Ex Parte Meybeck et al

Board of Patent Appeals and Interferences

Jul 17, 2009

10737897 (B.P.A.I. Jul. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAIN MEYBECK and ALAIN ZANVIT
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Appeal 2009-002644
Application 10/737,897
Technology Center 1600
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Decided: 1July 17, 2009
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Before TONI R. SCHEINER, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as provided for in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002644
Application 10/737,897

This is a decision on the appeal from the Patent Examiner’s rejection
of claims 1-3 and 6-20. Jurisdiction for this appeal is under 35 U.S.C. §
6(b). We affirm.
Statement of the Case
According to the Specification, “[w]omen, and even men, currently
have a tendency to want to appear younger for as long as possible, and so
they seek to tone down signs of ageing of the skin, primarily wrinkles and
fine lines.” (Spec. 2: 7-10.) The Specification states “the inventors have
surprisingly discovered that 3-O-acetyl-11-ketoboswellic acid”, which is
constituent of various plants, particularly Boswellia serrata, is useful for
softening expression lines and relaxing the skin (Spec. 4: 21-22).
Claims 1-3 and 6-20 are pending and stand rejected2 under 35 U.S.C.
§ 103(a) as obvious over Eyre (U.S. Pat. No. 6,589,516 B1, Jul. 8, 2003) and
Albert (U.S. Pat. No. 6,022,565, Feb. 8, 2000) (Ans. 4).
Claims 1 and 14 are representative and read as follows:
1. A method for smoothing out or softening expression lines on
the skin of a person in need thereof, comprising applying to the
expression lines a skin relaxing effective amount of 3-O-acetyl-
11-ketoboswellic acid.

14. The method according to [claim 1, wherein the composition
further comprises a manganese salt], wherein the manganese
salt is manganese gluconate.

2 Claims 1-3, 6-12, and 15-20 were rejected in the Final Office Action
(Office Action, June 20, 2007) as anticipated, or in the alternative, as
obvious over Eyre (June 20, 2007), but this rejection was stated in the
Answer to have been withdrawn.
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Application 10/737,897

Statement of the Issue
Claim 1 is to a “method for smoothing out or softening expression
lines on the skin of a person in need thereof” comprising administering an
effective amount of 3-O-acetyl-11-ketoboswellic acid. The Examiner found
that Eyre describes Boswellia serrata extract which would have been
reasonably expected to comprise effective amounts of 3-O-acetyl-11-
ketoboswellic acid as in the claim (Ans. 5). The Examiner also found that
applying the extract to irritated skin as taught by Eyre would have been
reasonably expected by person of ordinary skill in the art to be effective for
the claimed purpose of “smoothening” or “softening” expression lines (id.).
As to claim 14 which is to the composition of claim 1 further
comprising “manganese gluconate”, the Examiner found that it would have
been obvious to have combined the Boswellia serrata extract with the
gluconate salt as it was known present in a composition useful for the same
purpose (id. at 7).
Appellants contend that Eyre does not “state that 3-O-acetyl-11-
ketoboswellic acid could or should be used to smooth out or soften
expression lines.” (App. Br. 6.) Citing Jansen v. Rexall Sundown Inc., 342
F.3d 1329 (Fed. Cir. 2003), Appellants contend that claims drawn to
“methods of treatment to be performed on those in need of treatment”,
as in claim 1, are properly interpreted to “require the specific intent to
effect such treatment” (App. Br. 5). As the specific intent to smooth out or
soften expression lines is lacking in the Eyre patent, Appellants conclude
that “it cannot teach or suggest the claimed method (id. at 6).
Therefore, the issue in this rejection is whether the intent to administer
3-O-acetyl-11-ketoboswellic acid for smoothening out or softening
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Application 10/737,897

expression lines as recited in claim 1 distinguishes Eyre’s method of
administering the same composition to skin, but for a different purpose and
with a different intent.
Findings of Fact
The Eyre patent
1. According to Eyre:
It has long been known that extracts of the Boswellia family of
plants including Boswellia Serrata can produce a soothing
effect to irritated skin and that this activity is due to the
terpenoid compounds grouped under the general name
boswellic acids. The different boswellic acids share the same
basic pentacyclic triterpene (steroid-like) structure but differ in
their side groupings.
(Col. 1, ll. 16-23.)
2. Eyre describes a composition for use on the skin or hair comprising an
extract from Boswellia plant, or a boswellic acid or derivative of it (col. 1, ll.
63-67).
3. The composition can contain from 0.005% to 50% by weight of the
extract or acid (col. 2, ll. 45-50).
4. Eyre teaches:
A typical extract comprising Boswellia Serrata gum resin
will comprise greater than 50% by weight boswellic acids and
often more than 60% by weight boswellic acids.
A typical extract of a Boswellia plant suitable for use
herein comprises a mixture of boswellic acids comprising at
least one of 3a-hydroxyurs-12-ene-24-oic acid, 3a-acetoxyurs-
12-ene-24-oic acid, 3a-hydroxyurs-12-ene-11-keto-24-oic acid
and 3a-hydroxyurs-9,12-dien-24-oic acid.
(Col. 3, ll. 1-9.)
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Application 10/737,897

5. Eyre teaches that its composition can be applied to the skin (the “term
skin . . . means any outer surface of the body”) and describes an “Aftersun
Cream Gelee” and “Acne Mininizing [sic] Night Cream” (col. 5, ll. 32-42;
col. 6, ll. 13-14 & 50-55).
6. Eyre does not teach that its composition can be used “for smoothing out
or softening expression lines on the skin of a person in need of.” See instant
claim 1.

The Albert patent
7. Albert describes applying a topical composition comprising manganese
gluconate to treat skin disorders (col. 6, l. 35; Ans. 6).

Specification
8. The Specification acknowledges that 3-O-acetyl-11-ketoboswellic acid is
present in commercially available Boswellia extracts (7:20 to 8:4).

Analysis
Claim 1 recites that the 3-O-acetyl-11-ketoboswellic acid is to be
administered “for smoothening out or softening expression lines on the skin
of a person in need thereof.” In other words, the boswellic acid is applied to
a person’s skin which has been recognized as needing smoothening or
softening. The Examiner’s position is that since effective amounts of 3-O-
acetyl-11-ketoboswellic acid would have been expected to be present in
Eyre’s Boswellia serrata extract, when applied to irritated skin as taught by
Eyre, it would have inherently smoothened and softened expression lines as
recited in claim 1, albeit unrecognized by Eyre.
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Application 10/737,897

It is hornbook law that merely recognizing something that was not
known before is insufficient to render an old process again patentable. In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir. 2002). See also In
re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990); In re Omeprazole Patent
Litig., 483 F.3d 1364, 1373 (Fed. Cir. 2007). The “in need thereof” step in
claim 1 does not distinguish the claimed method over Eyre because merely
recognizing that the recited boswellic acid smoothens and softens expression
lines on the skin does not change how the process is performed. The only
difference is that Appellants have recognized an inherent result of an old
process which was not known before.
This conclusion is consistent with the line of cases in which
anticipation was found based on inherency.
[A] prior art reference may anticipate when the claim limitation
or limitations not expressly found in that reference are
nonetheless inherent in it. . . . 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.
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999).
In MEHL, the patentee claimed a “method of hair depilation” utilizing
steps which had been described in a prior art publication. The prior art
method did not perform the steps for the purpose of hair depilation, but it
was determined that hair depilation would have been a necessary, albeit
unrecognized and inherent, consequence of carrying out the method. MEHL,
192 F.3d at 1366. Although the claim preamble expressly required the
method to be performed for the purpose of hair depilation, the court did not
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find it necessary that the article’s authors “appreciate the results” of their
process to constitute an anticipation of the claimed process (id.).
Similarly, in Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1378-79 (Fed. Cir. 2005), 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.” Perricone, 432 F.3d at 1377.
Appellants contend that Jansen v. Rexall Sundown Inc., 342 F.3d 1329
(Fed. Cir. 2003) demands a different result. In Jansen, the claims were
directed to methods of treating or preventing macrocytic-megaloblastic
anemia comprising administering effective amounts of folic acid and vitamin
B12 “to a human in need thereof.” Jansen at 1333. The Federal Circuit
stated that the claim must be interpreted to require the method be practiced
with the intent to achieve the objective stated in the preamble. Id. at 1333.
“The preamble is therefore not merely a statement of effect that may or may
not be desired or appreciated. Rather, it is a statement of the intentional
purpose for which the method must be performed.” Id.
The reason why Jansen does not require a different result has already
been addressed in Ex parte Batteux, Appeal No. 2007-0622 (BPAI, Mar. 27,
2007, Informative Opinion).
Jansen was an infringement case, requiring the court to
construe the subject claim “so as to sustain [its] validity, if
possible.” Whittaker Corp. v. UNR Indus., 911 F.2d 709,712, 15
USPQ2d 1742, 1743 (Fed. Cir. 1990) (citing ACS Hosp. Sys.,
Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929,
932 (Fed. Cir. 1984). In contrast, during prosecution, a claim
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must be given its broadest reasonable interpretation. Unlike the
case here, in Jansen, the patentee was arguing a broad
construction to establish infringement. 342 F.3d at 1331, 68
USPQ2d at 1156. However, the court “strictly construed” the
claim against the inventor, in view of statements made during
prosecution. Id. at 1334, 68 USPQ2d at 1158.
Appellants also argue that the Eyre patent does not inherently teach or
suggest the claimed methods.
Applying compositions to reduce redness of skin or to calm
skin would not necessarily, each and every time, result in
smoothing out or softening of lines on skin for at least the
reason that not all skin in need of calming or reduction in
redness is also in need of smoothing out of expression lines.
(App. Br. 6.)
This argument does not persuade us the Examiner erred. According to
the Specification, “expression lines” are “produced by the stress exerted on
the skin by facial muscles which produce facial expression” (Spec. 3:6-8).
Depending on the shape of the face, the frequency of
expressions and the possible existence of any tics, they can
appear in childhood. Age, along with certain environmental
factors such as exposure to the sun, do not have any affect on
their genesis but can make them deeper and render them
permanent.
(Id. at 8-13.) It is therefore reasonable to say that all skin is susceptible to
expression lines. Given this susceptibility, it is certain that Eyre’s teaching
would have instructed some people in need of smoothing or softening of
expression lines to apply an extract comprising 3-O-acetyl-11-ketoboswellic
acid to their skin.
In Perricone, 432 F.3d at 1379, a claim to a method of preventing
sunburn damage by topically applying a composition to exposed skin was
found anticipated by a disclosure of a topical skin cream “because all skin
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surfaces are susceptible to sunburn damage.” Anticipation was based the
skin’s susceptibility to sunburn, not the requirement that, each time the prior
art topical cream was applied to exposed skin, sunburn was actually
prevented. Likewise, we do not find it necessary that expression lines are
reduced in every case. It is enough that skin is highly susceptible to it,
making it certain that some people following Eyre’s guidance would have
carried out the claimed method.
For the foregoing reasons, we affirm the rejection of claim 1. As
there is no difference between the steps recited in claim 1 and Eyre’s
method, we find that claim 1 is anticipated by the Eyre patent – not obvious
as indicated by the Examiner. However, because Appellants addressed
claim 1 alternatively as anticipated by Eyre (App. Br. 3) and because
anticipation is the epitome of obviousness (see In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974)), we do not designate this as a new ground of
rejection.
Claims 2, 3, 6-13, and 15-20 fall with claim 1 because separate
reasons for their patentability were not provided. 37 C.F.R. §
41.37(c)(1)(vii). However, we affirm their rejection under the § 103
grounds designated by the Examiner.
As for claim 14 which is drawn to the composition of claim 1 and
manganese gluconate, Appellants have not challenged the Examiner’s
findings nor identified any defect in the Examiner’s reasoning. Therefore,
we affirm this rejection.
Conclusion of Law
The intent to administer 3-O-acetyl-11-ketoboswellic acid for
smoothening out or softening expression lines as recited in claim 1 does not
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distinguish the claimed method from Eyre’s method of administering the
same composition to skin, but for a different purpose and with a different
intent.
Summary
The rejection of claims 1-3 and 6-20 is affirmed.

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

Ssc:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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