Ex Parte Vollhardt et al

Patent Trial and Appeal Board

Oct 12, 2016

11597165 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111597, 165 11/21/2006
23117 7590 10/14/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Juergen H. Vollhardt
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.
4804-4 3679
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
10/14/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN H. VOLLHAR T and
PHILIPPE EMMANUEL MAILLAN 1
Appeal2015-005230
Application 11/597, 165
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to cosmetic
compositions containing protein hydrolysates that are rich in carboxy
terminated proline. The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as DSM IP Assets B.V. (TE
Heerlen, The Netherlands). App. Br. 3.
Appeal2015-005230
Application 11/597, 165
STATEMENT OF THE CASE
Background
The Specification discloses:
The present invention is directed to cosmetic compositions
containing specific protein hydrolysates which are rich in
pro line on one end of the peptide, in particular which are rich in
carboxy terminated proline. The cosmetic compositions are
particularly useful for treating wrinkles, moisturizing the skin
but also for thickening the epidermis, protecting and repairing
the skin's lipid barrier and for hair care compositions.
(Spec. 2: 1-5).
The problem to be solved by the present invention is providing
cosmetic compositions having excellent cosmetic properties
which can usually be achieved by adding protein hy[ d]rolysates
to cosmetic compositions but which have a low or no risk of
causing allergic reactions by consumers. The compositions
should have a favorable balance between cosmetic effects and
risk of skin adverse reactions. ~,.1oreover the invention provides
low odor and low color hydrolysis products, which are
compatible with most cosmetic formulations including low
fragrance containing products.
This problem is solved on the basis of the unexpected finding
that certain protein hydrolysates which have a high content of
peptides with a terminal proline and which up to now were only
used in food applications or similar applications can
advantageously be incorporated into cosmetic compositions.
Cosmetic compositions which contain these protein
hydrolysates have the advantageous properties of cosmetic
compositions containing protein hydrolysates but they do not
cause skin irritation with patients.
Therefore, in its broadest aspect the present invention provides
a cosmetic composition containing a protein hydrolysate which
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Application 11/597, 165
has a high content of peptides with a terminal protein and a
cosmetically acceptable excipient.
(Id. 4:3-18).
"Furthermore is preferred that the protein hydrolysate having a high content
of peptides with a terminal pro line is a protein hydrolysate which is rich in
tripeptides, whereby the tripeptides are rich in pro line at one end of the
peptide." (Id. 5:12-14).
The following rejection is before us to review (Ans. 2): Claims 1-11,
13-17, and 20-28 are rejected under 35 U.S.C. § 103(a) as obvious over
Edens2 and Mahmoud. 3 Claim 1, the sole independent claim, is illustrative
and reads as follows:
1. A topical cosmetic composition in the form of a lotion,
cream, gel, solution, foam, ointment, plaster, suspension,
cleanser, soap or emulsion, the composition comprising
at least one protein hydrolysate having a high content of
peptides with a terminal proline and selected from the group
consisting of a casein hydrolysate, a soy hydrolysate, a gluten
hydrolysate and a barley hydrolysate, and
the composition further contains cosmetic adjuvants and
additives selected from the group consisting of
preservatives/antioxidants, fatty substances/oils, water, organic
solvents, silicones, thickeners, softeners, emulsifiers,
sunscreens, cosmetic actives, antifoaming agents, moisturizers
[sic, moisturizers], fragrances, surfactants, fillers, sequestering
agents, anionic, cationic, nonionic or amphoteric polymers or
2 Luppo Edens et al., WO 03/102195 Al, published Dec. 11, 2003 ("Edens")
3 Mohamed I. Mahmoud, US 4,670,268, issued June 2, 1987 ("Mahmoud")
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mixtures thereof, propellants, acidifying or basifying agents,
dyes, colorants, pigments or nanopigments.
App. Br. Claims Appendix 19.
OBVIOUSNESS
In rejecting claims 1-11, 13-17, and 20-28 for obviousness over
Edens and Mahmoud, the Examiner cited Edens as disclosing "the use of
protein hydrosylates consisting of di-, tri-, and tetra-peptides preferably
having a terminal carboxy proline residue for use in nutritional and non-
medical (i.e. cosmetic) products, among other things." Ans. 2. The
Examiner finds that protein hydrolysates with "terminal prolines are
preferred because they have a better taste and longer biological half-life than
other peptides" and that Edens discloses "liquids (i.e. solutions)" as a useful
form that protein hydrolysate compounds can take. Id. The Examiner
further found that Edens teaches multiple substrates for hydrolysis by
disclosed protein hydrolysates, including "'acid casein ... maize gluten ...
[and] soy."' Id. 3.
The Examiner finds "protein hydrolysate is to be used for its low
antigencity/anti-allergic benefit" but concludes that" ... one would have
been motivated to adjust the concentration with a reasonable expectation for
success in achieving a composition which suitable anti-allergic activity." Id.
4.
The Examiner finds Mahmoud is directed to "nutritional
hypoallergenic formulas" comprising "various protein (whey, soy, etc.)
hydrolysates ... and may comprise a surfactant ... as well as fatty
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substances." Id. 5. Based on the teachings of these references, the Examiner
concludes "it would have been obvious to modify the nutritive formula of
Edens with that of Mahmoud as the adjuvants taught therein are commonly
provided to hypoallergic nutritive compositions." Id. The Examiner finds
that the claims' "requirement that the composition be a 'topical cosmetic'
composition [] is an intended use for the end product" and that the suggested
forms of the composition of Eden "could be used as a topical composition."
Id. Therefore, the Examiner concludes one of ordinary skill would have
found it "obvious ... to use Edens with a reasonable expectation for success
in arriving at a composition comprising a protein hydrolysate and
cosmetically acceptable excipient wherein the protein hydrolysate has a high
content of peptides with a terminal pro line." Id. 6.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prim a f acie case of unpatentability . ...
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
We select claim 1 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner provides
sound fact-based reasoning for combining Edens and Mahoud. We adopt
the fact finding and analysis of the Examiner. Appellants' arguments do not
persuade us that a preponderance of the evidence fails to support the
Examiner's prima facie case as to claim 1.
Appellants argue Edens "does not teach cosmetic applications" or
teach the "composition as a 'topical cosmetic composition."' App. Br. 15.
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Appellants argue Edens does not render the claimed compositions obvious
because "the claimed composition is in a form described in the preamble and
comprises typical cosmetic additives and adjuvants, which renders it
unsuitable for consumption as a nutritional composition." Id. 15-16.
Appellants further argue Edens does not disclose "hydrolysate in the amount
of less than 5% by weight" and "fails to teach the specifically cited
adjuvants and additives for the cosmetic composition." Id. 16. Appellants
argue the adjuvants and additives enumerated in the pending claims are "not
interchangeable with and not suitable for those composed for oral
consumption." Id.
Appellants argue Mahmoud "does not cure the defects of EDENS and,
like EDENS, refers to compositions for oral consumption, as a nutritional
mix." Id. Appellants conclude "the combination of EDENS and
MAHMOUD does not render obvious the topic cosmetic feature of the
claims." Id.
Appellants' arguments do not persuade us that the Examiner erred in
finding that Edens and Mahmoud would have prompted an ordinary artisan
to prepare protein hydrolysate compositions having a high content of
peptides with a terminal proline. \Ve recognize that the Examiner's reason
for cornbining the protein hydrolysates in Eden and the adjuvants of
?v1ahmoud differs from Appellants' reasons for combining these known
compounds. However, that the prior art has a d{{ferent reason or motivation
to combine these components is of no moment as long as there is a sufficient
reason to make the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed.
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Cir. 1996) ("[T]he motivation in the prior art to combine the references does
not have to be identical to that of the applicant to establish obviousness.").
Appellants' argument that Edens and l\lfahmoud pertain to nutritional
mixes is not persuasive because "[i]t is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
See also In re Zierden, 411F.2d1325, 1328, (CCPA 1969) ("[M]ere
statement of a new use for an otherwise old or obvious composition cannot
render a claim to the composition patentable."). Here, a nutritional
composition that is obvious to make is not patentable simply because it is
used for topical cosmetic purposes. This is because "[a]n [] intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates."
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003).
With regard to Appellants' argument that Edens does not disclose
"hydrolysate in the amount of less than 5% by weight" and "fails to teach
the specifically cited adjuvants and additives for the cosmetic composition"
(App Br. 16), we agree with the Examiner "a formulation with 1 % by weight
of the hydrolysate" would have been achieved through practice of ordinary
skill and common sense for the reason provided by the Examiner.4 Ans. 4.
"[W]here the general conditions of a claim are disclosed in the prior art, it is
4 We note that claim 13 expressly encompasses a range of 0.01 to 50 wt.%
hydrolysate, and only claims 14--16 limit the amount of lysate to
formulations of 5 wt.%, 1 wt.%, or 2 wt.% respectively.
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not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants'
have not established that Edens teaches away from use of hydrolysates in
amounts less than 5% or provided any evidence to explain or substantiate
their statement that the adjuvants and additives enumerated in the pending
claims are "not interchangeable with and not suitable for those composed for
oral consumption" or their conclusion that "the combination of EDENS and
MAHMOUD does not render obvious the topic cosmetic feature of the
claims." App. Br. 15-16. Appellants' arguments without more do not
persuade us that one of ordinary skill in the art at the time of the invention
would find the teachings of Edens and Mahmoud unsuitable for Appellants'
claimed purpose of cosmetic compositions or that the Examiner's proposed
adjuvants and additives would function exactly as proposed. Accordingly,
Appellants' attorney argument alone cannot rebut the Examiner's prima
facie case of obviousness. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) ("[A]ttomey argument [is] not the kind of factual evidence that is
required to rebut a prima facie case of obviousness"). Accordingly, we
affirm the Examiner's rejection of claim 1 under Edens and Mahmoud.
Claims 2-11, 13-17, and 20-28 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1-11, 13-17, and 20-28 for
obviousness under 35 U.S.C. § 103(a) over Edens and Mahmoud.
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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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