Ex Parte Kroepke et al

Patent Trial and Appeal Board

Dec 1, 2016

11004617 (P.T.A.B. Dec. 1, 2016)

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.
11/004,617 12/03/2004 Rainer Kroepke 3321-P30886 8148
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
12/05/2016 EXAMINER
CARTER, KENDRA D
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
12/05/2016 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 RAINER KROEPKE, LUDGER KOLBE,
ANETTE BUERGER, and CLAUDIA MUNDT
Appeal 2015-002324
Application 11/004,617
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 63—100 (Final
Act. 1). Examiner entered rejections under 35 U.S.C. § 103(a) and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellants identify “[t]he real party in interest [as] Beiersdorf AG” (App.
Br. 3).
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Application 11/004,617
STATEMENT OF THE CASE
Appellants disclose “cosmetic or dermatological preparations that
include a combination of a dye and an anti-inflammatory active ingredient
(Spec. 6—7). Claim 63 is representative and reproduced below:
63. A cosmetic or dermatological preparation, wherein the
preparation comprises from 0.01 % to 5 % by weight of at least
one red light-filtering dye, at least one white pigment, and from
0.0001 % to 10 % by weight of at least one anti-inflammatory
active ingredient selected from licochalcone A, an extract of
Glycyrrhiza inflata, hamamelis, panthenol, and chamomile
extract.
(App. Br. 36.)
The claims stand rejected as follows:
Claims 63, 64, 67, 69-84, and 86—100 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hahn,2 Shibata,3
Nagatani,4 Wenninger,5 Millikan,6 Demko,7 and Bara.8
2 Hahn et al., US 5,804,203, issued Sept. 8, 1998.
3 Shoji Shibata et al., Inhibitory Effects of Licochalcone A Isolated from
Glycyrrhiza inflata Root on Inflammatory Ear Edema and Tumour
Promotion in Mice, 57 PlantaMed. 221—224 (1991).
4 Nagatani et al., US 2001/0007677 Al, published July 12, 2001.
5 John A. Wenninger et al., International Cosmetic Ingredient Dictionary
and Handbook, Vol. 1, 301-307 (7th ed., The Cosmetic, Toiletry, and
Fragrance Association, Washington, DC) (1997).
6 L Millikan, The Proposed Inflammatory Pathophysiology of Rosacea:
Implications For Treatment, 2 SKINmed 43—47 (2003).
7 Demko, US 3,873,687, issued Mar. 25, 1975.
8 Bara et al., US 5,478,555, issued Dec. 26, 1995.
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Claims 65, 66, 68, and 85 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, Bara, and Tsukiyama.9
Claims 63—66 and 79 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 54, 56—61, and 69 of copending Application 10/985,733 in view
of Wenninger and Bara.
Claims 63—66 and 79 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 87—90, 92, 93, and 123 of copending Application 10/889,114 (now
Tom Dieck ’34910) in view of Wenninger and Bara.11
Claims 63—66 and 79 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1—5 and 16 of copending Application 13/897,793 (now Tom Dieck
’70712) in view of Wenninger and Bara.13
Claims 63—65 and 79 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1—4 and 16 of Raschke14 in view of Wenninger and Bara.
9 Tsukiyama et al., Antibacterial Activity of Licochalcone A against Spore-
Forming Bacteria, 46 Antimicrobial Agents and Chemotherapy 1226—1230
(2002).
10 Tom Dieck et al., US 8,470,349 B2, issued Jun. 25, 2013.
11 Because Application 10/889,114 issued as US 8,470,349, this rejection is
no longer provisional.
12 Tom Dieck et al., US 9,017,707 B2, issued Apr. 28, 2015.
13 Because Application 13/897,793 issued as US 9,017,707, this rejection is
no longer provisional.
14 Raschke et al., US 7,799,356 B2, issued Sept. 21, 2010.
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Obviousness-type Double Patenting'.
Appellants do not present the obviousness-type double patenting
rejections for review in this Appeal (App. Br. 35). Instead, “Appellants will
decide whether the filing of one or more terminal disclaimers is appropriate
once patentable subject matter has been identified” (id. ). Therefore, the
obviousness-type double patenting rejections are summarily affirmed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner relies on Millikan to disclose “that rosacea is known in the
art to be characterized by facial redness and inflammation” (Ans. 5).
FF 2. Hahn discloses, inter alia, “topical formulations and ingredients
which can suppress skin irritation due to chemical or environmental
exposure, or due to tissue inflammation, injury or other skin pathology”
(Hahn 9: 53—56; see Ans. 2).
FF 3. Hahn discloses formulations comprising anti-inflammatory agents
such as chamomile or licorice extract (Hahn 11: 1—6; Ans. 3).
FF 4. Hahn discloses formulations comprising dyes, colorants and/or
pigments; panthenol; and witch hazel, i.e., hamamelis (Hahn 18: 8—11 and
22—25; id. at 20: 1—5 (disclosing “[ojther suitable additional and adjunct
ingredients which may be included in [Hahn’s formulations . . . include[ing],
but not limited to, ... witch hazel, alcohol, and herbal extracts such as
chamomile extract”); id. at 33: 55—34: 67 (exemplifying a composition
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comprising more than one pigment); id. at 35: 18—67 (exemplifying a
composition comprising panthenol, an alcohol); Ans. 3; Spec. 9: 31—32
(“Hamamelis, known in its North American homeland as witch hazel”);
Spec. 10: 10-22 (describing panthenol)).
FF 5. Examiner finds that Hahn does “not exemplify Glycyrrhiza inflata as
a preferred species of licorice for producing an anti-inflammatory extract[,] a
red light-filter[ing] dye,” a white pigment, or the concentrations and/or ratios
of ingredients required by Appellants’ claimed invention (Ans. 3).
FF 6. Shibata discloses that “Licochalcone A [] from the root of
Glycyrrhiza inflata Beta (Leguminosae) [] showed anti-inflammatory action
towards mouse ear edema induced by arachidonic acid (AA) and 12-0-
tetradecanoylphorbol 13-acetate (TPA) by topical application” (Shibata,
Abstract; Ans. 4).
FF 7. Nagatani “relates to a cosmetic composition which can change the
hue of the skin while giving the skin a feeling of transparence” (Nagatani
12; see generally Ans. 4).
FF 8. Nagatani discloses that
[i]n order to cover a reddish face or acne spots [] the hue of the
skin [is changed] by using a pigment of a green color that is
complementary to red or using a pigment of a blue or violet
color so as to give the skin a feeling of transparence.
(Nagatani | 6; Ans. 4.) In this regard, Nagatani discloses that
[vjarious color tones may be prepared [by Nagatani’s] hollow
plate powder []by controlling the optical thickness (coating
thickness) of the metal oxide layer of the metal oxide-coated
plate powder prior to the dissolution of the base material. For
example, those powder which exhibit a blue to violet
interference light do not become a dull color and can give a
feeling of transparence toward the skin; those powder which
exhibit a green interference light do also not become a dull
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color and can prevent the skin from looking red; and those
powder which exhibit an orange to red interference light can
make the skin look healthy and cover a dull looking skin.
(Nagatani 119; see Ans. 17; see also Nagatani 177 (exemplifying
compositions comprising more than one pigment).)
FF 9. Examiner relies on Wenninger to disclose the routine use of “green,
white and blue pigments [Jin the formulation of cosmetic preparations”
(Ans. 4).
FF 10. Demko discloses cosmetic coloring compositions for application to
the human body, which comprise:
[ijnorganic colorants capable of masking the dye color while
the composition is in applicator form but which does not mask
the staining colorant dye when the composition is applied to
human skin are the various heavy metal oxides and hydrates
such as various iron oxides (Cl 77491, Cl 77492 and Cl
77499)[,J chromium sesquioxide hydrate (Cl 77289) and the
like.
(Demko 3: 28—34; Ans. 4; see also Wenninger 303 and 305 (describing Cl
77491, Cl 77492, Cl 77499, and Cl 77289).)
FF 11. Demko discloses that the concentration of “colorant material may
range from about 0.001 to about 6 percent of the total amount of coloring
agents” in a formulation (Demko 3: 37—39; see id. at 1: 52—56; Ans. 4—5).
FF 12. Bara discloses cosmetic compositions comprising pigments such as
“Cl 77289 (green), [] Cl 77891 (white), [and] Cl 77007 (blue)” in amounts
“from 0.5 to 20% by weight of the total weight of the composition” (Ans. 5;
Bara 4: 1—8 and 21—22).
FF 13. Examiner finds that the combination of Hahn, Shibata, Nagatani,
Wenninger, Millikan, Demko, and Bara “do[es] not teach an aqueous
abstract of Glycyrrhiza inflata” and relies on Tsukiuama to make up for this
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deficiency in the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, and Bara (see Ans. 10-11 (emphasis added)).
FF 14. Tsukiuama discloses that licochalcone A was extracted from the
roots of Glycyrrhiza inflata by first removing “water-soluble fractions from
the roots of licorice,” drying the roots, and then extracting the dried roots
with “ethanol to provide the extract” (Tsukiuama 1227).
ANALYSIS
Hahn, Shibata, Nagatani, Wenninger, Millikan, Demko, and Bara:
Based on the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, and Bara, Examiner concludes that, at the time
Appellants’ invention was made, it would have been prima facie obvious to
formulate a composition comprising an anti-inflammatory, at least one red
light-filtering dye, and at least one white pigment in order “to treat the
inflammation [associated with] rosacea and mask the reddened skin that
characterizes the disorder” (see Ans. 6). In this regard, Examiner finds that
a person of ordinary skill in this art would have obtained the concentrations
and ratios required by Appellants’ claimed invention through routine
optimization (id.). In re Geisler, 116 F.3d 1465, 1470, (Fed. Cir. 1997)
(“‘[I]t is not inventive to discover the optimum or workable ranges by
routine experimentation.’”) (quotingIn reAller, 220 F.2d 454, 456 (CCPA
1955)).
Claim 63:
Hahn discloses “topical formulations and ingredients which can
suppress skin irritation due to chemical or environmental exposure, or due to
tissue inflammation, injury or other skin pathology,” which include: (a)
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anti-inflammatory agents, such as chamomile or licorice extract and (b)
dyes, colorants and/or pigments (FF 2 4). Millikan discloses “that rosacea
is known in the art to be characterized by facial redness and inflammation”
(FF 1). Therefore, we are not persuaded by Appellants’ contention that
Hahn fails to disclose “any advantage” in including the forgoing ingredients
in a cosmetic composition or that the scope of Hahn’s disclosure is limited to
“irritation associated with topically applied skin irritants” (see App. Br. 8—11
(emphasis removed)). In this regard, we are not persuaded by Appellants’
contention that it would have been “counterintuitive” to include dyes,
pigments, and/or colorants, as disclosed by Hahn, in Hahn’s composition
because Hahn teaches suppressing inflammation taught as present in rosacea
by Millikan (see App. Br. 10-12; Reply Br. 2 and 4).
Further, while, as Appellants point out, Hahn discloses certain
components of Appellants’ claimed invention as part of a list, we find that
the “[d]isclos[ure of] a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co. Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In this regard, we
are not persuaded by Appellants’ intimation that Hahn did not exemplify
their claimed composition (see App. Br. 8—9 and 12—13; Reply Br. 2—3).
As discussed above, Hahn discloses a composition to “suppress skin
irritation due to chemical or environmental exposure, or due to tissue
inflammation, injury or other skin pathology,” such as “rosacea[, which] is
known in the art to be characterized by facial redness and inflammation,”
that comprises dyes, pigments, and/or colorants (FF 1 4). Nagatani
discloses that
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[i]n order to cover a reddish face or acne spots [] the hue of the
skin [is changed] by using a pigment of a green color that is
complementary to red or using a pigment of a blue or violet
color so as to give the skin a feeling of transparence.
(FF 8.) The combination of Wenninger, Demko, and Bara disclose that
pigments, such as green, blue, and white, are used in cosmetic compositions
in amounts “from 0.5 to 20% by weight of the total weight of the
composition” (FF 9-12). Therefore, we are not persuaded by, Appellants’
contention that a person of ordinary skill in this art would not have found it
prima facie obvious to include green, blue, and white pigments in Hahn’s
composition at the concentrations suggested by the art, which overlap
Appellants’ claimed concentration (see App. Br. 9; see generally Reply Br.
4—5). Overlapping ranges support a prima facie case of obviousness. See In
re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997).
For the foregoing reasons, we recognize, but are not persuaded by,
Appellants’ separate discussion of Wenninger, Nagatani, Demko, and Bara,
which fails to account for the contribution of each reference to the
combination of Hahn, Shibata, Nagatani, Wenninger, Millikan, Demko, and
Bara (see App. Br. 15—18 and 24—27).
As Examiner points out, “rosacea is known in the art to be
characterized by facial redness and inflammation” (FF 1). Therefore, we
find no error in Examiner’s conclusion that a person of ordinary skill in this
art would found it prima facie obvious to formulate and apply a composition
comprising an anti-inflammatory, such as that suggested by the combination
of Hahn, Shibata, Nagatani, Wenninger, Millikan, Demko, and Bara, to
inflamed facial tissue (see Ans. 6). We recognize, but are not persuaded by
Appellants’ contentions regarding Millikan (App. Br. 19—24; see Reply Br.
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4—10). In this regard, we note that the composition of Appellants’ claim 63
comprises at least one anti-inflammatory active ingredient selected from,
inter alia, licochalocone A, hamamelis, panthenol, and chamomile extract
(see App. Br. 36). Hahn discloses a composition comprising at least one of
the foregoing ingredients (see FF 2-4). Therefore, we are not persuaded by
Appellants’ contentions relating to Shibata’s disclosure of a Glycyrrhiza
inflata extract (App. Br. 13—15).
For the foregoing reasons, we are not persuaded by Appellants’
contention that Examiner’s rejection is based in hindsight (App. Br. 13).
Further, a reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Therefore, we are not persuaded by Appellants’ contention that it “is not
seen that HAHN teaches that ‘chamomile and licorice extract are preferred
anti-inflammatory agents’” (Reply Br. 6).
Claim 67:
Appellants’ claim 67 ultimately depends from and further limits
Appellants’ claim 63 to require that the “preparation comprises ... at least
. . . hamamelis, panthenol and an extract of Glycyrrhiza inflata'1'’ (see App.
Br. 36 (emphasis added)).
As discussed above, Hahn discloses a composition that may comprise,
inter alia, an anti-inflammatory, witch hazel (hamamelis), and alcohol (i.e.,
panthenol) (FF 3—4). Shibata discloses that Licochalcone A, extracted from
the root of Glycyrrhiza inflata exhibits anti-inflammatory activity (FF 6).
Regardless of whether or not Shibata discloses “that Glycyrrhiza inflata is a
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preferred species of licorice for producing an anti-inflammatory extract,”
Appellants acknowledge that Shibata discloses that licochalcone A,
extracted from Glycyrrhiza inflata exhibits “anti-inflammatory action” (App.
Br. 13 ; see FF 6). Therefore, notwithstanding Appellants’ contention to the
contrary, we find no error in Examiner’s conclusion that a person of ordinary
skill in this art would have found it prima facie obvious to include an extract
of Glycyrrhiza inflata that comprises licochalcone A as an anti-inflammatory
component of Hahn’s composition (see e.g., Ans. 8; cf. App. Br. 14—15).
Further, as discussed above, we find no error in Examiner’s
conclusion that a person of ordinary skill in this art would found it prima
facie obvious to formulate and apply a composition comprising an anti­
inflammatory, such as that suggested by the combination of Hahn, Shibata,
Nagatani, Wenninger, Millikan, Demko, and Bara, to inflamed facial tissue
(see Ans. 6). Therefore, we are not persuaded by Appellants’ contention that
a person of ordinary skill in this art would not have included an anti­
inflammatory such as an extract of Glycyrrhiza inflata that comprises
licochalcone A as an anti-inflammatory component of a composition useful
in treating inflamed facial tissue (see App. Br. 14—15).
For the foregoing reasons, we are not persuaded by Appellants’
contention that
[i]t is not seen that any of HAHN, SHIBATA, NAGATANI,
WENNINGER, MILLIKAN, DEMKO and BARA teaches or
suggests the use of at least three anti-inflammatory agents, let
alone a combination of hamamelis, panthenol and an[d] (any)
extract of Glycyrrhiza inflata, in preparations of the type which
is recited in the present claims.
(App. Br. 28; see also Reply Br. 5 (Hahn only exemplifies panthenol as a
component of a hair conditioner/scalp protectant).)
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Claim 69:
Appellants’ claim 69 depends from and further limits Appellants’
claim 63 to require that “the red light-filtering dye comprises at least one
green pigment” (App. Br. 37).
We recognize, but are not persuaded by Appellants’ contention that
Nagatani “discourages the use of conventional pigments for the treatment of
conditions which involve a reddish face or acne spots” and “recommends the
use of pigments which afford the desired color not by absorbing a color
which is complementary to the desired color but by providing the desired
color by interference and in particular, by means of a metal oxide plate
powder having a hollow structure” (App. Br. 28—29). As Examiner explains,
Nagatani does not discourage the use of a particular pigment, but, instead,
“deals with the base material which improves” the appearance of the
pigment on skin (see Ans. 17; FF 8; cf. Reply Br. 8—9). Appellants fail to
provide persuasive evidence or argument to support a contrary conclusion.
Therefore, for the reasons set forth above, we are not persuaded by
Appellants’ contention that “[i]t is not seen that any of HAHN, SHIBATA,
NAGATANI, WENNINGER, MILLIKAN, DEMKO and BARA teaches or
suggests the use of a green pigment in preparations of the type which is
recited in the present claims” (App. Br. 28). In addition, as discussed above,
while Hahn exemplifies the use of panthenol as a hair conditioner/scalp
protectant, Hahn’s disclosure does not limit the scope of a composition
comprising an alcohol, such as panthenol, solely to Hahn’s exemplified
embodiments. In re Lamberti, 545 F.2d at 750. Thus, for the reasons set
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forth above, we are not persuaded by Appellants’ contention that, because
Hahn’s exemplified composition comprising panthenol is a hair
conditioner/scalp protectant, “the additional presence of a red light-filtering
dye/green pigment (or even any dye/pigment) would at best be of no
importance and would likely be even undesirable due to the possible adverse
effect o[f] the color [on] the hair treated therewith” (Reply Br. 5).
Claim 76:
Appellants’ claim 76 depends from and further limits Appellants’
claim 63 to require “the preparation further comprise[] at least one blue
pigment” (App. Br. 38).
For the reasons set forth by Examiner, we are not persuaded by
Appellants’ contention that “Examiner does not appear to have explained
what would allegedly have motivated one of ordinary skill in the art to use a
green pigment in combination with a white pigment and a blue pigment in a
topical formulation according to HAHN” (App. Br. 31; cf. Ans. 5—7).
Claim 77:
Appellants’ claim 77 depends from and further limits Appellants’
claim 76 to require that the “weight ratio of the at least one blue pigment to
the at least one red light-filtering dye is from 1:1 to 1:100” (App. Br. 38).
For the reasons discussed above, we are not persuaded by Appellants’
intimation that Nagatani teaches away from its combination with Hahn,
Shibata, Wenninger, Millikan, Demko, and Bara (see App. Br. 29-30).
Hahn and Nagatani both disclose compositions that comprise more than one
pigment (see FF 4 and 8). In addition, Examiner explains why a person of
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ordinary skill in this art would have combined more than one pigment and
that a person of ordinary skill in this art would have utilized routine
optimization to the pigment concentration and/or ratio, relative to each other,
to achieve the desired result (see e.g., Ans. 5—8). Therefore, we are not
persuaded by Appellants’ contention that Nagatani’s “mention[] [of] a
pigment of a green color and a pigment of a blue color only as alternatives”
teaches away from Appellants’ claimed invention or that the ratio set forth in
Appellants’ claim 77 is nonobvious (see App. Br. 29—30). As Examiner
explains, “Examiner’s motivation does not have to be [the] same as
[Appellants’]” (see Ans. 19—21; see also id. at 5—8).
Hahn, Shibata, Nagatani, Wenninger, Millikan, Demko, Bara, and
Tsukiyama:
Claims 65, 66, and 68:
Appellants’ claim 65 ultimately depends from and further limits
Appellants’ claim 63 to require the preparation to comprise an extract of
Glycyrrhiza inflata wherein the extract of Glycyrrhiza inflata comprises at
least one aqueous extract (see Appellants’ claim 65). Likewise, claims 66
and 68 also require the cosmetic or dermatological preparation to comprise
at least one aqueous extract of Glycyrrhiza inflata.
Based on the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, Bara, and Tsukiyama, Examiner concludes that, at the
time Appellants’ invention was made, it would have been prima facie
obvious to prepare a composition as suggested by the combination of Hahn,
Shibata, Nagatani, Wenninger, Millikan, Demko, and Bara, which includes
an extract of Glycyrrhiza inflata, such as licochalcone A, wherein the extract
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of Glycyrrhiza inflata comprises at least one aqueous extract (Ans. 10-11).
According to Examiner, Tsukiuama discloses that Licochalcone A is isolated
from Glycyrrhiza inflata by an extraction that comprises at least one aqueous
extract (see Ans. 21—22, citing Tsukiuama 1226—1227). In this regard,
Examiner explains that “although the water extract is later extracted with
ethanol, in order to remove the ‘active ingredients’ from the roots, it first
was extracted with water” (Ans. 22). We are not persuaded.
Notwithstanding Examiner’s assertion to the contrary, Tsukiuama
does not further process the water extract with alcohol; instead, Tsukiuama
discloses that Glycyrrhiza inflata roots are extracted with water to remove
the water-soluble fractions from the roots, wherein the roots are then dried
and the dried roots are extracted with ethanol to obtain the licochalcone A
extract (FF 14; cf Ans. 10-11 and 21—22; see App. Br. 33).
Claim 85:
Appellants’ claim 85 depends ultimately from and further limits the
preparation of Appellants’ claim 82 to require from 0.01 % to 5 % by weight
of at least one extract of Glycyrrhiza inflata, at least 1 % by weight of
hamamelis and at least 1 % by weight of panthenol. Examiner’s statement
of the rejection fails to address the merits of Appellants’ claim 85 (see Final
Act. 20—21; Ans. 10—11 and 21-22). Therefore, we are compelled to reverse
the rejection of claim 85.
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CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness with regard to claims 63, 67, 69, 76, and 77. The
rejection of claims 63, 67, 69, 76, and 77 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, and Bara is affirmed. Claims 64, 73—75, and 79-81 are
not separately argued and fall with claim 63. Claims 84, 98, and 99 are not
separately argued and fall with claim 67. Claims 70-72 are not separately
argued and fall with claim 69. Claims 94—97 are not separately argued and
fall with claim 76. Claims 78, 82—84, 86—93, and 100 are not separately
argued and fall with claim 77.
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness with regard to claims 65, 66, 68, and
85. The rejection of claims 65, 66, 68, and 85 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Shibata, Nagatani, Wenninger,
Millikan, Demko, Bara, and Tsukiyama is reversed.
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-IN-PART
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