Ex Parte Koehler et al

Patent Trial and Appeal Board

Nov 28, 2018

13583174 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/583, 174 11/12/2012
13897 7590 11/30/2018
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Manuela Koehler
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.
3321-P50011 4523
EXAMINER
FAY,ZOHREHA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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 MANUELA KOEHLER, JENS SCHULZ,
ALEXANDER FILBRY, RAINER KROEPKE, LARA TERSTEGEN,
ANKE PILZNER, and HORST ARGEMBEAUX
Appeal2017-003349
Application 13/583,174 1
Technology Center 1600
Before RICHARD J. SMITH, JOHN E. SCHNEIDER, 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 or dermatological preparation, which have been rejected as
anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Beiersdorf AG. (Appeal
Br. 3.)
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Application 13/583, 174
STATEMENT OF THE CASE
Cosmetic and dermatological creams and lotions need to be preserved
in order to prevent the build-up of bacteria, fungi and/or yeasts, which spoil
the product. (Spec. ,r,r 2-3.) "The most important preserving ingredients in
cosmetics were for a long time alcohol and essential oils." (Id. ,r 6.)
"However, alcohol is being dispensed with more and more often because it
degreases and dries out the skin" and the intensive odor of essential oils that
are effective against bacteria, e.g., thyme, cloves, or rosemary, "is very
disadvantageous." (Id. ,r,r 6-7 .) Moreover, "often ... natural oils are
phytotoxic if one goes into the sun following application." (Id. at ,r 7 .)
Also, "[ m Jany of the artificial preservatives can irritate the skin and lead to
redness and a rash. Use for many years increases the risk of the substances
sensitizing the organism, leading to allergic reactions." (Id. ,r 8.) "[T]o
provide preparations without preservatives is one wish of consumers." (Id.
,r 14.) "[K]nown auxiliaries for microbial stabilization are benzethonium
chloride, lauroyl ethyl arginate ["LAE"], octopirox ["piroctone olamine"]
and methylisothiazolinone." (Id. ,r 15; see also ,r,r 18-23.) "The invention
comprises benzethonium chloride, methylisothiazolinone, piroctone
olamine, and/or lauroyl ethyl arginate in cosmetic or dermatological
preparations which comprise no further preservatives with phenol groups."
(Id. ,I 1.)
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Claims 28--47 are on appeal. Claims 28, 36, and 44 are representative
and read as follows:
28. A cosmetic or dermatological preparation, wherein the
preparation comprises benzethonium chloride and does not
contain any of phenoxyethanol and preservatives having a
phenolic OH group.
36. The preparation of claim 28, wherein the preparation is free
of any other preservatives.
44. A cosmetic or dermatological preparation, wherein the
preparation comprises lauroyl ethyl arginate and piroctone
olamine and does not contain any of phenoxyethanol and
preservatives having a phenolic OH group.
(Appeal Br. 19-21.)
The following grounds of rejection by the Examiner are before us on
review:
Claim 28 under 35 U.S.C. § I02(b) as anticipated by Kling. 2
Claims 28--47 under 35 U.S.C. § 103 as unpatentable over Kling,
Urgell-Beltran, 3 and Nunez. 4
DISCUSSION
I. Anticipation of claim 28 by Kling
The Examiner finds that Kling teaches in its claims a pharmaceutical
formulation that includes benzethonium chloride and does not include a
preservative having a phenolic group as required by claim 28. (Final Action
2; Ans. 2.)
2 Kling, US 2004/0009138 Al, published Jan. 15, 2004.
3 Urgell-Beltran et al., US 2004/0166082 Al, published Aug. 26, 2004.
4 Nunez et al., US 2011/0301206 Al, published Dec. 8, 2011.
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We agree with the Examiner's factual findings and conclusion that
claim 28 is anticipated by Kling. Claim 28 requires a single ingredient,
benzethonium chloride in any amount. Claim 28 also requires that there be
no phenoxyethanol or preservative having a phenolic OH group. As the
Examiner noted, Kling discloses in its claims such a composition. Claim 1
of Kling requires a cleanser composition that comprises chlorine dioxide but
does not recite inclusion of any other ingredient. (Kling 5 ( claim 1 ). ) Claim
12 of Kling adds to the composition of claim 1 "one or more of
benzalkonium chloride, benzethonium chloride, hexylresorcinol, tincture of
iodine, isopropyl alcohol and methylbenzethonium chloride or a
combination thereof' and nothing more. (Id. at 6 ( claim 11 ).) It "is well
established that the claims of a patent cited as a reference are part of the
disclosure of that reference and may properly be considered in determining
the question of anticipation." In re Schaumann, 572 F.2d 312, 317 n.11
(CCP A 1978). Moreover, that benzethonium chloride appears in a list of
compounds that can be included individually or in combination does not
mean that the disclosure cannot anticipate. Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) ("This court rejects the notion
that one of these ingredients cannot anticipate because it appears without
special emphasis in a longer list.")
Kling does not merely disclose a genus of ingredients without
disclosing the particular claimed ingredient. Id. at 1377. In claim 12 of
Kling, the list of compounds to be added to the chlorine dioxide composition
of claim 1 of Kling is small: there are six compounds named that can be used
alone or in any combination, one of which is benzethonium chloride. This
disclosure is sufficient to disclose a composition that includes chlorine
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dioxide required by claim 1 of Kling and benzethonium chloride. See id. at
1376-77 (affirming the district court's determination that a disclosure of a
composition that could include fourteen skin benefit ingredients, two of
which were required by the claimed invention, was sufficient disclosure of
the use of the two required ingredients for anticipation purposes).
Moreover, because the required elements of the composition of claim
12 of Kling do not recite that phenoxyethanol and preservatives having a
phenolic OH group must be included in the composition that also includes
benzethonium chloride, we agree with the Examiner that Kling claim 12' s
disclosure sufficiently anticipates Appellants' claim 28 which requires the
composition not include those ingredients. Accord Upsher-Smith Labs., Inc.
v. Pamlab, LLC., 412 F.3d 1319, 1322-23 (Fed. Cir. 2005) (concluding the
prior art anticipates a claim requiring a composition "essentially free of
antioxidants," because the prior art teaches "optional inclusion" of
antioxidants, "despite no express teaching to exclude the antioxidants").
Appellants argue that Kling does not anticipate because "there is no
affirmative statement in claim 12 or anywhere else in KLING that the
composition disclosed therein must be ( or at least preferably is) free of any
of phenoxyethanol and preservatives having a phenolic OH group." (Reply
Br. 2; see also Appeal Br. 8.) Appellants further argue that Kling also
discloses that "the composition may also contain, in addition to or as an
alternative to benzethonium chloride, hexylresorcinol." (Appeal Br. 8.)
Consequently, argue Appellants, "a person having ordinary skill in the art
reading KLING clearly will not 'at once envisage' a composition which in
addition to a chlorine dioxide compound comprises benzethonium chloride
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and does not contain any preservative having a phenolic OH group." (Id.;
see also Reply Br. 3)
We do not find Appellants' arguments persuasive. An affirmative
statement that an ingredient is not present is not necessary for a finding of
anticipation. All that is necessary is that the prior art reference disclose the
claimed invention, which in this case is a composition that includes
"benzethonium chloride and does not contain any of phenoxyethanol and
preservatives having a phenolic OH group." See, e.g., Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) ("Assuming that a reference
is properly 'prior art,' it is only necessary [ for a finding of anticipation] that
the claims under attack ... 'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference.") Regardless of
the fact that Kling does not affirmatively teach exclusion of
"phenoxyethanol and preservatives having a phenolic OH group," it
discloses a composition that does not include "phenoxyethanol" or
"preservatives having a phenolic OH group," as discussed above. That is
true despite the fact that Kling teaches hexylresorcinol might in "[ o ]ther
embodiments" be optionally included. (Kling ,r 14.)
Thus, Appellants do not persuade us that the Examiner erred in
rejecting claim 28 as being anticipated by Kling.
II. Obviousness of claims 29-35, 44, and 45 by Kling, Urgell-Beltran, and
Nunez
The Examiner relies on Kling as discussed above for the obviousness
rejection. (Final Action 4.) The Examiner finds that Urgell-Beltran teaches
a preservative system for use in cosmetic and dermatological preparations
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where the preservative system includes LAE in combination with one other
preservative component enumerated in a list. (Ans. 6; Final Action 4.) The
Examiner notes that methylisothiazolinone is a preservative in that list. (Id.)
The Examiner notes that Urgell-Beltran "does not recommend the use of any
component [from that list] over the other." (Ans. 6)
The Examiner finds that Nunez teaches a preservative system that
includes at least methylisothiazolinone and piroctone. (Final Action 4.)
The Examiner notes that "[i]t is prima facie obvious to combine two
compositions each of which is taught by prior art to be useful for same
purpose in order to form third composition that is to be used for very same
purpose." (Ans. 7 (quoting In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980).) The Examiner concludes that it would have been obvious to
combine LAE, methylisothiazolinone, and piroctone in the composition of
Kling because Urgell-Beltran and Nunez teach the use of secondary
preservatives in a cosmetic or dermatological composition was old and well
known. (Final Action 4.)
A. claims 29-35, 44, and 45
We agree with the Examiner's factual findings regarding the teachings
of Kling, Urgell-Beltran, and Nunez and the Examiner's conclusion that
Kling, Urgell-Beltran, and Nunez render claims 29-35, 44, and 45 obvious.
Appellants repeat their argument regarding Kling noted above.
(Appeal Br. 10.) Appellants then argue that "neither URGELL-BELTRAN
nor NUNEZ renders it obvious to one of ordinary skill in the art to not
include a compound such as hexylresorcinol in a composition according to
KLING [and excluding phenoxyethanol and preservatives having a phenolic
OH group]." (Id. at 11; see also Reply Br. 3--4.) We do not find this
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argument persuasive as we agree with the Examiner that Kling discloses a
composition that includes benzethonium chloride along with chlorine
dioxide without including phenoxyethanol or preservatives having a
phenolic OH group.
Moreover, Urgell-Beltran teaches preservative systems having
synergistic activity that contain LAE and "most of the common ionic and
non-ionic preservatives used to protect cosmetic formulations and
preparations" including methylisothiazolinones. (Urgell-Beltran ,r,r 13, 15.)
Urgell-Beltran does include 6 other "preferred" ionic or non-ionic
preservative agents in the list, including parabens, and phenoxyethanol, that
may be combined with LAE. (Id.) However, each one of the preservative
agents in the list is equivalently identified as being one of the preferred
preservatives. (Id.) Moreover, Urgell-Beltran exemplifies LAE combined
with an isothiazolinone as a preservative system, without being combined
with any other preservatives from the preferred list. (Id. ,r,r 15, 43 (Table 2,
system 10), 46 (Table 2, system 10).) Furthermore, Urgell-Beltran
demonstrates that with that preservative system, neither phenoxyethanol nor
preservatives having a phenolic OH group are required to obtain synergism.
(See, e.g., Id. ,r,r 43--48 (Example 1, Preservative system 10).)
Similarly, Nunez teaches preservative systems having synergistic
activity that contains at least two compounds having bactericidal and/or
fungicidal properties. (Nunez ,r 5.). The systems include the combination of
a methylisothiazolinone with piroctone olamine. (Id. ,r,r 5, 17-18 (Tables 1
and 2, 22 (Tables 4).) Furthermore, Nunez teaches reasons to exclude
formaldehyde releasers and parabens (a preservatives having a phenolic OH
group): "their preservation capacity is so high that its effect continues even
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after," the composition in which they are present is applied to the skin, and
"there is the possibility of interference with the normal human cell and organ
function" because formaldehyde and parabens are known to "impair enzyme
function." (Id. ,r 3.)
As the Examiner explained, it is prima facie obvious to combine
known compounds taught to be used for the same purpose to form a third
composition to be used for that purpose. As the Examiner intimated (Ans.
7), the use of the known preservatives, (i.e., benzethonium chloride as taught
in Kling, the combination of methylisothiazolinone and piroctone olamine as
taught in Nunez, and the combination of LAE in combination with most
common preservatives, including isothiazolinones ), in a single cosmetic
formulation for their preservative function in that cosmetic formulation is
nothing "more than the predictable use of prior art elements according to
their established functions." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Moreover, Nunez provides clear reasons to have a preservative
system that excludes preservatives that have a phenolic OH group, such as
paraben. And, both Urgell-Beltran and Nunez provide evidence
demonstrating that synergistic preservation can be achieved even without
phenoxyethanol when LAE is combined with methylisothiazolinone (Urgell-
Beltran) or methylisothiazolinone is combined with piroctone olamine
(Nunez). Thus, contrary to Appellants' argument (Appeal Br. 11), we find
Urgell-Beltran and Nunez provide teachings that would have made it
obvious to one of ordinary skill in the art to not include a compound such as
hexylresorcinol in the composition according to Kling. "[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
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such an arrangement, the combination is obvious." Id. ( quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
We further agree with the Examiner that there is no evidence of record
to establish unexpected results, nor do Appellants argue that such evidence
is present.
Thus, Appellants do not persuade us that the Examiner erred in
rejecting claims 28-35, 44, and 45 as being obvious over Kling, Urgell-
Beltran, and Nunez.
B. claims 36--43, 46, and 47
The Examiner contends that because the claims that require that the
composition to be "free of any other preservatives" other than those listed as
being included in the composition (claims 36-43, 46, and 47) recite the
transitional phrase "comprising" that such "permits the presence of other
component[s]." (Final Action 4.) We disagree with the Examiner's
conclusion of obviousness as to claims 36-43, 46, and 47.
It is certainly true that "' [ c] omprising' is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997). However, we agree with Appellants, that despite reciting the open
ended transitional phrase "comprising," claims 36-43, 46, and 47 all require
the compositions be "free of any other preservatives" other than those listed
as being included in the composition. (Appeal Br. 13, 16.) Consequently,
even though certain ingredients may be disclosed in the prior art that would
not preclude the prior art from reading on the claims, preservatives other
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than those recited in each of claims 36-43, 46, and 47 cannot be present in
the prior art composition and still read on those claims.
As Appellants note, Kling requires chlorine dioxide, which "removes
microorganisms from the area of application via an oxidation process," in its
disclosed invention. (Appeal Br. 13 (citing Kling ,r 11).) Thus, we agree
with Appellants, that Kling as modified by Urgell-Beltran and Nunez would
include the preservative chlorine dioxide in addition to benzethonium
chloride and one or more of methylisothiazolinone, piroctone olamine, and
LAE, which is not permitted by claims 36-43, 46, and 47. Thus, we do not
sustain the Examiner's rejection of claims 36-43, 46, and 47 as being
obvious over Kling, Urgell-Bletran, and Nunez.
SUMMARY
We affirm the rejection of claim 28 under 35 U.S.C. § 102(b) as
anticipated by Kling.
We affirm the rejection of claims 28-35, 44, and 45 under 35 U.S.C.
§ 103 as unpatentable over Kling, Urgell-Beltran, and Nunez
We reverse the rejection of claims 36-43, 46, and 47 under 35 U.S.C.
§ 103 as unpatentable over Kling, Urgell-Beltran, and Nunez.
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-IN-PART
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