Ex Parte Marini et al

Patent Trial and Appeal Board

Mar 15, 2019

14835514 (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/835,514 08/25/2015
24353 7590 03/19/2019
BOZICEVIC, FIELD & FRANCIS LLP
Bozicevic, Field & Francis
201 REDWOOD SHORES PARKWAY
SUITE 200
REDWOOD CITY, CA 94065
FIRST NAMED INVENTOR
Jan L. Marini
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.
JANM-014 8669
EXAMINER
GHALI, ISIS AD
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
docket@bozpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN L. MARINI and SUBHASH J. SAXENA
Appeal2018-006021
Application 14/835,514
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving a claim to a
cosmetic skin care composition. The Examiner rejected the claim as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Statement of the Case
Background
"Cosmetic products that improve skin tone, texture and luminosity are
of great interest, and can provide a complement to skin care routines to
1 Appellants identify the Real Party in Interest as Jan Marini Skin Research
(see Br. 2).
2 We have considered and herein refer to the Specification of Aug. 25, 2015
("Spec."); Final Office Action of July 5, 2017 ("Final Act."); Appeal Brief
of Feb. 2, 2108 ("Br."); and Examiner's Answer of Mar. 15, 2018 ("Ans.").
Appeal2018-006021
Application 14/835,514
combat pigmentation" (Spec. ,r 3). "The compositions of the invention
include lightening agents to progressively reduce the appearance of spots
and discoloration, exfoliating agents to remove dull, dry skin ... and
moisturizing and calming agents reduce the appearance of redness" (Spec. ,r
5). "An occlusive clay-base increases penetration, reduces oily skin, and
rinses cleanly from the skin, removing dirt and debris" (id.).
The Claim
Claim 5 is the sole claim on appeal with formatting and reads as
follows:
5. A cosmetic composition for topical application
comprising: from 0.05---0.5% by weight dimethylmethoxy
chromanyl palmitate;
from 0.1 %---0.5% by weight alpha arbutin;
from 0.1 o/o-1 % dipotassium glycyrrhizate;
from 2.5o/o-7 .5% by weight lactic acid;
from 2.5o/o-7 .5% by weight mandelic acid;
from 0.1 o/o-0.5% by weight Camellia sinensis extract;
from 0.1 o/o-0.5% by weight Camellia oleifera extract;
and from 0.1 o/o-0.5% by weight Aspalathus linearis extract;
and
a cosmetically acceptable vehicle comprising from 7.5o/o-
12.5% by weight kaolin.
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Appeal2018-006021
Application 14/835,514
The Issue
The Examiner rejected claim 5 under 35 U.S.C. § 103 as obvious over
Marini '513, 3 Kunin, 4 Arshed, 5 JP '316 6 or Elie, 7 Taylor, 8 Jacobs,9
Marini '318, 10 and CN '865 11 (Ans. 3).
The Examiner finds Marini '513 teaches a cosmetic composition for
lightening skin age spots, that may include active ingredients, such as O .1-
5% lactic acid, 0.01-1 % licorice extract (dipotassium glycyrrhizate), and
0.01-1 % green tea extract (Camellia sinensis) (see Ans. 5). The Examiner
acknowledges that Marini '513 does not teach the remaining components of
the claimed composition (see Final Act. 5). However, the Examiner
identifies the remaining components taught in prior art anti-aging and skin
lightening compositions (see Final Act. 5---6).
The Examiner determines it would have been obvious to one of
ordinary skill in the art to combine the claimed components because "the
references teach[] suitability of such ingredients in anti-wrinkle/antiaging
cosmetic composition[ s ]" (Final Act. 7). Moreover, the Examiner finds
"[b ]ased on the disclosure by the cited references that these substances are
used in cosmetic compositions to treat signs of aging, an artisan of ordinary
3 Marini, US 2009/0263513 Al, published Oct. 22, 2009 ("Marini '513")
4 Kunin, US 9,155,915 B2, issued Oct. 13, 2015 ("Kunin")
5 Arshed, US 2013/0195925 Al, published Aug. 1, 2013 ("Arshed")
6 JP 2002265316, published Sept. 18, 2002 ("JP '316")
7 Elie et al., US 2008/0050459 Al, published Feb. 28, 2008 ("Elie")
8 Marini, US 2007/0196318 Al, published Aug. 23, 2007 ("Marini '318")
9 Jacobs, US 2010/0119463 Al, published May 13, 2010 ("Jacobs")
10 Taylor, Summary of Mandelic Acid for Improvement of Skin Conditions,
Cosmetic Dermatology 26-28 (June 1999) ("Taylor")
11 CN 101756865 A, published June 30, 2010 ("CN '865")
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Application 14/835,514
skill would have a reasonable expectation that a combination of the
substances would also be useful in creating anti-aging cosmetic
compositions" (Final Act. 9).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Marini '513, Kunin, Arshed,
Elie, 12 Marini '318, Jacobs, Taylor, and CN '865 render the claim obvious?
Findings of Fact ("FF'')
1. Marini '513 teaches "cosmetic skin care compositions for
reducing hyperpigmentation of the skin" that "may further comprise alpha-
hydroxy ... acids, including lactic acid, glycolic acid" (Marini ,r 8).
2. Marini '513 teaches the cosmetic composition may include
from "about 0.1 to about 5% by weight of one or more of azelaic acid,
salicylic acid, lactic acid and glycolic acid." (Marini p. 7, claim 12). We
note that this range appears in the original claims filed of the Marini patent
Application on Apr. 18, 2008.
3. Marini '513 teaches the cosmetic composition may include
green tea extract, derived from the leaves of Camellia sinensis, from about
0.1 to about 5% by weight (Marini ,r 26; p. 7, claim 13)
4. Marini '513 teaches the cosmetic composition may include
licorice extract, e.g. dipotassium glycyrrhizate, for its skin whitening
properties, from about 0.01 % to about 0.5% by weight (see Marini ,r,r 25, 63;
p. 7, claim 13).
12 Alternatively, the Examiner finds JP '316 teaches a cosmetic composition
including 0.05-10% a-arbutin (id.). We address only Elie as the references
are duplicative.
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Application 14/835,514
5. Kunin teaches a topical anti-aging composition including 0.5%
w/w dipotassium glycyrrhizate (Kunin 4:53-54; 10: 16).
6. Arshed teaches a topical anti-aging composition including
dimethylmethoxy chromanyl palmitate, as a pigment reducing agent, in the
amount of 0.253 wt.% (Arshed ,r,r 7, 8, 158).
7. Elie teaches a cosmetic brightening composition including from
about 0.1 % to 3% by weight a-arbutin, 0.1 % by weight licorice extract, and
0.1 % by weight Camellia sinensis extract (Elie ,r,r 3, 10, 17).
8. Elie teaches "[ n ]atural extracts of different sources such as
Licorice extract ... and ingredients like Alpha-Arbutin have been used
either singly or in combination to achieve a reduction in the intensity of skin
pigmentation achieving evening of the skin tone" (Elie ,r 5).
9. Marini '318 teaches herbal cosmetic skin care compositions
that contain a combination of several active agents from "a variety of herbs,
including those from the ... Camellia . .. genus of plants" (Marini '318 ,r
6).
10. Marini '318 teaches Camellia "species of interest include"
Camellia sinensis and Camellia oleifera; extracts of which "may be present
in the compositions of the invention at a concentration of at least about 0.1 %
... and not more than about 5%" (Marini '318 ,r 15).
11. Marini '318 teaches "[p ]owders may be incorporated into the
cosmetic composition of the invention. These powders include ... kaolin"
(Marini '318 ,r 59).
12. Jacobs teaches antioxidant cosmetic skin care compositions
including Aspalathus linearis and Camellia sinensis, each in amounts of at
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Appeal2018-006021
Application 14/835,514
least about 0.001 % and usually not more than about 10% (weight/weight)
(Jacobs ,r,r 7, 26).
13. Taylor teaches "mandelic acid is useful in suppressing
pigmentation ... and rejuvenating photo[-]aged skin" and is used in a "gel
or lotion base in 2% to 10% concentration for topical use" (Taylor 26, 27).
14. CN '865 teaches a "[fJace mask useful as [a] cosmetic for
delaying skin aging and reducing wrinkles" that contains 10-12 wt.% kaolin.
(CN '865 title; abstract) (emphasis omitted).
Principles of Law
"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).
Analysis
We adopt the Examiner's findings of fact and conclusion of law (see
Final Act. 4--10, FF 1-14) and agree that the combination of Marini '513,
Kunin, Arshed, Elie, Marini '318, Jacobs, Taylor, and CN '865 renders the
claim obvious. We address Appellants' arguments below.
Appellants first dispute the teachings of the prior art, arguing that "the
Examiner has failed to supply a teaching of the presently claimed 'from
2.5o/o-7.5% by weight lactic acid"' (Br. 7). Rather, Appellants contend "that
Marini '513 only mentions lactic acid as an example of an alpha-hydroxy
acid, but specifies 'glycolic acid in amounts that are safe and effective, for
instance, at concentrations of at least about 0.5% ... and usually not more
than about 5% (weight/weight)"' (Br. 4).
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Application 14/835,514
We find this argument unpersuasive because Marini expressly claims
that a cosmetic composition may include a-hydroxy acids, including lactic
or glycolic acid, ranging "from about 0.1 to about 5% by weight" (FF 1-2).
To the extent that Appellants are arguing that the only disclosure of the
range is in an original claim of Marini, we note that "the original claim [is]
in itself adequate 'written description' of the claimed invention. It was
equally a 'written description' whether located among the original claims or
in the descriptive part of the specification." In re Gardner, 480 F.2d 879,
880 (CCPA 1973). Therefore, the disclosure in claim 12 of a range of
"about 0.1 to about 5% by weight" (FF 2) overlaps and renders obvious the
range recited in claim 1. "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." In re Peterson, 315 F.3d
1325, 1329, 1330 (Fed. Cir. 2003).
Appellants argue that "Kunin teaches a composition that 'consists
essentially of 60 ingredients, which list does not include all the elements of
the present claims, and thus Kunin cannot properly be combined with other
references to arrive at all the elements of the presently claimed composition"
(Br. 7). Appellants argue that both glycyrrhiza glabra and dipotassium
glycyrrhizate are required to be present in the mixture, and that "'consisting
essentially of means that the claimed composition requires all of these 60
ingredients, and nothing else in any significant contribution" (Br. 4).
We find this argument unpersuasive for several reasons. First,
Appellants' claim recites the transition "comprising" not "consisting
essentially of' and, therefore, does not exclude additional, unrecited
elements. See Crystal Semiconductor Corp. v. Tri Tech Microelectronics
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Application 14/835,514
Int'!, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Therefore, the claim may
include both dipotassium glycyrrhizate and glycyrrhiza glabra.
Second, both Kunin and Marini '318 teach the use of dipotassium
glycyrrhizate in amounts ranging from 0.01---0.5% (w/w). Because the prior
art as a whole fairly suggests using 0.01---0.5% w/w dipotassium
glycyrrhizate in a topical cosmetic composition, we are not persuaded that
the Examiner has erred. Perricone rejected "the notion that [a compound]
cannot anticipate because it appears without special emphasis in a longer
list." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir.
2005). Here, where the rejection is for obviousness, not anticipation, we
note that "picking and choosing may be entirely proper in the making of a
103, obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of obviousness."
In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
Appellants argue that "the Examiner has cobbled together nine
references in an attempt to urge an obviousness finding ... but the cited nine
references 'gave either no indication of which parameters were critical or no
direction as to which of many possible choices is likely to be successful"'
(Br. 7, citing In re Cyclobenzaprine Hydrochloride Extended-Release
Capsule Patent Litigation, 676 F.3d 1063, 1070-1071 (Fed. Cir. 2012)).
We are not persuaded by this argument as the Examiner has
established that the claimed components were previously used in anti-aging
or skin lightening compositions. Moreover, we perceive no error based on
the number of references cited by the Examiner. "The criterion ... is not the
number of references, but what they would have meant to a person of
ordinary skill in the field of the invention." In re Gorman, 933 F.2d 982,
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Application 14/835,514
986 (Fed. Cir. 1991) (affirming an obviousness rejection based on thirteen
references).
Appellants argue "there is no explicit suggestion to combine the cited
references to arrive at the presently claimed composition, with all of its
particularly claimed ingredients in the particularly claimed amounts" (Br. 7).
We are not persuaded by this argument as "[i]t is primafacie obvious
to combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose. . . . [T]he idea of combining them flows
logically from their having been individually taught in the prior art." In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (emphasis added). As
discussed above, the references all cited by the Examiner describe topical
skin cosmetic compositions which provide anti-aging and/or skin lightening
effects. Because the compositions were taught to be useful for the same
purpose, it would have been obvious to form a combined composition used
for the very same purpose.
Finally, Appellants argue "the presently claimed composition has a
demonstrated therapeutic efficacy" in that it "improves the appearance of
skin by evening skin tone and color contrast" (Br. 7-8). Appellants do not
provide any evidence to support this argument. "[I]t is well settled that
unexpected results must be established by factual evidence. 'Mere argument
or conclusory statements in the specification does not suffice.'" In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
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Application 14/835,514
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that claim 5 is obvious over Marini '513, Kunin, Arshed, Elie,
Taylor, Jacobs, Marini '318, and CN '865.
SUMMARY
In summary, we affirm the rejection of claim 5 under 35 U.S.C.
§ 103(a) as obvious over Marini '513, Kunin, Arshed, Elie, Taylor, Jacobs,
Marini '318, and CN '865.
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 )(iv).
AFFIRMED
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