Ex Parte Rival et al

Patent Trial and Appeal Board

Sep 6, 2017

11803805 (P.T.A.B. Sep. 6, 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.
11/803,805 05/16/2007 Delphine Rival 074050-0056-US-287562 7696
123223 7590 09/08/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
TATE, CHRISTOPHER ROBIN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
09/08/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
DB RIPDocket @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DELPHINE RIVAL, SEBASTIEN BONNET, ISABELLE ORLY,
and ERIC PERRIER
Appeal 2016-007985
Application 11/803,8051
Technology Center 1600
Before ERIC B. GRIMES, BRIAN P. MURPHY, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejection of claims 23—25, 27, 32—34, 37—39, and 41—50. We
have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
AFFIRM-IN-PART.
BACKGROUND
The Specification describes cosmetic and other compositions for
protecting against the degradation of growth factors, particularly FGF-2, to
1 Appellants state the real party in interest is BASF Beauty Care Solutions
France SAS. Appeal Br. 2.
Appeal 2016-007985
Application 11/803,805
improve skin quality. Spec. 1:2—8. Claims 23 and 41 illustrate the appealed
claims:
23. A method for protecting FGF-2 in aging human skin, the
method comprising applying to the skin a cosmetic composition
comprising an effective amount of an extract of seeds of Hibiscus
abelmoschus- obtained by using a solvent consisting essentially
of water or a water/alcohol mixture, wherein said solvent has a
ratio of water to alcohol from 85/15 to 100/0, and a cosmetically
acceptable excipient.
41. A method for protecting FGF-2 in aging human skin, the
method comprising applying to the skin a cosmetic composition
comprising an effective amount of a hydroglycolic extract of
seeds of Hibiscus abelmoschus and a cosmetically acceptable
excipient.
Appeal Br. 12—13 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 23—25, 27, 32—34, 37—39, and 41—50 stand rejected under 35
U.S.C. § 103 as unpatentable over Suzuki.2 Ans. 2.
DISCUSSION
The Examiner relies on Suzuki as teaching external anti-aging
compositions comprising Hibiscus abelmoschus seed extracts. Final Action
2. Although Suzuki prefers employing lower alcohols, such as ethanol, as
extraction solvents, Suzuki also states that water, propylene glycol, and
2 Suzuki et al., JP 2010-029922, published February 3, 1998, English
(machine) translation. Appellants and the Examiner refer to this reference by
the surname of the second listed inventor, Nakazawa.
2
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Application 11/803,805
butylene glycol are also acceptable. Id. at 2—3. The Examiner notes that
Suzuki does not disclose protection of FGF-2, but finds that “this functional
effect would be intrinsic upon topical application” to the skin. Id. at 3.
In regard to the independent claims (i.e., claims 23, 32, 41, and 49),
Appellants present only one argument disputing the Examiner’s prima facie
case of obviousness. See Appeal Br. 5—6. Specifically, Appellants attempt
to distinguish the claims by noting that Suzuki’s working examples use
extracts “contain[ing] at least 50% alcohol” (id. at 6), whereas exemplary
claim 23 recites “a ratio of water to alcohol from 85/15 to 100/0” (id. at 12
(Claims Appendix)). As Appellants acknowledge, however (see id. at 6—7),
Suzuki is not limited to its preferred ethanol and methanol extracts. Rather,
Suzuki specifically mentions “hot water” (id. at 9 (quoting Suzuki 114))
among a list of suitable extraction solvents for use in making anti-aging skin
compositions from H. abelmoschus seeds (see Final Action 2—3). In a § 103
analysis, the prior art must be considered for all of its teachings, including
non-preferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (citation omitted). Further, Suzuki’s list of
solvents is a short one, such that the alternate embodiments are among a
“finite number of identified, predictable solutions,” KSR International Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007), that one of ordinary skill would
have pursued when faced with market pressure or a design need to develop
improved anti-aging cosmetics. Accordingly, we discern no error in the
Examiner’s reliance on Suzuki’s disclosure of water as an extraction solvent.
Fikewise, as to independent claim 41, which recites a “hydroglycolic
extract,” we discern no error in the Examiner’s reliance on Suzuki’s
disclosure of propylene glycol and butylene glycol as extraction solvents.
3
Appeal 2016-007985
Application 11/803,805
See Final Action 2—3 (citing Suzuki 114); see also Spec. 10 (“An extraction
solvent of the type water/glycol is preferred among the hydroglycolic
extracts. A mixture water/butyleneglycol is particularly preferred.”). Thus,
Appellants have not demonstrated any reversible error in the Examiner’s
finding of a prima facie case of obviousness as to the independent claims.
Appellants further argue, however, that their evidence of unexpected
success is sufficient to overcome the Examiner’s prima facie case.
Appellants rely on the Rival Declaration,3 which quantifies FGF-2 levels
after ethanol, methanol, and water extractions, concluding that only the
water extraction is effective in protecting FGF-2 against thermal
degradation. See Appeal Br. 6—7; Rival Decl. 2—3. The Examiner responds
that the Rival Declaration results are “not commensurate in scope” to the
claimed invention, specifically noting that claim 41 recites a hydroglycolic
extract. Ans. 5.4 We agree with the Examiner as to claim 41 and its
dependents, as Appellants fail to point to any evidence or arguments to
establish that using a hydroglycolic solvent would yield unexpected results
over methanol or ethanol extractions. Independent claims 23, 32, and 49, on
the other hand, encompass water extractions. See Appeal Br. 12—14 (Claims
Appendix). The Examiner does not explain why the Rival Declaration is not
commensurate in scope with these claims. As a result, we find that
Appellants’ evidence of unexpected success overcomes the Examiner’s
prima facie case as to claims 23, 32, and 49, and their dependents, but not as
to claim 41 and its dependents.
3 Rule 132 Declaration of Delphine Rival, filed Dec. 18, 2008.
4 The Examiner does not dispute that the Rival Declaration shows a
comparison to the closest prior art.
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Application 11/803,805
Accordingly, we affirm the rejection of claim 41, and reverse the
rejection of claims 23—25, 27, 32—34, 37—39, 49, and 50. Claims 42-48,
which depend on claim 41 and are not argued separately, fall with claim 41.
See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
The rejection of claims 41—48 is affirmed. The rejection of claims
23—25, 27, 32—34, 37—39, 49, and 50 is reversed. No time period for taking
any subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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