Koganov, Michael

Patent Trials and Appeals Board

Sep 30, 2019

13821775 - (D) (P.T.A.B. Sep. 30, 2019)

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.
13/821,775 06/03/2013 Michael Koganov ABT11205 US P1 2080
67749 7590 09/30/2019
Ashland LLC
WILLIAM J. DAVIS, ESQ.
1005 U.S. 202/206
Bridgewater, NJ 08807
EXAMINER
CHEN, CATHERYNE
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
ntietcheu@ashland.com
schen@ashland.com
wdavis@ashland.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL KOGANOV
____________

Appeal 2019-003552
Application 13/821,775
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Introduction
Appellant1 seeks our review, under 35 U.S.C. § 134(a), from the
Examiner’s decision to reject claims 1, 4–9, 11–14, 16–21, and 35 (Appeal
Brief filed May 7, 2018 (“Br.”) 3.)2
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. Appellant identifies the real party in interest as ISP
Investments LLC (see Br. 3.)
2 Claims 22–34 are withdrawn.
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Appellant’s Specification provides a Ficus serum fraction derived
from the cell juice of fresh Ficus leaves that “consists essentially of the
Ficus leaf cell cytoplasm.” (Spec. ¶ 43.) The Specification discloses that
Ficus serum fraction produces superior skin lightening effects in comparison
to traditional Ficus extract when applied to the skin. (Id. ¶ 45.) The
Specification discloses the Ficus Serum Fraction of the current invention is
prepared by separating the fresh cell juice found in the plant leaves from the
rest of the plant matter, in contrast by solvent extraction. (Id. ¶ 47.) The
Specification discloses that cell juice contains “the full spectrum of
compounds” found in fresh Ficus leaves, because there is no solvent
extraction. Id. The Specification discloses fractionating cell juice to remove
organelles, unwanted pigments, and proteins, thereby producing a personal
care ingredient having a desirable combination of functional properties. Id.
¶¶ 66–67.
Appellant’s claim 35 recites:
A Ficus serum fraction isolated from cell juice derived
from fresh Ficus leaves,

wherein said Ficus serum fraction is substantially free of
pheophorbides and is substantially free of proteins as measured
by the Kjeldahl method, and

wherein said Ficus serum fraction has biological activity
capable of reducing skin hyperpigmentation.

(Br. 26.) Appellant’s claim 1 is a product-by-process claim reciting a Ficus
serum fraction having substantially identical properties, produced by a
process comprising the steps of separating, filtering and fractionating. (Br.
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22.) Appellant does not present separate arguments against the rejection of
the dependent claims.
We focus on claims 1 and 35 in our analysis below. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner rejects the claims as follows (Final Office Action
mailed May 5, 2017 (“Final Act.”)):3
Claims Grounds Reference Final Act.
1, 4–9, 11–14,
16–21, and 35
§ 101 2–3
1, 4–9, 11–14,
16–21, and 35
Non-statutory
double patenting
Claims 1–7 of
App. No.
13/821,868
5–6

Analysis
35 U.S.C. § 101, Non-Statutory Subject Matter
The Examiner rejects claims 1, 4–9, 11–14, 16–21, and 35 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. (Ans. 3.)
The Examiner finds the claims are drawn to a natural product isolated from
Ficus leaves comprising Ficus serum fraction. (Id. at 4.) The Examiner
finds “compounds of Ficus Serum Fraction are structurally the same as
naturally occurring ingredients found in leaves of Ficus.” (Id. at 5.) The
Examiner finds isolates from the different process of extractions are not
markedly different from their closest naturally occurring counterpart because
there is no indication that extraction and partial purification causes isolates

3 The Examiner withdrew a rejection of claims 1, 4–9, 11–14, 16–21, and 35
as being indefinite under 35 U.S.C. § 112, second paragraph (Examiner’s
Answer mailed January 25, 2019 (“Ans.”) 7).
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comprising the claimed compositions to have any characteristic different
from naturally occurring chemicals found in Ficus extract. (See id.)
Although 35 U.S.C. § 101 provides that “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor . . . ,” the Supreme Court has determined that there
are exceptions to what is patentable. Specifically, “laws of nature, natural
phenomena, and abstract ideas” are not eligible subject matter. See
Diamond v. Diehr, 450 U.S. 175, 185 (1981). To determine if claimed
subject matter is statutorily eligible in light of these judicial exceptions the
Supreme Court has articulated a two-step framework in Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and later cases.
Specifically,
[f]irst, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. . . . If so, we then ask,
“[w]hat else is there in the claims before us?” . . . To answer
that question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.

Alice Corp. v. CLS Bank Int’l, 573 U.S. 216, 217 (2014) (quoting Mayo, 566
U.S. at 78). Thus, we must determine whether the claim is directed to a
judicially determined patent-ineligible concept and, if so, then ask if there is
anything in the claim that transforms it into patent-eligible subject matter.
The USPTO recently published revised guidance on the application of
§ 101. (See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (2019) (“2019 Guidelines”).) After
determining that claimed subject matter falls within the four categories of
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patentable subject matter identified in 35 U.S.C. § 101, the 2019 Guidelines
provides a “revised step 2A,” which corresponds to the first step of the
Alice/Mayo test articulated above, to determine whether a claim is directed
to a judicial exception. (See 2019 Guidelines, 84 Fed. Reg. at 53–54.) In a
first prong of revised step 2A, the Examiner must determine whether the
claim recites a judicial exception. (See id. at 54.) If a judicial exception is
identified, the second prong requires a determination of whether the judicial
exception is integrated into a practical application. (See id.) If so, the
inquiry ends and the claim is determined to be directed to eligible subject
matter under the 2019 Guidelines. (See id. at 54 (“When the exception is so
integrated [into a practical application], then the claim is not directed to a
judicial exception (Step 2A: NO) and is eligible. This concludes the
eligibility analysis.”).) If not, the analysis continues to determine if the
claim provides an inventive concept. (See id. at 56.)
We first examine whether the claims recite a judicial exception,
specifically a product of nature as found by the Examiner. Appellant argues
that the Ficus serum fraction is produced by a man-made process that does
not occur in nature, and thus, “is a man-made fraction that would not and
could not be a naturally occurring product.” (Br. 8 (emphasis omitted).)
Appellant argues that each process step of separating, filtering, and
fractionating, does not naturally occur in nature. (Id. at 9.) Appellant
contends “[i]nstead, the process now recited in claim 1 and its resulting
Ficus Serum Fraction are not naturally occurring processes or products, and
are patent eligible subject matter.” (Id.)
We agree with Appellant that the claimed Ficus serum fraction is not
produced by a naturally occurring process. However, this does not end the
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inquiry. Merely isolating a natural product and thereby creating a
nonnaturally occurring material does not necessarily result in patent eligible
subject matter. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 593 (2013). In Myriad, the Supreme Court held claims
directed to isolated DNA were not “saved by the fact that isolating DNA
from the human genome severs chemical bonds and thereby creates a
nonnaturally occurring molecule.” Id. Rather, in order to be patent eligible,
a “nonnaturally occurring manufacture or composition of matter” must
possess “markedly different characteristics from any found in nature.” Id. at
590–91 (citing Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). We
apply the same analysis to the Ficus serum fraction, as claims 1 and 35 recite
isolated naturally occurring components of Ficus plants that have been
separated from other cellular materials. (See Spec. ¶¶ 43, 47, 66–67.)
Appellant contends “the claimed Ficus Serum Fraction has bioactive
properties and characteristics that are not found in the naturally occurring
cell juice or sap of the Ficus plant that would be found in nature.” (Br. 9.)
Particularly, Appellant contends the claimed “Ficus Serum Fraction is
‘substantially free of pheophorbides’ and ‘substantially free of proteins.’”
Id. Appellant cites to paragraphs 74–100 of the Specification as evidence
that the “Ficus Serum Fraction as claimed is markedly different from Ficus
extracts found in nature.” (Br. 10.)
Appellant must identify evidence that there are markedly different
characteristics between the claimed product and the product in nature, i.e.,
Ficus cell juice for their argument to be persuasive. The cited paragraphs of
the Specification disclose differences between the Ficus serum fraction and
“traditional ficus extracts” prepared by solvent extraction or from dry leaves
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as a source. (Spec. ¶¶ 37, 74–100 (emphasis added).) Appellant does not
direct us to any comparison between Ficus Serum Fraction, and “naturally
occurring cell juice.” (See Br. 9.) Therefore, we do not find Appellant’s
arguments regarding paragraphs 74–100 probative of whether the claimed
Ficus serum fraction is markedly different from the corresponding natural
product.
In contrast, we find Appellant’s Specification provides evidence that
the properties of the claimed composition are shared by the naturally
occurring cell juice from which the Ficus serum fraction is derived.
According to Appellant’s Specification, “cell juice . . . contains the full
spectrum of compounds found in fresh ficus leaves. In contrast, extracts
contain only the narrow range of compounds . . . . Thus, the resulting Ficus
Serum Fraction contains a much broader range of potentially active
compounds than does an extract.” (Spec. ¶ 47.) The Specification discloses
that “[t]he solids contain the biologically active portion of the [Ficus serum
fraction] or extracts. Thus, the higher the solids content the higher the
botanical activity. The [Ficus serum fraction] has a higher solids content as
compared to traditional water-soluble ficus extracts.” (Id. ¶ 88.)
Accordingly, the claimed “biological activity capable of reducing skin
hyperpigmentation” appears to result from concentrating the active
compounds existing naturally in the cell juice rather than obtaining any non-
naturally occurring active compounds. (See id. ¶ 98.)
We further consider that the claimed fraction is “substantially free of
pheophorbides” and “substantially free of proteins.” The Specification
discloses that pheophorbides are known skin photosensitizers and biological
toxins. (Spec. ¶ 82.) The Specification discloses proteins can cause contact
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dermatitis in sensitive individuals. (Id. ¶ 84). The Specification discloses
“[a]t levels normally found in plants, these materials typically do not raise
concern. However, when plant materials are concentrated, such as through
processing, the relative concentration present dramatically increases and can
create safety concerns.” (Id. ¶ 81.) The Specification does not provide any
evidence that naturally occurring cell juice contains an amount of
pheophorbides or proteins that would create safety concerns, particularly
where these compounds previously existed in traditional extracts. (See id.
¶ 83). Appellant’s Specification states:
Although the present investigators have also shown by way of
example that traditional ficus extracts can deliver a
hyperpigmentation benefit, these traditional extracts are not as
efficacious and they have properties making them less suitable
and thus less desirable for use in cosmetic compositions.

(Spec. ¶ 99.) The Specification continues by explaining that the Ficus serum
fraction has higher levels of certain ingredients, such as tannins, that
reported to be beneficial to combat aging, Appellant does not direct our
attention to a portion of the Specification that indicates there would be safety
concerns with naturally occurring juice. Again, the differences observed
with Ficus serum fraction appear to result from concentrating the active
compounds existing naturally in the cell juice rather than because of any
non-naturally occurring active compounds.
We find the claimed Ficus serum fraction containing naturally
occurring active compounds and excluding naturally occurring undesired
compounds to be similar to the claimed mixtures in Funk Bros. Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127 (1948). The Supreme Court held the
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[d]iscovery of the fact that certain strains of each species of
these bacteria can be mixed without harmful effect to the
properties of either is a discovery of their qualities of non-
inhibition. It is no more than the discovery of some of the
handiwork of nature and hence is not patentable.
Id. at 131. Moreover, the Court found “[t]he combination of species
produces no new bacteria, no change in the six species of bacteria, and no
enlargement of the range of their utility. Each species has the same effect it
always had.” Id.
The facts are also similar to those in Bhagat, where our reviewing
court found that “the Applicant has not shown that the claimed mixtures are
a ‘transformation’ of the natural products, or that the claimed mixtures have
properties not possessed by these products in nature.” In re Bhagat, 726 F.
App’x 772, 779 (Fed. Cir. 2018) (non-precedential). Likewise, Appellant
has not shown that the Ficus serum fraction is a transformation of the natural
product, or that the claimed fraction has properties not possessed by the
natural product. Accordingly, we are not persuaded that the claimed Ficus
serum fraction is markedly different from the natural product and we find
that the claims recite a judicial exception, i.e., a product of nature.
After identifying the judicial exception, we examine whether the
judicial exception is integrated into a practical application. (2019 Guidance,
84 F3d. Reg. at 55.) In particular, we evaluate the claims for additional
elements that integrate the natural product into a practical application. Id.
For example, additional elements may include a particular treatment or
prophylaxis for a medical condition or a particular manufacture that is
integral to the claims. Id. As to the product-by-process of claim 1, we
evaluate the patentability of the claim based on the product itself and not its
method of production. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
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Claims 1 and 35 recite the isolated natural products and the properties
thereof, e.g., biological activity. The claims do not include “specific
methods of treatment that employ a natural law” or “specific treatment
formulations that incorporate natural products.” Cf. Nat. Alternatives Int’l,
Inc. v. Creative Compounds, LLC, 918 F.3d 1338, 1348 (Fed. Cir. 2019)
(“Although beta-alanine is a natural product, the Product Claims are not
directed to beta-alanine. A claim to a manufacture or composition of matter
made from a natural product is not directed to the natural product where it
has different characteristics and the potential for significant utility.”)
(internal citations omitted). Unlike claims 1 and 35, the claims in Natural
Alternatives recited “a human dietary supplement” containing a natural
product, e.g., beta-alanine, and methods for using the supplement to increase
athletic performance. See id. at 1348. Claims 1 and 35 do not include
similar additional elements integrating the natural product into a practical
application. Accordingly, we find that the claims are directed to the judicial
exception.
Finally, we evaluate whether additional elements in the claims recite
“an ‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015). Particularly, we
evaluate whether the claims include specific limitations that are not “well-
understood, routine, conventional activity previously engaged in by
scientists who work in the field.” Mayo, 566 U.S. at 79. Claim 1 recites a
product-by-process, wherein the process includes conventional steps of
separating, filtering, and fractionating. See Ariosa, 788 F.3d at 1377
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(“Using methods like PCR to amplify and detect cffDNA was well-
understood, routine, and conventional activity in 1997.”). Claim 35 recites
“substantially free of proteins as measured by the Kjeldahl method,” which
necessarily incorporates a known and conventional measurement method.
There is no evidence that either claim includes unconventional elements
relating to the isolation and characterization of the isolated naturally
occurring composition. Accordingly, the elements merely append routine
and conventional steps to the natural product itself, and thus, do not supply
an inventive concept. Id. at 1378.
Obviousness-Type Double Patenting
The Examiner provisionally rejected claims 1, 4–9, 11–14, 16–21, and
35 over claims 1–7 of co-pending Application Serial No. 13/821,868. (Final
Act. 5.) The claims have since been issued as Patent No. US 9,993,508 B2.
(Ans. 16.) Appellant has failed to present arguments against the substantive
rejection. (Br. 20.) “If an appellant fails to present arguments on a
particular issue — or, more broadly, on a particular rejection — the Board
will not, as a general matter, unilaterally review those uncontested aspects of
the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Accordingly, we summarily affirm the Examiner’s rejection.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 4–9, 11–14,
16–21, and 35
§ 101 1, 4–9, 11–14,
16–21, and 35

1, 4–9, 11–14,
16–21, and 35
Non-statutory double
patenting
1, 4–9, 11–14,
16–21, and 35

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Claims
Rejected
Basis Affirmed Reversed
Overall Outcome 1, 4–9, 11–14,
16–21, and 35

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED