Ex Parte Pauly et al

Board of Patent Appeals and Interferences

Mar 3, 2010

10450019 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GILLES PAULY, FLORENCE HENRY,
PHILIPPE MOSER, and ZOUBIDA CHARROUF
__________

Appeal 2010-000230
Application 10/450,019
Technology Center 1600
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Decided: March 3, 2010
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Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 17-26.1 We have jurisdiction under 35
U.S.C. § 6(b).

1 Claims 17-36 are pending, but the Examiner has withdrawn all rejections
as to claims 27-36. (Ans. 3.)
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2
STATEMENT OF THE CASE
Claim 17 is representative of the claims on appeal, and reads as
follows:
17. A composition selected from the group consisting of cosmetic
compositions and dermapharmaceutical compositions comprising: a mixture
containing native proteins from the plant Argania spinosa wherein the native
proteins have a molecular weight of at least about 10,000 Da.

The Examiner relies on the following evidence:
Fort FR2756183 A1 May 29, 1998

L.L. Fort et al., Combination of Oil and Peptides of Argan Useful for the
Treatment of Problems Related to Skin Aging, PTO 04-3948, Translation of
French Patent Application Document 2,756,183 (2004).

We affirm-in-part.

ISSUES
The Examiner finds that claims 17-26 are anticipated by Fort.
Appellants contend that it is clear from the teachings of Fort that the
native proteins in the Argan cake would not have biological activity outside
of their food value, and thus the Argan cake taught by Fort does not
anticipate the claimed cosmetic and dermapharmaceutical compositions.
Appellants further contend that Fort does not anticipate the limitations of the
dependent claims.
Thus, the issues on appeal are:
1) Have Appellants demonstrated that the Examiner erred in finding
that the Argan cake of Fort anticipates the composition of claim 17?
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2) Have Appellants demonstrated that the Examiner erred in finding
that the Argan cake anticipates all of the limitations set forth in the
dependent claims?

FINDINGS OF FACT
FF1 The Specification teaches that the “invention is in the field of care
substances and relates to preparations comprising native proteins from the
plant Argania spinosa, and to the use of native proteins from the plant
Argania spinosa as novel skin care and hair care agents.” (Spec. 1.)
FF2 According to the Specification:
The preparations according to the invention can be used
for the preparation of cosmetic and/or dermopharmaceutical
preparations, such as, for example, hair shampoos, hair lotions,
foam baths, shower preparations, creams, gels, lotions,
alcoholic and aqueous/alcoholic solutions, emulsions, wax/fat
compositions, stick preparations, powders or ointments.
Furthermore, the preparations according to the invention can,
for oral application, also be incorporated into tablets, dragees,
capsules, juices, solutions and granules.

(Id. at 16.)
FF3 The Examiner rejects claims 17-26 under 35 U.S.C. § 102(b) as being
anticipated by Fort. (Ans. 5.)
FF4 The Examiner finds that “Fort teaches Argan cakes obtained from the
seeds of the Argania spinosa plant, and a method of making thereof.” (Id. at
6 (citing Fort translation, pp. 5-8).)
FF5 Specifically, Fort teaches that seed kernels are broken open, the grains
are roasted, and the cooled kernels are crushed into a flour, which is
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sprinkled with water and kneaded. (Fort2 5-6.) Fort teaches that oil rises to
the surface during the kneading process, and is recovered as it does so. (Id.
at 6.) Fort teaches further that after the oil is extracted, the loaf is gathered
and compressed into loaves of bread that have a bitter taste. (Id.)
FF6 Fort teaches further that the Argan cakes are comprised essentially of
proteins, and that the proteins can comprise 25 to 35% of the cake,
depending on the source. (Id. at 7.)

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference;
it must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[W]hen
the PTO shows sound basis for believing that the products of the applicant
and the prior art are the same, the applicant has the burden of showing that
they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). “When the
claimed compositions are not novel they are not rendered patentable by
recitation of properties, whether or not these properties are shown or
suggested in the prior art.” Id. at 709.

ANALYSIS
Appellants argue that the rejection is based on the Argan cake, and
that while the cake is the starting material for obtaining the native proteins of
the claimed composition, it is clear from the teachings of Fort that the native
proteins would not have biological activity outside of their food value.

2 All references to Fort are to the Translation.
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(Reply Br. 1-2.) Thus, Appellants assert, the rejection is based on hindsight
reconstruction using the disclosure as a template. (Id. at 6.) Appellants
argue that in contrast to the present invention, Fort teaches that in order to
obtain a material that has biological activity, the native proteins must be
hydrolyzed to low-molecular weight materials. (Id. at 2.) Thus, Appellants
assert, given the teaching of Fort, the skilled artisan would not attempt “to
utilize the Argan cake in a cosmetic or dermopharmaceutical composition in
view of the lack of any biological activity of the native proteins contained
therein.” (Id.)
Appellants argue further that “they do not know if the native proteins
in the Argania spinosa cake would have any biological activity outside of
their food value without the recovery step which separates at least a portion
of the native protein from the other components in the Argania spinosa
cake.” (Id. at 3.) According to Appellants, the native proteins in the cake
“could have their biological activity masked by being bound to other
substituents in the cake.” (Id.)
Appellants’ arguments are not convincing. Claim 17 is drawn to “[a]
composition selected from the group consisting of cosmetic compositions
and dermapharmaceutical compositions comprising: a mixture containing
native proteins from the plant Argania spinosa wherein the native proteins
have a molecular weight of at least about 10,000 Da.” As taught by the
Specification (FF2), the composition may be ingested orally. As found by
the Examiner, Fort teaches a composition that comprises “a mixture
containing native proteins from the plant Argania spinosa wherein the native
proteins have a molecular weight of at least about 10,000 Da,” wherein the
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composition may be ingested orally, that is, the Argan cake (Ans. 5).
Appellants have not demonstrated by evidence or argument how the claimed
composition differs from the composition taught by Fort, and we thus find
that Fort teaches a composition that meets all of the limitations of the
composition of claim 17.
Appellants’ argument that Fort does not teach a biological activity
outside of nutritional value for the Argan cake is irrelevant to the
anticipation analysis, as the prior art need not recognize all the properties of
a composition to anticipate that composition. Moreover, while Appellants
assert that the protein in the cake may have their biological properties
masked by other substituents in the cake, they have presented no evidence to
that effect, and arguments of counsel cannot take the place of evidence in the
record. In re Scarbrough, 500 F.2d 560, 566 (CCPA 1974).
As to claim 18, Appellants argue that Fort does not teach or suggest
that “the native proteins are obtained from seeds and/or defatted seeds of the
plant.” (Reply Br. 4.) However, Fort teaches that the flour used to make the
Argan cake is obtained from the seed kernels of the plant, and thus the native
proteins in the Argan cake “are obtained from seeds and/or defatted seeds of
the plant Argania spinosa” as required by claim 18. We thus find that Fort
anticipates the composition of claim 18.
As to claim 19, Appellants argue that Fort “emphatically teaches that
the native proteins obtained by extraction of at least a portion of the plant . . .
with an aqueous medium at a pH of less than or equal to 12 and a
temperature of from 22°C to 100°C are deprived of biological properties.”
(Reply Br. 4.)
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Claim 19 recites that “the mixture comprising native proteins is
obtained by extraction of at least a portion of the plant Argania spinosa with
an aqueous medium at a pH of less than or equal to 12 and a temperature of
from 20°C to 100°C.” Claim 19, dependent on claim 17, is thus a product-
by-process claim, defining how the composition of claim 17 is produced.
We have already found that Fort anticipates the composition of claim 17,
and Appellants have not demonstrated by evidence or argument how a
composition produced by the method recited in claim 19 further defines the
composition over the composition taught by Fort.
As to claims 20-23, Appellants reiterate the argument made with
respect to claim 17 that Fort “teach that native proteins have no biological
properties separately from their nutritional aspect.” (Reply Br. 4.) That
argument is therefore not found to be convincing for the reasons set forth
with respect to claim 17.
As to claims 24, 25, and 26, Appellants argue that Fort does not teach
or suggest “a composition wherein the mixture comprising the native
proteins is present in the composition in an amount of [about] 0.01 to 25%
by weight (claim 24); 0.03 to 5% by weight (claim 25); and from 0.03 to
0.6% by weight (claim 26) of the composition.” (Id. at 5.)
Fort teaches that the proteins comprise about 25 to 35% of the cake,
depending on the source. Thus, Fort anticipates the subject matter of claim
24, but does not anticipate the subject matter of claims 25 and 26.

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CONCLUSIONS OF LAW
We find:
1) Appellants have not demonstrated that the Examiner erred in
finding that the Argan cake of Fort anticipates the composition of
claim 17. We thus affirm the rejection as to claim 17.
2) Appellants have not demonstrated that the Examiner erred in
finding that the Argan cake anticipates the limitations set forth in the
dependent claims 18-24, but have demonstrated that the Examiner
erred in finding that the Argan cake anticipates the limitations set
forth in the dependent claims 25 and 26. We thus affirm the rejection
as to claims 18-24, but reverse as to claims 25 and 26.

SUMMARY
We affirm the rejection of claims 17-26 under 35 U.S.C. § 102(b) as
being anticipated by Fort as to claims 17-24, but reverse as to claims 25 and
26.

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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

alw

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