDAIP is a permeation
enhancer that can be used in formulations of antifungals like miconazole in
order to improve its solubility and hence its permeability” (id. at 6). The
Examiner concludes that it would have been obvious “to substitute one
functional equivalence (a permeation enhancer like for example: isopropyl
myristiate [sic] or myristil myristiate [sic]) for another (DDAIP) with an
expectation of success” (id.).
Appellants contend that the cited references do not provide a
reasonable basis for expecting that DDAIP would enhance permeation of
terbinafine through a nail, because Fujii discloses DDAIP as a skin
permeation enhancer and terbinafine differs in structure from the miconazole
used by Fujii (Appeal Br. 6-7 and 8-9). Appellants also contend that the
claimed compositions do not contain water and it would not have been
predictable to use DDAIP as a penetration enhancer in a non-aqueous
composition (id. at 7-8).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that it would have been obvious to use DDAIP as a
penetration enhancer in Gyurik’s composition with a reasonable expectation
of success?
Findings of Fact
1. The Examiner finds that Gyurik discloses an antifungal
composition comprising an antifungal agent, a membrane-compatible
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4
permeation enhancer, a polymeric film-forming agent, and a solvent
(Answer 5). Appellants do not dispute this finding.
2. The Examiner finds that Gyurik suggests terbinafine as the
antifungal agent (id.), polymers of vinyl pyrrolidone as the film-forming
agent (id. at 6), and ethanol as the solvent (id.). Appellants do not dispute
these findings.
3. Gyurik discloses that its composition comprises “a membrane-
compatible permeation enhancer which is capable of increasing the rate of
passage of the pharmaceutical compound through a nail and/or membrane,
that is, a layer of body tissue, for example, skin” (Gyurik 7:4-7).
4. Gyurik discloses that “[p]referred membrane-compatible enhancers
are lipophilic enhancers. . . . Examples of such lipophilic enhancers include
alkylesters, for example, isopropyl myristate and myristyl myristate.” (Id. at
7:20-24.)
5. Fujii discloses that dodecyl 2-(N,N-dimethyl amino)propionate
(DDAIP) is a skin permeation enhancer that has been reported to
“improve[ ] the permeation of several anti-inflammatory drugs, as well as
clonidine, hydrocortisone, etc.” (Fujii 122, left col.).
6. Fujii discloses that “[m]iconazole (MCZ) has very low solubility in
both water and oil” and low skin permeation rates from either an aqueous
suspension or a mineral oil suspension (id. at 121, abstract).
7. Fujii discloses that a “gel formulation with mineral oil and
phospholipid improved the permeation of MCZ by supersaturation of MCZ
in the gel. DDAIP enhanced the permeation of MCZ about ten times.” (Id.
at 127, right col.).
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8. Fujii discloses that “[w]hen DDAIP (5%) was included in the gel,
the permeation rate was seven times that of an aqueous suspension” (id. at
128, left col.).
Analysis
There is no dispute that Gyurik suggests a composition comprising
each of the elected species except DDAIP. The dispositive question is
whether a skilled worker would have considered it obvious, based on Fujii,
to use DDAIP as a penetration enhancer in Gyurik’s composition.
Gyurik discloses that penetration enhancers suitable for use in its
composition are “capable of increasing the rate of passage of the
pharmaceutical compound through a nail and/or membrane, that is, a layer
of body tissue, for example, skin” (FF 3, emphasis added). Fujii discloses
that DDAIP was a known skin permeation enhancer that “improved the
permeation of several anti-inflammatory drugs, as well as clonidine,
hydrocortisone, etc.” (FF 5). Fujii also discloses that DDAIP improves the
skin permeation of miconazole by seven to ten times (FFs 7, 8).
Based on these teachings, it would have been obvious to a person of
ordinary skill in the art to use DDAIP as the penetration enhancer in
Gyurik’s composition, because Gyurik expressly suggests using a skin
penetration enhancer and DDAIP was known to enhance the skin permeation
of several different drugs, including the antifungal agent miconazole.
Appellants argue that Fujii “says nothing whatsoever about enhancing
nail penetration” (Appeal Br. 6), and that “[m]iconazole, an imidazole
antifungal agent, also is structurally very different from an allylamine
antifungal agent, such as terbinafine” (id. at 7). Appellants conclude that it
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has not been shown that “one of ordinary skill would have expected DDAIP
to perform effectively as a nail permeation enhancer for terbinafine on the
basis of knowledge that DDAIP enhances, under some conditions, and to a
varying degree, skin penetration of miconazole, a compound having an
entirely different structure” (id. at 8-9).
These arguments are not persuasive. As discussed above, Gyurik
expressly suggests using a skin penetration enhancer in its composition.
Fujii discloses that DDAIP is a known skin permeation enhancer, and
enhances permeation of the antifungal agent miconazole, as well as several
other drugs. These disclosures provide a basis for a reasonable expectation
of success in combining DDAIP with Gyurik’s composition.
The fact that claim 1 requires “a penetration enhancer capable of
enhancing penetration of an allylamine fungicide through the nail” (claim 1),
does not change this conclusion. The Specification states that DDAIP is a
particularly preferred penetration enhancer (Spec. 5:7-8), and in fact
characterizes it as a “particularly preferred skin permeation enhancer” (id. at
15:6, emphasis added).
In any event, the prior art provides a reason to combine DDAIP with
the other components recited in claim 1. The fact that the prior art’s reason
for combining may not be the same as Appellants’ does not make the
claimed composition nonobvious. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419-20 (2007) (“In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem known in the
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field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”).
Appellants have not provided evidence or sound technical reasoning
to show that the difference in structure between miconazole and terbinafine
would have been expected to significantly affect the degree to which DDAIP
acts as a skin permeation enhancer. Notably, Fujii discloses that DDAIP
enhances permeation of several drugs, all of which have different chemical
structures. A skilled worker would therefore reasonably expect that it would
enhance permeation of terbinafine as well.
Appellants also argue that the “compositions defined by the claims on
appeal do not contain water” (Appeal Br. 7) and “[n]one of the cited
references provide any useful insight for the capability of N,N-di(C1-C8)
alkylamino substituted, (C4-C18) alkyl (C2-C18) carboxylic ester materials to
enhance penetration of allylamine antifungal agents through the nail using a
non-aqueous composition” (id. at 8).
This argument is also unpersuasive. Claim 1 uses the transition term
“comprising” and is therefore open to other, unlisted components, including
water. The claimed composition is not necessarily non-aqueous, and the
issue of whether a person of ordinary skill in the art would have expected
DDAIP to enhance penetration from a non-aqueous composition is not
germane to the obviousness of the claimed composition.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that it
would have been obvious to use DDAIP as a penetration enhancer in
Gyurik’s composition with a reasonable expectation of success.
Appeal 2012-001528
Application 12/316,009

8
Claims 2-20 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the rejection of claims 1-20 under 35 U.S.C. § 103(a) based
on Gyurik and Fujii.
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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