Symrise AG et al.

Patent Trials and Appeals Board

Sep 10, 2020

14784418 - (D) (P.T.A.B. Sep. 10, 2020)

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.
14/784,418 10/14/2015 Imke Meyer 1507-131 8167
28249 7590 09/10/2020
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
WESTERBERG, NISSA M
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
usptomail@dilworthbarrese.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IMKE MEYER and MIRJAM KNUPFER
____________

Appeal 2019-006534
Application 14/784,418
Technology Center 1600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MICHAEL A. VALEK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–7, 10–12, 14–16, 20, and 21 (see Br. 3). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Symrise
AG” (Appellant’s March 21, 2019 Appeal Brief (Br.) 1).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to the area of cosmetics and refers to
the use of sclareolide as a potent agent for lightening skin and hair” (Spec.
¶ 2). Claims 1, 2, 10–12, 14, and 15 are reproduced below:
1. A composition comprising
(a) sclareolide; and
(b1) at least one skin lightening agent
wherein the sclareolide is present in an amount of from
0.001 to 5% by weight based on the total weight of the
composition; and,
the skin lightening agent is present in an amount of from 0.001
to about 5% by weight based on the total weight of the
composition.
(Br. 35.)
2. The composition of claim 1, wherein the skin lightening
agent (component b1) is selected from the group consisting of
kojic acid and phenylethyl resorcinol, beta- and alpha-arbutin,
hydroquinone, nicotinamide, dioic acid, Mg ascorbyl phosphate
and vitamin C and its derivatives, mulberry extract, Bengkoang
extract, papaya extract, turmeric extract, nutgrass extract,
licorice extract (containing glycyrrhizin), alpha-hydroxy-acids,
4-alkylresorcinols, 4-hydroxyanisole and mixtures thereof.
(Id.)
10. The composition of claim 1, which is a cosmetic
composition, a pharmaceutical composition or a dietary
supplement composition.
(Id. at 37.)

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11. A medicament comprising the composition of claim 1
including an effective amount of sclareolide for fighting
diseases requiring an inhibition of melanin formation in
melanocytes,
wherein sclareolide is present in an amount of from 0.001 to
5% by weight based on the total weight of the composition.
(Id.)
12. A medicament comprising the composition of claim 1
including an effective amount of sclareolide for fighting
diseases requiring an inhibition of interleukin-(IL-) 1a
biosynthesis,
wherein sclareolide is present in an amount of from 0.001 to
5% by weight based on the total weight of the composition.
(Id.)
14. The composition of claim 1, comprising an effective
amount of sclareolide for lightening skin and hair,
wherein sclareolide is present in an amount of from 0.001 to
5% by weight based on the total weight of the composition.
(Id.)
15. A composition comprising the combination of
(a) sclareolide, and
(b) at least one skin lightening agent
wherein the skin lightening agent is phenylethyl resorcinol, and
wherein sclareolide and phenylethyl resorcinol are present in a
ratio of about 20:80 to about 80:20 by weight.

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Grounds of rejection before this Panel for review:
Claims 1–7, 10–12, 14–16, 20, and 21 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Michio,2 Gerke,3 and Baldo.4
Claims 1–7, 10–12, 14–16, 20, and 21 stand rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–13 of Krutmann ’7835 in view of Baldo.
Claims 1–7, 10–12, 14–16, 20, and 21 stand rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–13 of Krutmann ’1356 in view of Baldo.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Michio, JP 2007-022960 A, published Feb. 1, 2007 (English translation
provided with Appellant’s Appeal Brief).
3 Gerke et al., WO 02/30385 A2, published Apr. 18, 2002 (English
translation provided with Appellant’s Appeal Brief (the pages of this
document are not paginated, therefore, all reference to a page of this
document refers to the document as if it were numbered consecutively
beginning with the first page)).
4 Baldo et al., WO 2010/078985 A2, published July 15, 2010.
5 Krutmann et al., US 2018/0153783 A1, published June 7, 2018. Examiner
and Appellant refer to this document as co-pending Application 15/576,484,
Notice of Allowance mailed May 19, 2020.
6 Krutmann et al., US 2018/0147135 A1, published May 31, 2018.
Examiner and Appellant refer to this document as copending Application
15/577,433, Notice of Allowance mailed May 21, 2020.
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FACTUAL FINDINGS (FF)
FF 1. Michio “relates to whitening cosmetics excellent in the whitening
effect which inhibits the melanism of the skin by ultraviolet rays with high
safety” (Michio ¶ 1; see also ¶ 38 (Michio’s disclosure relates to a
composition that “excels in melanin generation depressor effect,” which can
be used in “various whitening cosmetics”); see generally Ans.7 3).
FF 2. Michio discloses cosmetic compositions comprising whitening
agents and the melanin generation depressant, “[hydrogenation
SUKURARE] and its acylation derivative” (see Michio ¶¶ 9–11, and 38
(alteration original); see also Br. 14 (Appellant recognizes that Michio’s
“term [SUKURARE] is synonymous with sclareol” (alteration original)); see
generally Ans. 3 and 11–14).
FF 3. Michio discloses that anti-inflammatory agents, such as Vitamin C,
can be added to skin whitening cosmetic formulations to inhibit
inflammation caused by ultraviolet rays (see Michio ¶ 3).
FF 4. Michio discloses that skin whitening agents include “blended kojic
acid, arbutin, hydroquinone monobenzyl ether, hydrogen peroxide, [and]
etc.” (Michio ¶ 3; see also Ans. 3).
FF 5. Gerke discloses “sunscreens or ‘after-sun’ preparations” comprising,
inter alia, sclareol or sclareolide, “as active ingredients in an amount of
more than 0.001 [wt.%] based on the preparation” (Gerke 4; see id. at 5
(Gerke discloses that “[a] particularly preferred embodiment of [its]
invention is [a] cosmetic preparation[] containing light stabilizers,
characterized in that they contain 0.01 to 5% by weight of anti-inflammatory

7 Examiner’s May 22, 2019 Answer.
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diterpenoids with a Labdan structure, in particular from the group Sclareol,
Sclareolide . . . or a mixture thereof in a suitable cosmetic carrier.”); see also
Ans. 4).
FF 6. Baldo:
relates to a composition comprising, in a cosmetically
acceptable carrier:
a) at least one depigmenting agent and
b) at least one system for screening out both UVA
radiation and UVB radiation;
c) and optionally at least one desquamating agent;
d) said composition having a critical wavelength λC of
greater than 370 nm.
(Baldo 1:16–24; see Ans. 4.)
FF 7. Baldo discloses that its depigmenting agents include vitamin C,
arbutin, resorcinol, and esters thereof, and hydroxylated diphenylmethane
derivatives, such as phenylethyl resorcinol (Baldo 4:2–18; 5:7–9, and 6:6–
20; see also Ans. 4).
FF 8. Baldo discloses that “[t]he amount of depigmenting agent in the
compositions of the invention preferably ranges from 0.0001% to 20% by
weight, relative to the total weight of the composition” (Baldo 4:35–38; see
also Ans. 4).
FF 9. Baldo discloses that its compositions may comprise additional active
agents including “anti-inflammatory agents” (Baldo 53:8–25; see Ans. 4).
ANALYSIS
Based on the combination of Michio, Gerke, and Baldo, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to formulate a composition comprising at least one
each of a depigmenting, or skin whitening, agent and an anti-inflammatory
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agent (see generally Ans. 4–6). In this regard, Examiner finds that the
combination of Michio, Gerke, and Baldo disclose concentration ranges for
the depigmenting (claimed “skin lightening agent”) and anti-inflammatory
(claimed “sclareolide”) agents that encompass the concentration ranges set
forth in Appellant’s claimed invention (see id. at 5–6). Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (“[W]here
there is a range disclosed in the prior art, and the claimed invention falls
within that range, there is a presumption of obviousness.”). In addition,
Examiner reasons that the determination of specific operable concentration
ranges, or ratios, of depigmenting and anti-inflammatory agents requires no
more than routine optimization of the ranges made obvious by the
combination of Michio, Gerke, and Baldo (see Ans. 5–6). In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“[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.”).
As explained below, we find no error in Examiner’s prima facie case
of obviousness.

Claim 1:
We are not persuaded by Appellant’s contention that “[t]he cited
references do not teach or suggest a combination of sclareolide and a skin
lightening agent, much less in the recited amounts” (Br. 9; cf. FF 1–9). As
Examiner explains, Michio discloses that exposure to UV radiation, i.e., sun
light, causes inflammation of the skin and “Gerke [discloses] that sclareol
and sclareolide both possess anti-inflammatory activity” (Ans. 11; see FF 1–
4 (Michio discloses a composition comprising skin whitening agents
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including “blended kojic acid, arbutin, hydroquinone monobenzyl ether,
hydrogen peroxide, [and] etc.”); FF 5 (Gerke discloses “sunscreens or ‘after-
sun’ preparations” comprising, inter alia, the anti-inflammatory sclareol or
sclareolide)). Baldo discloses sunscreen compositions comprising
depigmenting, i.e., whitening, agents and anti-inflammatory agents (see, e.g.,
FF 6–9). Thus, the combination of Michio, Gerke, and Baldo makes
obvious the inclusion of sclareolide, as an anti-inflammatory agent, in a
sunscreen composition comprising at least one skin lightening agent (see FF
1–9). Therefore, we are not persuaded by Appellant’s contention that
sclareolide is unrelated to sclareol and dihydro sclareol and, therefore, a
person of ordinary skill in this art would not have found it prima facie
obvious to include sclareolide, as an anti-inflammatory, in a composition
comprising a whitening agent (see Br. 10–11; see also id. at 19).
For the same reasons, because Michio discloses that sun causes skin
inflammation, we are not persuaded by Appellant’s contention that
Examiner’s finding that Michio’s disclosed skin lightening compounds lack
anti-inflammatory properties is an “acknowledg[ement] that the anti-
inflammation effect in [Michio] is directed to compounds ‘other’ than
sclareol” and, thus, “[t]he knowledge of a person of ordinary skill in the art
that sclareolide is an anti-inflammatory compound suitable for whitening
compositions would be [] required antecedent to a finding of [a] prima facie
case of obviousness herein” (Br. 18).
We are not persuaded by Appellant’s contention that Michio teaches
away from a composition comprising sclareol in favor of a hydrogenated
sclareol and its acylation derivative and, therefore, teaches away from
Appellant’s claimed invention (see id. at 11–18). Michio discloses the use
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of a hydrogenated sclareol and its acylation derivative as a melanin
generation depressant (see FF 2). As Appellant recognizes, although Michio
recognizes that UV radiation, i.e., exposure to sun light, causes inflammation
of the skin and that an anti-inflammatory may be added to skin whitening
compositions, Michio’s disclosure relates to a composition that “excels in
melanin generation depressor effect,” which can be used in “various
whitening cosmetics” (FF 1–3; see Br. 17 (“[t]he entire gist of . . . [Michio
is] not at all [concerned with] anti-inflammation”)). Examiner’s rejection,
however, is based on the use of sclareolide, as an anti-inflammatory, in a
composition, such as a sunscreen (see Ans. 11–12; see also id. at 4). Thus,
Appellant’s teaching away contention is not pertinent to Examiner’s
rationale for relying on Michio.
Because, as discussed above, Examiner’s rejection is based on the use
of sclareolide as an anti-inflammatory, we are not persuaded by Appellant’s
contention that “a person of ordinary skill in the art would not have had a
reasonable expectation that sclareolide would also act as a skin lightener,
because there is no disclosure linking Gerke . . . to [Michio]” (Br. 19). For
the same reasons, we are not persuaded by Appellant’s contention that “[a]
person of ordinary skill in the art would have no expectation that the use of
sclareolide would also work to provide the needed skin lightening which is
achieved by sclareol” (Br. 18).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that it would not have been obvious to formulate a composition
suggested by the combination of Michio, Gerke, and Baldo that comprises
an anti-inflammatory sclareolide and a skin lightening agent in amounts that
fall within the ranges required by Appellant’s claim 1 (see Br. 35; cf. FF 5).
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The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.”). Therefore, we are not persuaded by Appellant’s
contention that a composition suggested by the combination of Michio,
Gerke, and Baldo must meet Baldo’s requirement to maintain a critical
wavelength (Br. 20; cf. Ans. 13).
“Disclos[ure of] a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co. Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Therefore, we are not
persuaded by Appellant’s intimation that Baldo’s disclosure of “thousands of
possible permutations of depigmenting agents” supports a conclusion of
non-obviousness (Br. 20).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner’s rejection is based on improper hindsight (see Br.
18–19).

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Secondary Consideration:
Appellant relies on the Meyer Declaration8 to support a contention
that Appellant has “shown a strong synergistic effect to separate
combinations of sclareolide . . . [with three] skin lightening agents[: ]
phenylethyl resorcinol, butyl resorcinol and kojic acid” and that “the use of
the tested combinations of sclareolide and 3 separate skin lighteners could
more than probatively be extended to other skin lighteners” (Br. 21). We are
not persuaded.
In order to be persuasive of non-obviousness, “[e]vidence of
secondary considerations must be reasonably commensurate with the scope
of the claims.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
As Examiner explains, the “0.000025 – 0.00025%” sclareolide concentration
set forth in the examples of the Meyer Declaration does not fall within the
scope of Appellant’s claimed invention, which requires a “concentration
range of 0.001 – 5%” (Ans. 14; see also Meyer Decl. 6–9 (Tables 1–4)). In
addition, Examiner finds that Appellant failed to establish an evidentiary
basis on this record to support a finding that the results obtained from the
combination of specific concentrations of sclareolide with either phenylethyl
resorcinol, butyl resorcinol, or kojic acid demonstrates synergism for all skin
lightening agents and combinations of skin lightening agents encompassed
by Appellant’s claimed invention (see Ans. 14; cf. Br. 20 (Appellant
recognized, in its discussion of Baldo, that there are “thousands of possible
permutations of depigmenting agents” known to those of ordinary skill in

8 Declaration of Ms. Imke Meyer (Meyer Decl.), signed November 22, 2017.
Examiner and Appellant refer to this document as submitted with
Appellant’s December 20, 2017 response (see Ans. 14; see also Br. 21).
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this art)). Thus, we agree with Examiner’s finding that Appellant’s evidence
of synergism is not commensurate with the scope of its claims.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner failed to adequately explain why Appellant’s
evidence of synergism is not commensurate in scope with Appellant’s
claimed invention (see Br. 21–22). For the same reasons we are not
persuaded by Appellant’s reliance on the non-precedential Opinion in Ex
parte Treacy, Appeal 2011-00852, 2012 WL 2573060 (BPAI June 29, 2012)
to support a contention that, on this record, “Examiner has not provided any
rational explanation as to why the untested embodiments . . . would not be
expected to show synergism given the scope of the data provided in the
Specification and declarations” (Br. 21–22 (alteration original)).

Claim 2:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 2 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 22).
For the reasons discussed above, with regard to Appellant’s secondary
considerations, we are not persuaded by Appellant’s contention that “the
species of skin lighteners recited in claim 2 are even closer to the showing of
unexpected synergism in the [Meyer] Declaration, and as such, claim 2 is
even further patentable over the cited references” (id. at 23).

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Claim 10:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 10 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 23).

Claim 11:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 11 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 24).
Further, for the reasons discussed above, the combination of Michio,
Gerke, and Baldo make obvious a composition, i.e., medicament, comprising
the composition of Appellant’s claim 1, “wherein sclareolide is present in an
amount of from 0.001 to 5% by weight based on the total weight of the
composition” (see Br. 37; cf. FF 1–9). See Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (“[T]he
patentability of . . . composition claims depends on the claimed structure, not
on the use or purpose of that structure.”). Therefore, we are not persuaded
by Appellant’s contention that “[a] person of ordinary skill in the art would
not assume that a whitening cosmetic would necessarily work for fighting
diseases requiring an inhibition of melanin formation in melanocytes,” i.e.,
the stated use of the composition set forth in Appellant’s claim 11 (see Br.
24).
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Claim 12:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 12 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 25).
Further, for the reasons discussed above, the combination of Michio,
Gerke, and Baldo make obvious a composition, i.e., medicament, comprising
the composition of Appellant’s claim 1, “wherein sclareolide is present in an
amount of from 0.001 to 5% by weight based on the total weight of the
composition” (see Br. 37; cf. FF 1–9). See Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d at 809 (“[T]he patentability
of . . . composition claims depends on the claimed structure, not on the use
or purpose of that structure.”). Therefore, we are not persuaded by
Appellant’s contention that “[a] person of ordinary skill in the art would not
assume that a whitening cosmetic would necessarily work” “for fighting
diseases requiring an inhibition of interleukin-(IL-)1a biosynthesis”,” i.e.,
the stated use of the composition set forth in Appellant’s claim 12 (see Br.
25).

Claim 14:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 14 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 26).
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Further, for the reasons discussed above, the combination of Michio,
Gerke, and Baldo make obvious a composition, i.e., medicament, comprising
the composition of Appellant’s claim 1, “wherein sclareolide is present in an
amount of from 0.001 to 5% by weight based on the total weight of the
composition” (see Br. 37; cf. FF 1–9). See Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d at 809 (“[T]he patentability
of . . . composition claims depends on the claimed structure, not on the use
or purpose of that structure.”). Therefore, we are not persuaded by
Appellant’s contention that “[a] person of ordinary skill in the art would not
assume that a whitening cosmetic would necessarily work for [lightening]
both skin and hair,” i.e., the stated use of the composition set forth in
Appellant’s claim 14 (see Br. 26).

Claim 15:
Having found no deficiency in the combination of Michio, Gerke, and
Baldo, as it relates to Appellant’s claim 1, we are not persuaded by
Appellant’s contention that its “[c]laim 15 is even further patentable over the
disclosures of [Michio, Gerke, and Baldo] . . . for the same reasons noted
above for [c]laim 1” (Br. 27).
Appellant contends that because claim 15 limits the skin lightening
agent to phenylethyl resorcinol, claim 15 “is believed to be even more
commensurate in scope with the showing of synergism provided in the
[Meyer] Declaration” because the Meyer “Declaration contains a specific
example combining sclareolide and the herein-claimed compound of
phenylethyl resorcinol” (Br. 27). We are not persuaded.
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Although Appellant’s claim 15 does not recite the amount of
sclareolide or phenylethyl resorcinol in wt.%, claim 15 does require that
“sclareolide and phenylethyl resorcinol are present in a ratio of about 20:80
to about 80:20 by weight” (see Br. 38). As Examiner explains, however, the
sclareolide and phenylethyl resorcinol concentrations encompassed by the
ratios set forth in Appellant’s claim 15 are unbounded and encompass
concentrations of 0.001 to 5% by weight based on the total weight of the
composition for either of sclareolide or phenylethyl resorcinol (see Ans. 14–
15 (citing Appellant’s claims 20 and 21)). Thus, for the reasons set forth
above, we find that Appellant’s evidence of synergism is not commensurate
with the scope of Appellant’s claim 15.
CONCLUSION
The preponderance of evidence relied upon by Examiner support a
conclusion of obviousness.
The rejection of claims 1, 2, 10–12, 14, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Michio, Gerke, and Baldo
is affirmed. Claims 3–7, and 16 are not separately argued and fall with
claim 1. Claims 20 and 21 are not separately argued and fall with claim 15.

Obviousness-type Double Patenting:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness-type double patenting?

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FACTUAL FINDINGS (FF)
FF 10. Allowed claim 12 of Krutmann ’783 is reproduced below:
12. A method for curing and/or treating human skin and/or hair
suffering from disorders and/or dysfunctions from air pollution
induced damage comprising:
applying an effective amount of a medicament comprising a
binary mixture of
(i) E/Z-2-benzylindene-5,6-dimethoxy-3,3-dimethylindan-1-one
and ginger root CO2 extract, or
(ii) E/Z-2-benzylindene-5,6-dimethoxy-3,3-dimethylindan-1-
one and sclareolide, or
(iii) E/Z-2-benzylindene-5,6-dimethoxy-3,3-dimethylindan-1-
one and purple coneflower pressed juice,
to the skin and/or hair of a person suffering from disorders
and/or dysfunctions of the skin and/or hair from air pollution
induced damage.
FF 11. Allowed claim 16 of Krutmann ’783 is reproduced below:
The method of Claim 12, wherein the disorders and/or
dysfunctions of the skin from air pollution inducted damage is
skin cancer, skin inflammation or hyperpigmentation.
FF 12. Krutmann ’783 discloses compositions, i.e., medicaments,
comprising, inter alia, “skin lightening actives,” such as vitamin C, arbutin,
resorcinol, and phenylethyl resorcinol (see Krutmann ’783 ¶¶ 56–59).
FF 13. Allowed claim 12 of Krutmann ’135 is reproduced below:
12. A method for curing and/or treating human skin and/or hair
suffering from disorders and/or dysfunctions from air pollution
induced damage comprising:
applying an effective amount of a medicament comprising a
binary mixture of
(i) ginger root CO2 extract and sclareolide, or
(ii) ginger root CO2 extract and E/Z-2-benzylindene-5,6-
dimethoxy-3,3-dimethylindan-1-one, or
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(iii) ginger root CO2 extract and purple coneflower pressed
juice to the skin and/or hair of a person suffering from disorders
and/or dysfunctions of the skin and/or hair from air pollution
induced damage.
FF 14. Allowed claim 16 of Krutmann ’135 is reproduced below:
The method of Claim 12, wherein the disorders and/or
dysfunctions of the skin from air pollution inducted damage is
skin cancer, skin inflammation or hyperpigmentation.
FF 15. Krutmann ’135 discloses compositions, i.e., medicaments,
comprising, inter alia, “skin-lightening agents,” such as vitamin C, arbutin,
resorcinol, and phenylethyl resorcinol (see Krutmann ’135 ¶¶ 66–69 and
218–220).
FF 16. Examiner relies on Baldo as discussed above (Ans. 6 and 8; see also
FF 6–9).
ANALYSIS
Based on the claims of Krutmann ’783 or Krutmann ’135 in view of
Baldo, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious
to add an ingredient such as phenylethyl resorcinol to
compositions of [Krutmann ’783 or Krutmann ’135]. The
person of ordinary skill in the art would have been motivated to
make those modifications and reasonably would have expected
success because the anti-pollution cosmetics of [Krutmann ’783
or Krutmann ’135] can have additional activities by the addition
of an ingredient such as phenylethyl resorcinol that is known in
the art as a depigmenting agent to control the browning of skin
while also providing anti-pollution effects to the skin. It would
have been customary for an artisan of ordinary skill to
determine the optimal amount of each ingredient to add in order
to best achieve the desired results based on the desired results,
dosing amount and/or frequency and the presence of additional
ingredients that may have similar effects within the ranges
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disclosed by the prior art that overlap with the presently
claimed ranges.
(Ans. 6–8; see also FF 10, 11, 13, and 14.)
Appellant’s contentions are the same for both provisional nonstatutory
double patenting rejections (see Br. 29–33). Therefore, we address
Appellant’s contentions relating to both provisions nonstatutory double
patenting rejections together.
Because the provisional nonstatutory double patenting rejections are
not the only rejection remaining in this Application, we are not persuaded by
Appellant’s contentions regarding MPEP § 804(I)(B)(1)(b) (see Br. 29 and
31–32).
Appellant contends that because Krutmann ’783 and Krutmann ’135
both have
voluminous disclosure[s] which include[] a virtual dictionary of
cosmetic ingredients, . . . [absent hindsight,] a person of
ordinary skill in the art would have no specific motivation to
select skin lighteners, such as phenylethyl resorcinol, out of the
thousands of other potential choices of additional ingredients
and classes of ingredients.
(Br. 29–31 and 32–33.) We are not persuaded.
The claims of Krutmann ’783 and Krutmann ’135 are drawn to
methods of treating, inter alia, hyperpigmentation by applying a
composition, i.e., medicament, comprising sclareolide (see FF 10–15). A
patent disclosure may be used as a dictionary to learn the meaning of a term
in the patent claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
1299 (Fed. Cir. 1999); see In re Basell Poliolefine Italia S.P.A., 547 F.3d
1371, 1375 (Fed. Cir. 2008) (In the context of an obviousness-type double-
patenting rejection, a patent’s disclosure may be used to determine whether a
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claim “merely define[s] an obvious variation of what is earlier disclosed and
claimed,” “to learn the meaning of [claim] terms,” and to “interpret [ ] the
coverage of [a] claim.”). As Appellant recognizes, using the disclosures of
Krutmann ’783 and Krutmann ’135 as a dictionary, a person of ordinary skill
in this art would have understood that a composition, i.e., medicament,
within the scope of the claims of Krutmann ’783 and Krutmann ’135 may
include, inter alia, a skin-lightening agent, such as vitamin C, arbutin,
resorcinol, and phenylethyl resorcinol (see Br. 29–31 and 32–33; see also FF
12 and 15).
In addition, Baldo discloses compositions comprising depigmenting
agents including vitamin C, arbutin, resorcinol and esters thereof, and
hydroxylated diphenylmethane derivatives, such as phenylethyl resorcinol
(FF 7; see also FF 16). Thus, at the time of Appellant’s claimed invention,
the selection of an appropriate depigmenting agent, such as phenylethyl
resorcinol, would have been prima facie obvious to a person of ordinary skill
in this art. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327,
335 (1945) (“Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
the last opening in a jig-saw puzzle. It is not invention.”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that the provisional nonstatutory double patenting rejections are
based on improper hindsight (see Br. 29–31 and 32–33).
CONCLUSION
The provisional rejection of claims 1–7, 10–12, 14–16, 20, and 21
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over the claims of Krutmann ’783 in view of Baldo is
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affirmed. Claims 2–7, 10–12, 14–16, 20, and 21 are not separately argued
and fall with claim 1.
The provisional rejection of claims 1–7, 10–12, 14–16, 20, and 21
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over the claims of Krutmann ’135 in view of Baldo is
affirmed. Claims 2–7, 10–12, 14–16, 20, and 21 are not separately argued
and fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 10–12,
14–16, 20,
21
103 Michio, Gerke,
Baldo
1–7,
10–12,
14–16, 20,
21

1–7, 10–12,
14–16, 20,
21
Provisional
Nonstatutory
Double Patenting,
the claims of
Krutmann ’783,
Baldo
1–7,
10–12,
14–16, 20,
21

1–7, 10–12,
14–16, 20,
21
Provisional
Nonstatutory
Double Patenting,
the claims of
Krutmann ’135,
Baldo
1–7,
10–12,
14–16, 20,
21

Overall
Outcome
1–7,
10–12,
14–16, 20,
21

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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