Ex Parte Johnson

Patent Trial and Appeal Board

Jun 24, 2016

11949711 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111949,711 12/03/2007
46317 7590 06/28/2016
TRENNER LAW FIRM, LLC
(Mark D. Trenner)
1153 Bergen Pkwy #i-115
Evergreen, CO 80439
FIRST NAMED INVENTOR
Benjamin Johnson
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.
3600-004-USP 5258
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
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
Appeal2014-005387
Application 11/949, 711
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 treating aged or damaged skin that have been rejected as obvious and
indefinite. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Most skin care products operate primarily on the outer epidermal
layer of the skin .... However, the dermis [the layer of skin beneath the
epidermis] often suffers damages as well, particularly from free radicals but
1 Appellant identifies the Real Party in Interest as Benjamin Johnson.
(1/18/2014 Br. 2 (Amended).)
Appeal2014-005387
Application 11/949, 711
also from the other stresses." (Spec. i-f 4.) The Specification discloses that
"[ o ]ne compound that has shown promise in the treatment of a variety of
skin disorders is Chlorella . . . [yet] [ o ]ne of the problems with previous
skin care compositions using Chlorella is the limited penetration into the
dermis." (Id. at i-f 6.) According to the Specification, "[t]he present
invention solves these and other problems by providing Chlorella with
liposomes." (Id. at i-f 8.)
Claims 1--4 and 6-10 are on appeal. Claim 1 is illustrative:
1. A method for increasing the transdermal penetration of
chlorella compounds in a topical skin care application, said
method comprising the steps of:
providing a chlorella compound; and
providing said chlorella compound within a liposome
compound to increase the transdermal penetration of said
chlorella compound through the epidermis to provide nutrients
to damaged skin cells in the dermis layer.
(Br. 9 (Claims App'x).) Claim 6 is rejected as indefinite and reads:
(Id.)
6. The method for increasing the transdermal penetration of
chlorella compounds from a topical skin care application of
claim 1, further comprising:
providing a lipid compound having a high affinity for
water.
The claims stand rejected as follows:
Claim 6 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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Claims 1--4 and 6-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Majmudar2 and Egbaria. 3
On appeal, we determine whether the Examiner established each of
the rejections above by a preponderance of the evidence.
DISCUSSION
Findings of Fact
The Examiner's findings of fact are set forth in the Answer at pages
2-8 and we adopt those findings here.
Analysis - Indefiniteness
The Examiner rejected claim 6 under 35 U.S.C. § 112, second
paragraph, as being indefinite. According to the Examiner, claim 6 "recites
the phrase, 'high affinity for water' .... The term 'high' is relative ('high'
compared to what?), and thus the metes and bounds of the phrase 'high
affinity for water' are unclear." (Ans. 2.)
Appellant responds that "when read in the context of the claim
recitations ('a lipid compound having a high affinity for water'), the term
'high' is well defined and has meaning to those of ordinary skill in the art."
(Br. 5.) In support, Appellant cites paragraph 35 of the Specification which
reads:
Liposomes have a natural affinity for water which assists in
increasing the moisture in the skin during topical application of
the liposomal chlorella composition. The liposomal chlorella
2 Majmudar (US 2005/0123499 Al, published June 9, 2005) ("Majmudar").
3 K. Egbaria and N. Weiner, Liposomes as a topical drug delivery system, 5
ADVANCED DRUG DELIVERY REVIEWS 287-300 (1990) ("Egbaria").
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Application 11/949, 711
also provides moisture to the dermal layer cells, and in
particular the glycosaminoglycans that keep the skin moist and
plump. The liposomal material in itself provides moisture to
these cells. Wrinkles and lines in the skin are eliminated or at
least minimized through this moisturizing effect.
(Id. (quoting Specification i-f 35).)
Appellant's argument is unpersuasive. When words of degree - like
the claim term "high" - are used, we look to whether the Specification
defines the term or provides some standard for measuring it. Seattle Box Co.
v. Indus. Crating & Packaging, Inc., 731F.2d818, 826 (Fed. Cir. 1984); Ex
parte Anderson, 21USPQ2d1241, 1249 (Bd. Pat. App. Int. 1991). Even
considering the portion of the Specification cited to us by Appellant, we
agree with the Examiner that "it is not clear how liposomes having 'a natural
affinity for water' [are] the same as, or different from, a liposome having
'high affinity for water ... it is not clear if the term 'high' is equivalent to
the term 'natural', as used to describe liposomes in general, or if it somehow
further limits or defines a subgroup of liposomes." (Ans. 6.) Thus, the
Specification does not supply the necessary clarity, and we are unpersuaded
the skilled artisan would have understood the metes and bounds of claim 6.
Here, the record supports the Examiner's determination that claim 6 is
indefinite. So, for the reasons described above, we affirm the rejection of
claim 6 under 35 U.S.C. § 112, second paragraph.
Analysis - Obviousness
The Examiner determined that claims 1--4 and 6-10 would have been
obvious under 35 U.S.C. § 103(a) over Majmudar and Egbaria. Appellant
argues claims 1, 7, and 9 as a group, and does not separately argue the
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Application 11/949, 711
patentability of the other claims with respect to this rejection. We thus
select claim 1 as representative and decide the appeal as to the§ 103(a)
rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
According to the Examiner, Majmudar teaches compositions of
marine botanicals, including chlorella, for topical treatment of aged,
nutritionally compromised, or damaged skin. (Ans. 3.) Also, the Examiner
finds, Majmudar teaches "[m]any of the alterations in appearance and
function of the skin are caused by changes in the outer epidermal layer of the
skin, while others are caused by changes in the lower dermis (paragraph
[0005].)" (Id.) The Examiner further finds that Majmudar teaches "its
present compositions are effective in all types of cosmetic vehicles, and
variations and other appropriate vehicles will be apparent to the skilled
artisan and are appropriate for use in the present invention (paragraph
[0054])." (Id.)
Because "Majmudar does not specifically teach containing said
marine botanical( s) within a liposome ... for increasing the transdermal
penetration of chlorella," the Examiner turns to Egbaria. (Id.) According to
the Examiner, Egbaria teaches the use of liposomes as a topical drug-
delivery system having various advantages (e.g., non-toxic and
biodegradable). (Id. at 3--4.) The Examiner finds Egbaria teaches "higher
concentration of drugs in the epidermis and dermis from liposomal vs. non-
liposomal delivery (pages 288-289) and thus the liposomes increase the
transdermal penetration." (Id. at 4.) Moreover, the Examiner finds Egbaria
teaches "a great deal of interest in the use of liposomes in skin gels or skin
creams has been generated in the field of cosmetics (page 291 )." (Id.)
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Application 11/949, 711
The Examiner finds that the person of ordinary skill in the art would
have predictably combined the teachings of Majmudar and Egbaria. More
specifically, the Examiner finds
(Id.)
[i]t would have been obvious to a person having ordinary skill
in the art at the time the invention was made to contain the
marine botanicals of Majmudar in liposomes to increase
transdermal penetration, treat aging skin, and treat skin
damaged from environmental and lifestyle stresses[,] thus
arriving at the claimed invention. One skilled in the art would
be motivated to do so because the use of liposomes provides the
benefits of a non-toxic, biodegradable carrier which improves
the delivery of the active agent to the epidermis and dermis, as
taught by Egbaria. One would reasonably expect success from
use of liposomes because Egbaria teaches use of liposomes in
cosmetics, and Majmudar teaches appropriate vehicles for its
compositions are within the purview of the skilled artisan.
Appellant raises multiple arguments in response. According to
Appellant, "Majmudar is concerned with treating the epidermis (not the
dermis)." (Br. 7.) Appellant similarly argues that "by specifically
disclosing only treatment of the epidermis, it is Appellant's position that the
express teachings of Majmudar exclude treatment of the dermis." (Id.)
Thus, Appellant argues, the skilled artisan "would not have reasonably
expected to modify the composition of Majmudar to be contained within the
liposomes as disclosed by Egbaria since trans dermal penetration of a
chlorella compound through the epidermis to provide nutrients to damaged
skin cells in the dermis layer would not be desirable. Modifying
Majmudar with Egbaria as proposed ... destroys the intended function of
the composition of Majmudar." (Id.) Next, Appellant acknowledges that
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Egbaria "discloses use of liposomes with topical drugs to increase
transdermal penetration" but argues "Egbaria does not teach anything about
the use of chlorella." (Id.) For these reasons, Appellant contends, "the
rejection is merely a piecemeal reconstruction of the invention, and not a
proper combination under Section 103." (Id. at 7-8.)
Appellant's arguments are unpersuasive. First, Appellant reads the art
too narrowly - failing to account for all that is taught in the references.
And second, Appellant is arguing the references individually rather than the
combination proposed. We discuss these arguments further below.
Appellant argues that Majmudar is "concerned with" treating the
epidermis, but what a reference is "concerned with" is not the full measure
of its teachings for purposes of an obviousness analysis. To the contrary,
"[i]t is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed.
Cir. 1992). "[A] reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests."' In re Baird, 16 F.3d 380, 383,
(Fed. Cir. 1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)).
In advancing this argument, Appellant quotes a portion of paragraph 5 of
Majmudar. But another portion of that same paragraph expressly discusses
damage to the skin that also occurs at the dermal level. (Ans. 7.)4 This
4 Appellant also quotes a portion of paragraph 6 of Majmudar in support of
the argument that the reference relates only to treatment of the epidermis.
(Br. 6.) However, in addition to the portion quoted by Appellant, paragraph
6 of Majmudar also states that other examples of treating damaged skin
"include the use of retinoids to stimulate collagen and glycosaminoglycan
synthesis by fibroblasts (Schiltz, et al., 1986)." (Majmudar i-f 6.) As
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Application 11/949, 711
suggests a broader use of Majnmdar's compositions, not the narrow one
argued by Appellant.
Moreover, if Majmudar made no express mention of treating the
dermis, this would still not "exclude" or teach away from treating the dermis
as Appellant argues. Quite the opposite, Majmudar teaches that damage to
the skin may be caused by changes in the "outer epidermal layer" as well as
"by changes in the lower dermis." (Majmudar i-f 5.) Thus, a skilled artisan
reading Majmudar would have reason to treat both the epidermis and dermis
even if Majmudar described treating the epidermis in preferred
embodiments. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from ... alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed"). If
anything, the express language in Majmudar related to the dermis would
teach towards the combination proposed by the Examiner rather than away
from it.
As for Appellant's argument that the Examiner's proposed
combination "would not be desirable" and would "destroy the intended
function" of Majmudar, we are not persuaded. Appellant has provided
insufficient factual evidence to support these allegations. In addition,
Appellant's argument presumes that, because Egbaria teaches the use of
liposomes to increase transdermal penetration of the topically applied drug,
confirmed by the present Specification, fibroblasts are skin cells of the
"dermal level" that "make collagen, elastin, and glycosaminoglycans."
(Spec. i-f 33.)
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Application 11/949, 711
all the drug would go "through the epidermis" to the dermal layer - leaving
none of the drug in the epidermis, contrary to Majmudar' s preferred
embodiments. (Br. 7.) Here again, Appellant overlooks key teachings of the
prior art. Indeed, Egbaria teaches that use of liposomes resulted in higher
drug concentrations in both the epidermis and dermis. (Egbaria 288-289;
Ans. 4.)5 Accordingly, the Examiner's proposed combination of the
chlorella compound of Majmudar in the liposomes of Egbaria would appear
to enhance the effectiveness of Majmudar' s compositions at dermal and
epidermal layers - not "destroy" Majmudar's function as Appellant argues.
Finally, even if Majmudar was totally "silent as to treating the dermis"
(Br. 7), the rejection is not based on the teachings of Majmudar alone.
Egbaria discloses topical application of liposomal drug systems for
transdermal penetration, thus treating both the epidermis and dermis. (Ans.
4; Egbaria 288-289.) And Egbaria also encourages the use of liposomes in
skin gels and skin creams in the field of cosmetics, further illustrating an
express reason to combine with the chlorella composition of Majmudar. (Id.
at 291; Ans. 4.) Appellant's emphasis on the alleged lack of disclosure
about dermal treatment in Majmudar, as well as the argument that Egbaria
does not disclose chlorella, fails to address the rejection as presented, which
is based on the combination of references. Appellant's argument is, instead,
an attack on the references individually. In re Merck & Co., 800 F.2d 1091,
5 See, e.g., Egbaria 289 ("[A]pplication of liposomal gel resulted in
concentration of triamcinolone acetonide approximately five times higher in
the epidermis and three times higher in the dermis, than application of the
free drug gel.")
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1097 (Fed. Cir. 1986) ("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.") Such an attack is ineffective in rebutting the Examiner's prima
facie case that claim 1 would have been obvious over the art as combined.
For the reasons above, we conclude that the Examiner established by a
preponderance of the evidence that claim 1 would have been obvious under
35 U.S.C. § 103(a) over Majmudar and Egbaria. Claims 2--4 and 6-10 have
not been argued separately and therefore fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claim 6 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
We affirm the rejection of claims 1--4 and 6-10 as unpatentable under
35 U.S.C. § 103(a) over Majmudar and Egbaria.
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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