GSCHWIND, Svenja et al.

Patent Trials and Appeals Board

Nov 24, 2020

2019003401 (P.T.A.B. Nov. 24, 2020)

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.
15/292,344 10/13/2016 Svenja GSCHWIND 3321-P50334 2308
13897 7590 11/24/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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 SVENJA GSCHWIND, WOLFRAM GERWAT,
CATHRIN SCHERNER, and RAINER WOLBER

Appeal 2019-003401
Application 15/292,344
Technology Center 1600
BEFORE ERIC B. GRIMES, CHRISTOPHER G. PAULRAJ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 21–40. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Beiersdorf AG as the real party in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to the use of glycyrrhetic acid and/or
glycyrrhizin for producing cosmetic compositions for tanning the skin.
Claim 21, reproduced below, is illustrative of the claimed subject matter:
A cosmetic or dermatological preparation, wherein the
preparation is an emulsion which is suitable for application to
skin and comprises at least one of glycyrrhetic acid and
glycyrrhizin in an amount which is sufficient for enhancing
natural tanning of skin, and further comprises at least one
substance selected from UV filter substances, self-tanning
agents, rutinic acid, alpha-glucosyl rutin, quercetin,
isoquercetin, carnosine, beta-alanine, and phytoene.
Appeal Br. 24 (Claims App.)
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Kawato et al.
“Kawato”
US 6,497,860 B1 December 24, 2002
Bissett US 2004/0175347 A1 September 9, 2004
Buchwald-Werner US 2006/0057090 A1 March 16, 2006
Ito et al.
“Ito”
US 2006/0134095 A1 June 22, 2006
Akiyama et al.2
“Akiyama”
JP 2005-41826 A February 17, 2005
Lee et al.
“Lee”
KR 20010060882 July 7, 2001

2 Citations to Akiyama and Lee are to the English translations of record.
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REJECTIONS
The Examiner has rejected the pending claims as follows:
Claims 21, 23, 26, and 32 have been rejected under 35 U.S.C.
§ 102(b) as anticipated by Akiyama. Final Act. 2–5.
Claims 21, 23, 26–29, and 32 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Akiyama. Final Act. 5–6.
Claims 21, 22, 24–26, 28, 30, 32–37, 39, and 40 have been rejected
under 35 U.S.C. § 103(a) as unpatentable over Buchwald-Werner. Final
Act. 6–9.
Claims 21–28, 30, and 32–40 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bissett. Final Act. 9–11.
Claims 21, 22, 26, 31, and 32 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee in view of Kawato. Final Act. 11–13.
Claims 21–25, 30–34, and 36 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ito. Final Act. 13–16.
OPINION
Anticipation by Akiyama
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s finding that claims 21, 23, 26, and 32
are anticipated by Akiyama.
The Examiner finds that Akiyama discloses a hair cream comprising
erythrulose and glycyrrhizic acid with the glycyrrhizic acid comprising
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about 0.10 percent of the composition.3 Final Act. 2–3. The Examiner finds
“[t]he 0.10 percent glycyrrhizic acid constitutes a therapeutically effective
amount and falls within the range taught on page 7, lines 7–12 and on page 8
line 21–page 9, line 3 of the instant specification.” Id. at 3.
Appellant contends that Akiyama does not anticipate the claims as the
composition in Example 4 of Akiyama is not an emulsion. Appeal Br. 9–11.
Appellant contends that Akiyama only describes the product as a cream and
a cream is not necessarily the same as an emulsion. Id; Reply Br. 2–3.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims are anticipated by Akiyama. Appellant has not produced
evidence showing, or persuasively argued, that the Examiner’s
determinations on anticipation are incorrect. Only those arguments made by
Appellant in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015). We have identified claim 21 as representative; therefore, all claims
fall with claim 21. We address Appellant’s arguments below.
Appellant contends that the Examiner has not shown that composition
of example 4 of Akiyama is an emulsion are required by the claims. Appeal
Br. 9–11. Appellant contends that Akiyama refers to the composition as a

3 The machine translation of Akiyama describes this ingredient as
“ERISURU sirloin.” Akiyama ¶ 24. The Examiner contends that the
ingredient is erythrulose, a self-tanning agent. Final Act. 3; Spec. 7.
Appellant does not contest this finding. See Appeal Br. 9–11.
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cream and that the Examiner has not shown that the term a cream is
necessarily an emulsion. Id.; Reply Br. 2–3. We are not persuaded by
Appellant’s argument.
Example 4 of Akiyama describes a composition comprising both oil
and water components, such as squalene and water, as well as emulsifiers,
such as glycerine fatty acid esters and lecithin. Akiyama ¶ 24. We agree
with the Examiner that the combination of an oil phase with a water phase
and an emulsifier necessarily results in an emulsion. Ans. 3–4. Appellant
has not offered any evidence to the contrary. See Appeal Br. 9–11; Reply
Br. 2–3.
Where . . . the claimed and prior art products are identical
or substantially identical . . . the PTO can require an applicant
to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product . . .
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, [or] on “prima facie obviousness” under 35 U.S.C. § 103
. . . the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and
compare prior art products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Conclusion
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 21 is anticipated by Akiyama. Claims 23,
26, and 32 have not been argued separately and therefore fall with claim 21.
37 C.F.R. § 41.37(c)(iv).
Obviousness Based on Akiyama
Issue
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The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s finding that the subject matter of
claims 21, 23, 26–29, and 32 would have been obvious to one of ordinary
skill in the art at the time the invention was made over Akiyama.
The Examiner begins by referring to the findings discussed above
with respect to anticipation. Final Act. 5. The Examiner also finds that
Akiyama teaches that the self-tanning compound may be present in amounts
of from 0.1% to 20% by weight with 0.5 to 10% by weight being preferred.
Id. The Examiner find that Akiyama teaches that dihydroxyacetone can be
used as a self-tanning compound. Id.
The Examiner concludes
It would have been obvious to a person of ordinary skill
in the art at the time the present invention was made to include
the self-tanning compound in an amount within the range
already taught by Akiyama et al. Further routine optimization is
prima facie obvious and within the purview of one of ordinary
skill in the art. It would also have been obvious to select
dihydroxyacetone as the self-tanning compound since it is also
taught by Akiyama et al.

In light of the forgoing [sic] discussion, the Examiner
concludes that the subject matter defined by the instant claims
would have been obvious within the meaning of 35 USC
103(a).

From the teachings of the references, it is apparent that
one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to
one of ordinary skill in the art at the time the invention was
made, as evidenced by the references, especially in the absence
of evidence to the contrary.

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Id. at 6.
Appellant contends that Akiyama is silent with respect to the
composition comprising an emulsion. Appeal Br. 11–12. Appellant also
contends that Akiyama is limited to compositions applied to the hair or scalp
and is not directed to a composition suitable for application to the skin. Id.
Appellant also contends that it is impossible to predict whether the
composition of Akiyama is capable of enhancing natural tanning. Id. at 12.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Akiyama.
Appellant has not produced evidence showing, or persuasively argued, that
the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015). We have identified claim 21 as representative;
therefore, all claims fall with claim 21. We address Appellant’s arguments
below.
Appellant contends that the composition of Akiyama does not appear
to be an emulsion. Appeal Br. 12. We are not persuaded. As discussed
above, the ingredients recited in Example 4 of Akiyama support the
Examiner’s finding that the composition is an emulsion. Appellant has not
presented any persuasive evidence to the contrary.
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Next, Appellant contends that the claimed composition must be
suitable for application to the skin and that the composition of Akiyama is
for hair growth. Id. Again we are not persuaded. Akiyama teaches that the
disclosed compositions are applied to the scalp or hair. Akiyama ¶¶ 18, 25;
Ans. 5. Thus, Akiyama is suitable for application to the skin.
Appellant also contends that is it impossible to tell if the composition
of Akiyama is capable of enhancing natural tanning as there may be other
ingredients which hinder the tanning effect of glycyrrhitic acid or that
application to the hair or scalp would make it difficult to determine in the
composition had a tanning effect. Appeal Br. 12. We remain unpersauded
by this argument.
We begin by noting that enhancement of natural tanning is, at best, an
intended use of the claimed composition. “It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
Moreover, the term “enhancing natural tanning of skin” as it appears
in claim 21 is tied to the amount of glycyrrhetic acid or glycyrrhizin present
in the composition and not a property or a use of the composition. Appeal
Br. 24 (Claims App.). There is no dispute that Akiyama teaches an amount
of glycyrrhizic acid that is disclosed in the present Specification as an
amount sufficient for enhancing natural tanning of skin. Spec. 7. Thus, the
lack of a specific disclosure in Akiyama about the tanning properties of the
composition does not materially affect the patentability of the claims.
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Conclusion
We conclude that a preponderance of the evidence supports the
Examiner’s finding that the subject matter of claim 21 would have been
obvious to one of ordinary skill in the art at the time the invention was made
over Akiyama. Claims 23, 26–29, and 32 have not been separately argued
and therefore fall with claim 21.
Obviousness Based on Buchwald-Werner
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s finding that the subject matter of
claims 21, 22, 24–26, 28, 30, 32–37, 39, and 40 would have been obvious to
one of ordinary skill in the art at the time the invention was made over
Buchwald-Werner.
The Examiner finds that Buchwald-Werner teaches a cosmetic
preparation including a skin care product comprising a glycyrrhetic
antibacterial composition such as glycyrrhetic acid in amounts ranging from
0.5 to 3% by weight. Final Act. 7. The Examiner finds that Buchwald-
Werner teaches that the composition may also contain such ingredients as
UV protection factors, antioxidants, and self-tanning agents. Id.
The Examiner concludes
It would have been obvious to a person of ordinary skill
in the art at the time the present invention was made to make a
preparation comprising glycyrrhetinic [sic] and a self-tanning
agent, a sunscreen active, thus produce the instantly claimed
invention since Buchwald-Werner teach cosmetic preparations
with an amount of at least one glycyrrhetic antibacterial agent
selected from glycyrrhetic acid, glycyrrhetic acid derivatives
and extracts of Glycyrrhiza glabra, and their salts (abstract).
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Creams, lotions, and emulsions are taught (paragraph 26).
Buchwald-Werner teach typical UV-A filters are, in particular,
derivatives of benzoyl methane such as, for example, 1-(4'-
tert.butylphenyl)-3-(4'- methoxyphenyl)-propane-1,3-dione, 4-
tert.butyl-4'-methoxydibenzoyl methane (Parsol 1789), 1-
phenyl- 3-(4'-isopropylphenyl)-propane-l,3-dione and enamine
compounds (paragraph 83); a suitable self-tanning agent is
dihydroxy-acetone (paragraph 110); and antioxidants include
carnosine, rutinic acid, alpha-glycosyl rutin (paragraph 86).
Selecting components from those already known and taught in
the prior art is prima facie obvious and within the purview of
one of ordinary skill in the art. A person of ordinary skill in the
art would have a reasonable expectation of success since
selecting components from components from those already
taught by Buchwald-Werner those known and taught by
Buchwald-Werner. One would have been motivated to select
suitable components from those already taught by Buchwald-
Werner exactly because they are taught by Buchwald-Werner.
Furthermore, the amounts of the components taught by
Buchwald-Werner overlap with the instantly claimed ranges.
Further routine optimization is prima facie obvious and within
the purview of one of ordinary skill in the art.

In light of the forgoing [sic] discussion, the Examiner
concludes that the subject matter defined by the instant claims
would have been obvious within the meaning of 35 USC
103(a).

From the teachings of the references, it is apparent that
one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to
one of ordinary skill in the art at the time the invention was
made, as evidenced by the references, especially in the absence
of evidence to the contrary.

Id. at 8–9.
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Appellant contends that Buchwald-Werner teaches the use of
hundreds if not thousands of diverse substances that may be included
in the composition without providing any guidance as to creation of
the specific combination recited in the claims. Appeal Br. 13.
Appellant contends that Buchwald-Werner does not disclose a single
embodiment containing any if the recited ingredients with the
exception of glycyrrhetic acid. Id. at 13–14. Appellant contends that
merely identifying the different ingredients in a reference will not
establish unpatentability. Id.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Buchwald-
Werner. Appellant has not produced evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
Only those arguments made by Appellant in the Briefs have been considered
in this Decision. Arguments not presented in the Briefs are waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2015). We have identified claim 21 as
representative; therefore, all claims fall with claim 21. We address
Appellant’s arguments below.
Appellant contends that Buchwald-Werner teaches the use of a large
number of different ingredients without providing any teaching or
suggestion as to how they should be combined to form the claimed
composition. Appeal Br. 13. In support of this argument, Appellant points
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out that Buchwald-Werner does not describe a single embodiment
containing all the claimed ingredients. Id. We are not persuaded by
Appellant’s argument.
Buchwald-Werner teaches
The glycyrrhetic acid and glycyrrhetic acid derivatives
may be used for the production of cosmetic preparations such
as, for example, hair shampoos, hair lotions, foam baths,
shower baths, creams, gels, lotions, alcoholic and
aqueous/alcoholic solutions, emulsions, wax/fat compounds or
stick preparations. These preparations may also contain mild
surfactants, oil components, emulsifiers, pearlizing waxes,
consistency factors, thickeners, superfatting agents, stabilizers,
polymers, silicone compounds, fats, waxes, lecithins,
phospholipids, UV protection factors, biogenic agents,
antioxidants, deodorants, antiperspirants, antidandruff agents,
film formers, swelling agents, insect repellents, self-tanning
agents, tyrosine inhibitors ( depigmenting agents), hydrotropes,
solubilizers, perservatives [sic], perfume oils, dyes and the like
as further auxiliaries and additives.

Buchwald-Werner ¶ 26 (emphasis added). Buchwald-Werner also teaches
that the preparations described therein may contain glycyrrhetic acid and
glycyrrhetic acid derivatives in amounts ranging from 0.5% to 3% by weight
which is within the range taught in the present Specification. Id. ¶¶ 6–9;
Spec. 7. Buchwald-Werner clearly teaches preparation of a cosmetic
composition meeting the requirements of claim 21 rendering the subject
matter of the claim obvious.
In its reply, Appellant raises the argument that since the claim calls
for an amount of glycyrrhetic acid or glycyrrhizin sufficient for enhancing
natural tanning of the skin, the claimed composition must be capable of
enhancing natural tanning. Reply Br. 5. Appellant contends that Buchwald-
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Werner does not provide any teaching regarding enhancing natural tanning.
Id.
For the reasons stated above, we are not persuaded by this argument.
The enhancement of skin tanning is merely an intended use of the
composition and does not make the composition patentably distinct from the
composition taught by Buchwald-Werner. In re Schreiber, 128 F.3d at
1477. Additionally, there is no dispute that Buchwald-Werner teaches an
amount of glycyrrhetic acid that is disclosed in the present Specification as
an amount sufficient for enhancing natural tanning of skin. Spec. 7. Thus,
lack of a specific disclosure in Buchwald-Werner about the tanning
properties of the composition does not materially affect the patentability of
the claims.
Conclusion
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of claim
21 would have been obvious to one of ordinary skill in the art at the time the
invention was made over Buchwald-Werner. Claims 22, 24–26, 28, 30, 32–
37, 39, and 40 have not been separately argued and therefore fall with claim
21.
Obviousness Based on Bissett
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter of
claims 21–28, 30, and 32–40 would have been obvious to one of ordinary
skill in the art at the time the invention was made over Bissett.
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The Examiner finds that Bissett teaches a composition comprising
hexamidine and an anti-inflammatory such as glycyrrhetic acid or
glycyrrhizin where the anti-inflammatory agent is present in an amount of
from 0.01 to about 10% by weight. Final Act. 9–10. The Examiner finds
that Bissett teaches that the composition may also comprise sunscreen
additives and tanning agents such as dihydroxyacetone. Id. at 10.
The Examiner concludes
It would have been obvious to a person of ordinary skill
in the art at the time the present invention was made to make a
preparation comprising glycyrrhetinic [sic] and a self-tanning
agent, a sunscreen active, thus produce the instantly claimed
invention since Bissett et al. teach preventing, retarding and/or
treating hyperpigmentation with compositions which may
comprise hexamidine, glycyrrhetinic [sic] acid and
dihydroxyacetone. A person of ordinary skill in the art would
be motivated to select a preparation comprising both
glycyrrhetinic [sic] acid and dihydroxyacetone, 2 ethylhexyl-p-
methoxycinnamate, 4,4'-t-butyl methoxydibenzoyl-methane,
and or carnosine since Bissett et al. teaches each of these
components. Selecting components from those already known
and taught in the prior art is prima facie obvious and within the
purview of one of ordinary skill in the art. A person of ordinary
skill in the art would have a reasonable expectation of success
since selecting components from those known and taught by
Bissett et al. Furthermore, the amounts of the components
taught by Bissett et al. overlap with the instantly claimed
ranges. Further routine optimization is prima facie obvious and
within the purview of one of ordinary skill in the art.

In light of the forgoing [sic] discussion, the Examiner
concludes that the subject matter defined by the instant claims
would have been obvious within the meaning of 35 USC
103(a).

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From the teachings of the references, it is apparent that
one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to
one of ordinary skill in the art at the time the invention was
made, as evidenced by the references, especially in the absence
of evidence to the contrary.

Id. at 10–11.
Appellant contends that Bissett does not render the subject matter of
the rejected claims obvious as Bissett discloses numerous different
compounds that can be used with no teaching or guidance which would lead
one skilled in the art to the claimed combination. Appeal Br. 16–18.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Bissett.
Appellant has not produced evidence showing, or persuasively argued, that
the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015). We have identified claim 21 as representative;
therefore, all claims fall with claim 21. We address Appellant’s arguments
below.
Appellant contends that Bissett discloses a host of optional ingredients
without providing any teaching or guidance which would lead one skilled in
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the art to the claimed composition. Appeal Br. 16–18. We are not
persuaded by Appellant’s argument.
Bissett teaches a skin care composition comprising an effective
amount of a hexaridine compound. Bissett ¶¶ 7–8. Bissett also teaches that
the compositions may include “a variety of other ingredients that are
conventionally used in given product types provided that they do not
unacceptably alter the benefits of the invention.” Id. ¶ 128. Bissett teaches
that “cosmetic and pharmaceutical ingredients commonly used in the skin
care industry, which are suitable for use in the compositions of the present
invention” include antioxidants, anti-inflammatory agents, and tanning
agents including artificial tanning agents.” Id. ¶ 129.
With respect to anti-inflammatory agents, Bissett teaches that the anti-
inflammatory agent is preferably present in an amount ranging from about
0.1% to about 10%. Id. ¶ 151. Bissett teaches “Additional anti-
inflammatory agents useful herein include allantoin and compounds of the
Licorice (the plant genus/species Glvcyrrhiza [sic] glabra) family, including
glycyrrhetic acid, glycyrrhizic acid, and derivatives (e.g., salts and esters).”
Id. ¶ 156.
While we agree with Appellant that Bissett does not teach a specific
embodiment reciting all of the elements of claim, we note that the Examiner
did not make an anticipation rejection based on Bisset. Based on the
teachings discussed above, we agree with the Examiner that one skilled in
the art would have been guided by Bissett to prepare a composition
containing all of the elements of claim 21, which we find sufficient to
sustain the obviousness rejection. Final Act. 10–11.
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Conclusion
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of claim
21 would have been obvious to one of ordinary skill in art at the time the
invention was made over Bissett. Claims 22–28, 30, and 32–40 have not
been argued separately and therefore fall with claim 21.
Obviousness Based on Lee Combined with Kawato
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter of
claims 21, 22, 26, 31, and 32 would have been obvious to one of ordinary
skill in the art at the time the invention was made over Lee combined with
Kawato.
The Examiner finds that Lee teaches a skin whitening composition for
external application which contains 0.001 to 5% by weight glycyrrhetic acid
and coenzyme Q10.4 Final Act. 12. The Examiner finds that while Lee is
silent as to whether the composition is an emulsion, the Examiner finds that
Kawato teaches the use of emulsions in skin lightening formulations. Id.
The Examiner concludes
Routine optimization of amounts is prima facie obvious
and within the purview of the art particularly when the amounts
disclosed in the prior art already overlap with the instantly
claimed range. Furthermore, it would have been obvious to
select an emulsion carrier since emulsion carriers are known in

4 While the Examiner did not make a specific finding that coenzyme Q10 is
a UV filter substance, the art of record teaches that it is. See Buchwald-
Werner ¶ 86. Appellant does not argue to the contrary. See Appeal Br. 19–
20; Reply Br. 7–8.
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the art. Specifically, Kawata [sic] et al. teach skin lightening
compositions which may have emulsion type carriers.
Selection of carriers known in the art is prima facie obvious and
within the purview of one of ordinary skill in the art.
Furthermore, Lee already teaches suitable formulations such as
lotion, massage cream, moisturizing cream, etc.

In light of the forgoing [sic] discussion, the Examiner
concludes that the subject matter defined by the instant claims
would have been obvious within the meaning of 35 USC
103(a). Therefore, the invention as a whole was prima facie
obvious to one of ordinary skill in the art at the time the
invention was made, as evidenced by the references, especially
in the absence of evidence to the contrary.

Id. at 13.
Appellant contends that Lee is directed to a skin lightening
composition which is the opposite effect achieved by the claimed
composition. Appeal Br. 19. Appellant argues that the amount of
glycyrrhetic acid cannot be an amount sufficient to enhance natural tanning
as it would counteract the desired whitening effect. Id. Appellant also
argues that composition of Lee would not produce a detectable amount of
enhancing skin tanning. Id. at 19–20. Appellant argues that Kawato does
not cure the defects of Lee. Id. at 20.

Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Lee
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combined with Kawato. Appellant has not produced evidence showing, or
persuasively argued, that the Examiner’s determinations on obviousness are
incorrect. Only those arguments made by Appellant in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). We have identified claim
21 as representative; therefore, all claims fall with claim 21. We address
Appellant’s arguments below.
Appellant contends that the composition described in Lee is a skin
whitening composition which is the opposite effect achieved by the present
invention. Appeal Br. 19. Appellant argues that it would be impossible to
detect any skin tanning effect from the use of the composition disclosed in
Lee. Id. We are not persuaded by Appellant’s argument.
As discussed above, the enhancement of skin tanning is merely an
intended use of the composition and does not make the composition
patentably distinct from the composition taught by Lee. In re Schreiber, 128
F.3d at 1477.
Appellant also contends that Lee does not teach an amount of
glycyrrhetic acid “sufficient for enhancing natural tanning of skin.” Appeal
Br. 19. Again we are not persuaded by Appellant’s argument.
Claim 21 does not recite a specific amount of glycyrrhetic acid or
glycyrrhizin but instead recites “an amount which is sufficient for enhancing
natural tanning of skin.” Appeal Br. 24 (Claims App.). The Specification
teaches:
In one aspect, the preparation may comprise at least
0.0001% by weight, e.g., at least 0.001% by weight or at least
0.01% by weight of glycyrrhetic acid and/or glycyrrhizin, based
on the total weight of the preparation. In another aspect, the
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preparation may comprise not more than 20% by weight, e.g.,
not more than 10% by weight or not more than 1% by weight of
glycyrrhetic acid and/or glycyrrhizin.

Spec. 7. Lee teaches that the amount of glycyrrhetic acid should range from
0.001% to 5% by weight which overlap with the amounts taught in the
Specification. Lee ¶ 10. “A prima facie case of obviousness typically exists
when the ranges of a claimed composition overlap the ranges disclosed in
the prior art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellant has not presented any credible evidence, other than attorney
argument to rebut the prima facie case of obviousness. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Appellant also argues that Kawato does not cure the deficiencies of
Lee. Appeal Br. 20. As discussed above, we not discern any deficiencies
with respect to the teachings of Lee. Appellant’s argument is therefore
unpersuasive.
Conclusion
We conclude that a preponderance of evidence supports the
Examiner’s conclusion that the subject matter of claim 21 would have been
obvious to one of ordinary skill in the art at the time the invention was made
over Lee combined with Kawato. Claims 22, 26, 31, and 32 have not been
argued separately and therefore fall with claim 21.
Obviousness Based on Ito
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter for
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claims 21–25, 30–34, and 36 would have been obvious to one of ordinary
skill in the art at the time the invention was made over Ito.
The Examiner finds that Ito teaches the preparation of a skin
preparation comprising a fullerene or fullerene derivative. Final Act. 14.
The Examiner finds that Ito teaches that the composition may also comprise
an anti-inflammatory agent and a UV protective agent. Id. The Examiner
finds that Ito teaches that the anti-inflammatory agent may be glycyrrhetic
acid or glcyrrhetinic acid in amounts ranging from 0.0001% to 10% by
weight. Id.
The Examiner concludes
Selecting components from those already known and
taught in the prior art is prima facie obvious, within the purview
of one of ordinary skill in the art, and is reasonably expected to
succeed. Furthermore, routine optimization of concentrations,
when the prior art already teaches ranges which overlap with
the instantly claimed ranges is prima facie obvious, within the
purview of one of ordinary skill in the art, and reasonably
expected to succeed.

In light of the forgoing [sic] discussion, the Examiner
concludes that the subject matter defined by the instant claims
would have been obvious within the meaning of 35 USC
103(a).

From the teachings of the references, it is apparent that
one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to
one of ordinary skill in the art at the time the invention was
made, as evidenced by the references, especially in the absence
of evidence to the contrary.

Id. at 15–16.
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Appellant contends that like the references discussed above, Ito
discloses a host of different optional ingredients. Appeal Br. 21. Appellant
contends that the Examiner has not shown why one skilled in the art would
select the specific ingredients recited in the claims. Id. Appellant also
contends that Ito teaches combining an anti-inflammatory agent with a skin
whitening which is contrary to the present invention. Id. at 22.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the rejected claims would have been obvious to one of
ordinary skill in the art at the time the invention was made over Ito.
Appellant has not produced evidence showing, or persuasively argued, that
the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015). We have identified claim 21 as representative;
therefore, all claims fall with claim 21. We address Appellant’s arguments
below.
Appellant contends that Ito discloses a host of ingredients without
teaching or suggesting the claimed combination. Appeal Br. 21. We are not
persuaded by this argument. Ito teaches:
In addition, the invention of this application
seventeenthly provides a fullerene composition for external use
characterized in that by further including at least one kind of
components listed below in the foregoing stable fullerene
composition for external use, an effect on whitening the skin,
improving pigmentation, treating acne’s [sic], improving
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wrinkles, improving skin roughness, improving oily skin,
improving dry skin, diminishing the appearance of pores,
treating scarring, treating flushing of the face, treating hair loss,
promoting hair growth, treating a burn injury, sterilizing the
skin, killing mites on the skin or improving skin texture is
enhanced:

0.01 % to 20% by weight of a whitening component
listed below,

0.001 to 10% by weight of an anti-inflammatory
component, and

0.001 to 10% by weight of an antioxidative component.

Ito ¶¶ 27–30. Ito also teaches “[e]xamples of the anti-inflammatory agents
include glycyrrhizinic acids or glycyrrhetinic acids.” Id. ¶ 113.
Ito teaches that to make the described composition, the composition
should include at least one of a nonionic surfactant, ascorbic acid or
derivative thereof, or ultraviolet protective agent. Id. ¶¶ 115–118.
Given the clear teachings in Ito of the elements recited in claim 21 we
agree with the Examiner that the subject matter of claim 21 would have been
obvious over Ito. Final Act. 15–16; Ans. 11.
Appellant’s argument with respect to Ito being directed to skin
whitening versus skin tanning is also unpersuasive for the reasons stated
above. Enhancement of skin tanning is an intended use of the claimed
composition and does not impart patentability on claim 21.
Conclusion
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that the subject matter of claim 21 would have been
obvious to one of ordinary skill in the art at the time the invention was made
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over Ito. Claims 22–25, 30–34, and 36 have not been argued separately and
therefore fall with claim 21.
DECISION
The Examiner’s rejections are affirmed.
More specifically,
The Examiner’s rejection of claims 21, 23, 26, and 32 under 35 U.S.C.
§ 102(b) as anticipated by Akiyama is affirmed.
The Examiner’s rejection of claims 21, 23, 26–29, and 32 under 35
U.S.C. § 103(a) as unpatentable over Akiyama is affirmed.
The Examiner’s rejection of claims 21, 22, 24–26, 28, 30, 32–37, 39,
and 40 under 35 U.S.C. § 103(a) as unpatentable over Buchwald-Werner is
affirmed.
The Examiner’s rejection of claims 21–28, 30, and 32–40 35 U.S.C.
§ 103(a) as unpatentable over Bissett is affirmed.
The Examiner’s rejection of claims 21, 22, 26, 31, and 32 under 35
U.S.C. § 103(a) as unpatentable over Lee in view of Kawato is affirmed.
The Examiner’s rejection of claims 21–25, 30–34, and 36 under 35
U.S.C. § 103(a) as unpatentable over Ito is affirmed.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 23, 26,
32
102(b) Akiyama 21, 23, 26,
32

21, 23, 26–
29, 32
103(a) Akiyama 21, 23, 26–
29, 32

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21, 22, 24–
26, 28, 30,
32–37, 39,
40
103(a) Buchwald-Werner 21, 22, 24–
26, 28, 30,
32–37, 39,
40

21–28, 30,
32–40
103(a) Bissett 21–28, 30,
32–40

21, 22, 26,
31, 32
103(a) Lee, Kawato 21, 22, 26,
31, 32

21–25, 30–
34, 36
103(a) Ito 21–25, 30–
34, 36

Overall
Outcome
21–40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED