Ex Parte Hansenne et al

Board of Patent Appeals and Interferences

Mar 6, 2012

12010897 (B.P.A.I. Mar. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ISABELLE HANSENNE, HANI FARES,
MARC CORNELL, and SIDNEY P. FOLTIS
__________

Appeal 2011-008225
Application 12/010,897
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of peeling skin. The Patent Examiner rejected
the claims for anticipation, obviousness, and nonstatutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1-7 and 9-20 are on appeal. Claim 1 is representative and
reads as follows:
1. A method of peeling skin, comprising applying to skin to be peeled
at least one salicylic acid derivative of formula (I):

wherein
R is a linear aliphatic group containing from 6 to 10 carbon atoms;
R' is a hydroxyl group or an ester functional group of formula

wherein R1 is a linear or branched saturated or unsaturated aliphatic
group having from 1 to 18 carbon atoms, and salts thereof;
in an amount sufficient, and for a time sufficient, to provide a
superficial, medium or deep chemical peel.

Claim 4, which is dependent on claim 1, defines the salicylic acid derivative
as 5-n-octanoyl-salicylic acid.
The Examiner rejected the claims as follows:
 claims 1-4, 9, and 12-17 under 35 U.S.C. § 102(b) as anticipated by
Gueret;1
 claims 5, 7, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over
Gueret;
 claims 1-7 and 9-20 under 35 U.S.C. § 103(a) as unpatentable over
Jacquet2 and Gueret;

1 Jean-Louis Gueret, US 2002/0051796 A1, published May 2, 2002.
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 claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over Jacquet
and Kligman;3
 claims 1-7 and 9-17 under the judicially created doctrine of
obviousness-type double patenting over claims 1-10 of Jacquet in
view of Gueret;
 claims 18-20 under the judicially created doctrine of obviousness-type
double patenting over claims 1-10 of Jacquet in view of Gueret and
Kligman; and
 claims 1-7 and 9-20 under the judicially created doctrine of
obviousness-type double patenting over claims 6, 7, 9-12, 14-17, 19-
22, 24, 25, and 27-42 of copending application 10/367,700 in view of
Jacquet and Gueret.

ANTICIPATION
The Issue
Appellants contend that Gueret did not anticipate the invention
because “no expectation would exist that sufficient active agent would be
delivered to skin to effect peeling” by Gueret’s method. (App. Br. 5-6.)
Thus, Appellants dispute the Examiner’s finding that Gueret’s exfoliation
method peeled skin, contending that “[p]eeling involves removal of skin
layer(s). (See, Specification at page 10, lines 15-20),” but “[i]n contrast,
cleansing/exfoliation indicate removal of dead cells from the skin's surface.
(See, about.com: acne, printed November 1, 2010).” (Id. at 6.)

2 Bernard Jacquet et al., US 4,767,750, issued Aug. 30, 1988.
3 Douglas E. Kligman et al., WO 97/28786, published Aug. 14, 1997.
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The issue is whether the evidence supports the rejection’s finding that
Gueret’s exfoliation method peeled skin.
Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the Gueret disclosure.
2. Appellants’ Specification states:
The composition according to the present invention may be applied in
any manner, for example, by pasting, spraying, wiping, dispensing,
etc. (hereinafter “applying”) . . . . This can typically be accomplished
with, for example, a spray bottle, an absorbent cotton swab wetted
with the concentrated solution, with a solution-wetted sable brush or
by gentle wiping with a solution-wetted absorbent fibrous material
such as a gauze square or nonwoven pad, but other solution
application techniques that coat the skin with the solution, preferably
in a uniform manner, are also feasible. The application serves as a
peel, the degree of which depends upon the amount or concentration
of acid compound and time of application, all of which is within the
skill of the ordinary artisan in view of this disclosure.

(Spec. 8, ll. 13-23.)
3. Appellants’ Specification states:
The applied compound or composition is normally allowed to air dry
over a relatively short period of time, preferably being less than 15
minutes and, with the preferred ethanol solvent, typically being in the
range of about 3 to 10 minutes.

(Id., ll. 25-27.)
4. Appellants’ Specification states:
While not bound by theory, it is believed that the invention method
can remove the epidermis (mainly the cuticle) of the skin and impose
influences upon the cells of the stratum spinosum epidermidis and the
stratum basale epidermidis of the epidermis, and cause the
reproduction of the fibroblast of the corium. The aged corium portion
can be replaced with the reproduced fibroblast. At the same time, the
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cuticle of the hair follicle can also be peeled off and the accumulated
cuticle can be removed.

(Id. at 10, ll.15-20.)
5. The ordinary meaning of keratolytic includes:
“a substance that promotes the softening and peeling of epidermis-eg,
diluted topical salicylic acid to [reduce] the thickness of laminated
keratin or hyperkeratotic scales-eg, in psoriasis” (McGraw-Hill
Concise Dictionary of Modern Medicine. © 2002 by The McGraw-
Hill Companies, Inc.).4

Principles of Law
To support anticipation, “the reference need not satisfy an ipsissimis
verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). “[A]
reference may anticipate even when the relevant properties of the thing
disclosed were not appreciated at the time.” Abbott Labs. v. Baxter Pharm.
Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006). “The general
principle that a newly-discovered property of the prior art cannot support a
patent on that same art is not avoided if the patentee explicitly claims that
property.” Id. at 1368. See also, W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1548, 1554 (Fed. Cir. 1983) (“irrelevant that those using the
invention may not have appreciated the results . . . . Were that alone enough
to prevent anticipation, it would be possible to obtain a patent for an old and
unchanged process”).

4 http://medical-dictionary.thefreedictionary.com/keratolytic, accessed
March 1, 2012.
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Analysis
The Examiner correctly found that Gueret described applying, via
patch, a 3 wt % 5-n-octanoylsalicylic acid solution to skin for between 15
seconds and 20 minutes. (Ans. 4.) The finding is explicitly supported in
Gueret, and is undisputed. Appellants speculate that more information
would be needed to prove that Gueret’s method applied an amount
sufficient, for a time sufficient, to achieve a peel as claimed. This argument
is unpersuasive because Appellants’ Specification evidences that no more
information is needed to support the Examiner’s position. The Specification
states that any manner of application may be used (FF 2), and the preferred
time period for application is less than 15 minutes (FF 3).
To distinguish exfoliation from peeling, Appellants rely on an
“About.com” definition of exfoliation, but the definition does not define
peeling and does not purport to distinguish exfoliation from peeling.
Because Gueret taught applying the same composition to the same patients
for an even longer time than Appellants prefer, the evidence is sufficient to
support the Examiner’s finding that Gueret’s method peeled skin. Further,
the Examiner directed attention to Gueret’s description of 5-n-
octanoylsalicylic acid as a keratolytic agent, and the ordinary meaning of
keratolytic is “a substance that promotes the softening and peeling of
epidermis.” (FF 5.) Finally, Appellants’ reliance on its Specification page
10 disclosure is not persuasive of what layers of skin are or are not removed
in its process because it states that the invention is not bound by the theory
stated. (FF 4.) In sum, we find the rejection’s evidence and the Examiner’s
Response to Argument persuasive. (Ans. 14-16.)
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Claims 2-4, 9, and 12-17 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
A. The rejection of claims 5, 7, 10, and 11 over Gueret
The Issue
Appellants do not dispute that Gueret suggested treating skin with a
combination of 5-n-octanoyl-salicylic acid and glycolic acid or other agents
listed in claims 5, 7, 10, and 11. Instead, Appellants contend that “Gueret’s
disclosure is silent concerning skin peels and how to peel skin, so this
disclosure would not lead one of ordinary skill in the art to practice the
invention peeling methods. Accordingly, Gueret's disclosure would not
render the invention methods obvious.” (App. Br. 6-7.) “At any rate, the
unexpected properties associated with the invention peeling methods (as
demonstrated in the Rule 132 declaration submitted in this case) are more
than sufficient to establish non-obviousness of the invention peeling
methods.” (Id. at 7.)
The issues with respect to this rejection are:
whether Gueret’s description of its method without using the word
peel means that practicing Gueret’s method would not necessarily result in
peeling; and if so,
whether the Rule 132 Declaration establishes unexpected properties of
Appellants’ method weighing in favor of nonobviousness.
Further Findings of Fact
6. We adopt the Examiner’s findings concerning the scope and content
of the Gueret disclosure.
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7. Appellants rely on the “Declaration Under 37 C.F.R. 1.132” signed by
Sidney P. Foltis on August 5, 2009.
8. The Foltis Declaration states that observations and experiments were
carried out on salicylic acid derivatives designated “short chain (C4),”
“long chain (C18),” “C8 with carbonyl,” and “C8 without carbonyl.”
(Decl. ¶ 3.)
9. The Foltis Declaration states that “the salicylic acid derivatives
containing a C8 chain, regardless of whether there was a carbonyl
functionality associated with the chain, yielded vastly superior
properties (as represented by change in fusion temperature) as
compared to the other compounds analyzed.” (Decl. ¶ 7.)
10. According to the Foltis Declaration, the results were “surprising and
unexpected given the similarity of the structures and/or activities of
these compounds.” (Decl. ¶ 9.)
11. Gueret’s preferred keratolytic agent, 5-n-octanoyl-salicylic acid, is a
C8 salicylic acid derivative of the kind referred to in the Foltis
Declaration.
Principles of Law
“Mere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991). See In re Woodruff, 919 F.2d 1575,
1577-78 (Fed. Cir. 1990) (obviousness rejection affirmed where using
claimed elements in the manner suggested by the prior art necessarily
resulted in claim-recited effect).
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Analysis
Appellants first repeat the argument that Gueret’s method would not
result in peeling. For the reasons given in the Anticipation Analysis section
above, that argument remains unpersuasive.
Appellants next argue that unexpected properties demonstrated in the
Foltis Declaration suffice to establish non-obviousness. The Examiner
found this argument unpersuasive (Ans. 16-17), and we agree that the
Examiner properly weighed all the evidence. The Foltis Declaration
confirms what Gueret disclosed and exemplified: 5-n-octanoyl-salicylic
acid was a preferred salicylic acid derivative keratolytic agent. Its use
according to Gueret’s instructions would have necessarily produced the
peeling result Appellants achieve because Appellants’ method follows
Gueret’s instructions. Although the Declaration states that the result of
comparing a C8 derivative to derivatives such as C4 or C18 was surprising
and unexpected (FF 10), Gueret had already identified the C8 derivative 5-n-
octanoyl-salicylic acid as preferred, and exemplified its use for exfoliating.
The totality of the evidence, including Appellants’ demonstration of the
superior effectiveness of C8 salicylic acid derivatives and Gueret’s earlier
disclosure of the same fact, leads to the conclusion that the claimed subject
matter would have been obvious.

B. The rejections of claims 1-7 and 9-20 over Jacquet and Gueret, and of
claims 18-20 over Jacquet and Kligman.

The Issues
Appellants contend that because “Jacquet discloses frequent,
prolonged application of his compositions to skin, Jacquet cannot teach or
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suggest applying the claimed salicylic acid derivatives ‘in an amount
sufficient, and for a time sufficient, to provide a superficial, medium or deep
chemical peel’ as required by the claims.” (App. Br. 7.) Regarding claims
13-15 which refer to treating hyperpigmentation, wrinkled skin, and
photodamaged skin, respectively, Appellants argue that Jacquet treats acne,
a different condition. (Id.) “Because Gueret also fails to disclose the
required peeling methods,” the combination of these references would not
lead to the claimed peeling methods, and the unexpected properties of the
invention demonstrated in the Foltis Declaration establish non-obviousness.
(Id. at 8.) Appellants contend that Kligman “does not compensate for
Jacquet’s deficiencies,” and “relates to salicyclic acid, not the required
compounds.” (Id. at 8.)
The Examiner responds that “the only deficiency of Jacquet is the
method steps in peeling treatment, and such was known in the art, according
to Gueret.” (Ans. 17.) According to the Examiner, “Jacque[t] teaches that
keratolytic agents are known to treat ‘diseases affecting the horny layer in
man’. See col. 1, lines 17-21. The treatment results of hyperpigmentation,
wrinkled skin, and photodamaged skin as presently claimed in claims 13-15
would have been obvious.” (Id. at 18.)
The issues with respect to these rejections are:
whether Jacquet’s disclosure is properly limited solely to treating
acne;
whether the combination of Jacquet and Gueret would not have led to
the claimed peeling methods; and
whether the Foltis Declaration presented evidence of unexpected
results.
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Further Findings of Fact
12. We adopt the Examiner’s findings concerning the scope and content
of the Jacquet, Gueret, and Kligman disclosures.

Principles of Law
“The entirety of the evidence must be reviewed in order to determine
whether the claimed invention as a whole would have been obvious to a
person of ordinary skill in the art.” In re Kumar, 418 F.3d 1361, 1369 (Fed.
Cir. 2005). Each 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., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).

Analysis
The rejection directed attention to evidence that Jacquet expressly
taught (1) that keratolytic products were sought for peeling, (2) that one of
Jacquet’s preferred embodiments consisted of masks for peeling
compositions, and (3) that Jacquet exemplified preparations of 5-n-
octanoylsalicylic acid. Appellants’ contentions that Jacquet’s preparations
could not have been used for peeling are thus inconsistent with Jacquet’s
teachings, and unpersuasive because they provide no evidence that Jacquet’s
teachings were mistaken. We conclude that the references were properly
combined and that the totality of the evidence supports the conclusion of
obviousness. For the reasons explained above, the evidence presented in the
Foltis Declaration confirms the Gueret and Jacquet preference for 5-n-
octanoylsalicylic acid, rather than showing that the properties of 5-n-
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octanoylsalicylic acid derivative were unexpected. As to treating
hyperpigmentation, wrinkled skin, and photodamaged skin, the Examiner
correctly points out that Jacquet disclosed that keratolytic products were
used for treating diseases affecting the horny layer in man. This evidence is
sufficient to suggest applying Gueret’s methods to those diseases and the
conditions named in claims 13-15. We also find the Examiner’s assessment
of the arguments (Ans. 17-19) consistent with the entirety of the evidence.

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
A. The rejections over Jacquet’s claims 1-10 in view of Gueret, and
over Jacquet’s claims 1-10 in view of Gueret and Kligman.

The Examiner’s position is that because Jacquet claimed a method
using a composition comprising salicylic acid derivatives of Formula I as a
beauty mask, and Gueret taught a method of exfoliating, i.e., peeling, skin,
by applying a mask comprising 3 wt % 5-n-octanoylsalicylic acid for a
period between 15 seconds and 20 minutes, the method defined in the
appealed claims 1-7 and 9-17 would have been obvious and these claims
should be rejected for obviousness-type double patenting. (Ans. 10-11.)
Based on the additional disclosures of Kligman, the Examiner reached a
similar conclusion regarding claims 18-20. (Id. at 11-12.)
Appellants contend that (i) “Jacquet does not teach or suggest using
the required salicylic acid compounds in the invention peeling methods,”
(ii) “Gueret's disclosure is silent concerning skin peels and how to peel
skin,” (iii) the combination of these references would not lead one of
ordinary skill in the art to practice the invention peeling methods using the
required salicylic acid derivatives,” (iv) Kligman does not compensate for
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these deficiencies, and (v) the Rule 1.132 Declaration is sufficient to
establish non-obviousness. (App. Br. 9-10.)
Jacquet’s claims 6 and 10 are directed to methods using a salicylic
acid derivative in a “beauty mask with a keratolytic . . . effect.” (Jacquet,
claim 1.) Because the ordinary meaning of keratolytic includes peeling, and
because Jacquet’s claims define their invention with that term, and Gueret
uses that term, Appellants’ arguments about peeling are unpersuasive.
Appellants’ Formula I and Jacquet’s Formula I overlap, and Appellants do
not show that Gueret’s 5-n-octanoylsalicylic acid derivative would not have
been an obvious choice from the Formula I genera, given Gueret’s
disclosure of that derivative as preferred.

B. The rejection over copending claims in Application No. 10/367,700
in view of Jacquet and Gueret.

The Examiner’s position is that claims of the copending application
require “at least one keratolytic agent be present in the claimed composition,
suggesting the use of the composition as a keratolytic agent.” (Ans. 13.)
According to the Examiner, the copending claims and the appealed claims
require applying to the body the same salicylic acid derivatives, “wherein
the effective amount is within the overlapping range.” (Id. at 12.) Although
the copending claims do not claim Appellants’ method, Jacquet and Gueret
were found to have taught and suggested the claimed methods, and the
Examiner concluded that the claimed subject matter would have been
obvious. (Id. at 13.)
Appellants maintain that “Jacquet and Gueret do not render the
claimed methods obvious. The asserted ‘700 application claims do not
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compensate for their deficiencies.” (App. Br. 10.) According to Appellants,
“the ‘700 application claims are directed to methods for enhancing the
activity of active ingredients by combining the active ingredients with the
claimed salicylic acid derivatives - they do not claim using the salicylic acid
compounds as active agents, let alone as active agents in the claimed
methods.” (Id.)
The copending application claims compositions comprising an active
agent and a salicylic acid derivative “present in an amount and a form
effective to enhance the penetration of the active agent into skin,” (claim 16)
“wherein the salicylic acid derivative is 5-n-octanoyl-salicylic acid” (claim
17). Appellants do not dispute the Examiner’s finding that the amounts of
salicylic acid derivative used to enhance active agent penetration overlap
with the amounts of 5-n-octanoyl-salicylic acid taught by Jacquet or Gueret.
As the methods of Jacquet and Gueret included applying active agents in
addition to the salicylic acid derivative, the evidence supports the
Examiner’s position.
SUMMARY
We affirm the rejection of claims 1-4, 9, and 12-17 under 35 U.S.C.
§ 102(b) as anticipated by Gueret.
We affirm the rejection of claims 5, 7, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Gueret.
We affirm the rejection of claims 1-7 and 9-20 under 35 U.S.C. §
103(a) as unpatentable over Jacquet and Gueret.
We affirm the rejection of claims 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Jacquet and Kligman.
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We affirm the rejection of claims 1-7 and 9-17 under the judicially
created doctrine of obviousness-type double patenting over claims 1-10 of
Jacquet in view of Gueret.
We affirm the rejection of claims 18-20 under the judicially created
doctrine of obviousness-type double patenting over claims 1-10 of Jacquet in
view of Gueret and Kligman.
We affirm the rejection of claims 1-7 and 9-20 under the judicially
created doctrine of obviousness-type double patenting over claims 6, 7, 9-12,
14-17, 19-22, 24, 25, and 27-42 of copending application 10/367,700 in
view of Jacquet and Gueret.

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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