Ex Parte Sevastyanov

Board of Patent Appeals and Interferences

Nov 22, 2010

11525416 (B.P.A.I. Nov. 22, 2010)

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.
11/525,416 09/22/2006 Victor V. Sevastyanov SEVV10B 1566
41681 7590 11/23/2010
RICHARD L. MILLER
12 PARKSIDE DRIVE
DIX HILLS, NY 11746
EXAMINER
HENLEY III, RAYMOND J
ART UNIT PAPER NUMBER
1614
MAIL DATE DELIVERY MODE
11/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VICTOR V. SEVASTYANOV
__________

Appeal 2010-010062
Application 11/525,416
Technology Center 1600
__________

Before DEMETRA J. MILLS, 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 sensorineural hearing loss with donepezil hydrochloride

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.

Appeal 2010-010062
Application 11/525,416

2
(ARICEPT®). The Patent Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Claims 1-8 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of treating sensorineural hearing loss of various genesis,
comprising the step of administering an agent, which comprises donepezil
hydrochloride (ARICEPT®).

The Examiner rejected all of the claims under 35 U.S.C. § 103(a) as
unpatentable over Pratt.2

OBVIOUSNESS
The Issue
The Examiner’s position is that Pratt taught a method of treating
hearing loss comprising administering an effective dosage of donepezil
hydrochloride (ARICEPT®). (Answer 3.) The Examiner acknowledged that
Pratt did not expressly disclose that the hearing loss treated was
“sensorineural.” (Id. at 3) However, the Examiner found that Pratt
disclosed treating “hearing loss in general, thus encompassing the particular
type of hearing loss presently claimed, i.e., sensorineural.” (Id. at 3)
Appellant contends that Pratt disclosed a method of treating vascular
dementia and not a method of treating sensorineural hearing loss. (App. Br.
5.)

2 US Patent No. 6,458,807 issued to Raymond Pratt, Oct. 1, 2002.
Appeal 2010-010062
Application 11/525,416

3
The issue with respect to this appeal is whether the evidence supports
the finding that Pratt taught treating hearing loss in general, thus including
treating sensorineural hearing loss.
Findings of Fact
1. Pratt disclosed administering donepezil hydrochloride (ARICEPT®) to
treat conditions including dementia caused by vascular diseases and sleep
apnea. (Pratt, Abstract.)
2. Pratt described sleep apnea as being characterized by daytime
symptoms including hearing loss. (Id. at col. 9, ll. 31-38.)
3. Pratt stated: “In each of the methods described herein, the
cholinesterase inhibitors of the invention alleviate (e.g., reduce or eliminate)
at least one (preferably two, three, or all) symptom of the disease, disorder,
or syndrome being treated.” (Id. at col. 10, ll. 13-16.)
4. Pratt did not describe the hearing loss associated with sleep apnea as a
“sensorineural hearing loss.”
5. The instant Specification described sensorineural hearing loss as:
a consequence of the damage to the internal ear, cochlea,
external auditory hair cells, and other cochlear structures, such
as fibers of the auditory nerve as a result of ototoxic and
infectious (bacterial and viral) impact, vascular disorders in the
vertebrobasilar system with a damage to central and peripheral
areas of cranial nerve VIII, craniocerebral trauma with basilar
skull fractures and fractures of the pyramid of the temporal
bone, tumors (neurinomas) of CN VIII, tumors of the
cerebellopontine angle, etc.

(Spec. p. 2, ll. 10-16.)

6. Sensorineural hearing loss (or sensorineural deafness) is understood in
the art as referring to “hearing loss that occurs from damage to the inner ear,
Appeal 2010-010062
Application 11/525,416

4
the nerve that runs from the ear to the brain (auditory nerve), or the brain.”
(See Medline Plus.3)

Principles of Law
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).

Analysis
We agree with the Examiner (Ans. 5) that Appellant has not
acknowledged that Pratt disclosed treating sleep apnea and its associated
symptoms, including hearing loss. (FF-1, 2, 3.) However, we do not find
that the Examiner established that Pratt’s disclosed hearing loss
encompassed sensorineural hearing loss, as recited in the instant claims. A
person of ordinary skill in the art would have understood sensorineural
hearing loss as a condition resulting from “damage to the inner ear, the nerve
that runs from the ear to the brain (auditory nerve), or the brain.” (FF-6.)
This finding is consistent with the description of sensorineural hearing loss
in the instant Specification. (FF-5.) Pratt did not disclose that hearing loss
associated with sleep apnea was the result of such damage. Therefore, what
is missing from the Examiner’s analysis is evidence or reasoning showing
that one of ordinary skill in the art would have understood Pratt’s disclosure
of hearing loss associated with sleep apnea to have included hearing loss

3 Sensorineural deafness
http://www.nlm.nih.gov/medlineplus/ency/article/003291.htm (Last visited
Nov. 16, 2010.)
Appeal 2010-010062
Application 11/525,416

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resulting from inner ear damage that is characteristic of sensorineural
hearing loss.
CONCLUSION OF LAW
The record does not support the Examiner’s finding that Pratt’s
disclosed method of treating hearing loss associated with sleep apnea
included treating sensorineural hearing loss. Consequently, we conclude
that the Examiner has not satisfied the burden of presenting a prima facie
case of obviousness. See Rijckaert, 9 F.3d at 1532.
SUMMARY
We reverse the rejection of claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Pratt.

REVERSED

lp

RICHARD L. MILLER
12 PARKSIDE DRIVE
DIX HILLS NY 11746