Anka Petkoska et al.

Patent Trials and Appeals Board

Feb 15, 2022

2021002562 (P.T.A.B. Feb. 15, 2022)

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. 15/141,542 04/28/2016 Anka T Petkoska ANKANI-700010 2450 90507 7590 02/15/2022 Rhodes IP PLC 3241 Electric Rd Bldg D STE 1A Roanoke, VA 24018 EXAMINER FRAZIER, BARBARA S ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 02/15/2022 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): crhodes@rhodesip.com ipdocketing@rhodesip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANKA T. PETKOSKA and ANITA T. BROACH1 Appeal 2021-002562 Application 15/141,542 Technology Center 1600 Before ERIC B. GRIMES, JOHN G. NEW, and JOHN E. SCHNEIDER, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a method of protecting skin from exposure to high energy visible (HEV) light, which have been rejected as indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the rejection for indefiniteness. 1 Appellant identifies the real parties in interest as Anka Petkoska and Anita Broach. Appeal Br. 3. “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2021-002562 Application 15/141,542 2 STATEMENT OF THE CASE The Specification states that compact fluorescent light (CFL) bulbs and light-emitting diodes (LEDs) can emit light in the 380-500 nm range. These wavelengths of light can cause damage to the skin of a user positioned under or near the CFL and LED bulbs. Also, solar radiation reaching the Earth consists approximately 25-30% light in this range. . . . Electronic device screens and displays having LED backlights emit light in 400-500 nm range, and thus, present danger for the user, as well. Spec. ¶ 6. “Conventional sunscreen compositions are designed to absorb light at wavelengths below 380 nm and provide no protection against longer wavelength solar radiation (>380 nm), as well as CFL- and LED- light exposure above 380 nm.” Id. The Specification discloses “skin, hair and nail care product compositions, which can protect the skin, hair and nails from harmful energetic portions of the visible light spectrum, i.e. violet-blue light part (380-500 nm or 400-500 nm also referred to herein as high energy visible (HEV) light).” Id. ¶ 66. The Specification also describes a method compris[ing] topically administering a composition to [an] animal cell comprising at least one natural oil or extract present in an effective amount to provide a HEV/VIS ratio of greater than or equal to 1.5 at an area of the animal cell where the composition has been topically administered. Id. ¶ 8. The Specification provides a working example in which “HEV/VIS ratios were calculated for various oils. The HEV value was based on the average absorbance in the 400-500 nm range, and the VIS value was based on the average absorbance in the 380-750 nm range.” Id. ¶ 406. Appeal 2021-002562 Application 15/141,542 3 Claims 1, 3, 5, 7, 9, 10, 12, 15, 17-19, and 132-135 are on appeal. Claim 1, the only independent claim, is reproduced below: 1. A method of protecting cellular damage of an animal skin from exposure to incident high energy visible light from an artificial light source or the sun comprising a wavelength of about 400 nm to about 500 nm, the method comprising topically administering a composition to the animal skin comprising at least one natural oil or extract present in an effective amount to provide a HEV/VIS ratio of greater than or equal to 1.5 at an area of the animal cell where the composition has been topically administered, wherein an amount of composition topically administered, to the animal skin is selected to protect the animal skin from generating reactive oxygen species upon exposure to the artificial light source or the sunlight that comprises the wavelength of about 400 nm to about 500 nm. In response to an election-of-species requirement (mailed January 19, 2017), Appellant elected “a five oil combination which includes turmeric oil, broccoli seed oil, cranberry oil, sea buckthorn berry oil and Helichrysum oil.” Response to Species Election Requirement, filed March 20, 2017. The claims stand rejected as follows: Claims 1, 3, 5, 7, 9, 10, 12, 15, 17-19, and 132-135 under 35 U.S.C. § 112(b) as indefinite (Final Action2 2); Claims 1, 3, 5, 7, 15, and 132-135 under 35 U.S.C. § 103 as obvious based on Dayan3 (Final Action 6); and 2 Office Action mailed Dec. 12, 2019. 3 Dayan et al., US 2013/0078205 A1, published Mar. 28, 2013. Appeal 2021-002562 Application 15/141,542 4 Claims 1, 3, 5, 7, 9, 10, 12, 15, and 17-19 under 35 U.S.C. § 103 as obvious based on Dayan, Pather,4 Pauly,5 Golz-Berner,6 and Millou7 (Final Action 8). OPINION Indefiniteness Claims 1, 3, 5, 7, 9, 10, 12, 15, 17-19, and 132-135 stand rejected as indefinite, on the basis that “it is not clear which combination(s) of oil(s) and/or extract(s), in what amount(s) and/or ratio(s), . . . would possess th[e] property” of providing a HEV/VIS ratio of greater than or equal to 1.5, as recited in Appellant’s claim 1, “because the boundaries imposed by the functional language are insufficiently defined.” Final Action 3. The Examiner also finds the claims indefinite on the basis that “it is not clear which combination(s) of components, in what amount(s) and/or ratio(s), . . . would possess th[e] property” of protecting an animal from generating reactive oxygen species upon exposure to light with a wavelength of 400- 500 nm, as recited in Appellant’s claim 1, “because the boundaries imposed by the functional language are insufficiently defined.” Id. at 3-4. Appellant argues that [t]he specification provides ample guidance of how a HEV/VIS ratio is determined. Para. No. 406 specifically states that the HEV value is based on the average absorbance in the 400-500 nm range. The VIS value is based on the average absorbance in the 380-750 nm range. . . . 4 Pather et al., US 2014/0056829 A1, published Feb. 27, 2014. 5 Pauly et al., US 2003/0091518 A1, published May 15, 2003. 6 Golz-Berner et al., US 2010/0166687 A1, published July 1, 2010. 7 Millou et al., US 2004/0258783 A1, published Dec. 23, 2004. Appeal 2021-002562 Application 15/141,542 5 Thus, to determine if a particular composition meets the specified HEV/VIS ratio of 1.5 or more, the skilled person need only measure the absorbance values over the specified different wavelength ranges, calculate the average absorbance over each wavelength range and then calculate a ratio Appeal Br. 9. We agree with Appellant that a skilled artisan would understand the meaning of an “HEV/VIS ratio of greater than or equal to 1.5,” when that phrase is read in light of the Specification. As Appellant points out, the Specification states that “HEV” refers to “the average absorbance in the 400-500 nm range,” and “VIS” refers to “the average absorbance in the 380-750 nm range.” Spec. ¶ 406. Thus, a skilled artisan would understand that the HEV/VIS ratio for a composition is its average absorbance in the 400-500 nm range divided by its average absorbance in the 380-750 nm range. However, we agree with the Examiner that the claims are indefinite based on the limitation of “an amount of composition topically administered to the animal skin . . . selected to protect the animal skin from generating reactive oxygen species upon exposure to the artificial light source or the sunlight that comprises the wavelength of about 400 nm to about 500 nm.” Claim 1. In response to this basis of the rejection, Appellant does not point to any guidance in the Specification regarding how protection from generating reactive oxygen species is determined, what degree of protection is required in order “to protect the animal skin from generating reactive oxygen species,” or how the degree of protection is affected by the amount of composition topically administered. Appellant, in fact, does not respond at all to this basis of the rejection. See Appeal Br. 9-10, Reply Br. 2-3. Appeal 2021-002562 Application 15/141,542 6 [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). We affirm the rejection of claims 1, 3, 5, 7, 9, 10, 12, 15, 17-19, and 132-135 under 35 U.S.C. § 112(b), based on the limitation “an amount of composition topically administered to the animal skin is selected to protect the animal skin from generating reactive oxygen species upon exposure to the artificial light source or the sunlight that comprises the wavelength of about 400 nm to about 500 nm.” Obviousness based on Dayan Claims 1, 3, 5, 7, 15, and 132-135 stand rejected as obvious based on Dayan. The Examiner finds that Dayan teaches topically applying “compositions for the protection of skin from the harmful effects of radiation, and particularly the harmful effects of high energy visible (HEV) radiation.” Final Action 6. The Examiner finds that Dayan’s “topically active compounds can be a plant extract or natural oil; . . . [s]uitable plant extracts include cranberry.” Id. With regard to a natural oil or extract “present in an amount to provide a HEV/VIS ratio of greater than or equal to 1.5,” the Examiner reasons that “since Dayan teaches the same compound as that of the claimed invention, in amounts which provide light-absorbing properties, and wherein the composition protects the skin from the harmful effects of sunlight and Appeal 2021-002562 Application 15/141,542 7 HEV light, one skilled in the art would reasonably expect the composition to possess the same properties.” Id. at 7. Appellant argues that “Dayan’s active component that absorbs light is [a] melanin derivative. It is the melanin derivative, any not any oils present in an effective amount, that is specified in Dayan as being used to protect the skin from high energy visible light.” Appeal Br. 11. Appellant argues that [t]here is no teaching in Dayan that suggests any method that would use at least one natural oil or extract present in an effective amount to provide a HEV/VIS ratio of greater than or equal to 1.5 at an area of the animal cell where the composition has been topically administered. Id. at 12. Appellant also argues that no evidence has been provided that an amount of oil used in a cosmetically acceptable formulation with Dayan’s melanin derivative would provide the specified HEV/VIS ratio. In fact, there has been no evidence presented at all that Dayan’s formulations (with or without any melanin derivative) would provide the specified HEV/VIS ratio. Id. at 13. We agree with Appellant that the Examiner has not persuasively shown that the method of claim 1 would have been obvious based on Dayan. “An examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011). Appellant’s claim 1 requires topically applying a composition comprising “at least one natural oil or extract present in an effective amount to provide a HEV/VIS ratio of greater than or equal to 1.5.” The Examiner finds that Dayan’s composition meets this limitation because its “topically active compounds can be a plant extract or natural oil; . . . [s]uitable plant Appeal 2021-002562 Application 15/141,542 8 extracts include cranberry.” Final Action 6. The Examiner, however, points to no evidence that any of the plant extracts disclosed by Dayan, including cranberry extract, provide a HEV/VIS ratio of at least 1.5 when topically applied. Instead, the Examiner reasons that, “since Dayan teaches the same compound as that of the claimed invention, . . . one skilled in the art would reasonably expect the composition to possess the same properties.” Id. at 7. This reasoning fails here, because none of the claims on appeal recites a composition comprising any specific plant extract, let alone cranberry extract. To the extent that the Examiner is referring to the elected species of composition, we note that that composition includes cranberry oil, not cranberry extract, and also includes four other plant oils. The Examiner has not pointed to evidence that cranberry oil and cranberry extract provide the same HEV/VIS ratio when topically applied, or that a mixture of cranberry extract with any other plant oils or extracts will provide an HEV/VIS ratio of at least 1.5 when topically applied. In summary, the Examiner has not carried the initial burden of showing that Dayan would have suggested a method of using a composition meeting the limitations of Appellant’s claim 1, and therefore has not made out a prima facie case of obviousness. We reverse the rejection of claims 1, 3, 5, 7, 15, and 132-135 under 35 U.S.C. § 103 based on Dayan. Obviousness based on Dayan, Pather, Pauly, Golz-Berner, and Millou Claims 1, 3, 5, 7, 9, 10, 12, 15, and 17-19 stand rejected as obvious based on Dayan, Pather, Pauly, Golz-Berner, and Millou. The Examiner states that, regarding the “elected species of turmeric oil, broccoli seed oil, Appeal 2021-002562 Application 15/141,542 9 cranberry oil, sea buckthorn berry oil, and Helichrysum oil, the invention of Dayan is delineated above.” Final Action 8. The Examiner finds that Dayan does not specifically teach suitable plant extracts and natural oils also include turmeric oil, broccoli seed oil, sea buckthorn berry oil, and Helichrysum oil. However, said oils are known to be suitable in photoprotective compositions. For example: Pather teaches sunscreen compositions containing an extract of Curcuma longa L. (i.e., turmeric) (abstract; paragraph [0014]). Pauly teaches . . . broccoli seed, may be used in compositions for UV protection (e.g., see paragraphs [0001], [0009]-[0011]). Golz-Berner teaches cosmetic light-protective agents for wavelengths of from 250 to 1400 nm, comprising sea buckthorn oil from berries (e.g., see abstract; paragraph [0017]). Millou teaches essential oil extracted from Helichrysum italicum in skin care compositions (abstract), including protection from the damaging effects of the environment such as the sun (paragraph [0026]). Id. at 9. The Examiner concludes that it would have been obvious “to include turmeric oil, broccoli seed oil, sea buckthorn berry oil, and Helichrysum oil in the composition of Dayan . . . because all of said oils are known to be useful in photoprotective skin care compositions.” Id. at 9-10. With regard to the HEV/VIS ratio required by the claims, the Examiner again reasons that, “since the composition of the combined references comprise the same compounds as the claimed invention, one skilled in the art would reasonably expect it to possess the same properties.” Id. at 10. This rejection suffers from the same defects as the rejection based on Dayan alone. As discussed above, Dayan discloses cranberry extract, not Appeal 2021-002562 Application 15/141,542 10 cranberry oil as in the elected species, and the Examiner has not provided evidence that both products provide the same HEV/VIS ratio when topically applied. In addition, as conceded by the Examiner, Pather teaches turmeric extract, not turmeric oil, Pauly teaches “extracts of broccoli or broccoli seeds” (Pauly ¶ 14), not broccoli seed oil. The Examiner has not provided evidence that turmeric extract and broccoli seed extract provide the same HEV/VIS ratio as turmeric oil and broccoli seed oil when topically applied. Thus, even assuming that the cited references would have suggested combining their products with Dayan’s topical composition, the Examiner has not persuasively shown that the resulting composition would provide an HEV/VIS ratio of at least 1.5 when topically applied to animal skin. In summary, the Examiner has not carried the initial burden of showing that the cited references would have suggested a method of using a composition meeting the limitations of Appellant’s claims, and therefore has not made out a prima facie case of obviousness. We reverse the rejection of claims 1, 3, 5, 7, 9, 10, 12, 15, and 17-19 under 35 U.S.C. § 103 based on Dayan, Pather, Pauly, Golz-Berner, and Millou. Appeal 2021-002562 Application 15/141,542 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 7, 9, 10, 12, 15, 17-19, 132-135 112(b) Indefiniteness 1, 3, 5, 7, 9, 10, 12, 15, 17-19, 132-135 1, 3, 5, 7, 15, 132- 135 103 Dayan 1, 3, 5, 7, 15, 132- 135 1, 3, 5, 7, 9, 10, 12, 15, 17-19 103 Dayan, Pather, Pauly, Golz-Berner, Millou 1, 3, 5, 7, 9, 10, 12, 15, 17-19 Overall Outcome 1, 3, 5, 7, 9, 10, 12, 15, 17-19, 132-135 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