Ex Parte Pappas et al

Board of Patent Appeals and Interferences

Nov 21, 2011

12351942 (B.P.A.I. Nov. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte APOSTOLOS PAPPAS, MIRI SEIBERG
and
DRUIE E. CAVENDER

____________

Appeal 2011-009768
Application 12/351,942
Technology Center 1600
____________

Before DONALD E. ADAMS, TONI R. SCHEINER, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 1-17. We have
jurisdiction under 35 U.S.C. § 6(b).

1
The subject matter on Appeal is related to Appeal 2010-011156
(Application 12/125,481), now abandoned, decision affirming the rejection
of claims 1, 2, 7, and 6-9 under 35 U.S.C. § 103(a) as unpatentable over
Hunter entered February 8, 2011.
Appeal 2011-009768
Application 12/351,942

2

STATEMENT OF THE CASE
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hunter.
2
The claims are directed to a method for treating the
appearance of a depressed facial skin defect or a volume loss of the skin in a
mammalian subject (claims 1-9), and a method of facial contouring in a
mammalian subject (claims 10-17). The claims were not separately argued
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 10
is representative and is reproduced in the “CLAIMS APPENDIX” of
Appellants’ Brief (App. Br. 12).
ISSUE
Does the preponderance of evidence on this record support a
conclusion that, at the time of Appellants’ claimed invention, it would have
been prima facie obvious to a person of ordinary skill in the art to utilize a
peroxisome proliferator-activated receptor-gamma agonist in a facial
contouring method? If so, did Appellants rebut the Examiner’s obviousness
determination with unexpected results?
FACTUAL FINDINGS (“FF”)
FF 1. Hunter suggests a facial contouring method to treat, inter alia, facial
scarring (e.g., acne scars) and facial aging, such as sunken cheeks and facial
lines (e.g., wrinkles) (Hunter 283: ¶ [2293]; Ans. 4).
FF 2. Hunter’s method involves “the subcutaneous delivery of a tissue
implant and an anti-fibrotic agent to depressed facial skin areas, such as acne
scar depressions” (Ans. 4-5 and 6; see also Hunter 283: ¶¶ [0063] and
[2293]-[2294]).

2
Hunter et al., US 2005/0208095 A1, published September 22, 2005.
Appeal 2011-009768
Application 12/351,942

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FF 3. Hunter suggests the use of a peroxisome proliferator-activated
receptor gamma (PPAR-γ) agonist insulin sensitizer, such as rosiglitazone
maleate, as the anti-fibrotic agent (Hunter 40: ¶ [304]; Ans. 4-5 and 6; App.
Br. 5 and 6).
FF 4. “Rosiglitazone, but neither fenofibrate, nor mytomycin C, potently
and selectively enhances differentiation of facial preadipocytes” (Pappas
Declaration ¶ [5] (emphasis removed)).
ANALYSIS
Appellants concede that Hunter suggests the use of a PPAR-γ agonist,
including rosiglitazone maleate (App. Br. 5; see also FF 3). Nevertheless,
Appellants contend that “Hunter fails to specifically teach that these
particular compositions, when subcutaneously injected, would be effective
for . . . facial contouring” (id.). We are not persuaded. Hunter suggests a
facial contouring method (FF 1) that makes use of a composition comprising
a tissue implant (FF 2) and a PPAR-γ agonist (FF 3).
Appellants contend that the Pappas Declaration
3
supports a conclusion
that while “[b]oth Fenofibrate and mitomycin C are disclosed in the Hunter
reference as being allegedly effective anti-fibrotic agents. . ., neither of these
compounds was effective in enhancing . . . cellular differentiation” (App. Br.
6; see also App. Br. 7 and FF 4). We are not persuaded. Claim 10 does not
require an agent that enhances cellular differentiation. In addition, while
Appellants’ comparative evidence is limited to the use of rosiglitazone,
claim 10 is not limited to a particular PPAR-γ agonist. In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978) (Evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to

3
Pappas Declaration, executed March 26, 2010.
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Application 12/351,942

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support). Accordingly, we are not persuaded by Appellants’ contention that
“not all anti-fibrotic agents can deliver the claimed desired effect” (App. Br.
8). In addition, we are not persuaded that the evidence of record supports a
conclusion that all PPAR-γ agonists will exhibit the ability to enhance
cellular differentiation.
Further, Hunter describes subcutaneous delivery of a tissue implant
and anti-fibrotic agent to facial skin areas (FF 1-2), and suggests a PPAR-γ
agonist as the anti-fibrotic agent (FF 3). The appreciation of the result of
carrying out the same process step suggested in the prior art does not
distinguish the claimed step from the prior art step. There is no
manipulative difference in how the process is carried out. In both the
claimed method and Hunter’s, a PPAR-γ agonist, such as rosiglitazone is
delivered to the area of the facial skin defect. The same process step is
accomplished and logically the same result would occur.
Appellants intimate that the choice of rosiglitazone would not have
been obvious because Hunter lists it as one of many suitable anti-fibrotic
agents (App. Br. 5-6). The length of Hunter’s list of anti-fibrotic agents
does not disparage Hunter’s teaching that each is useful in treating any of the
conditions described in the publication. “Disclos[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). Each, individually, is taught by Hunter as being an
anti-fibrotic agent capable of inhibiting the production of excessive fibrotic
tissue. Any one member, including a PPAR-γ agonist, such as rosiglitazone,
would therefore have been recognized as useful in treating facial scarring
and the other facial treatments described in the Hunter publication.
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Application 12/351,942

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CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
that, at the time of Appellants’ claimed invention, it would have been prima
facie obvious to a person of ordinary skill in the art to utilize a peroxisome
proliferator-activated receptor-gamma agonist in a facial contouring method.
Appellants’ secondary evidence fails to rebut the Examiner’s obviousness
determination. The rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Hunter is affirmed. Because they were not separately
argued claims 1-9 and 11-17 fall with claim 10.
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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