Ex Parte Biatry

Board of Patent Appeals and Interferences

Aug 24, 2011

10464553 (B.P.A.I. Aug. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRUNO BIATRY
__________

Appeal 2010-012262
Application 10/464,553
Technology Center 1600
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for treating the cutaneous signs of intrinsic ageing. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Application 10/464,553

2
STATEMENT OF THE CASE
Claims 1, 2, 5, 8-10, 12-16, 18, and 19 are on appeal (Supp. App. Br.
1

2).
2
The claims subject to each rejection have not been argued separately
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1
and 16 are representative and read as follows:
1. A method for treating cutaneous signs of intrinsic ageing,
comprising applying to skin a composition comprising at least one
oxidation-sensitive hydrophilic active principle selected from the group
consisting of ascorbic acid, 5,6-di-O-dimethylsilylascorbate, the dl-α-
tocopheryl dl-ascorbyl phosphate potassium salt of ascorbic acid,
magnesium ascorbyl phosphate, sodium ascorbyl phosphate, ascorbyl
glucoside, and mixtures thereof, and at least one maleic anhydride
copolymer having a solubility in water of greater than or equabl [sic] to 2 g/l
and comprising one or more hydrolyzed maleic anhydride comonomer units
and one or more styrene units, in a physiologically acceptable medium
comprising an aqueous phase, wherein the oxidation-sensitive hydrophilic
active principle and the copolymer are in the same aqueous phase.
16. The method according to claim 1, wherein the composition
further comprises at least one non-ascorboc [sic] acid active principle which
stimulates dermal macromolecules or which prevents their decomposition
and/or an agent which stimulates the proliferation of fibroblasts or
keratinocytes and/or the differentiation of keratinocytes.
Claims 1, 2, 5, 8-10, 12-16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Mitchnick et al. (US 6,103,267, Aug. 15, 2000)
(Final Rej.
3
2; see also Ans. 3-4).

1
Response to Notice of Non-Compliant Appeal Brief received Jan. 20,
2010.
2
Claims 4, 6, and 11 are also pending but have been withdrawn from
consideration (Supp. App. Br. 2).
3
Final Rejection dated May 15, 2009.
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Application 10/464,553

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Claim 16 also stands rejected under 35 U.S.C. § 103(a) as obvious
over Mitchnick in view of Sharma et al. (US 5,229,130, Jul. 20, 1993)
(Ans. 5).
Appellant argues that “Mitchnick neither teaches nor suggests the
invention methods in which the claimed polymers are water-soluble and the
claimed oxidation-sensitive hydrophilic active agents are in the same
aqueous phase” (App. Br. 4). Appellant also argues that “Sharma cannot
compensate for Mitchnick’s fatal deficiencies” (id. at 5).
ISSUE
With regard to both grounds of rejection, the issue is: Does Mitchnick
teach or suggest a composition comprising an oxidation-sensitive
hydrophilic active principle (i.e., ascorbic acid) and a water-soluble polymer
in the same aqueous phase?
FINDINGS OF FACT
1. Mitchnick discloses a “composition for use in . . . the cosmetic
or medical fields,” the composition comprising “hydrophilic agents, water-
dispersible or water-soluble active ingredients, such as for example, vitamins
(especially Vitamin C), . . . in an aqueous suspension (or dispersion) which
is microdispersed within a continuous oleophilic phase” (Mitchnick, col. 2,
ll. 58-66).
2. In addition, Mitchnick discloses: “Also present within the
composition is a water-soluble/water-dispersible polymer and oil. A final
product may comprise a dispersion of particles (e.g., comprising a mixture
or solution of the water-soluble material or water-dispersible material such
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Application 10/464,553

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as ascorbic acid, water, and polymer) in a continuous non-aqueous phase.”
(Id. at col. 3, ll. 12-17.)
3. Mitchnick also discloses that examples of the water-soluble or
water-dispersible polymers include polystyrene copolymers and maleic
anhydride copolymers (id. at col. 5, ll. 33-57).
4. In its Example, Mitchnick discloses:
[A] water-soluble polymer . . . was dissolved into . . . water,
stirred, and heated to about 60° C. . . . While maintaining the
60° C. temperature, . . . L-ascorbic acid [was] dissolved in the
solution with stirring. Immediately upon complete dissolution,
the aqueous phase was dispersed into [an] oil phase . . . . The
dispersion was cooled to room temperature to form a dispersion
of particles in a continuous oil phase. The particles comprised
the polymer, ascorbic acid, and water.
(Id. at col. 8, ll. 48-62.)
5. The Specification discloses: “Use will preferably be made of
hydrophilic polymers, that is to say polymers having a solubility in water of
greater than or equal to 2 g/l” (Spec. 10-11).
ANALYSIS
Mitchnick clearly discloses that its polymer is water-soluble or water-
dispersible (Findings of Fact (FF) 2-4). Although we agree with Appellant
that Mitchnick discloses solid particles, which may not be solubilized in
water, we do not agree that Mitchnick does not disclose water-soluble
polymers.
We recognize that claim 1 recites “at least one maleic anhydride
copolymer having a solubility in water of greater than or equabl [sic] to
2 g/l,” not that the polymer is water-soluble. However, water-soluble
polymers are by definition hydrophilic and, according to the Specification,
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hydrophilic polymers have “a solubility in water of greater than or equal to
2 g/l” (FF 5). Thus, in the absence of evidence and/or argument to the
contrary, we find that water-soluble polymers read on or at least suggest
polymers having a solubility in water of greater than or equal to 2 g/l.
In addition, we do not agree with Appellant that Mitchnick fails to
teach that the water-soluble polymer and the ascorbic acid are in the same
aqueous phase. On the contrary, Mitchnick clearly discloses particles
comprising “a mixture or solution of . . . ascorbic acid, water, and polymer”
(FF 2; see also FF 4). In addition, Mitchnick specifically refers to the
solution as an “aqueous phase” (FF 4). Given that the particles contain
water (FF 4), Appellant has not adequately explained why solidifying this
solution would result in a composition that is no longer an “aqueous phase.”
CONCLUSION
Mitchnick teaches or suggests a composition comprising an oxidation-
sensitive hydrophilic active principle (i.e., ascorbic acid) and a water-soluble
polymer in the same aqueous phase. We therefore affirm the obviousness
rejections.
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

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