Ex Parte Johnson

Patent Trial and Appeal Board

Feb 17, 2017

11686883 (P.T.A.B. Feb. 17, 2017)

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.
11/686,883 03/15/2007 Benjamin Johnson 3600-001-USP 7169
46317 7590 02/22/2017
TRENNER LAW FIRM, LLC
(Mark D. Trenner)
1153 Bergen Pkwy #i-l 15
Evergreen, CO 80439
EXAMINER
KISHORE, GOLLAMUDI S
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
mark@us-patentattomey.com
records@us-patentattomey.com
mark @ trennerlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN JOHNSON1
Appeal 2015-007454
Application 11/686,883
Technology Center 1600
Before ULRIKE W. JENKS, RICHARD J. SMITH,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of minimizing dehydration or increasing the efficacy of a topical skin care
application, which have been rejected for failure to satisfy the written
description requirement, as indefinite, as anticipated, and for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as Benjamin Johnson. (App.
Br. 2.)
Appeal 2015-007454
Application 11/686,883
STATEMENT OF THE CASE
Appellant’s invention relates to “providing retinal, retinal derivatives
as well as any other retinoids with liposomes.” (Spec. 112.) According to
the Specification, in a preferred embodiment, the “present invention
increases the efficacy of a topical skin care product by increasing the
penetration of retinal or its derivatives into the skin.” (Id. at 113.) In
another embodiment, the Specification discloses “the present invention
reduces the dehydration of the skin from using retinal or its derivatives.”
(Id. atl 14.)
Claims 13—20, 24—29, 31, 32, 35, and 36 are on appeal. Claims 13
and 25 are illustrative:
13. A method for minimizing dehydration caused by a retinal
compound from a topical skin care application, said method
comprising the steps of:
providing all-trans retinal in the skin care application; and
providing said all-trans retinal within a liposome to
hydrate the skin during application of said all-trans retinal,
wherein the liposome includes about 6-8% phosphatidylcholine
to reduce skin irritation caused by said retinal.
25. A method of increasing the efficacy of a topical skin care
application for treatment of dermatologic conditions and
disorders including oily skin, age spots, wrinkles, warts, acne,
eczema, seborrheic keratosis, psoriasis, dandruff, xerosis,
inflammatory and pruritic skin, disturbed keratinization, skin
changes associated with aging and virual [sic] infections, said
method comprising the steps of:
providing all-trans retinal in the range of between .001
percent to 5 percent by weight in the skin care application; and
increasing the transdermal penetration of said all-trans
retinal and moisturizing the skin during said transdermal
penetration by providing said all-trans retinal within a liposome,
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Application 11/686,883
said liposome in the range of 0.001 to 10 percent by weight, to
increase the transdermal penetration of said all-trans retinal
without increasing the irritation of the skin.
(App. Br. 18—19 (Claims App’x).)
The claims stand rejected2 as follows:
Claims 13—20, 24—29, 31, 32, 35, and 36 under 35 U.S.C. § 112, first
paragraph, for failure to satisfy the written description requirement.
Claims 14, 17, 20, 24, 26, 27, 29, 32, and 36 under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
Claims 13—20, 24—29, 31, 32, 35, and 36 under 35 U.S.C. § 102(b) as
anticipated by Wang3 or Lee.4
Claims 13—20, 24—29, 31, 32, 35, and 36 under 35 U.S.C. § 103(a)
over Wang, or Lee, or Meybeck, individually or in combination.5
Claims 15—17 and 26—29 under 35 U.S.C. § 103(a) over Wang, Lee,
or Meybeck, combined with Jenkins,6 Sako,7 and/or Malik.8
2 The Examiner withdrew the rejection of claim 35 as indefinite (claim 35 is,
however, still listed in the heading of the Answer concerning the
indefmiteness rejections). (Ans. 2.) The Examiner also withdrew the
rejection of claims as anticipated by Meybeck. {Id.)
3 Wang et al., WO 96/31194, published Oct. 10, 1996.
4 Lee et al., US 2003/0118616 Al, published June 26, 2003.
5 Meybeck et al., US 5,034,228, issued July 23, 1991.
6 Jenkins et al., US 2007/0010501 Al, published Jan. 11, 2007.
7 Sako, US 2005/0074474 Al, published Apr. 7, 2005.
8 Malik, US 2004/0116511 Al, published June 17, 2004.
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WRITTEN DESCRIPTION
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). “[H]ow the specification accomplishes this is not
material.” In re Herschler, 591 F.2d 693, 700-701 (CCPA 1979) (internal
citations omitted) (“The claimed subject matter need not be described in
haec verba to satisfy the description requirement. It is not necessary that the
application describe the claim limitations exactly, but only so clearly that
one having ordinary skill in the pertinent art would recognize from the
disclosure that appellants invented processes including those limitations.”)
The Examiner rejected all the claims on appeal for failure to satisfy
the written description requirement of 35 U.S.C. § 112 (pre-AIA), first
paragraph. (Ans. 2—3.) According to the Examiner, “Applicant amends the
independent claims to introduce the limitation phosphatidylcholine as ‘about
6-8 %[’] [yet] [t]his limitation is not found in the originally filed
specification and therefore, [is] deemed to be new matter.” (Id. at 3.)
Appellant argues the Specification provides a sufficient written
description, and cites to paragraphs 38 and 39 in support. The relevant
portions of those paragraphs read:
[38] ... Liposomal lecithin or a liposome substitute or other
lipid preparations are added to the above solution [containing
retinal, etc.] with mixing until a uniform consistency is obtained.
. . . The most efficacious stabilizer is a liposomal coating which
provides a lipid layer of protection and the concentration may
range from 0.001 to 10%.
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Application 11/686,883
[39] . . . Liposomes such as lecithin or phosphatidylcholine or
other lipid preparations are added to the above solution with
mixing until a uniform consistency is obtained.
(Spec. 38—39; App. Br. 5—6.) Appellant contends the disclosure of
liposomes of phosphatidylcholine and a liposome concentration range of
0.001—10% provides adequate support to show possession of the narrower
claimed range of 6—8% as in independent claim 13. As to the other
independent claim — claim 25, which recites a liposome concentration of
0.001—10% and does not require phosphatidylcholine — Appellant argues
the Specification provides verbatim support. (App. Br. 6.)
The Examiner responds that “the specification teaches a very broad
range; however, nowhere in the specification, the examiner finds 6-8%
which appears to be arbitrarily selected by applicant.” (Ans. 8.)
Appellant has the better position. The Examiner provides no
reasoning to support the written description rejection of claim 25.
As to the Examiner’s focus on 6-8% phosphatidylcholine, a limitation
relevant to claim 13, we are unpersuaded the skilled person would not
reasonably understand the inventor to be in possession of this subject matter.
As Appellant notes, verbatim support is not required. (App. Br. 5.)
Paragraphs 38 and 39, considered together and in context, provide sufficient
written description support. ScriptPro, LLC v. Innovation Assocs., 762 F.3d
1355, 1359 (Fed. Cir. 2014) (“It is common, and often permissible, for
particular claims to pick out a subset of the full range of described features,
omitting others.”) While Appellant may have selected the range of 6—8% in
an effort to circumvent the prior art, the Examiner does not provide findings
or persuasive reasoning sufficient to affirm the written description rejection.
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For these reasons, we reverse the rejection of claims 13—20, 24—29,
31, 32, 35, and 36 under 35 U.S.C. § 112, first paragraph.
INDEFINITENESS
The Examiner rejected claims 14, 17, 20, 24, 26, 27, 29, 32, and 36
under 35 U.S.C. § 112, second paragraph, for indefiniteness. Except as
provided below, we adopt the Examiner’s findings, reasoning, and
conclusion of indefmiteness. (Ans. 3^4 and 8—9.)
Claims 14 and 26
Appellant argues claims 14 and 26, which recite “further comprising
at least retinoid in the skin-care application,” are not indefinite. (App. Br. 6—
7.) According to Appellant, “the rejection alleges that claim 13 [from which
claim 14 depends] recites ‘all-trans retinal’ which is generic for ‘retinoid.’”
(Id.) Appellant, however, misinterprets the Examiner’s finding, which is
that retinoid is the generic term and includes retinal and similar compounds.
(Ans. 9.) So interpreted, claim 14’s recitation of a method that further
includes “at least retinoid” does not distinguish over claim 13, which recites
all-trans retinal. The same is true with respect to claim 26, which depends
from claim 25. We thus agree with the Examiner that this renders claims 14
and 26 indefinite.
Claims 17 and 29
Appellant argues “claim 17 recites ‘further comprising providing a
derivative of retinal in the skin care application’” and is not indefinite.
(App. Br. 7.) According to Appellant, “all trans retinal” is “retinal” and is
different from “derivatives of retinal.” (Id.) We are not persuaded.
Consistent with the Examiner’s rejection (Ans. 4), it is not clear how “a
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derivative of retinal” is distinct from, or does not otherwise encompass, “all
trans retinal” recited in claims 13 and 25. Appellant directs us to no portion
of the Specification in support and, based on our review, we discern no error
in the Examiner’s interpretation. It is thus unclear what (if any) narrowing is
provided in dependent claims 17 or 29.9 In re Zletz, 893 F.2d 319, 322 (Fed.
Cir. 1989) (“An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous.”).
Claims 20, 32, and 36
Appellant argues “representative claim 20 recites ‘wherein said
liposome includes lipid compounds having penetrating properties’” and that
the Examiner posed a “confusing” and “inappropriate” question concerning
this claim when making the rejection for indefiniteness. (App. Br. 7.) We
disagree. Here again, the Examiner finds it is unclear how this language in
the dependent claim narrows independent claim 13, which already recites a
liposome including phosphatidylcholine (which would appear to necessarily
have “penetrating properties”). (Ans. 9.) In other words, the Examiner finds
it is unclear whether claim 20 merely recites an inchoate property of the
liposome in claim 13, or lipids in addition to phosphatidylcholine. The
Examiner’s position that the claim is open to multiple interpretations is
reasonable and unrebutted. Ex parte Miyazaki, 2008 WL 5105055, at *5
(BPAI 2008) (precedential); In re Zletz, 893 F.2d at 322. Claim 32 is
indefinite for similar reasons.
9 Claim 29 fails to identify which claim(s) it depends from, but the order in
which the claims appear suggests Appellant intended it to depend from claim
25. That is how we interpret it here.
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Appellant does not address or rebut the Examiner’s conclusion that
claim 36 is indefinite for reciting the phrase “a high affinity for water.”
(Ans. 4; App. Br. 7.) We thus affirm that rejection as well.
Claim 24
Claim 24 recites, inter alia, “wherein said liposome is hydrophilic.”
Appellant argues the Examiner is mistaken in asserting that “liposomes are
not hydrophilic” as “the very nature of many liposomes is that they are both
hydrophilic and hydrophobic” and indeed, “[pjhosphatidylcholine is a polar
compound.” (App. Br. 7.) We are persuaded that the liposome recited in
claim 13 (and thus claim 24) is, at least partly, hydrophilic. But claim 24
remains indefinite because it is unclear how, if at all, it narrows claim 13.
The limitation of claim 24 would appear to merely be listing a property
already present in the liposome recited in claim 13 — as suggested by
Appellant, the very nature of the liposome appears to be that it possesses
hydrophilic and hydrophobic properties.
Claim 27
Appellant agrees that claim 27 is redundant to claim 25. We thus
affirm the Examiner’s rejection for indefmiteness.
ANTICIPATION
Issue
Has the Examiner established by a preponderance of the evidence that
Wang or Lee discloses the invention of 13—20, 24—29, 31, 32, 35, and 36?
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Findings of Fact (FF)
FF 1. Wang teaches retinoid-containing compounds for skin-care
applications. More specifically, Wang teaches useful retinoid compounds
include “Vitamin A alcohol (retinol), Vitamin A aldehyde (retinal) and
Vitamin A esters (retinyl acetate and retinyl palmitate).” (Wang 15:11—14.)
Wang teaches “a therapeutically effective amount that may range from about
0.001 to about 5% by weight of the total compositions.” {Id. at 15:15—17.)
FF 2. Wang teaches an example liposomal formulation comprising,
inter alia, retinol in a concentration of 0.33 % w/w and lecithin purified soya
in a concentration of 7.5 % w/w. {Id. at 22 (Table 2).)
FF 3. Lee teaches liposomal cosmetic compositions containing
retinoids. (Lee Abstract.) For example, Lee teaches “triple encapsulated
retinal” and “stabilized retinol (vesicle) is subsequently inserted into
sphingosomes (a kind of multi[-]lamellar liposome) consisting of lecithin
and ceramide.” (Id.) Lee teaches its compositions provide a “useful
cosmetic material, which diminishes wrinkling, skin irritation and improves
moisturizing effect.” {Id. at 11.)
FF 4. Lee teaches administration of retinoid (vitamin A) compounds
to solve the problem of chronoaging, including wrinkling, reduced skin
elasticity, and dry skin, among other sequelae. Lee teaches use of retinol,
retinal, retinyl acetate, and retinyl propionate, among other retinoid
compounds. (Id. at || 2—3.)
FF 5. Lee teaches “[t]he amount of retinol in the total compositions
according to the present invention, may range from 0.001 to 2.0%,
preferably from 0.005 to 1% by weight.” (Id. at 133.) Lee teaches example
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compositions comprising sphingosomes/liposomes that include 3% and 6%
hydrogenated lecithin and 8% lecithin. (Id. at 146.)
Analysis
Claim 13
The Examiner finds that Wang “discloses both phospholipid and non­
phospholipid liposomal compositions containing retinoid for hydration and
skin care treatment.” The retinoids taught are retinol, retinal, and esters.
(Ans. 4.) According to the Examiner, Wang teaches “the amount of
phosphatidylcholine (lecithin) is 7.5% which falls within the claimed 6-8%.”
(Id. at 4—5.)
The Examiner finds that Lee “discloses phospholipid liposomes
containing retinal for the treatment of dry skin and skin care treatment” and,
in an example, teaches “phosphatidylcholine (lecithin) content is 6 % which
corresponds to the lower limit in instant claims.” (Id. at 5.)
Appellant argues “Examiner has admitted that the prior art references
do not disclose each of the claim recitations” when, in the context of the
Examiner’s rejections for obviousness, the Examiner stated “these references
do not teach all of the retinal compounds.” (App. Br. 8 (emphasis omitted).)
Appellant also contends that the Examiner is incorrect in equating lecithin
with phosphatidylcholine. (Id.) According to Appellant, although lecithin
may contain phosphatidylcholine, it is a mixture that contains other
ingredients in varying amounts. (Id. at 9.) To illustrate further, Appellant
asserts “if the lecithin in [Wang] can be said to include up to 20%
phosphatidylcholine” the result would be 1.5% (0.2 x 7.5%), which is
outside the 6-8% range recited in claim 13. (Id.)
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Appellant’s argument that the Examiner admitted the prior art did not
teach all the claim elements is unpersuasive as to claim 13. We understand
the Examiner’s statement to relate to certain dependent claims, requiring a
topical skin care application with multiple retinoids, which is not disclosed
in any specific example in Wang or Lee.
Appellant’s argument is persuasive, however, inasmuch as Appellant
contends the Examiner has not established that disclosure of a certain
concentration of lecithin is tantamount to disclosure of that same
concentration of phosphatidylcholine. The preponderance of the evidence
supports a conclusion that lecithin includes phosphatidylcholine as a chief or
primary component, but does not persuasively show that lecithin is 100%
phosphatidylcholine. (See App. Br. 8 (citing evidence); Spec. 134
(“Liposomes are made from lecithin, egg or it can be synthesized. . . .
Phosphatidylcholine is extracted from these sources.”); Ans. 10 (Examiner’s
evidence including Merck index, and published patent applications).)10 This
is a rejection for anticipation and we are, accordingly, not persuaded that
either Wang or Lee expressly discloses the concentration of
phosphatidylcholine recited in claim 13. The concentration could, as
Appellant notes, be lower than 6—8% in the examples of Wang and Lee.
We thus reverse the Examiner’s rejection of claim 13 as anticipated
by Wang or Lee. As claims 14—20 and 24 depend from claim 13, we reverse
the anticipation rejection of those claims as well.
10 (See, e.g., US 2008/0311046, published Dec. 18, 2008 at 119 (“such as
lecithin known as phosphatidylcholine”).)
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Claim 25
We reach a different conclusion with respect to claim 25, which does
not require phosphatidylcholine or any specific concentration of it. To the
contrary, the key claim language of claim 25 recites a “liposome in the range
of 0.001 to 10 percent by weight.” This limitation is taught by the lecithin
concentrations in either Wang or Lee. (FF 2, 5.)
Appellant has not persuasively shown that any other limitations of
claim 25 are absent in Wang or Lee. (App. Br. 10.) Appellant points to
“Evidence of Unexpected Results,” but such evidence is irrelevant to a
rejection based on anticipation. {Id.)
We reverse the rejection of claim 28, which recites “further
comprising providing at least retinoic acid.” As noted above, the Examiner
appears to acknowledge that Wang or Lee do not teach specific example
mixtures of retinoids that include retinoic acid.
We also affirm the rejection of claims 26, 27, 29, 32, 35, and 36 as
anticipated by Wang or Lee. As discussed above, these claims are not
distinguishable from the compounds or properties already recited (or
inherent) in claim 25. We also affirm the rejection of claim 31 as anticipated
by Wang, which discloses an example having a retinoid concentration of
0.33% w/w. (FF 1—2.) The skilled person would at once envisage the
retinoid could be retinol or retinal. In re Petering, 301 F.2d 676, 681—82
(CCPA 1962).
Conclusion of Law
The Examiner did not establish by a preponderance of the evidence
that Wang or Lee anticipates claims 13—20, 24, or 28.
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The Examiner established by a preponderance of the evidence that
Wang or Lee anticipates claims 25, 26, 27, 29, 31, 32, 35, and 36.
OBVIOUSNESS
Wans, Lee, and Meybeck
Issue
Has the Examiner established by a preponderance of the evidence that
claims 13—20, 24—29, 31, 32, 35, and 36 would have been obvious over
Wang, Lee, and Meybeck?
Findings of Fact
The teachings of Wang and Lee are discussed above.
FF 6. Meybeck teaches “a composition comprising hydrous lipidic
lamellar phases or liposomes containing, as an active agent a retinoid or a
structural analogue of retinoid, such as a carotenoid or tretinoin.” (Meybeck
Abstract; see also id. at 2:7—8 (“tretinoin (also called acid A vitamin or also
trans-retinoic acid).”) Meybeck teaches “[tjhese compositions are more
efficient against acne and less irritant for the skin and they are used as a
pharmaceutical composition, notably dermatological or cosmetic.” {Id. at
Abstract.) Meybeck teaches the “cosmetic composition . . . can be
formulated for a topic[al] application in order to treat the various forms of
acne, hyperkeratosis, psoriasis . . . [and] to fight against the actinic
cutaneous ageing due for instance to repeated exposures to the sun and
against chronological cutaneous ageing.” {Id. at 3:35—41.)
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FF 7. Meybeck teaches a dermo-cosmetic liposome composition
containing, inter alia, tretinoin, 10 grams of hydrogenated soya lecithin and
100 grams of a phosphate buffer. (Id. at 8:20-29 (Example 6).)
Analysis
The Examiner rejected all the claims on appeal as obvious over Wang,
Lee, and Meybeck, individually or in combination. (Ans. 5.) The
Examiner’s findings concerning the scope and content of the prior art, and
statement of the rejection, are recited at pages 5—6 of the Answer.
Claim 13
The Examiner concludes that “since vitamin A is known for its effect
on the skin, it would have been obvious to one of ordinary skill in the art to
use suitable vitamin A derivatives with a reasonable expectation of success.”
(Id.) Furthermore, according to the Examiner, “lecithin
(phosphatidylcholine) is a[] known moisturizing agent, [so] decreasing the
dehydration effect would have been obvious.” (Id.) Insofar as the
references lack an express teaching of the claimed percentages of liposomes,
the Examiner reasons “the amounts of liposomes are deemed to be a
manipulatable parameter practiced by an artisan to obtain the best possible
results.” (Id', see also id. at 11—12.)
Appellant argues “because none of these references disclose []
phosphatidylcholine or any like component, then it cannot properly be said
that any of these references render phosphatidylcholine an obvious
substitution.” (App. Br. 12.)
Appellant’s argument is unpersuasive. As discussed above, the
preponderance of the evidence supports the conclusion that a primary
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component of lecithin is phosphatidylcholine, which would have been
known to the skilled artisan. As noted by the Examiner, “[e]ven assuming
that lecithin taught by the cited prior art is not phosphatidylcholine, as
appellant’s definition itself indicates . . ., lecithin consists chiefly of
phosphatidylcholine.” (Ans. 11.) Appellant has not persuasively shown
otherwise.
We agree with the Examiner that it would have been prima facie
obvious to modify the liposome concentration as a matter of routine
optimization and thus predictably arrive at the subject matter of claim 13.
That is particularly true where, as here, it was well known in the art to
administer the same types of compositions (retinoids in liposomes) for the
same purpose (moisturizing the skin and treating conditions like acne,
wrinkles, etc.) as the present claims. (FF 1—7.) “[Wjhere the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Alter, 220 F.2d 454, 456 (CCPA 1955). “[Djiscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Appellant contends the Examiner improperly dismissed “the Evidence
of Unexpected Results,” and erred in finding that Appellant’s results would
have been expected. (App. Br. 12—13.) According to Appellant, the
Examiner is merely speculating without a proper evidentiary basis in the
prior art. {Id. at 13; Reply Br. 7.)
Appellant’s argument is unpersuasive. We have considered
Appellant’s evidence but, like the Examiner, do not find it sufficient to
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overcome the prima facie case for obviousness. Appellant’s evidence
consists of a declaration from the inventor, providing a number of before-
and-after photos of subjects treated with the allegedly inventive
composition.11 According to the declaration, subjects were administered
serums or facial infusions comprising liposomal retinaldehyde with 6%
phosphatidylcholine (serum) or 8% phosphatidylcholine (infusion).
(Johnson Decl. 13.)
Although the inventor describes the retinal compound as
“revolutionary” and opines that “[i]t treats aging, acne and rosacea better
than any other retinol/retinal in the world” (id. at 113), the declaration is
lacking sufficient comparative data to support this sweeping assertion. The
relevant comparison is not between Appellant’s treatment/composition and
no treatment at all, which is what the declaration describes and depicts. (Id.
passim.) Rather, to show unexpected results, Appellant must compare
against the closest prior art, such as the compositions of Wang or Lee. In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[Wjhen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”) That was
not done here and Appellant’s evidence is unpersuasive as a consequence.12
This missing comparative data is critical because, as the Examiner
points out, the results observed by Appellant are not wholly unexpected.
11 Declaration of Benjamin Johnson dated April 30, 2013 (“Johnson Deck”).
12 We also observe that Appellant’s data does not indicate the concentration
of the retinal in its concentrations. In re Lindner, 457 F.2d 506, 508 (CCPA
1972) (“It is well established that the objective evidence of nonobviousness
must be commensurate in scope with the claims.”).
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(See, e.g., Ans. 11—12 (citing numerous publications concerning the benefits
of liposomes, such as slow release and moisturizing effect).) Indeed, by way
of example, Lee teaches its retinoid/liposome composition diminishes
wrinkles, skin irritation, improves moisturizing effect and treats other skin
defects due to aging. (FF 3^4; see also Lee Tflf 89—90 (teaching its
composition “enables retinol to penetrate the skin easily” and “improves the
moisturizing effect and elasticity of the skin” with “little skin irritation”).)
Similarly, Meybeck teaches retinoid/liposome cosmetic compositions for
treating acne, aging, and other conditions of the skin in a less irritating
formulation. (FF 6.) Appellant has not shown persuasively that the results
obtained with the claimed method/composition differ to a nonobvious extent
compared to what would have been reasonably predicted based on what was
already known in the art.
Claim 25
Appellant cites the “Evidence of Unexpected Results” and refers to its
arguments concerning claim 13. This evidence and argument is
unpersuasive for the reasons discussed — particularly as claim 25, in key
respects, is broader than claim 13 and so Appellant’s evidence is even less
probative in demonstrating objective evidence of nonobviousness.
Dependent Claims 14—20, 24, 26—29, 3L 32, 35, and 36
Claims 26, 27, 29, 31, 32, 35, and 36 are obvious for the reasons
discussed above, including for the reasons provided in the section related to
anticipation. In re May, 574 F.2d 1082, 1089 (CCPA 1978) (“[L]ack of
novelty is the epitome of obviousness.”). Claims 14, 17, 20, and 24 do not
distinguish over claim 13 as discussed, and are thus likewise obvious.
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Claims 18 and 19 are obvious because the prior art discloses use of retinoids
in concentration ranges that overlap with these claims. (FF 1—2, 5; Ans. 5—
6.) It would have also been obvious to modify the prior art to use
combinations of known retinoids, as recited in claims 15, 16, and 28. (FF 1,
4, 6.) In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (holding it is prima
facie obvious to combine two compositions known to be useful for the same
purpose to form a third composition useful for the same purpose).13
Conclusion of Law
For the reasons above, we conclude the Examiner established by a
preponderance of the evidence that claims 13—20, 24—29, 31, 32, 35, and 36
would have been obvious over Wang, Lee, and Meybeck.
OBVIOUSNESS
Wang, Lee, Meybeck in Combination with Jenkins, Sako, and/or Malik
The Examiner rejected claims 15—17 and 26—29 as obvious over
Wang, Lee, or Meybeck in view of Jenkins, Sako, and/or Malik. The
Examiner states that Wang, Lee, and Meybeck “do not teach the use of
retinal in combination with other retinoids” and thus the Examiner
supplements with Jenkins, Sako, and Malik.
The teachings of Wang, Lee, and Meybeck are discussed above and
we adopt as our own the Examiner’s findings concerning the scope and
content of Jenkins, Sako, and Malik. (Ans. 6.) These references teach
mixtures of retinoids; to illustrate, Jenkins relates to compositions for skin
13 Wang suggests liposome compositions containing mixtures of retinol,
retinal, etc. (Wang 9:6—10.)
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Application 11/686,883
treatment and discloses “preferred retinoids are selected from retinyl esters,
retinol, retinal and retinoic acid . . . and mixtures thereof.” (Jenkins 158.)
Appellant contends that the “Examiner has not cited to anything
specific in the references as teaching ‘at least retinol’” as in claim 15. (App.
Br. 14.) Appellant makes similar arguments regarding claims 16, 17, and
26-28.
The Examiner points out, and we agree, Appellant’s argument with
respect to these claims does not make sense. (Ans. 12.) Using claim 15 as
an example, the Examiner states: “claim 15 requires the presence of both
retinal and retinol,” and the Examiner finds “Jenkins, Sako, and Malik teach
one to combine retinal with other retinoids in skin care compositions.” (Id.)
In the Reply Brief, Appellant contends it “has not recited in the claims
the combination of retinal with other retinoids.” (Reply Br. 10.) We
disagree. Again, using claim 15 as an example, Appellant is plainly
mistaken in its interpretation — literally the claim requires at least retinal
and retinol in the topical skin care application. The Examiner’s claim
interpretation is reasonable and Appellant has not persuasively shown any
element that is missing from the Examiner’s combination of the art.
Appellant’s citation to “Evidence of Unexpected Results” is
unpersuasive for the reasons already discussed.
SUMMARY
We reverse the rejection of claims 13—20, 24—29, 31, 32, 35, and 36
under 35U.S.C. § 112, first paragraph, for failure to satisfy the written
description requirement.
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Application 11/686,883
We affirm the rejection of claims 14, 17, 20, 24, 26, 27, 29, 32, and 36
under 35 U.S.C. § 112, second paragraph, for indefiniteness.
We reverse the rejection of claims 13—20, 24, and 28 under 35 U.S.C.
§ 102(b) as anticipated by Wang or Lee; we affirm, however, the rejection of
claims 25, 26, 27, 29, 31, 32, 35, and 36 under § 102(b) as anticipated by
Wang or Lee.
We affirm the rejection of claims 13—20, 24—29, 31, 32, 35, and 36
under 35 U.S.C. § 103(a) over Wang, Lee, and Meybeck.
We affirm the rejection of claims 15—17 and 26—29 under 35 U.S.C.
§ 103(a) over Wang, Lee, or Maybeck in combination with Jenkins, Sako,
and/or Malik.
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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