Ex Parte Gan et al

Patent Trial and Appeal Board

Mar 14, 2016

11624985 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111624,985 01119/2007
32425 7590 03/16/2016
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
David Gan
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.
MKAY:l05US/10701056 7652
EXAMINER
ROBINSON, LISBETH C
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA YID GAN, MICHELLE HINES, JAVIER ARA VENA,
and BRIAN JONES 1
Appeal2013-008956
Application 11/624,985
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of treating skin, which have been rejected as anticipated and obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Mary Kay, Inc. (Appeal
Br. 1.)
Appeal2013-008956
Application 11/624,985
STATEMENT OF THE CASE
The Specification discloses "topical skin care compositions that
include kakadu plum (Terminaliaferdinandiana) extract and/or acai berry
extract (Euterpe oleracea)." (Spec. 1,-i2.)
Claims 15-19, 21, 23-27, 36, 37, 43, and 44 are on appeal. Claims
15, 18, and 43 are illustrative and read as follows:
15. A method of treating a skin condition comprising topically applying a
composition comprising acai berry extract to skin in need thereof, wherein
the topical application treats the skin condition, and wherein the acai berry
extract contains a polyphenol.
18. The method of claim 15, wherein the composition further comprises
kakadu plum extract.
43. A method of reducing skin inflammation comprising topically
applying a composition comprising acai berry extract to skin in need thereof,
wherein the acai berry extract contains a polyphenol and wherein topical
application reduces TNF-a, IL-8, IL-1 b, IL-6 and VEGF cytokine
production in the skin.
The claims stand rejected as follows:
Claims 15, 24, and 43 under 35 U.S.C. § 102(e) as anticipated by
Morariu '8962 as evidenced by Smith3 (Final Rej. 4 3);
2 Morariu, US 2006/0045896 Al, published Mar. 2, 2006.
3 Jim Smith & Lily Hong-Shum, Food Additives Data Book, p. 145 (2003),
Blackwell Publishing. Accessed at:
http://www.knovel.com/web/portal/browse/display? _EXT_ KNOVEL _ DISP
LAY _bookid=l381 &VerticalID=O, Aug. 9, 2012.
4 Office Action mailed Aug. 16, 2012.
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Claims 15-17, 24, and 43 under 35 U.S.C. § 102(e) as anticipated by
Morariu '251 5 as evidenced by Smith (Final Rej. 5);
Claims 15-17, 21, 24-27, 36, 37, and 43 under 35 U.S.C. § 103(a) as
obvious based on Morariu '896 and Smith (Final Rej. 8);
Claims 18, 19, 23, and 44 under 35 U.S.C. § 103(a) as obvious based
on Morariu '896, Smith, and Dean6 (Final Rej. 12);
Claims 21, 24-27, 36, and 37 under 35 U.S.C. § 103(a) as obvious
based on Morariu '251 and Smith (Final Rej. 14); and
Claims 15-19, 21, 23-27, 36, 37, 43, and 44 under 35 U.S.C. § 103(a)
as obvious based on Morariu '251, Smith, and Dean (Final Rej. 12)
I
Issue
The Examiner has rejected claims 15, 24, and 43 as anticipated by
Morariu '896 as evidenced by Smith. The Examiner finds that the method
described in claims 23 and 25 of Morariu '896 anticipates claim 15 on
appeal because it "compris[ es] topically applying to skin areas to be treated
a composition comprising acai (acai berry) extract." (Final Rej. 3--4.) The
Examiner cites Smith as evidence that anthocyanins, which are found in acai
extract, are polyphenols. (Id. at 4.)
Appellants contend that Morariu '896 is not prior art to the claims on
appeal (Appeal Br. 5-7) and that the acai extract of Morariu '896 does not
5 Morariu, US 2006/0216251 Al, published Sept. 28, 2006.
6 Dean et al., AU 2004203276 Al, published Feb. 10, 2005. The Examiner
and Appellants refer to this reference as "Blades."
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Application 11/624,985
necessarily contain polyphenols because Morariu '896 does not teach how
its extracts are made (id. at 7-8).
The issues with respect to this rejection are (1) whether Appellants
have shown prior invention of the claimed method, and thereby removed
Morariu '896 as prior art, and (2) whether a preponderance of the evidence
supports the Examiner's finding that Morariu '896 discloses the claimed
method.
Findings of Fact
1. Claim 23 of Morariu '896 reads as follows:
23. A method of inhibiting the formation of advanced glycation
endproducts in the skin, said method comprising topically
applying to skin areas to be treated a composition comprising:
(i) a benfotiamine or a dermatologically acceptable salt
thereof;
(ii) a pyridoxamine or a dermatologically acceptable salt
thereof; and
(iii) a dermatologically acceptable carrier;
the pyridoxamine and benfotiamine components being
incorporated in amounts effective in the inhibition of the
formation of advanced glycation endproducts.
(Morariu '896 at 19.)
2. Claims 24 and 25 of Morariu '896 read as follows:
24. The method of claim 23, wherein the composition further
comprises an antioxidant.
25. The method of claim 24, wherein the antioxidant is selected
from the group consisting of grape seed procyanidins,
tocopherols, tocotrienols, astaxanthin, camosine or camosic
acid, macqui berry anthocyanins, billberry anthocyanins,
blueberry anthocyanins, pomegranate extract, ellagic acid,
honokiol, magnolol, silymarin, quercetin, naringenin, rosmarinic
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acid, clove essential oil, emblica extract, thiotaurine, acai
extract, aronia extract, mangosteen and camellia sinensis extract.
(Id., emphasis added.)
3. Morariu '896 states that "preferred embodiments of the additional
active ingredients included in [its] formulations ... are compounds having
antioxidative action due to their known benefit in protecting the skin." (Id.
at 8, ,-i 67.)
4. Morariu '896 states that "[a ]nthocyanins and their derivatives are
particularly preferred antioxidants." (Id. at 8 ,-i 68.)
5. Morariu '896 states that "[p ]articularly preferred anthocyanins are
derived from natural sources having high anthocyanin content ... including,
but not limited to, acai berries, aronia berries, apples, bilberries," etc. (Id. at
9 ,-i 71.)
Analysis
Morariu '896 discloses a method of treating a skin condition
(formation of advanced glycation endproducts, or AGEs) by topically
applying a composition comprising benfotiamine, pyridoxamine, and a
carrier (FF 1 ), together with an antioxidant selected from a group that
includes acai extract (FF2). Although acai extract appears in a longer list of
antioxidants, the list consists of only twenty-three choices (FF2). Morariu
'896 thus effectively discloses the use of each one of those components in
the skin treatment method of its claim 23. Cf Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (disclosure of a topical
composition comprising a skin benefit ingredient, with list of fourteen
specific skin benefit ingredients, anticipated topical composition, and
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Application 11/624,985
method of using it, that required one of the fourteen specified skin benefit
ingredients).
Appellants argue that they have filed a declaration under 3 7 C.F .R.
§ 1.131 that removes Morariu '896 as prior art. (Appeal Br. 5.) Appellants
acknowledge that no evidence was submitted with the declaration but argue
that the absence of evidence has been "satisfactorily explained," as required
by the rule, because the declaration states that "an email existed that
established conception of the use of acai berry extract to treat skin before
August 31, 2005; however, that email was automatically deleted during a
routine email deletion program due to its age." (Id. at 6.)
Appellants have not satisfactorily established that they invented the
claimed method before the publication date of Morariu '896. "The purpose
of filing a 131 declaration is to demonstrate that the applicant's date of
invention is prior to the effective date of the reference cited in support of a
rejection." In re Asahi/America Inc., 68 F.3d 442, 445 (Fed. Cir. 1995). In
this case, Appellants rely on their Rule 131 declaration to show conception
of the claimed method and diligence in reducing it to practice.
However,
[ c ]onception is the formation in the mind of the inventor of a
definite and permanent idea of the complete and operative
invention, as it is therefore to be applied in practice. A
conception must encompass all limitations of the claimed
invention and is complete only when the idea is so clearly
defined in the inventor's mind that only ordinary skill would be
necessary to reduce the invention to practice, without extensive
research or experimentation.
Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003) (internal quotations
and citations omitted).
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Appellants have provided no evidence to show that the claimed
method was conceived in the manner required before the publication date of
Morariu '896. Appellants' basis for alleging conception is the statement that
"David Gan came up with the idea of using acai berry extract in topical skin
formulations to treat skin conditions prior to August 31, 2005. Mr. Gan then
disclosed this idea to us via email prior to August 31, 2005." (Rule 131
Declaration, ,-i 3.)
Appellants explain the absence of a copy of this email by averring that
"the email was deleted from the Mary Kay system due to it being over five
years old." (Id.) Appellants do not, however, provide any explanation for
the complete absence of any other evidence of the contents of the email,
such as contemporaneous notes, laboratory records, follow-up emails, etc.
The complete lack of evidence to show what was conceived and
communicated in the alleged email by Mr. Gan renders the Rule 131
Declaration ineffective in showing that Appellants invented the claimed
method before the publication date of Morariu '896.
In addition, Appellants have not provided any evidence of diligence in
reducing the claimed method to practice after its alleged conception, and
have provided no explanation for that lack of evidence. See In re Mulder,
716 F.2d 1542, 1545 (Fed. Cir. 1983) ("Rule 131 requires proof of diligence
coupling conception to the filing of the application .... [T]he PTO's refusal
to accept the declarations as meeting the requirements of Rule 131 must be
affirmed because of a total lack of evidence of diligence to couple
conception to the filing date.").
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In short, Appellants' Rule 131 submission fails to show either
conception of the claimed method or diligence in reducing the invention to
practice. Appellants therefore have not removed Morariu '896 as prior art.
Appellants also argue that the acai extract disclosed by Morariu '896
did not necessarily contain a polyphenol, as required by claim 15, because
the reference does not disclose how to prepare an acai extract and "some
extracts may be prepared in such a manner as to remove all polyphenols."
(Appeal Br. 8.)
This argument lacks merit. Morariu '896 discloses that acai extract is
useful in its composition because acai extract contains anthocyanins (FF5),
which are antioxidants (FF4). Appellants do not dispute that anthocyanins
are polyphenols (see Appeal Br. 7-8). The disclosure in Morariu '896 of
acai extract as a source of anthocyanins is presumed to be enabled, and
Appellants have the burden of showing that it is not. See In re Antor Media
Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) ("[A] prior art printed
publication cited by an examiner is presumptively enabling barring any
showing to the contrary by a patent applicant."). Appellants have not shown
that Morariu '896 would not have enabled a person of ordinary skill in the
art to make an acai extract comprising anthocyanins (i.e., polyphenols ).
With regard to claim 43, Appellants argue that "Morariu ['896] does
not teach that acai extract reduces skin inflammation, and further does not
teach using topical compositions comprising acai extract to reduce skin
inflammation." (Appeal Br. 8.)
We agree with Appellants that the Examiner has not pointed to
evidence that supports a finding that Morariu '896 discloses a method of
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Application 11/624,985
reducing skin inflammation, as recited in claim 43. The Examiner points to
the statement that "both free radicals and inflammation are induced by
[AG Es]" and reasons that "the method of Morariu [' 896] is necessarily
directed at preventing inflammation, by applying an acai berry extract
comprising anthocyanin to skin in need thereof[,] because inhibiting AGEs
necessarily reduces inflammation." (Ans. 9.)
We disagree with the Examiner's conclusion on this point. The cited
passage of Morariu '896 reads as follows: "Anti-acne agents may also be
combined with the formulation of the present invention. Since both free
radicals and inflammation are induced by AGEs and are also cofactors in
acne, especially in adult skin, a combination with one or more anti-acne
ingredient may be used in the topical formulation of the present invention."
(Morariu '896 at 11,-i94.)
Thus, the cited passage specifically addresses the relationship between
inflammation and acne, in the context of including anti-acne agents in the
composition disclosed by Morariu '896. The cited passage does not
describe, with the specificity required by § 102, a method of reducing skin
inflammation by topically applying a composition comprising acai berry
extract. We therefore reverse the rejection of claim 43 as anticipated by
Morariu '896.
Conclusion of Law
Appellants have not shown prior invention of the claimed method, and
have not removed Morariu '896 as prior art. A preponderance of the
evidence supports the Examiner's finding that Morariu '896 discloses the
method of claim 15.
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We affirm the rejection of claim 15 as anticipated by Morariu '896.
Claim 24 was not argued separately and therefore falls with claim 15. 37
C.F.R. § 41.37(c)(l)(iv).
We reverse the rejection of claim 43 as anticipated by Morariu '896.
II
Issue
The Examiner has rejected claims 15-17, 24, and 43 as anticipated by
Morariu '251 as evidenced by Smith. The Examiner finds that Morariu '251
"discloses a method of treating a skin condition (appearance of aged skin)
comprising topically applying a composition comprising acai berry extract to
skin in need thereof." (Final Rej. 5.) The Examiner again cites Smith as
evidence that the anthocyanins in acai extract are polyphenols. (Id.)
Appellants contend that the acai extract of Morariu '251 does not
necessarily contain polyphenols because the reference does not teach how its
extracts are made. (Appeal Br. 10.) Appellants also contend that Morariu
'251 does not disclose a method of reducing skin inflammation, as required
by claim 43. (Id. at 11.)
The issues with respect to this rejection are whether Morariu '251
discloses methods that meet all of the limitations of claims 15 and 4 3.
Findings of Fact
6. Morariu '251 discloses "a method and composition ... for treating
skin, comprising administering a topical composition to the skin, containing
a lipoic acid, a camitine, and a camosine .... Treating skin comprises
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Application 11/624,985
treating skin damage and the signs of aging of the skin." (Morariu '251 at 2
,-i 12.)
7. Morariu '251 states that "preferred embodiments of the additional
active ingredients included in [its] compositions ... are compounds having
antioxidative action." (Id. at 5 ,-i 52.)
8. Morariu '251 states that"[ a ]nthocyanins and their derivatives are
particularly preferred antioxidants." (Id. at 6 ,-i 53.)
9. Morariu '251 states that "[p ]articularly preferred anthocyanins are
derived from natural sources having high anthocyanin content ... including,
but not limited to, acai berries, aronia berries, apples, bilberries," etc. (Id. at
6 ,-i 56.)
10. Claim 22 of Morariu '251 reads as follows:
22. A topical formulation comprising:
(Id. at 25.)
(i) a lipoic acid or a dermatologically acceptable salt
thereof;
(ii) a camitine or a dermatologically acceptable salt
thereof;
(iii) a camosine or a dermatologically acceptable salt
thereof; and
(iv) a dermatologically acceptable carrier;
the lipoic acid, camitine, and camosine components being
incorporated in amounts effective in the treatment of skin.
11. Claim 30 of Morariu '251 reads as follows:
30. The formulation of claim 22, wherein the antioxidant is
selected from the group consisting of grape seed procyanidins,
tocopherols, tocotrienols, astaxanthin, bilberry anthocyanins,
blueberry anthocyanins, acai extract, aronia extract, prune
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(Id.)
extract, pomegranate extract, ellagic acid, honokiol, magnolol,
silymarin, quercetin, naringenin, rosmarinic acid, clove
essential oil, wolfberry extract, phyllantus emblica extract,
epicatechin-gallate, Garcinia mangostana extract, shikimic
acid, and hydroxytyrosol.
12. Morariu '251 states that "[a]s skin ages, there is an increase in
oxidative stress, an increase in inflammation," and other changes. (Id. at 1
~ 5.)
Analysis
Morariu '251 discloses a method of treating a skin condition (skin
damage and signs of aging) by topically applying a composition comprising
lipoic acid, camitine, and camosine (FF6), together with an antioxidant
(FF7), where anthocyanins from natural sources such as acai berries are
particularly preferred (FF8, FF9). Morariu '251 also discloses a topical
composition comprising an antioxidant selected from a group that includes
acai extract (FFlO, FFl 1). Although acai extract appear in a longer list of
antioxidants, the list consists of only twenty-four choices (FFl 1). Morariu
'251 thus effectively discloses the use of each one of those components in
the topical composition of claim 22. See Perricone, 432 F.3d at 1376.
Appellants argue that the acai extract disclosed by Morariu '251 did
not necessarily contain a polyphenol, as required by claim 15, because the
reference does not disclose how to prepare an acai berry extract and
therefore "it cannot be established that polyphenols are necessarily present
in the acai berry extracts ofMorariu ['251]." (Appeal Br. 10.)
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This argument is unpersuasive for the same reason discussed above
with respect to Morariu '896. Morariu '251 discloses that acai extract is
useful in its composition because it contains anthocyanins (FF7-9).
Appellants do not dispute that anthocyanins are polyphenols (see Appeal Br.
10). The disclosure in Morariu '251 of acai extract as a source of
anthocyanins is presumed to be enabled, and Appellants have pointed to no
evidence showing that it is not.
With regard to claim 43, Appellants argue that "Morariu ['251] does
not teach the use of topical skin compositions containing acai extract to
reduce skin inflammation." (Appeal Br. 11.)
This argument is unpersuasive, because Morariu '251 discloses
topical application of its composition to treat skin damage and signs of aging
(FF6), and discloses that "[a ]s skin ages, there is ... an increase in
inflammation" (FF12). Thus, by disclosing treatment of signs of aging of
the skin, Morariu '251 inherently discloses treating skin in need of reduced
skin inflammation, as required by claim 43.
Conclusion of Law
Morariu '251 discloses methods that meet all of the limitations of
claims 15 and 43. Claims 16, 17, and 24 have not been argued separately
and therefore fall with claims 15 and 43. 37 C.F.R. § 41.37(c)(l)(iv).
III
The Examiner has rejected claims 15-17, 21, 24-27, 36, 37, and 43 as
obvious based on Morariu '896 and Smith. For the reasons discussed above
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in section I, we agree with the Examiner that Morariu '896 anticipates claim
15.
Appellants argue that Morariu '896 "teaches another ingredient which
contains polyphenols (i.e., green tea) that may be used in the disclosed
topical formulations. See para. [0067]. Thus, Morariu actually teaches
away from the currently claimed invention." (Appeal Br. 12.)
This argument is unpersuasive, for two reasons. First, "the question
whether a reference 'teaches away' from the invention is inapplicable to an
anticipation analysis." Celeritas Techs. Ltd. v. Rockwell Int'! Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998). Second, as discussed above in section I,
Morariu '896 discloses a method of treating skin by applying a composition
that comprises acai extract, which contains anthocyanins, and Appellants
have pointed to no evidence that contradicts the Examiner's finding (based
on Smith) that anthocyanins are polyphenols.
Appellants also argue that "claim 25 depends from claim 15 and
further specifies that the composition further comprises a vitamin, a mineral,
an essential fatty acid, an essential amino acid, a flavonoid, and a protein."
(Appeal Br. 12.) Appellants argue that "[t]here simply is no reason to select
the specific combination of a vitamin, a mineral, an essential fatty acid, an
essential amino acid, a flavonoid, and a protein from the myriad of other
choices" that could be made based on the disclosure of Morariu '896. (Id. at
13.)
We agree with the Examiner (Final Rej. 9-10), however, that
including the claimed components in the composition of Morariu '896
would have been obvious based on the reference's disclosure. Morariu '896
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describes specific reasons for including each of the components recited in
claim 25 in its composition. Morariu '896 states that antioxidants suitable
for use in its composition include amino acids (e.g., glycine) and vitamin A
(Morariu '896 at 8 ,-i 67), salts of manganese are dermorelaxants that relax
muscles and reduce wrinkles in the skin (id. at 14 ,-i 117), skin-protective
lipids include essential fatty acids (id. at 11 ,-i 95), flavonoid glycuronides are
stabilizers for anthocyanins (id. at 9 ,-i 73), and aldenine (a vegetable protein
hydrolysate) boosts collagen III production (id. at 15 ,-i 127).
Thus, Morariu '896 provides a reason to include each of the
components recited in claim 25 for its known skin-benefit function. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results."). Appellants' argument
that numerous other combinations of known skin-benefit agents would have
been obvious based on Morariu '896 does not detract from the conclusion
that the combination recited in claim 25 would also have been obvious. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[D]isclos[ing] a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose taught by the prior
art.").
With regard to claim 43, Appellants argue that Morariu '896 does not
suggest reducing skin inflammation using acai extract. (Appeal Br. 15.)
As with the anticipation rejection based on Morariu '896, the
Examiner points to the reference's statement that "free radicals and
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inflammation are induced by AGEs" (Morariu '896 at 11 ,-i 94), but the cited
passage refers to the relationship between inflammation and acne, in the
context of including anti-acne agents in the composition of Morariu '896.
The Examiner has not adequately explained why a skilled artisan would
have been led to treat skin inflammation or acne with a composition
comprising acai extract. We therefore reverse the rejection of claim 43
under 35 U.S.C. § 103(a) based on Morariu '896 and Smith.
IV
Issue
The Examiner has rejected claims 18, 19, 23, and 44 as obvious based
on Morariu '896, Smith, and Dean. The Examiner finds that Dean teaches
that the pulp of the kakadu plum fruit can be processed into a powder or
puree and used in cosmetic products, and has a high ascorbic acid content.
(Ans. 12.) The Examiner concludes that it would have been obvious to use
kakadu plum extract in the composition of Morariu '896 because Morariu
'896 teaches using plant extracts containing vitamin C in its composition to
reduce signs of aging. (Id.)
Appellants contend that a skilled artisan would not have had a
reasonable expectation of successfully using kakadu plum extract in the
claimed method. (Appeal Br. 16-1 7.) Appellants also contend that they
have shown that the combination of acai berry extract and kakadu plum
extract provides an unexpected synergistic effect. (Id. at 17.)
The issues with respect to this rejection are (1) whether a
preponderance of the evidence supports a prima facie case of obviousness,
including a reasonable expectation of success, and (2) whether Appellants
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have presented evidence of unexpected results that, when weighed with the
evidence favoring obviousness, shows that the method of claim 18 would
have been nonobvious.
Findings of Fact
13. Morariu '896 discloses that "vitamin C and the vitamin C
derivatives including ascorbic acid" or "extracts from plants containing a
high amount of vitamin C" are useful in its compositions. (Morariu '896 at
10,-i78.)
14. Morariu '896 discloses that vitamin C or its derivatives reduce
damage from formation of a compound which leads to advanced glycation
endproducts (AGEs) and "[t]herefore, [its] invention is particularly useful in
combination with topical formulations containing vitamin C." (Id.)
15. Dean discloses that Terminaliaferdinandiana is known as the
kakaduplum. (Dean 1:10, 16-17.)
16. Dean discloses that the fruit of the kakadu plum has a relatively
high ascorbic content. (Id. at 2: 15-16.)
17. Dean discloses that the de-seeded fruit can be either in a
powdered form or in a fluid form such as a puree. (Id. at 6:6-7.)
18. Dean discloses that "the powder and/or puree can be added to
creams, lotions and the like for use in application to the skin." (Id. at 6:21-
22.)
Analysis
Morariu '896 expressly suggests including vitamin C (ascorbic acid)
or extracts from plants high in vitamin C in its composition (FF13), and
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Dean discloses that the fruit of the kakadu plum is high in ascorbic acid
(FF 16). Dean also discloses that a powder or puree made from the fruit of
the kakadu plum is useful in compositions for topical application to the skin
(FF18). We agree with the Examiner that, based on these disclosures, it
would have been obvious to include kakadu plum extract in the composition
of Morariu '896.
Appellants argue that neither Morariu '896 nor Dean provide any
efficacy or stability data for topical compositions comprising kakadu plum
extract and, "[t]herefore, a person of ordinary skill in the art would have had
no reasonable expectation of success in creating the currently claimed
composition." (Appeal Br. 16.) Appellants cite the Hines Declaration7 in
support of their position. (Id.)
Dr. Hines notes that two references previously (but no longer) relied
on by the Examiner related to food products, not topical skin compositions.
(Hines Deel. ,-i,-i 4-6.) Morariu '896 and Dean, however, disclose use of acai
extract or kakadu plum extract, respectively, in compositions for application
to the skin (FFl-2, FF18).
Dr. Hines states that vitamin C is known to be unstable in topical
formulations because it oxidizes in aerobic conditions and with light
exposure. (Hines Deel. ,-i 7.)
These factors do not persuade us that Morariu '896 and Dean would
have failed to provide a skilled artisan with a reasonable expectation of
success. Morariu '896 states that plant extracts containing vitamin C are
7 Declaration under 37 C.F.R. § 1.132 of Michelle D. Hines, signed May 15,
2010.
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useful in its compositions (FF13) and Dean states that a powder or puree of
kakadu plum is useful in compositions for application to skin (FF18). These
disclosures are presumed to be enabling, and Appellants have the burden of
showing that they are not. In re Antor Media Corp., 689 F.3d at 1288. The
fact that vitamin C can oxidize when exposed to light or air means that
including Dean's kakadu plum extract in the composition of Morariu '896
would require the resulting composition to be packaged so as to minimize
exposure to light or air, but it does not mean that a skilled artisan would
have lacked a reasonable expectation of successfully combining the
teachings of the two references.
Appellants also argue that the combination of kakadu plum extract
and acai berry extract exhibits an unexpected, synergistic effect. (Appeal
Br. 17.) Appellants cite Figures 3, 6, and 7 of the Specification and the
Hines Declaration as evidence supporting their position. (Id. at 18-19.)
Appellants argue that the two extracts show a "'mirror image' activity
profile [which] means that a combination of these two agents covers the
spectrum of inflammatory cytokines in a way that either agent alone could
not." (Id. at 19.)
As the Examiner has pointed out, however, the data do not show that
acai berry extract and kakadu plum extract work synergistically and even the
Hines Declaration does not characterize the data as showing synergism.
(Ans. 29-30.) In addition, the results shown in the Specification's Figures 3,
6, and 7, and reproduced in the Hines Declaration, show the results of
adding kakadu plum extract or acai berry extract (separately) to the growth
medium of cultured keratinocytes (see Spec. 30-32, 34), not the effect of
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those extracts when applied topically to skin, as required by the claims. As
the Examiner has pointed out, "Appellants have not explained that the
observed difference has a practical significance. For example, it is not clear
that reduction in inflammatory cytokines shown in vitro has a practical
significance for reducing inflammation topically." (Ans. 30.) See In re
Fenn, 639 F.2d 762, 765 (CCPA 1981) ("Although it is well settled that
comparative test data showing an unexpected result will rebut a prima facie
case of obviousness, the comparative testing must be between the claimed
invention and the closest prior art.") (emphasis added).
In summary, Appellants have not shown that the claimed method
achieves results that would be considered synergistic or otherwise superior
to those that would have been expected based on the prior art.
With regard to claims 19 and 23, Appellants argue that the amounts
recited for kakadu plum extract (claim 19) or both kakadu plum extract and
acai berry extract (claim 23) are not taught or suggested by the references.
(Appeal Br. 19-20.) Appellants argue that the different antioxidants in
Morariu '896 have different properties, and Morariu '896 does not suggest
an appropriate amount of acai extract. (Id. at 20.) Appellants also argue that
Dean does not disclose an effective amount of kakadu plum extract in
topical compositions. (Id. at 21.)
These arguments are not persuasive. Morariu '896 expressly states
that the amount of additional agent(s), like acai extract, in its composition
"is preferably from about 0.00 to about 30% by weight, preferably from
about 0.1 to about 5% by weight, based on the total weight of the
preparation." (Morariu '896 at 16 ,-i 131.) Thus, Morariu '896 expressly
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discloses ranges for acai extract that overlap or are encompassed by the
range recited in claim 23.
Morariu '896 also suggests including extracts from plants that have a
high amount of vitamin C in its composition (FF13). Dean discloses that
kakadu plums have a high ascorbic content (FF16). Thus, it would have
been obvious to include Dean's kakadu plum extract in the composition of
Morariu '896 as a source of vitamin C, and to include it in an amount within
the range disclosed by Morariu '896 for the additional agents in its
composition. Appellants' argument that the references do not suggest that
the amount of active agent(s) is a result-affecting variable is unpersuasive in
view of the contrary teaching of Morariu '896.
With respect to claim 44, Appellants argue that Morariu '896 does not
suggest that acai extract reduces skin inflammation, and Dean does not
mention using kakadu plum extract to reduce inflammation in skin. (Appeal
Br. 22.) Appellants argue that the references do not provide a reason to use
a combination of the extracts to reduce skin inflammation. (Id.)
As discussed previously, the Examiner has not shown that Morariu
'896 discloses using acai extract to treat skin inflammation. The Examiner
has not pointed to any disclosure in Dean that makes up for this deficiency.
(See Ans. 19.) We therefore reverse the rejection of claim 44 under 35
U.S.C. § 103(a) based on Morariu '896, Smith, and Dean.
Conclusion of Law
A preponderance of the evidence supports a prima facie case of
obviousness, including a reasonable expectation of success. Appellants have
not presented evidence of unexpected results that, when weighed with the
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evidence favoring obviousness, shows that the method of claim 18 would
have been nonobvious.
We affirm the rejection of claims 18, 19, and 26 under 35 U.S.C.
§ 103(a) based on Morariu '896, Smith, and Dean. We reverse the rejection
as applied to claim 44.
v
The Examiner has rejected claims 21, 24-27, 36, and 37 as obvious
based on Morariu '251 and Smith. The Examiner finds that Morariu '251
does not expressly teach a composition comprising the amount of acai berry
extract (0.05-25% by weight) recited in claim 21, but it teaches that its
formulations can comprise 0.1-5% by weight of additional agents, and
teaches that antioxidants such as acai extract are preferred additional agents.
(Final Rej. 14.)
We agree with the Examiner's findings and conclusion. Morariu '251
states that additional agents, such as antioxidants (FF7), can be used in its
formulation. Morariu '251 states that "each agent will be present in the
formulation in an amount from about 0.001 to about 30% by weight,
preferably from about 0.1 to about 5% by weight, based on the total weight
of the preparation." (Morariu '251 at 5 ,-i 51.)
The preferred range of additional agents disclosed by Morariu '251
overlaps the range recited in claim 21 and therefore supports a prima facie
case of obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) ("A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art.").
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Appellants argue that Morariu '251 "teaches other ingredients
containing polyphenols (e.g., green tea) that may be used in the disclosed
topical formulations. See para. [0052]. Thus, Morariu ['251] actually
teaches away from the currently claimed invention" because a skilled artisan
desiring to include polyphenols would be led to obtain them from green tea.
(Appeal Br. 23.)
This argument is unpersuasive. As discussed above in section II,
Morariu '251 discloses a method of treating skin by applying a composition
that comprises acai extract, which contains anthocyanins, and Appellants
have pointed to no evidence that contradicts the Examiner's finding (based
on Smith) that anthocyanins are polyphenols.
Appellants also argue that Morariu '251 describes seventy-seven
paragraphs of possible additional ingredients, in which acai fruit is
mentioned only in passing. (Appeal Br. 23.) Appellants argue that
searching out the elements of the claimed invention "is analogous to a
'needle-in-a-haystack' approach" and requires impermissible hindsight. (Id.
at 23-24.)
This argument is also unpersuasive because Morariu '251 expressly
discloses a topical formulation comprising an antioxidant chosen from a list
of only twenty-four choices, one of which is acai extract (FF 10-FF 11 ).
Morariu '251 thus effectively discloses the use of each one of those
components in its topical composition. See Perricone, 432 F.3d at 1376. No
improper hindsight is required.
Appellants also argue that "claim 25 depends from claim 15 and
further specifies that the composition further comprises a vitamin, a mineral,
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an essential fatty acid, an essential amino acid, a flavonoid, and a protein."
(Appeal Br. 24.) Appellants argue that "[t]here simply is no reason to select
the specific combination of a vitamin, a mineral, an essential fatty acid, an
essential amino acid, a flavonoid, and a protein from the myriad of other
choices" that could be made based on the disclosure of Morariu '251. (Id. at
13.)
We agree with the Examiner (Final Rej. 15-16), however, that the
including the claimed components in the composition of Morariu '251
would have been obvious based on the reference's disclosure. Morariu '251
describes specific reasons for including each of the components recited in
claim 25 in its composition. Morariu '251 states that antioxidants suitable
for use in its composition include amino acids (e.g., glycine) and vitamin A
(Morariu '251 at 5 ,-i 52), manganese gluconate is a collagen enhancing agent
(id. at 13 ,-i 87), skin-protective lipids include essential fatty acids (id. at 18
,-i 111 ), flavonoid glycuronides are stabilizers for anthocyanins (id. at 6
,-i 5 8), and aldenine (a vegetable protein hydrolysate) boosts collagen III
production (id. at 12 ,-i 76).
Thus, Morariu '251 provides a reason to include each of the
components recited in claim 25 for its known skin-benefit function. See KSR,
550 U.S. at 416 ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). Appellants' argument that numerous other combinations would
have been obvious based on Morariu ' 251 does not detract from the
conclusion that the combination recited in claim 25 would also have been
obvious. See Merck v. Biocraft, 874 F.2d at 807 ("[D]isclos[ing] a multitude
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of effective combinations does not render any particular formulation less
obvious.").
VI
The Examiner has rejected all of the claims on appeal as obvious
based on Morariu '251, Smith, and Dean. The Examiner finds that Dean
teaches that the pulp of the kakadu plum fruit can be processed into a
powder or puree and used in cosmetic products, and has a high ascorbic acid
content. (Ans. 18-19.) The Examiner concludes that it would have been
obvious to include kakadu plum extract in the composition of Morariu '251
because Morariu '251 teaches using botanical extracts containing vitamin C
in its composition. (Id.)
We agree with the Examiner's fact-finding and conclusion.
Appellants do not separately argue claims 16-18, 21, 24-27, 36, or 37.
Those claims therefore fall with claim 15.
Appellants argue that the references do not teach the amounts of acai
berry extract or kakadu plum extract that are recited in claims 19 and 23.
(Appeal Br. 26.) Appellants also argue that the concentration of acai berry
extract or kakadu plum extract is not recognized as a result-effective variable
in the references. (Id.)
This argument is not persuasive. As discussed in section IV with
regard to Morariu '896, Morariu '251 expressly states that additional
agent(s), like acai extract, are present in its composition at "from about
0.001 to about 30% by weight, preferably from about 0.1 to about 5% by
weight." (Morariu '251 at 5 ,-i 51.) Thus, Morariu '251 expressly discloses
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ranges for acai extract that overlap or are encompassed by the range recited
in claim 23.
Morariu '251 also suggests including extracts from plants that have a
high amount of vitamin C in its composition. (Morariu '251 at 7,-i 61.)
Dean discloses that kakadu plums have a high ascorbic content (FF 16).
Thus, it would have been obvious to include Dean's kakadu plum extract in
the composition ofMorariu '251 as a source of vitamin C, and to include it
in an amount within the range disclosed by Morariu '251 for the additional
agents in its composition. Appellants' argument that the references do not
suggest that the amount of active agent(s) is a result-affecting variable is
unpersuasive in view of the contrary teaching ofMorariu '251.
With regard to claims 43 and 44, Appellants argue that Morariu '251
does not suggest that acai extract reduces skin inflammation, and Dean does
not teach that kakadu plum extract reduces skin inflammation. (Appeal Br.
26-27.) Appellants argue that claims 43 and 44 would therefore not have
been obvious based on the cited references. (Id. at 27.)
This argument is unpersuasive for the reason discussed above in
section II: Morariu '251 discloses topical application of its composition to
treat signs of aging (FF6), and discloses that "[a]s skin ages, there is ... an
increase in inflammation" (FF12). Thus, Morariu '251 inherently discloses
treating skin in need of reduced skin inflammation with its composition, as
required by claim 43. Because Morariu '251 and Dean would have made
obvious the addition of kakadu plum extract to the composition of Morariu
'251, the combined references also would have made obvious the method of
claim 44.
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SUMMARY
We affirm all of the rejections on appeal.
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. § l.136(a).
AFFIRMED
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