Ex Parte Walke et al

Patent Trials and Appeals Board

Apr 29, 2019

12105957 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/105,957 04/18/2008
32425 7590 05/01/2019
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
Bob Walke
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.
MKAY:196US/ 10805331 6740
EXAMINER
THOMAS, TIMOTHY P
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BOB WALKE, CRISTI GOMEZ, TIFFANY C. FLORENCE, and
MICHELLE D. HINES
Appeal2018-002505
Application 12/105,957 1
Technology Center 1600
Before JEFFREY N. FREDMAN, ELIZABETH A. LA VIER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of reducing fine lines and wrinkles, which have been rejected as
anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Odor neutralizing ingredients have been used to reduce or mask
malodorous cosmetic compositions." (Spec. ,r 4.) "[T]he inventors have
identified certain aromatic chemical compounds that are cosmeceutically
1 Appellants identify the real party in interest as Mary Kay Inc. (Appeal Br.
3.)
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effective in treating skin or skin cells or preventing skin or skin cell damage
while also being capable of reducing, masking, or preventing the intensity of
malodorous smelling cosmetic compositions." (Id. ,r 6.)
Claims 49, 50, 55, 57, and 59---62 are on appeal. Claim 49 is
representative and reads as follows:
49. A method of reducing fine lines or wrinkles comprising
topically applying to skin in need thereof a composition
comprising an effective amount of ethyl linalool and 1,4-
dioxacycloheptadecane-5, 17-dione,
wherein the composition is a leave-on cream, lotion, or
ointment,
wherein ethyl linalool reduces oxidation of the skin, 1,4-
dioxacycloheptadecane-5, 17-dione reduces MMP-9 and COX-2
activity in the skin, and
wherein topical application of the composition to the skin
in need thereof reduces fine lines or wrinkles in the skin.
(Appeal Br. 23.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 49, 50, 55, 57, 59, and 61 under 35 U.S.C. § I02(b) as
anticipated by, or in the alternative under 35 U.S.C. § I03(a) as unpatentable
over, Frater. 2
2 Frater et al., US 6,297,211 Bl, issued Oct. 2, 2001.
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Claims 49, 50, 57, and 60-62 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over
Toyomasa, 3 as evidenced by Kim. 4
Claims 55 and 59 under 35 U.S.C. § 103(a) as unpatentable over
T oyomasa, as evidenced by Kim.
Claims 49, 50, 55, 57, and 59---62 under 35 U.S.C. § 103(a) as
unpatentable over Frater, Toyomasa, Kim, Shu, 5 McCullough, 6 and Lu. 7
DISCUSSION
The Claims are Not Anticipated or Rendered Obvious by Frater
The Examiner finds that Frater teaches odorant compositions that
include a mixture of compounds of lb. (Final Action 6). The Examiner
further finds that Frater teaches mixing an effective amount of composition
lb with a perfume or cosmetic base. (Id.) The Examiner notes that Example
4 provides such an odorant composition, where it includes ethyl linalool in
3 Toyomasa et al., JP 2001-207188A, published July 31, 2001. The
Examiner relies on a computer translation of Toyomasa. We also rely on
that translation.
4 Kim et al., The effects of Musk Ton peroxisome proliferator-activated
receptor [PPAR]-a activation, epidermal skin homeostasis and dermal
hyaluronic acid synthesis; 282 Arch Dermatol. Res. 273-82 (2006).
5 Shu et al., Activation of PP AR a or y Reduces Secretion of Matrix
Metalloproteinase 9 but Not Interleukin 8 from Human Monocytic THP-1
Cells, 267 Biochem. & Biophys. Res. Comm. 345--49 (2000).
6 McCullough et al., Prevention and Treatment of Skin Aging; 1067 Ann.
N.Y. Acad. Sci. 323-31 (2006).
7 Lu et al., Oxidative Stress Augments the Production of Matrix
Metalloproteinase-a, Cyclooxygenase-2 and Prostaglandin E2 through
Enhancement of NF-KB Activity in Lipopolysaccharide-Activated Human
Primary Monocytes, 175 J. Immunol. 5423-29 (2005).
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50/1250 parts by weight (or 4%) and ethylene brassylate in 5/1250 parts by
weight (or 0.4%), and mixture lb in 10/1250 parts by weight. (Id. at 6-7.)
The Examiner finds that application to skin "is implied by the teaching of
this [composition] as a cosmetic article and as a perfume." (Id. at 7.) The
Examiner notes that "lotion" is not a term which defined by Appellants'
Specification, and that under the broadest reasonable construction, perfume
is construed to be a lotion as required by the claim. (Id. at 8, 11.)
In addition to the foregoing, the Examiner further finds that the
application to skin in need or reducing fine lines is implied by Frater' s
disclosure because Frater' s odorant composition is taught to be applied to
the skin, which includes face or hands. (Final Action 7.) The Examiner
contends, however, that if it is not deemed that Frater implicitly teaches
applying the odorant composition to skin in need or reducing fine lines, such
would have been obvious because one or ordinary skill in the art would have
found it obvious to splash or spray the perfume composition of Example 4
on the face or hands where fine lines are present in a desire to cover a
sufficient skin area for a good scent effect of the perfume. (Id.)
We disagree with the Examiner's factual findings and conclusion that
claim 49 is anticipated or rendered obvious by Frater. We agree with the
Examiner that the amounts of ethylene linalool and ethylene brassylate in the
composition of Example 4 would meet the effective amount requirement of
the claims in light of the Specification disclosure of effective amounts (see
Frater col. 11 Table (noting the composition of a "crisp-flowery perfume"
with ingredients listed in parts by weight in 1/1250), if this composition
were applied to skin with fine lines and wrinkles.
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In particular, the Specification teaches that the ingredients need only
be in the composition in concentrations of as little as about 0.0001 % by
weight (Spec. 19-20), and demonstrates that ethylene brassylate at 0.001 %
exhibits COX-2 inhibition and at 0.01 % exhibits MMP9 inhibition (Spec. 26
(Table 3), and that ethylene linalool at 0.001 % exhibits antioxidant
properties (Id. at (Table 4)). In Example 4, as the Examiner noted, the
amount of ethylene brassylate present in the composition is 4% by weight
and the amount of ethylene linalool in the composition is 0.4% by weight.
(Frater 11 :5---65 (Example 4).) Thus, one of ordinary skill in the art would
have expected this composition, if applied to skin with fine lines, would
result in the reduction of fine lines, absent evidence to the contrary. "The
general principle that a newly-discovered property of the prior art cannot
support a patent on that same art is not avoided if the patentee explicitly
claims that property." Abbott Labs. v. Baxter Pharm. Prod., Inc., 471 F.3d
1363, 1367-68 (Fed. Cir. 2006) (holding that discovery of a property
inherent to a prior art process does not render that process patentable, even if
the prior art did not appreciate the property).
The problem is that we do not find Frater to teach, explicitly or
implicitly, topical application to skin with fine lines or wrinkles. On the one
hand, we disagree with Appellants that the Example 4 composition of Frater
is combined with other ingredients prior to application to skin (Appeal Br.
7). As the Examiner notes, Frater teaches that the "odorant mixture in
accordance with the invention does not lead to skin irritations or
discoloration." (Frater 10:17-19.) As the Examiner indicates (Ans. 4--5;
Final Action 6-8), Frater teaches application of compositions that include lb
as a perfume (Frater 4:50---60), and, in fact, teaches Example 4 that includes
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ethyl linalool and ethylene brassylate is a perfume composition (id. at 11 :5-
8). Thus, while Example 4 does indicate in the title that the odorant
prepared can be used in Cosmetic Articles and Body Care Agents (Appeal
Br. 7), we determine that the teachings as a whole indicate that the
composition prepared can be used alone as a perfume composition, and
without causing skin irritations or discoloration.
However, while the Examiner contends that the perfume of Example 4
would be applied "to skin, such as the face or hands, i.e., skin in need of
reducing fine lines" (Final Action 7), we note that perfumes can be applied
to the inside of wrist, behind the ear, or even behind the knee. In short, the
mere fact that Example 4 is a perfume and the fact that perfume is applied to
skin does not teach its application to the face or hands that has fine lines in
need of fine line reduction. Our reviewing court's decision in Perricone v.
Medicis Pharmaceutical Corporation, 432 F.3d 1368 (Fed. Cir. 2005)
dictates that we reverse the Examiner's anticipation finding.
In Perricone, the court found claims directed to a method for treating
skin sunburn comprising topically applying to the skin sunburn not to be
anticipated by a prior art reference that taught a cosmetic composition for
topical application to skin where the composition included the claimed
ingredients in the concentrations claimed. 432 F.3d 1376-79. The court
explained that "[ s ]kin sunburn is not analogous to skin surfaces generally"
and the prior art reference "does not disclose topical application to skin
sunburn," and "is silent about any sunburn prevention or treatment benefits,
not to mention the mechanisms underlying such uses." Id. at 1379.
In that same case, the court found, on the other hand, that claims
which merely require application of the composition to skin that is aged or
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aging to be anticipated because the patented Specification taught that all skin
undergoes the natural aging process. Perricone, 432 F.3d at 1378-80. The
Examiner contends in the Answer that fine lines are "ubiquitous to skin."
(Ans. 11.) However, the Examiner has failed to establish evidence to that
effect because not all skin necessarily has wrinkles. Thus, we cannot
conclude that claims here are similar to those the court deemed anticipated
in Perricone. Instead, we conclude they are like those found not to be
anticipated in Perricone.
The Examiner contends that it would have been obvious to apply the
Frater perfume to skin in need of fine line reduction. However, we do not
find evidence to support that conclusion either. As Appellants note, Frater
does not teach "treatment of any condition of the skin." ( Appeal Br. 7.)
Consequently, even though reducing fine lines might result from applying
the Frater Example 4 composition (Ans. 6-7) to the particular skin type
required by the claims, we do not agree with the Examiner that there is any
evidence in Frater to suggest application of such a composition to skin that
has fine lines and is need of the reduction of those fine lines. In short, we
find the claim to be a directed to a new use of the composition taught by
Frater that would not have been readily apparent as a likely successful
application of that composition. See Eli Lilly & Co. v. Teva Pharms. USA,
Inc., 619 F.3d 1329, 1337-39 (Fed. Cir. 2010) (finding the new use
of raloxifene to treat postmenopausal osteoporosis would not have been
readily apparent as a likely successful application for a compound that the
prior art showed might fight autoimmune diseases where the evidence
established bioavailability issues for the product existed and thus the district
court did not err in finding the method claims non-obvious).
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II
Anticipation by Toyomasa
The Examiner finds that Toyomasa teaches "a perfume composition
suitable for promoting peroxidase activity in the stratum comeum,
consequently removing active oxygen in the stratum comeum, suppressing
formation of lipid peroxide and improving skin quality," i.e., the
compositions are antioxidant. (Final Action 12-13.) The Examiner further
finds that Toyomasa teaches that oxidation results in skin wrinkles. (Id.
(citing Toyomasa ,r 2).)
The Examiner notes that the Toyomasa antioxidant composition can
include ethyl linalool and Musk T and that the composition "can be used in
various dosage forms, including emulsion, a lotion and a cream." (Id.) The
Examiner relies on Kim for its teaching that Musk T is another name for
ethylene brassylate. (Final Action 15.) The Examiner notes further that
Toyomasa teaches a working example of a perfume composition that
includes ethyl linalool and Musk T at 10% by weight of each and that this
composition was added to obtain a cream having 5% by weight of each of
these components that was applied to the skin of 20 panelists with dry skin.
(Id. at 13-14 (citing Toyomasa working examples 1, 6, and 7); see also Ans.
15-17.) The Examiner finds that Toyomasa teaches that "the cream with the
perfume of working example 1 is excellent in a skin quality improvement
[0014]." (Id.)
According to the Examiner, working example 7 anticipates the
application to skin in need of reducing fine lines because the cream was
applied to skin, and such includes the face or hands. (Final Action 14.) The
Examiner further finds that because Toyomasa teaches the use of ethylene
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brassy late in the amount by weight that Appellants' claims indicates is
effective to reduce MMP-9 and COX-2 activity, that the Toyomasa
composition would achieve the claimed function absent evidence to the
contrary. (Id.; see also Ans. 17.)
The Examiner contends, in the alternative, however, that if Toyomasa
is not deemed to explicitly teach application to skin with fine lines, it would
have been obvious to apply Toyomasa' s formulation to such skin, such as
the face or hands. (Final Action 14.) That is so, argues the Examiner,
because Toyomasa teaches that the composition contains anti-oxidation
properties, and that such properties will benefit skin wrinkles. (Id.; see also
Ans. 19-20.)
We agree with the Examiner that Toyomasa anticipates the claimed
invention. In particular, Toyomasa teaches preparation of a skin cream that
includes a perfume composition that includes ethyl linalool and ethylene
brassylate (called Musk Tin Toyomasa) that was applied to subjects with
dry skin. (Toyomasa ,r,r 7, 9, and 14.) Toyomasa explains that the perfume
invention "removes active oxygen" associated with issues including "a
wrinkle." (Id. ,r,r 1-2). As it is reasonable to infer that dry skin has fine
lines, we conclude that the disclosure of T oyomasa does not suffer from the
same infirmities that we noted above regarding Frater as to the use of the
composition.
We tum now to the "effective amount" requirement of the claim. In
the working example 7 of Toyomasa, perfume of working example 1 was
added to a cream base. (Id. ,r 14.) The perfume of example 1 was made by
combining a composition that includes 10 parts by weight of both ethyl
linalool and ethylene brassy late to a composition of 90% hydrated alcohol.
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(Toyomasa ,r 9.) The two compositions are combined at 50 parts by weight
to 50 parts by weight. (Id. ,r 9.) The amount of the perfume was added to
the cream base at 0.5 parts by weight. (Id. ,r 14.) Thus, the amount of ethyl
linalool and ethyl brassylate were both present in the cream base at 0.025%
by weight. (Id.) Thus, we agree with Appellants (Appeal Br. 16) as to the
amount of ethyl linalool and ethylene brassylate present in the cream base of
the composition that was applied to dry skin in Example 7. However, as
discussed above, Appellants' Specification teaches that the ingredients need
only be in the composition in concentrations of as little as about 0.0001 % by
weight (Spec. 19-20) and demonstrates that ethylene brassy late at 0.001 %
exhibits COX-2 inhibition and at 0.01 % exhibits MMP9 inhibition (Spec. 26
(Table 3), and that ethylene linalool at 0.001 % exhibits antioxidant
properties (Id. at (Table 4)). Consequently, the composition of Toyomasa
that is applied to dry skin would have the amount claimed to achieve the
results claimed, absent a showing to the contrary by Appellants. Using the
same composition claimed in the same manner claimed naturally results in
the same claimed skin benefits. See Perricone, 432 F.3d at 1380.
That Toyomasa does not report that the skin of the subjects had
reduced fine lines, that the ethyl linalool reduces oxidation of the skin, or
that the ethyl brassylate reduces MMP-9 and COX-2, but only states that the
composition improves the degree of the dry skin (Reply Br. 9) is of no
moment. "[I]nherent anticipation does not require that a person of ordinary
skill in the art at the time would have recognized the inherent disclosure."
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003) (citing cases). For the reasons discussed, we find that the Examiner
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had a sound basis for concluding the composition as applied would have
necessarily and inevitably achieved the claimed results.
After a prima facie case is made out, the burden shifts to the applicant
to show a difference between the use of the prior art compounds that are the
same as those claimed and the use of claimed compound. The PTO lacks the
resources to do such comparisons. See In re Best, 562 F.2d 1252, 1255
(CCP A 1977). Appellants' argument that working Example 7 does not
include the claimed amount of active ingredients recited by claims 55 and 59
(Reply Br. 9-10) does not establish a lack of inherency with respect to claim
49, because claim 49 does not recite a specific percentage of ethyl linalool or
ethylene brassylate. And, Appellants do not provide any comparative test
results to establish Toyomasa's composition does not achieve the claimed
result.
Appellants' argument that Toyomasa's composition providing scent
"fails to disclose ... or make inherent the specific claimed activities of
Appellant[s]'s active ingredients when applied to the skin" (Appeal Br. 12-
13; see also Reply Br. 8-9 (referring to Toyomasa's sleep study of Example
4 with room scent)), is not persuasive because that argument looks to
example 4 of Toyomasa and not example 7. Working example 4 and its use
described in working example 5 of Toyomasa, unlike working example 7,
does not provide for putting the perfume composition into a cream and
applying it to the skin. Instead, as Appellants note, working example 4 (as
further described in example 5) is an example where the perfume
composition is provided as a room fragrance. (Toyomasa ,r,r 12-13.)
Whatever the evidence concerning the skin benefits by the room fragrance to
the skin or what concentration of ethyl linalool and ethylene brassylate may
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have landed on the skin when the scent composition was provided as a room
scent is immaterial to the Examiner's rejection relying on example 7, where
a particular composition was applied to dry skin and remarkable
improvement to the dry skin was observed (id. ,r,r 15-16).
Appellants further argue that Toyomasa' s very broad disclosure of
potential disease that might be treated and which would be treated through a
very different mechanism (relaxing a subject during sleep through the scent
of a composition) is insufficient to anticipate the claimed invention. (Appeal
Br. 13-14.) We do not find this argument persuasive either. Toyomasa
teaches the problem to be solved is "[t]o obtain a perfume composition
suitable for promoting peroxidase activity in the stratum comeum,
consequently removing active oxygen in the stratum comeum, suppressing
formation of lipid peroxide and improving skin quality" (Toyomasa
Abstract), and "to provide improving skin quality with a suitable perfume
composition by inhibiting active oxygen and preventing peroxylipid
generation by being accomplished based on such a situation and promoting
the peroxidase activity of a horny layer" (id. ,r 4). It may be true that the
discussion of the prior art may be broad in Toyomasa with regard to diseases
that might be caused by the presence of active oxygen and the resultant
increased reaction ofperoxylipid. However, the disclosure of Toyomasa's
inventive composition applied to skin and the resultant benefit is not. Thus,
we are not faced with "a 'needle-in a haystack"' problem here (Appeal Br.
13).
Moreover, in light of Toyomasa's explicitly stated object of the
invention and the teaching of applying the composition to the skin, we
conclude Toyomasa does much more than make a broad generic disclosure
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concerning the advantage to the skin of the composition that includes ethyl
linalool and ethylene brassylate. A specific composition is taught to be
applied to skin and it was determined that skin quality was improved. The
object of Toyomasa was to determine compositions that would remove
active oxygen in the stratum comeum and thus improve skin quality, where
Toyomasa also taught that the presence of active oxygen leads to wrinkles
(Toyomasa ,r 2). Thus, we find, absent evidence to the contrary, that
Toyomasa's teaching regarding Example 7 would have inherently resulted in
the reduction of fine lines by its removal of active oxygen in the stratum
comeum. Moreover, we conclude that because the same ingredients are
taught and applied in the same way as claimed, the additional functions
recited in the wherein clauses would also have arisen as a result of the
application of Toyomasa' s composition to the dry skin taught in example 7.
Thus, for the reasons discussed, we affirm the Examiner's rejection of
claim 49 as being anticipated by Toyomasa.
Appellants do not separately argue claims 50, 57, or 60-62, and those
claims therefore fall with claim 49. 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 55 and 59 Are Obvious Over Toyomasa
The Examiner contends that in Example 7 there was 5% of ethyl
linalool and 5% ethylene brassylate. (Ans. 16-17.) We disagree with the
Examiner for the reasons discussed above, e.g., the amount of the perfume
of working example 1 was added to the cream base at 0.5 parts by weight
(Toyomasa ,r 14), and thus, the amount of ethyl linalool and ethyl brassylate
were both present in the cream base at 0.025% by weight. However, we do
find that modifying the amount to more than 1 % by weight of a mixture of
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both ingredients ( claim 59) would have been obvious, as posited by the
Examiner (Ans. 17; see also Final Action 20).
Toyomasa teaches that the perfume composition that "is characterized
by containing," among other things, ethyl linalool and ethylene brassylate
can be added in a cosmetic such as a lotion or cream. (Toyomasa ,r 7.) And
Toyomasa teaches that in formulation, whether the final composition
including the perfume composition is a perfume or lotion, the perfume
composition is added "preferably" from 0.01 % up to 10% by weight, and
"more preferably" from 0.1 % up to 5% by weight. (Id. ("Although the
perfume composition of the present invention is contained in perfume,
cologne, a Toilet water, solid perfume, a room fragrance, a car fragrance,
etc., it is contained also in skin external use constituents, such as a cosmetic .
. . . [ where the] dosage forms [include] ... a lotion, a milky lotion, and
cream. . . . ")).
However, in examples 1 and 2, we note that Toyomasa teaches the
perfume composition can be added in 30 or 50 parts by weight. Thus, while
Example 7 of Toyomasa, which is a cream formulation, only employs the
perfume composition of Example 1 in the cream at 0.5% by weight, it would
have been obvious to employ a composition that "is characterized by
containing," among other things, ethyl linalool and Musk T, at much higher
concentrations. Furthermore, because Toyomasa does not teach any
particular limits on the parts by weight of ethyl linalool and ethylene
brassylate to be included in the perfume composition, except that the
composition should have a scent that is a light floral bouquet tone "which
reminds a jasmine, a rose, and a lily of the valley," and promotes
"peroxidase activity in a horny layer. .. , a thing which remove active
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oxygen and ... promotes peroxylipid elimination" (Toyomasa ,r 5 (such a
composition "complete[s the] invention")), we determine that it would have
been obvious to optimize the parts by weight of the ethyl linalool and
ethylene brassylate to arrive at a cream composition that includes more than
1 % of ethyl linalool with ethylene brassylate. "[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." In re
Aller, 220 F .2d 454, 456 (CCP A 1955). Toyomasa indicates preferred
ranges for its perfume composition, and thereby recognizes the result
effectiveness of these ingredients for improving skin quality, and thus we
agree with the Examiner that it would have been obvious to optimize the
amounts of ethyl linalool and/or ethylene brassylate to achieve optimum skin
quality improvement, including reduction of fine lines in dry skin.
"[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Furthermore, to show criticality of a claimed range, "it is not inventive to
discover the optimum or workable ranges by routine experimentation. Only
if the results of optimizing a variable are unexpectedly good can a patent be
obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1469
(Fed. Cir. 1997) (quotations and citations omitted). Appellants have not
shown any unexpected results of the claimed range. Rather, Appellants
simply argue that "the high concentrations of aromatic ingredients in
examples 1 to 3 are likely to be unpleasant for use as a perfume if directly
applied to the skin" and "direct application of the compositions in examples
1 to 3 to skin defeats the purpose of Toyomasa in using the ingredients to
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relax a subject." (Appeal Br. 17.) Such a bare assertion is not evidence
sufficient to support non-obviousness given the explicit breadth of the
teaching of Toyomasa discussed above. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."); see also In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) ("It is
well settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements ... [do] not suffice.").
We also find, for the same reasons, that providing a cream
composition that includes at least 2% by weight of ethyl linalool or ethylene
brassy late ( claim 55) would have been obvious in light of the teachings of
Toyomasa, as the Examiner posited (Final Action 20).
Appellants argue that Toyomasa teaches that the compositions applied
to the skin "can contain at most 0.5% by weight of ethyl linalool and 0.5%
by weight of Musk T." (Appeal Br. 11; Reply Br. 16-17.) We do not find
Appellants' interpretation of Toyomasa paragraph 7 reasonable. The
perfume composition that is "suitable" providing active oxygen removal in
the horny layer and inhibiting peroxylipid generation is described.
(Toyomasa ,r 7.) The components of that composition are named, and the
preferred amounts, and more preferred amounts of such a composition to be
used to achieve the results in the horny layer is described. (Id.) Even if, as
Appellants argue (Appeal Br. 12; Reply Br. 18), this paragraph teaches that
the perfume composition thus described may not be an end product, that is
not the only thing taught therein. That is, we do not find it reasonable to
interpret paragraph 7 of Toyomasa as describing a first composition that is
"not an end product" in a certain weight percentage and then describing that
product being further diluted, simply because the first range refers to the
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perfume composition as "it" and then in the second range the composition is
referred to as "these" compositions. Rather, a more natural reading is that
when first referring to the range, T oyomasa refers to the perfume
composition as "it" because it has only mentioned a certain group of
components being the composition, but in the next phrase after referring to
composition§., i.e., those in the first preferred range, Toyomasa refers to
"these perfume compositions" because a plurality of compositions are now
being referred back to.
Thus, for the reasons discussed, we affirm the Examiner's rejection of
claims 55 and 59 as being obvious over Toyomasa.
The Claims Are Not Obvious over Frater, Toyomasa, Kim, Shu, and
McCullough
The Examiner's assertions regarding the teachings of Frater and
Toyomasa are discussed above. The Examiner relies on McCullough for its
teaching that skin aging is a complex biological process but involves a
decrease in the number of fibroblasts and fibroblast products, such as
collagen and elastin, resulting in wrinkling. (Final Action 25.) The
Examiner finds McCullough also teaches free radicals play "a pivotal role in
the biological events that lead to the clinical manifestations of skin aging"
and that "[n]aturally occurring antioxidants are reduced in chronically aged
skin." (Id.) The Examiner further finds that McCullough teaches that
"[a]ntioxidants provide another approach for the prevention and treatment of
intrinsic and extrinsic skin aging." (Id.) The Examiner concludes that in
light of the fact that Toyomasa teaches that ethyl linalool and Musk Tare
antioxidants (Final Action 24), one of ordinary skill in the art would have
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expected the composition of Frater when applied to the skin (id. at 25) "to
benefit in skin wrinkle treatment" (id. at 26).
Moreover, the Examiner finds that McCullough teaches that tretinoin
is known to increase dermal collagen production, reduce collagen
degradation by inhibiting UV-induced matrix metalloproteinases (MMP),
and stimulate epidermal turnover. (Id.) The Examiner relies on Kim, Shu,
and Lu to establish that one of ordinary skill in the art would have expected
the antioxidant ethyl linalool to reduce oxidation of the skin, and the
antioxidant ethylene brassylate to reduce MMP-9 and COX-2 activity in the
skin. (See id. at 27-29 ((a) Kim relied upon for teaching Musk T, is an
activator of peroxisome proliferator activated receptor ("PP AR") a and
stimulates HA synthesis in skin; (b) Shu relied upon for teaches the PP ARa
agonist fenofibrate downregulates matrix metalloproteinase 9 (MMP-9); and
(c) Lu relied upon for teaching reactive oxidative species upregulate COX-2,
a mediator of inflammation.)) The Examiner contends that from the
foregoing teaching regarding tretinoin by McCullough "[ w ]hen taken
together with Kim and Shu ... , which together predict ethylene brassylate
to stimulate skin barrier recovery, and to function as a PPAR-a agonist and
inhibitor of MMP-9, the skilled artisan would have also expected this
combination [ of ethyl linalool and ethylene brassy late] to function with
some of the benefits of the approved anti-wrinkle agent tretinoin." (Id. at
26.)
We do not find the Examiner's conclusion of obviousness to be well
grounded. As we noted, above, we disagree with the Examiner's premise
that Frater teaches applying the claimed composition to wrinkled skin.
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Moreover, we do not believe that one of ordinary skill in the art presented
with Prater's composition would have turned to the remaining cited art.
While it is true that we find Toyomasa, which teaches a perfumed
composition, to be anticipatory, "the question whether a reference is
analogous art is irrelevant to whether that reference anticipates." In re
Schreiber, 128 F.3d 1473, 1478(Fed. Cir. 1997). For purposes of
obviousness, however, "[i]n order to rely on a reference as a basis for
rejection ... , the reference must either be in the field of the applicant's
endeavor or, if not, then be reasonably pertinent to the particular problem
with which the inventor was concerned." In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992). Here, we find Frater, which teaches a perfume
composition, is not in either category. Frater is directed to a perfume
composition that does include ethyl linalool and ethylene brassylate.
However, it is not concerned at all with a composition to provide a particular
skin benefit, much less reduction in fine lines or wrinkles.
Furthermore, we agree with Appellants (see Appeal Br. 20; Reply Br.
16-17), that the Examiner unreasonably extrapolated from the teachings of
McCullough, Kim, and Shu. We agree that insufficient evidence has "been
provided that sufficiently supports that all PPAR- a agonists will reduce the
activity ofMMP-9." (Appeal Br. 20-21; Reply Br. 14--15 ("It is especially
true that Shu does not establish a reasonable expectation of success that
ethylene brassylate, a structurally different compound, would reduce MMP-
9 in skin, much less skin that is not undergoing an immune response to a
bacteria.").)
We agree that "the Examiner has not reasonably established that
tretinoin and ethylene brassy late share any of the properties the Examiner
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relies upon to then extrapolate that ethylene brassylate would be expected to
reduce fine lines/wrinkles in skin by topical application." (Reply Br. 17; see
also id. ("the 'stimulated skin barrier [recovery ]/turnover activity' relied on
by the Examiner as a shared activity between the two structurally unrelated
compounds are two different activities and the Examiner's rejection is
unsupported.").)
Thus, for the foregoing reasons, we do not affirm the Examiner's
rejection of the claims as being obvious over Frater, Toyomasa, Kim, Shu,
McCullough, and Lu.
SUMMARY
We reverse the rejection of claims 49, 50, 55, 57, 59, and 61 under 35
U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as unpatentable over Frater.
We affirm the rejection of claims 49, 50, 57, and 60-62 under 35
U.S.C. § 102(b) as anticipated by Toyomasa, as evidenced by Kim.
We affirm the rejection of claims 55 and 59 under 35 U.S.C. § 103(a)
as unpatentable over Toyomasa, as evidenced by Kim.
We reverse the rejection of claims 49, 50, 55, 57, and 59---62 under 35
U.S.C. § 103(a) as unpatentable over Frater, Toyomasa, Kim, Shu,
McCullough, and Lu.
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)(l)(iv).
AFFIRMED
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