Ex Parte Mahalingam et al

Board of Patent Appeals and Interferences

Jun 12, 2012

10436310 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/436,310 05/12/2003 Harish Mahalingam SC40Q-US 1673
7590 06/13/2012
Rupa Sen
Avon Products, Inc.
Avon Place
Suffern, NY 10901
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
06/13/2012 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 HARISH MAHALINGAM, CHRISTOS D. KYROU,
MICHAEL TRAUDT, and DMITRI PTCHELINTSEV
__________

Appeal 2011-012428
Application 10/436,310
Technology Center 1600
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of ameliorating thin skin. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“The present invention relates to compositions useful in treating
hyperpigmentation and the various signs of dermatological aging in human
skin. The present invention also relates to cosmetic compositions and
methods of using such compositions that improve the aesthetic appearance
of skin” (Spec 1, ll. 14-17).
The Claims
Claims 1-7 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for ameliorating thin skin, comprising topically
administering to affected skin of a female individual in need
thereof a cosmetic composition comprising:
one or more compounds according to Formula (I):

wherein R1 and R2 are independently selected from the
group of substituents consisting of hydrogen; alkyls, substituted
or unsubstituted, branched or linear; alkenyls, substituted or
unsubstituted, branched or linear, and having up to 5 double
bonds; alkynyls, substituted or unsubstituted, branched or linear
and having up to 5 triple bonds; aryls, substituted or
unsubstituted; cycloalkyls, substituted and unsubstituted; and
cycloalkenyls, substituted and unsubstituted, and wherein the
Formula I compound is present in an amount effective to
ameliorate said thin skin; and
a vehicle comprising water;
wherein said cosmetic composition is topically applied to
skin for a period of time effective to ameliorate said thin skin.

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The issue

The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) as
obvious over Jentzsch1 and Gubernick2 (Ans. 5-7).
The Examiner finds that Jentzsch teaches “improving the appearance
of the skin (see abstract), such as photoaging (see [0005]) and skin aging
(see [0030], wherein skin aging includes thinning of the skin (see [0004])”
(Ans. 5). The Examiner finds that Jentzsch teaches “administering a
cosmetic composition comprised of: 0.001-30% of an antioxidant (see
[0049]), such as thiodipropionic acid see ([0048]), tocopherol, vitamin C,
etc.; water (see [0078]); lactic acid (see 0048]; and [0078]); and
methylthioadenosine” (Ans. 5).
The Examiner finds that Gubernick teaches that “topical antioxidant
composition is applied to female volunteers” (Ans. 6). The Examiner finds
it obvious to “apply JENTZSCH’s composition to both male and female
individuals for ameliorating thin skin. The person of ordinary skill in the art
would have been motivated to make those modifications, because both male
and female age and are exposed to UV radiation from the sunlight, in which
thinning of the skin is a landmark sign of aging” (Ans. 6).
Appellants contend that “Jentzsch et al. provides no teaching
whatsoever in connection with ameliorating thin skin, particularly thin skin
in women, and certainly provides no reasonable expectation that this could
successfully be accomplished with TDPA or its derivatives” (App. Br. 8).

1 Jentzsch et al., US 2003/0068349 A1, published April 10, 2003.
2 Gubernick et al., US 6,068,848, issued May 30, 2000.
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Appellants contend that there “is no suggestion in Jentzsch or
Gubernick that TDPA -- or any other antioxidant –possesses the remarkable
ability to thicken skin that has already thinned.” (App. Br. 8).
Appellants contend that the “application of TDPA or its derivatives to
female skin that has already thinned, is not inherent in the application of
Jentzsch’s preparation to skin, generally. The application of TDPA or its
derivatives to already thin skin is a significant manipulative difference
compared to Jentzsch’s” (App. Br. 9).
Appellants contend that the “unexpected discovery that TDPA can
ameliorate conditions associated with a compromised collagen matrix,
including prematurely thinned skin, is sufficient to overcome the rejection
under § 103” (App. Br. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Jentzsch and Gubernick render the
method of claim 1 obvious?
Findings of Fact
1. The Specification teaches that “[s]uitable antiaging agents
include 3,3'-thiodipropionic acid and/or its derivatives” (Spec. 5, ll. 7-8).
2. The Specification teaches that
the present invention provides compositions and methods for
treating skin to prevent, inhibit, reduce and/or ameliorate the
signs of dermatological aging due to, for example,
chronological aging, hormonal aging, and/or photoaging.
Such signs of aging include, but are not limited to skin
fragility; loss of collagen and/or elastin; estrogen imbalance
in skin; skin atrophy; appearance and/or depth of lines
and/or wrinkles, including fine lines; skin discoloration,
including dark eye circles; skin sagging; skin fatigue and/or
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stress, e.g. skin breakout due to environmental stress, such
as pollution and/or temperature changes; skin dryness; skin
flakiness; cellular aging; loss of skin tone, elasticity and/or
luster; loss of skin firmness; poor skin texture; loss of skin
elasticity and/or resiliency; and thin skin.

(Spec. 5, l. 22 to 6, l. 8).
3. The word “female” or “woman” does not appear in the
Specification.
4. Jentzsch teaches that the “consequences of aging are thinning of
the skin” (Jentzsch 1 ¶ 0004).
5. Jentzsch teaches “to provide a method for the cosmetic
treatment of the skin and/or the hair which is suitable for improving the
appearance of the skin. The method should, in particular, be suitable for the
treatment of age-induced cosmetically undesired changes in the appearance
of the skin” (Jentzsch 2 ¶ 0021).
6. Jentzsch teaches “using 5’-deoxy-5’-methylthioadenosine in
skin cosmetic compositions” (Jentzsch 2 ¶ 0022).
7. Jentzch teaches treatment with antioxidants where the
“antioxidants are advantageously chosen from . . . cysteine . . . and the . . .
N-acetyl . . . esters thereof . . . thiodipropionic acid and derivatives thereof .
. . ubiquinone . . . Mg ascorbyl phosphate . . . tocopherols and derivatives
(e.g. vitamin E acetate) . . . butylhydroxytoluene” (Jentzsch 4 ¶ 0048;
emphasis added).
8. Gubernick teaches “cosmetic or pharmaceutical compositions
for topical application to the skin, the composition comprising a least one of
each of the antioxidants . . . The composition is useful in the treatment and
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prevention of photoaging, i.e., that damage to the skin which occurs as a
result of repeated exposure to the sun” (Gubernick col. 1, ll. 54-63).
9. Gubernick teaches a “clinical study conducted over a period of
18 months involved a total of 160 female volunteers” (Gubernick, col. 6, ll.
52-54).
10. Gubernick teaches that “skin thickness and elasticity are
measured by echography and cutometry” (Gubernick, col. 6, ll. 63-64).
11. Gubernick teaches “[t]opical treatment with an emulsion
containing 2% tocopheryl acetate, 0.1% rosemary extract, 0.1% BHT, 0.5%
N-acetyl cysteine, 1% magnesium ascorbye phosphate, 0.1% ubiquinone,
and 0.1% tocopherol cysteamine, was performed twice a day on the left
forearm and face” (Gubernick, col. 6, l. 66 to col. 7, l. 4).
12. Gubernick teaches that after “18 months, however, a highly
significant difference in thickness is observed between the two arms,
meaning that the antioxidants have provided a highly significant protection
against loss of skin tissue” (Gubernick, col. 8, ll. 63-67).
13. Gubernick teaches that the “process of line and wrinkle
formation is slowed down, which even allows the skin cells to repair some
of the damages generated prior to the application of the treatment”
(Gubernick, col. 10. ll. 20-23).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

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Analysis
Jentzsch teaches that one cosmetic consequence of aging is thinning
of the skin (FF 4) and Jentzsch teaches treatment of the cosmetic
consequences of aging (FF 5). In particular, Jentzch teaches treatment with
antioxidants where the “antioxidants are advantageously chosen from . . .
thiodipropionic acid and derivatives thereof” (Jentzsch 4 ¶ 0048; FF 7).
Gubernick also teaches cosmetic treatment of aging skin (FF 8).
Gubernick teaches that in a study of female volunteers that after “18 months,
however, a highly significant difference in thickness is observed between the
two arms, meaning that the antioxidants have provided a highly significant
protection against loss of skin tissue” (Gubernick, col. 8, ll. 63-67; FF 12).
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan interested in treating
thinning of skin in females would have used antioxidants since Gubernick
teaches that these successfully protect against skin tissue loss (FF 12) and
would have selected the antioxidant thiodipropionic acid since Jentzch
teaches this antioxidant is an equivalent compound useful in cosmetic
treatment of skin (FF 7). Such a combination is merely a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S. at
417.
Appellants contend that “Jentzsch et al. provides no teaching
whatsoever in connection with ameliorating thin skin, particularly thin skin
in women, and certainly provides no reasonable expectation that this could
successfully be accomplished with TDPA or its derivatives” (App. Br. 8).
Appellants contend that there “is no suggestion in Jentzsch or Gubernick that
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TDPA -- or any other antioxidant –possesses the remarkable ability to
thicken skin that has already thinned.” (App. Br. 8).
We are not persuaded. Jentzch teaches a list of antioxidants for
cosmetic treatment of skin which includes almost all of the antioxidants used
in the composition of Gubernick (FF 7, 11). Gubernick specifically teaches
that in a study of female volunteers that after “18 months, however, a highly
significant difference in thickness is observed between the two arms,
meaning that the antioxidants have provided a highly significant protection
against loss of skin tissue” (Gubernick, col. 8, ll. 63-67; FF 12). Gubernick
provides substantial motivation to topically apply antioxidants, including the
known equivalent antioxidant, thiodipropionic acid, to treat thin skin (FF
12).
Appellants contend that the “application of TDPA or its derivatives to
female skin that has already thinned, is not inherent in the application of
Jentzsch’s preparation to skin, generally. The application of TDPA or its
derivatives to already thin skin is a significant manipulative difference
compared to Jentzsch’s” (App. Br. 9).
We are not persuaded. Gubernick teaches treatment of 160 female
volunteers from 35 to 45 years in age and found that treatment resulted in a
significant difference in skin thickness (FF 9-12). This is direct evidence
that treatment with antioxidants such as thiodipropionic acid would
inherently improve the thickness of skin. Gubernick also specifically
teaches that the “process of line and wrinkle formation is slowed down,
which even allows the skin cells to repair some of the damages generated
prior to the application of the treatment” (Gubernick, col. 10. ll. 20-23; FF
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13). Gubernick’s teaching of repair of skin cells directly suggests that the
topical administration of antioxidants would result in improving already
thinned skin (FF 12-13).
Appellants contend that the “unexpected discovery that TDPA can
ameliorate conditions associated with a compromised collagen matrix,
including prematurely thinned skin, is sufficient to overcome the rejection
under § 103” (App. Br. 10).
We are not persuaded. There is no evidence in the Specification that
thiodipropionic acid would improve thin skin (a malady barely mentioned in
the Specification (FF 1-3)). In addition, the Santhanam Declaration3
provides no unexpected results which demonstrate any effect of
thiodipropionic acid to prevent or treat thin skin. The experiments in the
Declaration show that thiodipropionic acid reduced AGE crosslinks
(Santhanam Dec. 4 ¶ 13).
However, the Santhanam Declaration does not expressly state that
AGEs are associated with thin skin, only with aging skin (Santhanam Dec. 2
¶ 5). To overcome a prima facie case of obviousness by showing secondary
considerations of unexpected results, Appellants must first establish a nexus
between the claimed invention and the allegedly unexpected results. See
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For
objective evidence of secondary considerations to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.”). “Where the offered secondary
consideration actually results from something other than what is both

3 Declaration of Dr. Uma Santhanam, filed Feb. 5, 2010.
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claimed and novel in the claim, there is no nexus to the merits of the claimed
invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
In the instant case, the proferred reduction in AGE crosslinks does not
have any necessary nexus with the claimed requirement of ameliorating thin
skin. Appellants have provided no evidence that compounds which reduce
AGE crosslinks necessarily, or even likely, result in treatment of thin skin.
In addition, Appellants have provided no evidence that the results are
unexpected relative to the closest prior art of Gubernick. No comparison
with the antioxidant mixture of Gubernick is presented. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
Appellants contend that Perricone “is equally germane in the context
of § 103” (Reply Br. 2-3).
We are not persuaded. Unlike Perricone, where the anticipation case
relied upon inherency, the current rejection relies upon the direct suggestion
of Gubernick that topical treatment of skin with antioxidants provides
protection against the loss of skin tissue (FF 12). We conclude that the
ordinary artisan, concerned with treatment of skin thinning, would
reasonably have used the antioxidants of Gubernick and Jentzch to reduce
skin thinning, and that this treatment would necessarily result in protection
against the loss of skin tissue as evidenced by Gubernick (FF 12).
Gubernick specifically teaches that the “process of line and wrinkle
formation is slowed down, which even allows the skin cells to repair some
of the damages generated prior to the application of the treatment”
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(Gubernick, col. 10. ll. 20-23; FF 13). Gubernick’s teaching of repair of
skin cells directly suggests that the topical administration of antioxidants
would result in improving already thinned skin (FF 12-13).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Jentzsch and Gubernick render the method of claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Jentzsch and Gubernick. Pursuant to 37 C.F.R. §
41.37(c)(1), we also affirm the rejection of claims 2-7 as these claims were
not argued separately.

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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