Ex Parte Breton

Patent Trial and Appeal Board

Feb 18, 2016

11783410 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111783,410 0410912007
21839 7590 02/22/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Lionel Breton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1016800-00084 7 5351
EXAMINER
CRAIGO, BAHAR ALA WI
ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL BRETON
Appeal2013-003002
Application 11/783,410
Technology Center 1600
Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ROBERT A. POLLOCK, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg crnm1s to a
regimen for correcting the cutaneous effects caused by lack of sleep. The
Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellant identifies the Real Party in Interest as L'Oreal (see
App. Br. 2).
Appeal2013-003002
Application 11/783,410
Statement of the Case
Background
"In individuals who are in good health, cells damaged by external
attacks are eliminated by the cutaneous immune system. However, for
example, when an individual experiences a lack of sleep, the immune system
is immunodepressed and cannot play its role in monitoring the skin" (Spec.
iT 7).
The Claims
Claims 1-8 and 10-20 are on appeal. A complete listing of the claims
may be found in the Appeal Brief Claims Appendix, with claim 1
reproduced in part below:
1. A regime or regimen for correcting the cutaneous
effects caused by lack of sleep, comprising administering to
an individual in need of such treatment, a thus effective
amount of at least one compound having the following
general formula (I):
S .. -....-'"~ X .. _.,_._._ R.
(I)
wherein the individual is in a population of individuals
having a lack of sleep.
The Issues
A. The Examiner rejected claims 1---6, 8, 10-16, and 18-20 under 35
U.S.C. § 102(b) as anticipated by Trouille2 as evidenced National Sleep
Foundation3 (Ans. 2--4).
2 Trouille et al., US 2005/0250708 Al, published Nov. 10, 2005.
3 National Sleep Foundation, http://www.sleepfoundation.org/
article/sleep-topics/aging-and-sleep (accessed Jan. 31, 2011).
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Appeal2013-003002
Application 11/783,410
B. The Examiner rejected claims 1-8, 10-12, 18 and 20 under 35 U.S.C.
§ 102(e) as anticipated by Dalko,4 as evidenced by Trouille and National
Sleep Foundation (Ans. 5-7).
C. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as obvious
over Trouille, National Sleep Foundation, and Billoni5 (Ans. 8-10).
Because the same issue is dispositive for all of the rejections, we will
consider these rejections together.
Appellants contend that "the aging population targeted in Dalko et al.
and Trouille et al. is not the same as the individuals population recited in the
present claims (i.e., a population of individuals having a lack of sleep) ....
In other words, a person in the aging population will not necessarily be a
person having a lack of sleep" (App. Br. 14).
The Examiner responds that "it is clear that the instantly claimed
patient population is necessarily those patients who are aging and are the
same as those of Trouille et al., because aging individuals have a decrease in
the quality of sleep as evidenced by Applicant's own specification" (Ans.
13). The Examiner finds that "aging adults are broadly and reasonably
interpreted as 'a population of individuals having a lack of sleep"' (Ans. 14).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's position that Trouille or Dalko as evidenced by
National Sleep Foundation anticipate the administration of C-glycosides to
"a population of individuals having a lack of sleep" as required by claim 1?
4 Dalko et al., US 2006/0223763 Al, published Oct. 5, 2006.
5 Billoni et al., US 5,962,508, issued Oct. 5, 1999.
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Appeal2013-003002
Application 11/783,410
Findings of Fact
1. Trouille teaches that "C-glycosides compounds have
demonstrated beneficial biological properties, in particular for combating
ageing of the epidermis" (Trouille i-f 6).
2. Trouille teaches that the composition can be "applied to the
skin" (Trouille i-f 70).
3. Dalko teaches "administration of at least one C-glycoside
derivative" (Dalko i-f 46) with the "derivative or the composition being suited
to contribute towards ... combating aging of the epidermis" (Dalko i-fi-1258-
259).
4. National Sleep Foundation teaches that "[a]long with the
physical changes that occur as we get older, changes to our sleep patterns are
a part of the normal aging process. As people age they tend to have a harder
time falling asleep and more trouble staying asleep than when they were
younger" (National Sleep Foundation 1 ).
Principles of Law
"Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." MEHL/Biophile Int 'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
Claim 1 requires administration of the C-glucoside compound to a
patient population composed of "individuals having a lack of sleep." The
Examiner, not finding a teaching of treatment for "lack of sleep," relies upon
treatment of aging as a surrogate for "lack of sleep" (Ans. 3, 7; FF 1, 3, 4).
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Appeal2013-003002
Application 11/783,410
However, "[ n Jew uses of old products or processes are indeed patentable
subject matter." Perricone v. Medicis Pharmaceutical Corp. 432 F.3d 1368,
1378 (Fed. Cir. 2005). In Perricone, a reference teaching the topical
application of a composition to skin did not anticipate treatment of skin
sunburn because "[ s ]kin sunburn is not analogous to skin surfaces
generally." Id. at 1379. That is, while a species such as sunburned skin
might anticipate skin generically, the obverse teaching of skin does not
necessarily anticipate the species of skin sunburn.
Applied to the instant facts, in order for "aging" to anticipate "lack of
sleep", it is not sufficient that some older patients may have lack of sleep,
rather the evidence must show that the "aging" patient population is
coextensive with "lack of sleep" patient population. The evidence of record
shows that some of the "aging" population have "lack of sleep" (FF 4), but
does not anticipate because the species of "lack of sleep" is not analogous to
the "aging" population generally and therefore treatment of aging does not
necessarily also treat lack of sleep. Therefore, the prior art does not
inherently anticipate the claimed invention.
Conclusion of Law
The evidence of record does not support the Examiner's position that
Trouille or Dalko as evidenced by National Sleep Foundation anticipate the
administration of C-glycosides to "a population of individuals having a lack
of sleep" as required by claim 1.
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Appeal2013-003002
Application 11/783,410
SUMMARY
In summary, we reverse the rejection of claims 1---6, 8, 10-16, and 18-
20 under 35 U.S.C. § 102(b) as anticipated by Trouille as evidenced by
National Sleep Foundation.
We reverse the rejection of claims 1-8, 10-12, 18 and 20 under 35
U.S.C. § 102(e) as anticipated by Dalko, as evidenced by Trouille and
National Sleep Foundation.
We reverse the rejection of claim 17 under 35 U.S.C. § 103(a) as
obvious over Trouille, National Sleep Foundation, and Billoni.
REVERSED
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