Ex Parte Gohla et al

Patent Trial and Appeal Board

Nov 30, 2017

13883415 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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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
EXAMINER
TATE, CHRISTOPHER ROBIN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 2017-003389
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 REQUEST FOR REHEARING
This is a Request for Rehearing under 37 C.F.R. § 41.52 (Req. Reh’g)
of the Decision (“Dec.”) entered July 19, 2017, in the above-identified
appeal to the Patent Trial and Appeal Board. Appellants contend that the
Decision should be modified to reverse the rejection of claims 53 and 57
under 35 U.S.C. § 103(a) over Stutz as the primary prior art reference
(identified in the Decision as “Obviousness Rejection 1”). Req. Reh’g 3.
The Rehearing is granted to correct an error in the Decision. However, the
Decision to reject the claims over Stutz is maintained.
Claims 53 and 57 are dependent claims, which depend indirectly from
independent claim 43, and further require “wherein (iv) [a peptide which
promotes cell growth] is present in the form of a nanoemulsion.” The
Appeal 2017-003389
Application 13/883,415
Examiner cited Stutz for its teaching of cosmetic preparation in the form of a
nanoemulsion. Ans. 4. In the Decision, it was stated that “Claims 53 and 57
require the preparation to be in the form of a nanoemulsion.” Dec. 10.
Appellants point that this statement is inaccurate because component (iv) is
in the form of an emulsion “not the entire topical or dermatological
preparation.” Req. Reh’g 2.
We agree with Appellants that the statement is not accurate. The
claim only requires that the (iv) cell growth peptide “is present in the form
of a nanoemulsion.” However, the claim does not exclude the entire claimed
“topical cosmetic or dermatological preparation for protecting skin” from
being present as an emulsion, including the (iv) peptide which promotes cell
growth. Thus, Stutz’s teaching that its composition can be in the form of an
emulsion (Stutz 147) would also be a teaching that each of the active
ingredients in the composition, such as a growth factor peptide, can be in
emulsified form.
In sum, we modify the Decision by deleting the statement on page 10
that “Claims 53 and 57 require the preparation to be in the form of a
nanoemulsion.” However, as explained above, the determination that claims
53 and 57 are obvious in view of Stutz, Kawasaki, and Monks (Rejection 1;
Dec. 2) is maintained.
REHEARING GRANTED; DECISION MAINTAINED
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