Ex Parte Max et al

Patent Trial and Appeal Board

Mar 14, 2017

10966036 (P.T.A.B. Mar. 14, 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.
10/966,036 10/18/2004 Heiner Max 3321-P26120 4818
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
03/16/2017 EXAMINER
BREDEFELD, RACHAEL EVA
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
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 HEINER MAX, RAINER WOLBER,
CHRISTOPHER MUMMERT, LUDGER KOLBE,
KAREN TOM DIECK, and URSULA WENSORRA1
Appeal 2014-009673
Application 10/966,036
Technology Center 1600
Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
method of treating a postinflammatory skin condition. The Examiner rejects
the claims as obvious and on the ground of nonstatutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Beiersdorf AG.
Appeal Br. 3.
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Application 10/966,036
STATEMENT OF THE CASE
Claims 50-72 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 50 is representative of the claims on
appeal, and reads as follows:
50. A method for treating a postinflammatory skin condition,
wherein the method comprises applying to skin exhibiting a
postinflammatory skin condition a cosmetic or dermatological
preparation that comprises licochalcone A and is present as at
least one of a solution, an emulsion, a hydrodispersion, a
lipodispersion, a gel, a solid stick, or an aerosol.
Appellants seek review of the following rejections:
A. claims 50, 56—59, 61, 62, 64, 66, and 70 under 35 U.S.C.
§ 103(a) as unpatentable over Matsukawa2 in view of Nair;3
B. claims 50-59, 61, 61, 64, and 66—72 under 35 U.S.C. § 103(a)
as unpatentable over Kishida,4 Matsukawa, and Nair;
C. claims 50—62, 64, and 66—72 under 35 U.S.C. § 103(a) as
unpatentable over Kishida, Matsukawa, Nair, and Mathur;5
D. claims 50-59 and 61—72 under 35 U.S.C. § 103(a) as
unpatentable over Kishida, Matsukawa, Nair, and Perry;6
2 Matsukawa, US 6,214,352 Bl, issued Apr. 10, 2001.
3 Nair et al., US 5,194,247, issued Mar. 16, 1993 (“Nair”).
4 Kishida et al., JP2001-163718, published June 19, 2001 (“Kishida”), all
references are made to the machine translation of record (see form 892,
mailed Mar. 19, 2009).
5 Mathur, US 4,096,240, issued June 20, 1978.
6 Perry et al., Defining pseudofolliculitis barbae in 2001: A review of the
literature and current trends, 46 J. Am. Acad. Dermatol. SI 13—SI 19 (2001)
(“Perry”).
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E. claims 70-72 on the grounds of nonstatutory obviousness-type
double patenting over claims 1—20 of the ’717 patent7 in view of Kishida;
F. claims 70-72 on the grounds of nonstatutory obviousness-type
double patenting over claims 17 and 18 of the ’356 patent8 in view of
Kishida;
G. claims 50-59, 61, 62, 64, and 66—72 on the grounds of
nonstatutory obviousness-type double patenting over claims 1—20 of the
’717 patent in view of Kishida, Matsukawa, and Nair;
H. claims 50-59, 61, 62, 64, and 66—72 on the grounds of
nonstatutory obviousness-type double patenting over claims 17 and 18 of
the ’356 patent in view of Kishida, Matsukawa, and Nair;
I. claims 50-62, 64, and 66—72 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida, Matsukawa, Nair, and Mathur;
J. claims 50-62, 64, and 66—72 on the grounds of nonstatutory
obviousness-type double patenting over claims 17 and 18 of the ’356
patent in view of Kishida, Matsukawa, Nair, and Mathur;
K. claims 50-59 and 61—72 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida, Matsukawa, Nair, and Perry; and
L. claims 50-59 and 61—72 on the grounds of nonstatutory
obviousness-type double patenting over claims 17 and 18 of the ’356
patent in view of Kishida, Matsukawa, Nair, and Perry.
7 Stab et al., US 7,824,717 B2, issued Nov. 2, 2010 (“the ’717 patent”).
8 Raschke et al., US 7,799,356 B2, issued Sept. 21, 2010 (“the ’356 patent”).
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We note that claims 50-64 and 66—72 were also provisionally rejected
on the grounds of nonstatutory obviousness-type double patenting over
claims 45—64 of copending Application No. 10/571,530 and claims 39-41 of
copending Application No. 10/581,2719 in view of Nair alone or in
combination with Mathur and Perry. Final Act. 24—29.10 Appellants do not
request review of the provisional obviousness-type double patenting
rejections. Appeal Br. 37 and 38 (“provisional rejection is not presented for
review”). We therefore summarily affirm them and do not further address
these rejections. 5eeMPEP§ 1205.02.
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claims as obvious over the various references. See Appeal Brief
and Reply Brief. We disagree with Appellants’ contentions and adopt the
Examiner’s findings and reasoning set forth in the Examiner’s Answer and
the Final Rejection. We address Appellants’ arguments for each of the
combinations below:
A. Obviousness over Matsukawa and Nair
The issue is: Does the preponderance of the evidence of record
support the Examiner’s conclusion that the combination of the cited art
renders claims directed to treating a postinflammatory skin condition
obvious?
9 We note that Application No. 10/581,271 has since been abandoned
(Notice of Abandonment mailed Nov. 14, 2016) rendering this rejection
moot.
10 Final Office Action mailed Nov. 11, 2013 (“Final Act.”).
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Findings of Fact
We adopt the Examiner’s findings regarding the scope and content of
the prior art as set out in the Final Office Action and Answer, and highlight
the following for context.
FF1. Matsukawa teaches:
Tyrosine, which is a type of amino acid, is
converted by the action of tyrosinase enzyme into melanin,
a black-brown to red-brown pigment, which is the cause
of skin blemishes and spots. In order to prevent the
production of melanin under the action of tyrosinase,
various compounds have been used or proposed to inhibit
the activity of tyrosinase in the fields of cosmetics and
foods.
Matsukawa 1:14—20. Compounds that are known to inhibit tyrosinase
include “ascorbic acid, sulfur compounds, hydroquinone, kojic acid,
and natural plant extracts.” Id. at 1:21—23.
FF2. Matsukawa teaches:
tyrosinase-inhibiting agents containing extracts or
fractions prepared from Gardenia fruit, Sophora root, and
Rosa fruit as the active ingredients. The tyrosinase-
inhibiting agents of this invention may be used for
improving the skin color and the like.
Id. at 1:6—12
FF3. Matsukawa teaches that in addition to the tyrosinase-inhibiting agents
the compositions can also contain “[wjhitening agents” that include
“oil-soluble Glycyrrhizae extract (Glycyrrhizae hydrophobic flavones,
glabridin, glabrene, licochalcone A) and the like.” Id. FA 1—18.
FF4. Matsukawa teaches:
Cosmetics containing whitening agents may be
manufactured in the form of emulsion, lotion, cream, jelly,
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and pack type cosmetics by standard methods using
general components used in the manufacture of cosmetics,
such as the oil components, detergents, moisturizing
agents, fragrances, water, alcohol, thickening agents,
colors, etc., and the tyrosinase-inhibiting agent of this
invention can be added at any appropriate step in the
manufacturing process.
Id. 3:51-59.
FF5. Nair teaches:
[HJyperpigmentation is generally the result of increased
melanin deposition in epidermal cells.
Hyperpigmentation of skin is associated with freckles,
senile lentigo, lentigines, melasma, post-inflammatory
hyperpigmentation, sunburn, phototoxic reactions and
other conditions. In general, these cases of
hyperpigmentation are not life-threatening, but are viewed
as cosmetically undesirable and psychologically
debilitating.
Nair 1:21—26 (emphasis added).
FF6. Nair teaches that hydroquinone and 4-hydroxyanisole are known
depigmentation agents. See Nair 1:30-35. Nair teaches a method for
skin depigmentation by topically applying a combination of 4-
hyrdoxyanisole and retinoid in a pharmaceutically acceptable topical
vehicle, such as creams, gels or ointments. Id. at 2: 49-60.
Principle of Law
“If a person of ordinary skill can implement a predictable variation [of
a known work], § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). Solving a problem by selecting from a
limited number of known options is obvious:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
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solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Id. at 421.
Analysis
We have reviewed Appellants’ contentions that the Examiner erred in
rejecting claims 50, 56—59, 61, 62, 64, 66, and 70 as obvious over
Matsukawa and Nair. Appeal Br. 18—25. We disagree with Appellants’
contentions and adopt the Examiner’s findings and reasoning set forth in the
Examiner’s Answer and the Final Rejection. For emphasis, we highlight and
address the following:
Appellants contend that there is no reason to combine the references,
specifically noting “that whitening agents [of Matukawa] may be contained
in these compositions only as one of several types of optional ingredients.”
Appeal Br. 19. Appellants contend that licochalcone A is one of hundreds of
optional ingredients. See Appeal Br. 20. In other words, why choose
licochalcone A as an ingredient to mix with the tyrosinase inhibitor?
We are not persuaded by Appellants’ contentions. It is well settled
that “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught
to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’” Merck & Co.
Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Furthermore,
“the motivation in the prior art to combine the references does not have to be
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identical to that of the applicant to establish obviousness.” In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996).
Matsukawa teaches that tyrosine is converted to melanin via that
action of a tyrosinase enzyme. FF1. Matsukawa teaches that the
compositions containing tyrosine kinase inhibitors “may be used for
improving the skin color and the like.” FF2. Matsukawa teaches
compositions containing tyrosine kinase inhibitors in conjunction with
whitening agents for application to the skin in the form of creams and
lotions. FF1—FF4. Thus, the compositions as taught by Matsukawa that
contain both tyrosine kinase inhibitors as well as whitening agents improve
skin color by preventing more melanin from forming as well as helping
remove color with the whitening agent.
Nair explains that hyperpigmentation is caused by increased melanin
deposition in the epidermal layers of the skin. FF5. Nair discloses that there
are many conditions that cause hyperpigmentation, one such condition is
includes post-inflammatory hyperpigmentation. FF5. Nair teaches a method
of applying a combination of 4-hydroxyanisole and retinoid for the purpose
of depigmenting skin. FF6.
The Examiner finds that “Matsukawa suggests the use of licochalcone
A as a suitable whitening agent.” Final Act. 6. Specifically, the Examiner
finds that Matsukawa suggests that “licochalcone A has a whitening effect
and can be incorporated into a cosmetic preparation, such as a lotion,
emulsion, cream, etc.” that are used for the purpose of improving skin color.
Ans. 9; see FF2—FF4. Based on the combined teachings of Matsukawa and
Nair the Examiner concludes that one of ordinary skill in the art at the time
the invention was made “would have been motivated with a reasonable
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expectation of success to use a composition comprising licochalcone A for
such purposes because Matsukawa suggests that licochalcone A has a
whitening effect and Nair et al teach hyperpigmentation associated with
sunburn and melasma commonly occurs in specific patient populations.”
Final Act. 7. We find no error with the Examiner’s conclusion that
Matsukawa suggests applying licochalcone A containing compositions to the
skin in order to improve skin color. While Matsukawa does not teach
specific conditions that are associated with increased melanin production,
Nair identifies patient populations that benefit from the topical application of
compounds that improve skin color by depigmentation. See FF5. Here, the
claims are not limited to applying compositions that contain licochalcone A
only, but instead the claims encompass compositions that can also contain
other active ingredients. Accordingly, we agree with the Examiner’s
conclusion that the combination of references reasonably suggests applying
licochalcone A to a patient population that is experiencing a
postinflammatory skin condition.
Appellants acknowledge that the combined teaching of Nair and
Matsukawa may “motivate^ to use the ‘tyrosinase-inhibiting agent
containing as the active ingredients.’” Appeal Br. 22. Appellants contend,
however, that Matsukawa does not exemplify the use of “any of the skin
whitening agents” in their products. Appeal Br. 22. Appellants question
whether Matsukawa recognizes that licochalcone A is an actual skin
whitening component because Matsukawa discloses licochalcone A “only as
one of the components of the actual skin whitening agent ‘Glycyrrhizae
extract.’” Appeal Br. 23.
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We are not persuaded. Here, claim 50 recites a method of treating a
postinflammatory skin condition with a cosmetic product that “comprises
licochalcone A.” During prosecution, claims are given their broadest
reasonable interpretation as they would be understood by persons of
ordinary skill in the art in the light of the Specification. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). “In the patent claim
context the term ‘comprising’ is well understood to mean ‘including but not
limited to.’” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
(Fed. Cir. 2007); see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“‘Comprising’ 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.”).
The product that is used in the method steps of claim 50 requires the
presence of licochalcone A but is not limited to that ingredient as the sole
active ingredient. See Advisory Act. 3. The product that is applied to the
skin in claim 50 includes licochalcone A but can also include other
ingredients including other active agents even in large amounts. Matsukawa
discloses the production of cosmetics that include a tyrosinase inhibitor as
well as a whitening agent, such as an “oil-soluble Glycyrrhizae extract
(Glycyrrhizae hydrophobic flavones, glabridin, glabrene, licochalcone A)
and the like.” FF1—FF4. “[T]he Office’s rejection is based on applying
Matsukawa’s composition to skin exhibiting a postinflammatory condition,
[the composition] which includes the tyrosinase inhibiting agents as well as
the suggested whitening agent, licochalcone A.” Ans. 8. Matsukawa
teaches that the composition is used to improve skin color, while Nair
provides a list of conditions that are known to effect skin color and can
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benefit from products that improve color by depigmentation. See FF2 and
FF5.
Appellants contend that without the use of hindsight one of ordinary
skill in the art would not have looked to Matsukawa’s disclosure for
teaching whitening agents. See Appeal Br. 24. Specifically, Matsukawa
teaches one of
ordinary skill in the art to treat (or prevent) hyperpigmentation
with a composition that contains not only one or more tyrosinase
inhibiting agents which comprise a solvent extract of Gardenia,
Sophora or Rosa as essential components but also a Glycyrrhizae
extract that comprises, inter alia, licochalcone A as (additional)
skin whitening agent.
Id.
We are not persuaded by Appellants’ contention that hindsight is the
only way to arrive at the claimed invention.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, Nair discloses a composition that is applied to the skin for the
purpose of depigmenting the skin. FF6. Nair also teaches various
conditions that result in hyperpigmentation of the skin requiring the use of
compounds that can help with depigmentation in order to improve the skin
color. Matsukawa also discloses compositions for improving skin color.
FF2. Based on the combined teaching of Nair and Matsukawa the ordinary
artisan would have had a reasonable expectation of success in applying
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Matsukawa’s product including the whitening agents onto skin in order to
improve the skin color for any known condition that results in
hyperpigmentation from the deposit of melanin in the skin, such as the
conditions disclosed in Nair.
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Matsukawa and
Nair renders obvious the method of treating postinflammatory skin condition
of claim 50. We thus affirm the rejection of claim 50 under 35 U.S.C.
§ 103(a) as being obvious. As claims 56—59, 61, 62, 64, 66 and 70 were not
argued separately they fall with claim 50. 37 C.F.R. § 41.37(c)(l)(iv).
B. Obviousness over Kishida, Matsukawa, and Nair
The issue is: Does the preponderance of the evidence of record
support the Examiner’s conclusion that the combination of the cited art
renders claims directed to treating a postinflammatory skin condition
obvious?
Additional Findings of Fact
FF7. Kishida teaches that licochalcone A functions as an androgen receptor
coupling inhibition agent as well as a testosterone 5alpha-reductase
inhibitor. See Kishida claims 1—4. “[T]he substance which has
simultaneous[] testosterone 5alpha-reductase inhibitory action and an
androgen receptor coupling inhibition operation, and there is in
offering the sebum acrinia agent whose effect is remarkable.” Id. ]f 8.
FF8. Kishida teaches the production of preparations for controlling sebum
secretion of the skin. See id. 11. Kishida teaches formulating the
sebum acrinia agent for application to the skin “which uses
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Licochalcone A as an active substance, [that also functions as] an
androgen receptor coupling inhibition agent, and testosterone 5alpha-
reductase inhibitor.” Id. H 1, 47. Furthermore, “the licochalcone A
of an active substance is the substance contained also in the
glycyrrhiza.” Id.
FF9. Kishida teaches that licochalcone A can be formulated for use in with
“common skin external preparations containing arbitrary bioactive
substances and assistants, for example, an astringent, sterilization and
an antimicrobial agent, a whitening agent, an ultraviolet ray
absorbent, a moisturizer, a cell activator, resolution and an antiallergic
agent, the antioxidation, an active oxygen eliminating agent, etc. as a
base.” Kishida 124 (emphasis added); see id. 1125-33.
FFlO.The Examiner finds that Kishida “teach[es] a lotion with 0.002 % of
licochalcone A and 0.04% 3-butylene glycol (paragraph 0045).” Final
Act. 8.
Analysis
Appellants contend that there is no suggestions in Matsukawa that
“the combination of licochalcone A with one of the essential tyrosinase
inhibiting agents . . . would afford a better result in any respect than any of
these essential tyrosinase inhibiting agents alone.” Appeal Br. 27. “NAIR
clearly neither teaches nor suggests that licochalcone A is of any use in
treating (let alone preventing) a corresponding condition.” Id. at 28.
Appellants contend that it “is not seen that the disclosure of KISHIDA can
be associated in any way with a postinflammatory condition,” at best the
reference is directed to preventing potential inflammation due to excessive
sebum secretion. Id.
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We do not find Appellants’ arguments persuasive. As an initial
matter, we note that Appellants’ arguments are attacking the Kishida,
Matsukawa, and Nair references individually (see, e.g., App. Br. 25—29),
where the rejection is based on their combination. In re Keller, 642 F.2d
413,426 (CCPA1981).
The rejection is based on the combined teachings of the references.
Ans. 9-10. The combination of Matsukawa and Nair have been discussed
above. Kishida teaches compositions containing licochalcone A for use in
controlling sebum secretions and that licochalcone A be formulated to be
applied to the skin at concentrations containing 0.002% licochalcone A. See
FF7—FF10. Kishida’s formulations can additionally include whitening
agents. FF8. The Examiner reasons that “Matsukawa renders obvious the
application of Kishida’s composition to skin exhibiting a postinflammatory
condition” for the purpose of improving skin color. Ans. 9. Here, both
references are concerned with the production of lotions or creams for
application to the skin. FF1—FF4 and FF7—FF10. We agree with the
Examiner’s position that one of ordinary skill in the art would have found it
reasonable to consult Kishida’s formulations that contain licochalcone A, for
the purpose of establishing reasonable concentrations that can be applied to
the skin as suggested in Matsukawa.
Furthermore, it is important to remember that the law does not require
that the teachings of the reference be combined for the reason or advantage
contemplated by the inventor, as long as some suggestion to combine the
elements is provided by the prior art as a whole. In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992); In re Kronig, 539 F.2d 1300, 1304 (CCPA
1976). Here, the Examiner is relying on the combination of Matsukawa and
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Nair to establish that both references are concerned with improving the
appearance of the skin and that the combined teaching would predictably
have led the ordinary artisan to apply “Matsukawa’s composition to skin
exhibiting a postinflammatory condition, which includes the tyrosinase
inhibiting agents as well as the suggested whitening agent, licochalcone A.”
Ans. 8. Because both Kishida and Matsukawa teach applying licochalcone
A to the skin, one of ordinary skill in the art would have recognized that
Kishida’s “compositions comprising licochalcone A would be effective in
treating skin blemishes and spots associated with hyperpigmentation” as
suggested by the combination with Matsukawa and Nair. Ans. 9-10.
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Kishida,
Matsukawa, and Nair renders obvious the method of treating
postinflammatory skin condition of claim 50. We thus affirm the rejection
of claim 50 under 35 U.S.C. § 103(a) as being obvious. As claims 51—62, 64
and 66—72 were not argued separately they fall with claim 50. 37 C.F.R.
§ 41.37(c)(l)(iv).
C. Obviousness over Kishida, Matsukawa, Nair, and Mathur
Appellants acknowledge that this rejection is only applicable to claim
60. Appeal Br. 29. Appellants do not provide any additional arguments
with respect to the teachings of Mathur, instead relying on their arguments
with respect to Kishida. See id.
This rejection relies upon the underlying obviousness rejection over
the combination of Kishida, Matsukawa, and Nair as applied to claim 50
(see above B.). Having found no error in the Examiner’s prima facie case
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based on the combined references as they apply to claim 50 we affirm this
rejection for the same reason as discussed above (see B.).
D. Obviousness over Kishida, Matsukawa, Nair, and Perry
The Examiner finds that Perry teaches “pseudofollicularis barbae is a
chronic inflammatory condition in people with tightly curled hair and who
shave or tweeze hairs frequently ([Perry] abstract). The condition often
produces painful, pruritic, and hyperpigmented papules in the beard area.”
Final Act. 12. The Examiner concludes that one having ordinary skill in the
art would have reasonably expected that using a whitening agent to
depigment the skin such as “licochalcone A for such purposes because
Matsukawa suggests that licochalcone A has a whitening effect and Perry et
al teach hyperpigmentation associated with shaving or pseudofollicularis
barbae.” Id.
Appellants contend that
there is no apparent connection betweenpseudofolliculits barbae
and excessive sebum secretion from skin and thus, no reason for
one of ordinary skill in the art to assume that a substance which
can treat excessive sebum secretion from skin (licochalcone A)
is also suitable for treating pseudofolliculits barbae, i.e., a
condition which is not caused by any hormonal imbalance at all.
Appeal Br. 31.
We are not persuaded by Appellants’ contention. Arguing the
references individually when the rejection is based on their combination is
not persuasive. See In re Keller, 642 F.2d at 426. Here, the Examiner
identified the hyperpigmentation of the papules associated with
pseudofollicularis barbae as taught by Perry to provide the reason to look to
whitening agents for the purpose of depigmenting the skin as taught by the
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combination of Kishida, Matsukawa, andNair. Final Act. 12. Perry
describes pseudofollicularis barbae as causing “unappealing cosmetic
appearance” and one of the factors for the unappealing appearance is the
hyperpigmented papules. See Perry Abstract.
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Kishida,
Matsukawa, Nair, and Perry renders obvious the method of treating
postinflamatory skin condition of claims 50 and 65. We thus affirm the
rejection of claims 50 and 65 under 35 U.S.C. § 103(a) as being obvious. As
claims 51—59, 61—34, and 66—72 were not argued separately they fall with
claims 50 and 65. 37 C.F.R. § 41.37(c)(l)(iv).
E. Obviousness-type double patenting over the ’717patent in view of
Kishida
The issue is: Does the preponderance of the evidence of record
support the Examiner’s conclusion that the claims of the ’717 patent in
conjunction with the teachings of Kishida render the claimed methods as
recited in claims 70-72 obvious?
FF11. Claim 1 of the ’717 patent reads:
1. A method of treating rosacea in a subject having
rosacea, comprising topically applying a therapeutically
effective amount of Licochalcone A to an area of the
subject in need of treatment of the rosacea.
Analysis
Appellants contend that “[t]he Examiner appears to also take the
position that an inflammatory skin condition and dry and sensitive skin
quality as ‘postinflammatory skin condition’” without providing
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documentary evidence and that Kishida does not cure the deficiency of the
’717 patent. Appeal Br. 32.
The Examiner’s position is that claim 70 is directed to a method of
applying a composition comprising licochalcone A to inflamed skin.
Claim 70 recites (emphasis added):
A method of preventing a postinflammatory skin condition,
wherein the method comprises applying to inflamed skin a
cosmetic or dermatological preparation that comprises
licochalcone A and is present as a solution, an emulsion, a
hydrodispersion, a lipodispersion, a gel, a solid stick, or an
aerosol.
Appeal Br. 43, Claims Appendix. The claim language, as recited in the
preamble, is directed to “preventing” and the “broadest reasonable meaning,
is taken to include subjects (i.e. a patient population) that have not yet
developed a postinflammatory skin condition such as the applicants] elected
skin condition, hyperpigmentation.” Final Act. 19. Therefore, the Examiner
finds that “administration of licochalcone A, to any subject with inflamed
skin is taken to meet the recited administration step.” Ans. 11. Here, the
patented method of applying Licochalcone A to skin that is experiencing the
condition of rosacea is reasonably interpreted as meeting the limitation of
applying the licochalcone A to inflamed skin as presently claimed. The
Examiner acknowledges that the ’717 patent claims do not recite that the
“composition is present as a solution, an emulsion, a hydrodispersion, a
lipodispersion, a gel, or an aerosol.” The Examiner relies on Kishida for this
teaching. Final Act. 18; see FF7—FF10. We agree with the Examiner’s
position that the combination of the ’717 patent in conjunction with Kishida
renders claims 70—72 obvious. Accordingly, we affirm the rejection of
claims 70—72 as they rely on the combination of the ’717 patent and Kishida.
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F. Obviousness-type double patenting over the ’356patent in view of
Kishida
The issue is: Does the preponderance of the evidence of record
support the Examiner’s conclusion that the claims of the ’356 patent in
conjunction with the teachings of Kishida render the claimed methods
obvious?
FF12. Claim 1 of the ’356 patent reads in pertinent part:
1. A cosmetic or dermatological preparation for treating
one or more inflammatory skin conditions and/or for
protecting dry and sensitive skin comprising an effective
amount of at least one of Ficochalcone A and an extract of
Radix Glycyrrhiza injlata that comprises Ficochalcone A,
from about 0.05% to about 20% by weight of one or more
polyols, and from about 0.1 % to about 1.0% by weight of
one or more hydrocolloids selected. . . .
FF13. Claim 17 of the ’356 patent reads:
17. A method for treating one or more inflammatory skin
conditions in a subject in need thereof comprising
applying the preparation of claim 1 to at least a part of the
skin of said subject.
Analysis
Appellants contend that “[t]he Examiner appears to also take the
position that an inflammatory skin condition and dry and sensitive skin
quality as ‘postinflammatory skin condition’. However, the Examiner has
provided no documentary evidence whatsoever which would support this
position.” Appeal Br. 32.
We are not persuaded by Appellants’ contention. We agree with the
Examiner that the claim language, as recited in the preamble, is directed to
“preventing” and the “broadest reasonable meaning, is taken to include
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subjects (i.e. a patient population) that have not yet developed a
postinflammatory skin condition such as the applicant elected skin
condition, hyperpigmentation.” Final Act. 19. Therefore, the Examiner
finds that “administration of licochalcone A, to any subject with inflamed
skin is taken to meet the recited administration step.” Ans. 11. Here, the
Examiner has explained how the breadth of the claim, specifically the
limitation of “preventing” can read on any condition that includes
inflammatory conditions that are known to occur before a “postinflammatory
skin condition” can be observed. In other words, “preventing” a condition
includes the application of licochalcone A to skin that is already inflamed, or
to skin that is not yet experiencing an inflammatory condition, after all the
claim is trying to prevent something in this case a “post” inflammation
condition from happening in the future. Thus, it is reasonable that
application of the composition to any skin will prevent inflammation and
thereby prevent the postinflammation.
Based on the interpretation of the claim, Appellants’ arguments do not
persuade us that the Examiner erred in rejecting claims 70—72 on the ground
of nonstatutory obviousness type double patenting.
G, I, and K. Obviousness-type double patenting over the ’717patent
in view of Kishida, Matsukawa, Nair, Mathur, and Perry either alone or in
various combinations of the cited references
The Examiner has rejected claims 50—59, 61, 62, 64, and 66—72 on the
grounds of nonstatutory obviousness-type double patenting over claims 1—20
of the ’717 patent in view of Kishida, Matsukawa, and Nair (G), claims 50-
62, 64 and 66—72 over claims 1—20 of the ’717 patent in view of Kishida,
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Matsukawa, Nair, and Mathur (I), and claims 50-59 and 61—72 over claims
1—20 of the ’717 patent in view of Kishida, Matsukawa, Nair, and Perry (K).
Because the same issue is dispositive for all three rejections, we will
consider them together.
Appellants contend that “[t]he Examiner appears to take the position
that rosacea qualifies as a ‘postinflammatory skin condition’. However, the
Examiner has provided no documentary evidence whatsoever which would
support this position.” Appeal Br. 33, 34, 35.
The Examiner acknowledges that the ’717 claims “do not explicitly
teach its composition can be applied to skin exhibiting a postinflammatory
skin condition” and more particular to the elected species of
hyperpigmentation. Final Act. 20. The Examiner, however, relies on the
combination of Matsukawa and Nair, as discussed above (A.) for teaching
that is would be obvious to apply a composition containing a licochalcone A,
identified as a whitening agent by Matsukawa, for the purpose of
depigmentation associated with various skin conditions disclosed by Nair.
See Final Act. 20; see FF1—FF6. The claims of the ’717 patent teach
topically applying a therapeutically effective amount of Licochalcone A.
FF11. The teaching of topically applying Licochalcone A (FF11) in
conjunction with the knowledge that licochalcone A functions as a
whitening agent (FF3), and whitening agents are applied to for the purpose
of depigmenting skin (FF5 and FF6), we agree with the Examiner’s position
that based on the combined teachings it is reasonable for the ordinary artisan
to conclude that postinflammatory hyperpigmentation can be treated with the
application of composition comprising licochalcone A.
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Appellants’ arguments do not persuade us that the Examiner erred in
rejecting the claims on the ground of nonstatutory obviousness type double
patenting.
H, J, and L. Obviousness-type double patenting over the ’356patent
in view of Kishida, Matsukawa, Nair, Mathur, and Perry either alone or in
various combinations of the cited references
The Examiner has rejected claims 50—59, 61, 62, 64, and 66—72 on the
grounds of nonstatutory obviousness-type double patenting over claims 17
and 18 of the ’356 patent in view of Kishida, Matsukawa, and Nair (H),
claims 50-62, 64, and 66—72 over claims 17 and 18 of the ’356 patent in
view of Kishida, Matsukawa, Nair, and Mathur (J), and claims 50-59 and
61—72 over claims 17 and 18 of the ’356 patent in view of Kishida,
Matsukawa, Nair, and Perry (.L). Because the same issue is dispositive for
all three rejections, we will consider them together.
Appellants contend that “[t]he Examiner appears to take the position
that rosacea qualifies as a ‘postinflammatory skin condition’. However, the
Examiner has provided no documentary evidence whatsoever which would
support this position.” Appeal Br. 33, 34, 35.
The Examiner acknowledges that the ’356 claims “do not explicitly
teach its composition can be applied to skin exhibiting a postinflammatory
skin condition” and more particular to the elected species of
hyperpigmentation. Final Act. 20. The Examiner, however, relies on the
combination of Matsukawa and Nair, as discussed above (A.) for teaching
that is would be obvious to apply a composition containing a licochalcone A,
identified as a whitening agent by Matsukawa, for the purpose of
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depigmentation associated with various skin conditions disclosed by Nair.
See Final Act. 20; see FF1—FF6. Here, the claims of the ’356 patent teach
the application of Licochalcone A for the purpose of treating an
inflammatory skin condition. FF13 and FF12. Nair discloses that there are
many skin conditions that result in hyperpigmentation, including
postinflammatory hyperpigmentation, sunburn, and phototoxic reactions.
FF5; Final Act. 20. Based on the combined teachings of the references we
find no error with the Examiner’s conclusion that the teachings of Kishida,
Matsukawa, and Nair render obvious the application of licochalcone A
containing compositions for the purpose of treating postinflammatory skin
conditions.
Appellants’ arguments do not persuade us that the Examiner erred in
rejecting the claims on the ground of nonstatutory obviousness type double
patenting.
SUMMARY
We affirm the rejection of claim 50 under 35 U.S.C. § 103(a) over
Matsukawa and Nair. Claims 56—59, 61, 62, 64, 66, and 70 were not argued
separately and fall with claim 50.
We affirm the rejection of claim 50 under 35 U.S.C. § 103(a) over
Kishida, Matsukawa, and Nair. Claims 51—62, 64, and 66—72 were not
argued separately and fall with claim 50.
We affirm the rejection of claim 50 under 35 U.S.C. § 103(a) over
Kishida, Matsukawa, Nair, and Mathur. Claims 51—62, 64, and 66—72 were
not argued separately and fall with claim 50.
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We affirm the rejection of claims 50 and 65 under 35 U.S.C. § 103(a)
as unpatentable over Kishida, Matsukawa, Nair, and Perry. Claims 51—59,
61—64, and 66—72 were not argued separately and fall with claims 50 and 65.
We affirm the rejection of claim 70 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida. Claims 71 and 72 were not argued separately and fall with
claim 70.
We affirm the rejection of claim 70 on the grounds of nonstatutory
obviousness-type double patenting over claims 17 and 18 of the ’356 patent
in view of Kishida. Claims 71 and 72 were not argued separately and fall
with claim 70.
We affirm the rejection of claim 50 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida, Matsukawa, and Nair. Claims 51—59, 61, 62, 64, and 66—
72 were not argued separately and fall with claim 50.
We affirm the rejection of claim 50 on the grounds of nonstatutory
obviousness-type double patenting over claims 17 and 18 of the ’356 patent
in view of Kishida, Matsukawa, and Nair. Claims 51—59, 61, 62, 64, and
66—72 were not argued separately and fall with claim 50.
We affirm the rejection of claim 50 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida, Matsukawa, Nair, and Mathur. Claims 51—62, 64, and 66—
72 were not argued separately and fall with claim 50.
We affirm the rejection of claim 50 on the grounds of nonstatutory
obviousness-type double patenting over claims 17 and 18 of the ’356 patent
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in view of Kishida, Matsukawa, Nair, and Mathur. Claims 51—62, 64, and
66—72 were not argued separately and fall with claim 50.
We affirm the rejection of claim 50 on the grounds of nonstatutory
obviousness-type double patenting over claims 1—20 of the ’717 patent in
view of Kishida, Matsukawa, Nair, and Perry. Claims 51—59 and 61—72
were not argued separately and fall with claim 50.
We affirm the rejection of claim 50 claims 50—59 and 61—72 on the
grounds of nonstatutory obviousness-type double patenting over claims 17
and 18 of the ’356 patent in view of Kishida, Matsukawa, Nair, and Perry.
Claims 51—59 and 61—72 were not argued separately and fall with claim 50.
We summarily affirm the provisional rejection of claims 50-62, 64,
and 66—72 on the grounds of nonstatutory obviousness-type double patenting
over claims 45—64 of copending Application No. 10/571,530 in view of Nair
alone or in combination with Mathur and Perry.
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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