Thomas Blatt et al.

Patent Trials and Appeals Board

Sep 16, 2019

11944520 - (D) (P.T.A.B. Sep. 16, 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.
11/944,520 11/23/2007 Thomas Blatt 3321-P33497 5525
13897 7590 09/16/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
BERRY, LAYLA D
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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 BLATT, UTE BREITENBACH,
CHRISTOPHER MUMMERT, THOMAS RASCHKE,
CATHRIN SCHERNER, JENS SCHULZ,
and FRANZ STAEB
____________________

Appeal 2018-008763
Application 11/944,520
Technology Center 1600
____________________

Before JACQUELINE T. HARLOW, BRIAN D. RANGE, and JOHN E.
SCHNEIDER, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 47–66. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Beiersdorf AG.
Appeal Br. 3.
Appeal 2018-008763
Application 11/944,520

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STATEMENT OF THE CASE2
Appellants describe the invention as relating to an active ingredient
combination of glucosyl glycerides and surface-active glucose derivatives
for use as a cosmetic or for dermatology. Spec. ¶ 1. Appellants indicate that
the invention relates to cosmetic preparations having a content that increases
moisture of the skin. Id. ¶ 3. Claim 47, reproduced below with emphasis
added to certain key recitations, is illustrative of the claimed subject matter:
47. A cosmetic preparation, wherein the preparation
comprises
(i) one or more glucosyl glycerides,
(ii) creatinine and one or more substances selected from
creatine, creatine phosphate, creatine sulfate,
creatine acetate, creatine ascorbate, and creatine
derivatives whose carboxyl group is esterified by a
mono- or polyfunctional alcohol,
a molar ratio (i) : (ii) being from 50:1 to 1:50.
Appeal Br. 16 (Claims App.).
Our prior decision in Ex parte Blatt, Appeal 2015-002387 (PTAB
Feb. 10, 2017), involved the present patent application but different claims.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Thiem et al.
(“Thiem”)
US 5,891,854

Apr. 6, 1999

2 In this Decision, we refer to the Final Office Action dated October 18,
2017 (“Final Act.”), the Appeal Brief filed May 15, 2018 (“Appeal Br.”), the
Examiner’s Answer dated July 11, 2018 (“Ans.”), and the Reply Brief filed
September 10, 2018 (“Reply Br.”).
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Application 11/944,520

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Biergiesser et al.
(“Biergiesser”)
US 2005/0131065 A1 June 16, 2005

REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
Rejection 1. Claims 47–66 under 35 U.S.C. § 103 as unpatentable
over Biergiesser in view of Thiem. Ans. 3.3
Rejection 2. Claims 47–66, provisionally, on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 99–141 of copending Application No. 10/995,203 in view of Thiem.
Id. at 5–6.
Rejection 3. Claims 47–66, provisionally, on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 91–124 of copending Application No. 10/995,200 in view of Thiem.
Id. at 6.
Rejection 4. Claims 47–66, provisionally, on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 98–143 of copending Application No. 10/995,208 in view of Thiem.
Id. at 6.

3 The Examiner refers to claims 27–46. Ans. 3; Final Act. 2. This error is
harmless because Appellants understand the Examiner’s intention. Appeal
Br. 7 (“presumably claims 47-66 were intended”).
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellants’ arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection 1. The Examiner rejects claims 47–66 under 35 U.S.C.
§ 103 as unpatentable over Biergiesser in view of Thiem. Ans. 3.
Appellants argue all claims as a group aside from presenting a separate
argument for claims 56 and 60. Appeal Br. 7–13. Therefore, consistent with
the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion
to claims 47, 56, and 60. All other claims on appeal stand or fall together
with claim 47.
With respect to claim 47, the Examiner finds that Biergiesser teaches
compositions containing creatine, creatinine, and glycerine. Ans. 3 (citing
Biergiesser). The Examiner finds that the compositions are used to treat skin
conditions. Id. The Examiner finds that Biergiesser teaches a molar ratio of
glycerin to creatinine and other substances that falls within claim 47’s 50:1
to 1:50 recitation. Id. at 3–4. The Examiner finds that Biergiesser does not
teach a glucosyl glyceride. Id. at 4. The Examiner finds, however, that
Thiem teaches cosmetic formulations and teaches use of glucosyl glycerides
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as superior to glycerol. Id. The Examiner determines that a person of
ordinary skill in the art would have added glucosyl glycerides to
Biergiesser’s composition because, as Thiem teaches, glucosyl glycerides
have good moisturizing properties and are more compatible with skin and
mucous membranes than glycerol. Id.
Appellants argue that the Examiner has not adequately explained why
a person of skill in the art would combine Thiem’s glucosyl glycerides with
Biergiesser’s compositions. Appeal Br. 8–13. Appellants’ arguments are
similar to those raised in Appellants’ prior appeal of similar claims drawn to
this same patent application. For brevity, we incorporate the reasoning of
the Board’s decision in Appeal 2015-002387 (PTAB February 10, 2017) by
reference in its entirety.
Appellants now emphasize that Thiem discloses that glycerol may
cause irritation only when used “(i) at very high levels and (ii) with
particularly sensitive individuals.” Appeal Br. 8 (Appellants’ emphases).
This argument does not persuade of us error in the Examiner’s stated reason
to combine because Appellants do not persuasively dispute that a person of
skill in the art would have understood from Thiem that glucosyl glycerides
have good moisturizing properties. See Ans. 4 (referencing “good
moisturizing properties”), 9 (quoting Thiem 3:64–4:3 where Thiem states
that formulations with glucosyl glycerides “act better as a moisturizing agent
and act better against skin ageing than the active compounds, active-
compound compositions and formulations of the prior art”). Use of the
glucosyl glyceride in Biergiesser’s composition would thus be no more than
predictable use of a prior art element according to an established function.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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Appellants’ argument is also unpersuasive because Appellants agree
that Biergiesser teaches a glycerol composition as high as 7%. Appeal Br.
10 (citing Biergiesser ¶ 64). A desire to avoid any possible irritation among
sensitive individuals at this high of a level (a level higher than any glycerol
amount in a Thiem composition) provides a second reason to use glucosyl
glyceride in Biergiesser’s composition. Although Appellants argue that
Biergiesser does not indicate that its composition is for sensitive individuals
(Appeal Br. 9–10), a person of skill in the art would have understood that a
person may not know whether they are sensitive prior to using a product;
avoiding potential irritation, therefore, would have been desirable.
Appellants argue that Thiem does not indicate that glycerol is among
the “prior art” that Thiem suggests glycosyl glyceride is superior to (“better
moisturizing and anti-aging properties”) (Reply 2), but we disagree. When
discussing prior art, Thiem focuses on compositions with glucose and
glycerol. Thiem 1:54–59. Thiem is, therefore, best understood as
referencing glycerol based prior art among its referenced and inferior
“active-compound combinations and formulations of the prior art.” Id. at
3:61–4:3.
Appellants also argue that Biergiesser includes a retinoid which may
cause side effects. Appeal Br. 10–11. Even if we accepted Appellants’
position on this point as true, it does not weigh against a person of skill in
the art wanting to avoid additional side effects from glycerol. Indeed, the
portion of Biergiesser discussing retinoid side effects (Biergiesser ¶ 18–19)
establishes that Biergiesser is concerned with minimizing skin irritation; this
weighs in favor of using glucosyl glyceride in view of Thiem’s teachings.
Ans. 9.
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Appellants further argue that the Biergiesser inventors did not
mention glucosyl glycerides in Biergiesser and argue that many cosmetics
available today contain glycerol despite Thiem being published 19 years
ago. Appeal Br. 8, 11; Reply Br. 3–5. This argument is not persuasive. The
Examiner correctly cites In re Wright, which states that “mere age of the
references is not persuasive of the unobviousness of the combination of their
teachings, absent evidence that, notwithstanding knowledge of the
references, the art tried and failed to solve the problem.” Ans. 11 (citing In
re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Moreover, Appellants
previously argued that relatively higher cost of glucosyl glyceride might be a
reason to use glycerol (Appeal 2015-002387, at 6–7), and a person of skill in
the art would have been able to weigh considerations such as price against
the Thiem’s stated advantages of glucosyl glyceride. Cf. Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 115 7, 1165 (Fed. Cir. 2 006) (“a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine”). We further emphasize that
Appellants’ argument concerning Biergiesser failing to reference glucosyl
glycerides (see, e.g., Reply Br. 3–4) is unpersuasive because the argument
attacks only the Biergiesser reference rather than the combined teachings of
Biergiesser and Thiel. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Because Appellants have not identified harmful error in the
Examiner’s rejection, we sustain the Examiner’s rejection of claims 47–55,
57–59, and 61–66.
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Dependent claims 56 and 60 recite a preparation that “comprises at
least 3 % by weight of glycerin.” Appeal Br. 17–18. Appellants argue that
the Examiner has not explained why a person of skill in the art would have
used both glycerin and glucosyl glycerides as these two claims require.
Appeal Br. 13. This argument is unpersuasive because the Examiner finds
that Thiem teaches preparing compositions that contain both glycerin and
glucosyl glyceride (Ans. 10), and Appellants do not persuasively dispute this
finding. Applying a mixture of both glycerin and glucosyl glyceride to the
Biergiesser composition would be a predictable use of prior art elements
according to established function. KSR Int’l Co., 550 U.S. at 417. We
therefore sustain the Examiner’s rejection of claims 56 and 60.
Rejections 2–4. The Examiner rejects claims 47–66, provisionally, on
the ground of nonstatutory obviousness-type double patenting. Ans. 6–7.
Appellants present, substantively, the same arguments addressed above.
Appeal Br. 14. We, therefore, sustain these provisional rejections for the
reasons explained above.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 47–66.
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