Ex Parte Pelle et al

Patent Trial and Appeal Board

Aug 30, 2016

12758366 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121758,366 04/12/2010 Edward Pelle
23487 7590 08/31/2016
THE ESTEE LAUDER COS, INC
155 PINELA WN ROAD
STE 345 S
MELVILLE, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08.57 4779
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
08/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD PELLE and DANIEL H. MAES
Appeal2015-003120
Application 12/758,3661
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 17 and21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify ELC Management LLC as the real party in
interest. Br. 2.
Appeal2015-003120
Application 12/758,366
STATEMENT OF THE CASE
Claims 17 and 21 stand rejected as unpatentable under 35 U.S.C.
§ 103 (a) for obviousness over Rahman2 and Moskovitz3, in view of Spector4,
Bevec5, and Ogawa6. We choose independent claim 17 as representative.
See 37 C.F.R. § 41.37(c)(l)(iv). Claim 17 provides:
17. A method of upregulating MsrA in human tissues
by applying to the tissue the following peptide:
(SEQ ID NO. 1) Y - G - G - F - M-0
Tyr - Gly - Gly - Phe - MetO.
Br. 10.
DISCUSSION
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BP AI 2010) (Precedential). After considering the entirety of the evidence
and Appellants' arguments; we conclude that the weight of the evidence
favors the Examiner's conclusion of obviousness. Accordingly, we adopt as
2 M. Atiqur Rahman et. al., Cloning, Sequencing, and Expression of
the Escherichia coli Peptide Methionine Sulfoxide Reductase Gene, J. BIO.
CHEM. 267(22):15549-551 (1992) ("Rahman").
3 Jackob Moskovitz et al., Overexpression of peptide-methionine
sulfoxide reductase in Saccharomyces cerevisiae and human T cells provides
them with high resistance to oxidative stress, Proc. Natl. Acad. Sci. USA
95:14071-075 (1998) ("Moskovitz").
4 Daniel Spector et al., New membrane-associated and soluble peptide
methionine sulfoxide reductases in Escherichia coli, Biochem. Biophys. Res.
Commun. 302:284-89 (2003) ("Spector").
5 Dorian Bevec et al., WO 2009/033736 A2 (Mar. 19, 2003).
6 Fumihide Ogawa et al., The Repair Enzyme Peptide Methionine-S-
Sulfoxide Reductase Is Expressed in Human Epidermis and Upregulated by
UVA Radiation, J. Invest. Denn. 126: 1128-34 (2006) ("Ogawa").
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Appeal2015-003120
Application 12/758,366
our own the Examiner's reasoning for the rejection, see Final Off. Act. 2-7,
and agree that the Examiner properly found Appellants' arguments
unpersuasive, see Ans. 2-12 (Response to Argument). We address the
following arguments for emphasis only.
(1) The Examiner's reliance on Spector
Appellants state that "it seems that the Examiner has not appreciated
that the phrase 'methionine sulfoxide reductase' or 'Msr' does not identify a
specific molecule or protein," but rather "only conveys a functional
capability." Br. 3. As a result of that misunderstanding, Appellants allege,
the Examiner's reliance on Spector is "inappropriate." Id. at 4. Specifically,
Appellants argue that Spector's newly-identified methionine sulfoxide
reductase(s) (Msr) is neither MsrA nor MsrB. Id. at 4--5. And, therefore, the
Examiner's statement that the ordinarily-skilled artisan would have
recognized from Spector that Msr can be used to reduce MetO-enkephalin to
Met-enkephalin is "unfounded." Id. at 5.
The Examiner did not err by relying on Spector. Indeed, we find that
a preponderance of the evidence supports the Examiner's reason for citing to
Spector in the first place: the factual finding that a skilled artisan would
understand that MetO-enkephalin is a substrate for Msr activity based on
Spector's disclosure. See Final Off. Act. 5. Specifically, Spector discloses a
"new peptide methionine sulfoxide reductase activity" that reduces both the
"Rand S forms of ... D-ala-met(O)-enkephalin." Spector (Abstract). And
Spector shows that, when membrane fractions containing these new
methionine sulfoxide reductase(s) are incubated with both stereoisomers of
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Application 12/758,366
Met(O)-enkephalin, both stereoisomers were reduced to Met-enkephalin. Id.
at 284, 286; see also id. at Fig. 4.
Appellants' arguments about Spector are not well taken because the
Examiner did not rely on Spector for the teachings that Appellants criticize,
i.e., the existence of MsrA or MsrB in humans, the reasonable expectation
that Msr can reduce Met-0 in human skin cells, and the topical application
of Met(O)-enkephalin. See Br. 5, 9. Instead, the Examiner's rejection is
based on what a skilled artisan would have understood from the combination
of references (i.e., Rahman, Moskovitz, Spector, Bevec, and Ogawa), see
Ans. 4, which Appellants fail to properly address. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.").
(2) The success of topical application
Appellants also argue that the Examiner failed to appreciate that the
reduction of methionine sulfoxide-containing peptides can only occur in
cells containing both Msr and the thioredoxin regenerating system, and that
an ordinarily-skilled artisan would not have assumed, as did the Examiner,
that MetO-enkephalin could successfully "permeate the upper dead layers of
the epidermis, pass through the [skin] cell membrane intact, ... where it
could be acted upon by the thioredoxin regenerating system, under the
control of Msr." Br. 6; see also id. at 8.
We first note that Appellants' argument is not persuasive because
claim 17 does not recite the "topical application" of MetO-enkephalin to the
epidermis. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
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Application 12/758,366
("the name of the game is the claim"). But even if we consider claim 21, we
find that the preponderance of the evidence supports the Examiner's finding
that an ordinarily-skilled artisan would have had a reasonable expectation
that application of Met(O)-enkephalin would successfully upregulate MsrA
in epidermal keratinocytes.
Specifically, Bevec teaches the use of Met-enkephalin for the
treatment of skin diseases, including skin cancer, psoriasis, warts, allergic
dermatitis, scar keloids, pyogenic granulomas, blistering disease, and
wrinkly skin syndrome. Bevac 2, 3, 34, 64; see also Final Off. Act. 4.
Bevec also lists Met(O)-enkephalin (SEQ ID NO. I) as a modified version of
Met-enkephalin, Bevec 84, and suggests that Met(O)-enkephalin would
maintain the therapeutic activity of the base peptide sequence, id. at 83; see
also Ans. 5. And Bevec teaches topical and transdermal administration.
Bevec 69; see also Ans. 5. Ogawa teaches that MsrA is expressed in human
epidermis and is upregulated by UV A radiation, and further suggests the use
of Msr in preventing photocarcinogenesis and photoaging. Ogawa
(Abstract); id. at 1131-32; see also Final Off. Act. 5---6. Taken together, we
find that the evidence of record amply supports the Examiner's finding that
an ordinarily-skilled artisan would have had a reasonable expectation that
Met(O)-enkephalin could be formulated for transdermal application, and
would be effective to upregulate MsrA. See, e.g., Ans. 4.
We emphasize that the "case law is clear that obviousness cannot be
avoided simply by a showing of some degree of unpredictability in the art so
long as there was a reasonable probability of success." Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Again, the Examiner
supported the reasonable expectation of success finding with sound scientific
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Application 12/758,366
argument derived from the disclosures of the prior art. In contrast,
Appellants present no evidence or sound scientific reasoning tending to
show that a skilled artisan would recognize the "far too many faulty
assumptions and misconceptions," Br. 9, allegedly pervading the Examiner's
analysis. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney
argument no substitute for evidence). Thus, we are not persuaded that the
Examiner erred.
SUMMARY
We affirm the rejection of claims 17 and 21 under 35 U.S.C. § 103(a)
on appeal.
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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