The Procter & Gamble Company

Patent Trials and Appeals Board

Jul 29, 2020

2020000039 (P.T.A.B. Jul. 29, 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.
15/206,623 07/11/2016 Cheri Lynn SWANSON 11241RD 2201
27752 7590 07/29/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHERI LYNN SWANSON,
TOMOHIRO HAKOZAKI, and LEO TIMOTHY LAUGHLIN II
__________

Appeal 2020-000039
Application 15/206,623
Technology Center 1600
__________

Before ERIC B. GRIMES, LINDA M. GAUDETTE, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant 0F1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 8–11, and 13–18. 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 The Procter &
Gamble Company of Cincinnati, Ohio. Appeal Br. 1.
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STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 1, 7, and 20 under 35 U.S.C. § 103(a) as being unpatentable over
Millikin1F2 and Baldo.2F3 Final Act. 2–8. 3F4
Appellant’s claim 1 is representative and reads as follows:
1. A method of boosting the ability of a vitamin B3 compound
and an N-acyl amino acid compound to inhibit PAR2 activation
of keratinocytes, comprising:
a. identifying a target portion of skin comprising one
or more keratinocytes exhibiting a
hyperpigmentation condition; and
b. applying a cosmetic composition to the target
portion of skin, wherein the cosmetic composition
contains about 0.5% to about 10% by weight of the
composition of niacinamide, about 0.02% to about
2.5% by weight of the composition of N-
undecylenoyl-L-phenylalanine, and about
0.00006% to about 0.25% by weight of the
composition of a Laminaria Saccharina extract to
the target portion of skin during a treatment period,
and
the amount of Laminaria Saccharina extract is sufficient
to boost the ability of the vitamin B3 compound
and N-acyl amino acid compound to inhibit PAR2
activation of keratinocytes by at least 10% relative

2 US 2008/0069784 A1 (published Mar. 20, 2008).
3 US 2008/0119527 A1 (published May 22, 2008).
4 Final Action entered September 10, 2018. The rejection in the Final
Action was directed to claims 1–4, 7, and 20. See Final Act. 2–8. After the
Final Action, Appellant filed an amendment, which the Examiner entered,
leaving only claims 1, 7, and 20 pending. See Amendment After Final
Office Action (filed December 13, 2018); see also Advisory Action entered
January 23, 2019 (entering Amendment After Final Office Action).
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to the same composition without the Laminaria
Saccharina extract, and
wherein a ratio of Laminaria Saccharina extract to N-
acyl amino acid compound is between 1:100 and
1:20.
Appeal Br. 7 (some indentation added).
DISCUSSION
The Examiner’s Prima Facie Case
In rejecting Appellant’s representative claim 1, the Examiner cited
Millikin as disclosing a process of treating hyperpigmentation by applying to
the skin a composition containing two of the three ingredients recited in
claim 1—niacinamide (vitamin B3) and N-undecylenoyl-L-phenylalanine—
the composition containing those ingredients at concentration ranges
overlapping the concentration ranges recited in claim 1. Final Act. 3–4.
The Examiner conceded that Millikin differs from representative
claim 1 in that Millikin does not disclose an extract of Laminaria saccharina
as an ingredient in its administered composition. Final Act. 4.
The Examiner cited Baldo as evidence that extracts of Laminaria
saccharina, at concentration ranges encompassing the range recited in
Appellant’s claim 1, were known in the art to be useful in compositions for
treating acne-associated excessive pigmentation, as well for as treating oily
skin. Final Act. 4–5, 7–8.
Based on the references’ combined teachings, the Examiner
concluded that it would have been obvious to include an extract of
Laminaria saccharina in Millikin’s compositions:
One skilled in the art would have recognized the benefit
of including luminaria saccharina in the composition because
the composition could then be used to also treat darkening of
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the skin caused by acne. Moreover, by adding laminaria
saccharina to the composition as taught by Millik[i]n the
composition could further be used to treat greasy skin. The
inhibiting of PAR2 activation of keratinocytes [recited in claim
1] would be an intrinsic property provided by the composition
comprising vitamin B3, a N-acyl amino acid compound and
laminaria saccharina as [] taught by Millik[i]n and Baldo, as a
whole.
Final Act. 5–6.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
that a preponderance of the evidence fails to support the Examiner’s
conclusion that the process of Appellant’s representative claim 1 would have
been obvious in view of Millikin and Baldo.
As recited in claim 1, Millikin describes processes of treating skin
hyperpigmentation by applying to the skin a composition that contains a
primary ingredient and “at least one additional skin and/or hair care active
selected from . . . vitamin B3, . . . N-acyl amino acid compounds, . . . and/or
combinations thereof . . . .” Millikin ¶ 5.
As recited in Appellant’s claim 1, Millikin discloses that niacinamide
is a preferred vitamin B3 compound. Millikin ¶ 80.
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Millikin discloses that a “preferred N-acyl Amino Acid is N-
undecylenoyl-L-phenylalanine,” the phenylalanine derivative recited in
representative claim 1. Millikin ¶ 90. Millikin discloses that “N-
undecylenoyl-L-phenylalanine is commercially available under the
tradename Sepiwhite® from SEPPIC.” Id.
Millikin discloses that the additional skin care ingredients, which
include the niacinamide and N-undecylenoyl-L-phenylalanine recited in
Appellant’s representative claim 1, can be present in the hyperpigmentation-
treating compositions at concentrations “preferably . . . from about 0.0001%
to about 50%, more preferably from about 0.001% to about 20%, even more
preferably from about 0.01% to about 10%, by weight of the composition.”
Millikin ¶ 72.
Each of Millikin’s ranges of preferred concentrations of its additional
active ingredients, including 0.01–10% by weight, entirely encompassesthe
range recited in representative claim 1 for both niacinamide (0.5% to about
10% (Appeal Br. 7)) and N-undecylenoyl-L-phenylalanine (0.02% to about
2.5% (id.)).
Millikin thus describes treating hyperpigmentation with a composition
that contains two of the three ingredients recited in Appellant’s
representative claim 1, at concentration ranges that include the ranges recited
in claim 1. While Millikin does not disclose including the Laminaria
saccharina extract of Appellant’s representative claim 1 in its compositions,
Millikin discloses that it is useful to include ingredients for treating oily
skin, resulting from excessive sebum secretion, in its compositions. See
Millikin ¶¶ 20, 60.
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As the Examiner found, Baldo discloses compositions for application
to the skin to address sebum-related oiliness and hyperpigmentation:
The present invention relates to a cosmetic composition
for correcting or preventing disorders associated with
greasiness of a dark skin, especially by the action of reducing
the secretion of sebum while at the same time imparting
depigmenting properties . . . . [T]his process makes it possible
to combat both hyperseborrhoea and localized
hyperpigmentation that may occur at the site of cicatrization of
acne lesions on dark skin.
Baldo ¶ 2; see also id. ¶ 4 (“Greasy skin is hyperseborrhoeic and
characterized by an exaggerated secretion and excretion of sebum.”).
Baldo discloses that “[p]referred anti-seborrhoeic active agents . . .
include . . . extracts of the alga Laminaria saccharina, such as the product
sold under the name Phlorogine® by the company Biotechmarine.” Baldo
¶¶ 82–86.
Baldo discloses that useful concentrations of its anti-seborrhoeic
agents are “from 0.1% to 10% by weight, preferably from 0.1% to 5% by
weight and preferentially from 0.5% to 3% by weight relative to the total
weight of the composition.” Baldo ¶ 102.
Baldo’s broadest range of concentrations of its anti-seborrhoeic
agents, from about 0.1% to 10% by weight, overlaps the range recited in
representative claim 1 for the Laminaria saccharina extract (0.00006% to
about 0.25% (Appeal Br. 7)).
Thus, given Baldo’s teaching that Laminaria saccharina extracts were
useful as anti-seborrhoeic agents in skin-applied hyperpigmentation-treating
compositions, we agree with the Examiner that a skilled artisan had a good
reason for, and a reasonable expectation of success in, including Laminaria
saccharina extracts in Millikin’s skin-applied hyperpigmentation-treating
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compositions. In particular, given Millikin’s teaching that it was useful to
include ingredients for treating oily skin resulting from excessive sebum
secretion in its compositions, and given Baldo’s teaching that Laminaria
saccharina extracts were useful for that purpose, we agree with the
Examiner that a skilled artisan would have considered it obvious to include
Laminaria saccharina extracts in Millikin’s compositions.
Moreover, because the useful concentration ranges taught in Millikin
and Baldo for niacinamide, N-undecylenoyl-L-phenylalanine, and
Laminaria saccharina extracts encompass or overlap the ranges recited in
Appellant’s representative claim 1, we also agree with the Examiner that the
concentrations of those ingredients recited in claim 1 would have been prima
facie obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”).
We acknowledge, as Appellant contends, that representative claim 1
recites a specific range of ratios of amounts (1:100 to 1:20) of the Laminaria
saccharina extract and the N-undecylenoyl-L-phenylalanine. See Appeal.
Br. 7. Appellant does not persuade us, however, that it would have been
unobvious to include amounts of Laminaria saccharina extract and N-
undecylenoyl-L-phenylalanine, encompassed by the range of ratios recited in
claim 1, in the hyperpigmentation-treating compositions suggested by
Millikin and Baldo. See Appeal Br. 3–4; Reply Br. 1–2.
Specifically, as discussed above, Baldo discloses that useful
concentrations of Laminaria saccharina extracts range from 0.1% to 10% by
weight of the skin-applied compositions (Baldo ¶ 102), and Millikin
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discloses that preferred concentrations of N-undecylenoyl-L-phenylalanine
range from about 0.01–10% by weight of the compositions (Millikin ¶ 72).
Thus, viewed in combination, Baldo and Millikin teach that useful amounts
of Laminaria saccharina extract and N-undecylenoyl-L-phenylalanine
include relative proportions that are encompassed by the range of ratios
recited in representative claim 1. Appellant does not persuade us, therefore,
that Baldo and Millikin fail to suggest a composition in which the combined
amounts of Laminaria saccharina extract and N-undecylenoyl-L-
phenylalanine are encompassed by claim 1’s ratio.
Appellant also does not persuade us that the Examiner erred in
determining that the concentration of Laminaria saccharina extract taught in
Baldo would inherently boost the inhibition of PAR2 activation of
keratinocytes by at least 10%, as recited in Appellant’s representative claim
1. See Appeal Br. 4–5; Reply Br. 2–3; see also Appeal Br. 7 (claim 1
reciting that “the amount of Laminaria Saccharina extract is sufficient to
boost the ability of the vitamin B3 compound and N-acyl amino acid
compound to inhibit PAR2 activation of keratinocytes by at least 10%
relative to the same composition without the Laminaria Saccharina
extract”).
Inherency is appropriate in an obviousness analysis “when the
limitation at issue is the ‘natural result’ of the combination of prior art
elements.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195
(Fed. Cir. 2014) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
In the present case, while representative claim 1 requires the claimed
composition to contain a Laminaria saccharina extract in an amount that
boosts the inhibition of PAR2 activation by the other ingredients by 10%,
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claim 1 also recites that the composition must contain about 0.00006% to
about 0.25% by weight of the Laminaria saccharina extract. Appeal Br. 7.
Although Appellant’s Specification does not state expressly what
absolute amounts of the Laminaria saccharina extract boost the PAR2
inhibitory effect, Appellant’s Specification discloses that the Laminaria
saccharina extract is useful in the inventive compositions at a wide range of
concentrations, consistent with the concentration range recited in
representative claim 1. See Spec. 6 (“The composition of the present
invention therefore may contain a Laminaria Saccharina extract in an
amount from about 0.00001% to about 1.25%, in one embodiment from
about 0.00006% to about 0.5%, in another embodiment from about 0.002%
to about 0.25%, by weight of the composition.”).
Because the concentration of Laminaria saccharina extract taught in
Baldo as being useful in hyperpigmentation-treating compositions
significantly overlaps the concentrations of the extract recited both in
representative claim 1 and in Appellant’s Specification, we find that the
Examiner had a reasonable basis for determining that Baldo suggests using
an amount of Laminaria saccharina that naturally results in the claimed 10%
boost in PAR2 inhibitory effect recited in Appellant’s representative claim 1.
Appellant does not persuade us, therefore, that the Examiner erred in finding
that the amount of Laminaria saccharina extract taught by Baldo inherently
meets the functionally defined amount of that ingredient recited in claim 1.
Appellant also does not persuade us that it has advanced evidence of
unexpected results sufficient to outweigh the prior art evidence of
obviousness presented by the Examiner. See Appeal Br. 5 (citing Spec. 19);
Reply Br. 2. In particular, we agree with the Examiner’s determination that
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Appellant’s evidence of unexpected results is not commensurate in scope
with the subject matter encompassed by representative claim 1. See Final
Act. 11–12.
The Specification describes a comparison of different combinations of
niacinamide, N-undecylenoyl-L-phenylalanine (“Sepiwhite”), and an extract
of Laminaria saccharina (“Phlorigine”), in relation to the capacity to inhibit
PAR2 activation in cells. See Spec. 17–19. The Specification describes the
ingredients in the compared compositions as follows:
Stock compositions of 1% Phlorogine (i.e., composition
comprises approximately 0.025% - 0.01 % Laminaria
Saccharina extract), 1% Sepiwhite, 5% niacinamide, and
combinations thereof are prepared and diluted prior to use. Test
runs are performed at dilution factors of 0.045, 0.023, and
0.006. For clarity purposes, the 1% Sepiwhite composition
diluted at a factor of 0.045 yields a test compositing [sic,
composition?] comprising 0.045% Sepiwhite.
Spec. 18.
The results of the comparison are presented in the following table (see
Spec. 18–19):

The Specification explains that a “value of 100% represents inhibition
of PAR2 activation equivalent to the control where no trypsin initiator is
present.” Spec. 18.
Based on the results shown above, the Specification states as follows:
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The test compositions comprising Phlorogine alone show
little to no inhibitory effect. Sepiwhite and niacinamide
individually demonstrate an inhibitory effect which is
pronounced at higher dilutions. Sepiwhite and niacinamide
together demonstrate a prominent inhibitory effect especially at
higher dilutions. The combination of Sepiwhite, niacinamide,
and Phlorogine demonstrate an even greater inhibitory effect
than the combination of Sepiwhite and niacinamide. This
result[] is unexpected given that Phlorogine alone provides
little to no inhibitory effect.
Spec. 19 (emphasis added).
While we acknowledge the Specification’s assertion regarding the
unexpectedness of the results shown in the table spanning pages 18 and 19
of the Specification, Appellant’s representative claim 1 encompasses
concentrations of each of the claimed ingredients significantly higher than
the highest dilution factor of 0.045 for which data are presented. See Appeal
Br. 7 (representative claim 1 recites about 0.5% to about 10% by weight of
the composition of niacinamide, about 0.02% to about 2.5% by weight of the
composition of N-undecylenoyl-L-phenylalanine, and about 0.00006% to
about 0.25% by weight of the composition of a Laminaria saccharina
extract). We note, moreover, that as the concentrations of the ingredients in
the compared compositions increases, the boosting effect of the Phlorigine
decreases. See Spec. 18–19.
Because the data supporting the Specification’s assertion of
unexpectedness is limited to compositions containing relatively low
concentrations of ingredients (substantially less than 1%), whereas
Appellant’s representative claim 1 encompasses ingredient concentrations
significantly higher than the concentrations upon which the assertions of
unexpectedness are based, we agree with the Examiner that the evidence of
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unexpectedness advanced by Appellant is not commensurate in scope with
the subject matter recited in claim 1. In that regard we note, moreover, that
claim 1 encompasses the use of any extract of Laminaria saccharina,
whereas the assertion of unexpected results is based only on the Phlorigine
product. Because claim 1 encompasses the use of Laminaria saccharina
extracts for which no unexpected potentiation effect has been shown, such as
the HG 657 product from Ennagram, France (see Spec. 5), we find that the
evidence of unexpected results advanced by Appellant is not commensurate
in scope with claim 1 on this basis also.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that Millikin and Baldo would have
suggested performing a process having all of steps and features recited in
Appellant’s representative claim 1. For the reasons discussed, Appellant
also does not persuade us that it has advanced evidence of unexpected
results sufficient to outweigh the prior art evidence of obviousness presented
by the Examiner in relation to claim 1.
Because the preponderance of the evidence therefore supports the
Examiner’s conclusion of obviousness as to claim 1, we affirm the
Examiner’s rejection of claim 1 over Millikin and Baldo. Claims 7 and 20
fall with claim 1. See 37 C.F.R. 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 20 103(a) Millikin, Baldo 1, 7, 20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED