Ex Parte Gschwind et al

Patent Trial and Appeal Board

Aug 12, 2016

12281116 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/281,116 12/28/2008
13897 7590 08/16/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Svenja Gschwind
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.
3321-P34972 7898
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVENJA GSCHWIND, WOLFRAM GER WAT,
CATHRIN SCHERNER, and RAINER WOLBER. 1
Appeal2013-010075
Application 12/281,116
Technology Center 1600
Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method enhancing the natural tanning of the skin which have been rejected
for failing to satisfy the enablement requirement and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Beiersdorf AG. Br. 3.
Appeal 2013-010,075
Application 12/281,116
The invention relates to the use of glycyrrhetic2 acid and/or
glycyrrhizin in a cosmetic or dermatological composition to enhance natural
skin tanning. Spec. 6, 11. 13-21. In addition, claim 21 is directed to a
treatment of hyperpigmentation using glycyrrhetic acid and a self-tanning
substance. Spec. 17, 11. 10-20.
Claims 5-12 and 14--21 are on appeal 3. Claims 5 and 21 are
illustrative and read as follows:
5. A method of enhancing natural tanning of skin, wherein
the method comprises applying to the skin a cosmetic or
dermatological preparation which comprises at least one of
glycyrrhetic acid and glycyrrhizin in an amount which is
effective for enhancing natural skin tanning.
21. A method of treating hyperpigmentation of skin, wherein
the method comprises applying to the skin a cosmetic or
dermatological preparation which comprises at least one of
glycyrrhetic acid and glycyrrhizin and at least one self-tanning
substance.
The claims stand rejected as follows:
Claims 5-12 and 14--20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claim 2lstand rejected under 35 U.S.C. § 103(a) as unpatentable over
Bissett4 and Aust5.
2 The Examiner, Appellants, and the references refer to the licorice extract as
both glycyrrhetic acid and glycyrrhetinic acid. The compounds are the
same. For consistency, we shall refer to the extract as glycyrrhetic acid.
3 Claims 13 and 22-24 have been withdrawn from consideration as being
drawn to a non-elected species. Final Act. 2.
4 Bissett, US 2004/0175347 Al (published Sept. 9, 2004) ("Bissett").
5 Aust et al., US 6,365,137 Bl (issued Apr. 2, 2002) ("Aust").
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Application 12/281,116
CLAIMS 5-14 AND 14--20
Issue
The Examiner finds that claims 5-12 and 14--20 contain subject
matter which is not described in the specification is such a way as to enable
one skilled in the art to make and/or use the invention. Final Act. 3. The
Examiner finds that the art only teaches the use of glycyrrhetic acid and
other licorice extracts to whiten or lighten skin. Final Act. 4--5. The
Examiner goes on to find that "[t]he specification fails to provide credible
scientific data for enhancing the natural tanning of skin using glycyrrhetic
acid. The specification provides some example compositions but no data
regarding its effect on skin tanning or pigmentation." Final Act. 5. The
Examiner concludes that
Id.
[ o ]ne of ordinary skill in the art would have to develop
experiments to show that glycerrhetic [sic] acid has the opposite
effect from the effect known and taught in the art. Essentially,
one of ordinary skill in the art has to figure out how to do this
themselves. As a result, one of ordinary skill in the art would be
required to conduct an undue amount of experimentation.
Appellants contend that the present invention is not directed to a
method for tanning the skin, but enhancing natural tanning. Appeal Br. 9.
Appellants contend the glycyrrhetic acid and glycyrrihizin do not tan the
skin by themselves but enhance the tanning achieved by exposure to tanning
radiation. Appeal Br. 9. Appellants argue that the Specification provides
several examples of compositions that can be used in practice of the claimed
method. Appeal Br. 8. Appellants conclude that the art does not teach the
use of licorice extracts as whitening agents. Appeal Br. 9-11
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Application 12/281,116
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that the pending claims are
not enabled as required by 35 U.S.C. § 112, first paragraph.
Principles of Law
"Section 112 requires that the patent specification enable those
skilled in the art to make and use the full scope of the claimed invention
without undue experimentation .... [S]ee also In re Goodman, 11 F.3d
1046, 1050 (Fed. Cir. 1993) (' [T]he specification must teach those of skill in
the art how to make and how to use the invention as broadly as it is
claimed.')." Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070-
71 (Fed. Cir. 2005) (internal quotes omitted).
In order for a method of treatment claim to satisfy the enablement
requirement of Section 112, one of ordinary skill in the art must be able to
effectively use the claimed treatment method in order to achieve the desired
therapeutic result. See, e.g., In re '318 Patent Infringement Litig., 583 F.3d
1317, 1325-27 (Fed. Cir. 2009); Rasmusson v. SmithKline Beecham Corp.,
413 F.3d 1318, 1322-25 (Fed. Cir. 2005). When the claims are directed to a
treatment using a particular drug, "[ w ]hat is necessary to satisfy the how-
touse requirement of§ 112 is the disclosure of some activity coupled with
knowledge as to the use of this activity." In re Cortright, 165 F.3d 1353,
13 60 (Fed. Cir. 1999) (citation omitted).
Analysis
We agree with the Examiner that claims 5-12 and 14--20 are not
enabled. The specification is devoid of any teaching or suggestion as to how
to use the disclosed composition to enhance natural tanning. Ans. 9. This is
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Application 12/281,116
especially true given that the art teaches that compositions containing
glycyrrhetic acid and other licorice derivatives are used to lighten or whiten
the skin. Id. While the Specification includes several example of
compositions which contain glycyrrhetic acid, the examples provide no
guidance as to how they can be used in the claimed method to enhance
natural tanning. Spec. 17-21. Moreover, the examples themselves do not
provide guidance as to which specific formulation could be used
successfully in the claimed method in that that they are identified only as
"lotion", "night cream", "day cream" and "face cream." Id. We agree with
the Examiner's conclusion that one skilled in the art would need to engage in
undue experimentation to determine the conditions that would achieve the
opposite result from what was known in the art. Ans. 10.
Appellants argue that the claimed method is directed to enhancing
natural tanning and the use of glycyrrhetic acid would not darken the skin by
itself. Appeal br. 8-9, Reply Br. 2. Appellants contend that the Examiner
has not shown any reason to doubt that the claimed method works. Id. We
are unpersuaded. We agree with the Examiner's assessment that Appellants
have not shown how to use glycyrrhetic acid to achieve the opposite of what
is taught in the prior art. Ans. 10. As the Examiner points out, the art
teaches that glycyrrhetic acid is used to lighten skin and nothing in the
Specification teaches one skilled in the art how to achieve the opposite
result. Id.
Appellants next argue that the art does not teach the use of
glycyrrhetic acid to lighten tanned skin. Appeal Br. 9, Reply Br. 3. We are
unpersuaded. As Appellants admit in their own specification, glycyrrhetic
acid is known to lighten skin. Spec. 6. Moreover, as the Examiner points
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Application 12/281,116
out the references do teach use of glycyrrhetic acid to treat
hyperpigmentation. Ans. 12. Appellants are claiming a method suing the
same compound to achieve the opposite result. As discussed above, the
instant specification fails to give any guidance as to how to achieve this
result.
Appellants also argue that the term "enhancing natural tanning" gives
one skilled in the art guidance as to how to perform the claimed method
since exposure to tanning radiation is part of the natural tanning process.
Reply Br. 4--5. We remain unpersuaded. The Specification still does not
provide any information as to how one skilled in the art could achieve the
opposite of what is known on the art. Ans. 10. In addition, as noted by the
Examiner, exposure of the skin to tanning radiation in not a limitation of the
claims. Ans. 9.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 5-12 and 14--20 fail to meet the enablement
requirement of 35 U.S.C. § 112, first paragraph.
THE OBVIOUSNESS REJECTION
Issue
In rejecting claims 21 as obvious the Examiner finds that Bissett
teaches topical compositions containing hexamidine and other skin care
additives including glycyrrhetinic acid to treat hyperpigmentation. Final
Act. 7. The Examiner also finds that Bissett teaches the use of a self-
tanning composition, dihydroxyacetone. The Examiner also finds that Aust
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teaches the use of glycyrrhetic acid as a tyrosinase inhibitor. Id. The
Examiner concludes that
[i]t would have been obvious to a person of ordinary skill in the
art at the time the present invention was made to treat
hyperpigmentation with a preparation comprising glycyrrhetinic
and a self-tanning agent thus produce the instantly claimed
invention since Bissett et al. teach preventing, retarding and/or
treating hyperpigmentation with compositions which may
comprise hexamidine, glycyrrhetinic acid and
dihydroxyacetone. Moreover, Aust et al. explicitly teaches
glycyrrhetinic acid as a tyrosinase inhibiting agent. A person of
ordinary skill in the art would be motivated to select a
preparation comprising both glycyrrhetinic acid and
dihydroxyacetone since Bissett et al. teach both glycyrrhetinic
acid and dihydroxyacetone. Furthermore, it would have been
obvious to use the preparation for treating hyperpigmentation
since Aust et al. specifically teach glycyrretinic acid as a
tyrosinase inhibitor and Bissett et al. teaches treating or
preventing hyperpigmentation. A person of ordinary skill in the
art would have a reasonable expectation of success since
selecting components from those known and taught by Bissett
et al. Moreover, glycyrrhetinic acid is clearly known in the art
as a tyrosinase inhibitor.
Final Act. 8.
Appellants contend that neither Bissett nor Aust teach the use of
glycyrrhetic acid to treat hyperpigmentation let alone its use in a tanning
composition. Appeal Br. 12. Appellants argue that Bissett only teaches the
use of glycyrrhetic acid as an anti-inflammatory agent. Id. With respect to
Aust, Appellants contend that while Aust discloses glycyrrhetic acids as one
of several tyrosinase inhibitors, the only inhibitor actually used in Aust is
kojic acid. Appeal Br. 13. In addition, Appellants argue that Aust achieves
skin lightening through a combination of elements and not through the use
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Application 12/281,116
of glycyrrhetic acid. Appeal Br. 13-14. Appellants conclude that neither of
the references, either alone or in combination teach the claimed method.
Appeal Br. 16-18.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that the rejected claims
would have been obvious over Bissett and Aust as defined by 35 U.S.C. §
103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience
FF 1. Bissett teaches topical compositions comprising hexamidine.
Bissett ,-r 7-8.
FF2. Bissett disclose the use of glycyrrhetic acid as an anti-
inflammatory agent. Bissett i-f 156.
FF3. Bissett disclose the use of a tanning agent such as
dihydroxyacetone. Bissett i-fi-1 162-64.
FF4. Aust discloses skin whitening agents containing a tyrosinase
inhibitor. Aust col. 2, 11. 14--28.
FF5. Aust disclose that glycyrrhetic acid is a tyrosinase inhibitor.
Aust col. 3, 11. 31-33.
Principles of Law
A proper § 103 analysis requires "a searching comparison of the
claimed invention-including all its limitations-with the teaching of the
prior art." In re Ochiai, 71F.3d1565, 1571-72 (Fed. Cir. 1995).
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Application 12/281,116
"[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States
v. Adams, 383 U.S. 39, 50-51 (1966).
Analysis
We agree with the Examiner that the subject matter of claim 21 would
have been obvious to one skilled in the art at the time the invention was
made. Bissett teaches compositions for treating hyperpigmentation which
contain glycyrrhetic acid and a tanning composition. FFl-3. Additionally
Aust teaches that glycyrrhetic acid acts as a tyrosinase inhibitor which can
be used to treat hyperpigmentation. FF 4--5. We agree with the Examiner
that
[i]t would have been obvious to a person of ordinary skill in the
art at the time the present invention was made to treat
hyperpigmentation with a preparation comprising glycyrrhetinic
and a self-tanning agent thus produce the instantly claimed
invention since Bissett et al. teach preventing, retarding and/or
treating hyperpigmentation with compositions which may
comprise hexamidine, glycyrrhetinic acid and
dihydroxyacetone. Moreover, Aust et al. explicitly teaches
glycyrrhetinic acid as a tyrosinase inhibiting agent. A person of
ordinary skill in the art would be motivated to select a
preparation comprising both glycyrrhetinic acid and
dihydroxyacetone since Bissett et al. teach both glycyrrhetinic
acid and dihydroxyacetone. Furthermore, it would have been
obvious to use the preparation for treating hyperpigmentation
since Aust et al. specifically teach glycyrrhetinic acid as a
tyrosinase inhibitor and Bissett et al. teaches treating or
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Application 12/281,116
preventing hyperpigmentation. A person of ordinary skill in the
art would have a reasonable expectation of success since
selecting components from those known and taught by Bissett
et al. Moreover, glycyrrhetinic acid is clearly known in the art
as a tyrosinase inhibitor
Final Act. 8.
Appellants argue that Bissett does not teach the use of glycyrrhetic
acid as a skin lightening agent. Appeal Br. 13. We are unpersuaded. While
Bissett may be silent as to glycyrrhetic acid's use as a whitening agent, as
the Examiner points out, Aust teaches that glycyrrhetic acid has this
property. Ans. 12. Thus the combination used in the claimed method
involves substituting one known compound for treating hyperpigmentation
with another. The mere substitution of one compound for another does not
render the method patentable. KSR Int'! Co., 550 U.S. at 416.
Appellants also argue that Aust only exemplifies kojic acid as a
whitening agent. Appeal Br. 13. We are unpersuaded. \Vhile the examples
of Aust are directed to kojic acid, the specification clearly teaches that
glycyrrheitc acid is an effective tyrosinase inhibitor. FF4.
Appellants next argue that the references do not teach the combination
of glycyrrhetic acid and dihydroxyacetone. Appeal Br. 17-18. Again, we
are unpersuaded. We agree with the Examiner that
Bissett clearly teaches a method of treating hyperpigmentation
and specifically teach the incorporation of both glycyrrhetic
acid and dihydroxyacetone (paragraphs 156 and 162-164). It is
obvious and within the purview of one of ordinary skill in the
art to select components for a preparation from a disclosed list--
even when the list contains multiple possible components. The
other components taught by Bissett are not precluded given the
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Application 12/281,116
comprising language of the instantly claimed invention.
Likewise the other components taught by Aust et al. (such as
kojic acid) are also not precluded. While Aust et al. certainly do
teach kojic acid as a skin whitening agent, Aust et al. also
clearly teach glycyrrhetinic acid as a tyrosinase inhibitor
(column 3, lines 31-36 and claim 10). Furthermore, Aust et al.
also clearly teach the connection between the use of tyrosinase
inhibitors and treating hyper-pigmentation (column 1, lines 29-
35). Therefore, it would have been obvious to use compositions
containing both glycyrrhetic acid and dihydroxyacetone to treat
hyperpigmentation. Moreover, the only step in the instantly
claimed method is applying to the skin the recited cosmetic or
dermatological preparation. Since the composition of Bissett in
view of Aust et al. comprises the same glycyrrhetic acid and
dihydroxyacetone, the same treatment ofhyperpigmentation
will occur when applied said composition is applied to skin.
Clearly Bissett teaches combinations of skin care actives
including anti-inflammatory agents, skin lightening agents, and
tanning actives in claim 3. Since both dihydroxyacetone and
glycyrrhetic acid are specifically taught by Bissett (paragraphs
156 and 162-164), it would have been obvious and within the
purview of one of ordinary skill in the art to select them.
Moreover, all of the method claims of Bissett (as well as
numerous other places throughout the disclosure) teach
topically applying to skin.
Ans. 12-13.
Conclusion of Law
We conclude that the Examiner has established that claim 21 would
have been obvious over Bissett and Aust as defined by 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of claims 5-12 and 14-20 under 35 U.S.C. §
112, first paragraph, as failing to comply with the enablement requirement.
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We affirm the rejection of claim 21under35 U.S.C. § 103(a) as
unpatentable over Bissett and Aust.
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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