Ex Parte Kizoulis et al

Patent Trial and Appeal Board

Aug 8, 2016

13677898 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/677,898 11115/2012
27777 7590 08/10/2016
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Menas G. Kizoulis
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.
J&J5363USCNT2 1071
EXAMINER
DA VIS, DEBORAH A
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MENAS G. KIZOULIS, MICHAEL SOUTHALL and
SAMANTHA D. TUCKER-SAMARAS 1
Appeal2015-000534
Application 13/677,898
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition comprising feverfew extract, dill extract, and a
cosmetically acceptable carrier, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
"Aging of the skin can adversely affect elasticity and strength of the
skin through changes in the two main constituents of the dermal extracellular
1 Appellants identify the Real Party in Interest as Johnson & Johnson
Consumer Companies, Inc. (Br. 2.)
Appeal2015-000534
Application 13/677,898
matrix, the fibrous proteins collagen and elastin." (Spec. 1 :21-23.)
"[E]lastin is a large fibrous protein formed by the crosslinking of elastin
precursor protein molecules (e.g., tropoelastin) into spiral filaments[, which]
are capable of extending and then resuming their original shape." (Spec.
1:23-2: 1.) "[T]he biosynthesis of elastin typically ceases at some point
during adulthood ... [and] during intrinsic and extrinsic aging processes, ...
the elastic fibers [of elastin] progressively degenerate and separate into
fragments." (Spec. 2: 4--7.) Appellants' invention provides a composition
that includes feverfew as a tropoelastin promoter and dill extract as a
tropoelastin crosslinker. (Spec. 4: 1-3, 7:7-9, 11: 14--20, claim 30.)
Claims 30-352 are on appeal. Claim 30 is representative and reads as
follows:
30. A cosmetic composition comprising: (a) a tropoelastin
promoter selected from the group consisting of feverfew
extract, bimetal complexes having copper and/or zinc
constituents, and combinations thereof; (b) dill extract; and ( c) a
cosmetically acceptable carrier.
(Br. 10.)
The following ground of rejection by the Examiner is before us on
review:
Claims 30-35 under 35 U.S.C. § 103(a) as unpatentable over Martin3
and Perrier.4
2 Claims 36-42 are also pending, but stand withdrawn from consideration.
(Br. 10-11.)
3 Martin et al., US 7,547,456 B2, issued June 16, 2009.
4 Perrier et al., US 2004/0253220 Al, published Dec. 16, 2004.
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Appeal2015-000534
Application 13/677,898
DISCUSSION
The Examiner finds that Martin teaches a composition comprising
feverfew and a cosmetically-acceptable carrier that is "effective in regulating
the firmness, tone or wrinkles, and texture of skin." (Final Action 2; Ans.2-
3.) The Examiner explains that Martin "describes regulating wrinkles in the
skin as retarding, or reversing the process of wrinkle and fine line formation
in the skin." (Final Action 2; Ans. 3.)
The Examiner also finds that Perrier "teaches active substances from
dill fruit can stimulate elasticity of the skin, reduce skin wrinkles, and ...
exert[] an anti-wrinkle effect." (Final Action 3; Ans. 3.) The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to combine the dill fruit extract of Perrier with the Martin composition with
the expectation that the resulting composition would also be useful to treat
skin wrinkles because both are "taught by the prior art to be useful for the
same purpose." (Final Action 3--4; Ans. 3--4.)
We agree with the Examiner's factual findings and conclusion of
obviousness. "It is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose, in order
to form a third composition which is to be used for the very same
purpose .... [T]he idea of combining them flows logically from their having
been individually taught in the prior art." In re Kerkhoven, 626 F .2d 846,
850 (CCPA 1980).
Appellants argue that "[t]hose skilled in the skin and dermatological
art know that ... wrinkles ... are determined by a multiplicity of factors"
and because Martin "does not describe the production of elastin," one of
ordinary skill in the art would "not assume Martin's use of feverfew was for
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Application 13/677,898
the purpose of tropoelastin promotion. (Br. 8.) Appellants also argue that
"it would not have been obvious to one skilled in the art to combine Martin's
teaching with Perrier." (Id.) These arguments are unavailing.
The fact that Appellants, and not Martin, have recognized that
feverfew is a tropoelastin promoter, does not establish that the claimed
combination would not have been obvious. "[I]t is elementary that the mere
recitation of a newly discovered function or property, inherently possessed
by things in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art." In re Swinehart, 439 F.2d 210, 212-13
(CCPA 1971); Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999) ("[T]he discovery of a previously unappreciated property of a
prior art composition, or of a scientific explanation for the prior art's
functioning, does not render the old composition patentably new to the
discoverer."). Martin teaches a composition that includes "a safe and
effective amount of a Feverfew extract and a cosmetically-acceptable topical
carrier." (Martin Abstract). The attendant properties of that feverfew
extract, including as a tropoelastin promoter, whether or not acknowledged
in Martin, are inseparable from it. In re Papesch, 315 F.2d 381, 391 (CCPA
1963) ("A compound and all of its properties are inseparable").
Consequently, the recitation of the tropoelastin promoter property of
feverfew does not distinguish the claimed invention from Martin.
Furthermore, Appellants have not advanced an argument nor provided
sufficient evidence as to why the Examiner erred in finding that one of
ordinary skill in the art would have expected feverfew and dill extract, when
combined together, to provide their expected wrinkle regulating function.
As the Examiner noted (Final Action 2; Ans. 3), Martin describes the
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Application 13/677,898
cosmetic composition with feverfew as regulating wrinkles, i.e., "preventing,
retarding, arresting, or reversing the process of wrinkle and fine line
formation in skin" (Martin 2:51-53), and Perrier teaches dill useful for
treating wrinkles (Final Action 5; Perrier i-fi-131-33). "[W]hen a patent
'simply arranges old elements with each performing the same function it had
been known to perform' and yields no more than one would expect from
such an arrangement, the combination is obvious." KSR Int 'l Co. v. Teleflex,
550 U.S. 398, 417 (2007). Consequently, we do not find Appellants mere
assertion that "it would not have been obvious to one skilled in the art to
combine Martin's teaching with Perrier" (Br. 8) establishes the Examiner
erred in rejecting claim 30 under § 103 over Martin and Perrier.
Claims 31-35 have not been argued separately and therefore fall with
claim 30. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the Examiner's rejection of claims 30-35 under 35 U.S.C.
§ 103(a) as unpatentable over Martin and Perrier.
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. § 1.136(a).
AFFIRMED
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