Ex Parte Choisy et alDownload PDFPatent Trial and Appeal BoardMay 11, 201812685073 (P.T.A.B. May. 11, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/685,073 01/11/2010 21839 7590 05/15/2018 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Patrick CHOISY 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. 1016800-001149 6620 EXAMINER BASQUILL, SEAN M ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 05/15/2018 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 PA TRICK CHOISY and FRANCIS PRUCHE Appeal2016-007065 Application 12/685,073 Technology Center 1600 Before TONI R. SCHEINER, ULRIKE W. JENKS, and ELIZABETH A. LA VIER, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the Examiner's decision to reject claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE "Most of the cosmetic products intended for artificially tanning the skin are based on carbonyl derivatives which, by interacting with the free amine functions of the skin, in particular the amino acids, peptides or 1 Appellants identify the real party in interest as L'Oreal. Appeal Br. 2. An oral hearing was held on May 2, 2018. Appeal2016-007065 Application 12/685,073 proteins of the skin, permit the formation of colored products." Spec. ,r 4. Dihydroxyacetone (DHA) is a common product for tanning skin. Id. ,r 5. Drawbacks for using DHA are time, as the reaction takes 3-5 hours, and the production of an undesirable yellow shade. Id. [D]ehydroascorbic acid or a polymer thereof in combination with an amino compound can impart, after topical application of the product to the skin, an artificial coloration closer to that of natural pigmentation, which develops more quickly than standard self-tanning agents such as DHA (visible after 30 minutes) and gives stronger colors whose red component is more pronounced. Id.,I9. Claims 1, 2, 6, 12, 14--16, and 19 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows (paragraphing and indenting added): 1. A regime or regimen for artificially coloring the skin, comprising topically applying onto the skin of an individual in need of such treatment, a thus effective amount of at least a) dehydroascorbic acid and/or a monomeric derivative thereof of formula (I) below and/or an isomer thereof of formula (I') below and/or a polymeric derivative thereof: (I) (I') 2 Appeal2016-007065 Application 12/685,073 in which: OR1 and OR2, which may be identical or different, are each OH; a linear or branched, saturated or unsaturated C1-C30 alkoxy radical; a glycoside; a linear or branched, saturated or unsaturated C1-C30 aliphatic carboxylic acid ester, optionally substituted with an aryl radical or a heterocycle; an aryl or heterocyclic carboxylic acid ester optionally substituted with at least one linear or branched, saturated or unsaturated C1-C30 alkyl radical; a phosphate group; a sulfate group, b) at least one compound comprising at least one free amine function, formulated onto a topically applicable, physiologically acceptable medium therefor, and c) an enzymatic oxidizing agent, wherein the regime or regimen for artificially coloring the skin is a regime or regimen for artificially darkening the skin, and wherein the at least one compound having a free amine function is selected from the group consisting of glutathione (GSH), a-amino acids obtained by hydrolysis of animal or plant proteins comprising collagen, keratin, casein, elastin, soya protein, and wheat or almond glutens, arginine, glycine, tyrosine, alanine, phenylalanine, dihydroxyphenylalanine (DOPA), omithine, lysine, polylysines, spermitine, citrulline, tryptophan, 6-aminocapronic acid, isoleucine, leucine, methionine, serine, proline, valine, hydroxyproline, aspartic acid, tyrosine, taurine, Val Tyr-Val, L-asparagine, L ys-L ys-L ys- L ys and Cys-Gly. Appellants request review of the rejection of claims 1, 2, 6, 12, 14--16 and 19 under 35 U.S.C. § I03(a) over Cotte2 in view ofLindquist3 and Kleen. 4 2 Cotte et al., US 4,293,543, issued Oct. 6, 1981 ("Cotte"). 3 Lindquist et al., US 5,980,920, issued Nov. 9, 1999 ("Lindquist"). 4 Kleen et al., US 2003/0150069 Al, publ. Aug. 14, 2003 ("Kleen"). 3 Appeal2016-007065 Application 12/685,073 Analysis The Examiner finds that the claims are broadly "defined as 'comprising' the required a) dehydroascorbic acid, b) one compound bearing a free amine function selected from the recited Markush-type listing, and c) an enzymatic oxidizing agent, the inclusion of any additional agents is thereby permitted." Final Act. 6. In other words, the claims are broad enough to encompass additional steps and additional ingredients based on the "at least" and "comprising" claim language as recited in claim 1. The Examiner emphasizes that in formulating the rejection, the Examiner is not relying on substitution of any elements to arrive at the claimed invention but instead is relying on the position that it is obvious to combine two compositions each taught for the same purpose of coloring (skin or hair) to produce a third composition that can also provide color. See Ans. 9 (citing In re Kerkhoven, 626 F.2d 846,850 (CCPA 1980)). In rebuttal, Appellants point out that "the ingredients described in Cotte et al. and Kleen are precursors and are not the actual colorants themselves until further chemical transformation." Reply Br. 3. Appellants contend that Cotte and Kleen use different chemical processes for color production. Appeal Br. 8 ("It should be noted that the Maillard-type system of Cotte et al. and the enzymatic oxidative system of Kleen generate the active colorant species via two different types of chemical reactions each involving at least two different chemicals (i.e., precursors)."). Appellants' position is that the Examiner has not explained why one of ordinary skill would expect these two different chemical reaction to work independently and in parallel. In other words, Appellants' argue that the Examiner's combination of Cotte and Kleen lacks a reasonable expectation of success. 4 Appeal2016-007065 Application 12/685,073 A "finding of a reasonable expectation of success is a question of fact." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). On this record, we find Appellants have the better position. Cotte teaches a skin coloring agent using two solutions that are intended to be mixed prior to use and then applied to the skin, the site of the color development. In Cotte's process, the "brown colouration [forms] by combination with the amino-acids present in the sebum or in the first horny layer of the epidermis by a known mechanism, namely the Maillard reaction." Cotte 1 :27-31. Kleen teaches a color retaining composition that may optionally be mixed with a colorant. Kleen ,r,r 10-12, 55, 147-160, 171-172. Kleen teaches that when "actual hair colors are formed in the course of an oxidative process ... it is possible to carry out the oxidation using enzymes." Kleen ,r 239. Kleen teaches that the color retaining composition may be added to the colorant before or after the coloring process. The rejection, however, does not rely on the color retaining aspect of Kleen's composition but instead relies on the use of an enzymatic colorant that can be mixed with Cotte's colorant. Appellants challenge the Examiner's rejections based on a lack of reasonable expectation of success because of the two different chemical processes used in Cotte and Kleen to create the color. See Appeal Br. 8-9. When Appellant puts forth rebuttal evidence whether buttressed by experiments, art, or argument, the PTO must consider that evidence. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (stating that "all evidence of nonobviousness must be considered when assessing patentability"). The record supports Appellants' contention that Cotte and Kleen each teach different chemical reactions that lead to the formation of the colored end 5 Appeal2016-007065 Application 12/685,073 product. See Cotte 1: 27-31; see Kleen ,r 239. Appellants contend that there is no evidence or explanation that these reactions would proceed without interference. See Appeal Br. 8 (there is no "evidence that these [different] chemical reactions would be reasonably expected to proceed independently and separately without mutual interference when all the chemicals co-exist in one composition"). The Examiner does not address or otherwise respond to Appellants' arguments, and merely reiterates the position that it is obvious to combine two products that are used for the same purpose. See Ans. 9. A teaching in Cotte that other colorants may be added is not sufficient to establish that this includes colors produced by different chemical reactions. Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, we are constrained to reverse the Examiner's rejection of claims 1, 2, 6, 12, 14--16, and 19 under 35 U.S.C. § 103(a) over Cotte, Lindquist, and Kleen. SUMMARY We reverse the rejection of all claims. REVERSED 6 Copy with citationCopy as parenthetical citation