Ex Parte De Heinrich et al

Patent Trial and Appeal Board

Dec 4, 2017

13499753 (P.T.A.B. Dec. 4, 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.
13/499,753 06/25/2012 Stephen De Heinrich IPLTP0190W OU S 4843
23908 7590 12/06/2017
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
SONG, JIANFENG
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/06/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN DE HEINRICH and
COLETTE MARGEURITE LOUISE HAYDON
Appeal 2017-000958
Application 13/499,7531
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—4 and 6—15
(App. Br. 1; Ans. 1). Examiner entered rejection under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “Omorovicza Cosmetics
Limited” (App. Br. 2).
Appeal 2017-000958
Application 13/499,753
STATEMENT OF THE CASE
Appellants’ disclosure “relates to cosmetic preparations and methods
for their production” (Spec. 1:16). Claim 1 is representative and reproduced
below:
1. A cosmetic formulation wherein at least 75% of the water
content comprises a thermal mineral water, at least part of said
thermal mineral water comprising thermal mineral water in
which the mineral content has been rendered more bioavailable
by the culturing within it of microorganisms said
microorganism comprising a yeast, wherein at least part of said
thermal mineral water is contained within a liposome.
(App. Br. 19.)
The claims stand rejected as follows:
Claims 1^4 and 6—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Castiel,2 Gueniche,3 Breton,4 Marion,5
Bertini,6 and Ghyczy.7
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Castiel discloses the “[cjosmetic use of an effective amount of a
lysate of at least one microorganism of the genus Bifidobacterium species
and/or one of its fractions in treating and/or preventing dryness and/or
associated disorders of a keratinous substance,” wherein “such a
2 Castiel et al., US 2009/0060962 Al, published Mar. 5, 2009.
3 Gueniche et al., US 2009/0022819 Al, published Jan. 22, 2009.
4 Breton et al., US 2009/0028826 Al, published Jan. 29, 2009.
5 Marion, US 2006/0134156 Al, published June 22, 2006.
6 Bertini, US 5,106,624, issued Apr. 21, 1992.
7 Ghyczy et al., US 5,711,965, issued Jan. 27, 1998.
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Application 13/499,753
composition proves to be effective in treating ichthyoses, psoriasis,
hyperkeratosis, topical dermatitides and dry dandruff states of the scalp”
(Castiel, Abstract; id. 19; see Ans. 3).
FF 2. Castiel’s composition “can in addition advantageously comprise at
least one additional microorganism, in particular of probiotic type, and/or
one of its fractions and/or one of its metabolites,” wherein Castiel describes
yeast, such as Saccharomyces cerevisiae, as a probiotic microorganism
(Castiel ^fl[ 80, 82, 83; see Ans. 4).
FF 3. Castiel discloses that microorganisms
can be included in [Castiel’s] compositions ... in a living,
semi-active, or inactivated, or dead form.
[They] can also be included in the form of fractions of
cell components. [Microorganisms] or fraction(s) can also be
introduced in the form of a powder, of a liquid, of a culture
supernatant or one of its fractions, diluted or undiluted, or also
concentrated or nonconcentrated.
(Castiel ^fl[ 89-90; see Ans. 3.)
FF 4. Castiel’s composition “can also advantageously comprise a thermal
and/or mineral water” (Castiel 1105; see Ans. 4).
FF 5. Examiner finds that Castiel differs from Appellants’ claimed
invention by failing to disclose: (a) a yeast cultured in thermal mineral
water; (b) a cosmetic composition, wherein the at least 75% of the water
content comprises a thermal mineral water; or (c) a liposome and relies on
Gueniche, Breton, Marion, Bertini, and Ghyczy to make up for the foregoing
deficiencies in Castiel (Ans. 6).
FF 6. Gueniche discloses:
Dryness of keratin materials, in particular dryness of the skin,
and especially disorders associated with dry and/or
hyposeborrheic skin are treated by administering to individuals
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Application 13/499,753
afflicted therewith, thus effective amounts of at least one extract
of a non-photosynthetic and non-fruiting filamentous bacterium
cultured in a medium which includes at least one non-sulfiirous
mineral and/or thermal water, e.g., an extract derived from the
bacterium Vitreoscilla jiliformis . . . cultured in a medium
enriched with water from La Roche Posay.
(Gueniche, Abstract; see also Breton, Abstract; see Ans. 4—5.)
FF 7. Gueniche discloses that “[t]he term ‘extract of non-photosynthetic
filamentous bacteria’ means equally well the supernatant from the culturing
of said bacteria, the biomass obtained after culturing said bacteria or the
extracts of the biomass which are obtained by treatment of this biomass”
(Gueniche 63; see id. 11 61—62; see also Breton || 66—68; Ans. 4—5).
FF 8. Gueniche discloses that a “ Vitreoscilla filiformis cultured in thermal
water from La Roche Posay has an increased effectiveness in treating
vascular disorders compared to the extract of the same bacterium cultured in
a conventional medium, . . . [i.e., a medium] without mineral or thermal
water” (Gueniche 173; see also id. 172 (“it has not been observed that the
bacterial extracts cultured in thermal water were able to prove effective for
regulating vascularization defects of the contour of the eyes and thus to
prevent and/or reduce bags and/or dark circles around the eyes”); see also
Breton, Abstract; id. 178; see Ans. 4—5).
FF 9. Breton discloses that “agents for stimulating the macromolecules of
the dermis or preventing degradation thereof, [include] those that act. . . on
the synthesis of elastin, such as the extract of Saccharomyces cerevisiae sold
by LSN under the trademark Cytovitin®” (Breton || 186—188; Ans. 5).
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Application 13/499,753
FF 10. Breton discloses that a composition for topical application to the skin
may be in the form of a liposome (Breton 198; see Ans. 5).
[A] method for caring for the skin, preferably intended to soften
cutaneous signs of ageing, comprising the successive
application to the skin, preferably wetted beforehand, of four
compositions, namely: a microdermabrasion composition, a
peeling composition, a soothing composition and an anti-ageing
composition having a given constitution.
(Marion 12; see generally Ans. 4—5.)
FF 11. Marion’s soothing composition comprises a mineral or thermal water
(Marion 140; see Ans. 5).
FF 12. Marion’s “anti-ageing composition comprises at least one anti­
ageing active principle chosen from: compounds which enhance the
synthesis of. . . elastin (such as the extract of Saccharomyces cerevisiae sold
by LSN under the trade name Cytovitin®” (Marion 141—42; see Ans. 5).
FF 13. Examiner finds that Ghyczy “teaches cosmetic preparation
comprising liposome[s] with [a] particle size of 175nm” (Ans. 6 (citing
Ghyczy 8:37)) and Bertini discloses a topical formulation that comprises
mineral water entrapped in liposomes to provide an enhanced moisturizing
effect (Ans. 5 (citing Bertini 3:50 and claim 1)).
ANALYSIS
Each of Appellants’ independent claims, claims 1, 7, and 9, require
that at least part of the thermal mineral water of the cosmetic formulation
comprises thermal mineral water in which the mineral content has been
rendered more bioavailable by the culturing within it of microorganisms
comprising yeast (see App. Br. 19—20). Examiner finds that Castiel differs
from Appellants’ claimed invention by failing to disclose, inter alia, a yeast
cultured in thermal mineral water (FF 5).
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Application 13/499,753
Examiner finds, however, that Castiel discloses a composition
comprising thermal water and a microorganism, such as yeast, which may be
provided in the composition in the form of a culture supernatant (see FF 1—
4); Gueniche and Breton each disclose: (i) cosmetic compositions
comprising thermal mineral water and (ii) an extract derived from the
bacterium Vitreoscilla filiformis cultured in a medium enriched with thermal
mineral water (FF 6 and FF 8); and Breton discloses that a composition
within the scope of Gueniche and Breton may also include an “extract of
Saccharomyces cerevisiae sold by FSN under the trademark Cytovitin®”
(FF 9).
Although the combination of Castiel, Gueniche, and Breton does not
disclose thermal mineral water that has been rendered more bioavailable by
the culturing yeast within it, Examiner finds that Gueniche and Breton
disclose that “[t]he term ‘extract of non-photosynthetic filamentous bacteria’
means equally well the supernatant from the culturing of said bacterial” (FF
7). Therefore, based on the combination of Castiel, Gueniche, and Breton,
Examiner concludes that, at the time of Appellants’ claimed invention, it
would have been prima facie obvious to, inter alia, “use thermal water as
culture medium to prepare [Saccharomyces cerevisiae] extract, as suggested
by Gueniche . . . and Breton” (Ans. 6). We are not persuaded.
Gueniche and Breton do not disclose a method of preparing a yeast,
e.g., Saccharomyces cerevisiae, extract (see Reply Br. 3 (“Similar to Castiel,
neither of Gueniche [nor] Breton disclose or suggest the culturing of a yeast
. . . in thermal mineral water”)). To the contrary, Gueniche and Breton
expressly disclose that a specific extract, an extract of non-photosynthetic
filamentous bacteria, may be the supernatant obtained from culturing the
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Application 13/499,753
bacteria in a composition comprising thermal mineral water (see FF 7).
Gueniche and Breton disclose that it is thermal mineral water in which a
non-photosynthetic filamentous bacteria, i.e., Vitreoscilla jiliformis, was
cultured that “has an increased effectiveness in treating vascular disorders
compared to the extract of the same bacterium cultured in a conventional
medium, . . . [i.e. a medium] without mineral or thermal water” (FF 8; see
Ans. 19-22).
Further, although Breton discloses a composition comprising an
extract of non-photosynthetic filamentous bacteria and a yeast extract',
Breton does not disclose that the yeast extract may be obtained from the
culture of yeast in a composition comprising thermal mineral water (cf FF
7). To the contrary, Breton directs a person of ordinary skill in this art to a
commercial vendor for a source of yeast extract (see FF 9 (“the extract of
Saccharomyces cerevisiae sold by LSN under the trademark Cytovitin®”)).
Thus, as Appellants explain, “Castiel fails to provide any indication that at
least part of said thermal mineral water comprises thermal mineral water in
which the mineral content has been rendered more bioavailable by the
culturing within it of microorganisms said microorganism comprising a
yeast” and “Gueniche and Breton fail to cure such deficiencies of Castiel”
(App. Br. 7 (emphasis omitted); see also id. at 10). In addition, we agree
with Appellants’ contentions that “none of the cited references disclosed or
suggest the use of Saccharomyces cerevisiae (i.e., yeast) to [condition] the
thermal water” and that “[i]t would be impermissible hindsight to draw the
conclusion that the advantages achieved in Gueniche and Breton regarding a
particular type of bacteria would provide any reasonable guidance in the
context of a yeast” (App. Br. 11—12; see generally Reply Br. 2). Stated
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Application 13/499,753
differently, absent hindsight, the evidence on this record fails to support
Examiner’s assertion that
[o]ne of ordinary skill in the art would have been
motivated to use thermal water as culture medium to prepare
[Saccharomyces cerevisiae] extract, as suggested by Gueniche
et al. and Breton et al. [because] the extract of the bacterium
cultured in thermal water . . . has an increased effectiveness in
treating vascular disorders compared to the extract of the same
bacterium cultured in a conventional medium without mineral
or thermal water. Therefore, it is obvious for one of ordinary
skill in the art to use thermal water as medium to prepare
[Saccharomyces cerevisiae] extract and produce the instant
claimed invention with [a] reasonable expectation of success.
(Ans. 6—7.)
In sum, Examiner failed to establish an evidentiary basis on this
record to support a conclusion that the combination of Castiel, Gueniche,
and Breton suggests a cosmetic composition comprising thermal mineral
water, wherein at least part of the thermal mineral water of the cosmetic
formulation comprises thermal mineral water in which the mineral content
has been rendered more bioavailable by the culturing within it of
microorganisms comprising yeast, as is required by Appellants’ claimed
invention.
Examiner failed to establish that any of Marion, Bertini, or Ghyczy,
alone or in combination, make up for the foregoing deficiencies in the
combination of Castiel, Gueniche, and Breton (see FF 11—14).
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1—4 and 6—15
under 35 U.S.C. § 103(a) as unpatentable over the combination of Castiel,
Gueniche, Breton, Marion, Bertini, and Ghyczy is reversed.
REVERSED
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