Ex Parte Breitenbach et al

Patent Trial and Appeal Board

Feb 10, 2017

12297734 (P.T.A.B. Feb. 10, 2017)

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.
12/297,734 12/08/2008 Ute Breitenbach 3321-P35041 1175
13897 7590 (
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
CHANNAVAJJALA, LAKSHMI SARADA
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UTE BREITENBACH, WILFRIED SIEFKEN,
TANJA DELEKAT, LARA TERSTEGEN,
HELGA BIERGIESSER, FRANZ STAEB, and
GUNJA SPRINGMANN
Appeal 2015-001506
Application 12/297,734
Technology Center 1600
Before JACQUELINE T. HARLOW, BRIAN D. RANGE, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 50—69. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Beiersdorf AG.
Appeal Br. 3.
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Application 12/297,734
STATEMENT OF THE CASE
Appellants describe the invention as relating to cosmetic and
dermatological preparations containing aquaporin stimulators, in particular
glyceryl glycosides, and the use thereof to improve moisturizing of the skin.
Spec. 11. Claim 50, reproduced below with emphasis added to certain key
recitations and spacing added for readability, is illustrative of the claimed
subject matter:
50. A method of stimulating aquaporin expression m skin,
wherein the method comprises
contacting the skin with a cosmetic preparation which is free of
steroid aquaporin stimulators and comprises
(i) at least one of a glyceryl glycoside and a derivative
thereof and
(ii) at least one substance that triggers osmotic stress
and is selected from one or more of inorganic salts,
salts of acids that occur naturally in skin, salts of a
weak carboxylic acid, natural mixtures of salts,
sugars having a molecular weight of up to 600
g/mol, alanine, and asparagine,
the cosmetic preparation being contacted with skin in an amount
that provides amounts of (i) and (ii) which are effective for
stimulating aquaporin expression in the skin.
Appeal Br.2 26 (Claims App’x).
2 In this decision, we refer to the Final Office Action mailed October 30,
2013 (“Final Act.”), the Appeal Brief filed May 23, 2014 (“Appeal Br.”), the
Examiner’s Answer mailed September 23, 2014 (“Ans.”), and the Reply
Brief filed November 21, 2014 (“Reply Br.”).
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Application 12/297,734
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Turner
Thiem et al.
(hereinafter “Thiem”)
Dumas et al.
(hereinafter “Dumas”)
Sauermann
Sakurai
Thiem et al.
(hereinafter “Thiem DE”)
US 5,688,752
US 5,891,854
US 7,060,693 B1
US 2004/0220137 Al
US 2004/0266656 Al
DE 195 40 749 Al
REJECTIONS
Nov. 18, 1997
Apr. 6, 1999
June 13, 2006
Nov. 4, 2004
Dec. 30, 2004
May 7, 1997
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 50, 52—56, and 64—68 under 35 U.S.C. 102(b) as
anticipated by Thiem or Thiem DE as evidenced by Dumas and Turner.
Ans. 2.
Rejection 2. Claims 51 and 52 under 35 U.S.C. § 103 as unpatentable
over Thiem or Thiem DE as evidenced by Dumas and Turner. Id. at 5.
Rejection 3. Claims 57—61 and 69 under 35 U.S.C. § 103 as
unpatentable over Thiem or Thiem DE as evidenced by Dumas and Turner
and further in view of Sauermann. Id. at 6.
Rejection 4. Claim 63 under 35 U.S.C. § 103 as unpatentable over
Thiem or Thiem DE as evidenced by Dumas and Turner and further in view
of Sauermann and Sakurai. Id. at 8.
Rejection 5. Claims 50, 52—55, and 64—68 under 35 U.S.C. § 103 as
unpatentable over Dumas and any one of Thiem or Thiem DE and,
alternatively Dumas in view of Thiem, Thiem DE, and Turner. Id. at 9.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ contentions,
we are not persuaded that Appellants identity reversible error. Thus, we
affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Rejection 1. Appellants argue claims 50, 52—56, and 64—68 as a
group. See Appeal Br. 7—16. Therefore, consistent with the provisions of
37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 50, and
claims 52—56 and 64—68 stand or fall together with claim 50.
The Examiner rejects claim 50 as anticipated by Thiem. Examiner
finds that Thiem teaches a cosmetic formulation employing glucosyl
clyceride and trehalose “which meets the claimed sugars of molecular
weight up to 600 g/mol.” Ans. 2—3 (providing citations to Thiem). The
Examiner also finds that Thiem teaches increasing skin moisture content by
applying the above concentration and teaches “water and/or moisture
transport into skin (from deep layers to the surface of the skin) or transport
of glycerin in to skin with the same active ingredients in the claimed
amounts and the same method of application to skin . . . .” Ans. 3. While
the Examiner finds that Thiem does not explicitly teach that application of
the composition stimulates aquaporin expression, the Examiner finds that
Thiem’s method will necessarily achieve this result. Id. (“if the prior art
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teaches the identical chemical structure, the properties applicant discloses
and/or claims are necessarily present”).
The Examiner further finds that Turner teaches that ceramides (i.e.,
waxy molecules found in cell membranes) are responsible for production
and maintenance of the water permeability barrier of the skin and that a
glucosyl glyceride composition is effective in controlling water loss and/or
repair damage to the water barrier layer in the skin. Id. at 3^4 (providing
citations to Turner). The Examiner also finds that Dumas teaches
administration of a plant extract to the skin for regulating water fluxes and
water adsorption in the epidermis or for hydrating the epidermis and that the
composition regulates and/or improves the functionality of aquaporin in the
skin. Id. at 4 (providing citations to Dumas). The Examiner finds that
Appellants’ Specification similarly indicates that the instant composition is
effective as a moisturizing agent and for stimulating aquaporin expression.
Id. These findings culminate in the Examiner finding “that the composition
of Thiem inherently provides a stimulation of aquaporin expression because
Thiem (as well as Turner) teaches water and/or moisture transport into skin
(from deep layers to the surface of the skin) and Dumas shows that water
absorption or water fluxes occurs through function of aquaporins (AQP-3).”
Id. at 4—5. The Examiner thus concludes that Thiem anticipates claim 50. A
preponderance of the evidence supports the Examiner’s findings and
conclusion.
Claim 50’s recitation of “in an amount that provides amounts of (i)
and (ii) which are effective for stimulating aquaporin expression in the skin”
is essentially a statement of how a human body will react when subjected to
the claimed process. Notably, even a minimal “stimulating aquaporin
expression” falls within the claim scope. The Examiner’s findings and cited
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evidence establish that Thiem’s composition is identical to the claimed
composition, that Thiem teaches applying composition to improve
moisturizing, and that, as taught by Dumas, such moisturizing occurs in
tandem with “stimulating aquaporin expression in the skin.” These findings
provide a sound basis for the Examiner to believe that the method taught by
Thiem and the recited method of claim 50 are the same. Under these
circumstances, Appellants bear the burden of showing that the claimed
method is not the same as that taught by Thiem. In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not”). Appellants have not overcome
that burden on the present record.
Appellants argue that none of the references teach application of the
recited composition with the “specific intent to effect the stated result” of
“stimulating aquaporin expression in the skin.” Appeal Br. 8—10 (emphasis
original). We disagree with Appellants’ legal proposition that the subjective
intent of the person performing the method of claim 50 is relevant to the
invalidity inquiry. Rather, the cosmetic preparation must “contact[] the skin
... in an amount that provides amounts of (i) and (ii) which are effective for
stimulating aquaporin expression in the skin.” Appeal Br. 26 (Claims
App’x).
Appellants cite Jansen v. Rexall Sundown Inc., 342 F.3d 1328 (Fed.
Cir. 2003) and Rapport v. Dement, 254 F.3d 1053 (Fed. Cir. 2001) for the
proposition that “claims directed to method for achieving a certain objective
require the specific intent to effect the stated result.” Appeal Br. 9—10
(emphasis original). We do not agree that those cases stand for this broad
proposition. Rather, the claims at issue in Jansen recited a method “for
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treating or preventing . . . anemia” and recited that the treatment would be
provided “to a human in need thereof.” Jansen, 342 F.3d at 1330. These
recitations narrowed the scope of the claims such that the claim would not
cover “administering the claimed vitamins in the claimed does for some
purpose other than treating or preventing ... anemia ... because Jansen
limited his claimed to treatment or prevention of that particular condition in
those who need such treatment or prevention.” Id. at 1334. In other words,
the method covered providing the vitamins only to people when they were
needed because of anemia. Because this set of people is limited, the claimed
method required different action (i.e., providing vitamins to a different,
albeit potentially overlapping, set of people) than the actions of, for
example, providing vitamins to all people or providing vitamins to persons
who may benefit from the vitamins for a different reason. The reasoning in
Rapoport was similar. Rapoport, 254 F.3d at 1058—1060.
In Jansen, knowledge of whether or not a person needs the treatment
causes the vitamin to be taken or not be taken. In contrast, claim 50 is not
limited based upon whose skin is contacted by the cosmetic preparation. If,
for example, a child who has no knowledge of aquaporins applies the Thiem
preparation to the skin in a sufficient amount (with the “amount” recitation
being further discussed below), the preponderance of the evidence (as
explained above) supports that the result will be “stimulating aquaporin
expression,” and the child will have engaged in a “method of stimulating
aquaporin expression in the skin.” Cf. Schering Corp. v. Geneva Pharm.,
339 F.3d 1373, 1377 (Fed. Cir. 2003) (“At the outset, this court rejects the
contention that inherent anticipation requires recognition in the prior art.”);
MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1366
(Fed.Cir. 1999) ( “Where ... the result is a necessary consequence of what
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was deliberately intended, it is of no import that the article’s authors did not
appreciate the results.”). Accordingly, Appellants’ arguments concerning
Thiem not teaching that its composition should be applied for the purpose of
stimulating aquaporin expression do not persuade us of reversible error.
Appellants also emphasize that claim 50 recites contacting the
preparation with skin “in an amount that provides amounts of (i) and (ii)
which are effective for stimulating aquaporin expression in the skin”
(emphasis added) and argue that Thiem does not disclose such an amount.
Appeal Br. 10—11. Appellants further emphasize that even if the
concentrations of the Thiem preparation are the same as recited in
Appellants’ claims, the amount of preparation to be applied to the skin is not
taught. Id. at 11; Reply Br. 2—3.
With respect to this argument, we first note that Appellants’
Specification does not explain what amount of preparation should be applied
to the skin. See Appeal Br. 3 (identifying portions of Specification
corresponding to claim 50); Spec. Tflf 35, 38, 61, 62, and pg. 17 (not
discussing amount of preparation that should be applied). Thus, the
evidence supports that contacting any amount of the claimed preparation
with skin will produce resulting in stimulating some aquaporin expression,
and claim 50 does not recite any minimum amount of “stimulating aquaporin
expression” that must occur. Moreover, the Examiner finds that Thiem
teaches applying enough of the preparation to achieve hydration and other
benefits and presents evidence from Dumas that these benefits are achieved
through aquaporin expression. Ans. 2—5, 13, 15. Thus, a preponderance of
the evidence supports that the amount of preparation that Thiem teaches
(i.e., an amount sufficient to achieve the benefits explained by Thiem) would
also be sufficient for “stimulating aquaporin expression.”
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Because Appellants have not identified reversible error, we sustain the
Examiner’s rejection of claims 50, 52—56, and 64—68 as anticipated by
Thiem.
Rejections 2-4. Appellants’ arguments with respect to these
rejections are substantially the same as those presented with respect to claim
50. Appeal Br. 17—20. We therefore sustain each of these rejections for the
reasons explained above.
Rejection 5. The Examiner rejects claims 50, 52—55, and 64—68 as
obvious over Dumas and any one of Thiem or Thiem DE and, alternatively
over Dumas in view of Thiem, Thiem DE, and Turner. Ans. at 9.
Appellants argue all claims of this rejection as a group. See Appeal Br. 7—
16. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 50, and claims 52—56 and 64—68
stand or fall together with claim 50.
The Examiner finds that Dumas teaches administering a plant extract
for regulating water absorption in the epidermis and regulating and/or
improving aquaporin functionality. Id. at 9—10. The Examiner further finds
that Thiem and Turner, as further explained above, teaches glyceryl
glucosides for moisturizing. Id. at 10—11. The Examiner concludes:
it would have been obvious for one of an ordinary skill in the art at the
time of the instant invention was made to employ the ceramides such
as glyceryl glucosides of Thiem and/or Turner in the cosmetic
composition of Dumas, in amounts effective to promote/improve
barrier permeability or hydration function, because Thumer and
Thiem teach glyceryl glucosides for improving barrier permeability,
control water loss damage and increasing the skin moisture and
protect skin against aging.
Id. at 11. A preponderance of the evidence supports the Examiner’s findings
and conclusion.
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Appellants argue that Dumas and Thiem do not suggest that Thiem’s
glyceryl glucosides can replace the steroid aquaporin stimulators of Dumas.
Appeal Br. 22; Reply Br. 4—5. The Examiner, however, finds that Dumas
seeks to regulate skin moisture and Thiem and Turner teach its glyceryl
glucosides have advantageous properties in this regard. Ans. 20—21. Thus,
use of Thiem’s glyceryl glucoside in Dumas is no more than a predictable
use of a prior art element according to their established function. See KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants present no
persuasive evidence or argument rebutting the factual findings underlying
the Examiner’s obviousness conclusion.
Appellants also argue that the Examiner states “ceramides [are]
responsible for production and maintenance of the water permeability barrier
of the skin,” but that Appellants’ claims recite glyceryl glycosides. Appeal
Br. 23—24. Claim 50, however, does not exclude the use of ceramids and
could encompass compositions including both ceramids and glyceryl
glucosides.
To the extent Appellants arguments with regard to this rejection
overlap arguments made with respect to the Examiner’s first rejection, those
arguments are unpersuasive for the reasons explained above.
Because Appellants’ arguments do not identify reversible error, we
sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
50-69.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED
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