Ex Parte Stab et al

Patent Trial and Appeal Board

Mar 1, 2018

10985733 (P.T.A.B. Mar. 1, 2018)

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.
10/985,733 11/10/2004 Franz Stab 3321-P30824 4754
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
03/05/2018 EXAMINER
CLARK, AMY LYNN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
03/05/2018 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 FRANZ STAB, RAINER WOLBER,
CHRISTOPHER MUMMERT, LUDGER KOLBE, JAN BATZER,
KERSTIN EGGERS, and ANETTE BURGER
Appeal 2017-000703
Application 10/985,7331
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 82—109 (Final
Act.2 1). Examiner entered rejections under 35 U.S.C. § 101,35 U.S.C.
§§ 102(b)/103, 35 U.S.C. § 103(a) and obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “Beiersdorf AG of
Hamburg, Germany” (App. Br. 3).
2 Office Action mailed December 22, 2014.
Appeal 2017-000703
Application 10/985,733
STATEMENT OF THE CASE
Appellants’ independent claims 82, 98, and 105 are representative and
reproduced below:
82. A cosmetic or dermatological preparation, wherein the
preparation comprises water, an aqueous extract of Radix
Glycyrrhiza inflata that comprises Licochalcone A, and at least
one of a polyol, an antioxidant, and a UV filter substance, and
wherein the preparation is formulated to be suitable for
application to human skin and comprises at least 0.01 wt.% of
Licochalcone A, based on a total weight of the preparation.
(App. Br. 28.)
98. A cosmetic or dermatological preparation, wherein the
preparation is present as an emulsion, has a pH of from 4.0 to
6.5, and comprises an aqueous extract of Radix Glycyrrhiza
inflata that comprises Licochalcone A, water, glycerol, and at
least one of an antioxidant and a UV filter substance, and
wherein the preparation is formulated to be suitable for
application to human skin and comprises Licochalcone A in a
concentration which renders the preparation effective for
treating rosacea.
(Id. at 30.)
105. A cosmetic or dermatological preparation, wherein the
preparation is present as an emulsion, comprises an aqueous
extract of Radix Glycyrrhiza inflata that comprises
Licochalcone A, water, glycerol, and at least one of a UV filter
substance and a thickener, and wherein the preparation has a pH
of from 4.0 to 6.5, comprises at least 0.01 wt. % of
Licochalcone A, and is effective for treating rosacea.
(Id. at 31.)
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Application 10/985,733
The claims stand rejected as follows:
Claims 82—109 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Mahaffy.3
Claims 82—109 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Tom Dieck et al.4
Claims 82—95, 98—101, 103, and 105—107 stand rejected under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Oto,5 as evidenced by Bikowski.6
Claims 82—109 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Oto and Avr’e.7
Claims 82 and 86—97 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Obviousness-type Double Patenting'.
Appellants expressly state that the obviousness-type doubles patenting
“rejections are not presented for review” (App. Br. 27; see Ans. 20).
Therefore, we have not considered the merits of these rejections. The
3 Mahaffy, US 7,799,256 B2, issued Sept. 21, 2010.
4 Tom Dieck et al., US 8,470,349 B2, issued June 25, 2013.
5 Oto, et al., JP 2002363054, published Dec. 18, 2002 (as translated by FLS,
Inc., PTO 11-1219 (January 2011)).
6 Bikowski, The use of therapeutic moisturizers in various dermatologic
disorders, 68 Chatham 3 (2001) (Abstract only).
7 Avr’e Skin Care: Dermatology Dictionary, http://www.avreskincare.com/
misc/about skincare/cosmetic ingredients.html, pp. 23—24, last accessed Oct.
8,2010.
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Application 10/985,733
obviousness-type double patenting rejections on this record are summarily
affirmed.
FACTUAL FINDINGS (FF)
FF1. Oto:
relates to a filaggrin synthesis promoting agent which can
promote synthesis of filaggrin; an improving enhancing agent
for a retaining moisture function for the stratum comeum which
can essentially improve and/or enhance the moisture retaining
function for the stratum comer through the filaggrin synthesis
promotion function; and a stratum comeum free amino acid
amount increasing agent which can increase the amount of free
amino acid on the stratum comeum which consists mainly of a
natural moisture factor through the filaggrin synthesis
promotion action.
(Oto 11.)
FF 2. Oto’s “filaggrin synthesis promotion agent, stratum comeum
moisture retention function improving and enhancing agent and the stratum
comeum free amino acid amount increasing agent are characteristic in that a
licorice root extract is contained as an active ingredient” (Oto 110).
FF 3. Oto discloses that “plants belonging to . . .[, inter alia,] Glychyrrhiza
inflata should be used as the [licorice root] extract starting materials” (Oto
114).
FF 4. Oto’s “licorice root extract is an extracted extract from the root part
of licorice obtained using a polar solvent as an extraction solvent” (Oto
111).
FF 5. Oto discloses that, inter alia, “water” is “a suitable extraction
solvent” (Oto 117).
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FF 6. Oto exemplifies a method for obtaining a preparation comprising an
aqueous extract of Glycyrrhiza inflata, wherein:
300 g of a coarse broken product of the root part of a mixture of
Glychyrrhiza glabra and Glychyrrhiza inflata [was placed] in
2000 mL of an extraction solvent [(e.g., water)] and maintained
[] for 3 hours at 70 °C [with] gentl[e] stirring . . filtered . . .
[the filtrate was then] concentrated . . . under reduced pressure
at 40 °C, [and] dried [] under reduced pressure using a drying
device [to] obtained a licorice root extract.
(Oto 1 53 (Manufacturing Example 1); see Ans. 2; see also Ans. 18
FF 7. Oto discloses a cosmetic or dermatological preparation, toilet water,
comprising glycerol, vitamin E, an antioxidant derived from parsley, licorice
root extract (prepared according to Oto’s Manufacturing Example 1) at a
concentration of 1 gram per 100 grams of the total composition, and water
(Oto 176; see FF 6; see also Ans. 2 (Examiner finds that Oto’s licorice root
extract “reads on [Appellants’] aqueous extract of Glycyrrhiza inflata,”
Oto’s “glycerin ... is synonymous with [Appellants’] glycerol,” Oto’s
“parsley origin antioxidant. . . reads on [Appellants’] antioxidant,” and
Oto’s “vitamin E . . . reads on [Appellants’] UV filter substance”)).
FF 8. Examiner finds, absent evidence to the contrary, that Oto’s “aqueous
extract of Glycyrrhiza inflata . . . inherently comprises Licochalcone A in the
amounts claimed and [Oto’s] composition . . . inherently has a pH of 4-6.5”
(Ans. 2). (Examiner finds that “[i]t would [have been] expected that the
water extract [of FF6] taught by Oto would at the very least have 0.0001%
Licochalcone A”).)
FF 9. Examiner finds:
In the alternative, even if the claimed aqueous extract of
Glycyrrhiza inflata is not identical to extract taught by Oto with
regard to some unidentified characteristics and/or the claimed
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pH of the composition is not identical, the differences between
that which is disclosed and that which is claimed are considered
to be so slight that the extract and composition taught by Oto is
likely to intrinsically possess the same characteristics (including
with respect to the instantly claimed functional effects) of the
claimed particularly in view of the similar characteristics which
they have been shown to share.
(Ans. 2-3.)
FF 10. Examiner relies on Bikowski to establish that a composition
comprising a “moisturizing function ... is useful for treating rosacea” (Ans.
2; see Bikowski, Abstract (“Moisturizers can serve as important adjunctive
therapeutic modalities for patients with various dermatologic disorders,
including . . . rosacea”)).
FF 11. Examiner relies on Avr’e to disclose “that both zinc oxide and
titanium doxide are common ingredients used in cosmetic as sun blocking
ingredients and that xanthan gum is a commonly used thickener and
emulsion stabilizer” (Ans. 3).
The rejection over Oto as evidenced by Bikowski'.
ISSUE
Does the preponderance of evidence on this record support:
Examiner’s finding that Oto as evidenced by Bikowski teaches, or in the
alternative, Examiner’s conclusion that Oto as evidenced by Bikowski
makes obvious, Appellants’ claimed invention?
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ANALYSIS
Examiner finds that Oto, as evidenced by Bikowski, teaches or, in the
alternative, makes obvious Appellants’ claimed invention (Ans. 2—3). We
are not persuaded.
Appellant’s independent claim 82 requires the preparation to, inter
alia, comprise “at least 0.01 wt. % of Licochalcone A” (App. Br. 28).
Appellant’s independent claim 98 requires, inter alia, that the preparation is
“an emulsion” {id. at 30). Appellant’s only other independent claim, claim
105, requires, inter alia, that the preparation is “an emulsion” and
“comprises at least 0.01 wt. % of Licochalcone A” {id. at 31).
Initially, we note that Examiner did not identify a disclosure in Oto
that teaches or makes obvious a toilet water preparation in the form of an
emulsion {see generally Ans. 2—3 and 17—19). Nor does Examiner rely upon
a disclosure of an emulsion in Oto {see id.). Examiner further failed to
establish an evidentiary basis on this record to support a conclusion that, at
the time of Appellants’ claimed invention, a person of ordinary skill would
have understood Bikowski to suggest formulating Oto’s toilet water
composition as an emulsion {cf FF 10). Thus, Examiner failed to establish
that Oto alone or in combination with Bikowski teaches or makes obvious
the subject matter of Appellants’ claims 83—85, 98—101, 103, and 105—107,
which require that the claimed composition is an emulsion.
Further, on this record, Examiner asserts that Oto’s licorice root
extract “would at the very least [comprise] 0.0001% Licochalcone A” (FF
8). Assuming, arguendo, Examiner’s assertion regarding the Licochalcone
A concentration in Oto’s licorice root extract is correct — Oto’s toilet water
composition, as relied upon by Examiner comprises 1 gram of licorice root
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Application 10/985,733
extract, which according to Examiner comprises, at the very least, 0.0001%
Licochalcone A, per 100 grams of composition, which fails to teach or make
obvious a composition comprising at least 0.01 wt.% of Licochalcone A.
Thus, Examiner failed to establish that Oto alone or in combination with
Bikowski teaches or makes obvious the subject matter of Appellants’ claims
82—95, 99, 100, and 105—107, which require the claimed composition to
comprise at least 0.01 wt.% of Licochalcone A.
As Appellants make clear, “[i]nherency[] may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
omitted). See App. Br. 15. Further, “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). See App. Br. 7.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support:
Examiner’s finding that Oto as evidenced by Bikowski teaches, or in the
alternative, Examiner’s conclusion that the Oto as evidenced by Bikowski
makes obvious, Appellants’ claimed invention.
The rejection of claims 82—95, 98—101, 103, and 105—107 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Oto as evidenced by Bikowski is reversed.
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The rejection over the combination of Oto andAvr’e:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Based on the combination of Oto and Avr’e, Examiner concludes that,
at the time Appellants’ invention was made, it would have been prima facie
obvious to combine Oto’s toilet water composition “with xanthan gum and
titanium dioxide or zinc oxide, as [disclosed] by” Avr’e, because all of the
reagents are useful “in cosmetic or dermatological preparations” (Ans. 3).
We are not persuaded.
On this record, Examiner has, at best, identified various reagents that
are known to be useful in cosmetic or dermatological formulations.
Obviousness[, however,] requires more than a mere
showing that the prior art includes separate references covering
each separate limitation in a claim under examination. KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167
L.Ed.2d 705 (2007). Rather, obviousness requires the
additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art
elements in the normal course of research and development to
yield the claimed invention. Id. at 421, 127 S.Ct. 1727.
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011). As Appellants explain:
Clearly, the mere fact that a face cream may contain zinc oxide
or titanium oxide as UV filter substance (and/or may contain a
polymeric thickener) does not mean that it is obvious to
incorporate these substances in a "face toilet", i.e., a completely
different form of cosmetic preparation, which only has in
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common with the face cream that it also contains an aqueous
extract of Radix Glycyrrhiza inflata.
(App. Br. 26.) We agree with Appellants and find that Examiner failed to
establish an evidentiary basis on this record to support a conclusion that a
person of ordinary skill in this art would have found it prima facie obvious
based on Avr’e to add xanthan gum and titanium dioxide or zinc oxide to
Oto’s toilet water composition (cf Ans. 3 4).
In addition, Examiner failed to establish that Avr’e makes up for the
deficiencies in Oto discussed above.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 82—109 under
35 U.S.C. § 103(a) as unpatentable over the combination of Oto and Avr’e is
reversed.
Statutory Subject Matter.
ISSUE
Does the evidence of record support Examiner’s finding that
Appellants’ claimed invention is directed to non-statutory subject matter?
ANALYSIS
Examiner finds that the various reagents in the composition set forth
in Appellants’ claimed invention are each naturally occurring (see Ans. 7—
17). Examiner reasons that Appellants’ “compositions are not markedly
different from their closest naturally occurring counterparts] because there
is no indication that extraction has caused the Licochalcone A of Appellants’
claimed compositions to have any characteristics that are different from the
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Application 10/985,733
naturally occurring Licochalcone A in Glycyrrhiza inflata” (Ans. 7). In
addition, Examiner finds that
there is no indication that the amounts of Licochalcone A and
aqueous extracts of Glycyrrhiza inflata claimed in the
compositions result in a markedly different characteristic for the
composition as compared to the Licochalcone A naturally
found in Glycyrrhiza inflata plants and of the aqueous extracts
of Glycyrrhiza inflata found naturally in [] Glycyrrhiza inflata
plants.
(Id.) Examiner further finds that mixing the aqueous extract of Glycyrrhiza
inflata that comprises Licochalcone A “with water, polyols, antixoidants,
UV filter substances, and thickeners does not markedly change the
characteristics of any component, [because] the components continue to
have the same properties in the mixture as they had alone” (id.) and “there is
no indication that [Appellants’] claimed pH . . . results in a markedly
different characteristic for the composition as compared to the Licochalcone
A in Glycyrrhiza inflata with [a] naturally occurring pH” (id. at 15). See
e.g., Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130—31
(1948). Stated differently, although Appellants’ claimed composition may
mix naturally occurring components in a manner that does not occur in
nature, there is no indication that mixing these components in the recited
amounts changes their structure, function, or other properties in any marked
way. Thus, when viewed as a whole, each component of Appellants’
claimed invention is a product of nature and the claimed mixture, or
composition, does not display markedly different characteristics when
compared to the naturally occurring counterparts.
Appellants fail to establish that the isolation of naturally occurring
components (i.e., an aqueous extract of Glycyrrhiza inflata) from a natural
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source (i.e., Glycyrrhiza inflata) changes the structure, function, or other
properties of the naturally occurring components in any marked way.
Therefore, we are not persuaded by Appellants’ contention that “Examiner
has not provided any evidence” “that aqueous extracts of Glycyrrhiza inflata
occur in nature” (Reply Br. 2).
Appellants fail to establish that any of the various naturally occurring
components of Appellants’ claimed invention would not be suitable for
application to human skin or that a mixture of the naturally occurring
components in the concentrations set forth in Appellants’ claimed invention
changes the structure, function, or other properties of the naturally occurring
components in any marked way. Therefore, we are not persuaded by
Appellants’ contentions relating to a “cosmetic or pharmaceutical
preparation which has been formulated to be suitable for application to
human skin (and comprises at least 0.01 wt% of Licochalcone A) or that
Appellants’ mixture “is significantly different from a random mixture of
naturally occurring substances which have been blended in random ratios
and are present in the mixture in random concentrations,” “with a random
pH” (Reply Br. 3^4 (emphasis omitted)). Appellants’ claims do not require
any particular cosmetic or pharmaceutical benefit (see id. at 4 (Appellants
concede that “independent claim 82 does not even recite any specific
cosmetic or pharmaceutical benefit of the claimed preparation”)). Therefore,
we are not persuaded by Appellants’ contentions relating to a cosmetic or
pharmaceutical benefit or that the “concentration of Licochalcone A” is
significant for any particular purpose (see id. at 3; see also id. at 3—5;).
Although, as Appellants contend, it might be necessary to add a buffer
to certain mixtures of naturally occurring components to bring such a
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mixture into a “pH . . . range which is acceptable for application to skin,”
Appellants fail to establish an evidentiary basis on this record to support a
conclusion that a buffer would be required for a mixture of naturally
occurring components as set forth in the genus of compositions
encompassed by Appellants’ claimed invention (see Reply Br. 5).
Therefore, we are not persuaded by Appellants’ contentions regarding pH.
Appellants fail to provide an evidentiary basis on this record to
support their contention that “it is well known that in order for [titanium
oxide and zinc oxide]... to act as UV filters they have to be of a suitable
particle size” and “Examiner has not provided any evidence that titanium
oxide and zinc oxide which occurs in nature has a particle size which renders
these substances (without further processing) suitable as a UV filter
substance (in cosmetics)” (Reply Br. 5 (emphasis omitted)). Nevertheless,
Appellants concede that the particle size requirements of titanium oxide and
zinc oxide for use as UV filters in the cosmetic industry are well known in
this art (id.). Thus, as Appellants recognize, any modification necessary to
prepare naturally occurring titanium oxide and zinc oxide for use as a UV
filter in the cosmetic industry is no more than what is well-known,
conventional, and routine in the industry and, thereby, fails to support a
finding of patent eligibility. See Genetic Techs. Ltd. v. Merial L.L. C., 818
F.3d 1369, 1376 (Fed. Cir. 2016) (Appellants “must provide something
inventive, beyond mere well-understood, routine, conventional activity”).
CONCFUSION OF FAW
The evidence of record supports Examiner’s finding that Appellants’
claimed invention is directed to non-statutory subject matter. The rejection
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of claims 82, 94, and 97 under 35 U.S.C. § 101 is affirmed. Claims 86—93,
95, and 96 are not separately argued and fall with claim 82.
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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