Ex Parte Hoyt et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201512261328 (P.T.A.B. Feb. 6, 2015) 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. 12/261,328 10/30/2008 Anne L. Hoyt AM1176.p1 4233 24123 7590 02/06/2015 ALTICOR INC. 7575 FULTON STREET EAST MAILCODE 78-2M ADA, MI 49355 EXAMINER LEITH, PATRICIA A ART UNIT PAPER NUMBER 1655 MAIL DATE DELIVERY MODE 02/06/2015 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 ANNE L. HOYT, JATINDER RANA, KAUSAR MALIK, and DONALD J. PUSATERI __________ Appeal 2012-007485 Application 12/261,328 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a method of effecting the growth of Propionibacterium acnes on a surface to be treated. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Access Business Group International LLC (see App. Br. 2). Appeal 2012-007485 Application 12/261,328 2 Statement of the Case Background “In the skin of individuals with acne, the overgrowth of P. acnes in blocked pores leads to the rupture of the pores to form lesions” (Spec. 1 ¶ 3). The Specification teaches that “antibiotics have often been used to control this bacterial growth” (Spec. 1 ¶ 3). The Claims Claims 6 and 9–11 are on appeal. Claims 6 and 9 are representative and read as follows: 6. A method of effecting the growth of Propionibacterium acnes on a surface to be treated comprising: (d) providing a composition consisting essentially of one or more paradols; (e) providing Propionibacterium acnes on a surface to be treated; and (f) administering the composition consisting essentially of one or more paradols to the surface to be treated, so as to effect the growth of the Propionibacterium acnes. 9. The method of claim 6, wherein the one or more paradols are provided by extraction from Aframomum melegueta. The issue The Examiner rejected claims 6 and 9–11 under 35 U.S.C. § 103(a) as obvious over Herrmann,2 Lee,3 and Nakayama4 (Ans. 5–6). 2 Herrmann et al., US 2009/0220625 A1, published Sept. 3, 2009 (hereinafter “Herrmann”). Appeal 2012-007485 Application 12/261,328 3 The Examiner finds that Herrmann teaches “treating skin irritations such as acne with a combination of bisabolol and agents such as paradols” (Ans. 6). The Examiner finds that Herrmann “did not explicitly teach that paradols would effect the growth of P. acnes” (Ans. 7). The Examiner finds that “Lee teaches a method of suppressing the growth of Propionibacterium acnes by applying a composition comprising ginger root to a surface such as skin” (Ans. 7). The Examiner finds that while Lee “does not state that the composition contains paradols,” Nakayama evidences that “these compounds are inherently present in ginger root” (Ans. 7). The Examiner finds it obvious that “the ordinary artisan taking the teachings of Herrmann et al. as a whole would have a reasonable expectation that paradols could be used alone in treating acne” (Ans. 7). The Examiner finds that “the prior art has set forth enough evidence to indicate that paradols would be effective in treating acne caused by P. acnes and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so” (Ans. 8). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Herrmann, Lee, and Nakayama render the claims obvious? 3 Lee, K.N., KR 10-2005-0081550, published Aug. 19, 2005, we number the translation pages beginning with first page. 4 Nakayama et al., US 2004/0052877 A1, published Mar. 18, 2004 (hereinafter “Nakayama”). Appeal 2012-007485 Application 12/261,328 4 Findings of Fact 1. Herrmann teaches that the combination of two components, including a first component comprising “gingerols, shogaols, gingerdiols, dehydrogingerdiones, paradols and derivatives thereof” is able to cause “a particularly efficient reduction in skin irritation” (Herrmann 2 ¶ 25). 2. Herrmann teaches that the “the typical skin rash of the symptoms of acne is regularly reddened to a greater or lesser degree and impairs the well-being of those affected even in mild cases” (Herrmann 1 ¶ 13). 3. Lee teaches that when “ginger root extract is . . . applied to acne areas, it has anti-inflammatory actions and pain relief effects against acne, and it is preferred that the ginger root extract reaches 0.1 - 40 wt% with respect to the entire mixed extract ingredient” (Lee 3–4). 4. Nakayama teaches that “ginger rhizome contains a variety of peculiar ingredients which . . . include, for example . . . (6)-paradol, (8)- paradol, (10) paradol” (Nakayama 1 ¶ 5). 5. The Specification teaches that “Propionibacterium acnes (P. acnes) is a species of relatively slow growing aerotolerant gram-positive anaerobic bacilli that is associated with acne. In the skin of individuals with acne, the overgrowth of P. acnes in blocked pores leads to the rupture of the pores to form lesions” (Spec. 1 ¶ 3). 6. The Specification teaches that “one or more phytochemicals, such as gingerols and/or paradols . . . can be administered to a surface so as to control, reduce, and/or eliminate Propionibacterium acnes” (Spec. 6 ¶ 23). Appeal 2012-007485 Application 12/261,328 5 Principles of Law Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Id. Analysis We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Ans. 5–9; FF 1–6) and agree that claim 6 is rendered obvious by Herrmann, Lee, and Nakayama. We address Appellants’ arguments below. Appellants contend that “the cited art references, taken alone or in combination, do not show or suggest that one or more paradols that may be found in ginger would effect the growth of the microorganism P. acnes” (App. Br. 5). Appellants contend that “Lee whether taken alone or in combination with Hermann et al. and Nakayama et al., does not show or suggest that the ginger extracts effect the growth of P. acnes. Neither does Lee, alone or in combination, show or suggest that a composition consisting essentially of one or more paradols would effect the growth of the P. acnes” (App. Br. 7). We are not persuaded because the issue is not whether the prior art was aware of the effect of paradols on P. acnes growth but rather whether the prior art suggests the application of a composition comprising paradols to a surface comprising P. acnes. The resulting effect on P. acnes growth Appeal 2012-007485 Application 12/261,328 6 “cannot become nonobvious simply by . . . claiming the [result] . . . . To hold otherwise would allow any formulation—no matter how obvious—to become patentable merely by testing and claiming an inherent property.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012). In the instant case, the Specification evidences that overgrowth of P. acnes on an individual’s skin is the cause of acne (FF 5) and that administration of compositions comprising paradols to skin with acne has an effect on the growth of P. acnes (FF 6). Lee teaches the step of providing a ginger root extract composition (FF 3), which Nakayama evidences inherently comprises gingerols and paradols (FF 4). Lee also teaches providing a patient with acne areas of skin, which the Specification evidences inherently comprises P. acnes (FF 5). Lastly, Lee teaches the step of applying the ginger root extract composition with inherently present paradols and gingerols to the acne areas of skin (FF 3), where the Specification evidences that paradols and gingerols inherently effect the growth of P. acnes (FF 6). This is similar to Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378–79 (Fed. Cir. 2005), where a method claim preamble which required “preventing sunburn damage to exposed skin surfaces,” was found satisfied by a prior art skin composition which had been applied to skin surfaces, but for a different purpose. “[T]he new realization alone [that the old composition would prevent sunburn damage] does not render the old invention patentable.” Id. at 1377. Appellants do not separately argue claims 9–11, instead arguing that “[l]ikewise, the dependent claims 9–11 are also patentable over the cited Appeal 2012-007485 Application 12/261,328 7 references since claims 9, 10 and 11 merely add to the method limitations” (App. Br. 9). Conclusion of Law The evidence of record supports the Examiner’s conclusion that Herrmann, Lee, and Nakayama render the claims obvious. SUMMARY In summary, we affirm the rejection of claim 6 under 35 U.S.C. § 103(a) as obvious over Herrmann, Lee, and Nakayama. Pursuant to 37 C.F.R. § 41.37(c), claims 9–11 fall with claim 6, as these claims were not argued separately. 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 cdc Copy with citationCopy as parenthetical citation