Blatt, Thomas et al.

Patent Trials and Appeals Board

May 6, 2020

10337661 - (R) (P.T.A.B. May. 6, 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.
10/337,661 01/06/2003 Thomas Blatt 3321-P30874 9787
13897 7590 05/06/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
05/06/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS BLATT, MELANIE SCHMIDT,
VOLKER SCHREINER,
and FRANZ STAB

Appeal 2019–002808
Application 10/337,661
Technology Center 1600

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

WISZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant1 has filed a Request for Rehearing (“Request”) under
37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of February 24,
2020 (“Decision”). The Decision affirmed-in-part the Examiner’s rejections
of claims 84–103 under 35 U.S.C. §§ 102(e) and 103 and issued a new
ground of rejection for claim 86.
DISCUSSION
Appellant raises three issues. First, Appellant argues that:
[T]he Board has overlooked the fact that instant independent
claim 84 recites that the amount of the one or more creatine
derivatives recited therein is effective for treating the skin
damage or skin condition, whereas Teicher discloses the use
of creatine derivatives exclusively in combination with a
hyperplastic inhibitory agent and also makes it clear that the
hyperplastic inhibitory agent is the primary active ingredient
whose activity can (merely) be increased by co-
administration of a creatine derivative.
Request 2.
Appellant also asserts that the claims must be given their broadest
reasonable interpretation and that:
Nothing in the instant Specification conveys the impression
that the amount of creatine derivative which is effective for
treating the skin damage or skin condition recited in claim 84
may be an amount which is effective (only) if the creatine
derivative is administered in combination with another active
ingredient that is effective for treating the skin damage or
skin condition, let alone in combination with another active
ingredient that is much more effective for treating the skin
damage or skin condition than the creatine derivative

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Beiersdorf AG as the real party in
interest. Appeal Br. 3.
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(assuming that the creatine derivative itself has any
corresponding effect at all) such as the hyperplastic
inhibitory agent of Teicher.
Id.
We are not persuaded by Appellant’s arguments. As stated in our
Decision, the pending claims recite the word “comprising” and, therefore,
can include other elements in addition to the creatine derivative, such as
hyperplastic agents as taught in Teicher. Decision 30–31. Further, although
Teicher discusses the use of creatine in combination with a hyperplastic
agent, a person of ordinary skill in the art would still optimize the amount of
creatine to be effective to treat psoriasis. See 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.”). Appellant has not provided any persuasive
evidence that the amount of creatine compounds used in combination with a
hyperplastic agent to treat psoriasis would differ from the about 0.1% to
about 20% of creatine compounds as taught in Daouk. Daouk 5:59–60.
Appellant’s second argument is that Teicher does not mention topical
application and that topical and transdermal application are not the same.
Request 3. According to Appellant, “[i]t further is not seen that a
transdermal administration of an active ingredient renders the topical
application thereof obvious to one of ordinary skill in the art.” Id. at 4.
First, the pending claims do not recite “topical” application but,
rather, recite “a cosmetic or dermatological preparation.” Transdermal
applications are applied to skin and are therefore reasonably understood as
dermatological preparations. Regardless, even if the claims were limited to
topical preparations, Appellant is arguing the references individually
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because Daouk teaches topical compositions such as solutions, lotions,
creams, gels, or ointments, wherein the lotion comprises from about 0.1% to
about 20% of the creatine, creatine phosphate, or creatine derivatives.
Daouk 5:12–18, 5:59–64. “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.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Therefore, one of skill in the art would have looked to the disclosure of
Daouk to determine what types of compositions could be used for the
creatine-containing compositions of Teicher for treatment of psoriasis.
Lastly, Appellant’s third argument contends that, with regard to the
new ground of rejection of claim 86, Daouk does not mention atopic eczema
and Keyhani does not mention creatine and does not consider creatine to be
an antioxidant (or at least not one that is particularly effective for the
indicated purpose). Request 4. Therefore, according to Appellant, the
rejection of claim 86 is based on impermissible hindsight. Id.
We are not persuaded by Appellant’s arguments. Again, Appellant is
arguing the references individually, whereas the rejection is based upon the
combined teachings of the prior art. See In re Keller, 642 F.2d 413, 426
(C.C.P.A. 1981) (holding that “one cannot show non-obviousness by
attacking references individually where … the rejections are based on
combinations of references.”). Daouk teaches the use of creatine
compounds as antioxidants for treatment of skin damage due to free radical
production and oxidative stress. Daouk, code (57), 2:15–29. Keyhani
teaches that antioxidants are useful in treating skin conditions such as atopic
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eczema. Keyhani, code (57). Therefore, one of ordinary skill in the art
would have looked to Keyhani to determine what skin conditions could
beneficially be treated with antioxidants using the creatine-containing
dermatological compositions disclosed in Daouk. Furthermore, one of skill
in the art would have used Daouk’s creatine-containing topical compositions
to treat atopic eczema as disclosed in Keyhani with a reasonable expectation
of success.
DECISION
We deny the requested relief with respect to making any changes to
the Decision.

Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Denied Granted
84, 88–90,
98, 99, 101,
103
103 Teicher,
Daouk
84, 88–90, 98,
99, 101, 103

86 103 Daouk,
Keyhani
86
Overall
Outcome
84, 86, 88–90,
98, 99, 101,
103

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed New
Ground
84, 86,
89–90,
98, 99,
101, 103
102(e) Daouk 84, 89–90,
98, 101
86, 99,
103

85 103 Daouk,
Degwert
85
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85, 87, 88 103 Daouk,
Keyhani
85, 87, 88
91, 96 103 Daouk 91, 96
92, 95 103 Daouk,
Ptchelintsev
92, 95
93 103 Daouk,
Raths
93
94 103 Daouk,
Porter
94
97, 100,
102
103 Daouk 97, 100,
102

84, 89,
90, 98,
101
102(e) Fujimura 84, 89, 90,
98, 101

84, 88–
90, 98,
99, 101,
103
103 Teicher,
Daouk
84, 88–90,
98, 99,
101, 103

86 103 Daouk,
Keyhani
86
Overall
Outcome
84, 85,
87–103
86

DENIED