Jean-Christophe Sergere

Patent Trials and Appeals Board

Jul 30, 2019

13715681 - (D) (P.T.A.B. Jul. 30, 2019)

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.
13/715,681 12/14/2012 Jean-Christophe Sergere 66645-000003/US 5822
27572 7590 07/30/2019
Harness Dickey (Troy)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JEAN-CHRISTOPHE SERGERE1
________________

Appeal 2018-004898
Application 13/715,681
Technology Center 1600
________________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies AMS Biotek as the real party-in-interest. App. Br. 3.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 4, 5, 12–29, 31, and 32 as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Reynolds (US 2010/0092398 A1, April 15, 2010)
(“Reynolds”), Bowker (WO 2009/089534 A2, July 16, 2009) (“Bowker”),
Scientific Committee on Consumer Products, Opinion on Tea Tree Oil,
ADOPTED BY SCCP 2D PLENARY MTG. 1–21 (December 7, 2004) (“SCCP”),
H.Y. Ando et al., Chapter 38: Property-Based Drug Design and
Preformulation, in REMINGTON: THE SCIENCE AND PRACTICE OF PHARMACY
(D.B. Troy, P. Beringe eds.) 720–44 (2005), and Kershenstine JR. (US
2004/0076641 A1, April 22, 2004) (“Kershenstine”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to tea tree oil derivatives
and compositions and uses of same, which have decreased cytotoxic and
irritating characteristics. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A tea tree oil derivative composition, comprising:

a positive amount of a terpinolene that is below 1.0 wt.%;

a-terpinene that is below 0.5 wt.%;

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a positive amount of a g-terpinene that is below 3.0 wt.%;

p-cymene that is below 0.5 wt.%;

a-terpineol that is above 3.5 wt.%;

viridiflorol that is above 0.1 wt.%; and

at least one monoterpenic alcohol component wherein at
least 60.0 wt.% of the overall derivative composition is terpinen-
4-ol,

wherein the derivative composition is solubilized in
dimethylsulfoxide (DMSO) or polysorbate 60.

App. Br. 21.

ISSUES AND ANALYSES
We adopt the Examiner’s findings, reasoning, conclusion that the
claims on appeal are prima facie obvious over the cited prior art. We
address the arguments raised by Appellant below.

Issue 1
Appellant argues that the Examiner erred because the combined
references neither teach nor suggest the limitation of claim 1 reciting: “p-
cymene that is below 0.5 wt.%.” App. Br. 11.

Analysis
The Examiner finds that Reynolds teaches an antimicrobial
composition obtained from plants from the Melaleuca (tea tree) family in
which at least 80% of the monoterpene content of the oil has been removed.
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Final Act. 6 (citing Reynolds Abstr.). The Examiner finds that Reynolds
teaches that its extract is improved over the naturally occurring composition
(i.e., tea tree oil) by exhibiting improved antimicrobial properties, and is
considered safe for oral administration, whereas the natural composition is
not. Id. (citing Reynolds ¶ 18). The Examiner finds that the composition
taught by Reynolds comprises the following terpenes: terpinolene: 0–0.7%;
a-terpinene: 0–1.9%; y-terpinene: 0–4%; p-cymene: 0.5–12%; terpinene-4-
ol: 52–66%; a-terpineol: 4–6.5%; aromadendrene: 1–7%; globulol: 0.3–2%;
and viridiflorol: 0.1–0.8%. Id. (citing Reynolds ¶ 60)
The Examiner finds that Reynolds additionally teaches that tea tree oil
naturally comprises viridiflorol in 0–1.5%. Final Act. 7 (citing Reynolds ¶
60). The Examiner teaches that Reynolds teaches that preferred
compositions of their invention comprise 40–70% of terpinen-4-ol and that
sesquiterpenes, which include aromadendrene, globulol, and viridiflorol can
comprise 8–25% of the composition. Id. (citing Reynolds ¶ 27). The
Examiner finds that the compositions taught by Reynolds can further
comprise solvents, carriers, diluents, and other optional ingredients
commonly known in the art. Id. (citing Reynolds ¶ 31).
The Examiner finds that Bowker teaches compositions for the
treatment of influenza comprising tea oil and olive oil. Final Act. 7 (citing
Bowker Abstr., ¶ 32). The Examiner finds that Bowker teaches that, in its
compositions, tea tree oil is present at 1–10% and olive oil at 40–95%. Id.
(citing Bowker ¶ 33). The Examiner finds that solvents such as water and
DMSO can be used with its compositions, as well as carriers or diluents
including lecithin. Id. (citing Bowker ¶¶ 30, 64, 51).
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The Examiner finds that SCCP teaches that ingestion of undiluted tea
tree oil, which can comprise high levels of a terpinolene, a-terpinene, y-
terpinene, and p-cymene, were reported to cause acute toxicity in rats and
ataxia, confusion, skin rashes, and a coma in humans. Final Act. 8 (citing
SCCP 8–9). The Examiner finds that SCCP specifically teaches that p-
cymene is a known irritant. Id. (citing SCCP 18).
The Examiner therefore concludes that it would have been prima facie
obvious to prepare the composition of Reynolds as either a solid or an
emulsion using the tea tree oil components in the disclosed ranges. The
Examiner finds that the ranges of the constituents taught by Reynolds
overlap with the ranges recited by the claims, except for the range of p-
cymene, which Reynolds teaches as being 0.5–12%. Final Act. 8. The
Examiner also concludes, in the absence of objective evidence of unexpected
results, the amount of p-cymene can be viewed as a variable, the reduction
of which achieves the recognized result of reducing the irritancy of the
composition. Id. The Examiner therefore concludes that achieving an
optimum or workable range of p-cymene can be accordingly characterized
as routine optimization and experimentation. Id. (citing MPEP § 2144.05
(ll)B).
Appellant argues that, because the Examiner acknowledges that none
of the cited prior art references teach or suggest a tea tree oil extract with a
concentration of p-cymene that is less than 0.5 wt%, the claims are not prima
facie obvious over the cited prior art. App. Br. 13.
Appellant argues further that arriving at the claimed levels of p-
cymene would require more than routine optimization by a person of
ordinary skill in the art, as the Examiner finds. App. Br. 13 (citing Final
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Act. 11–12). Appellant further contends that the Examiner took the irritant
characterization of p-cymene out of context from SCCP. Id. Appellant
contends, by way of example, that SCCP teaches that: “[t]he sensitising
potency [of tea tree oil] may also be influenced by the content of irritants
such as p-cymene.... Only products having a concentration of 2% or more
seem to cause skin reactions.” Id. (quoting SCCCP 18). However,
Appellant argues, Reynolds describes tea tree derivative compositions with a
p-cymene concentration of 0.5%–12%. Therefore, asserts Appellant, the
combination of SCCP and Reynolds would motivate a person having
ordinary skill in the art to modify the composition of Reynolds to include
between 0.5%–2% of p-cymene. Id. at 13–14. Appellant contends that there
is no disclosure or suggestion in either reference to lower the amount of p-
cymene below 0.5 wt.% as required by Appellant’s claims. Id. at 14.
Appellant therefore argues that a person of ordinary skill in the art
would not be able to arrive at the claimed p-cymene level through: “routine
optimization and experimentation.” App. Br. 14. Appellant contends that
the Examiner relied upon a selective reading of SCCP, which lists p-cymene
as an irritant and states that it would require only routine optimization to
arrive at a p-cymene level of less than 0.5%. Id. Appellant asserts that this
statement is conclusory, and that the Examiner fails to explain why it would
require only routine optimization to lower the p-cymene concentration of
Reynolds, when SCCP states that p-cymene is an irritant at concentrations
greater than 2%. Id.
Appellant also asserts that it has been unexpectedly found that
decreasing the concentration of various components from conventional tea
tree oil extract that have antimicrobial activity and increasing the
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concentration of other components would result in a composition that is
more efficacious and less cytotoxic than conventional tea tree oil extract.
App. Br. 15.
Appellant concludes that the Examiner has failed to provide a rational
underpinning explaining why a person of ordinary skill in the art would have
arrived at the claimed composition through routine optimization in light of
Reynolds and SCCP. App. Br. 15–16.
We are not persuaded by Appellant’s arguments. Appellant
acknowledges that Reynolds teaches the limitations of the claims, with the
exception of p-cymene, which Reynolds teaches in the range of 0.5–12 wt%
and Appellant’s claims recite as: “below 0.5 wt%.” See Reynolds ¶ 60,
claim 1.
Our reviewing court has held that: “a prima facie case of obviousness
exists when the claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have expected them to
have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003); see also In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990):
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.

Appellant points to no evidence in the Specification, nor can we discern any,
that indicates that, e.g., a concentration of p-cymene of, for example 0.49
wt% would have significant unexpected and significant differences than the
0.5 wt% concentration taught by Reynolds. Appellant merely argues that:
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“it has been unexpectedly found that decreasing the concentration of various
components from conventional tea tree oil extract that have antimicrobial
activity and increasing the concentration of other components would result
in a composition that is more efficacious and less cytotoxic than
conventional tea tree oil extract.” See App. Br. 15. That statement does not
indicate that it is p-cymene concentrations of less than 0.5 wt% are causative
of the properties claimed by Appellant, nor is the conclusory assertion
supported by evidence of record. As such, it is insufficient to overcome the
Examiner’s prima facie conclusion of obviousness. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value).

Issue 2
Appellant argues that the Examiner erred in finding that the
combined cited prior art teaches or suggests the limitation requiring that the
tea tree oil derivative composition is solubilized in dimethylsulfoxide
(“DMSO”) or polysorbate 60. App. Br. 16.

Analysis
Appellant argues that the compositions taught by Bowker are different
from the claimed composition. App. Br. 17. According to Appellant, the
current claims are drawn to a tea tree oil derivative composition that is
solubilized in DMSO or polysorbate 60, whereas Bowker teaches a
pharmaceutical composition comprising hydrogen peroxide (H2O2), orange
terpene oil, orange Valencia oil, oreganum, cumin oil, cassia oil, lavender
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oil, tea tree oil, olive oil, and a pharmaceutically acceptable carrier. Id.
Furthermore, Appellant argues, Bowker provides a list of hundreds of
suitable delivery agents or carriers. Id. Therefore, asserts Appellant, the
option of including DMSO in the compositions of Bowker as a delivery
agent or carrier provides no predictive value for using DMSO as a
solubilizing agent for the claimed composition. Id.
Appellant argues further that, in the claims, the various components
are present at their respective concentrations within the DMSO or
polysorbate 60. App. Br. 17. Appellant contends that Figures 1A and 1B of
Appellant’s Specification demonstrate that the solubilizing agent has an
impact on cytotoxicity and, therefore, not all solubilizing agents are suitable.
Id. In contrast, Appellant argues, Bowker teaches a long list of
pharmaceutically acceptable carriers, diluents, and delivery agents. Id.
According to Appellant, Bowker does not provide a reason for selecting
DMSO among the various carriers or diluents and does not contemplate
solubilizing a tea tree oil derivative composition in DMSO. Id.
Furthermore, Appellant argues, it is not clear from Bowker how much
of an optional carrier, diluent, or transdermal delivery agent to add to the
composition. App. Br. 17. Appellant asserts however, that the composition
of Bowker is not “solubilized” in DMSO or polysorbate 60. Id.
We are not persuaded by Appellant’s argument. As an initial matter,
claim 1 recites: “wherein the derivative composition is solubilized in
dimethylsulfoxide (DMSO) or polysorbate 60,” but does not recite an
amount or concentration of the solubilizing agent that is required by the
claim.
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Importantly, Bowker teaches that: “[i]n other embodiments, the
composition also includes oreganum, cumin oil, cassia oil, lavender oil, tea
tree oil, and olive oil.” Bowker Abstr. (emphasis added). Bowker further
teaches that:
Systemic administration can also be by transmucosal or
transdermal means. For transmucosal or transdermal
administration, penetrants appropriate to the barrier to be
permeated are used in the formulation. In one embodiment, the
transdermal delivery agent can be, for example, DMSO, urea, l-
methyl-2-pyrrolidone, oleic acid, or a terpene (e.g., 1- menthol,
d-limonene, RS-(+/-)-beta-citronellol, geraniol). Further
percutaneous penetration enhancers are described, for example,
in Percutaneous Penetration Enhancers, Smith and Maibach,
eds., 2nd edition, 2005, CRC Press. Transdermal delivery
systems can include, e.g., patches. For transmucosal
administration, penetrants appropriate to the barrier to be
permeated are used in the formulation. Such penetrants are
generally known in the art.

Exemplified transdermal delivery formulations that can find use
in the present invention include those described in U.S. Pat. Nos.
6,589,549; 6,544,548; 6,517,864; 6,512,010; 6,465,006;
6,379,696; 6,312,717 and 6,310,177, each of which are hereby
incorporated herein by reference.

Bowker ¶¶ 64–65 (emphasis added).
We agree with the Examiner that a person of ordinary skill,
comprehending the teachings of Bowker, would understand that it is known
in the art that DMSO is a penetrant in which, inter alia, tea tree oil (and its
constituents) can be solubilized, and which can be used as a vehicle for
transdermal penetration.
Even more importantly, we agree with the Examiner’s finding that
Reynolds expressly teaches the use of DMSO as a solubilizing agent. See
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Ans. 12; see also Reynolds ¶¶ 133, 135. Specifically, Reynolds teaches an
exemplary embodiment in which: “A 10% solution of the composition of
Example 4 was made in dimethyl sulphoxide [sic] (DMSO) by adding 1.0 ml
of the composition to 9.0 ml of DMSO and mixing thoroughly. A solution
of 1% with no emulsifiers was used as supplied for virus treatment.”
Reynolds ¶ 133 (emphasis added). Because Reynolds thus expressly teaches
using DMSO as a solvent (i.e., for making a solution) for its tea tree oil
compositions, we agree with the Examiner that a person of ordinary skill in
the art would have found it obvious to use in such compositions.
Consequently we affirm the Examiner’s rejection of the claims.

DECISION
The Examiner’s rejection of claims 1, 4, 5, 12–29, 31, and 32 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED