Ex Parte Baldo et al

Patent Trial and Appeal Board

Nov 5, 2018

12919371 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/919,371 12/03/2010 Francine Baldo
22850 7590 11/07/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
365424USOPCT 5681
EXAMINER
BARHAM, BETHANY P
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
11/07/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCINE BALDO,
QUANG LAN NGUYEN, and DANG-MAN PHAM
Appeal2017-002744 1
Application 12/919 ,3 71 2
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1--4, 11-17, 19,
and 20 (Final Act. 3 2). 4 Examiner entered a rejection under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The record includes a transcript of the oral hearing held November 1, 2018.
2 Appellants identify "L'Oreal of Paris, France" as the real party in interest
(App. Br. 1).
3 Final Office Action mailed December 4, 2015.
4 Pending claims 5-10, 18, and 21--49 stand withdrawn from consideration
(Final Act. 2).
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Application 12/919,371
STATEMENT OF THE CASE
Appellants' disclosure "relates to the field of the care of the skin
and/or hair and in particular of the improvement in the appearance of the
skin and/or hair by light radiation" (Spec. 1 :5-8). Appellants' claim 1 is
representative and reproduced below:
1. A method of improving the appearance of skin and/or hair
compnsmg:
administering to skin and/or hair having lipase at least
one compound bioconvertible by said lipase; and
administering to said skin and/ or hair at least one light
radiation exhibiting at least one predominant wavelength in an
amount effective to activate said lipase such that said lipase
bioconverts said compound.
(App. Br. 8.)
Claims 1--4, 11-17, 19, and 20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Cole, 5 De Paoli Ambrosi, 6
Kem,7 and Pablo. 8
Claim Interpretation:
The method set forth in Appellants' claim 1 requires the
administration to skin and/or hair that has a lipase: (a) a compound
bioconvertible by a lipase and (b) at least one light radiation exhibiting at
5 Cole et al., US 2006/0269580 Al, published Nov. 30, 2006.
6 De Paoli Ambrosi, US 2007/0010580 Al, published Jan. 11, 2007.
7 Kem, US 5,985,929, issued Nov. 16, 1999.
8 Gary Pablo, et al., Characteristics of the extracellular lip as es from
Corynebacterium Acnes and Staphylococcus Epidermidis, 63 J. INVEST.
DERMATOL. 231-38 (1974).
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least one predominant wavelength (App. Br. 8). Appellants' claim 1 further
requires that the light radiation is administered in an amount effective to
activate the lipase such that said lipase bioconverts the compound (id.).
Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 59
USPQ2d 1401 (Fed.Cir.2001 ). In Interactive Gift we stated: "Unless the
steps of a method actually recite an order, the steps are not ordinarily
construed to require one. However, such a result can ensue when the method
steps implicitly require that they be performed in the order written. In this
case, nothing in the claim or the specification directly or implicitly requires
such a narrow construction." Id. at 1342--43.
Appellants' claim 1 does not require the administration of light
radiation after to the administration of the compound (see id.; see also Spec.
9: 12-20 ("advantageously, the compound bioconvertible by lipase is
administered before the administration of the light radiation ... but the []
compound biocovertible by lipase can also and complementarily be
administered after a compound bioconvertible by lipase + light radiation
exhibiting at least one predominant wavelength")). Thus, Appellants' claim
1 requires only that a compound bioconvertible by a lipase and light
radiation are administered, in any order, to skin and/or hair that has a lipase,
and that the amount of light radiation administered is effective to activate the
lipase that acts on the compound, whether the compound is administered
prior to or after the administration of light radiation.
Appellants' claim 1 also places no limit on the time interval between
administration of a compound bioconvertible by a lipase and the
administration of light radiation exhibiting at least one predominant
wavelength. To the contrary, Appellants' disclosure makes clear that the
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Application 12/919,371
time interval between the two administration steps may be immediate or
delayed (see Spec. 9: 10-11 ("The term 'sequential' is understood to mean a
successive (immediate) or delayed administration")).
In addition, Appellants' claimed invention was subject to a Restriction
Requirement/Election of Species (see Restriction Requirement9). In
response to the Restriction Requirement, Appellants provisionally elected,
inter alia, a light emitting diode, "LED," as the source of light radiation, an
"ester of an a-hydroxyacid" as the compound bioconvertible by a lipase, and
"alleviating [visible] or tactile irregularities of the surface of the skin" as the
intended result (see Appellants' April 1, 2015 Restriction Response 1; cf
Restriction Requirement 4--5). Therefore, we limit the scope of our review
to Appellants' elected invention. See Ex parte Ohsaka, 2 USPQ2d 1460,
1461 (BP AI 1987).
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Cole "relates to treatment of the skin and, more particularly, to the
application of light to the skin, followed by the topical application of a
benefit agent to said skin" (Cole ,r 1; see id., Abstract (Cole relates to
"[ m ]ethods of mitigating acne"); see also Final Act. 3 ).
FF 2. Examiner finds that Cole's "method ... is intended to treat acne ...
and as such, is targeted at alleviating visible or tactile irregularities of the
9 Office Action mailed October 1, 2014.
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surface [ofJ the skin and/or scalp and is inherently applied to skin having
lipase, as evidenced by Kem" (Final Act. 3--4 ( citing Cole, Abstract and
Kem 5:41--47); see Kem 5:45--47 ("It is known that the bacteria in the
sebaceous glands form esterases which hydrolyze the sebmn fats to alcohols
and free fatty acids")).
FF 3. Cole discloses the treatment of skin, wherein skin is first treated with
"light primarily within the spectral range of about 400 nm to about 850 nm,"
"a benefit agent is topically applied" "less than about 24 hours after
terminating the exposure to the light," and "[a]fter a second delay period, a
second skin treatment is optionally provided to the ... skin," wherein "[t]he
second skin treatment includes exposing the ... skin to light, terminating the
exposure of the ... skin [] to the light, followed by topically administering
[a] benefit agent" (Cole ,r,r 66-68; see also id. ,r 25 (Cole's "'skin treatment'
includes a light treatment followed by a topical treatment"); see Final Act.
3--4; cf Spec. 9:10-11).
FF 4. Cole discloses the use of an LED, emitting light within "about 400
nm to about 500 nm" emitting an "energy density within the active range
that is greater than about 0.1 J/cm2," as the source of light radiation (Cole ,r
50; Final Act. 3--4; cf Spec. 1 :35-2:3 (Appellants' "light radiation ...
exhibits (emits) at least one predominant wavelength which activates lipase
ranging from 400 to 510 nm ... preferably used at a dose ranging from 0.01
to 200 J/cm2"); Spec. 23: 17-24: 13 ("[L ]ight radiation which activates lipase
... [is] capable of increasing the activity of the said enzyme, in particular of
increasing the activity of the said enzyme by at least 10%, with respect to the
nonexposed control [(i.e. an "enzyme kept sheltered from the light)]")).
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FF 5. Cole discloses:
The light exposure may be for a period of less than about one
hour, and the light may be suitable for either (a) exciting
porphyrins associated with the expanse of skin into an energetic
state suitable for destroying acne-causing micro-organisms, or
(b) for heating lipids present in sebaceous glands within the
expanse of skin in order to modulate the flow of sebum in said
sebaceous glands, or ( c) for reducing inflammation. The
benefit agent is suitable for either (a) providing anti-microbial
action that is complementary to either said modulating of said
sebum by said band of light, or complementary to said
reduction of inflammation by said light or (b) providing sebum-
modulating action that is complementary to either said
destruction of said acne-causing microorganisms or
complementary to said reduction of inflammation by said light;
or ( c) providing anti-inflammation that is complementary to
either said modulating of said sebum by said band of light, or
complementary to said destruction of said acne-causing
. .
m1croorgamsms.
(Cole ,r 13; cf Spec. 5:18-25 ("The difficulty [in this art] is[] find[ing]
compounds and/or systems which are capable of acting specifically on the
sebaceous follicles ... and which are capable of reducing the production of
sebum ... and/or killing bacteria"); Spec. 6:24--30 (There is an "interest, in
the case of greasy skin, ... [in] regulating the production of sebum, reducing
the imperfections of greasy skin and/or inhibiting P. acnes and thus
preventing and/or reducing the resulting inflammation present in acneic
lesions"); Spec. 11 :3-38.)
FF 6. Cole discloses that
In order to [] enhance the efficacy of the first skin treatment, [
i.e. light exposure,] the first delay may be less than 12 hours,
less than 1 hour, such as from about 1 minute to about 1 hour.
In particular, it is believed that by reducing the first delay
period[, i.e. the period between light administration and
compound administration,] to such lower levels, a high degree
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of synergy is obtained between the light treatment and the
topical treatment.
(Cole ,r 67; cf Spec. 9:10-11 (the time interval between the two
administration steps may be immediate or delayed).
FF 7. Cole discloses that a benefit agent may be a keratolytic agent, "such
as alpha-hydroxyacids" (Cole ,r 59; see Final Act. 3--4).
FF 8. Examiner finds that "although Cole ... teach[ es] keratolytic benefit
agents including a-hydroxy acids ... and esters of a-keto acids ... , Cole ...
fail[s] to teach[, esters of a-hydroxy acid,] the elected species of 'compound
bioconvertible by lipase"' (Final Act. 4 ( citing Cole ,r,r 59 and 79--80)).
FF 9. De Paoli Ambrosi "relates to a[] formulation able to increase the
efficacy and the tolerability of preparations based on the use of compounds
used to carry out chemical peeling" (De Paoli Ambrosi ,r 1; see Final Act. 5).
FF 10. Examiner finds that De Paoli Ambrosi discloses compositions
comprising esters of a-hydroxy acid, such as ethyl lactate, wherein "the ester
derivative acts as a pro-drug, which allows the acid to be liberated after
being absorbed and prolong[s] the keratolytic effect" of the a-hydroxy acid
(Final Act. 5 (citing De Paoli Ambrosi ,r,r 51-52 and 59); see also Final Act.
5 ("Di Paolo [sic] Ambrosi teaches a composition can comprise both the
keratolytic agent and its ester or a first keratolytic agent and the ester of a
second keratolytic agent" (citing Di Paoli Ambrosi, claim 33))).
FF 11. Examiner finds that Kem discloses that "ethyl lactate was known to
be bioconvertible by bacterial lipases ... and[,] therefore[,] ethyl lactate is
necessarily bioconverted in the skin to some extent even in the absence of
light radiation" (Final Act. 5 (citing Kem 5:48-64)).
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FF 12. Examiner finds that Pablo discloses "that bacterial lipases exhibit
increased activity with increasing temperature" (Final Act. 6 ( citing Pablo
235:FIG. 6); cf Spec. 23:17-24:13).
ANALYSIS
Based on the combination of Cole, De Paoli Ambrosi, Kem, and
Pablo, Examiner concludes that, at the time Appellants' invention was made,
it would have been prima facie obvious "to sustain the keratolytic benefits of
the method by modifying the method of Cole ... , to include applying a
combination of alpha-hydroxy acids and the ethyl esters of alpha-hydroxy
acids for the treatment of acne" (Final Act. 6).
As discussed above, Appellants' claim 1 does not recite an order for
the administration steps (see Final Act. 8 (Appellants' claim 1 "does not
exclude a first step of a first administration of light")). Therefore, we are not
persuaded by Appellants' contentions that: "Examiner erred by interpreting
the disclosure of Cole incorrectly," because "Cole discloses application of
radiation to skin, and then application of a compound (benefit agent) to the
skin" (App. Br. 3) and "Examiner erred by concluding that Cole discloses
administering radiation in an amount effective to activate lipase such that the
lipase bioconverts the compound" (id. at 4 ).
We agree with Appellants' assertion that "according to the plain
language of [Appellants'] claim[] [1], the compound must be bioconvertible
by lipase, and the amount of radiation administered must be effective to
activate lipase such that the lipase bioconverts the compound" (App. Br. 5).
The combination of prior art relied upon by Examiner, however, makes clear
that it was known, prior to the date of Appellants' claimed invention, that
"bacteria in the sebaceous glands form esterases which hydrolyze [] sebum
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fats to alcohols and free fatty acids" and "that bacterial lipases exhibit
increased activity with increasing temperature" (FF 2, 11, and 12). This
combination of prior art also teaches the administration of light radiation, to
skin, specifically a LED, emitting light within "about 400 nm to about 500
nm" emitting an "energy density within the active range that is greater than
about 0.1 J/cm2," which falls within the scope of Appellants' claim 1, for the
intended effect of, inter alia, "heating lipids present in sebaceous glands
within the expanse of skin" (FF 4--5). We find no evidence on this record to
support a conclusion that heating skin as suggested by the prior art relied
upon by Examiner, using light radiation that falls within the wavelength and
energy density set forth by Appellants, would not activate a lipase within the
scope of Appellants' claim 1 (see FF 12; cf App. Br. 3---6; Reply Br. 2).
The prior art relied upon by Examiner further discloses the
administration of at least one compound, i.e. an "ester[] of a-hydroxy acid,
such as ethyl lactate," that is bioconvertible by the lipase, to skin treated
with light radiation (FF 7-11; see App. Br. 4 (Cole "expressly states that the
time period between application of radiation and benefit agent within a skin
treatment should be small (as little as 1 minute) to obtain a high level of
synergy between the applications within a single treatment" ( emphasis
added)); FF 6; cf Reply Br. 2). We find no evidence on this record to
support a conclusion that a lipase, once activated by light radiation, would
not be capable ofbiocoverting an "ester[] of a-hydroxy acid, such as ethyl
lactate," as suggested by the combination of prior art relied upon by
Examiner and required by Appellants' claim 1 (see Final Act. 8 ("even if the
skin is treated with radiation first and lipase is activated and then treated
with ethyl lactate, the ethyl lactate is necessarily bioconverted by the same
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lipase, as evidenced by Kem ([5:45-60])")). Therefore, we are not
persuaded by Appellants' contention that their "invention will not
'necessarily result' from the asserted art including Cole" (App. Br. 5; see id.
at 6).
Examiner recognizes that Cole "fail[ s] to teach[, esters of a-hydroxy
acid,] the elected species of 'compound bioconvertible by lipase"' and relies
on Di Paoli Ambrosi to make up for this deficiency (FF 8-10). Therefore,
we are not persuaded by Appellants' contention that Cole alone "does not
disclose using compounds bioconvertible by lipase" or that "De Paoli
Ambrosi, Pablo and Kem cannot compensate for Cole's deficiencies" (App.
Br. 5 and 6).
For the foregoing reasons, we are not persuaded by Appellants'
contentions regarding hindsight (App. Br. 6; Reply Br. 4).
Appellants' discussion of their claim 1 does not establish that claim 1
must be interpreted differently than as set forth above (see Reply Br. 1-2).
As discussed above, we do not find, and Appellants have not identified, an
evidentiary basis on this record to support a conclusion that a lipase
activated by light radiation would not be capable ofbioconverting an ester of
a-hydroxy acid, which is administered according to the method suggested by
the combination of Cole, De Paoli Ambrosi, Kem, and Pablo. Therefore, we
are not persuaded by Appellants' unsupported contention that "if the
compound is not on skin at the time light radiation is applied, the light
radiation cannot be effective to activate lipase such that the lipase
bioconverts the compound as required by the claims" (Reply Br. 2). To the
contrary, for the reasons set forth above, the administration of light radiation
according to the method suggested by the combination of Cole, De Paoli
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Ambrosi, Kem, and Pablo will active lipase and this activated lipase will
bioconvert an ester of a-hydroxy acid present on the skin or later applied to
the skin according to the method suggested by the combination of prior art
relied upon by Examiner (see FF 1-12).
For the foregoing reasons, we are not persuaded by Appellants'
contention that "Examiner's basic claim interpretation does not require light
radiation to be effective to activate lipase such that the lipase bioconverts the
compound" (Reply Br. 3). To the contrary, Examiner's claim interpretation,
as discussed above, makes clear that Appellants' claim 1 fails to require that
the two claimed administration steps are performed in a specific sequence.
The evidence relied upon by Examiner also makes clear that a lipase
activated by light radiation will bioconvert an ester of an a-hydroxy acid
(see FF 1-12).
To be complete, we recognize that Cole discloses that the beneficial
agent is not be directly affected by light energy (Cole 5 ,r 55). In this regard,
we note that Appellants' claimed invention also does not require light energy
to directly affect the compound. To the contrary, in Appellants' claimed
invention, as the combination of Cole, De Paoli Ambrosi, Kem, and Pablo
makes clear, light energy affects the activity of the lipase, which in tum acts
on a compound.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Cole, De Paoli Ambrosi,
Kem, and Pablo is affirmed. Claims 2--4, 11-17, 19, and 20 are not
separately argued and fall with claim 1.
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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
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