Ex Parte Lersch et al

Board of Patent Appeals and Interferences

Aug 30, 2012

12038272 (B.P.A.I. Aug. 30, 2012)

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.
12/038,272 02/27/2008 Peter Lersch 16219Z 5323
23389 7590 08/31/2012
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
SZNAIDMAN, MARCOS L
ART UNIT PAPER NUMBER
1628
MAIL DATE DELIVERY MODE
08/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER LERSCH and CHRISTIAN WEITEMEYER
____________

Appeal 2011-009746
Application 12/038,272
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J.
MILLS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 3-5, and 8-12
(App. Br. 3; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method for lightening skin and toning
down pigment disorders. Claims 1 and 12 are representative and are
reproduced in the Claims Appendix of Appellants‟ Brief.

Appeal 2011-009746
Application 12/038,272

2
Claims 1, 3-5, and 8-11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Sanbe.
1

Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kaddurah-Daouk
2
and D‟Amelio.
3

We affirm.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Sanbe teaches Appellants‟ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Sanbe teaches “a method of whitening skin . . . in individuals in need
thereof comprising administering a composition comprising creatinine”
(Ans. 4).
ANALYSIS
While Appellants recognize that Sanbe teaches a method of the
whitening skin of individuals in need thereof comprising administering a
composition comprising creatinine; Appellants contend that Sanbe fails to
teach the subject matter of Appellants‟ claim 1 because Sanbe fails to teach
that creatinine is a whitening agent (e.g., a skin lightening active substance)
(App. Br. 10-13). We are not persuaded.
“The law of anticipation does not require that the reference „teach‟
what the subject patent teaches. . . . [I]t is only necessary that the claims

1
Sanbe, JP 2000-247866, published September 12, 2000.
2
Kaddurah-Daouk, WO 01/00203 A1, published January 4, 2001.
3
D‟Amelio, Sr., US 5,973,005, issued October 26, 1999.

Appeal 2011-009746
Application 12/038,272

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under attack, as construed by the court, „read on‟ something disclosed in the
reference”. Kalman v. Kimberly–Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983), overruled in part on other grounds, SRI Int'l v. Matsushita Elec.
Corp. of Am., 775 F.2d 1107, 1125 (Fed. Cir. 1985) (in banc); see also Ex
parte Thumm, 132 USPQ 66, 67-68 (BPAI 1960) (“[I]f applicant‟s claims
read directly on what is disclosed in the prior art, such claims cannot be
allowed even though the prior art teaches unsatisfactory results whereas the
applicant demonstrates successful results”.).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
finding that Sanbe teaches Appellants‟ claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(b) as being anticipated by Sanbe is affirmed.
Claims 3-5 and 8-11 are not separately argued and fall together with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 2. Kaddurah-Daouk suggests “a method for protecting skin tissue
against age related damage . . . by administering an amount of creatine”
formulated in aqueous solution (Ans. 6-7 (emphasis removed); see
Kaddurah-Daouk 2: 10-11 and 23-33; id. at 6: 14-15; id. at 17: 33-36).
Appeal 2011-009746
Application 12/038,272

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FF 3. Kaddurah-Daouk suggests that “uneven pigmentation of the skin” is
a “[s]ymptom[] of aging” (id. at 7 (emphasis removed); see Kaddurah-
Daouk 17: 33-36).
FF 4. Kaddurah-Daouk discloses aqueous solutions that “contain from
about 0.01% to about 50% of the active compound [(i.e., creatine)]”
(Kaddurah-Daouk 6: 23-24).
FF 5. Examiner finds that Kaddurah-Daouk fails to expressly suggest the
administration of creatinine (Ans. 7).
FF 6. Examiner finds that D‟Amelio suggests “that creatine and creatinine
exist in equilibrium in aqueous solution” (id. (emphasis removed);
D‟Amelio, col. 3, l. 67 - col. 4, l. 1; see also Spec. 8: ¶ [0037]).
ANALYSIS
Based on the combination of Kaddurah-Daouk and D‟Amelio,
Examiner reasons that since creatinine and creatine exist in equilibrium in
aqueous solutions “some amount of creatinine is present in the composition
administered by Kaddurah-Daouk” (Ans. 13; FF 2, 4, 6, and 7). In response,
Appellants proffer the unsupported contention “that under equilibrium the
content of creatinine would not be present in an effective amount which
could be used to provide a skin lightening active substance” (App. Br. 14).
We are not persuaded.
Kaddurah-Daouk discloses aqueous solutions that “contain from about
0.01% to about 50% of the active compound [(i.e., creatine)]” (FF 4). At
equilibrium, creatine and creatinine are both present. Appellants‟ claim 12
does not require the administration of a particular “effective” amount. In
this regard, Appellants provide no persuasive evidence or argument to
suggest that Kaddurah-Daouk does not suggest a method for lightening skin
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Application 12/038,272

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which comprises applying to the skin a composition comprising creatinine in
an amount that falls within, or overlaps with, the scope of Appellants‟
claimed invention. “[W]here there is a range disclosed in the prior art, and
the claimed invention falls within that range, there is a presumption of
obviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1322 (Fed. Cir. 2004).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kaddurah-Daouk and D‟Amelio is
affirmed.
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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