Blatt, Thomas et al.

Patent Trials and Appeals Board

Feb 24, 2020

10337661 - (D) (P.T.A.B. Feb. 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.
10/337,661 01/06/2003 Thomas Blatt 3321-P30874 9787
13897 7590 02/24/2020
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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 THOMAS BLATT, MELANIE SCHMIDT,
VOLKER SCHREINER,
and FRANZ STAB

Appeal 2019–002808
Application 10/337,661
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 84–103.0F1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART and enter a NEW GROUND of rejection
pursuant to 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The Specification discloses “the use of creatine and/or creatine
derivatives in cosmetic or dermatological preparations for the treatment and
prophylaxis of the symptoms of UV- and/or ozone-induced skin damage,
and also of inflammatory and degenerative skin conditions.” Spec. 1.
Claim 84, which is illustrative of the claimed subject matter, is
reproduced below:
84. A method of treating symptoms of skin damage or a skin
condition in a human in need thereof, wherein the skin damage
or skin condition comprises one or more of sensitive states of
skin or skin appendages, horny layer barrier disorders,
inflammatory skin conditions, atopic eczema, seborrheic
eczema, polymorphous photodermatosis, and psoriasis, and
wherein the method comprises applying to the human’s skin or
skin appendages one or more substances selected from creatine
phosphate, creatine sulfate, creatine acetate, creatine ascorbate,
and esters of creatine and mono- or polyfunctional alcohols in
the form of a cosmetic or dermatological preparation which
comprises the one or more substances in a concentration of
from 0.001 % to 30 % by weight, based on a total weight of the
preparation, the one or more substances being applied in an

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Beiersdorf AG as the real party in
interest. Appeal Br. 3.
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amount which is effective for treating the skin damage or skin
condition.

Appeal Br. 34 (Claims App.).
REJECTIONS
The Examiner rejected claims 84, 86, 89, 90, 98, 99, 101, and 103
under 35 U.S.C. § 102(e) as being anticipated by Daouk.1F2
The Examiner rejected claim 85 under 35 U.S.C. § 103 as being
obvious over Daouk in view of Degwert.2F3
The Examiner rejected claims 85, 87, and 88 under 35 U.S.C. § 103 as
being obvious over Daouk in view of Keyhani.3F4
The Examiner rejected claims 91 and 96 under 35 U.S.C. § 103 as
being obvious over Daouk.
The Examiner rejected claims 92 and 95 under 35 U.S.C. § 103 as
being obvious over Daouk in view of Ptchelintsev.4F5
The Examiner rejected claim 93 under 35 U.S.C. § 103 as being
obvious over Daouk in view of Raths.5F6
The Examiner rejected claim 94 under 35 U.S.C. § 103 as being
obvious over Daouk in view of Porter.6F7
The Examiner rejected claims 97, 100, and 102 under 35 U.S.C. § 103
as being obvious over Daouk.

2 Rima Kaddurah-Daouk, US 6,242,491 B1, issued June 5, 2001(“Daouk”).
3 Degwert et al., US 5,723,482, issued Mar. 3, 1998 (“Degwert”).
4 Keyhani et al., WO 95/05852, published Mar. 2, 1995 (“Keyhani”).
5 Ptchelintsev et al., US 5,834,513, issued Nov. 10, 1998 (“Ptchelintsev”).
6 Raths et al., US 6,277,359 B1, issued Aug. 21, 2001 (“Raths”).
7 Porter et al., US 5,785,978, issued Jul. 28, 1998 (“Porter”).
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The Examiner rejected claims 84, 89, 90, 98, 101 under 35 U.S.C.
§ 102(e) as being anticipated by Fujimura.7F8
The Examiner rejected claims 84, 88, 89, 90, 98, 99, 101, and 103
under 35 U.S.C. § 103 as being obvious over Teicher8F9 in view of Daouk.
ISSUES AND ANALYSIS
Rejection of claims 84, 86, 89–90, 98, 99, 101, and 103 under 35 U.S.C.
§ 102(e) as being anticipated by Daouk
The Examiner finds that:
Daouk discloses a method for the treatment of skin damage due
to harmful sun radiations (photodermatosis), stress, fatigue, free
radicals, skin damage due to aging, wrinkles (due to loss of
collagen and elastin i.e. results in deficient skin condition),
insult related skin damage, uneven pigmentation of skin, and
even mitochondrial dysfunction comprising applying to skin a
[dermatological] preparation comprising creatine or creatine
derivatives such as creatine phosphate, creatine ascorbate,
creatine pyruvate, Guanidino acetate and analogs of these
compounds such as creatine acetate.

Final Act. 2–3 (citing Daouk Abstract, 2:15–45, 3:32–4:24, 4:1–14, 14:44–
50, 16:45–60, 29:20–34:59 (claims 11, 12, 30, 21)). The Examiner also
finds that Daouk discloses topical compositions that can be in the form of
solutions, lotions, creams, gels, or ointments, wherein the lotion comprises
from about 0.1% to about 20% of the creatine, creatine phosphate, or
creatine derivatives. Id. at 3 (citing Daouk 5:12–18, 5:59–64).
According to the Examiner, Daouk discloses that “aging involves
death of cells or cell dysfunction due to production of free radicals, oxidative

8 Fujimura et al., US 5,939,078, issued Aug. 17, 1999 (“Fujimura”).
9 Teicher et al., WO 95/19769, published July 27, 1995 (“Teicher”).
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damage, and symptoms include wrinkles, loss of elasticity of the skin,
uneven pigmentation of the skin i.e. aging results in deficient, sensitive or
hypoactive states of skin or skin appendages.” Id. The Examiner also finds
that the current Specification discloses that skin aging results in dryness,
itching, and reduced refatting by sebaceous glands; therefore, applying the
dermatological preparation taught by Daouk for treating skin aging
inherently treats these symptoms. Id. The Examiner concludes that “Daouk
discloses the same method steps as the instant invention” and, therefore,
when the dermatological preparations of Daouk are applied to the skin for
treatment of skin damage “due to harmful sun radiations, stress, fatigue, free
radicals, skin damage due to aging, [or] wrinkles,” then the application
“inherently treats dryness, itching, [horny] layer barrier disorder, deficient,
sensitive skin or skin appendages.” Id.
Similarly, the Examiner finds that “Daouk’s method of treatment of
skin damage due to sun burn, free radicals, insult or pollution related skin
damage comprising [applying] a dermatological preparation comprising
creatine or creatine phosphate inherently treats the symptoms of atopic
eczema caused by such environmental conditions.” Id. at 4. The Examiner
also finds that “Daouk discloses a method of treating skin damage due to
harmful sun radiations, free radicals (in atopic eczema free radicals build
up), insult or pollution related skin damage comprising applying a
dermatological preparation comprising creatine or creatine phosphate.” Id.
According to the Examiner, “the symptoms of atopic eczema reads on ‘sun
burn’ redness, blister caused by sun burn, skin damage due to insult or
pollution,” therefore, “Daouk’s method of treatment of skin damage due to
sun burn, free radicals, insult or pollution related skin damage comprising
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[applying] a dermatological preparation comprising creatine or creatine
phosphate inherently treats the symptoms of atopic eczema and
inflammatory skin conditions caused by such environmental conditions.” Id.
Appellant asserts that claim 84, for example, recites application of the
claimed composition to the skin “of a human in need thereof” for treating the
symptoms of one or more of the conditions recited in the claim. Appeal Br.
9. According to Appellant, Daouk fails to disclose any of the recited
conditions and is, therefore, unable to anticipate claim 84. Id. at 10.
Appellant contends that the Examiner has not provided any evidence that the
conditions recited in the claims are a necessary result of skin aging. Id.
Appellant further contends that the Examiner has provided no evidence that
free radicals build up in atopic eczema or that “the symptoms of atopic
eczema reads on ‘sun burn’ redness, blister caused by sunburn, skin damage
due to insult or pollution.” Id. (citing Final Act. 4, 6).
Appellant further asserts that a “matter is ‘inherent’ if the extrinsic
evidence makes it clear that the matter is necessarily present in the thing
described in the reference, and that it would also be so recognized by
persons of ordinary skill.” Id. (citing Titanium Metals Corp. v. Banner, 778
F.2d 775 (Fed. Cir. 1985); In re Cruciferous Sprout Litigation, 301 F.3d
1343, 1349–50 (Fed. Cir. 2002); and In re Crish, 393 F.3d 1253, 1258–59
(Fed. Cir. 2004)). Appellant also states that, “[i]nherency, however, cannot
arise from probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient. To the
contrary, a certain thing must result from a given set of circumstances to be
inherent.” Id. at 10–11 (citing In re Robertson, 49 USPQ2d 1949, 1950–51
(Fed. Cir. 1999)).
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We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. “[D]uring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). The terms “sensitive states of skin or skin
appendages,” “horny layer barrier disorders,” and “inflammatory skin
conditions,” are not explicitly defined in the instant Specification. The
Examiner’s definition of these terms are reasonable and consistent with the
Specification. Appellant has not persuasively shown otherwise.
The Specification describes skin aging as including “structural
damage and functional disorders” including drying, roughness, itching, and
reduced refatting by sebaceous glands. Spec. 1–2. The Specification also
discusses exogenous factors such as UV light that can cause “structural
damage and functional disorders” in the epidermis and dermis including
flaccidity and formation of wrinkles and increased susceptibility to
mechanical stress (e.g. cracking). Id. at 2. Therefore, based on the broadest
reasonable interpretation, the terms “sensitive states of skin or skin
appendages,” “horny layer barrier disorders,” and “inflammatory skin
conditions,” would include the damage and skin disorders described in the
Specification relating to aging and UV damage.
Therefore, we find that the Examiner has the better position that claim
84 is anticipated by Daouk. Daouk describes the use of creatine derivatives,
including creatine phosphate, for “protecting skin tissue against age related
damage or insults such as harmful UV radiation, stress and fatigue.” Daouk
2:15–19. Daouk discusses using creams, oils, or emulsions to treat “skin
disorders” including “aging and damage resulting from sun radiation, stress,
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fatigue and/or free radicals.” Id. at 2:26–28, 4:3–5. Therefore, Daouk’s
disclosure of treating skin disorders including aging and sun-related damage
discloses the treatment of “sensitive states of skin or skin appendages,”
“horny layer barrier disorders,” and/or “inflammatory skin conditions,” as
those terms are construed.
This reasoning also comports with Perricone, where a method claim
that required “preventing sunburn damage to exposed skin surfaces,” was
found satisfied by a treatment using a prior art skin composition that had
been applied to skin surfaces for a different purpose. Perricone v. Medicis
Pharm. Corp., 432 F.3d 1368, 1378–79 (Fed. Cir. 2005). “Using the same
composition claimed . . . in the same manner claimed . . . naturally results in
the same claimed . . . benefits.” Id. at 1380.
Furthermore, Daouk discloses topical compositions that comprise
from about 0.1% to about 20% of the creatine, creatine phosphate, or
creatine derivatives. Id. at 5:59–60. This range falls within the claimed
range of 0.001% to 30%, and therefore, anticipates it. When a claim defines
a composition in terms of ranges of elements, any single prior art reference
that falls within each of the ranges anticipates. Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999).
1. Claim 86
With regard to claim 86, which recites that the skin condition to be
treated is atopic eczema, Appellant contends that “Daouk is completely
silent with respect to treatment of atopic eczema.” Id. at 11.
We agree with Appellant that Daouk’s disclosure of skin damage due
to sun burn and free radicals does not anticipate the treatment of atopic
eczema, which is a specific disorder that may result in redness or skin
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damage. Treatment of skin damage as described by Daouk does not
necessarily treat atopic eczema (which may or not be present). Inherency
“may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.” Rapoport v. Dement, 254 F.3d 1053, 1063 (Fed. Cir. 2001).
This reasoning that the narrower patient population with atopic
eczema in claim 86 differs from the patient population in Daouk and the
broader patient population in claim 84 that includes any “sensitive states of
skin” is also consistent with Perricone, which distinguished between the
topical application of a lotion to skin generally to prevent sunburn, and the
topical application of a lotion to treat sunburned skin. Perricone, 432 F.3d
at 1368. Perricone found that the “issue is not . . . whether [the prior art]
lotion if applied to skin sunburn would inherently treat that damage, but
whether Pereira discloses the application of its composition to skin sunburn.
It does not.” Id. at 1378. Therefore, we find that the Examiner has not
established that claim 86 is anticipated by Daouk.
2. Claims 98, 99
With regard to claims 98 and 99, which do not recite sensitive states
of skin or skin appendages or polymorphous photodermatosis, Appellant
asserts that Daouk does not teach the intentional treatment of symptoms of
any of the skin damage or conditions recited in these claims, i.e., horny layer
barrier disorders, inflammatory skin conditions, atopic eczema, seborrheic
eczema, or psoriasis. Id. at 12–13.
In response, the Examiner asserts that:
Daouk also teaches that aging involves death of cells or cell
dysfunction due to production of free radicals, oxidative
damage, and symptoms include wrinkles which reduce capacity
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to retain water by horny layer, loss of elasticity of the skin,
uneven pigmentation of the skin i.e aging results in deficient,
sensitive or hypoactive states of skin or skin appendages, horny
layer barrier damage.
Ans. 5. The Examiner also finds that the instant Specification teaches that
skin aging results in dryness, itching, i.e., sensitive or irritated skin, reduced
refatting by sebaceous glands, increased susceptibility to cracking (sensitive
skin). Id. The Examiner concludes, “[t]hus, by applying the dermatological
preparation taught by Daouk for treating skin aging inherently treats
deficient, sensitive states of skin or skin appendages, dryness, itching (i.e
treats sensitive or irritated skin due to itching), reduced refatting by
sebaceous glands and horny layer barrier damage.” Id. at 5–6.
With regard claim 98, which recites treatment of conditions including
“horny layer barrier disorders” and “inflammatory skin conditions,” as
discussed supra, based on the broadest reasonable interpretation of those
terms, treatment of the damage and skin disorders disclosed in Daouk would
inherently treat the claimed conditions. Therefore, Daouk’s disclosure of
treating skin disorders including sun-related damage discloses the treatment
of “horny layer barrier disorders,” and/or “inflammatory skin conditions,” as
those terms are construed.
With regard to claim 99, which recites the treatment of atopic eczema,
seborrheic eczema, and psoriasis, as discussed supra, the Examiner has not
shown that Daouk inherently anticipates the treatment of atopic eczema, nor
has the Examiner shown that Daouk discloses the treatment of seborrheic
eczema or psoriasis, which are specific skin disorders. Therefore, we find
that the Examiner has not established that claim 99 is anticipated by Daouk.
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3. Claims 101, 103
With regard to claims 101 and 103, Appellant asserts that these claims
recite only substances selected from creatine sulfate, creatine, acetate, and
esters of creatine and mono- or polyfunctional alcohols, which are not
disclosed in Daouk. Appeal Br. 13. In response, the Examiner finds that
Daouk teaches creatine derivatives such as creatine phosphate, creatine
ascorbate, creatine pyruvate, guanidino acetate, and analogs of these
compounds such as creatine acetate. Ans. 9. The Examiner further finds
that Daouk teaches that the dosage of the compound “depends on a variety
of factors including the activity of the particular compound of the present
invention employed, or the ester, salt or amide thereof.” Id. (citing Daouk
13:57–59). The Examiner further finds that Daouk teaches that esterified
products of the compounds can be used and “are obtained by converting
carboxylic acid group to ester by treatment with an alcohol in the presence
of a catalyst i.e teaches esters of creatine with alcohol can also be
employed.” Id. (citing Daouk 11:38–46).
We agree with the Examiner that Daouk discloses creatine esters in
the methods described therein and discusses how to make such esters.
Daouk 11:38–45, 13:57–60. Therefore, we are not persuaded by Appellant’s
arguments that Daouk does not anticipate claim 101.
With regard to claim 103, because this claim only recites treatment of
atopic eczema, seborrheic eczema, and psoriasis, we find that the Examiner
has not shown that this claim is anticipated by Daouk for the reasons
discussed supra with regard to these conditions.
Overall, with respect to the Examiner’s anticipation rejection over
Daouk, we affirm this rejection with respect to claim 84. Claims 89 and 90
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are not argued separately, and, therefore, fall with claim 84. See 37 C.F.R.
§ 41.37(c)(1)(iv). We also affirm the Examiner’s rejection of claims 98 and
101 but do not sustain the Examiner’s rejection of claims 86, 99, and 103.

Rejection of claim 85 under 35 U.S.C. § 103 as being obvious over Daouk in
view of Degwert
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claim 85, the Examiner concedes that
Daouk does not specifically teach a method of treating polymorphous
photodermatosis by applying a composition comprising creatine phosphate.
However, the Examiner finds that “Degwert teaches that free radicals are
involved in photodermatosis and polymorphous photodermatosis.” Final
Act. 7–8 (citing Degwert Abstract, col. 1). The Examiner further finds that
Degwert teaches that antioxidants are incorporated into skin care
compositions to treat photodermatosis and polymorphous photodermatosis
and that these antioxidants are present in an amount of 0.01% to 10% by
weight. Id. at 8 (citing Degwert col. 2, 6:25–35).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to employ the
dermatological compositions disclosed in Daouk to treat polymorphous
photodermatosis because Daouk teaches that such compositions are useful in
treating skin damage due to harmful sun radiations and oxidative stress due
to free radicals, while Degwert teaches that free radicals are involved in
photodermatosis and polymorphous photodermatosis. Id.
Appellant argues that Degwert teaches treating photodermatosis and
polymorphous photodermatosis with a composition comprising carnosine or
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a derivative thereof, urocanic acid, or a derivative thereof, and optionally, an
antioxidant and none of the exemplified compositions of Degwert include an
antioxidant. Appeal Br. 14. Further, according to Appellant, “the preferred
(optional) antioxidants according to [Degwert] are ‘thiols, for example
cysteine and cysteine derivatives, glutathione, cystine, N-acetylcysteine,
liponic acid, folic acid, ubiquinone, phytic acid, alpha-hydroxy acids, for
example citric acid and lactic acid, zinc sulphate, zinc oxide, vitamin C,
vitamin E and carotene,’” which are compounds that are completely
unrelated to creatine. Id. (citing Degwert 6:25–29).
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Degwert teaches dermatological
formulations for treatment of polymorphic photodermatosis, wherein the
formulations can include antioxidants in an amount of 0.01% to 10% by
weight. Degwert 2:18–26, 6:30–32. Given Degwert’s disclosure that free
radicals are involved in photodermatosis, one of skill in the art would have
been motivated to use the dermatological compositions disclosed in Daouk,
which include the antioxidant creatine, for treatment of polymorphic
photodermatosis, with a reasonable expectation of success. Degwert 1:35–
51.
We are not persuaded by Appellant’s arguments because “all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). Therefore, we affirm the Examiner’s obviousness rejection of claim
85.

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Rejection of claims 85, 87, and 88 under 35 U.S.C. § 103 as being obvious
over Daouk in view of Keyhani
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claims 85, 87, and 88, the Examiner
concedes that Daouk does not specifically teach a method of treating
polymorphous photodermatosis, seborrheic eczema, or psoriasis comprising
applying the composition comprising creatine phosphate but finds that
Keyhani “teaches that antioxidants such as taurine, carnosine, rutin
derivatives such as glycosyl derivatives are useful in treating aging skin,
psoriasis, atopic eczema, seborrheic eczema, polymorphous
photodermatosis.” Final Act. 13 (citing Keyhani Abstract, 8–9).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to employ the
dermatological compositions disclosed in Daouk to treat polymorphous
photodermatosis, seborrheic eczema, or psoriasis because Daouk teaches
that such compositions are useful in treating skin damage due to harmful sun
radiations and oxidative stress due to free radicals while Keyhani teaches
that antioxidants are useful in treating these conditions. Id. at 13–14.
Appellant concedes that Keyhani discloses the treatment of seborrheic
eczema, polymorphous photodermatosis, and psoriasis; however, Appellant
argues that Keyhani teaches that antioxidants from a long list of preferred
antioxidants (not including creatine or creatine derivatives) are to be used in
combination with, for example, antimicrobial and/or antiviral active
principles or corticosteroids. Appeal Br. 16 (citing Keyhani 8–10).
Appellants contend that Keyhani’s disclosure “is extremely broad and
encompasses hundreds, if not thousands, of active substances and millions of
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active substance combinations for the treatment of a wide range of
conditions.” Id. at 16–17. Therefore, Appellant concludes that Keyhani
does not teach or suggest that it is possible to treat polymorphous
photodermatosis, seborrheic eczema, or psoriasis by applying a creatine
derivate.
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Keyhani teaches that antioxidants
are useful in the treatment of aging, photodermatitis, atopic dermatitis, and
seborrheic dermatitis. Keyhani, Abstract. Based on this disclosure, one of
ordinary skill in the art at the time of the invention would have been
motivated to use the dermatological compositions disclosed in Daouk, which
include the antioxidant creatine, for treatment of photodermatitis, atopic
dermatitis, and/or seborrheic dermatitis with a reasonable expectation of
success.
We are not persuaded by Appellant’s arguments because Appellant is
arguing against the disclosure of Keyhani individually. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Daouk teaches that dermatological
compositions with antioxidants such as creatine can be used to treat skin
damage from aging and UV rays to protect against free radical production,
while Keyhani teaches the use of antioxidants for treatment of aging as well
as for atopic dermatitis, seborrheic dermatitis, photodermatitis, or psoriasis.
Therefore, one of skill in the art would have looked to the disclosure of
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Keyhani to determine which skin conditions could be treated with
antioxidants such as creatine. Thus, we affirm the Examiner’s obviousness
rejection of claims 85, 87, and 88.
Rejection of claims 91 and 96 under 35 U.S.C. § 103 as being obvious over
Daouk
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claims 91 and 96, the Examiner concedes
that Daouk does not explicitly teach the employment of biotin or Coenzyme
Q10 in the dermatological preparations therein; however, the Examiner finds
that it would have been obvious to a person of ordinary skill in the art at the
time of invention to employ these ingredients in the dermatological
preparations of Daouk because “Daouk teaches that the compositions
containing creatine compounds can include pharmaceutical or cosmetically
acceptable carrier, and various vitamins such as Vitamin A, biotin etc.,
preservatives or antioxidants such as ascorbic acid, vitamins, coenzyme Q10
(CoQ10).” Final Act. 17.
Appellant asserts that this rejection is based on the incorrect
assessment that Daouk anticipates the method recited in the independent
claim and is, therefore, without merit. Appeal Br. 18.
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Daouk also teaches that the
dermatological compositions disclosed therein can include vitamins such as
biotin and/or skin preserving agents such as coenzyme Q10 (CoQ10).
Daouk 7:61–63; 15:7–11. Therefore, it would have been obvious to one of
ordinary skill in the art to include biotin and/or coenzyme Q10 in the
dermatological compositions disclosed therein for treatment of the claimed
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conditions. Thus, we affirm the Examiner’s obviousness rejection of claims
91 and 96.
Rejection of claims 92 and 95 under 35 U.S.C. § 103 as being obvious over
Daouk in view of Ptchelintsev
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claims 92 and 95, the Examiner concedes
that Daouk does not teach the specific antioxidants recited in these claims
(i.e., alpha-glucosylrutin, isoflavone); however, the Examiner finds that
Ptchelintsev cures this deficiency. Final Act. 18. Specifically, the Examiner
finds that Ptchelintsev teaches a method of treating skin conditions such as
dry skin, ichthyosis, age spots, acne, psoriasis, eczema, aging, and
inflammatory dermatoses, where “the topical compositions can contain anti-
oxidants such as lipoic acid; antioxidants with phenolic hydroxyl
functionalities such as bio-flavonoids for e.g. quercetin, rutin; isoflavones
such as daidzein, genistein.” Id. (citing Ptchelintsev 9:23–55, 17:1–67;
18:52–63 (claim 32)). The Examiner concludes that
It would have been obvious to a person of ordinary skill in the
art at the time of invention to employ anti-oxidants such as
lipoic acid, bio-flavonoids such as quercetin, rutin, isoflavones
in the dermatological preparation of Daouk because 1) Daouk
teaches that the dermatological preparation therein can contain
anti-oxidants, and 2) Ptchelintsev et al. teach that anti-oxidants
such as lipoic acid, rutin, isoflavones such as daidzein,
genistein are used in the topical compositions for treating skin
conditions.
Id.
The Examiner also concludes that it would have been obvious to a
person of ordinary skill in the art to employ an alpha-glucosylrutin as the
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antioxidant in the composition because Ptchelintsev teaches that antioxidants
with phenolic hydroxyl functionalities such as bio-flavanoids, e.g., quercetin
and rutin, can be employed and alpha-glucosylrutin is a rutin that contains
phenolic hydroxyl. Id. at 18–19. Therefore, according to the Examiner, one
of ordinary skill in the art would have been motivated to employ an alpha-
glucosylrutin in the dermatological preparation taught by Daouk with a
reasonable expectation of treating skin damage due to harmful sun radiation,
stress, fatigue, free radicals, aging, and insult related skin damage.
In response, Appellant refers to its earlier arguments with respect to
Daouk and also asserts, with respect to claim 92, that Ptchelintsev does not
mention the use of alpha-glucosylrutin. Appeal Br. 19.
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Ptchelintsev teaches the treatment
of skin conditions such as dry skin, psoriasis, eczema, aging, and
inflammatory dermatoses, with topical compositions that can contain anti-
oxidants such rutin and isoflavones. See Ptchelintsev 2:54–63; 9:23–26.
Therefore, one of ordinary skill in the art would have been motivated to use
the creatine compositions of Daouk along with antioxidants such as rutin and
isoflavones for treatment of the claimed conditions. Although Ptchelintsev
does not specifically disclose alpha-glucosylrutin, it discloses the use of the
antioxidant rutin and apha-glucosylrutin is a known rutin with antioxidant
properties. See e.g., Raths 9:3–37. It would have been obvious to one of
ordinary skill in the art to use alpha-glucosylrutin as the antioxidant based
on the disclosure of rutin in Ptchelintsev. Therefore, we affirm the
Examiner’s obviousness rejection of claims 92 and 95.
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Rejection of claim 93 under 35 U.S.C. § 103 as being obvious over Daouk in
view of Raths
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claims 93, the Examiner concedes that
Daouk does not teach the particular antioxidant carnosine in its
dermatological preparations; however, the Examiner finds that Raths teaches
that topical skin care compositions can contain anti-oxidants such as lipoic
acid and carnosine. Final Act. 19 (citing Raths 9:8–15). The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art to employ the antioxidant of carnosine in the compositions of Daouk
because Daouk teaches that their dermatological preparations can contain
anti-oxidants and Raths teaches that their skin care compositions can contain
antioxidants such as carnosine. Id. at 20. According to the Examiner, a
person or ordinary skill in the art would have been motivated to employ
carnosine in the dermatological preparations taught by Daouk with a
reasonable expectation of treating skin damage due to harmful sun radiation,
stress, fatigue, free radicals, skin damage due to aging, and insult related
skin damage. Id.
Appellant contends that
Raths is directed to deodorant compositions which comprise as
essential ingredients a gemini surfactant selected from a dimer
alcohol-bis-sulfate, a dimer alcohol-bis-ether sulfate, a trimer
alcohol-tris-sulfate, a trimer alcohol-tris-ether sulfate, and
mixtures thereof; aluminum chlorohydrate; and a component
selected from an esterase inhibitor, a bactericidal agent, a
bacteriostatic agent, and mixtures thereof.
Appeal Br. 20 (citing Raths, Abstract). Appellant concludes that “the
compositions of Daouk and Raths have virtually nothing in common.” Id.
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Appellant contends that the Examiner has not explained why Raths would
have prompted one of ordinary skill in the art to include carnosine in a
composition according to Daouk, especially when Daouk does not even
require the presence of an anti-oxidant in its creatine-containing compounds.
Id. at 21.
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Raths teaches the use of carnosine
in skin compositions as a sun protection antioxidant. Raths 9:3–10. With
regard to Appellant’s arguments that the compositions of Daouk and Raths
have nothing in common, we do not find this non-analogous art argument
persuasive. The test for non-analogous art is first whether the art is within
the field of the inventor’s endeavor and, if not, whether it is “reasonably
pertinent to the particular problem with which the inventor was involved.”
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably
pertinent if, even though it may be in a different field” of endeavor, it
logically would have commended itself to an inventor’s attention in
considering his problem “because of the matter with which it deals.” In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Here, Raths teaching appears to
satisfy both prongs of the analogous art test, as related to the same field of
endeavor of cosmetic formulations with antioxidants to prevent UV ray
damage.
We note that the “scope of the field of endeavor is a factual
determination based on the scope of the application’s written description and
claims.” In re Singhal, 602 Fed. Appx. 826, 830 (Fed. Cir. 2015). Here, the
Specification specifically identifies the field of endeavor as a “cosmetic or
dermatological preparations for the treatment and prophylaxis of the
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symptoms of UV- and/or ozone-induced skin damage.” Spec. 1. Both
Daouk and Raths are reasonably addressed to the use of antioxidants to
prevent UV ray damage to skin and, therefore, fall within the field of
endeavor identified by Appellant’s own Specification. Even if we were to
accept Appellant’s arguments that Daouk and Raths are not in the same field
of endeavor, Raths is still pertinent to Daouk because Raths discloses
antioxidants which can protect the skin from harmful UV rays. A person of
ordinary skill in the art at the time of the invention would have looked to the
disclosure of Raths to determine antioxidants that could be used for this
purpose. Therefore, we affirm the Examiner’s obviousness rejection of
claim 93.
Rejection of claim 94 under 35 U.S.C. § 103 as being obvious over Daouk in
view of Porter
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claim 94, the Examiner concedes that
Daouk does not teach the particular anti-oxidant such as taurine; however
the Examiner finds that Porter teaches that topical skin care compositions
can contain anti-oxidants such as taurine. Final Act. 21 (citing Porter 6:59–
65).
Appellant asserts that Porter does not include taurine as a preferred
antioxidant and, therefore, one of ordinary skill in the art would not have
been motivated to use it in the compositions of Daouk. Appeal Br. 22.
Appellant also contends that “while Porter relates generally to skin care, the
focus of Porter is clearly not on skin care compositions but on patches and
methods for delivering certain skin care substances to the skin.” Id. (citing
Porter Abstract (claims)). According to Appellant, Daouk and Porter “have
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hardly anything in common” and it is “not realistic” to assume that one of
ordinary skill in the art would combine their teachings as described by the
Examiner, especially given that Daouk does not even require the presence of
an antioxidant. Id. at 22–23.
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Porter teaches that skin care
compositions can contain anti-oxidants such as taurine for improving the
appearance of skin due to aging, photo-damage and/or oxidative stress.
Porter Abstract, 6:59–64. Therefore, one of ordinary skill in the art would
have been motivated to use taurine in the dermatological compositions
taught by Daouk with a reasonable expectation of success in treating skim
damage due to these factors. Therefore, we affirm the Examiner’s
obviousness rejection of claim 94.

Rejection of claims 97, 100, and 102 under 35 U.S.C. § 103 as being
obvious over Daouk
The Examiner’s findings with respect to the disclosure of Daouk are
described above. With respect to claims 97, 100, and 102, the Examiner
concedes that Daouk does not teach the employment of creatine derivatives
such as creatine esters; however, the Examiner asserts that one of ordinary
skill in the art at the time of the invention would have found it obvious to
employ creatine derivatives such as creatine esters because they would have
expected that esters of creatine would have the same or substantially similar
beneficial therapeutic effects based on the reasonable expectation that
structurally similar species usually have similar properties. Final Act. 23.
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Appellant refers to its prior arguments regarding Daouk and also
asserts that “esters of creatine (covalent compounds) are clearly significantly
different from creatine as such and the salts of creatine (ionic compounds).”
Appeal Br. 23. Appellant also contends that none of the specific compounds
shown in Tables I and II of Daouk is an ester of creatine or any other
derivative of the carboxylic acid group thereof. Id.
The Examiner responds that Daouk teaches that creatine analogs and
derivatives can be employed and also “teaches that the dosage of the
compound ‘depends upon a variety of factors including the activity of the
particular compound of the present invention employed, or the ester, salt or
amide thereof.’” Ans. 18 (citing Daouk 13:57–59). According to the
Examiner, Daouk also teaches that esterified products of the compounds can
be used and that esters are obtained by reacting creatine with alcohol. Id.
(citing Daouk 11:38–46).
We find that the Examiner has the better position. The disclosure of
Daouk is discussed supra. Furthermore, Daouk also discloses that the
creatine compounds disclosed therein can be in the form of an ester and
discusses how such esters can be prepared via treatment with an alcohol in
the presence of a catalyst. Daouk 11:38–45, 13:57–60. We are not
persuaded by Appellant’s arguments because “all disclosures of the prior art,
including unpreferred embodiments, must be considered.” Merck, 874 F.2d
at 807 (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Therefore, it would have been obvious for one of ordinary skill in the
art to use creatine esters in the dermatological compositions to treat the
recited conditions with a reasonable expectation of success. Thus, we affirm
the Examiner’s obviousness rejection of claims 97, 100, and 102.
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Rejection of claims 84, 89, 90, 98, 101 under 35 U.S.C. § 102 as being
anticipated by Fujimura
The Examiner finds that Fujimura discloses a cosmetic or
dermatological composition comprising one or more compounds such as
creatine or creatine derivatives such as creatine phosphate. Final Act. 25
(citing Fujimura Abstract, col. 8, (compound 9), col. 10, (Example 5)). The
Examiner also finds that Fujimura discloses that the composition is a
wrinkle-care product and an aging preventative cosmetic and discloses a
method of treatment of a skin condition by applying the dermatological
preparation comprising creatine or creatine derivatives. Id. (citing Fujimura
9:5–8). According to the Examiner, Fujimura also discloses that the
composition contains about 0.01 to 30% by weight creatine or creatine
derivatives. Id. (citing Fujimura 4:26–34). The Examiner further finds that
Fujimura discloses that wrinkles are caused by aging in general and photo-
aging of skin due to exposure to the sun and that such aging results in
weakening of skin functions, degradation of derma (skin), and decrease in
subcutaneous fatty tissue. Id. at 25–26 (citing 1:11–23). The Examiner
concludes that “the method of treating skin-aging and wrinkles by applying
to skin a dermatological composition comprising creatine phosphate
inherently treats conditions which include degenerative symptoms of the
skin, deficient or weakening of skin functions i.e sensitive state of skin.” Id.
at 26.
The Examiner also finds that:
The patient population in Fujimura is deemed to encompass or
overlap or even [be the] same patient herein in need of
treatment of skin of the symptoms such as sensitive state of skin
or skin appendage. Accordingly, administering of the same
dermatological preparation to overlapping patient population, in
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the same effective amounts or doses of creatine phosphate will
cause the same effect, whether or not that effect is disclosed by
the prior art.
Id. Therefore, according to the Examiner, “by applying the dermatological
preparation disclosed by Fujimura et al. for treating skin aging inherently
treats deficient, sensitive states of skin or skin appendages, dryness, itching
i.e treats sensitive or irritated skin due to itching, reduced refatting by
sebaceous glands.” Id.
Appellant contends that the Examiner has not provided any support
for the allegation that the treatment of skin-aging wrinkles inherently treats a
sensitive state of skin and has not provided any evidence that skin aging
and/or wrinkles are necessarily associated with a sensitive skin state. Appeal
Br. 24. Appellant also argues that claim 84 recites treatment of a human in
need thereof and, according to the Jansen case, such a claim requires
specific intent to effect such treatment. Id. at 24–25 (citing Jansen v. Rexall
Sundown Inc., 68 U.S.P.Q.2d 1154 (Fed. Cir. 2003)).
Appellant further asserts that Fujimura does not appear to disclose any
salts or esters of guanidine, let alone the specific salts and esters of
guanidine recited in the independent claims. Id. at 25. In response, the
Examiner points out that Fujimura discloses creatine or creatine derivatives
or acid addition salts such as creatine phosphate, wherein the acid addition
salts can be obtained from sulfuric acid or phosphoric acid (i.e., creating
creatine sulfate or creatine phosphate). Ans. 20 (citing Fujimura, Abstract,
3:9–35, 8:32–41 (compounds 8 and 9)).
We find that the Examiner has the better position. As discussed supra,
the current Specification describes skin aging as including “structural
damage and functional disorders” including drying, roughness, itching, and
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reduced refatting by sebaceous glands. Spec. 1–2. The Specification also
discusses exogenous factors such as UV light that can cause “structural
damage and functional disorders” in the epidermis and dermis including
flaccidity and formation of wrinkles and increased susceptibility to
mechanical stress (e.g. cracking). Id. at 2. Therefore, based on the broadest
reasonable interpretation, the terms “sensitive states of skin or skin
appendages,” “horny layer barrier disorders,” and “inflammatory skin
conditions,” would include the damage and skin disorders described in the
Specification relating to aging and UV damage.
Fujimura describes using creatine derivatives to treat skin damaged by
aging or UV rays. Fujimura, Abstract, 1:11–22. Therefore, Fujimura
discloses the treatment of “sensitive states of skin or skin appendages,”
“horny layer barrier disorders,” and/or “inflammatory skin conditions,” as
those terms are construed.
Furthermore, Fujimura discloses topical compositions that comprise
from about 0.01% to about 30% or from 0.1 to 20% by weight of the
creatine, creatine phosphate, or creatine derivatives. Id. at 4:28–32. These
ranges fall within the claimed range of 0.001% to 30% in claim 84, and
therefore, anticipate this claim. When a claim defines a composition in
terms of ranges of elements, any single prior art reference that falls within
each of the ranges anticipates. Atlas Powder, 190 F.3d at 1346. The ranges
disclosed by Fujimura also anticipate the ranges of claims 89, 90, and 101 of
0.001% to 10% (claims 89 and 101) and 10.1% to 30% (claim 90).
Anticipation has been found even when the prior art range “does not exactly
correspond to [the] claimed range,” but the prior art “range entirely
encompasses, and does not significantly deviate from, [the] claimed ranges.”
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See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir.
2005).
With regard to Appellant’s assertion that Fujimura does not disclose
any salts or esters of guanidine, we agree with the Examiner that Fujimura
discloses creatine or creatine derivatives or acid addition salts such as
creatine phosphate, wherein the acid addition salts can be obtained from
sulfuric acid or phosphoric acid (i.e., creating creatine sulfate or creatine
phosphate). Fujimura, Abstract, 3:9–35, 7:50–9:28 (Example 1, compounds
8 and 9).
Further, Appellant’s citation to the Jansen case is inapposite because
we have construed the claim terms in the instant claims to include the
conditions disclosed in Fujimura. Therefore, one of skill in the art would
intend to treat the claimed conditions when using the dermatological
compositions disclosed therein. Therefore, we affirm the Examiner’s
anticipation rejection of claims 84, 89, 90, 98, and 101 over Fujimura.
Rejection of claims 84, 88–90, 98, 99, 101, and 103 under 35 U.S.C. § 103
as being obvious over Teicher in view of Daouk
The Examiner finds that Teicher teaches a method of treating psoriasis
comprising administering creatine phosphate. Final Act. 28 (citing Teicher
16:20, 20:17 (claims 1, 3, 10, 12, 19)). The Examiner concedes that Teicher
“does not explicitly teach applying a dermatological preparation comprising
creatine phosphate to patient’s skin in the method therein for treating skin
conditions such as psoriasis, and the particular amounts of creatine
phosphate in the dermatological preparation” but finds that Daouk cures this
deficiency. Id. at 28–29. The Examiner’s findings with respect to Daouk
are discussed above.
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The Examiner concludes:
It would have been obvious to a person of ordinary skill in the
art at the time of invention to apply a dermatological
composition comprising creatine phosphate to a patient’s skin
in the method of treating skin condition such as psoriasis
because 1) [Teicher] teaches a method of treating psoriasis
comprising administering creatine phosphate, and 2) Daouk
teaches that dermatological compositions comprising from
about 0.1 % to about 20 % of the creatine, creatine phosphate
are topically applied to skin for treating skin conditions.
Accordingly, one of ordinary skill in the art at the time of
invention would have expected to treat psoriasis by applying
dermatological composition comprising from about 0.1 % to
about 20 % of the creatine, creatine phosphate to a patient’s
skin.
Id. at 29. The Examiner also finds that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to determine or
optimize parameters such as effective amounts of creatine phosphate
employed in the method of treating psoriasis. Id. at 30.
Appellant argues that Teicher “teaches the use of creatine compounds
only in combination with the use of hyperplastic inhibitory agents to inhibit
undesirable cell growth. Nothing in [Teicher] teaches or suggests that the
creatine compounds by themselves (without hyperplastic inhibitory agent)
may be useful for the purposes disclosed therein.” App. Br. 26. Appellant
cites to page 2, lines 11–24 of Teicher and asserts that this disclosure:
unambiguously teaches that the activity of a chemotherapeutic
agent, i.e., a hyperplastic inhibitory agent can be increased (and
consequently, the administered amount thereof decreased) if the
hyperplastic inhibitory agent is administered in combination
with creatine compounds, i.e., [Teicher] neither teaches nor
suggests that creatine compounds by themselves are active with
respect to the inhibition of cell (tumor) growth. Rather, creatine
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compounds are merely disclosed to increase the activity of the
active agents, i.e., hyperplastic inhibitory agents.
Id. at 26–27.
Appellant further asserts that Teicher does not teach or suggest
applying an amount of creatine compound which is effective for treating
psoriasis but, rather, teaches use of creatine compounds in an amount which
is effective for increasing the activity of the hyperplastic inhibitory agent
with respect to inhibiting tumor growth. Id. at 28. According to Appellant,
Teicher
teaches the administration of “an effective amount of a
combination of a creatine compound and an effective amount of
a hyperplastic inhibitory agent” (page 2, lines 21-24), i.e., does
not teach or suggest that the creatine compound is to be
administered in an amount which (by itself) would be sufficient
to treat a condition such as, e.g., psoriasis but rather teaches that
the combination and in particular, the hyperplastic inhibitory
agent must be present in an amount which is effective to treat
the corresponding condition.
Further, optimizing the concentration of creatine
compound in the compositions of [Teicher] for the purpose of
treating psoriasis with the creatine compound (regardless of the
presence of a hyperplastic inhibitory agent) requires this
concentration to be recognized as result-effective variable for
the treatment of psoriasis (i.e., not as a result-effective variable
for enhancing the activity of the hyperplastic inhibitory agent).
However, [Teicher] neither teaches nor suggests that the
concentration of creatine compound per se in the compositions
disclosed therein plays any role for the treatment of psoriasis.
Id. at 29. Similarly, Appellant asserts that Teicher does not teach or suggest
“that creatine or creatine phosphate should be employed in an amount that is
effective to treat undesirable cell growth. Rather, [Teicher] teaches that
undesirable cell growth can be treated with hyperplastic inhibitory agents,
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such as chemotherapeutic agents, i.e., not with creatine compounds.” Reply
7.
Appellant further asserts that Teicher does not teach or suggest a
cosmetic or dermatological preparation for application to the skin but, rather,
only teaches intravenous use. Appeal Br. 31 (citing Teicher 18–28, 35
(claim 53)). According to Appellant, Daouk does not cure this deficiency
because the conditions mentioned therein do not appear to be related to
undesirable cell growth. Id.
In response, the Examiner explains that the claims employ the
transitional phrase “comprising” and do not exclude other agents in the
method of treating undesirable cell growth such as psoriasis. Ans. 21. The
Examiner also finds that Teicher
states that the effective amount of a combination of creatine
compound and a hyperplastic inhibitory agent is useful for
inhibiting undesirable cell growth in subjects (patients) wherein
the cell growth can be psoriasis. Thus, one of ordinary skill in
the art would recognize the amount of creatine compound as a
result effective variable in order to achieve therapeutic effect
such as treating psoriasis.
Id. at 22. The Examiner further finds that Teicher teaches that a creatine
compound can be administered by various routes which include transdermal.
Id. at 25 (citing Teicher 4:9–10).
We find that the Examiner has the better position. Teicher teaches the
use of creatine compounds for the treatment of psoriasis and also teaches
that the creatine compounds can be administered transdermally. Teicher
4:6–10, 16:20–17:3. Although Teicher teaches the use of creatine
compounds with hyperplastic agents, as pointed out by the Examiner, and
acknowledged by Appellant, the pending claims recite the word
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“comprising” and, therefore, can include other elements such as hyperplastic
agents. Given that Teicher teaches the use of creatine compounds (with
hyperplastic agents) to treat psoriasis, one of ordinary skill in the art would
optimize the amount of creatine to be effective for such treatment. See In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[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.”). Furthermore,
one of skill in the art would have been motivated to look to the creatine
percentages disclosed in Daouk since Daouk discloses use of creatine
compounds to treat skin conditions. Therefore, we affirm the Examiner’s
obviousness rejection of claims 84, 88–90, 98, 99, 101, and 103.
NEW GROUND OF REJECTION
We enter the following new ground of rejection for dependent claim
86 under the provisions of 37 CFR § 41.50(b).
Claim 86 is rejected under 35 U.S.C. § 103(a) as being obvious over
Daouk in view of Keyhani. As discussed supra, Daouk discloses the use of
creatine derivatives, including creatine phosphate, for “protecting skin tissue
against age related damage or insults such as harmful UV radiation, stress
and fatigue.” Daouk 2:15–19. Daouk also discloses topical compositions
that comprise from about 0.1% to about 20% of the creatine, creatine
phosphate, or creatine derivatives. Id. at 5:59–60. While Daouk does not
specifically disclose the treatment of atopic eczema, this deficiency is cured
by Keyhani. Keyhani teaches that antioxidants are useful in treating aging
skin, psoriasis, atopic eczema, seborrheic eczema, and polymorphous
photodermatosis. Keyhani, Abstract.
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We find that it would have been obvious to a person of ordinary skill
at the time of the invention to employ the dermatological compositions
disclosed in Daouk to treat atopic eczema as disclosed by Keyhani with a
reasonable expectation of success because Daouk teaches that such
compositions are useful in treating skin damage due to harmful sun
radiations and oxidative stress due to free radicals while Keyhani teaches
that antioxidants are useful in treating atopic eczema. Consequently, we
conclude that claim 86 is unpatentable under 35 U.S.C. § 103(a) as obvious
over Daouk in view of Keyhani.
CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s anticipation rejection over Daouk with respect to
claims 84, 89, 90, 98, and 101 but do not sustain the Examiner’s rejection of
claims 86, 99, and 103. We also affirm the Examiner’s obviousness
rejections of claims 85 and 87–103 as well as the Examiner’s anticipation
rejection over Teicher with respect to claims 84, 88–90, 98, 99, 101, and
103. We also enter a new ground of rejection for claim 86.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed New
Ground
84, 86,
89–90,
98, 99,
101, 103
102(e) Daouk 84, 89–90,
98, 101
86, 99,
103

85 103 Daouk,
Degwert
85
85, 87, 88 103 Daouk,
Keyhani
85, 87, 88
91, 96 103 Daouk 91, 96
92, 95 103 Daouk,
Ptchelintsev
92, 95
93 103 Daouk,
Raths
93
94 103 Daouk,
Porter
94
97, 100,
102
103 Daouk 97, 100,
102

84, 89,
90, 98,
101
102(e) Fujimura 84, 89, 90,
98, 101

84, 88–
90, 98,
99, 101,
103
103 Teicher,
Daouk
84, 88–90,
98, 99,
101, 103

86 103 Daouk,
Keyhani
86
Overall
Outcome
84, 85,
87–103
86
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TIME PERIOD FOR RESPONSE
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART
37 C.F.R. § 41.50(b)