Ex Parte Hoyt et al

Patent Trial and Appeal Board

Feb 6, 2015

12261328 (P.T.A.B. Feb. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/261,328 10/30/2008 Anne L. Hoyt AM1176.p1 4233
24123 7590 02/06/2015
ALTICOR INC.
7575 FULTON STREET EAST MAILCODE 78-2M
ADA, MI 49355
EXAMINER
LEITH, PATRICIA A
ART UNIT PAPER NUMBER
1655
MAIL DATE DELIVERY MODE
02/06/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANNE L. HOYT, JATINDER RANA,
KAUSAR MALIK, and DONALD J. PUSATERI
__________

Appeal 2012-007485
Application 12/261,328
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
of effecting the growth of Propionibacterium acnes on a surface to be
treated. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Access Business
Group International LLC (see App. Br. 2).
Appeal 2012-007485
Application 12/261,328

2
Statement of the Case
Background
“In the skin of individuals with acne, the overgrowth of P. acnes in
blocked pores leads to the rupture of the pores to form lesions” (Spec. 1 ¶ 3).
The Specification teaches that “antibiotics have often been used to control
this bacterial growth” (Spec. 1 ¶ 3).
The Claims
Claims 6 and 9–11 are on appeal. Claims 6 and 9 are representative
and read as follows:
6. A method of effecting the growth of
Propionibacterium acnes on a surface to be treated
comprising:
(d) providing a composition consisting essentially of
one or more paradols;
(e) providing Propionibacterium acnes on a surface to
be treated; and
(f) administering the composition consisting
essentially of one or more paradols to the surface to be
treated, so as to effect the growth of the Propionibacterium
acnes.

9. The method of claim 6, wherein the one or more
paradols are provided by extraction from Aframomum
melegueta.

The issue
The Examiner rejected claims 6 and 9–11 under 35 U.S.C. § 103(a) as
obvious over Herrmann,2 Lee,3 and Nakayama4 (Ans. 5–6).

2 Herrmann et al., US 2009/0220625 A1, published Sept. 3, 2009
(hereinafter “Herrmann”).
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Application 12/261,328

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The Examiner finds that Herrmann teaches “treating skin irritations
such as acne with a combination of bisabolol and agents such as paradols”
(Ans. 6). The Examiner finds that Herrmann “did not explicitly teach that
paradols would effect the growth of P. acnes” (Ans. 7).
The Examiner finds that “Lee teaches a method of suppressing the
growth of Propionibacterium acnes by applying a composition comprising
ginger root to a surface such as skin” (Ans. 7). The Examiner finds that
while Lee “does not state that the composition contains paradols,”
Nakayama evidences that “these compounds are inherently present in ginger
root” (Ans. 7).
The Examiner finds it obvious that “the ordinary artisan taking the
teachings of Herrmann et al. as a whole would have a reasonable
expectation that paradols could be used alone in treating acne” (Ans. 7). The
Examiner finds that “the prior art has set forth enough evidence to indicate
that paradols would be effective in treating acne caused by P. acnes and that
one of ordinary skill in the art would have had a reasonable expectation of
success in doing so” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Herrmann, Lee, and
Nakayama render the claims obvious?

3 Lee, K.N., KR 10-2005-0081550, published Aug. 19, 2005, we
number the translation pages beginning with first page.
4 Nakayama et al., US 2004/0052877 A1, published Mar. 18, 2004
(hereinafter “Nakayama”).
Appeal 2012-007485
Application 12/261,328

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Findings of Fact
1. Herrmann teaches that the combination of two components,
including a first component comprising “gingerols, shogaols, gingerdiols,
dehydrogingerdiones, paradols and derivatives thereof” is able to cause “a
particularly efficient reduction in skin irritation” (Herrmann 2 ¶ 25).
2. Herrmann teaches that the “the typical skin rash of the
symptoms of acne is regularly reddened to a greater or lesser degree and
impairs the well-being of those affected even in mild cases” (Herrmann 1
¶ 13).
3. Lee teaches that when “ginger root extract is . . . applied to acne
areas, it has anti-inflammatory actions and pain relief effects against acne,
and it is preferred that the ginger root extract reaches 0.1 - 40 wt% with
respect to the entire mixed extract ingredient” (Lee 3–4).
4. Nakayama teaches that “ginger rhizome contains a variety of
peculiar ingredients which . . . include, for example . . . (6)-paradol, (8)-
paradol, (10) paradol” (Nakayama 1 ¶ 5).
5. The Specification teaches that “Propionibacterium acnes (P.
acnes) is a species of relatively slow growing aerotolerant gram-positive
anaerobic bacilli that is associated with acne. In the skin of individuals with
acne, the overgrowth of P. acnes in blocked pores leads to the rupture of the
pores to form lesions” (Spec. 1 ¶ 3).
6. The Specification teaches that “one or more phytochemicals,
such as gingerols and/or paradols . . . can be administered to a surface so as
to control, reduce, and/or eliminate Propionibacterium acnes” (Spec. 6
¶ 23).
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Application 12/261,328

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Principles of Law
Under the principles of inherency, if the prior art necessarily functions
in accordance with, or includes, the claimed limitations, it anticipates. See
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). Inherency is not
necessarily coterminous with the knowledge of those of ordinary skill in the
art. Artisans of ordinary skill may not recognize the inherent characteristics
or functioning of the prior art. Id.
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 5–9; FF 1–6) and agree that claim 6
is rendered obvious by Herrmann, Lee, and Nakayama. We address
Appellants’ arguments below.
Appellants contend that “the cited art references, taken alone or in
combination, do not show or suggest that one or more paradols that may be
found in ginger would effect the growth of the microorganism P. acnes”
(App. Br. 5). Appellants contend that “Lee whether taken alone or in
combination with Hermann et al. and Nakayama et al., does not show or
suggest that the ginger extracts effect the growth of P. acnes. Neither does
Lee, alone or in combination, show or suggest that a composition consisting
essentially of one or more paradols would effect the growth of the P. acnes”
(App. Br. 7).
We are not persuaded because the issue is not whether the prior art
was aware of the effect of paradols on P. acnes growth but rather whether
the prior art suggests the application of a composition comprising paradols
to a surface comprising P. acnes. The resulting effect on P. acnes growth
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“cannot become nonobvious simply by . . . claiming the [result] . . . . To hold
otherwise would allow any formulation—no matter how obvious—to
become patentable merely by testing and claiming an inherent property.”
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012).
In the instant case, the Specification evidences that overgrowth of P.
acnes on an individual’s skin is the cause of acne (FF 5) and that
administration of compositions comprising paradols to skin with acne has an
effect on the growth of P. acnes (FF 6).
Lee teaches the step of providing a ginger root extract composition
(FF 3), which Nakayama evidences inherently comprises gingerols and
paradols (FF 4). Lee also teaches providing a patient with acne areas of
skin, which the Specification evidences inherently comprises P. acnes (FF
5). Lastly, Lee teaches the step of applying the ginger root extract
composition with inherently present paradols and gingerols to the acne areas
of skin (FF 3), where the Specification evidences that paradols and gingerols
inherently effect the growth of P. acnes (FF 6).
This is similar to Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1378–79 (Fed. Cir. 2005), where a method claim preamble which required
“preventing sunburn damage to exposed skin surfaces,” was found satisfied
by a prior art skin composition which had been applied to skin surfaces, but
for a different purpose. “[T]he new realization alone [that the old
composition would prevent sunburn damage] does not render the old
invention patentable.” Id. at 1377.
Appellants do not separately argue claims 9–11, instead arguing that
“[l]ikewise, the dependent claims 9–11 are also patentable over the cited
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references since claims 9, 10 and 11 merely add to the method limitations”
(App. Br. 9).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Herrmann, Lee, and Nakayama render the claims obvious.
SUMMARY
In summary, we affirm the rejection of claim 6 under 35 U.S.C.
§ 103(a) as obvious over Herrmann, Lee, and Nakayama. Pursuant to
37 C.F.R. § 41.37(c), claims 9–11 fall with claim 6, as these claims were not
argued separately.

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

cdc