Ex Parte Ghosh et al

Board of Patent Appeals and Interferences

Sep 22, 2006

09851882 (B.P.A.I. Sep. 22, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DIPAK GHOSH, USHA V. MURTHY,
MUNAWAR HUSSAIN RANDHAWA, NATALYA GURMAN,
PERRY ROMANOWSKI, MEDARDO HERNANDEZ and DEBORAH A. EAGAN
__________

Appeal No. 2006-1021
Application No. 09/851,882
__________

ON BRIEF
__________

Before SCHEINER, ADAMS, and LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-68, which are all the claims pending in the
application.
Claims 1, 43 and 45 are illustrative of the subject matter on appeal and
are reproduced below:
1. A composition comprising a skin moisturizing effective amount of a
combination of urea and coenzyme Q10, wherein the ratio of urea to
coenzyme Q10 in the composition is from about 6:1 to about 10:1
(wt./wt.).

45. A method of improving the after-feel of a cosmetic composition when
the composition is applied to the skin, the method comprising
including in the composition an after-feel enhancing-effective amount

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Application No. 09/851,882
of coenzyme Q10 and urea, wherein the ratio of urea to coenzyme
Q10 in the composition is from about 6:1 to about 10:1 (wt./wt.).

46. A method of moisturizing the skin, the method comprising applying to
the skin a composition comprising a skin moisturizing effective
amount of a combination of urea and coenzyme Q10, wherein the
ratio of urea to coenzyme Q10 in the composition is from about 6:1 to
about 10:1 (wt./wt.).

The references relied upon by the examiner are:
Bertelli 4,654,373 Mar. 31, 1987
Hoppe et al. (Hoppe) 5,889,062 Mar. 30, 1999

Eucerin Product Insert (Product Insert) (date unavailable)

Eucerin® Press Release (Press Release), “Eucerin® The Medical Skin Care
Program Press Releases,” (Beiersdorf, AG, Hamburg) (date unavailable)

Raab, “Uses of Urea in Cosmetology,” Cosmetics & Toiletries, Vol. 105,
p. 97-102 (1990)

(FDC), “Beiersdorf Eucerin Plus with 5% sodium lactate, 5% urea is for ‘severely
dry, scaly skin’,” F-D-C Reports, Vol. 13, No. 43, pp. 14 (1992).

Business Editors/Health & Medical Writers (Business Wire), “Q-Pharma, Inc.-
Grants Non-Exclusive CoQ10 License to Beiersdorf AG,” Business Wire, pp. 1
(Feb. 1, 1999) (ProQuest abstract only)

Eucerin® Medical Site (Eucerin), “Eucerin® Q10 Anti-Wrinkle Sensitive Skin
Creme,” http://www.eucerinus.com/medicalsite/products/facialcare/q10/q0.html
(2002)

GROUNDS OF REJECTION
I. Claims 1-13, 17-29, and 32-68 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Hoppe and Raab.

II. Claims 1-12, 14, 15, 17, 19, 20, 21, 23, 24, 29, 30, 34, 35, 38-41,

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Application No. 09/851,882
43-46, and 54 stand rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Product Insert, Press Release, Business Wire, Bertelli, and
FDC.
III. Claims 13, 16, 18, 22, 28, 31-33, 36, 42, 47-53, and 55-68 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the combination of
Product Insert, Press Release, Business Wire, Bertelli, FDC and Hoppe.
IV. Claims 23-25 and 37 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Product Insert, Press Release, Business
Wire, Bertelli, FDC, Hoppe, and Raab.
We affirm Rejection I. Having disposed of claims 23-25 and 37, we do not
reach the merits of Rejection IV. We reverse Rejection II and Rejection III.

DISCUSSION
Rejection I:
Claims 1-13, 17-29, and 32-68 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Hoppe and Raab. Appellants have
provided arguments for the following three claim groupings: I. claims 1-13,
15-29, 32-43, and 62-68; II. claims 43, 44, and 46-61; and III. claim 45.
Accordingly, we limit our discussion to representative claims 1, 45 and 46.
Claims 2-13, 15-29, 32-43, and 62-68 will stand or fall together with claim 1.

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Application No. 09/851,882
Claims 43, 44, and 46-61 will stand or fall together with claim 46. Claim 45 will
stand or fall alone. In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991).
According to the examiner (Answer, page 3), Hoppe teaches a
composition that provides moisture1 to the skin and comprises “0.2-0.4 [%] by
weight of coenzyme Q[-]10[ ]2 .” The examiner recognizes, however, that Hoppe
fails to teach a composition comprising urea, as is required by appellants’
claimed invention. Answer, page 4. The examiner relies on Raab to make up for
this deficiency in Hoppe. In this regard the examiner finds (id.), “Raab teaches
the use of urea in concentrations of 4-10 wt % in cosmetic and/or dermatological
compositions to provide [among other things a] moisturizing . . . action to the
skin.”3
Based on this evidence, and relying on the principles of In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), the examiner
concludes (Answer, page 4), it would have been “prima facie obvious to combine
two compounds each of which is taught by the prior art to be useful for the same
purpose, in order to form a composition which is to be used for the very same
purpose.” In this regard, the examiner asserts that appellants’ “claims define
nothing more than the concomitant use of two skin care actives conventionally

1 Hoppe, column 1, lines 8-58.

2 Hoppe, column 4, lines 55-58.

3 The examiner also finds (Answer, page 4), Raab “teaches urea increases the therapeutic
activity of other pharmaceutical substances, and in Table 3 shows the use of urea in combination
with anti-inflammatory agents . . . in the weight ratio of 10:0.3 to 10:5.”

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Application No. 09/851,882
used for dry skin treatment.” Answer, bridging sentence, pages 4-5. In addition,
the examiner asserts (Answer, page 5),
[i]t would have been further obvious to one having ordinary
skill in the art at the time the invention was made to have modified
the Hoppe invention by adding urea as motivated by Raab because
of an expectation of successfully producing a topical composition
for treating skin disorders including senile xerosis[ ]4 , with enhanced
moisturizing property and improved pharmaceutical effects of other
skin care actives.

Claim 1:
In response, appellants assert (Brief, page 6), “Hoppe does not teach or
suggest combining urea with any of the active compounds described therein, and
much less combining urea with coenzyme Q[-]10 specifically in a ratio of
from about 6:1 to about 10:1 (wt./wt.) as required . . .” by claim 1. Similarly,
appellants assert (id.), “Raab fails to teach or suggest adding coenzyme Q[-]10,
and much less combining urea and conenzyme Q[-]10 in a ratio of from about 6:1
to about 10:1 (wt./wt.) as required . . .” by claim 1.
On reflection, we find the weight of the evidence favors the examiner.
Hoppe discloses compositions that comprise coenzyme Q-10. See e.g., Hoppe,
column 7, Example III. According to Hoppe, these compositions are useful for
the treatment of aging skin (column 1, lines 4-8), and more particularly the
treatment of “senile xerosis,” which is characterized by, inter alia dryness,
roughness and itching of the skin (column 1, lines 8-17). According to Hoppe
(column 1, lines 55-58), “coenzyme Q-10 has an important function in the
prevention of skin damage due to UV radiation and the prevention of aging of the

4 As taught by Hoppe. Hoppe, column 1, lines 8-18.

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Application No. 09/851,882
skin. Roughness of the skin of 20- to 40-year olds is improved by giving the skin
moisture.”
Looking to Example III, column 7 of Hoppe, we note that the disclosed
composition comprises a combination of 4.6 parts by weight of glycerol and 0.54
parts by weight of coenzyme Q-10. Stated differently, the ratio of glycerol to
coenzyme Q-10 is about 8.5:1 wt./wt.
As the examiner points out (Answer, page 4), Raab teaches the use of
urea in a concentration of 4 to 10% for cosmetic purposes. See Raab, page 97,
column 2, lines 19-21. In this regard, Raab teach that “[t]he moisturizing capacity
of urea is its most valuable activity for the use in cosmetology.” Raab, page 100,
column 1, lines 18-19. According to Raab, studies demonstrate that “urea was
significantly more active as a moisturizer than glycerol.” Page 98, line 29 to page
100, line 19.
In our opinion, given that Raab teaches that urea is significantly more
active as a moisturizer than glycerol a person of ordinary skill in the art would
have been motivated to substitute the glycerol component of Hoppe with an
equal concentration (4.6 parts by weight) of urea with the expected advantage of
increasing the moisturizing effect of the composition disclosed by Hoppe. The
resulting composition would have a urea to coenzyme Q-10 ratio of about 8.5:1
wt./wt, well within the requirements of appellants’ claim 1.
For the foregoing reasons we affirm the rejection of claim 1 under
35 U.S.C. § 103 as being unpatentable over the combination of Hoppe and
Raab. As discussed supra, claims 2-13, 15-29, 32-43, and 62-68 fall together

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Application No. 09/851,882
with claim 1. In affirming this ground of rejection, we recognize that our
reasoning differs from that of the examiner. Therefore, we will designate our
affirmance a new ground of rejection in order to give Appellants a fair opportunity
to respond. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27
(CCPA 1976).

Claim 46:
As set forth above, appellants’ claim 46 is drawn to a method which
comprises applying the composition of claim 1 to the skin. Appellants’ arguments
in favor of claim 46 are essentially the same as those made for claim 1. Brief,
pages 7-8. As discussed above, it is our opinion that the composition of
appellants’ claim 1 is prima facie obvious in view of the combination of Hoppe
and Raab. Both or Hoppe and Raab disclose the application of a composition to
the skin. Accordingly, for the foregoing reasons we affirm the rejection of claim
46 under 35 U.S.C. § 103 as being unpatentable over the combination of Hoppe
and Raab. As discussed supra claims 43, 44, and 47-61 fall together with claim
46. In affirming this ground of rejection, we recognize that our reasoning differs
from that of the examiner. Therefore, we will designate our affirmance a new
ground of rejection in order to give Appellants a fair opportunity to respond. See
In re Kronig, surpa.

Claim 45:

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Application No. 09/851,882
As discussed above, the composition of claim 1 is prima facie obvious in
view of the combination of Hoppe and Raab. Claim 45 is drawn to a method of
improving the after-feel of a cosmetic composition, by including in the
composition an after-feel enhancing-effective amount of the composition of
appellants’ claim 1. According to page 3 of appellants’ specification, the term
“after-feel” refers to “non-greasiness, rapid absorption, and the like”. According
to appellants (Brief, page 9), neither Hoppe nor Raab “provide any teaching,
suggestion or motivation to modify the subject matter disclosed therein to
perform the method recited in claim 45 of the present application.” We are not
persuaded by appellants’ argument.
As discussed above, Hoppe discloses a cosmetic composition, a skin
cream that comprises a glycerol to coenzyme Q-10 ratio of about 8.5:1 wt./wt.
Raab provides the motivation to substitute urea for the glycerol component of
Hoppe, because according to Raab (page 98, line 29 to page 100, line 19), urea
is a significantly more active moisturizer than glycerol. The resulting composition
would therefore comprise a urea to coenzyme Q-10 ration of about 8.5:1 wt./wt.
Well within the requirements of appellants’ claimed invention.

In this regard, the examiner finds (Answer, page 11), improving after-feel
“is within the scope of the enhanced moisturizing effects that are expected from
combining the teachings of the references.” While this may be true, appellants’
specification demonstrates that a composition comprising coenzyme Q-10 and

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Application No. 09/851,882
urea as set forth in claim 1 provides a better “after-feel” than a similar
composition comprising Q-10 or urea alone. See Example 11, specification,
pages 27-28.
In our opinion, the evidence set forth in appellants’ specification, trumps
the examiner’s bare assertion that such an “after-feel” would have been expected
from the combined teachings of Hoppe and Raab. In this regard, we note that
neither Hoppe nor Raab discuss the concept of improving the “after-feel” of a
cosmetic composition. Accordingly, we agree with appellants (see Brief, pages
8-9) that a person of ordinary skill in the art would not have been motivated to
improve the “after-feel” of a cosmetic composition, as set forth in appellants’
claim 45, based on the combined teachings of Hoppe and Raab.

Accordingly, we reverse the rejection of claim 45 under 35 U.S.C. § 103
as being unpatentable over the combination of Hoppe and Raab.
Rejection II:
Claims 1-12, 14, 15, 17, 19, 20, 21, 23, 24, 29, 30, 34, 35, 38-41, 43-46,
and 54 stand rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Product Insert, Press Release, Business Wire, Bertelli, and FDC.
According to the examiner (Answer, page 5), Product Insert teaches a
composition comprising, inter alia, coenzyme Q10. With reference to the Press
Release, the examiner finds (id.), the product has been on the market since

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Application No. 09/851,882
October 2000. The examiner recognizes, however, that both of these documents
fail to disclose urea, or the amount of coenzyme Q10 in the composition. Id.
With reference to Business Wire, the examiner finds (Answer, page 6), the
coenzyme Q10 technology is used in topical non-prescription formulations as
described in Bertelli. In this regard, the examiner finds Bertelli discloses
pharmaceutical and cosmetic formulations comprising 0.1-10% coenzyme Q10 to
treat damaged and impaired skin tissue. Id. (col. 2, lines 28 - 64). The examiner
recognizes, however, that these references also fail to teach formulations
comprising urea. Id.
To make up for this deficiency, the examiner relies on FDC. According to
the examiner, FDC teaches a composition comprising 5% urea sold under the
tradename Eucerin Plus. Id. In this regard, the examiner finds (id.), “[t]he
reference teaches that the product ‘induces significant improvements in skin
dryness and appearance relative to an untreated control.’”
Based on this evidence, the examiner concludes (id.),

It would have been obvious to one having ordinary skill in the art at
the time the invention was made to have modified the Eucerin anti-
wrinkle treatment composition by adding 5 % of urea as motivated
by Bertelli and FDC Reports, because of an expectation of
successfully producing an enhanced skin treatment composition
which moisturizes and treats damaged and impaired skin. The
motivation to use coenzyme Q10 in the weight amount of 0.1-10 %
by weight of the total composition is found in the combined
teachings of … [P]ress [R]elease, Business Wire, and Bertelli.

To reach appellants’ method claims, the examiner simply asserts (Answer,
page 7), the methods are “obvious uses of the prior art cosmetic compositions.”

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Application No. 09/851,882
In response, appellants begin by pointing out that the Product Insert
teaches a composition comprising Q10 and Vitamin E, while Press Release
teaches a composition comprising Q10 and Vitamin A. Brief, pages 9-10.
Accordingly appellants assert that the dates taught by the Press Release do not
pertain to the composition taught by the Product Insert. Brief, page 10. The
examiner fails to respond to this point of fact.
Appellants then highlight that none of Produce Insert, Press Release,
Business Wire, or Bertelli teach or suggest a formulation comprising coenzyme
Q10 and urea. Brief, page 10. As for FDC, appellants explain that the document
simply refers to a formulation comprising sodium lactate and urea. Brief, page
11. In all, appellants assert that there is no suggestion or motivation to combine
the reference in the manner necessary to arrive at appellants’ claimed invention.
Brief, pages 11-12. We agree.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. . . . Close adherence to this methodology is especially
important in cases where the very ease with which the invention
can be understood may prompt one “to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.”
. . .
Most if not all inventions arise from a combination of old elements.
. . . Thus, every element of a claimed invention may often be found
in the prior art. . . . However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. . . . Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art,

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Application No. 09/851,882
there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by
the applicant. [Citations omitted].

In other words, “there still must be evidence that ‘a skilled artisan, . . . with
no knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem Inc. v.
Southern Cal. Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed.
Cir. 2000). At best, the statement of the rejection establishes that individual parts
of the claimed invention were known in the prior art. In our opinion, however, the
examiner has failed to establish why one of ordinary skill in the art would have
combined the references in the manner necessary to arrive at appellants’
claimed invention.

For the foregoing reasons we reverse the rejection of claims 1-12, 14, 15,
17, 19, 20, 21, 23, 24, 29, 30, 34, 35, 38-41, 43-46, and 54 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Product Insert, Press
Release, Business Wire, Bertelli, and FDC.
Rejection III:
Claims 13, 16, 18, 22, 28, 31-33, 36, 42, 47-53, and 55-68 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the combination of Product
Insert, Press Release, Business Wire, Bertelli, FDC, and Hoppe. As we
understand the examiner’s statement of the rejection the combination of Product
Insert, Press Release, Business Wire, Bertelli, and FDC is relied upon as set

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Application No. 09/851,882
forth in Rejection II above. As discussed above, this combination of references
fails to provide a suggestion or motivation to formulate a composition comprising
coenzyme Q10 and urea.
The examiner relies on Hoppe to teach “formulations comprising
coenzyme Q10 and additives.” However, as discussed in Rejection I, Hoppe fails
to teach a composition comprising urea. Hoppe, therefore, fails to make up for
the deficiencies in the combination of Product Insert, Press Release, Business
Wire, Bertelli, and FDC discussed above.
For the foregoing reasons, we reverse the rejection of claims 13, 16, 18,
22, 28, 31-33, 36, 42, 47-53, and 55-68 under 35 U.S.C. § 103 as being
unpatentable over the combination of Product Insert, Press Release, Business
Wire, Bertelli, FDC, and Hoppe

Rejection IV:
Claims 23-25 and 37 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Product Insert, Press Release, Business
Wire, Bertelli, FDC, Hoppe and Raab. Having disposed of claims 23-25 and
37 under 35 U.S.C. § 103 as being unpatentable over the combination of Hoppe
and Raab, we do not reach the merits of this rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b)

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Application No. 09/851,882
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

)
Toni R. Scheiner )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Donald E. Adams ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Richard M. Lebovitz )
Administrative Patent Judge )

Appeal No. 2006-1021 Page 15
Application No. 09/851,882

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