Ex Parte Gueret

Board of Patent Appeals and Interferences

Feb 24, 2009

11060811 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEAN-LOUIS H. GUERET1
__________

Appeal 2008-5042
Application 11/060,811
Technology Center 1600
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Decided:2February 24, 2009
__________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and MELANIE
L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is L’Oréal S.A. (App. Br. 4).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5042
Application 11/060,811

This is an appeal under 35 U.S.C. § 134 involving claims to a patch.
The Examiner has rejected the claims as obvious and/or indefinite. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-60 are pending and on appeal. We will focus on claim 1,
which reads as follows:
1. A patch comprising:
at least one polymer matrix having a surface intended to be placed in
contact with the skin, the surface being one of adhesive and configured to
become adhesive,
wherein the polymer matrix comprises at least one active
substance effective for acting on the skin, the at least one active substance
comprising a solid active substance, and
wherein the polymer matrix is anhydrous; and
a plurality of magnetic particles in the polymer matrix, the plurality of
magnetic particles being permanently oriented over at least a portion of the
patch,
wherein the patch is in dry form prior to use.
Claims 1-9, 11, 14-17, 20-33, 35-44, 46, 47, 49, and 52-60 stand
rejected under 35 U.S.C. § 103(a) as obvious over Porter (WO 96/14822,
May 23, 1996) in view of Zastrow (US 5,800,835, Sep. 1, 1998) (Ans. 4).
Claims 10, 18, 19, 34, 45, 48, and 58 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Porter in view of Zastrow, and further in view of
Gueret (US 5,026,552, Jun. 25, 1991) (Ans. 7).
Claims 12, 13, 50, and 51 stand rejected under 35 U.S.C. § 103(a) as
obvious over Porter in view of Zastrow, and further in view of Bloom
(US 5,614,178, Mar. 25, 1997) (Ans. 9).
Claims 11, 13-15, 17, 30, 49, and 51-54 stand rejected under 35
U.S.C. § 112, second paragraph (Ans. 3).
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OBVIOUSNESS
The Examiner relies on Porter for teaching a “transdermal patch for
delivering active agents to the skin, wherein the patch compris[es] active
ingredients in adhesive polymer matrix,” the “active ingredients includ[ing]
antioxidant” (Ans. 4). In particular, the Examiner argues that Porter “clearly
teaches ‘adhesive matrix’” and that the “adhesives are polymers, therefore,
the teaching of the reference reads as ‘adhesive polymer matrix’” (id. at 14).
The Examiner also argues that the “preferred material for [the] polymeric
matrix is silicone adhesive” (id. at 4). In addition, the Examiner argues that
“silicone is [a] hydrophobic material, and cannot contain water, therefore it
is anhydrous” (id. at 15). Thus, the Examiner argues that “Porter disclosed
dry silicone matrix as instantly claimed” (id. at 14).
The Examiner relies on Zastrow for teaching a “cosmetic preparation
in the form of dressing or plaster comprising magnetic particles” (id. at 5).
The Examiner concludes that it would have been obvious
to provide [a] transdermal patch comprising polymer matrix
containing dermatological active agent as disclosed by [Porter],
and further include magnetic particles in the polymer matrix as
disclosed by [Zastrow], motivated by the teaching of [Zastrow]
that the magnetic particles exhibit excellent circulation
stimulating action that improves oxygen and nutrient supply to
the tissue and improves removal of waste products from the
tissues, with a reasonable expectation of [success].
(Id. at 5-6.)
Issues
Did the Examiner err in concluding that Porter discloses a polymer
matrix that is anhydrous and a patch that is in dry form?
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Application 11/060,811

Did the Examiner err in concluding that it would have been obvious to
incorporate Zastrow’s magnetic particles in Porter’s adhesive matrix?
Findings of Fact
1. Porter discloses “skin care compositions and methods for the
improvement of the appearance of aging skin, in particular, to the
improvement of wrinkling skin in target areas” (Porter 1: 3-4).
2. In particular, Porter discloses a transdermal delivery device for
delivering cosmetically active compositions including antioxidants (id. at 4:
11-21).
3. Porter discloses that the “configuration of the delivery device
. . . can be adhesive matrix, liquid or solid state reservoir or polymer matrix”
(id. at 4: 32-33).
4. Porter also discloses that, “[i]n an adhesive matrix type patch,
there is an impermeable backing, a matrix comprising the cosmetically
active ingredient, . . . and a release liner” (id. at 4: 34-36).
5. In addition, Porter discloses that preferably the adhesive is
“silicone pressure sensitive adhesive, but [that] other adhesives are known to
the art, including but not limited to, natural, isobutyl and butyl rubber
compositions and acrylate-based adhesives” (id. at 4: 29-31).
6. Porter also discloses:
The patch itself is preferably made of silicon, acrylate or
polyisobutylene type polymeric material. Preferably the patch
is made of a polymeric material which . . . has adhesive
properties. . . . The patch should have tack and adhesive
properties which allow rapid adherence to the skin after
minimal application of gentle hand pressure, and the matrix
should rapidly mold itself closely with the contours of the target
skin for best transfer of active ingredients.
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(Id. at 8: 28-36.)
7. Zastrow discloses a preparation for stimulating circulation
containing a pharmaceutically or cosmetically acceptable excipient and
magnetically hard single-domain particles finely divided therein (Zastrow,
col. 1, ll. 42-50).
8. Zastrow states that the “single-domain particles according to the
invention can be dispersed very well in a pharmaceutically/cosmetically
acceptable excipient . . . and there is only insignificant aggregation” (id. at
col. 2, ll. 5-10).
9. In contrast, Zastrow states that other
magnetically hard particles . . . tend to aggregate and therefore
have to be incorporated into a dispersion with particular organic
polymers or inorganic substances, these inorganic or organic
additives functioning as a barrier substance in which the
magnetically hard particles are embedded, or functioning as a
result of coupling to these additives, thereby avoiding
aggregation [, but that t]his is not necessary in the present
invention.
(Id. at col. 2, ll. 9-19.)
10. Zastrow also discloses that magnetic polymer particles
comprising soft ferrite particles or ferroaluminates encapsulated with
polymeric materials were know in the art (id. at col. 1, ll. 25-31).
11. In addition, Zastrow discloses:
Utilization of the magnetic properties of the blood for
improving blood circulation . . . results in an improved supply
of oxygen, an improved supply of nutrients and an improved
removal of waste products. This leads to a remission of skin
wrinkles due to old age, an improved elasticity, a rejuvenation
of the skin and, in the case of cellulitis, a substantially
improved clinical picture.
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(Id. at col. 4, ll. 29-37.)
12. Zastrow also discloses that the cosmetic preparation may be in
the form of a dressing (id. at col. 5, ll. 41-46).
Principles or Law
Under 35 U.S.C. § 103, “the scope and content of the prior art are to
be determined; differences between the prior art and the claims at issue are
to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject
matter is determined.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“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’l v. Teleflex Inc., 550 U.S. 398, __, 127 S. Ct. 1727, 1739 (2007).
Analysis
Porter discloses a transdermal delivery device for improving the
appearance of aging skin comprising an adhesive polymer matrix and an
antioxidant (Finding of Fact (FF) 1-6). Zastrow discloses incorporating
magnetically hard particles into a cosmetic composition in order to improve
circulation, which “leads to a remission of skin wrinkles due to old age, an
improved elasticity, a rejuvenation of the skin and, in the case of cellulitis, a
substantially improved clinical picture” (FF 7 & 11). We agree with the
Examiner that it would have been prima facie obvious to incorporate
magnetic particles into the polymer matrix of Porter’s transdermal delivery
device in order to provide a device that improves circulation, as described in
Zastrow.
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Appellant argues that Porter discloses that its delivery device “may be
one of an ‘adhesive matrix,’ a ‘solid or liquid state reservoir,’ or a ‘polymer
matrix’” (App. Br. 21). In addition, Appellant argues that, “[s]ince these
versions of the Porter delivery device are listed in the alternative, a person
having ordinary skill in the art would understand that each of these types of
delivery device[s] is distinct from one another” (id.). Therefore, Appellant
argues that “the portion[s] of Porter’s disclosure . . . to which the Examiner
cites in purported support of the allegation that Porter discloses an
anhydrous polymer matrix actually discloses an ‘adhesive matrix type’
device, and does not relate to a ‘polymer matrix’” (id.). Thus, Appellant
argues that, “regardless of whether silicon polymer adhesive is anhydrous as
alleged by the Examiner, this disclosure does not result in disclosing a
‘polymer matrix [that] is anhydrous’” (id. at 22).
We are not persuaded. We agree with Appellant that Porter discloses
that the “configuration of the delivery device . . . can be adhesive matrix,
liquid or solid state reservoir or polymer matrix” (FF 3). However, we agree
with the Examiner that the adhesive matrix may be an adhesive polymer
matrix, specifically a silicone matrix (FF 5-6). In addition, although the
Examiner has not pointed to a specific teaching in Porter that the adhesive
polymer matrix is anhydrous, in the absence of any indication that water was
added to the adhesive polymer matrix, we agree that the Examiner has set
forth a prima facie case that this adhesive polymer matrix is anhydrous.
Appellant also argues that “neither Porter nor Zastrow discloses or
suggests a ‘patch [that] is in dry form prior to use.’ . . . In fact, the Examiner
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fails to even allege that either Porter or Zastrow discloses or suggests such
subject matter.” (App. Br. 24.)
We are not persuaded. The Examiner finds that Porter discloses a
patch that is in dry form (Ans. 14). Appellant has not pointed to and we find
no teaching in Porter that its transdermal delivery device of the adhesive
polymer matrix type is wet. Therefore, we agree that the Examiner did not
err in finding that it is dry.
In addition, Appellant argues:
The Porter reference is directed to a type of skin care method
and apparatus that significantly differs from the subject matter
of the Zastrow reference. Because of these differences, one of
ordinary skill in the art would not have had any motivation to
combine these references in the manner suggested by the
Examiner. Moreover, the significant differences between these
references dictate against a reasonable expectation of success.
(App. Br. 29.)
In particular, Appellant argues that “Zastrow was not at all concerned
with permanently oriented magnetic particles in a patch that is non-
amorphous” (id. at 30). Thus, Appellant argues that “one of ordinary skill in
the art would have had no reason to rely on any of the teachings of this
reference to modify a structure such as that disclosed in Porter” (id.).
We are not persuaded. Both Porter and Zastrow are directed to
improving the appearance of skin affected by aging (FF 1 & 11). We agree
with Appellant that Zastrow is “primarily concerned with solving the
problem of . . . aggregation of magnetic particles in . . . amorphous
compositions” (App. Br. 30). However, Zastrow also discloses
incorporating the magnetically hard particles in a dressing, which is not
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amorphous (FF 12). In addition, Zastrow discloses that magnetically hard
particles are embedded in polymers to avoid aggregation (FF 9). Although
Zastrow states that “[t]his is not necessary in the present invention” (FF 9),
Zastrow does not indicate that its particles should not be embedded in
polymer. In addition, Zastrow discloses that polymer coated magnetic
particles are known in the art (FF 10). Therefore, we agree with the
Examiner that there would have been a reasonable expectation of success in
improving circulation by incorporating Zastrow’s particles in Porter’s
adhesive polymer matrix. Thus, we agree with the Examiner that it would
have been obvious to do so.
Conclusion
Appellant has not shown that the Examiner erred in concluding that
Porter discloses a polymer matrix that is anhydrous and a patch that is in dry
form or in concluding that it would have been obvious to incorporate
Zastrow’s magnetic particles in Porter’s adhesive matrix. We therefore
affirm the rejection of claim 1. Claims 2-9, 11, 14-17, 20-33, and 35-38
have not been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant traverses the rejection of independent claims 39, 55, and 60
for the same reasons as claim 1 (App. Br. 25-26). We are not persuaded by
these arguments for the reasons discussed above. Any other arguments with
respect to these claims have been waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(arguments not made in the appeal brief or reply brief are waived). We
therefore also affirm the rejection of claims 39, 55, and 60. Claims 40-44,
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46, 47, 49, 52-54, and 56-59 have not been argued separately and therefore
fall with claims 39, 55, and 60. 37 C.F.R. § 41.37(c)(1)(vii).
In addition, Appellant traverses the rejections of claims 10, 12, 13, 18,
19, 34, 45, 48, 50, 51, and 58 based on their dependency on claim 1, 39, or
55 (App. Br. 31). We are not persuaded by these arguments for the reasons
discussed above. Any other arguments with respect to these claims have
been waived. See 37 C.F.R. § 41.37(c)(1)(vii). We therefore affirm the
rejections of these claims.
INDEFINITENESS
The Examiner finds the following terms to be indefinite:
“amides” and “esters” in claims 11 and 49;
“their salts,” “salicylic acid derivatives,” “salicylic acid salts and
esters,” “sugar derivatives,” “biologically compatible salts thereof,” “esters
of octanoylsalicylic [acid],” “esters of hydroxyl acids,” and “semi-synthetic
cellulose derivatives” in claims 11, 13-15, 17, 49, and 51-54; and
“charges” in claim 30 (Ans. 3-4).
Issue
Did the Examiner set forth a prima facie case that the above-
mentioned terms are indefinite?
Findings of Fact
13. Claim 49 recites that “the at least one active substance is a
keratolytic agent chosen from α- and β-hydroxycarboxylic and β-keto
carboxylic acids, their salts, amides or esters, Kaolin powder, polyamide
particles, waxes, honey, Sienna, tannins, and mineral salts” (emphasis
added).
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14. In contrast, claim 11 recites that “the at least one active
substance is a keratolytic agent chosen from α- and β-hydroxycarboxylic
and β-keto carboxylic acids, their salts, amides, esters, Kaolin powder,
polyamide particles, waxes, honey, Sienna, tannins, and mineral salts,” with
no “or” between “amides” and “esters.”
15. The Specification states that the “active substance preferably is
chosen from keratolytic agents such as _[sic]-and _[sic]-hydroxycarboxylic
or _[sic]-keto carboxylic acids, their salts, amides or esters” (Spec. ¶ [027]).
16. Claims 13 and 51 recite that “the β-hydroxycarboxylic acid is
chosen from salicylic acid and its derivatives.”
17. The Specification states that the active substance may be
“salicylic acid and its derivatives, preferably its alkyl derivatives, such as
5-n-octanoylsalicylic acid” (Spec. ¶ [027]).
18. Claims 14 and 52 recite that “the at least one active substance is
a water-soluble active substance chosen from . . . sugars and sugar
derivatives; . . . and biologically compatible salts thereof.
19. Claim 15 recites that “the at least one active substance is a
liposoluble active substance chosen from . . . keratolytic agents, including
salicylic acid, its salts and its esters, 5-n-octanoylsalicylic acid and its esters,
alkyl esters of α-hydroxy acids . . .” (emphasis added). Claim 53 recites
very similar language, but does not recite the term “including.”
20. Claims 17 and 54 recite that “the polymer matrix further
comprises at least one water-absorbing agent chosen from . . . semisynthetic
cellulose derivatives. . . .”
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Application 11/060,811

21. The Specification states that “[a]mong the water-absorbing
agents which may be present in the hydrophobic polymer matrix in dispersed
form, the matrix could include . . . semisynthetic cellulose derivatives, such
as carboxymethylcellulose. . . .” (Spec. ¶ [031]). The Specification also
identifies hydroxypropylcellulose, methylcellulose, hydroxypropylmethyl-
cellulose, and hydroxyethylcellulose as cellulose derivatives (id. at ¶ [036]).
22. Claim 30 recites that “the polymer matrix comprises charges.”
Principles of Law
“A claim is indefinite if its legal scope is not clear enough that a
person of ordinary skill in the art could determine whether a particular
composition infringes or not.” Geneva Pharms., Inc. v. GlaxoSmithKline
PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).
“[B]readth is not to be equated with indefiniteness.” In re Miller, 441
F.2d 689, 693 (CCPA 1971). In particular, claims are not indefinite simply
because they may be broad enough to encompass inoperative embodiments.
See Exxon Research and Eng’g Co. v. United States, 265 F.3d 1371, 1382
(Fed. Cir. 2001) (“[T]he claims as written . . . may include some inoperable
embodiments. . . . However, that is an issue of enablement, and not
indefiniteness.”).
Analysis
With regard to claims 11 and 49, the Examiner finds that “the
expressions “amides” and “esters” do not set forth the metes and bounds of
the claims” (Ans. 3). In particular, the Examiner argues:
[T]he claims are in improper Markush format because claims 11
and 49 do not read as the esters and amides are those of
hydroxycarboxylic acids and carboxylic acid. The claims read as
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Application 11/060,811

ester and amides are separate members of the Markush format,
and in that case esters and amides are not equivalent to the other
keratolytic agents listed in the Markush group.
(Id. at 10-11.)
Appellant argues that these terms are not indefinite (App. Br. 13). In
particular, Appellant argues that, “in light of the disclosure, claims 11 and 49
should be interpreted such that the recited esters and amides are esters and
amides of hydroxycarboxylic and carboxylic acids in contrast to the
Examiner’s allegations” (Reply Br. 3).
With regard to claim 49, we agree with Appellant. Claim 49 recites
that “the at least one active substance is a keratolytic agent chosen from α-
and β-hydroxycarboxylic and β-keto carboxylic acids, their salts, amides or
esters, Kaolin powder. . . .” (emphasis added) (FF 13). Based on the
presence of the term “or,” we agree that claim 49 clearly defines the amides
and esters as amides and esters of α- and β-hydroxycarboxylic and β-keto
carboxylic acids.
However, claim 11 recites that “the at least one active substance is a
keratolytic agent chosen from α- and β-hydroxycarboxylic and β-keto
carboxylic acids, their salts, amides, esters, Kaolin powder. . . .” (FF 14). In
this claim, there is no “or” between “amides” and “esters” to signify that
they are in a group including “salts” that is modified by the term “their” to
refer to α- and β-hydroxycarboxylic and β-keto carboxylic acids. Thus, we
agree with the Examiner that, based on the plain language of claim 11,
“esters” and “amides” appear to be separate members of the Markush group
rather than referring to the α- and β-hydroxycarboxylic and β-keto
carboxylic acids. However, because this is inconsistent with the
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Specification, which recites “their salts, amides or esters” (FF 15), we agree
with the Examiner that it is unclear whether the amides and esters in
claim 11 are amides and esters of α- and β-hydroxycarboxylic and β-keto
carboxylic acids.
With regard to claims 11, 13-15, 17, 49, and 51-54, the Examiner
finds:
[T]he expressions “their salts”, “salicylic acid derivatives”,
“salicylic acid salts and esters”, “sugar derivatives”,
“biologically compatible salts thereof”, “esters of
octanoylsalicylic [acids]”, “esters of hydroxyl acids”, and
“semi-synthetic cellulose derivatives” . . . do not set forth the
metes and bounds of the claims. Recourse to the specification
does not define any salts, derivatives, or esters of the claimed
compounds.
(Ans. 4.) In particular, the Examiner argues that the terms “are broad, and
for this reason[,] the specification does not set forth the meets and the
bounds of the terms and the breadth of protection required. . . . Salts and
derivatives include metallic salts and derivatives that may have detrimental
effect on the final composition.” (Id. at 12.)
We are not persuaded. “[B]readth is not to be equated with
indefiniteness.” In re Miller, supra. We agree with the Examiner that these
terms are broad. However, the Examiner has not set forth a prima facie case
that they would not be understood by one of ordinary skill in the art.
With regard to claim 30, the Examiner finds that “the expression
‘charges’ does not set forth the metes and bounds of the claim. Recourse to
the specification does not define the expression ‘charges’.” (Ans. 4.)
Appellant argues that “a person having an ordinary level of skill in the
art would understand that ‘charges’ may include electric charges, for
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example, positive and/or negative electric charges that may result in, for
example, an electro-magnetic field” (App. Br. 18). In addition, Appellant
argues:
[T]hose having ordinary skill in the art understand that
“charges” may be present in, for example, substances having
one or more unpaired electrons. Such substances may be said
to possess either a positive or negative net charge. Thus, to
those having ordinary skill in the art, claim 30’s recitation of
“charges” is definite.
(Id.)
We agree with Appellant that the term “charges” has a well
understood meaning in the field. Thus, we agree that the Examiner has not
set forth a prima facie case that the term is indefinite.
Conclusion
Appellant has not overcome the Examiner’s prima facie that claim 11
is indefinite. However, the Examiner has not set forth a prima facie case
that claims 13-15, 17, 30, 49, and 51-54 are indefinite. We therefore affirm
the indefiniteness rejection of claim 11, but reverse the indefiniteness
rejection of claims 13-15, 17, 30, 49, and 51-54.
ORDER
We affirm the rejections of claims 1-60 under 35 U.S.C. § 103(a). We
also affirm the rejection of claim 11 under 35 U.S.C. § 112, second
paragraph. However, we reverse the rejection of claims 13-15, 17, 30, 49,
and 51-54 under 35 U.S.C. § 112, second paragraph.
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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

Ssc:

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