10880810 (P.T.A.B. Aug. 29, 2016)

Ex Parte Perrier et al

Patent Trial and Appeal BoardAug 29, 2016

10880810 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/880,810 0613012004 123223 7590 08/31/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Eric Perrier 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. 5264 2518 EXAMINER KISHORE, GOLLAMUDI S ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 08/31/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC PERRIER, VALERIE ANDRE, and ISABELLE BONNET1 Appeal2015-002865 Application 10/880,810 Technology Center 1600 Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and TA WEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims to certain hydrated lamellar phases or liposomes, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. STATEMENT OF THE CASE According to the Specification, "[a] main aim of the present invention is to ... provid[ e] ... hydrated lamellar phases or liposomes which enable an increase in the intracellular penetration of a substance or active principle, 1 Appellants identify the Real Party in Interest as BASF Beauty Care Solutions France S.A.S. (Appeal Br. 2.) 1 Appeal2015-002865 Application 10/880,810 advantageously in the cells of the skin or of the hair, while at the same time limiting the cytotoxicity or the induction of cell death of said cells." (Spec. 3:3-8.) Claims 54, 61---66, 70, 71, 75-77, 79, 80, 84, 86, 88, 90-92, 105-108, 110-116 are on appeal. Claim 54 is illustrative and reproduced below with dispositive claim limitation emphasized: 54. Hydrated lamellar phases or liposomes, comprising at least in part in their structure a substance or a mixture of substances which is (are) capable of stimulating the intracellular penetration of at least one active principle present or carried in said hydrated lamellar phases or liposomes and is (are) selected from the group consisting of: a) b) a primary, secondary, tertiary, or quaternary fatty monoamine of carbon-containing chain length of between ClO and C13; and a quatemised [sic] soya protein of formula R- N (R1R2 R3 ), in which R symbolizes the plant protein molecule, which is hydrolysed or not, hydroxypropylated; Ri and R2 independently being a Cl-C6 hydrocarbon group, and R3 being an alkyl radical having 10 to 18 carbon atoms, and wherein the lamellar phases or liposomes comprise at least one polar lipid or a polar sphingolipid. 2 The Examiner rejects claims 54, 61---66, 70, 71, 75-77, 79, 80, 84, 86, 88, 90-92, 105-108, 110-116 under 35 U.S.C. Â§ 103(a) as being 2 Both of the other independent claims on appeal, claims 107 and 112, also require liposomes or hydrated lamellar phases comprising "at least in part in their structure" certain substance or mixture of substances stimulating or capable of stimulating the intracellular penetration of at least one active principle. (Appeal Br. A-3-A-4 (Claims App'x).) 2 Appeal2015-002865 Application 10/880,810 unpatentable over Grollier3 in combination with Mellul,4 Schlotmann,5 Green,6 Brunening,7 Shefer,8 individually or in combination, further in view ofNiemiec. 9' 10 (Ans. 2.) DISCUSSION Issue The Examiner has rejected claims 54, 61-66, 70, 71, 75-77, 79, 80, 84, 86, 88, 90-92, 105-108, and 110-116 under 35 U.S.C. Â§ 103(a) as being unpatentable over Grollier in combination with Mellul, Schlotmann, Green, Brunening, Shefer, individually or in combination, further in view of Niemiec. (Ans. 2.) The Examiner finds that Grol[l]ier discloses pharmaceutical compositions containing lipidic lamellar phases and a quatemised [sic] protein and an active agent. The hydrated lamellar phases contain ... an anionic stabilizing agent. Since the quatemised [sic] protein is outside the lamellar phase, forming an ionic complex with the anionic stabilizing agent is implicit[,] meeting the requirements of instant claims .... (Final Act. 5.) The Examiner finds that Grollier does not teach claimed quatemized plant proteins such as quatemized soya proteins. (Id.) However, the Examiner finds that Mellul, Schlotmann, Green, Bruening, and Shefer teach 3 Grollier et al., US 6, 177, 100 B 1, issued Jan. 23, 2001. 4 Mellul et al., US 6,083,491, issued July 4, 2000. 5 Schlotmann et al., US 2003/0223982 Al, published Dec. 4, 2003. 6 Green et al., US 2006/0110379 Al, published May 25, 2006. 7 Bruening et al., US 2004/0234563 Al, published Nov. 25, 2004. 8 Shefer et al., US 2003/0053974 Al, published Mar. 20, 2003. 9 Niemiec et al., US 2002/0001613 Al, published Jan. 3, 2002. 10 In the Answer, the Examiner included claim 67 in the list of claims subject to the 35 U.S.C. Â§ 103(a) rejection. (Ans. 2.) However, claim 67 is no longer pending in the application. (Final Act. 2.) 3 Appeal2015-002865 Application 10/880,810 various quaternized proteins used in cosmetic and skin or hair compositions, including several quaternized soya proteins having the claimed structure, and further finds that Schlotmann and Bruening also teach lamellar phases and/or liposomal compositions. (Id. at 5---6.) The Examiner concludes that, "[ s ]ince the function of the quaternary ammonium compound is the same in Grol[l]ier," it would have been obvious to a skilled artisan to use any quaternary compound according to the guidance provided by Grollier with the expectation of obtaining similar results. (Id.) The Examiner also finds that Grollier does not teach using phospholipids in making hydrated lamellar phases or liposomes but finds that using phospholipids for such purposes would have been obvious to a skilled artisan, as evidenced by Niemiec' s disclosure that liposomes are routinely made from phospholipids. (Id. at 6.) Appellants argue, among other things, that the claims require substance(s) capable of stimulating intracellular penetration, such as quaternized soy proteins having the claimed structure, to be "incorporated in the membrane of the liposomes," because the claims recite hydrated lamellar phases or liposomes "comprising at least in part in their structure" such substance(s). (Appeal Br. 8 (emphasis omitted).) Appellants argue that none of the cited art disclosed incorporating quaternized proteins in the membrane of the liposomes. (Id. at 8-12.) The issues with respect to this rejection are whether the claim limitation "[h ]ydrated lamellar phases or liposomes, comprising at least in part in their structure a substance or a mixture of substances" requires said substance or mixture to be incorporated in the membranes of the lamellar 4 Appeal2015-002865 Application 10/880,810 phase or liposomes and whether the cited art teaches or suggests this limitation. Analysis We agree with Appellants that the claim limitation "[h]ydrated lamellar phases or liposomes, comprising at least in part in their structure a substance or a mixture of substances ... capable of stimulating the intracellular penetration of at least one active principle," requires that said substance or mixture of substance be incorporated in the membranes of the lamellar phases or liposomes. (Appeal Br. 8.) In adopting the Appellants' interpretation of this claim term, we interpret the claim language in light of the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (in PTO proceedings claim terms are given "the broadest reasonable meaning ... in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account ... the applicant's specification"). In particular, we note that certain primary fatty monoamines are among the substances claimed to be capable of stimulating the intracellular penetration of an active principle. In describing the effect of carbon chain lengths on the stimulating activities of such monoamines, the Specification states that, "[t]he incorporation, in the membranes of the liposomes, of fatty amines having aliphatic chains of various sizes, shows clearly the impact of the length of the carbon-containing chains on the stimulating activity." (Spec. 24:5-8 (emphasis added).) We also note that, in amending the claims to recite that the lamellar phases and liposomes of the present application comprise at least in part in their structure a substance or mixture of substances capable of stimulating intracellular penetration of an active principle, Appellants stated that "'at 5 Appeal2015-002865 Application 10/880,810 least in part in their structure' is to mean that the substance or the mixture of substances forms a part of the structure of the claimed hydrated lamellar phases or liposomes." (Sept. 27, 2010 Amendment and Reply Under 37 CPRÂ§ 1.111 11.) Given that "[l]iposomes are essentially ... spherical structures formed by double-layer lipid membranes," (Mammarella i-f 7), we agree with Appellants that the claims require the substance(s) capable of stimulating intracellular penetration to be incorporated in the membranes, or the lipid layers, of the lamellar phases and liposomes. Having construed the claims to require the incorporation of certain quatemized proteins or fatty monoamines in the membranes of hydrated lamellar phases or liposomes, we further find that the cited prior art references do not disclose or suggest this limitation. The Examiner argues that Grollier discloses mixing and homogenizing liposomes and quatemized proteins, and thus "one would expect the presence of the quatemized compounds ... within the liposomes." (Ans. 4.) The Examiner also argues that "it is well known ... that if a component is hydrophilic, it would be encapsulated within the aqueous compartment of the liposomes and if it is lipophilic, it would be within the [lipid] bilayer of the liposomes." (Id.) The Examiner further argues that "Grollier and [the] instant invention [both] use[] quatemized protein hydrolysates and one would expect these proteins to sequester in the same place irrespective [of] who uses these compounds in liposomal compositions." (Id.) We are not convinced. Presence of a compound "within" a liposome, e.g., within the aqueous volume entrapped by the liposome's lipidic membrane, is not the same as incorporation of the compound in the 6 Appeal2015-002865 Application 10/880,810 liposome' s membrane. Furthermore, Grollier explicitly states that the quatemized protein of its invention is contained in the continuous aqueous phase. (See, e.g., Grollier 4:34--67.) Neither has the Examiner pointed to other cited art suggesting that a quatemized protein be incorporated in the membrane of a liposome or hydrated lamellar phase. In short, the cited references do not teach or suggest a limitation present in the claims on appeal. Accordingly, we reverse the Examiner's rejection of claims 54, 61---66, 70, 71, 75-77, 79, 80, 84, 86, 88, 90-92, 105- 108, 110-116 as unpatentable under 35 U.S.C. Â§ 103(a) over Grollier, Niemiec, and a combination of Mellul, Schlotmann, Green, Bruening, and/or Shefer. CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (obviousness requires a suggestion of all limitations in a claim). SUMMARY For the reasons above, we reverse the Examiner's decision rejecting claims 54, 61---66, 70, 71, 75-77, 79, 80, 84, 86, 88, 90-92, 105-108, 110- 116. REVERSED 7