Raschke, Thomas et al.

Patent Trials and Appeals Board

Dec 12, 2019

10995200 - (D) (P.T.A.B. Dec. 12, 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.
10/995,200 11/24/2004 Thomas Raschke 3321-P26195 7439
13897 7590 12/12/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
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 THOMAS RASCHKE,
CHRISTOPHER MUMMERT, and VOLKER KALLMAYER
____________

Appeal 2018-007878
Application 10/995,200
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 132–172. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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 “Beiersdorf
AG of Hamburg, Germany” (Appellant’s December 26, 2017 Appeal Brief
(Appeal Br.) 3, as amended February 20, 2018).
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STATEMENT OF THE CASE
Appellant’s disclosure
relates to an active substance combination of creatine and/or
creatine derivatives and/or creatinine and/or creatinine
derivatives, phenoxyethanol and, optionally, glycerin, which
can be advantageously used in cosmetic or dermatological
preparations for the treatment and prophylaxis of the symptoms
of UV-induced and/or ozone-induced skin damage and of
inflammatory and degenerative skin conditions.
(Spec. ¶ 2.)
Appellant’s independent claims 132, 150, and 157 are reproduced
below:
132. A cosmetic or dermatological O/W emulsion which
comprises
(a) (i) creatinine and (ii) at least one of creatine and a
creatine derivative selected from creatine phosphate,
creatine sulfate, creatine acetate, creatine ascorbate,
and an ester of creatine and a mono- or polyfunctional
alcohol;
(b) phenoxyethanol, and
(c) optionally, glycerin.
(Appeal Br. 24.)
150. A cosmetic or dermatological emulsion which comprises
(a)(i) from about 0.01 % to about 1 % by weight of
creatinine;
(a)(ii) from about 0.01 % to about 1 % by weight of at
least one of creatine and a creatine derivative selected
from creatine phosphate, creatine sulfate, creatine
acetate, creatine ascorbate, and an ester of creatine and
a mono- or polyfunctional alcohol;

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(b) from about 0.1 % to about 1 % by weight of
phenoxyethanol;
(c) from about 4% to about 15% by weight of glycerin.
(Id. at 26–27.)
157. A cosmetic or dermatological O/W emulsion which
comprises
(I) at least one of creatine and a creatine derivative selected
from creatine phosphate, creatine sulfate, creatine
acetate, creatine ascorbate, and an ester of creatine and
a mono- or polyfunctional alcohol;
(II) phenoxyethanol;
(III) at least one of (i) creatinine and (ii) glycerin.
(Id. at 28.)

Ground of rejection before this Panel for review:
Claims 132–172 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sanbe,2 Stoll,3 and Deckers.4

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Sanbe discloses “[s]kin preparations for external
use . . . characterized in that they contain (i) creatine and/or creatinine, and
(ii) an active substance(s) that is a medicinal substance and/or a

2 Sanbe Akiko, JP 2000-247866, published Sept. 12, 2000, as translated in
PTO 10-0245.
3 David M. Stoll, US 6,413,552 B1, issued July 2, 2002.
4 Harm M. Deckers et al., US 6,372,234 B1, issued Apr. 16, 2002.
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physiologically active substance” (Sanbe ¶ 5; see id. ¶ 10 (Sanbe discloses
that the drug effect substance and/or physiological active substance include
“[v]arious types of known chemically active substances” such as “whitening,
reduction of the appearance of wrinkles, antioxidation, promotion of blood
circulation, sebum control, prevention of acne, prevention of skin chapping,
and anti-inflammation” agents); id. ¶ 12 (Sanbe exemplifies “amino acids”
as wrinkle reducer actives); see generally id. ¶¶ 11–17; Ans.5 3–4).
FF 2. Sanbe discloses that “[c]reatine or creatinine is blended into a skin
preparation for external use . . . in a quantity equal to 0.01 ~ 10 weight %,
and preferably 0.05 ~ 5 weight %” (Sanbe ¶ 8; see Ans. 3).
FF 3. Sanbe discloses that “[b]y using creatinine or creatine together with a
polyol, it is possible to further enhance skin care effects” (Sanbe ¶ 20; see id.
¶ 21 (Sanbe discloses glycerin as a polyol within the scope of its disclosure);
id. ¶ 22 (Sanbe discloses that its composition can comprise a polyol at a
concentration of “0.1 ~ 50 weight %”); see Ans. 3).
FF 4. Examiner finds that Sanbe’s “composition may take the form of an
oil-in-water emulsion (O/W)” and “states that the emulsion system can be a
water-oil two-layer system” (Ans. 3 (citing Sanbe ¶ 24)).
FF 5. Examiner finds that Sanbe fails to disclose a composition that
comprises phenoxyethanol, retinyl palmitate, ubiquinone, at least one of
macedemia oil, or primrose oil and panthenol (see Ans. 4).
FF 6. Stoll discloses a topical composition, for application to skin,
comprising creatine and 0.10–0.5% phenoxyethanol, wherein the
phenoxyethanol serves a preservative function in Stoll’s composition (Stoll

5 Examiner’s June 1, 2018 Answer.
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3:66–4:6 and 4:25–48; see id. at 4:2–6 (Stoll discloses that its composition
may comprise ingredients with amino acid, skin conditioning, skin
smoothing, and skin toning functions); see also Ans. 4) (Stoll 4:25–48; see
Ans. 4).
FF 7. Deckers discloses “emulsions [that] comprise oil bodies . . . and the
use of the emulsions in various products that are topically applied to the
surface area of the human body” (Deckers 1:17–21).
FF 8. Deckers discloses “[n]on-limiting examples of actives [that] may be
formulated in the presence of oil body emulsions,” including primrose oil,
retinyl palmitate, panthenol, ubiquinone, ceramides, an amino acid and
amino acid derivative (Deckers 19:30–31, 21:22–52, 22:26–28, and 22:58–
61; see generally Ans. 4).
ANALYSIS
Based on the combination of Sanbe, Stoll, and Deckers, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to prepare a dermatological composition
comprising creatine and/or creatinine in combination with glycerin,
phenoxyethanol, and an active agent, such as primrose oil, retinyl palmitate,
panthenol, and ubiquinone (Ans. 5; see also id. at 4–5).

Claim 132:
Appellant’s claim 132 is reproduced above.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
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the particular problem with which the inventor is involved. See In re Clay,
966 F.2d 656, 658–89 (Fed. Cir. 1992). On this record, Sanbe discloses
topical compositions comprising creatine, creatinine, and an active substance
that exhibit beneficial effects on skin (FF 1). Stoll discloses a preservative
that may be used in combination with topical compositions comprising
creatine and other agents that exhibit beneficial effects on skin (FF 6). Thus,
notwithstanding Appellant’s contention to the contrary, a person of ordinary
skill in this art interested in adding a preservative to a topical composition
comprising creatine, such as is disclosed by Sanbe, would have reasonably
looked to Stoll for its disclosure of an appropriate preservative (cf. Appeal
Br. 10 (Appellant contends that “it is not seen that one of ordinary skill in
the art wishing to modify the preparations of SANBE would have any reason
to consult STOLL”); see id. at 8–11).
Sanbe and Stoll both disclose topical compositions for application to
skin to achieve a beneficial effect on skin (FF 1–2 and 6). Appellant fails to
identify a disclosure in either Sanbe or Stoll that limits the application of the
topical compositions disclosed therein to a particular area of skin.
Therefore, we are not persuaded by Appellant’s unsupported assertion that
“it is apparent [from Stoll] that [its] compositions are intended
predominantly, if not exclusively, for topical application to arms and legs,
i.e., to parts of the body which clearly are not the primary and most
important areas of application for [Sanbe’s] cosmetic skin care
compositions” (Appeal Br. 10; see id. at 11 (Appellant contends that Sanbe
“is intended for a purpose which is entirely different from the intended
purpose of [Stoll’s] composition”); id. at 13 (Appellant contends that “it is
apparent to one of ordinary skill in the art that the compositions of STOLL
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may contain components which are acceptable for application to, e.g., arms
and legs, but are not acceptable (or at least not desirable) for application
to . . . facial skin”); see also Reply Br. 2). For the foregoing reasons, we are
not persuaded by Appellant’s contention that “one of ordinary skill in the art
would . . . be discouraged from incorporating 2-phenoxyethanol into
cosmetic compositions which are intended for application to, inter alia,
facial skin (close to the eyes) such as the compositions of SANBE,” because
2-phenoxyethanol may cause skin irritation (see Appeal Br. 13–14; see also
Reply Br. 3–5).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that, because “three of the five preservatives which are mentioned
in STOLL are methyl paraben, propyl paraben and butyl paraben, i.e.,
preservatives which are employed also in some of the compositions which
are exemplified in SANBE,” a person of ordinary skill in this art would not
have found it prima facie obvious to select one of the other preservatives,
phenoxyethanol, disclosed in Stoll (see Appeal Br. 11; see also Reply Br. 3–
4). Stated differently, because Stoll discloses that phenoxyethanol, and other
agents, may be used as a preservative, we are not persuaded by Appellant’s
contention that “there is no reason whatsoever for replacing the parabens,
i.e., the only preservatives which appear to be employed in the compositions
of SANBE, by a preservative which happens to be mentioned among other
preservatives . . . in STOLL, i.e., phenoxyethanol” (Appeal Br. 12).
Because Sanbe discloses compositions comprising creatine and/or
creatinine, we are not persuaded by Appellant’s contention that “SANBE
clearly fails to convey the impression that the presence of creatine . . . in [its]
compositions is associated with any advantage” (see FF 1; cf. Appeal Br. 15;
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see also Appeal Br. 16–17 (Appellant contends that Sanbe’s disclosure of
compositions comprising creatine or creatinine “correctly reflect the
teaching of SANBE, i.e., that the presence of either creatine or creatinine is
sufficient to obtain the effects described therein”)). A reference 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); see also In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971) (Disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments.). Therefore, we are not persuaded by Appellant’s contention
that because Sanbe does not exemplify a composition comprising creatine
and creatinine, “the simultaneous presence of creatine and creatinine in the
compositions disclosed therein is unnecessary and would not serve any
useful purpose” (Appeal Br. 16 (footnote omitted); see also Reply Br. 5–6).
For the foregoing reasons, we are not persuaded by Appellant’s
unsupported contention that the term “and/or” has a different meaning in “a
scientific article” than it does in “a patent application” (Appeal Br. 17; see
also Reply Br. 6). See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).

Claim 150:
Appellant’s claim 150, reproduced above, comprises from about
0.01 % to about 1 % by weight of creatinine, from about 0.01 % to about
1 % by weight of creatine and from about 0.1 % to about 1 % by weight of
phenoxyethanol (see Appeal Br. 26–27).
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Sanbe discloses compositions comprising, inter alia, creatine and
creatinine, blended into a topical skin composition in a quantity equal to
0.01–10 weight % (see FF 1–2). Therefore, we are not persuaded by
Appellant’s contention that “both SANBE and STOLL fail to prompt one of
ordinary skill in the art to employ a combination of creatine and creatinine in
the compositions taught therein and fail to teach or suggest any advantage
provided by the presence of a corresponding combination” (Appeal Br. 18).
Given the weight % range of creatine and creatinine set forth in
Sanbe, we find no error in Examiner’s conclusion that a person of ordinary
skill in this art would have found it prima facie obvious to optimize the
concentration of creatine and creatinine in the composition suggested by the
combination of Sanbe, Stoll, and Deckers by routine experimentation (see
Ans. 5). See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (citations omitted)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”). Therefore, we are not persuaded by Appellant’s
contention that “there is no apparent reason for one of ordinary skill in the
art to employ creatinine and creatine simultaneously, let alone to assume that
certain weight ratios of creatine and creatinine would work better than other
weight ratios of these two compounds” (Appeal Br. 18 see also id. at 18–19;
Reply Br. 7–8).
Stoll discloses a topical composition, for application to skin,
comprising creatine and 0.10–0.5% phenoxyethanol (FF 6). Therefore, we
are not persuaded by Appellant’s contention that “STOLL fails to render it
obvious to include phenoxyethanol (in the indicated minimum amounts) in a
composition” comprising creatine (Appeal Br. 15).
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Claim 136:
Appellant’s claim 136 depends from and further limits Appellant’s
claim 132 to require that the weight ratio of creatine and creatinine,
phenoxyethanol, and glycerin are independently rational numbers of from
about 1 to about 50 (see Appeal Br. 24–25).
As discussed above, the combination of Sanbe, Stoll, and Deckers
suggests a composition comprising 0.01–10 % creatine and creatinine, 0.10–
0.5 % phenoxyethanol, and 0.1–50 % glycerin (see FF 1–3 and 6). Given
the concentration ranges of creatine and creatinine, phenoxyethanol, and
glycerin disclosed by the combination of Sanbe, Stoll, and Deckers, we find
no error in Examiner’s conclusion that a person of ordinary skill in this art
would have found it prima facie obvious to optimize the concentration of
these ingredients by routine experimentation (see Ans. 5). See In re Aller,
220 F.2d at 456 (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”). Therefore, we are not persuaded by
Appellant’s contention that “there is no apparent reason for one of ordinary
skill in the art to optimize the weight ratios of phenoxyethanol, glycerin and
the sum of creatine and creatinine in the” composition suggested by the
combination of Sanbe, Stoll, and Deckers (Appeal Br. 20; see also id. at 19–
20).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s conclusion of obviousness is based on improper
hindsight (see Appeal Br. 20).

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Claim 138:
Appellant’s claim 138 depends from and further limits the emulsion of
Appellant’s claim 132 to further comprise ubiquinone (Appeal Br. 25).
Sanbe discloses a composition comprising, inter alia, “an active
substance(s) that is a medicinal substance and/or a physiologically active
substance” (FF 1). Deckers discloses “emulsions [that] comprise oil
bodies . . . and the use of the emulsions in various products that are topically
applied to the surface area of the human body” (FF 7). Deckers further
discloses “[n]on-limiting examples of actives [that] may be formulated in the
presence of oil body emulsions,” including primrose oil, retinyl palmitate,
panthenol, ubiquinone, and ceramides (FF 8). Thus, we find no error in
Examiner’s conclusion that it would have been prima facie obvious to those
of ordinary skill in this art to include an active, such as is disclosed in
Deckers, in a composition suggested by the combination of Sanbe and Stoll
(see Ans. 4).
Therefore, we are not persuaded by Appellant’s contention that
Deckers “discloses most, if not substantially all substances which can be
included in a cosmetic preparation” and
Examiner has not provided any explanation whatsoever as to
what would allegedly have motivated one of ordinary skill in
the art to pick and choose from the virtually infinite number of
possible ingredients for a cosmetic emulsion disclosed in
DECKERS exactly those which are recited in some of the
instant claims.
(Appeal Br. 21.) See Merck & Co. Inc. v. Biocraft Laboratories, Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“Disclos[ure of] a multitude of effective
combinations does not render any particular formulation less obvious.”); see
also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335
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(1945) (“Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
the last opening in a jig-saw puzzle. It is not invention.”).

Claim 171:
Appellant’s claim 171 depends from and further limits the emulsion of
Appellant’s claim 157 to further comprise one or more ceramides (see
Appeal Br. 29).
Appellant recognizes that Deckers discloses ceramides as an active for
topical compositions (see Appeal Br. 21–22; see also FF 7–8). Thus, for the
same reasons discussed above, with respect to Appellant’s claim 138, it
would have been prima facie obvious for a person of ordinary skill in this art
to select ceramides as an active for use in the composition suggested by the
combination of Sanbe, Stoll, and Deckers. See Merck & Co. Inc. v. Biocraft
Laboratories, Inc., 874 F.2d at 807 (“Disclos[ure of] a multitude of effective
combinations does not render any particular formulation less obvious.”); see
also Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. at 335
(“Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
the last opening in a jig-saw puzzle. It is not invention.”).
Therefore, we are not persuaded by Appellant’s contention that a
person of ordinary skill in this art would not have been motivated to select
ceramide from Deckers for inclusion in the composition suggested by the
combination of Sanbe, Stoll, and Deckers (see Appeal Br. 22).

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Claim 172:
Appellant’s claim 172 depends from and further limits the emulsion of
Appellant’s claim 157 to further comprise carnitine and/or a derivative
thereof (Appeal Br. 30).
Although Sanbe, Stoll, and Deckers each disclose compositions
comprising “amino acids,” we do not find and Examiner has not identified a
specific disclosure of carnitine, and/or derivative thereof, in Sanbe, Stoll, or
Deckers, or a reason why a person of ordinary skill in this art would have
necessarily interpreted a disclosure of an amino acid to direct one of
ordinary skill in the art to select carnitine for use in the composition
suggested by the combination of Sanbe, Stoll, or Deckers (see generally FF
1 and 6). Therefore, we agree with Appellant’s contention that “[i]t is not
seen that any of the documents relied upon by the Examiner mentions
carnitine and/or derivative thereof, and neither has the Examiner provided
any explanation in this regard” (Appeal Br. 22; see also Reply Br. 8
(Appellant “note[s] that the Examiner has not addressed Appellant[’s]
arguments regarding claim 172 at page 22 of the Appeal Brief”)).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with respect to Appellant’s claims 132, 136, 138,
150, and 171. The rejection of claims 132, 136, 138, 150, and 171 under 35
U.S.C. § 103(a) as unpatentable over the combination of Sanbe, Stoll, and
Deckers is affirmed. Appellant’s claims 140–143, 146–149, 151, 152, 154–
158, 161–163, and 165 are not separately argued and fall with Appellant’s
claim 132. Appellant’s claim 137 is not separately argued and falls with
Appellant’s claim 136. Appellant’s claims 139 and 166–170 are not
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separately argued and fall with Appellant’s claim 138. Appellant’s claims
133–135, 144, 145, 153, 159, 160, and 164 are not separately argued and fall
with Appellant’s claim 150.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with respect to Appellant’s claim 172.
The rejection of claim 172 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Sanbe, Stoll, and Deckers is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
132–172 103(a) Sanbe, Stoll,
Deckers
132–171 172

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART