Ex Parte Mielke et al

Patent Trial and Appeal Board

Dec 9, 2016

10935246 (P.T.A.B. Dec. 9, 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.
10/935,246 09/08/2004 Heiko Mielke 3321-P25912 2076
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
12/13/2016 EXAMINER
SASAN, ARADHANA
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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 HEIKO MIELKE, SOREN JASPERS, GUNHILD HAMER,
CHRISTOPHER MUMMERT, JENS SCHULZ, STEFAN GALLINAT,
KIRSTEN VENZKE, and FRANK SCHWANKE
Appeal 2015-002755
Application 10/935,246
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 84—117 (Final
Act. 1). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as “Beiersdorf AG” (App.
Br. 3).
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Application 10/935,246
STATEMENT OF THE CASE
Appellants disclose that their
invention relates to cosmetic or dermatological preparations
containing active substances for the care and protection of the
skin, in particular sensitive skin and very particularly skin aged
or aging by intrinsic and/or extrinsic factors and the use of such
active substances and combinations of such active substances in
the field of cosmetic and dermatological skin care.
(Spec. 1.)
Claims 84, 92, 98, and 99 are representative and reproduced below:
84. A dermatological or cosmetic O/W emulsion, wherein the
emulsion comprises one or more bioquinones and a soy extract
that comprises one or more isoflavonoids.
92. The emulsion of claim 84, wherein the soy extract further
comprises from 5 % to 20 % by weight of saponins, based on a
total weight of the soy extract.
98. The emulsion of claim 84, wherein the emulsion is a
foaming emulsion.
99. The emulsion of claim 84, wherein the emulsion has a pH
of from 5.0 to 7.5.
(App. Br. 25-27.)
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The claims stand rejected as follows:
Claims 84—91, 96, and 97 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gervasio-Nugent2 and Allec.3
Claims 92—95, 100—109, 112—114, and 117 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Gervasio-
Nugent, Allec, and Hey da.4
Claim 99 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, and Frangois.5
Claim 98 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, and Roulier.6
Claims 110 and 115 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gervasio-Nugent, Allec, Heyda, and
Roulier.
Claims 111 and 116 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gervasio-Nugent, Allec, Heyda, and
Frangois.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
2 Gervasio-Nugent et al., WO 2004/000242 Al, published Dec. 31, 2003.
3 Allec et al., US 2002/0064540 Al, published May 30, 2002.
4 Alessandro Heyda, EP 1 321 149 Al, published June 25, 2003.
5 Frangois et al., US 5,654,293, issued Aug. 5, 1997.
6 Roulier et al., US 6,251,954 Bl, issued June 26, 2001.
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FACTUAL FINDINGS (FF)
FF 1. Appellants disclose that “[ujbiquinones . . . represent the most
widespread and thus most investigated bioquinones,” wherein “[i]n the case
of most mammals, including humans, Q10 predominates” (Spec. 3—4).
FF 2. Appellants disclose that coenzyme Q10 is the preferred bioquinone
for their invention (Spec. 5).
FF 3. Appellants disclose that “[s]ome of the better known isoflavones
are[, inter alia,] daidze'in . . . genistein . . . [and] biochanin A,” wherein
“preference is given to genistein” (Spec. 5—7).
FF 4. Examiner finds that Gervasio-Nugent discloses “topical cosmetic
compositions including emulsions ... of the oil-in-water type” (Final Act. 3,
citing Gervasio-Nugent 7: 30—34 and 19: 7—9).
FF 5. Gervasio-Nugent discloses that “for the purposes of [Gervasio-
Nugent’s] invention a cosmetic agent may preferably be selected from one
or more of: anti-ageing agents, anti-wrinkle agents, antioxidants, anti­
scarring agents, phytoestrogens, isoflavones, coumarins, lip balms and
antiseptic anti-acne agents” (Gervasio-Nugent 4: 7—10).
FF 6. Gervasio-Nugent discloses that “[a]nti-ageing agents include agents
for treating wrinkles or preventing development thereof,” wherein,
“[ejxamples of antiwrinkle and anti-skin atrophy actives include,” inter alia,
ubiquinones, particularly coenzymes Q9 and Q10, soya extracts, and
isoflavones, such as “one or more [selected from] the list consisting of[,
inter alia,] genistein, daidzein, [and] biochanin A” (Gervasio-Nugent 8: 4 —
9:31; see generally Ans. 3—4).
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FF 7. Gervasio-Nugent exemplifies compositions comprising oil, water,
genistein and coenzyme Q10 (Gervasio-Nugent 21: Example 2 and 27:
Example 11; Ans. 3).
FF 8. Gervasio-Nugent discloses that “[t]he compositions of [Gervasio-
Nugent’s] invention can optionally contain materials which are
conventionally used in cosmetic compositions^ such as,] soybean saponins”
(Gervasio-Nugent 19: 30-34).
FF 9. Gervasio-Nugent discloses cosmetic compositions that comprise
sebum stimulators and discloses that “[t]hese skin care actives are especially
useful for post-menopausal women who are sebum deficient” (Gervasio-
Nugent 15: 6—7).
FF 10. Examiner finds that Gervasio-Nugent “does not expressly teach that
the soy extract comprises one or more isoflavonoids,” and relies on Allec to
disclose oil-in-water emulsions and exemplify “an emulsion in cream form”
that comprises an isoflavone-rich extract of soybean (Final Act. 4, citing
Allec 1131 and 41).
FF 11. Allec discloses that “the signs of ageing of the skin arise not only
from chronological causes . . ., but also are caused by . . . hormonal
deficiencies arising during menopause” (Allec 14).
FF 12. Examiner finds that while the combination of Gervasio-Nugent and
Allec suggests a composition comprising soybean saponins, the combination
does “not expressly teach the percent by weight of saponins in the
composition” (Final Act. 10).
FF 13. Heyda discloses cosmetic compositions containing soy isoflavones
(Heyda Abstract and 11; see Final Act. 10).
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FF 14. Heyda discloses
that oriental women, whose diet is rich in soy, . . . infrequently
suffer from the typical post-menopausal symptoms, especially
nocturnal hot flushes, has led to the discovery that the
isoflavones contained in soy, namely genistein and daidzein . . .
act as bland agonists of the oestrogen receptor.
Supplementation of the diet with soy derivatives or
administration of the phytoestrogens deriving therefrom
consequently represents a promising alternative to oestrogen
administration.
(Heyda 13.)
FF 15. Heyda discloses “[s]oy extracts with an isoflavone and saponin
content of 5 to 90% each” (Heyda 19; Ans. 10).
FF 16. Examiner finds that the combination of Gervasio-Nugent and Allec
fails to disclose “a foaming emulsion” and relies on Roulier to disclose “an
emulsion which has the appearance of a foam” (Ans. 16, citing Roulier 1:
53-56 and 2: 27-36 and 47-52).
FF 17. Examiner finds that the combination of Gervasio-Nugent and Allec
fails to disclose an “emulsion [that] has a pH of from 5.0 to 7.5” and relies
on Frangois to disclose “topical oil-in-water emulsions characterized by a
pH above 2.5 and below 6” (Ans. 17, citing Frangois Abstract and claim 1).
ANALYSIS
The rejection over the combination of Gervasio-Nugent and Allec'.
Based on the combination of Gervasio-Nugent and Allec, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to make a cosmetic emulsion with coenzyme
Q10, genistein and [a soy extract that comprises at least one] isoflavone[]”
(Final Act. 4).
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We are not persuaded by Appellants’ contention that Gervasio-Nugent
“encompasses thousands, if not millions ... of different topical cosmetic
compositions” and that ‘“soya extracts’ mentioned in [Gervasio-Nugent] are
buried in [a] laundry list of exemplary anti-ageing agents” (App. Br. 6—8 and
14). “Disclosure of] a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Nevertheless, notwithstanding Appellants’ contention to the contrary,
the combination of Gervasio-Nugent and Allec suggests a composition
comprising coenzyme Q10 and isoflavone, such as an isoflavone from an
isoflavone-rich extract of soybean (FF 4—7 and 10; see also Ans. 3 4).
Therefore, we are not persuaded by Appellants’ contention that “the anti­
ageing agents which are preferred according to [Gervasio-Nugent] are
ubiquinone, enzyme Q-10, alpha lipoic acid, lycopene and kinetin . . ., i.e.,
substances that [are] not related at all to soya extracts” (App. Br. 8; see also
id. at 9 (soya extracts are merely one of hundreds of compounds that may be
included in Gervasio-Nugent’s composition)). 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’ contentions regarding preferred and/or exemplified components
of the composition suggested by the combination of Gervasio-Nugent and
Allec (see App. Br. 8—10; Reply Br. 2—3).
For the foregoing reasons, we are not persuaded by Appellants’
contentions regarding the presence or absence of genistein together with an
isoflavone-rich extract of soybean (see App. Br. 9—12; Reply Br. 2—3).
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Gervasio-Nugent discloses a composition comprising “actives including]
those selected from one or more of the list consisting of,” inter alia,
ubiquinones, particularly coenzymes Q9 and Q10, soya extracts, and
isoflavones (FF 6). Allec discloses soy extracts that are rich in isoflavones
(FF 10). Thus, a person of ordinary skill in this art would have included
Allec’s isoflavone rich soy extract to Gervasio-Nugent, because Gervasio-
Nugent suggests a composition comprising isoflavone and soy extract (FF 6;
see FF 4—8; cf Reply Br. 2 (“the relevant question here is whether in view of
the disclosure of ALLEC one o[f] ordinary skill in the art would be
prompted to add an isoflavone-rich extract of soybean to” a composition
suggested by Gervasio-Nugent); see App. Br. 11—13).
Examiner relies on Allec to disclose that soybean extract, as disclosed
by Gervasio-Nugent, is rich in isoflavonoids (FF 10). Therefore, we are not
persuaded by Appellants’ contentions regarding optional components that
may be present in Allec’s composition (App. Br. 14).
For the foregoing reasons we are not persuaded by Appellants’
contention that “there is no apparent reason” for a person of ordinary skill in
this art to combine Gervasio-Nugent and Allec (App. Br. 15; see Reply Br.
2-3)
The rejection over the combination of Gervasio-Nugent, Allec, and Hey da:
Based on the combination of Gervasio-Nugent, Allec, and Heyda,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious to prepare compositions as suggested
by the combination of Gervasio-Nugent and Allec that comprise “soy
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extracts with an isoflavone[] and saponin content of 5 to 90% each, as taught
by Heyda” (Final Act. 10).
Gervasio-Nugent expressly discloses that soybean saponins are
conventionally used in cosmetic compositions (FF 8). Allec discloses that
soybean extract, as disclosed by Gervasio-Nugent, is rich in isoflavonoids
and comprises saponins (FF 6, 10, and 12). Heyda discloses a cosmetic
composition comprising soy isoflavones (FF 13). Therefore, we are not
persuaded by Appellants’ contention that “there is clearly no apparent reason
for one of ordinary skill in the art to pay particular attention to the presence
of soybean saponins, let alone the concentration thereof, in a cosmetic
composition according to Gervasio[-Nugent]” (App. Br. 16; see also Reply
Br. 4 (“It is not seen that HEYDA could make it any clearer that the
compositions disclosed therein are not at all suitable for a cosmetic or
dermatological application”); cf. FF 13).
Gervasio-Nugent, Allec, and Heyda all discuss “the relieffl of
menopausal sylmptomsl,” therefore, we are not persuaded by Appellants’
contention that the references are unrelated (App. Br. 16—17; Reply Br. 3—4
see, e.g., FF 9, 11, and 14). Nevertheless, notwithstanding Appellants’
contentions to the contrary, Heyda discloses that it would have been prima
facie obvious to include soy extract, as suggested by Gervasio-Nugent,
which Allec discloses is rich in isoflavones, in a cosmetic composition as
suggested by the combination of Gervasio-Nugent, Allec, and Heyda (see FF
13—14; see also FF 4—15; cf. Ap. Br. 16—17; Reply Br. 3—4).
For the foregoing reasons, we are not persuaded by Appellants’
contentions regarding “suitable concentrations of saponins in a cosmetic skin
care composition” relative to a “composition for relieving menopausal
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svlmptomsl” (App. Br. 18; see Reply Br. 3—4). In this regard, we find that
Appellants failed to provide persuasive evidence or argument to support a
conclusion that the saponin concentration disclosed by Heyda would not be
useful in a skin care composition as disclosed by the combination of
Gervasio-Nugent and Allec and/or that such a concentration would not
provide at least some degree of relief from at least one menopausal
symptom.
We are not persuaded by Appellants’ assertion that “it is reasonable to
assume that the isoflavone and saponin[] concentrations of commercial soy
extracts mentioned in . . . HEYDA are simply based on information provided
by the manufacturers of these extractions, i.e., have not independently been
verified by the inventor of HEYDA” (App. Br. 18—19). Appellants failed to
provide persuasive evidence or argument to support a conclusion that
Heyda’s disclosure of “[s]oy extracts with an isoflavone and saponin content
of 5 to 90% each” is not a factual disclosure. In this regard, we are not
persuaded by Appellants’ contention that Setchelfs7 disclosure relating to
commercially available “supplements” is analogous to Heyda’s disclosure
relating specifically to “[s]oy extracts” (see App. Br. 19, citing Setchell
1368S; cf. FF 15).
For the foregoing reasons, we are not persuaded by Appellants’
contentions regarding the replacement of genistein with an “[ijsoflavone-
rich extract of soybean” (App. Br. 20).
7 Setchell et al., Bioavailability of Pure Isoflavones in Healthy Humans and
Analysis of Commercial Soy Isoflavone Supplements, 131 J. Nutr. 1362S-
1375S (2001).
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The rejection over the combination of Gervasio-Nugent, Allec, and Roulier:
Based on the combination of Gervasio-Nugent, Allec, and Roulier,
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 Gervasio-Nugent and Allec, “the emulsion having a
foamy appearance, as taught by Roulier” (Final Act. 16).
We recognize, but are not persuaded by, Appellants’ contention that
“ROULIER relates to ‘aerated’ compositions” and, therefore, “[i]t is not
seen that [Gervasio-Nugent] teaches or suggests that the compositions
disclosed therein should be present in ‘aerated’ form and for this reason
alone, there is no motivation for one of ordinary skill in the art to combine
the teachings of [Gervasio-Nugent] and ROULIER” (App. Br. 21). 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 prepare the
composition of Gervasio-Nugent and Allec in the form of a foamy emulsion
by following the guidance provided by Roulier (see Ans. 8—9; FF 16).
We are not persuaded by Appellants’ contention that the combination
of Roulier with Gervasio-Nugent and Allec is based in hindsight (App. Br.
23). To the contrary, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
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The rejection over the combination of Gervasio-Nugent, Allec, and
Frangois\
Based on the combination of Gervasio-Nugent, Allec, and Frangois,
Examiner concludes that at the time Appellants’ invention was made, it
would have been prima facie obvious to formulate the composition
suggested by the combination of Gervasio-Nugent and Allec to have a pH
above 2.5 and below 6 (Final Act. 17). As Examiner explains, “the pH
disclosed by [Frangois] is dermatologically acceptable” (Ans. 9). Thus,
notwithstanding Appellants’ contentions 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 formulate the composition suggested by the
combination of Gervasio-Nugent and Allec with a dermatologically
acceptable pH as disclosed by Frangois (cf. App. Br. 21—23; 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). In this regard, we are not
persuaded by Appellants’ contentions regarding the “most preferred pH
range [disclosed by Frangois]” (App. Br. 23). See Lamberti, 545 F.2d at
750.
The rejection over the combination of Gervasio-Nugent, Allec, Heyda, and
Roulier.
Based on the combination of Gervasio-Nugent, Allec, Heyda, and
Roulier, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious to formulate a composition as
suggested by the combination of Gervasio-Nugent and Allec, that comprises
a “soy extract[] with an isoflavone[] and saponin content of 5 to 90% each,
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as taught by Hey da” and “a foamy appearance, as taught by Roulier” (Final
Act. 18).
Having found no deficiency in the combination of Gervasio-Nugent,
Allec, and Heyda, we are not persuaded by Appellants’ contention that
Roulier “does not cure the deficiencies set forth above” with respect to the
combination of Gervasio-Nugent, Allec, and Heyda (App. Br. 23).
The rejection over the combination of Gervasio-Nugent, Allec, Heyda, and
Frangois\
Based on the combination of Gervasio-Nugent, Allec, Heyda, and
Frangois, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious to formulate a composition as
suggested by the combination of Gervasio-Nugent and Allec, that comprises
a “soy extract[] with an isoflavone[] and saponin content of 5 to 90% each,
as taught by Heyda” and “a pH above 2.5 and below 6, as taught by
Frangois” (Final Act. 19—20).
Having found no deficiency in the combination of Gervasio-Nugent,
Allec, and Heyda, we are not persuaded by Appellants’ contention that
Fran go is “does not cure the deficiencies set forth above” with respect to the
combination of Gervasio-Nugent, Allec, and Heyda (App. Br. 24).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
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The rejection of claim 84 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent and Allec is affirmed. Claims 85—
91, 96, and 97 are not separately argued and fall with claim 84.
The rejection of claim 92 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, and Heyda is affirmed.
Claims 93—95, 100-109, 112—114, and 117 are not separately argued and fall
with claim 92.
The rejection of claim 99 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, and Frangois is affirmed.
The rejection of claim 98 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, and Roulier is affirmed.
The rejection of claim 110 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, Heyda, and Roulier is
affirmed. Claim 115 is not separately argued and falls with claim 110.
The rejection of claim 111 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gervasio-Nugent, Allec, Heyda, and Frangois is
affirmed. Claim 116 is not separately argued and falls with claim 111.
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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