Ex Parte Granger et al

Patent Trial and Appeal Board

Jan 31, 2019

13764090 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/764,090 02/11/2013 Stewart Paton Granger
201 7590 02/04/2019
UNILEVER PATENT GROUP
700 SYLVAN AVENUE
Floor A4
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
J6635USw4 6750
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
patentgroupus@unilever.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEWART PATON GRANGER, IAN RICHARD SCOTT,
ROBERT MARK DONOVAN, SUSANNE TEKITS LOBST,
and LISA LICAMELI 1
Appeal2017-004553
Application 13/764,090
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method for treating skin. Claims 8, 9, 11-14, and 21-23
are on appeal as rejected under 35 U.S.C. § 103(a). 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as "Conopco, Inc., d/b/a
UNILEVER." Appeal Br. 3.
2 Claims 10 and 15-20 stand withdrawn from consideration. Appeal Br. 3.
Appeal2017-004553
Application 13/764,090
STATEMENT OF THE CASE
Claim 8 is representative and is reproduced below:
8. A method for treating skin comprising the steps of:
(i) applying to the skin a composition comprising:
( d) [sic] from 0.01 % to 10% of a retinoid;
( e) a booster compound comprising damascone and
hexanoyl sphingosine;
(f) a cosmetically acceptable vehicle, and
(ii) treating the skin for wrinkles, psoriasis, age spots
and/or discoloration
wherein booster compound potentiates activity of the
retinoid, and optionally, further comprises quercetin, coumarin,
vanillin, oleyl betaine, arachidonic acid or a mixture thereof.
Appeal Br. 1 7.
The following rejections are appealed:
Claims 8, 9, 11, 13, 14, and 21 stand rejected under 35 U.S.C.
§ 103(a) over Pillai, 3 Sigma-Aldrich, 4 Burger '556, 5 and Ando. 6 Final
Action 4.
3 US 5,476,661 (issued Dec. 19, 1995) ("Pillai").
4 Sigma-Aldrich, N-Hexanoyl-D-sphingosine 2:98% (TLC), synthetic,
http://www.sigmaaldrich.com/ catalog/product/ sigma/h65 24 ?lang=en®io
n=US#, Sept. 11, 2015 ("Sigma-Aldrich").
5 US 5,759,556 (issued June 2, 1998) ("Burger '556").
6 Hideya Ando et al., Linoleic acid and a-linolenic acid lightens ultraviolet-
induced hyperpigmentation of the skin, 290 ARCH DERMATOL RES 375-81
(1998) ("Ando").
2
Appeal2017-004553
Application 13/764,090
Claim 12 stands rejected under 35 U.S.C. § 103(a) over Pillai, Sigma-
Aldrich, Burger '556, Ando, and Cauwenbergh. 7 Id. at 7.
Claim 22 stands rejected under 35 U.S.C. § 103(a) over Pillai, Sigma-
Aldrich, Burger '556, Ando, and Nakayama. 8 Id. at 8-9.
Claim 23 stands rejected under 35 U.S.C. § 103(a) over Pillai, Sigma-
Aldrich, Burger '556, Ando, and Burger '367. 9 Id. at 10.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellants in the Appeal Brief (no Reply Brief was
submitted) have been considered; arguments not so-presented in the Brief
are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015); see also Ex parte
Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI 2010) (informative) ("Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.").
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen a patent
claims a structure [ or method] already known in the prior art that is altered
by the mere substitution of one element [ or step] for another known in the
field, the combination must do more than yield a predictable result." Id.
7 US 5,476,852 (issued Dec. 19, 1995) ("Cauwenbergh").
8 US 5,853,705 (issued Dec. 29, 1998) ("Nakayama").
9 US 5,665,367 (issued Sept. 9, 1997) ("Burger '367").
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Appeal2017-004553
Application 13/764,090
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
"[T]he question is whether there is something in the prior art as a
whole to suggest the desirability, and thus the obviousness, of making the
combination, not whether there is something in the prior art as a whole to
suggest that the combination is the most desirable combination available."
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (citation omitted). "[I]f a
technique has been used to improve one device [ or method], and a person of
ordinary skill in the art would recognize that it would improve similar
devices [ or methods] in the same way, using the technique is obvious unless
its actual application is beyond his or her skill." KSR, 550 U.S. at 417.
"[T]he test of obviousness is not express suggestion of the claimed invention
in any or all of the references but rather what the references taken
collectively would suggest to those of ordinary skill in the art presumed to
be familiar with them." In re Rosselet, 34 7 F .2d 84 7, 851 ( CCP A 1965)
( emphasis in original).
Findings of Fact (FF)
We adopt the Examiner's findings of fact and rationale on
obviousness as set forth in the Final Action and Answer. Final Action 4--12;
Answer 3---6. The following findings of fact highlight certain evidence:
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Appeal2017-004553
Application 13/764,090
FF 1. Pillai discloses "[ c ]ompositions for treating skin" and "a
method of improving or preventing the appearance of wrinkled, flaky,
aged, [or] photodamaged skin." Pillai Abstract, 15 :24--40.
FF2. Further to the preceding finding of fact, Pillai discloses
applying compositions including a ceramide component, such as a
preferred compound having the following structure:
(B)
OH
OH
Pillai 8:56-9:9. The Examiner determined, and Appellants do not
dispute, that Sigma-Aldrich evidences that this ceramide compound is
hexanoyl sphingosine. Final Action 5 (citing Sigma-Aldrich).
FF3. Pillai discloses using a cosmetically acceptable vehicle
for formulating a composition with a ceramide component. Pillai
11:63-12:21.
FF4. Pillai discloses including a retinoid component in
formulations with ceramides. Pillai 13:1-8, 14:65-15:1 (identifying
vitamin A palmitate to be retinyl palmitate ).
FF5. Pillai discloses an example skin care treatment
composition including, inter alia, 1 % the ceramide of Formula B
(hexanoyl sphingosine) and 0.5% vitamin A palmitate (the retinoid
retinyl palmitate ).
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Appeal2017-004553
Application 13/764,090
FF6. Burger '556, like Pillai, discloses compositions for skin
care, e.g., to treat dry skin, photodamaged skin, wrinkles, age spots,
dark skin. Burger '556 title, 1:6-9, 2: 13-18.
FF7. Burger '556 discloses skin care compositions having
0.001 14l
Sqwuetlt'c
Lmo.leic acid
Clll.lk:~terol
2,hycll:::,xy-n--occai:.:ik. ~id
Vitaruiri E li.ooleate
U~rbti._l Qi{
t~an..,l
%W/W
10
20
55:79
liJ
(1.01
0.03
0.7
0.5
0.5
1
Pillai 22:64--23:17; Burger '556 15:29-45. As can be seen from the above-
reproduced lists of ingredients/ components, Pillai' s Example 6 and Burger
'556's Example 10 include significantly overlapping ingredients, e.g., the
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Appeal2017-004553
Application 13/764,090
silicone gums/fluids, squalene, herbal oil, vitamin E linoleate, and
retinyl/vitamin A palmitate. Pillai adds a ceramide of its disclosed
Formula B, i.e., hexanoyl sphingosine, which is a lipid component, and
Burger '556 adds a-damascone, which is a retinol booster/enhancer, among
a few other minor differences. See FF2, FF4, FF5, FF7, FF9. Pillai's and
Burger '556's compositions are used for the same purpose, i.e., treating
cosmetic skin conditions. FFl, FF6. Because Pillai's formulation includes
the retinol vitamin A palmitate, and because Burger '556 includes
damascone with its vitamin A palmitate to enhance this retinol' s
performance in its formulation, it would have been obvious to add
damascone to Pillai's formulation for the same reason. See FF5, FF8.
Regarding claim 8, Appellants argue "[ n ]othing in the [Pillai]
reference even remotely suggests that hexanoyl sphingosine should be used
to boost the activity of retinoid in a method to treat skin" and the Burger
'556 reference describes skin care formulations with retinol and another
compound selected from "a multitude of possibilities of which damascone is
only one." Appeal Br. 10.
This argument is not persuasive. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Appellants' argument overlooks that the Examiner's rejection is over
a combination of references. Appellants' argument attacking the alleged
shortcomings of Pillai and Burger '556, individually, is not persuasive.
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Application 13/764,090
Further, the Examiner has identified ample reason the skilled artisan
would have combined the references and added Burger '556's damascone to
Pillai's compositions, e.g., that of Example 10, as discussed above. Once
damascone was added to Pillai's formulation containing a retinol, it would
have been a booster for the retinol. Thus, the prior art combination teaches
and suggests the claimed method and composition thereof.
We agree with the Examiner that it would have been obvious to have
both damascone and hexanoyl sphingosine in a skin care composition with
retinol; whether the skilled artisan would have recognized that both of these
components, rather than just damascone, would have synergistically boosted
the retinol is not determinative on obviousness.
Regarding claims 12, 22, and 23, Appellants argue "the combination
of references relied on by the Examiner does not, even remotely, describe a
method to treat skin with compositions comprising retinoid, damascone and
hexanoyl sphingosine," as argued for claim 8. Appeal Br. 12, 13, 14. This
adds no new or different arguments for these claims not argued over the
rejection of claim 8. Therefore, these claims fall with independent claim 8
for the reasons discussed above.
SUMMARY
The obviousness rejections are each affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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