Ex Parte Horinek et al

Patent Trial and Appeal Board

Apr 19, 2017

13506023 (P.T.A.B. Apr. 19, 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.
13/506,023 03/21/2012 David Dru Horinek 2926643-015000 1636
84331 7590 04/21/2017
MMWV TP T T C EXAMINER
7900 Westpark Drive, Suite A100
McLean, VA 22102
MELLER, MICHAEL V
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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):
docketing @ mm w vlaw .com
cgmoore @ mmwvlaw. com
dwoodward @ mmwvlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID DRU HORINEK, JAMES VINCENT GRUBER,
VITO THOMAS CATALDO, and ROBERT MICHAEL KLEIN
Appeal 2016-005299
Application 13/506,0231
Technology Center 1600
Before DONALD E. ADAMS, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 9-13, 16, 23,
and 24 (App. Br. 4).2 Examiner entered a rejection under 35 U.S.C. § 101.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants’ disclosure “relates to topical compositions and methods
for using these compositions for influencing electromagnetic radiation on
1 Appellants identify the real party in interest as “ARCH CHEMICALS,
INC.” (App. Br. 4.)
2 “Claims 2-8, 14, 15, and 17-22 stand [] withdrawn from [] consideration []
as [] being drawn to non-elected inventions” (App. Br. 4).
Appeal 2016-005299
Application 13/506,023
cutaneous extracellular matrix protein production” (Spec. 12). Claim 9 is
representative and reproduced below:
9. A personal care topical composition that is suitable for
influencing electromagnetic radiation on cutaneous
extracellular matrix protein production, comprising
(a) a proanthrocyanin, a polyphenol or a
proanthrocyanin/polyphenol-containing plant extract selected
from the group consisting of a curcuma extract; a safflower
extract; a capsicum extract; an acai extract; a morinda citrifolia
extract; a mate extract; a pomegranate extract; a green tea
extract; and combinations thereof; absorbed or adsorbed onto an
inert carrier, said component (a) being responsive to UV, IR or
visible light;
(b) a photo-activatable amino acid or amino acids blend
selected from the group consisting of a blend of amino acids
extracted from plant wolfberry; a blend of betaine, alanine,
glutamic acid, praline, hydroxyproline, arginine, aspartic acid
and serine; and a blend of amino acids extracted from a yeast,
and
(c) a dermatologically-acceptable vehicle,
wherein said component (a) is present in an amount of
from about 15 wt% to about 35 wt% based on the total amount
of component (a) and component (b), said component (b) is
present in an amount of from about 65 wt % to about 85 wt %
based on the total amount of component (a) and component (b),
and said component (c) is present in an amount of from about
90 wt % to about 99.95 wt% based on the total weight of the
composition.
(App. Br. 19-20.)
The claims stand rejected as follows:
Claims 9—13, 16, 23, and 24 stand rejected under 35 U.S.C. § 101, as
directed to non-statutory subject matter.
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Appeal 2016-005299
Application 13/506,023
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention lacks subject matter eligibility?
ANALYSIS
Appellants’ claimed invention is to a blend of ingredients present in
specific amounts, for which there is no evidence establishing prior existence
in nature, even though the individual ingredients may be nature-based.
“[Discoveries that possess “markedly different characteristics from any
found in nature,” [] are eligible for patent protection.” In re Roslin Institute
(Edinburgh), 750 F.3d 1333, 1337 (Fed. Cir. 2014) (citation omitted). On
this record, Appellants disclose that:
The present inventors surprisingly found that a blend of (a)
certain polyphenols, proanthrocyanins or their combinations
and (b) an amino acid or amino acid blend, provides enhanced
benefits in extracellular matrix expression after topically
applied to the skin before or during the skin[’s] [exposure] to
UV, IR or visible light as compared to either component (a) or
component (b) used alone.
(Spec. 120.) In other words, when the nature-based ingredients are
combined in the amounts as claimed, Appellants disclose that such
combination possesses a markedly different characteristic than a product that
may be found in nature. See In re Roslin Institute (Edinburgh), 750 F.3d at
1337.
We are not persuaded by Examiner’s unsupported assertion that
Appellants’ failed to establish that their claimed invention actually possesses
the characteristic disclosed by Appellants (Ans. 11—12; cf. Spec.
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Appeal 2016-005299
Application 13/506,023
120). To the extent that Examiner questions Appellants’ presumptively
correct disclosure or requires working examples (see Ans. 11—12), we note
that:
the PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement.
In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993); see also In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982) (working examples are not
required to satisfy section 112, first paragraph). Simply stated, Examiner
failed to establish an evidentiary basis on this record to support Examiner’s
finding that Appellants’ claimed invention lacks subject matter eligibility.
CONCLUSION OF LAW
The evidence of record fails to support Examiner’s finding that
Appellants’ claimed invention lacks subject matter eligibility. The rejection
of claims 9—13, 16, 23, and 24 under 35 U.S.C. § 101, as directed to non-
statutory subject matter is reversed.
REVERSED
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