Ex Parte Gohla et al

Patent Trial and Appeal Board

Jul 17, 2017

13883415 (P.T.A.B. Jul. 17, 2017)

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.
13/883,415 07/17/2013 Sven Gohla 3321-P50064 1603
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
07/19/2017 EXAMINER
TATE, CHRISTOPHER ROBIN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
07/19/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN GOHLA, DANIEL STANGL, and
CLAUDIA MUNDT
Appeal 2017-0033891
Application 13/883,415
Technology Center 1600
Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a topical cosmetic or
dermatological preparation for protecting skin, comprising snow algae
extract. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious
and under 35 U.S.C. § 101 as directed to a judicial exception to patent
eligibility. We have jurisdiction under 35 U.S.C. § 6(b). The § 103
rejection is affirmed; the § 101 rejection is affirmed-in-part. All claims
remain rejected.
1 The Appeal Brief (“Appeal Br.”) 3 lists La Prairie Group AG of
Volketswil/Zuerich, Switzerland as the real-party-in-interest.
Appeal 2017-003389
Application 13/883,415
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 43—62.
The claims stand rejected as follows:
1. Claims 43—62 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of US 2010/0316720 Al, publ. Dec. 16, 2010 (“Stutz”), US
2006/0018867 Al, publ. Jan. 26, 2006 (“Kawasaki”), US 2005/0249691 Al,
publ. Nov. 10, 2005 (“Monks”), the admitted state of the art (with regard to
the commercially-available cosmetic product termed oligopeptide-21), with
evidence provided by the website document entitled “Treat Eczema with
Sunflower,” http://www.eczema.net/treat-eczema/. Eczema.net (last visited
July 23, 2015) (“Eczema”).
2. Claims 43—62 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious in view of JP 2010-013413 - DWPI Abstract, plus full JPO English
translation, publ. Jan. 1, 2010 (“Doi”), US 2005/0266058 Al, publ. Dec. 1,
2005 (“Esperester”), Kawasaki, Monks, and admitted state of the art (with
regard to the commercially-available cosmetic product termed oligopeptide -
21).
3. Claims 43—62 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view JP 2002-114703, JPAB Abstract, plus JPO English translation
(“Nishikawa”) JP 2006-028412, DWPI Abstract, plus JPO English
translation) (“Ikeda”), FR 2849596, DWPI Abstract (“Bruneau”), Esperester,
Kawasaki, Monks, and admitted state of the art (with regard to the
commercially-available cosmetic product termed oligopeptide-21).
4. Claims 43—60 under 35 U.S.C. § 101 as directed to a judicial
exception to patent eligibility.
Claim 43, the only independent claim on appeal, reads as follows:
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43. A topical cosmetic or dermatological preparation for
protecting skin, wherein the preparation comprises from
0.0005 % to 20 % by weight of snow algae extract as well as one
or more of (i) collagen, (ii) chitosan and/or acetylated chitosan
having a degree of acetylation of about 50 %, (iii) a
glycosaminoglycan, (iv) a peptide which promotes cell growth,
and (v) a composition comprising glycoprotein 1, glycoprotein
2, ginseng extract, and horsetail extract.
OBVIOUSNESS REJECTIONS
The claims are directed to a “topical cosmetic or dermatological
preparation for protecting skin.” The preparation comprises “from 0.0005 %
to 20 % by weight of snow algae extract.” In addition to the snow algae, the
topical composition can comprise at least one of five different specific
components (i) to (v).
The Examiner cited several different publications for teaching snow
algae extract in a cosmetic composition, including Stutz (Rejection 1);
Kawasaki and Doi (Rejection 2); and Nishikawa, Ikeda, and Bruneau
(Rejection 3). Final Office Action (“Final Act.”) 4, 5, 7, 9.
Snow algae is a Chlamydomonas species. The Specification states
that the “use of Chlamydomonas extracts in cosmetic preparations has
already been described on occasion.” Spec. 2:1—2, 23—24; 3:13—30.
The Examiner also relied on additional publications (Kawasaki,
Monks, Esperester) for their teaching of the specific components recited in
claim limitations (i)—(v).
The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of the invention “to further include other
conventional cosmetic/dermatological agents [in a snow algae extract] —
such as lecithin, collagen, chitosan, and/or oligopeptide-21, within the
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topically-applied cosmetic/dermatological preparation” for their known
beneficial properties. Final Act. 6, 8, 11.
Although Appellants have argued each of the three rejections
separately, our review of the Briefs indicate that many of the same
arguments have been made for each rejection. Consequently, to avoid
duplicative arguments, we have addressed all three rejections together.
However, where we find differences in the arguments between the
obviousness rejections, such differences are addressed.
(i) collagen
One of the choices for an ingredient in addition to the snow algae
extract in claim 43 is (i) collagen. The Examiner found that collagen is
described in Kawasaki and Monks as a conventional additive for topical
cosmetic/dermatological, making collagen an obvious addition to a
preparation comprising snow algae. Final Act. 5, 6. Further reason to
combine collagen with snow algae is provided by Stutz, which teaches snow
algae and sunflower seed oil (Stutz | 59), the latter which is known to elicit
collagen production (Eczema 2), providing evidence of the desirability of
collagen. Appellants contend that that the publications describing snow
algae do not contain collagen (Appeal Br. 13, 32), but do not adequately
address the combination of the references and the Examiner’s reasoning for
finding it obvious to have included collagen.
(ii) chitosan and/or acetylated chitosan having a degree of acetylation of
about 50 %
Limitation (ii) in claim 43, and dependent claims 47 and 48, further
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require the addition of “chitosan and/or acetylated chitosan having a degree
of acetylation of about 50%.” The Examiner cited Kawasaki and Monks for
teaching cosmetic preparations with these additives. Final Act. 5.
Specifically, Kawasaki, teaches a list of additives which may be included in
a cosmetic composition. Kawasaki 1 87—131. Among the list is chitosan.
Id., 193. Monks discloses a cosmetic or dermatological preparation that
contains “chitosan and/or a derivative thereof, having a degree of acetylation
of up to 50%,” the same amount of acetylation as recited in the claim.
Monks, Abstract.
Appellants contend that the Examiner “has not provided any evidence
to support the assertion that chitosan and/or acetylated chitosan having a
degree of acetylation of about 50% . . . quality as ‘conventional
cosmetic/dermatological agents’.” Appeal Br. 15.
This argument is not persuasive because Monks, as referenced above,
expressly describes chitosan with the claimed degree of acetylation and
discloses that it is useful “for renewing the skin on topical application”
(Monks 121), providing an express reason to have utilized it in a preparation
to be applied to skin. Thus, contrary to Appellants’ argument that one of
ordinary skill in the art would not have combined the cited snow algae
publications with Monks (Appeal Br. 15), Monks provides an express reason
to do so in order to obtain the benefits of chitosan.
(Hi) glycosaminoglycan
Limitation (iii) in claim 43 and dependent claim 49 recite further
require the addition of “glycosaminoglycan.” The Examiner found that
Monks describes glycosaminoglycan in a cosmetic/dermatological
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preparation. Final Act. 5. Appellants contend that the Examiner “has not
provided any evidence to support the assertion that. . . glycosaminoglycan
qualifies] as ‘conventional cosmetic/dermatological agents’.” Appeal Br.
15.
This argument is not persuasive. Monks, at paragraph 21, discloses
that glycosaminoglycan, when present in a cosmetic preparation with other
ingredients, is advantageous for wound healing and skin renewal, providing
a reason to have combined it with snow algae, which is also useful for the
skin (Stutz, Abstract; Bruneau; Final Act. 9).
(iv) peptide which promotes cell growth
Limitation (iv) in claim 43 and dependent claims 51 and 52 further
requires the addition of a peptide which promotes cell growth. The
Examiner relied on several sources for such a peptide, including Stutz’s
teaching of sunflower seed oil, which the Examiner found causes cells to
produce more collagen (Final Act. 4), and oligopeptide-21 which the
Examiner stated is an “art-recognized cosmetic product (skin conditioner)
that is also commercially-available (e.g., from Caregen Co., LTD) under the
tradename IDP-4,” citing disclosure in the Specification at page 11, lines
23—30 as support {id., 5—6). With respect to oligopeptide-21, the Examiner
found it would have been obvious to have included it in a topical cosmetic
preparation comprising snow algae for its known cell growth benefit. Id., 5.
Appellants challenge the Examiner’s finding that sunflower is a
peptide which promotes cell growth. Appeal Br. 16.
As found by the Examiner, sunflower oil contains peptides that help
cells produce more collagen. Eczema 1—2. Appellants did not dispute this
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property. Appeal Br. 16. The Specification does not provide a definition of
“cell growth.” Therefore, we look to its customary meaning.2 Cell growth
is defined as increase in the size and volume of a cell.3 Such definition is
broad enough to include the production of collagen protein by the cell
because the produced protein would add to the volume and size of the cell,
i.e., a cell grows in size and volume by adding cellular materials, such as
collagen, to it.
Appellants contend that the Examiner did not establish that the skilled
worker would have had reason to add oligopeptide-21 to a cosmetic
preparation comprising snow algae. Appeal Br. 18. We do not agree. As
indicated by the Examiner, the Specification discloses that oligopeptide-21
is made by Caregen Co., Ltd., Korea. Spec. 11. Caregen is a skin biology
company that produces cosmeceuticals for the skin4 and had registered
growth factors in 2004 as cosmetic ingredients.5 Consequently, the
Examiner had reasonable basis to conclude that oligopeptide-21 had been
used as a growth factor in a cosmetic product, providing a reason to have
2 The words in a claim “are generally given their ordinary and customary
meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). The “ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application.” Phillips v. AWHCorp., 415 F.3d 1303, 1313 (Fed. Cir.
2005).
3 See http://www.encyclopedia.com/science/dictionaries-thesauruses-
pictures-and-press-releases/cell-growth-O; http://www.biology-
online.org/dictionary/Cell_growth.
4 See http://www.caregen.com/?page=caregen_introduce|greetings.
5 See http://www.caregen.com/?page=caregen_introduce|vision.
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added it to a preparation comprising snow algae which also is a known
cosmetic product.
Additional reason that would have prompted the skilled worker to use
a growth factor in a topical cosmetic preparation is provided by Monks
which teaches a composition for skin regeneration and renewal (Monks
121) which would suggest the desirability of cell growth and cell growth
factors to facilitate regeneration and renewal, processes that would require
cell growth as we have interpreted that term.
Doi
With respect to the rejection based on Doi (Rejection 2), Appellants
contend there would be no reason to add a growth factor because Doi
teaches inhibiting stem cell growth factor. Appeal Br. 22, 25. The
Examiner did not respond to Appellants’ argument. Appellants’ argument
about stem cell growth factor inhibition is factually supported. Doi,
Abstract. Consequently, we reverse the Doi Rejection 2 with respect to
claims 51, 52, 53, 55, 56, 57, and 60 which require a growth factor.
(v) composition comprising glycoprotein 1, glycoprotein 2, ginseng
extract, and horsetail extract
Limitation (v) in claim 43 and dependent claim 54 further requires
“glycoprotein 1, glycoprotein 2, ginseng extract, and horsetail extract.”
Claim 55 requires the components of both (iv) and (v). Claim 56 depends
from claim 55 and recites that the growth factor of (iv) is oligopeptide-21.
The Examiner found that Kawasaki teaches a cosmetic that comprises
snow algae (Kawasaki 195), as well as other conventional ingredients
including glycoproteins {id. 1132), ginseng (id. H 93, 110), and horsetail
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(id. 193 (Equisetum)). Final Act. 5. The Examiner found that it would have
been obvious to utilize each of these ingredients because they are
conventional cosmetic and dermatological agents. Id. 6.
Appellants argue that Kawasaki “discloses hundreds, if not thousands,
of most diverse substances which can optionally be added to the
compositions disclosed therein and therefore, cannot reasonably be
considered to render obvious any of the combinations recited in the instant
claims, let alone the combinations of claims 54 and 55.” Appeal Br. 20.
Appellants’ arguments do not persuade us that the Examiner erred. It
is true that Kawasaki discloses a detailed list of ingredients that are used in
cosmetics, but Kawasaki teaches that such additives may be added to a
cosmetic to achieve the various desired effects, such as a humectant (listing
ginseng and horsetail at Kawasaki 193). Kawasaki expressly teaches that
the disclosed additives are “arbitrarily selected and combined as additives to
provide a cosmetic composition having a larger variety of functions.” Id. 1
87. Thus, the preponderance of the evidence supports the Examiner’s
determination that it would have been obvious to the ordinary worker who
formulates topical preparations to pick a cosmetic agent for its desired
properties. Appellants have not demonstrated the recited combination
provides a solution to a known problem. Compare Leo Pharma. Prods., Ltd.
v. Rea, 726 F.3d 1346 (Fed. Cir. 2013). Rather, it appears that the recited
formulation contains the type of ingredients which are typically included a
preparation for cosmetic and dermatological purposes. Nor have Appellants
provided any persuasive evidence of secondary considerations (e.g.,
unexpected results) when such well-known cosmetic ingredients are used in
combination with snow algae extract.
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With regard to the presence of the growth factor, and particularly
oligopeptide-21, we have addressed the obviousness of using a known
growth factor in a cosmetic composition, particularly in view of the
teachings in Monks and the admissions in the Specification.
Claim 53 and 57
Claims 53 and 57 require the preparation to be in the form of a
nanoemulsion. The Examiner found that Stutz describes a nanoemulsion of
snow algae. Final Act. 4; Stutz | 56. Appellants did not identify a flaw in
the Examiner’s fact-finding or reasoning with respect to the Stutz rejection.
However, with regard to the rejections based on Doi (Rejection 2) and
Nishikawa/lkeda (Rejection 3), with agree with Appellants that the
Examiner did not provide adequate factual basis to establish the obviousness
of the nanoemulsion of claims 53 and 57, and thus we reverse the rejection
with respect to these claims.
Claim 58—60
Claims 58—60 recite a list of various extracts, which appear to be
largely, if not all, from plants. The Examiner found that Kawasaki discloses
plant extracts that meet the claim limitations. Ans. 16. Kawasaki teaches
that such extracts are conventionally used as additives in cosmetic
compositions. Kawasaki | 87. Appellants did not persuasively demonstrate
a flaw in the Examiner’s findings.
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Doi
Appellants contend that the Examiner did not provide adequate
reasoning to include the component of (i)—(v) in Doi’s skin whitening
composition. Appeal Br. 22, 24.
However, Kawasaki describes skin whitening compositions
(Kawasaki || 48, 86), which contain all of the same additives as other skin
compositions. Accordingly, the same arguments made above with respect to
Kawasaki apply to the rejection based on Doi.
Nishikawa and Ikeda
Appellants contend that “the mere fact that NISHIKAWA and IKEDA
(and BRUNEAU) mention an extract of Chlamydomonas does not mean that
these documents disclose an extract of snow algae. There are many different
species of the genus Chlamydomonas (one of them being the species
Chlamydomonas pertusa disclosed in KAWASAKI, see page 17 of the
instant Appeal Brief).” Appeal Br. 30-31.
Appellants’ argument is not persuasive. The Specification teaches
there are about 350 species of snow algae:
Snow algae are freshwater algae which belong to the
Chlamydomonas genus. Nowadays, about 350 species of snow
algae are known, with Chlamydomonas nivalis, a single-celled
alga, being particularly widespread.
Spec. 2: 23—25.
The Specification specifically characterizes snow algae as “freshwater
algae.” Because of this broad definition, the Examiner reasonably found that
the Chlamydomonas in Nishikawa and Ikeda are snow algae, or
alternatively, that it would have been obvious to have used such a species,
based on its widespread availability. Ans. 15—16. The Specification, itself,
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generically refers “Chlamydomonas spec, extract,” without specifically
identifying which species are snow algae. Spec. 2:1—2; 34; 38; 42; original
claim 3 characterizing the snow algae of claim 1 as a “Chlamydomonas
spec, extract.”
Summary
Obviousness Rejection 1 of claims 43—62 is affirmed.
Obviousness Rejection 2 of claims 43—50, 54, 58, 59, 61, and 62 is
affirmed. Obviousness Rejection 2 of claims 51, 52, 53, 55, 56, 57, and 60
is reversed.
Obviousness Rejection 3 of claims 43—52, 54—56, and 58—62 is
affirmed. Obviousness Rejection 3 of claims 53 and 57 is reversed.
SECTION 101 REJECTION
The Examiner rejected claims 43—60 under 35 U.S.C. § 101. The
Examiner found that the claimed invention is directed to a natural product, a
judicial exception to patent eligibility under 35 U.S.C. § 101. Final Act. 2.
The Examiner stated that the preparation “is not markedly different from
its/their naturally occurring counterpart(s) because there is no indication that
the composition has any characteristics or properties that are different from
the naturally-occurring counterpart(s).” Id. The Examiner also found that
the claims do not include elements in addition to the snow algae because the
claims read on components (i) to (v) in undefined and trace amounts. Id. at
3.
As explained below, we do not agree with the Examiner’s
interpretation of the claim and subsequent analysis under Section 101.
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The claim is directed to a “topical cosmetic or dermatological
preparation for protecting skin.” Thus, while the amounts of components (i)
to (v) may be “undefined” in their specific amounts, it is unreasonable to
read them as present in only “trace amounts” when the preparation is for
protecting the skin and therefore the components must at least be present in
amounts effective to protect skin. This is also clear from reading the
Specification, which teaches that the components are for protecting skin.
Spec. 4:24—5:10. It is proper to examine the Specification when construing
a claim term. During patent examination proceedings, claim terms are given
“the broadest reasonable meaning ... in their ordinary usage as they would
be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Thus, in
view of the claim preamble requiring the composition to be for protecting
skin and the disclosure the Specification serving as the context in which the
claim must be construed, we interpret the claim to require that the amounts
alone or together are in amounts that protect the skin.
The Examiner did not establish or make sufficient findings that the
recited ingredients (i) to (v) occur together in nature. Compare Example 1
of “Nature-Based Products,” of March 2014 Procedure For Subject Matter
Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural
Principles, Natural Phenomena, and/or Natural Products. Thus, we are
unpersuaded that there is a naturally occurring counterpart to the claimed
combination that would contravene Section 101 as a product of nature.
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The Examiner also did not establish or make sufficient findings that
collagen (i), chitosan (ii), glycosaminoglycan (iii), a peptide which promotes
cell growth (iv), and a composition including glycoproteins and plant
extracts (v) would be effective in their natural-occurring form in protecting
skin. For example, although collagen is found in the skin (Stutz 4), the
Examiner did not establish the collagen present in the skin, when applied as
a cosmetic, would be in amounts and in a form effective for protecting skin.
Because the claim is interpreted to require that the claimed combination of
components must be present in amounts that protect the skin, the Examiner
had the burden of showing that such property is the same as the properties of
the substances as they are found in nature. See Example 1 of “Nature-Based
Products” where a nature-based product comprising multiple ingredients is
eligible for a patent when its properties are markedly different from those
found in the naturally occurring substances which comprise it. This burden
was not met because the Examiner did not address adequately the skin
protective property when the substances were present together, i.e., snow
algae extract and at least one of (i) to (v) as recited in the claims.
For the foregoing reasons, we are compelled to reverse the
Examiner’s determination that claims 43—60 are ineligible for a patent under
35U.S.C. § 101.
SUMMARY
The final rejection of claims 43—62 is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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