Ex Parte Lombardo et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11705753 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VINCENZO MASSIMO LOMBARDO,
ALBERTO ANTONIO MOLINARI,
and RUGGERO FERRAIOLO
__________

Appeal 2011-007832
Application 11/705,753
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-5. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appeal 2011-007832
Application 11/705,753

2
STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An antiphlogistic and analgesic composition for use in a region of an
animal locomotive system comprising as active ingredients a non-steroidal,
anti-inflammatory agent and hyaluronic acid and arnica mixed in a product
adapted to vehiculate the active ingredients, wherein the composition is a
mixture of a salt of hyaluronic acid, an arnica glycolic extract, and a
hydrogel-soluble, non-steroidal anti-inflammatory agent and hydrogel as
vehicle of the active ingredients.

The following grounds of rejection are before us for review:
I. Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Archer
1
and Brown ‟984
2

(Ans. 3). As Appellants do not argue the claims separately, we
focus our analysis on claim 1, and claim 3 stands or falls with that
claim. 37 C.F.R. § 41.37(c)(1)(vii).
II. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Archer, Brown ‟984, and
Brown ‟332.
3
As Appellants do not argue the claims separately,
we focus our analysis on claim 1, and claims 2-5 stand or fall with
that claim.

We affirm.

1
Archer et al., US 5,976,547, issued Nov. 2, 1999.
2
Brown, US 5,888,984, issued Mar. 30, 1999.
3
Brown et al., US 2003/0175332 A1, published Sep. 18, 2003.
Appeal 2011-007832
Application 11/705,753

3
FINDINGS OF FACT
FF1. We adopt the Examiner‟s findings and conclusions as our own.

ANALYSIS
Appellants argue that “truly related prior art” was not used by the
Examiner, asserting that the Examiner used “non-analogous art . . . to assert
obviousness” (App. Br. 7). Appellants point out the differences between
claim 1 of Archer and appealed claim 1, arguing that Archer claims
percentages of components other than arnica, which are not required by the
present invention (id. at 10-11; see also Reply Br. 2-3).
Appellants argue as to Brown ‟984 that the reference “is only
technological background where hyaluronic acid is mixed with essential oils
and clearly does not teach the present invention” (App. Br. 12).
In determining whether a reference is non-analogous art, we first
decide whether the reference is in the inventor‟s field on endeavor, and if
not, determine whether the reference is reasonably pertinent to the particular
problem with which the inventor was involved. In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In this case, we find that each of Archer, Brown
‟984, and Brown ‟332 is in the inventor‟s field of endeavor, that is, treatment
preparations. Appellants appear to be defining analogous art as something
that anticipates the claimed composition, which we decline to do.
We agree with the Examiner that it would have been obvious to
combine Brown ‟984, which teaches a composition of hyaluronic acid and
essential oils, in an aqueous base with Archer, which teaches a composition
of arnica and essential oils, although in a organogel, to arrive at the claimed
Appeal 2011-007832
Application 11/705,753

4
composition of a salt of hyaluronic acid, arnica, and a hydrogel-soluble, non-
steroidal anti-inflammatory agent (i.e., the essential oils of Archer and
Brown, e.g., wintergreen oil (methyl salicylate)), using a hydrogel as a
carrier (see Ans. 3-6).
As to Appellants‟ argument that Archer requires components other
than arnica, such as lidocaine, we note that claim 1 uses the transitional
phrase “comprising,” which does not exclude the use of other components.
Moreover, as to claim 1 of Archer, to which Appellants compare appealed
claim 1, we note that claim 1 of Archer is drawn to a composition of Arnica
Montana and at least one of the following listed ingredients, such as oil of
mint, and thus does not require all of the recited components to be present in
the composition.
Appellants further argue that the International Preliminary Report
(IPR) “finds the subject matter of the present invention to be novel and have
an inventive step” (App. Br. 9). Appellants‟ arguments are not convincing
as the IPR is not binding on the Examiner. In addition, it does not appear
that the references that the Examiner is relying on were before the authority
who prepared the IPR.
Appellants also argue that the claimed properties have unexpected
properties and advantageous synergistic effects, and cite the Declaration of
Ruggero Ferraiolo, dated May 14, 2009 (App. Br. 7-10).
We have carefully considered the Ferraiolo Declaration, but do not
find that it presents evidence of unexpected results. The burden of
demonstrating unexpected results rests on the party asserting them, and “it is
not enough to show that results are obtained which differ from those
Appeal 2011-007832
Application 11/705,753

5
obtained in the prior art: that difference must be shown to be an unexpected
difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). It is well
settled that results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice. In re
DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). In the instant case, while the
Declaration discusses a comparison between the results of Archer and the
claimed invention (Ferraiolo Declaration, pp. 9-11), neither the Declaration
or the Specification provides any data, but only unsupported statements,
such as the “pain relief caused by the present invention is a long lasting
relief, whilst the pain relief caused by Archer is due to lidocaine which is an
analgesic component of short and possibly undesirable effect” (id. at 11).
As to the obviousness rejection over Archer, Brown ‟984, and Brown
‟332, Appellants assert that Brown „332 pertains to a different field, that is
“treating diseases and conditions associated with allergies or the adhesion,
metastatic or coronary cascades” (App. Br. 13).
Appellants‟ arguments are not convincing. First, we have already
concluded that claim 1 is rendered obvious by the combination of Archer
and Brown ‟984. Second, as noted by the Examiner (Ans. 22), Brown ‟332
also teaches that their compositions may be used to treat conditions or
diseases related to a region of an animal locomotive system, such as irritated
or inflamed muscles, inflamed tendons, or swollen and painful joints
(Brown, ¶34).

Appeal 2011-007832
Application 11/705,753

6
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

alw