Blatt, Thomas et al.Download PDFPatent Trials and Appeals BoardMay 6, 20202019002808 (P.T.A.B. May. 6, 2020) Copy Citation 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. 10/337,661 01/06/2003 Thomas Blatt 3321-P30874 9787 13897 7590 05/06/2020 Abel Schillinger, LLP 5929 Balcones Drive Suite 300 Austin, TX 78731 EXAMINER KANTAMNENI, SHOBHA ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 05/06/2020 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS BLATT, MELANIE SCHMIDT, VOLKER SCHREINER, and FRANZ STAB Appeal 2019–002808 Application 10/337,661 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2019-002808 Application 10/337,661 2 Appellant1 has filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of February 24, 2020 (“Decision”). The Decision affirmed-in-part the Examiner’s rejections of claims 84–103 under 35 U.S.C. §§ 102(e) and 103 and issued a new ground of rejection for claim 86. DISCUSSION Appellant raises three issues. First, Appellant argues that: [T]he Board has overlooked the fact that instant independent claim 84 recites that the amount of the one or more creatine derivatives recited therein is effective for treating the skin damage or skin condition, whereas Teicher discloses the use of creatine derivatives exclusively in combination with a hyperplastic inhibitory agent and also makes it clear that the hyperplastic inhibitory agent is the primary active ingredient whose activity can (merely) be increased by co- administration of a creatine derivative. Request 2. Appellant also asserts that the claims must be given their broadest reasonable interpretation and that: Nothing in the instant Specification conveys the impression that the amount of creatine derivative which is effective for treating the skin damage or skin condition recited in claim 84 may be an amount which is effective (only) if the creatine derivative is administered in combination with another active ingredient that is effective for treating the skin damage or skin condition, let alone in combination with another active ingredient that is much more effective for treating the skin damage or skin condition than the creatine derivative 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Beiersdorf AG as the real party in interest. Appeal Br. 3. Appeal 2019-002808 Application 10/337,661 3 (assuming that the creatine derivative itself has any corresponding effect at all) such as the hyperplastic inhibitory agent of Teicher. Id. We are not persuaded by Appellant’s arguments. As stated in our Decision, the pending claims recite the word “comprising” and, therefore, can include other elements in addition to the creatine derivative, such as hyperplastic agents as taught in Teicher. Decision 30–31. Further, although Teicher discusses the use of creatine in combination with a hyperplastic agent, a person of ordinary skill in the art would still optimize the amount of creatine to be effective to treat psoriasis. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Appellant has not provided any persuasive evidence that the amount of creatine compounds used in combination with a hyperplastic agent to treat psoriasis would differ from the about 0.1% to about 20% of creatine compounds as taught in Daouk. Daouk 5:59–60. Appellant’s second argument is that Teicher does not mention topical application and that topical and transdermal application are not the same. Request 3. According to Appellant, “[i]t further is not seen that a transdermal administration of an active ingredient renders the topical application thereof obvious to one of ordinary skill in the art.” Id. at 4. First, the pending claims do not recite “topical” application but, rather, recite “a cosmetic or dermatological preparation.” Transdermal applications are applied to skin and are therefore reasonably understood as dermatological preparations. Regardless, even if the claims were limited to topical preparations, Appellant is arguing the references individually Appeal 2019-002808 Application 10/337,661 4 because Daouk teaches topical compositions such as solutions, lotions, creams, gels, or ointments, wherein the lotion comprises from about 0.1% to about 20% of the creatine, creatine phosphate, or creatine derivatives. Daouk 5:12–18, 5:59–64. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, one of skill in the art would have looked to the disclosure of Daouk to determine what types of compositions could be used for the creatine-containing compositions of Teicher for treatment of psoriasis. Lastly, Appellant’s third argument contends that, with regard to the new ground of rejection of claim 86, Daouk does not mention atopic eczema and Keyhani does not mention creatine and does not consider creatine to be an antioxidant (or at least not one that is particularly effective for the indicated purpose). Request 4. Therefore, according to Appellant, the rejection of claim 86 is based on impermissible hindsight. Id. We are not persuaded by Appellant’s arguments. Again, Appellant is arguing the references individually, whereas the rejection is based upon the combined teachings of the prior art. See In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) (holding that “one cannot show non-obviousness by attacking references individually where … the rejections are based on combinations of references.”). Daouk teaches the use of creatine compounds as antioxidants for treatment of skin damage due to free radical production and oxidative stress. Daouk, code (57), 2:15–29. Keyhani teaches that antioxidants are useful in treating skin conditions such as atopic Appeal 2019-002808 Application 10/337,661 5 eczema. Keyhani, code (57). Therefore, one of ordinary skill in the art would have looked to Keyhani to determine what skin conditions could beneficially be treated with antioxidants using the creatine-containing dermatological compositions disclosed in Daouk. Furthermore, one of skill in the art would have used Daouk’s creatine-containing topical compositions to treat atopic eczema as disclosed in Keyhani with a reasonable expectation of success. DECISION We deny the requested relief with respect to making any changes to the Decision. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s) /Basis Denied Granted 84, 88–90, 98, 99, 101, 103 103 Teicher, Daouk 84, 88–90, 98, 99, 101, 103 86 103 Daouk, Keyhani 86 Overall Outcome 84, 86, 88–90, 98, 99, 101, 103 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 84, 86, 89–90, 98, 99, 101, 103 102(e) Daouk 84, 89–90, 98, 101 86, 99, 103 85 103 Daouk, Degwert 85 Appeal 2019-002808 Application 10/337,661 6 85, 87, 88 103 Daouk, Keyhani 85, 87, 88 91, 96 103 Daouk 91, 96 92, 95 103 Daouk, Ptchelintsev 92, 95 93 103 Daouk, Raths 93 94 103 Daouk, Porter 94 97, 100, 102 103 Daouk 97, 100, 102 84, 89, 90, 98, 101 102(e) Fujimura 84, 89, 90, 98, 101 84, 88– 90, 98, 99, 101, 103 103 Teicher, Daouk 84, 88–90, 98, 99, 101, 103 86 103 Daouk, Keyhani 86 Overall Outcome 84, 85, 87–103 86 DENIED Copy with citationCopy as parenthetical citation