Ex Parte Wu et al

Board of Patent Appeals and Interferences

Oct 23, 2009

10886313 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY M. WU, JUE-CHEN LIU,
JEANNETTE CHANTALAT, and YING SUN
____________

Appeal 2009-008334
Application 10/886,313
Technology Center 1600
____________

Decided: October 23, 2009
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and FRANCISCO C.
PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-4, 9-13, and 15-
20, the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2009-008334
Application 10/886,313

STATEMENT OF THE CASE
The claims are directed to a composition. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R. §
41.37(c)(1)(vii). Claim 1 is representative:
1. A composition comprising an anti-acne agent, an antimicrobial
agent, and a lactate selected from the group consisting of C12 – C16 alkyl
lactates and combinations thereof.

The Examiner relies on the following evidence:

Jampani et al. US 6,248,343 B1 Jun. 19, 2001

Shalita, Comparison of a salicyclic acid cleanser and a benzoyl peroxide
wash in the treatment of acne vulgaris, 11 CLIN. THERAPEUTICS 264-267
(1989) (Medline Accession No. 89288161) (Medline Abstract Only).

The rejections presented by the Examiner follow:
1. Claim 1 stands provisionally rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over claim 1 of
copending Applications 10/886,314 and 11/156,404.
2. Claims 1-4, 9-13, and 15-20 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Shalita and Jampani.
We affirm the provisional obviousness-type double patenting rejection
over 11/156,404 and the rejection under 35 U.S.C § 103(a). We reverse the
obviousness-type double patenting rejection over 10/886,314.

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Application 10/886,313

Provisional obviousness-type double patenting rejection:
ISSUE

Have Appellants established error in the Examiner’s prima facie case
of obviousness-type double patenting?

FINDINGS OF FACT
FF 1. Application No. 10/886,314 was abandoned on September 22, 2008.
FF 2. Appellants “have agreed to file an appropriate terminal disclaimer
upon the indication of allowable subject matter” (App. Br. 2).

ANALYSIS
Application No. 10/886,314 was abandoned on September 22, 2008
(FF 1). Therefore, the provisional obviousness-type double patenting
rejection over Application No. 10/886,314 is reversed as moot.
With regard to the provisional obviousness-type double patenting
rejection over Application No. 11/156,404, Appellants “have agreed to file
an appropriate terminal disclaimer upon the indication of allowable subject
matter” (FF 2). Accordingly, we summarily affirm this rejection.

CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s prima facie case
of obviousness-type double patenting. The provisional rejection of claim 1
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over claim 1 of copending Application 11/156,404 is
affirmed.
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Appeal 2009-008334
Application 10/886,313

Since Application 10/886,314 was abandoned, the provisional
obviousness-type double patenting rejection is moot and reversed.

Obviousness:
ISSUE
Have Appellants established error in the Examiner’s prima facie case
of obviousness?

FINDINGS OF FACT
FF 3. Appellants do not dispute and therefore concede to the Examiner’s
prima facie case of obviousness over the combination of Shalita and
Jampani.
FF 4. Appellants concede that the composition of claim 1 comprises, inter
alia, “a lactate selected from the group consisting of C12-C16 alkyl lactates”
(Claim 1 and App. Br. 2).
FF 5. Appellants concede that Jampani teaches a composition “comprising
a phospholipid, cetyl lactate (a C16 lactate), and benzalkonium chloride to
treat skin infections such as acne” (App. Br. 3).
FF 6. Appellants’ arguments and evidence of unexpected results relates to
a composition comprising “a C12-C15 alkyl lactate” (see generally, App. Br.
3-4).

PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
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1992). On appeal to this Board, Appellants must show that the Examiner
has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d
1115, 1118 and 1123 (BPAI 2008) (precedential).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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) (citations omitted).
It is well settled that evidence of unexpected results may rebut an
Examiner’s prima facie case of obviousness. See In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998); In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir.
2007). However, in order to establish unexpected results for a claimed
invention, objective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support. In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978). In addition, “when
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

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ANALYSIS
Appellants contend that their “Example 7 compares a composition
according to the invention (the Example 4 composition, Table 4) with a
commercially available 10% benzyl peroxide product” (App. Br. 3). In
addition, Appellants contend that their “Example 8 showed the importance
of using a C12-C15 alkyl lactate” (id.).
The composition of Appellants’ Example 4 comprises a C12-15 alkyl
lactate (Spec. 20: Table 4) and therefore is not commensurate in scope with
the invention of claim 1, which includes a C16 alkyl lactate (FF 4).
In addition, Appellants’ have not established that the commercially
available 10% benzyl peroxide product utilized in Appellants’ Example 7
(Spec. 24: 9 - 25: 26) is representative of the composition taught by Jampani,
which is the closest prior art (FF 5).
We are not persuaded by Appellants’ evidence of unexpected results
because Appellants failed to present evidence commensurate in scope with
the claimed invention and establish that the results were unexpected in light
of the closest prior art.
Appellants claim 9 is drawn to the composition of claim 1, wherein
the “lactate is selected from the group consisting of C12-C16 alkyl lactates”
(Claim 9 (emphasis added)). Accordingly, we are not persuaded by
Appellants’ contention that “claim 9 recites a composition specifically of
Example 4 containing . . . C12-C15 alkyl lactate” (App. Br. 4 (emphasis
added)).

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CONCLUSION OF LAW
Appellants failed to establish error in the Examiner’s prima facie case
of obviousness. The rejection of claim 1 under 35 U.S.C § 103(a) as
unpatentable over the combination of Shalita and Jampani is affirmed.
Claims 2-4, 9-13, and 15-20 fall together with claim 1.

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

cdc

PHILIP S. JOHNSON
JOHNSON & JOHNSON
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