Ex Parte Mani et al

Board of Patent Appeals and Interferences

Nov 10, 2011

10559115 (B.P.A.I. Nov. 10, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte INDU MANI, NIRMALA NAIR, ANISHA PARGAL,
SUBARNA SAHA, NAGALAKSHMI SURENDRA, and SHILPA VORA
__________

Appeal 2011-000127
Application 10/559,115
Technology Center 1600
__________

Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
Claims 1-9 stand rejected and appealed (App. Br. 3). Claim 1, the only
independent claim, is representative and reads as follows:
1. A cosmetic skin lightening composition, comprising 0.1 - 50% by
weight of extracts of plants from the genera Symplocos and Rubia; the
extract of Symplocos being selected from Symplocos recemosa, Symplocos
paniculata, Symplocos cochinchinensis or mixtures thereof; the extract of
Rubia being Rubia cordifolia wherein the extracts are primary skin
lightening agents within the composition.

Grounds of Rejection
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Osumi
1
et al in view of Deckner
2
et al.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-5.

Discussion
ISSUE
The Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to combine the
instant ingredients for their known benefit since each is well
known in the art for the same purpose (e.g., in skin
compositions for skin conditioning) and for the following
reasons. It is well known that it is prima facie obvious to
combine two or more ingredients each of which is taught by the

1
Osumi Kazuhisa et al., JP 2003-055184, published Feb. 26, 2003.
2
Deckner et al., US 5,968,528, issued Oct. 19, 1999.
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prior art to be useful for the same purpose in order to form a
third composition which is useful for the same purpose.

(Ans. 4-5.)

Appellants argue that Osumi does not even remotely describe the use
of vitamin B3 and extracts from the plants of the genus Rubia cordifolia.
Osumi fails to describe the extract of Rubia used in conjunction with
Symplocos extract. (App. Br. 8.) Appellants rely on Tables 1 and 2 of the
Specification for a showing of synergistic results.
The issue is: Does the cited prior art support a rejection of the
claimed invention for obviousness? Does Appellants secondary indicia of
non-obviousness overcome the Examiner’s prima facie case of obviousness?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
This type of motivation has been recognized often by the predecessor
of our reviewing court, which has held that it is prima facie obvious to
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combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the same purpose. In re Susi, 440 F.2d 442, 445 (CCPA 1971);
In re Crockett, 279 F.2d 274, 276-77 (CCPA 1960). The idea of combining
them flows logically from their having been individually taught in the prior
art. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Here the art
recognized skin care properties of each of the described agents would have
provided one of ordinary skill in the art with ample suggestion of their
combination in the composition as claimed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
In KSR, 550 U.S. at 415 the Supreme Court rejected a rigid
application of a teaching-suggestion-motivation test in the obviousness
determination. The Court emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id. at 417. Obviousness is determined
on the basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Finally, obviousness is determined in view of the sum of all of the
relevant teachings in the art, not isolated teachings in the art. See In re
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Kuderna, 426 F.2d 385, 389 (CCPA 1970); see also In re Shuman, 361 F.2d
1008, 1012 (CCPA 1966).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner’s evidence supports a prima facie case of obviousness for
the reasons of record. We provide the following additional comment.
Appellants argue that Osumi fails to describe the extract of Rubia
used in conjunction with Symplocos extract. (App. Br. 8.) Obviousness is
determined in view of the sum of all of the relevant teachings in the art, not
isolated teachings in the art. In the case before us both the composition of
Osumi comprising Symplocos and the composition of Deckner were known
as skin care compositions which may also lighten skin. Deckner discloses
that anti-inflammatory agents for use in skin care compositions include
Manjistha extracted from plants in the genus Rubia, particularly Rubia
cordifolia. (Col. 28, ll. 18-20.) Deckner further states that anti-
inflammatory agents enhance the skin appearance and contribute to a more
uniform and acceptable skin tone or color. (Col. 27, ll. 5-10.)
If a technique such as the inclusion of an anti-inflammatory has been
used to improve a skin care composition, and a person of ordinary skill in
the art would recognize that it would improve similar skin care compositions
in the same way, using the anti-inflammatory would have been obvious
unless its actual application is beyond his or her skill. See KSR, 550 U.S. at
417. “The [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418. Appellants have not
shown that the inclusion of Deckner’s anti-inflammatory in the skin care
composition of Osumi is beyond the skill of one of ordinary skill in the art.
Appellants rely on Tables 1 and 2 of the Specification for a showing
of synergistic results. For the reasons provided in the Answer pages 8-9, we
agree with the Examiner that the Appellants’ evidence of synergy of the
combination of Rubia with Symplocos is inconclusive.
The obviousness rejection is affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s conclusion of obviousness.
Appellants’ secondary evidence supporting patentability does not
overcome the examiner’s prima facie case of obviousness.

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

cdc