Ex Parte SCHULZ et al

Patent Trial and Appeal Board

Dec 10, 2015

11839384 (P.T.A.B. Dec. 10, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111839,384 08/15/2007
13897 7590 12/14/2015
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Jens SCHULZ
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.
3321-P32542 8423
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/14/2015 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 JENS SCHULZ, RAINER KROEPKE, ANDREAS SCHEPKY,
JULIA ECKERT, URTE KOOP, and SABINE FAENGER1
Appeal2013-003763
Application 11/839,384
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition. The Examiner rejects the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Beiersdorf AG of
Hamburg, Germany. (App. Br. 4.)
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Application 11/839,384
STATEMENT OF THE CASE
The Specification explains that "L-Camitine acts [as] a carrier
molecule in the transport of long-chain fatty acids through the inner
mitochondrion membrane into the mitochondrial matrix area, while medium
and short-chain fatty acids can also pass through it without an esterification
with L-camitine." (Spec. 10: 23-25.)
Claims 31-60 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 31 is representative of the claims on
appeal, and reads as follows:
31. A cosmetic combination product, wherein the product
comprises
(a) one or more dietary supplements; and at least one of:
(b) one or more cosmetic preparations for topical
application to human skin, and
( c) one or more patches for adhesion to human skin, and
wherein each of (a) to ( c) comprises camitine.
(App. Br. 18, Claims Appendix.)
Appellants seek review of the following rejections:
I. claims 31-34, 36, 38, 40, 43, 45, 46, 49, 50, 53-55, and 57-59 under
35 U.S.C. § 103(a) as unpatentable over Hamilton2 in view of Sole3
and Trejo4 (App. Br. 7-15);
II. claims 31-34, 36-38, 40, 42, 43, 45, 46, 48-50, 53-55, and 57-59
under 35 U.S.C. § 103(a) as unpatentable over Hamilton in view of
Sole and Trejo and Goldman5 (App. Br. 15);
2 Hamilton, US 2002/0044913 Al, published Apr. 18, 2002.
3 Sole et al., US 6,080,788, issued June 27, 2000 (hereinafter "Sole")
4 Trejo et al., US 2004/0258645 Al, published Dec. 23, 2004 (hereinafter
"Trejo").
5 Goldman, US 6,056,971, issued May 2, 2000.
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Application 11/839,384
III. claims 31-38, 40, 42, 43, 45-47, 49, 50, 52, 53-55, and 57-60 under
35 U.S.C. § 103(a) as unpatentable over Hamilton in view of Sole and
Trejo and Fantuzzi6 (App. Br. 16); and
IV. claims 31-34, 36, 38, 39, 40, 43--46, 49, 50, 53-55, and 57-59 under
35 U.S.C. § 103(a) as unpatentable over Hamilton in view of Sole and
Trejo and LaPrade7 (App. Br. 16).
There are four obviousness rejections (!.-IV.), and each is premised,
in whole or in part, on the teachings of Hamilton, Sole, and Trejo.
Appellants offer specific arguments only with respect to claim 31, and argue
the other rejected claims by virtue of their dependency on claim 31. (See
App. Br. 15-16.) Accordingly, we review this rejection by considering
claim 31 alone; claims 32-60 rise or fall with claim 31. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Obviousness over Hamilton, Sole, and Trejo
According to the Examiner
The prior art teaches that both topical camitine in cream or
patch form and oral camitine in a dietary supplement form are
used to restore of age-related mitochondria function .... [And]
Trejo et al. teach[ es] combining an oral dietary supplement and
a hair or skin care product to take advantage of additive and/or
synergistic effects of the products.
(Ans. 4.) The Examiner concludes that it is obvious to combine two
compositions where each is used for the same purpose in this case, "using L-
camitine to restore/correct mitochondria function/energetics, particularly as
6 Fantuzzi et al., US 2005/0287206 Al, published Dec. 29, 2005 (hereinafter
"Fantuzzi").
7 LaPrade et al., US 6,159, 497, issued Dec. 12, 2000 (hereinafter
"LaPrade").
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Application 11/839,384
it relates to aging" to form a third product that will also restore
mitochondrial energetics. (Ans. 10, see also 4.) Based on the teachings of
Trejo the Examiner concludes that "it is reasonable to expect that internally
administered oral (i.e. dietary products) can be advantageously combined
with topical formulations to restore and correct age-related deficiencies in
mitochondria function and energetics" in cells. (Ans. 11.)
Appellants contend that the combination of Hamilton, Sole, and Trejo
does not establish a prima facie case of obviousness. (App. Br. 5-15.)
The issue is: Does the preponderance of evidence of record support
the Examiner's conclusion that the claimed combination product is obvious?
Findings of Fact
We adopt the Examiner's findings and analysis concerning the scope
and content of the prior art. The following facts are repeated for reference
convemence.
FF 1. Hamilton teaches the use of carnitine in a cosmetic composition "to
support skin metabolism and ameliorate the appearance of aging."
(Hamilton, Abstract; see Ans. 3.)
FF2. Hamilton teaches that mitochondria "are the energy powerhouses of
the cells. Mitochondria are responsible for the production of ATP and
are present in relatively high numbers in essentially all cells of the
body." (Hamilton i-f 23 (emphasis added); see Ans. 3.) "[C]arnitine
... contribute[ s] to restoration of age-related mitochondria function
and metabolic activity in older people. This contributes to
improvements in general skin health by supporting the epidermis and
underlying structures, including immune system function, circulation,
and muscles." (Hamilton i-f 28 (emphasis added); see Ans. 3.)
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FF3. Hamilton teaches that the cosmetic composition can contain
L-camitine. (See Hamilton i-f 70; see Ans. 3.)
FF4. Sole teaches "a dietary supplement comprising L-Camitine (or its
functional analogues such as AcetylCamitine or Proprionyl-1-
Camitine ), ... for the correction of the abnormality in mitochondrial
energetics in cardiac failure and certain other diseases." (Sole,
Abstract; see Ans. 3.) Sole identifies "four critical organ systems that
are especially likely to fail in aging and critical illness. They are the
cardiovascular, central nervous, musculoskeletal and immune
systems." (Sole 1: 19-22 (emphasis added); see Ans. 4.)
FF5. Sole teaches that "certain micronutrients and amino acids also
influence mitochondrial function in general. For example, camitine
improves mitochondrial DNA transcription and translation in aged
animals." (Sole 2: 30-32; see Ans. 12.)
FF6. Trejo teaches personal care products in the form of a kit that contains
a dietary supplement in conjunction with a topically applied
formulation. (See Trejo i-f 7, see also n 9, 32, and 80; see Ans. 4, 14.)
FF7. Trejo teaches that the kit compositions "are capable of providing
additive and/or synergistic skin and/or hair benefits." (Trejo i-f 32; see
Ans. 10-11.)
FF8. Trejo teaches the addition of camitine (vitamin Bt) to anti-wrinkle or
anti-atrophy actives. (Trejo i-f 79-80; Ans. 14-15 ("[ s ]ince camitine
(i.e. vitamin Bt) is a B vitamin, its inclusion in oral compositions is
suitable because TREJO teaches the oral compositions of his kit
comprise Vitamin Band derivatives (TREJO-i-fs 48 and 49)").)
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Principle of Law
It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be
used for the very same purpose .... [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Analysis
After considering the evidence and the arguments, we conclude the
evidence favors the Examiner's conclusion of obviousness. Accordingly, we
adopt the Examiner's reasoning (see Grounds of Rejection, Ans. 3-5; see
FFs 1-8), and agree that the Examiner properly found Appellants' arguments
unpersuasive (see Response to Argument, Ans. 10-16). We address
Appellants contentions below.
Appellants contend that the Examiner has not made out a prima facie
case as the references are from an unrelated field and thereby constitute non-
analogous art. (App. Br. 7-11.)
We are not persuaded that the subject matter of the references is
unrelated. As explained by the Examiner both Hamilton and Sole are
directed to "using L-camitine to restore/correct mitochondria
function/energetics, particularly as it relates to aging." (Ans. 10.) Hamilton
recognizes that mitochondria are present in all cells of the body and function
as the powerhouse of the cells. (FF 2.) Hamilton as well as Sole recognizes
that mitochondrial function can be improved by the use of camitine. (See
FFs 2, 4, and 5.) Thus, regardless of how the substance is applied to cells so
long as the cells can take up camitine the expected result is that it will
improve the function of the mitochondria within the cells. We agree with
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the Examiner's position that based on carnitine's disclose purpose in both
Hamilton and Sole the two references are not unrelated.
We are also not persuaded by Appellants contention that the
references represent non-analogous art. Two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992).
As explained by the Examiner the references are from the same field of
endeavor because both are directed at improving the function of the cellular
powerhouse, the mitochondria. Regardless of the location of contact
"externally and internally [in both references they are still] trying to solve
the same problem" which is improving the energetics of the aged
mitochondria. (See Ans. 11, see also 12 ("'central effect of nutrition in all
these systems can be unified into its influence on mitochondrial energetics.
That is: inadequate nutritional substrate is a cause of impaired cell
energetics"' (emphasis omitted); FFs 1-5.)
Appellants contend that the references differ in the route of carnitine
administration. (App. Br. 7-14.)
We are not persuaded that the route of administration affects the
ability of carnitine to improve mitochondrial function once carnitine enters
the cell. (See FFs 1, 2, 4, and 5.) We agree with the Examiner conclusion
that the combination of Hamilton and Sole would render the combination
product prima facie obvious based on the disclosure that carnitine in both
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Application 11/839,384
topical and oral supplement is useful for the purpose of improving
mitochondrial function. In re Kerkhoven, 626 F.2d at 850. (See Ans. 4.)
Appellants err in attacking the references individually, as the rejection
is based on a combination of references. See In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986). The references cannot be read in isolation, but
for what they teach in combination with the prior art as a whole. See id.
The Examiner admits that neither Hamilton nor Sole "teach a combination
product comprising an oral dietary supplement and a topical composition."
(Ans. 4.) Trejo on the other hand teaches combination products containing
vitamins in both lotions and orally ingested compounds that also include the
use of camitine as an optional ingredient for the anti-wrinkle or anti-atrophy
actives. (FF 8.) We note that claim 31 is not limited to camitine only and
can contain additional ingredients. Thus, in the present circumstance the
teaching that camitine is an optional ingredient in the combination products
is sufficient to establish a prima facie showing of obviousness.
We also agree with the Examiner that Trejo's teaching further
motivates the combination as the reference explains that "vitamin Band its
derivatives are suitable for oral consumption ... [and] that camitine is a B
vitamin, specifically vitamin Bt (i.e. a vitamin B compound; ... ). TREJO
also teaches inclusion of camitine (i.e. vitamin Bt) in the topical formulation
as an anti-wrinkle active/anti-atrophy active." (Ans. 14.) We conclude that
the preponderance of the evidence of record support the Examiner's
conclusion that the camitine containing combination product as claimed is
obvious.
Appellants contend that Trejo has not exemplified camitine in their
composition. (See App. Br. 13; Reply Br. 3 ("TREJO mentions camitine
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Application 11/839,384
only as one of many optional components of the topical composition and
neither teaches nor suggests that camitine should also be included in the
dietary supplement").)
We are not persuaded. "All of the disclosures in a reference must be
evaluated for what they fairly teach one of ordinary skill in the art."
Application of Boe, 3 5 5 F .2d 961, 965 ( CCP A 1966). It is well settled that
disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or even non-preferred embodiments. See In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Here, the Examiner explained
that "camitine (i.e. vitamin Bt) is a B vitamin, [and] its inclusion in oral
compositions is suitable because TREJO teaches the oral compositions of his
kit comprise Vitamin Band [its] derivatives." (Ans. 14-15, FF 8.) We
agree with the Examiner conclusion that the combination of Hamilton, Sole,
and Trejo renders the claimed camitine containing combination product of
claim 31 obvious.
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 31. As Appellants do not
argue the claims separately, claims 32-60 fall with claim 31. 37 C.F.R.
§ 41.37 (c)(l)(iv).
SUMMARY
We affirm the rejection of all claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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cdc
AFFIRMED
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