Ex Parte KROEPKE et al

Patent Trial and Appeal Board

Mar 11, 2019

12360675 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/360,675 01/27/2009
13897 7590 03/13/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Rainer KROEPKE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3321-P35920 6775
EXAMINER
YU,HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/13/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER KROEPKE, KERSTIN BOHNSACK, FRANK RIPPKE,
and ALEXANDER FILBRY
Appeal 2018-000763
Application 12/360,675
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and RACHEL H.
TOWNSEND, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2018-000763
Application 12/360,675
STATEMENT OF CASE
The following claims are representative.
21. A method of alleviating pollen allergies on skin, wherein
the method comprises
applying to skin affected by pollen allergies a cosmetic or
dermatological preparation which comprises panthenol,
glycerol, and at least one of citrate and bisabolol, and has at
least one of (i) a pH of from about 4.6 to about 5.4, (ii) a mass
ratio of panthenol to citrate of from about 25: 1 to about 5: 1,
based on citrate anion, and (iii) a mass ratio of panthenol to
bisabolol of from about 5: 1 to about 1: 1, and further has at least
one of (iv) a mass ratio of panthenol to glycerol of from about
1: 1 to 1 :4 and ( v) a mass ratio of glycerol to citrate of from 60: 1
to about 10: 1, based on citrate anion.
25. The method of claim 21, wherein a mass ratio of panthenol
to bisabolol is from 5: 1 to about 1: 1.
41. A method of alleviating pollen allergies on skin, wherein
the method comprises applying to skin affected by pollen
allergies a cosmetic or dermatological preparation which
comprises panthenol, glycerol, and citrate, a mass ratio of
panthenol to glycerol being from about 1: 1 to 1 :4.
45. The method of claim 41, wherein the preparation further
comprises bisabolol, a mass ratio of panthenol to bisabolol
being from 5: 1 to about 1 : 1.
Chibret
REFERENCES
us 5,000,936
Maierhofer et al. US 5,853,753
(hereinafter "Maierhofer")
Goodman et al. US 6,348,203 B 1
(hereinafter "Goodman")
Mar. 19, 1991
Dec. 29, 1998
Feb. 19,2002
Okada et al. US 2004/0247686 Al Dec. 9, 2004
(hereinafter "Okada")
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Chamomile retrieved from Internet
(https ://www.sigmaaldrich.com/life-science/nutriti on-
research/leamingcenter /plant-pro filer/ chamaemel um-nob ile .html)
Grounds of Rejection
1. Claims 21, 22, 25, 41, and 45--47 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Maierhofer, as evidenced by
Chamomile in view of Okada.
2. Claims 23, 24, 26, 42--44, and 48-54 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Maierhofer and Okada as
evidenced by Chamomile, as applied to claims 21, 22, 25, 41, and 45-
4 7, in view of Goodman, as evidenced by Chibret.
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Final Office
Action at pages 3-20. The following facts are highlighted.
1. Maierhofer teaches a method of treating skin allergy caused by
pollen, etc., comprising local application of compositions, with
a pH offrom 4 to 10, comprising 0.5 to 2.5% by weight of
pantothenate as a vitamin or pro-vitamin, from 0.01 to 4% by
weight of chamomile oil, from 0.1 to 10% by weight of
glycerol, and citrate buffer ( entire reference, especially,
especially abstract, column 3, line 11-40, line 47-54, column 4,
line 26-39, column 5, line 20 and 30, line 37-50, the paragraph
bridges column 6 and 7, column 11, line 60 through column 12,
line 6, column 12, line 32-35 column 14, line 31-55, and
column 15, line 43-59, and claims 5 and 10).
Final Action 4.
2. According to "Chamomile" up to 50% of essential oil of chamomile
contains alpha-bisabolol. Chamomile, p. 1.
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Application 12/360,675
3. According to Maierhofer, glycerin or glycol is added in a
concentration of0.1 to 10%. Col. 4, 11. 32-39.
4. According to Maierhofer, the concentration of pantothenate that may
be included is 0.5 to 2.5 wt%. Col. 3, 11. 25--40.
5. According to Maierhofer, the concentration of chamomile oil that may
be used is (0.01 wt% to 4 wt%, preferred is 0.1 wt% to 2 wt%). Col. 3, 11.
50-54.
6. According to the Examiner, the ratio between pantothenate and
bisabolol is calculated to be 1.5:1 based on the midpoint of the ranges of
pantothenate (1.5% by weight) and bisabolol (2.005% by weight of
chamomile oil which contains 50% by weight ofbisabolol, i.e., 1.0025% by
weight). Final Action 5.
7. According to the Examiner, the ratio between bisabolol and glycerol
is calculated to be 1:3 based on the midpoint of the ranges ofbisabolol
(2.005% by weight of chamomile oil which contains 50% by weight of
bisabolol, i.e., 1.0025% by weight) and glycerol (5.05% by weight). Id.
8. According to the Examiner, the calculation of pantothenate to glycerol
("the ratio between pantothenate and glycerol is calculated to be 1:3.37
based on the midpoint of the ranges of pantothenate (1.5% by weight) and
glycerol (5.05% by weight)." Id.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
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Application 12/360,675
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
Moreover, "obviousness requires a suggestion of all limitations in a
claim." CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
Obviousness Rejection
According to the Examiner, Maierhofer:
[T]each[ es] a method of treating skin allergy caused by pollen,
etc., comprising local application of compositions, with a pH of
from 4 to 10, comprising 0.5 to 2.5% by weight of pantothenate
as a vitamin or pro-vitamin, from 0.01 to 4% by weight of
chamomile oil, from 0.1 to 10% by weight of glycerol, and
citrate buffer.
Final Action 4 ( emphasis omitted). The Examiner acknowledges that
Maierhofer does not teach: i) panthenol; or ii) the specific combination of
pantothenate, glycerol, and acetate buffer and/or chamomile oil. Final
Action 5. The Examiner relies on Okada for teaching a topical
pharmaceutical composition for the treatment of skin diseases comprising
pantothenic acid such as pantothenate and panthenol. Abstract, ,r,r 4--11, 34,
and 51; Final Action 5. The Examiner concludes that:
It would have been prima facie obvious at the time of the
invention to a person of ordinary skill in the art to combine the
teachings in Maierhofer et al. and Okada et al. to replace
pantothenate in the composition taught by Maierhofer et al.
with panthenol. Pantothenate and panthenol being equivalent
pantothenic acid for topical treatment of skin disease including
contact dermatitis was well known to a person of ordinary skill
in the art at the time of the invention. The motivation for
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Application 12/360,675
replacing pantothenate in the composition taught by Maierhofer
et al. with panthenol flows from both having been used in the
prior art, and from both being recognized in the prior art as
useful for the same purpose.
Final Act. 6.
Appellants contend, among other things, that
1. Maierhofer does not teach a method of treating pollen allergy of the
skin. App. Br. 11-13.
2. "[T]he way the Examiner has calculated the ratios of substances
disclosed in Maierhofer is completely arbitrary." App. Br. 13
( emphasis omitted).
3. It is not seen that one of ordinary skill in the art would have adjusted
the concentrations of panthenol "( which is not even mentioned in
MAIERHOFER)" and glycerol in order to "optimize" the mass ratio
of panthenol and glycerol. App. Br. 15-16.
4. "[I]t is not seen that Goodman teaches that 'dry or inflamed skin is
highly intolerant to exposure to a water based formulation with a pH
outside the physiologically acceptable range of approximately 5-6' as
alleged by the Examiner." App. Br. 19.
ANALYSIS
We essentially agree with the Examiner's fact finding, statement of
the rejection and responses to Appellants' arguments as set forth in the Final
Action and Answer, as indicated below. We find that the Examiner has
provided evidence to support a prima facie case of obviousness. We provide
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the following additional comment to the Examiner's argument set forth in
the Final Rejection and Answer.
Due to the "at least one of' language in claim 21, we read claim 21 to
include, at a minimum,
1. A method of alleviating pollen allergies on skin, wherein the
method comprises
2. applying to skin affected by pollen allergies a cosmetic or
dermatological preparation which comprises
3. panthenol,
4. glycerol,
5. citrate or bisabolol,
6. a pH of from about 4.6 to about 5.4,
7. a mass ratio of panthenol to glycerol of from about 1: 1 to 1 :4.
We address claims 21 and 41 together as they read on the claimed
minimal embodiment. We find that the Examiner has set forth a prima facie
case of obviousness.
Maierhofer generally discloses a method of treating skin allergies and
inflammation, which one of ordinary skill in the art would understand to
include allergies to pollen. Cols. 7, 12, and 13. The method ofMaierhofer
includes applying to the skin a formulation of liposomes which may include
other conventional skin care ingredients including pantothenate, chamomile
oil, glycerin or glycol. Cols. 3, and 4. Maierhofer only needs to teach either
citrate or bisabolol to meet the claim limitations due to the claim language
"at least one of'. Maierhofer discloses both citrate, and chamomile, which
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includes bisabolol as a component. Col. 3, line 52 as evidenced by
Chamomile, and col. 4, 1. 29. Maierhofer teaches a pH of from 4 to 10. Col.
5, 11. 28-30. Okada teaches the equivalence between pantothenate and
panthenol and their use in skin care compositions. ,r 51.
According to Maierhofer, the range of the amount of pantothenate in
the topical liposomes is 0.5 to 2.5%. Col. 3, 11. 25--40. FF4. According to
Maierhofer, glycerin (also called glycerol) is added in a concentration range
of0.1 to 10%. Col. 4, 11. 32-39. FF3. Therefore, the range of ratios of
pantothenate to glycerol in Maierhofer is between 5:1 (0.5:0.1) and 1:4
(2.5:10), a range which overlaps the claimed range of about 1:1 to 1:4. The
Federal Circuit stated in In re Peterson that:
In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes
a prima facie case of obviousness ....
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than identifying a
range that simply overlaps a disclosed range. In fact, when, as here,
the claimed ranges are completely encompassed by the prior art, the
conclusion is even more compelling than in cases of mere overlap.
The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where
in a disclosed set of percentage ranges is the optimum combination
of percentages.
In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003). Although the
Examiner may have arbitrarily used/chosen an overlapping midpoint ratio
(App. Br. 13), the Examiner also indicated in the Final Rejection, the full
range of each of the pantothenate and glycerin components (Final Act. 4)
from which appropriate range overlap could be determined.
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The combination of Maierhofer and Okada, as evidenced by
Chamomile, teaches or suggests each of the minimal required claim
limitations. "The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739, 82 USPQ2d
1385, 1395 (2007).
While Appellants argue that the cited references do not specifically
teach pollen allergy, we are not persuaded. Maierhofer teaches that the skin
formulation has an inhibitory affect on local allergic reactions generally.
Col. 13, 11. 7-11. Appellants provide no evidence to show that one of
ordinary skill in the art would understand that pollen allergies differ from
general skin allergic and inflammatory reactions described in Maierhofer,
including IgE reactions, de granulation and histamine reactions ( col. 15).
In our view, the sections of Okada cited by the Examiner (Final Act.
5), support an evidentiary showing of the equivalence between pantothenate
and panthenol, as panthenol is the alcohol analog of pantothenate, sharing a
similar structure. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997)
("Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].")
Appellants provide no evidence of lack of equivalence as viewed by one of
ordinary skill in the art. In addition, according to the passage from column
1, line 66 to column 2, line 12 and column 2, lines 40-47, Goodman
specifically states that, the viscous hydrogel compositions for use in a
topical treatment of a skin condition involving dry or inflamed skin and
containing an antimicrobially active nitroimidazole drug disclosed therein
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can have a pH within the (much broader) range of 4.5-6.5. Final Act. 17,
emphasis added.
Nor do we find that the Examiner has engaged in hindsight
reconstruction of Appellants' invention. Reply Br. 1. The Examiner points
to relevant evidence in the prior art to support the obviousness rejection and
provides motivation to use the conventional skin care ingredients in a
method of treating skin allergies generally, which would include skin pollen
allergies or reactions.
Appellants contend that Maierhofer fails to disclose any of the
claimed combinations of agents. Reply Br. 4. We are not persuaded for the
reasons indicated above. Furthermore, a prior art disclosure is not limited
only to its preferred embodiments, but is available for all that it discloses
and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d
747, 750 (CCPA 1976); In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("All
the disclosures in a reference must be evaluated ... a reference is not limited
to the disclosure of specific working examples").
Claims 25 and 45
Claims 25 and 45 are separately argued in the Appeal Brief. App. Br.
15, 17. These claims further recite a mass ratio of panthenol to bisabolol is
from 5: 1 to about 1: 1.
Maierhofer discloses pantothenate from 0.5 to 2.5 weight percent.
Col. 3, 1135-36. Maierhofer discloses from 0.01 to 4% by weight of
chamomile oil in the disclosed skin care preparation. According to
"Chamomile," up to 50% of the essential oil of chamomile contains alpha-
bisabolol. Chamomile, p. 1. Thus the range of pantothenol to bisabolol
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suggested in Maierhofer is about 0.5:0.005 to 2.5:2 (0.5 : 0.01/2 to 2.5 : 4/2),
based on 50% of chamomile essential oil containing bisabolol. 1 The claimed
range of panthenol to bisabolol reads on, and overlaps with the range
disclosed in Maierhofer.
Selecting a narrow range from within a somewhat broader range
disclosed in a prior art reference is no less obvious than identifying a
range that simply overlaps a disclosed range. In fact, when, as here,
the claimed ranges are completely encompassed by the prior art, the
conclusion is even more compelling than in cases of mere overlap.
The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where
in a disclosed set of percentage ranges is the optimum combination of
percentages.
In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003).
Appellants essentially present the same arguments for rejection 2
(App. Br. 18-21 ), as for rejection 1. We do not entertain additional
arguments that do not pertain to the minimal elements required to meet the
claim.
We affirm the obviousness rejections.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
fall.
1 Appellants specifically argued the bisabolol to glycerine ratios in the
Appeal Brief (14), but failed to argue the panthenol to bisabolol ratios in the
Appeal Brief. Arguments not made are waived.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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