Ex Parte GAN et al

Patent Trial and Appeal Board

Feb 29, 2016

12620410 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/620,410 11/17/2009
32425 7590 03/02/2016
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
FIRST NAMED INVENTOR
David GAN
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.
MKAY:l05USC1/10912145 1506
EXAMINER
ROBINSON, LISBETH C
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GAN, MICHELLE HINES, JAVIER ARA VENA, and
BRIAN JONES 1
Appeal2013-009063
Application 12/620,410
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of evening out skin tone, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification discloses "topical skin care compositions that
include kakadu plum (Terminaliaferdinandiana) extract and/or acai berry
1 Appellants identify the Real Party in Interest as Mary Kay, Inc. (Appeal
Br. 1.)
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Application 12/620,410
extract (Euterpe oleracea)." (Spec. 2 i-f 2.) "Also disclosed is a method of
lightening skin or evening skin tone comprising applying the compositions
of the present invention to the skin .... The composition can even out
pigmentation of the skin." (Id. at 7 i-f 16.)
Claims 13-21 are on appeal. Claim 13 is illustrative and reads as
follows:
13. A method of evening out a person's skin tone comprising applying a
topical skin care composition including Euterpe oleracea extract to
skin in need thereof, wherein the Euterpe oleracea extract contains a
polyphenol and wherein topical application of the composition evens
out the person's skin tone.
The claims stand rejected as follows:
Claims 13 and 20 under 35 U.S.C. § 103(a) as obvious based on
Morariu2 and Gallori3 (Final Rej. 4 3);
Claims 13-17 and 21under35 U.S.C. § 103(a) as obvious based on
Schiltz,5 Morariu, and Gallori (Final Rej. 13);
Claims 18-20 under 35 U.S.C. § 103(a) as obvious based on Schiltz,
Morariu, Gallori, and Fogel6 (Final Rej. 17);
Claim 13-21, provisionally, for obviousness-type double patenting
based on claims 1-10 and 13-21 of application 12/624,980, either by itself
(claim 13, Final Rej. 20), combined with Schiltz (claims 14--17 and 21, Final
2 Morariu, US 2006/0216251 Al, published Sept. 28, 2006.
3 S. Gallori et al., Polyphenolic Constituents of Fruit Pulp of Euterpe
oleracea Mart. (A9ai palm), 59 Chromatographia 739-743 (2004).
4 Office Action mailed Aug. 30, 2012.
5 Schiltz, US 2003/0095940 Al published May 22, 2003.
6 Fogel, US 6,126,951, issued Oct. 3, 2000.
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Rej. 21), or combined with Schiltz and Fogel (claims 18-20, Final Rej. 22-
23).
I
Issue
The Examiner has rejected claims 13 and 20 as obvious based on
Morariu and Gallori. (Final Rej. 3.) The Examiner has also rejected all of
the claims on appeal as obvious based on Schiltz, Morariu, and Gallori, by
themselves or further combined with Fogel. (Id. at 13-18.) Appellants have
waived arguments based on Schiltz or Fogel (see Appeal Br. 18-19), so we
will consider the§ 103(a) rejections together.
The Examiner finds that Morariu discloses a method for treating aged
skin conditions, including hyperpigmentation. (Final Rej. 3.) Specifically,
the Examiner finds that Morariu discloses glutathione-containing
compositions for lightening hyperpigmentation, and discloses that
anthocyanins act synergistically with glutathione. (Id. at 4.) The Examiner
also finds that Morariu discloses that acai berry extract has a high
anthocyanin content. (Id.) The Examiner concludes that it would have been
obvious to modify Morariu's glutathione-containing composition for treating
hyperpigmentation by adding acai berry anthocyanins to it. 7 (Id.)
Appellants contend that Morariu does not teach that glutathione evens
out skin tone and does not teach that anthocyanins will act synergistically
with glutathione to even out skin tone. (Appeal Br. 3-7, 12-14.) Appellants
7 The Examiner relies on Gallori only as evidence that anthocyanins are
polyphenols (Final Rej. 5), which Appellants do not dispute.
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Application 12/620,410
also contend that the rejection requires choosing only one from among a
wide range of optional ingredients described by Morariu, and therefore relies
on hindsight. (Id. at 7-10.) Finally, Appellants contend that they have
provided evidence of copying that shows the nonobviousness of the claimed
method. (Id. at 14--18.)
The issues presented are (1) whether Morariu would have made the
method of claim 1 prima facie obvious, and (2) whether Appellants'
evidence of secondary considerations, when weighed against Morariu's
disclosure, shows that the claimed method would have been nonobvious.
Findings of Fact
1. Appellants' Specification states that ageing-related skin changes
include "loss of color evenness or tone." (Spec. 2 i-f 3.)
2. Appellants' Specification states that skin tone can be clinically
graded using a ten-point scale, ranging from "(10) even skin of uniform,
pinkish brown color. No dark, erythremic, or scaly patches upon
examination with a hand held magnifying lens. Microtexture of the skin
very uniform upon touch" to "(1) uneven skin coloration and texture.
Numerous areas of scaliness and discoloration, either hypopigmented,
erythremic or dark spots. Large areas of uneven color more than 1 cm in
diameter." (Id. at 3 7 i-f 101.)
3. Morariu discloses "a method and composition ... for treating skin,
comprising administering a topical composition to the skin, containing a
lipoic acid, a camitine, and a camosine." (Morariu 2 i-f 12.)
4. Morariu states that "[t]reating skin comprises treating skin damage
and the signs of aging of the skin. The skin damage may be due to
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Application 12/620,410
chronoaging or photoaging, and includes, for example, wrinkles, sagging
skin, and decreased elasticity. Treating skin may also provide treatment of
hyperpigmentation." (Id.)
5. Morariu states that "[i]n addition to the lipoic acid, camosine, and
camitine, many preferred embodiments of this invention contain at least one
or more other active ingredients." (Id. at 5 i-f 50.)
6. "[P]referred embodiments of the additional active ingredients ...
are compounds having antioxidative action." (Id. at 5 i-f 52.)
7. "Anthocyanins and their derivatives are particularly preferred
antioxidants." (Id. at 6 i-f 53 .)
8. "Particularly preferred anthocyanins are derived from natural
sources having high anthocyanin content. Approximately 300 anthocyanins
have been discovered in nature, and come from sources including, but not
limited to: acai berries, aronia berries, apples, bilberries" etc. (Id. at 6 i-f 56.)
9. Morariu states that "[g]lutathione, reduced glutathione, glutathione
peroxidase, glutathione s-transferase or glutathione reductase may be
incorporated in the formulation." (Id. at 14 i-f 97.)
10. Morariu states that "ingredients synergistic with glutathione or
glutathione precursors which may be added to the formulation include:
selenium salts, ... anthocyanins," etc. (Id.)
11. Morariu states that "[g]lutathione is important for the
maintenance of the function of enzymes in cell metabolism. It assists in the
transport of amino acids across cell membranes. It prevents oxidative
alterations of catalytic and allosteric centers, and upholds the optimum
conformation of the enzymes for proper functioning." (Id. at 14 i-f 98.)
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12. Morariu states that "[i]n this formulation glutathione is
particularly useful as it is involved with preventing both oxidative damage
and detoxifying RCS (reactive carbonyl species) .... [T]he combination of
glutathione in a topical formulation is particularly useful." (Id.)
13. Morariu states that "[g]lutathione also affects hyperpigmentation
of the skin." (Id. at 15 i-f 100.)
14. Morariu exemplifies a topical cosmetic comprising 1-glutathione
and bilberry anthocyanins. (Id. at 24 i-f 177.)
Analysis
We agree with the Examiner that the method of claim 13 would have
been obvious based on Morariu, which discloses compositions for treating
skin, and defines treating skin to include treatment of signs of aging; e.g.,
wrinkles, decreased elasticity, or hyperpigmentation (FF3, FF4). Morariu's
compositions comprise lipoic acid, camitine, and camosine (FF3), as well as
optional active ingredients (FF5). Morariu states that antioxidants are
preferred additional active agents (FF6), that anthocyanins are particularly
preferred antioxidants (FF7), and that particularly preferred anthocyanins are
derived from natural sources such as acai berries or bilberries (FF8).
Morariu states that glutathione also may be incorporated into its
compositions (FF9), that it is important for maintaining function of
metabolic enzymes (FF 11 ), and that it is particularly useful in Morariu' s
formulations because it prevents oxidative damage and detoxifies reactive
carbonyl species (FF12). Morariu also states that glutathione affects skin
hyperpigmentation (FF13). Morariu exemplifies a topical cosmetic
composition comprising glutathione and bilberry anthocyanins (FF14).
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Based on these teachings, it would have been obvious to modify
Morariu's exemplary composition to include acai berry extract, either
instead of or in addition to bilberry anthocyanins, because Morariu discloses
that both acai berries and bilberries are natural sources of anthocyanins,
which are preferred antioxidants in its composition (FF6-FF8). It would
also have been obvious to apply the resulting composition to skin needing
skin tone evened out, because Morariu states that its compositions are useful
for treating skin damage, including wrinkles, decreased elasticity, and hyper-
pigmentation (FF4).
Appellants argue, however, that Morariu does not teach that either
glutathione or anthocyanins evens out skin tone. (Appeal Br. 3-7.)
Appellants argue that it is unclear from Morariu whether glutathione
promotes depigmenting (id. at 12-13) and, in fact, Morariu "indicates that
decreasing glutathione is the key to lightening the skin; it does not provide a
reasonable expectation that treating skin with glutathione would have a
lightening effect" (id. at 13).
We agree with the Examiner, however, that Morariu discloses
glutathione-containing compositions for treating skin hyperpigmentation.
Morariu discloses that there are two types of melanin: eumelanin, which is
brown/black, and phaeomelanin, which is red/yellow. (Morariu 15 i-f 100.)
Morariu also teaches that "[g]lutathione has been implicated in the biogenesis
of the melanin precursor 5-S-cysteinyldopa." (Id.) Finally, Morariu discloses
that agents, such as hydroquinone, that are used to treat hyperpigmentation
"act to decrease intracellular glutathione by stimulating pheomelanin rather
than eumelanin and thereby lightening hyperpigmentation of the skin." (Id.)
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Morariu concludes that "the topical composition of the current invention can
be used to treat hyperpigmentation." (Id.)
Thus, Morariu does not state that decreased intracellular glutathione
lightens hyperpigmentation, but that agents that lighten hyperpigmentation
act by stimulating phaeomelanin, and thereby decreasing intracellular
glutathione, which is involved in the biosynthesis of a melanin precursor.
Morariu's conclusion therefore follows: its glutathione-containing
composition can be used to treat hyperpigmentation, because the glutathione
augments the intracellular glutathione, allowing additional synthesis of
phaeomelanin, and thereby further lightening hyperpigmentation.
Thus, based on the teachings of Morariu as a whole, it would have
been obvious to apply its glutathione-containing composition to skin with a
reasonable expectation of treating hyperpigmentation (i.e., to even out skin
tone), and to include anthocyanins such as acai berry extract in the
composition because anthocyanins are synergistic with glutathione.
Appellants also argue that the rejection requires selecting optional
ingredients from a wide range of possible ingredients taught by Morariu.
(Appeal Br. 7.) Appellants argue that "the leap from Morariu's optional use
of glutathione or anthocyanins to improve the appearance of aged skin
characterized by wrinkles and loss of elasticity to Appellant's use of Euterpe
oleracea extract to even out skin tone can only be done by relying on
hindsight reasoning." (Id. at 10.)
We disagree. As discussed above, Morariu discloses that glutathione-
containing compositions are useful for treating hyperpigmentation. Morariu
discloses that anthocyanins from acai berries as among particularly preferred
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antioxidants for inclusion in its composition (FF6-FF8). And Morariu
discloses that glutathione is "particularly useful" in topical formulations
(FF12) and that anthocyanins are synergistic with glutathione (FFlO).
Choosing glutathione and acai berry extract for inclusion in Morariu' s
composition, and using the composition on skin needing its tone evened,
therefore does not require hindsight based on Appellants' disclosure.
Rather, claim 13 is merely directed to a combination of known elements for
their known function, and is therefore obvious. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.").
Finally, Appellants argue that they have "submitted evidence of
copying, which is a secondary consideration of nonobviousness." (Appeal
Br. 14.) "In particular, Appellants submitted evidence showing that third
party products appear to include components now being claimed, which is
evidence of copying." (Id.) Appellants' evidence consists of four
screenshots of websites referring to acai-containing skin care products. (Id.
at 14--15 and Exhibits A-D.)
We do not agree that the submitted evidence shows that the claimed
method would not have been obvious. Appellants have provided no
evidence to show that the products advertised in the submitted screenshots
were in any way derived from Appellants' invention. See Takai Corp. v.
Easton Enterprises, Inc., 632 F.3d 1358, 1370 (Fed. Cir. 2011) ("Copying
'requires evidence of efforts to replicate a specific product."'). Thus,
Appellants' evidence does not show copying; rather, it shows that others
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independently conceived of the same invention as Appellants. If anything,
therefore, it is evidence of obviousness-because others in the field thought
of the same idea-rather than nonobviousness.
In any event, Appellants have not provided evidence of secondary
considerations of nonobviousness that overcomes the evidence showing that
claim 13 would have been obvious based on Morariu. See Takai, 632 F.3d
at 1371 ("A strong case of primafacie obviousness, such as that presented
here, cannot be overcome by a far weaker showing of objective indicia of
nonobviousness. ").
Conclusion of Law
Morariu would have made the method of claim 13 prima facie
obvious. Appellants' evidence of secondary considerations, when weighed
against Morariu's disclosure, does not show that the claimed method would
have been nonobvious.
Claim 20 not been argued separately and therefore falls with claim 13.
37 C.F.R. § 41.37(c)(l)(iv). As noted above, Appellants have waived
additional arguments directed to the other two§ 103(a) rejections on appeal.
We therefore affirm those rejections as well, for the reasons set forth by the
Examiner, and for the reasons discussed above. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) ("In the event of such a waiver, the PTO may
affirm the rejection of the group of claims that the examiner rejected on that
ground without considering the merits of those rejections.").
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Application 12/620,410
II
The Examiner has provisionally rejected all of the claims on appeal
for obviousness-type double patenting based on application 12/624,980,
either by itself or in combination with either Schiltz, or Schiltz and Fogel.
(Final Rej. 20-23.)
Appellants do not address the merits of these rejections in the Appeal
Brief, stating only that "[i]f such provisional rejections are the only
remaining rejections in the present application, the Examiner should
withdraw that rejection and permit the present application to issue as a
patent without a terminal disclaimer." (Appeal Br. 19.)
Because the provisional rejections are not the only remaining
rejections in the present application and Appellants have not disputed the
merits of those provisional rejections, we affirm them.
SUMMARY
We affirm all of the rejections and provisional rejections on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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