165 F.3d 1353 (Fed. Cir. 1999), 98-1258, In re Cortright

Docket Nº:98-1258.
Citation:165 F.3d 1353
Party Name:49 U.S.P.Q.2d 1464 In Re Joyce A. CORTRIGHT,
Case Date:January 19, 1999
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1353

165 F.3d 1353 (Fed. Cir. 1999)

49 U.S.P.Q.2d 1464

In Re Joyce A. CORTRIGHT,

No. 98-1258.

United States Court of Appeals, Federal Circuit

January 19, 1999

Rehearing Denied April 20, 1999.

Page 1354

Joseph B. Taphorn, of Poughkeepsie, New York, argued for appellant.

Scott A. Chambers, Associate Solicitor, U.S. Patent and Trademark Office, of Arlington, Virginia, argued for the appellee. With him on the brief were Nancy J. Linck, Solicitor, Albin F. Drost, Deputy Solicitor, and Linda Moncys Isacson, Associate Solicitor.

Before MAYER, Chief Judge, NEWMAN, and RADER, Circuit Judges.

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MAYER, Chief Judge.

Joyce A. Cortright appeals the September 23 and November 28, 1997, decisions of the United States Board of Patent Appeals and Interferences sustaining the rejection of claims 1 and 15 of patent application Serial No. 07/849,191 under 35 U.S.C. § 112, p 1 (1994). Because the board erred with respect to claim 1 but not claim 15, we affirm-in-part, reverse-in-part, and remand.

Background

Cortright's patent application, filed in 1992, concerns a method of treating baldness by applying Bag Balm TM, a commercially available product used to soften cow udders, to human scalp. Claims 1 and 15 are the only claims on appeal. Claim 1 recites a method of "treating scalp baldness with an antimicrobial to restore hair growth, which comprises rubbing into the scalp the ointment wherein the active ingredient 8-hydroxy-quinoline sulfate 0.3% is carried in a petrolatum and lanolin base." Claim 15 recites a method of "offsetting the effects of lower levels of a male hormone being supplied by arteries to the papilla of scalp hair follicles with the active agent 8-hydroxy-quinoline sulfate to cause hair to grow again on the scalp, comprising rubbing into the scalp the ointment having the active agent 8-hydroxy-quinoline sulfate 0.3% carried in a petrolatum and lanolin base so that the active agent reaches the papilla."

The examiner rejected the claims under 35 U.S.C. § 101 (1994) as lacking utility. According to the examiner, Cortright's statements of utility, namely, her claims of treating baldness, are suspect because "baldness is generally accepted in the art as being incurable...." The examiner, therefore, required clinical evidence to establish the claimed utility, which Cortright did not supply. Furthermore, with respect to claim 15's recitation of offsetting the effects of lower levels of a male hormone, Cortright "offered no proof that such an off-set occurs and has disclosed that this is only speculation." The examiner also rejected the claims under 35 U.S.C. § 102(a) (1994), arguing that the admitted prior art anticipates the claims because the written description discloses that Bag Balm TM has been applied to human skin and the "scalp is the skin of the head." Cortright appealed these rejections to the Board of Patent Appeals and Interferences.

In its September 23, 1997, decision, the board reversed the section 101 rejection because the examiner did not set out sufficient reasons for finding Cortright's statements of utility incredible. It noted that "there is no per se requirement for clinical evidence to establish the utility of any invention" and the examples in Cortright's application are objective evidence. The board also reversed the section 102(a) rejection because although the prior art discloses the application of Bag Balm TM to human skin, it does not disclose applying it to bald, human scalp.

Despite these reversals, Cortright did not prevail because the board found a new ground for rejecting the claims: that they are based on a non-enabling disclosure in violation of 35 U.S.C. § 112, p 1. The board found that Cortright's written description does not teach those of ordinary skill in the art how to make and use the claimed invention without undue experimentation because it "fails to provide any teachings as to the administration of Bag Balm TM in a manner which (i) restore[s] hair growth (claim 1), or (ii) 'offset[s] the effects of lower levels of male hormone being supplied by arteries to the papilla of scalp hair follicles' (claim 15)." The board explained that Example 1 does not show that applying a teaspoon of Bag Balm TM to the scalp daily for about one month "restored hair growth" and that Examples 2 and 3 do not disclose the amount of Bag Balm TM to apply or how to restore hair growth. With respect to claim 15, the board found that the written description "merely surmis[es] that the active ingredient, 8-hydroxy-quinoline sulfate, even reaches the papilla," which would not enable one of ordinary skill to use the claimed method. Finally, the board observed that the breadth of the claims and the unpredictable nature of the art of hair growth aggravated its finding that those of ordinary skill in the art would not be able to practice the invention without undue experimentation.

Cortright requested reconsideration, which the board denied in a November 28, 1997,

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opinion. The board explained that claim 1 is not enabled because it claims "restor[ing] hair growth," which the board interpreted as requiring the user's hair "to return to its original state," that is, a full head of hair. Thus, the board's rejection was not based on complete non-enablement, as the original decision had implied, but on the claim not being commensurate with the scope of the disclosure. With respect to claim 15, the board maintained its general non-enablement rejection, adding that "there is no evidence of record that the resultant hair growth is due to (i) the stimulation of the papilla, and (ii) the offsetting [of] the effects of lower male hormone which is supplied by arteries to the papilla, and not due to some other mechanism(s)." Cortright appeals.

Discussion

"Whether making and using an invention would have required...

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