Ex Parte CHOISY et al

Patent Trial and Appeal Board

May 11, 2018

12685073 (P.T.A.B. May. 11, 2018)

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