Ex Parte Perrier et alDownload PDFPatent Trial and Appeal BoardOct 30, 201410365897 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/365,897 02/12/2003 Eric Perrier 17587-00003 (5248 US) 8654 81283 7590 10/31/2014 Novak Druce Connolly Bove & Quigg LLP P.O. Box 2207 Wilmington, DE 19899-2207 EXAMINER GITOMER, RALPH J ART UNIT PAPER NUMBER 1657 MAIL DATE DELIVERY MODE 10/31/2014 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 ERIC PERRIER, SEBASTIEN BONNET, and DELPHINE RIVAL1 __________ Appeal 2012-005409 Application 10/365,897 Technology Center 1600 __________ Before DEMETRA J. MILLS, ERIC B. GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to compositions comprising a plant extract, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the Real Party in Interest is BASF Beauty Care Solutions France SAS (Br. 4). Appeal 2012-005409 Application 10/365,897 2 STATEMENT OF THE CASE Claims 43–52 are on appeal. Claim 43 is illustrative and reads as follows: 43. A cosmetic composition comprising at least one plant extract selected from the group consisting of grape seed extract, Pueraria lobata extract, lemon extract, guarana extract, sunflower extract, liana extract, or a combination thereof, wherein the plant extract inhibits phospholipase A2 type I or phospholipase A2 type II enzymatic activity. DISCUSSION Issue The Examiner has rejected claims 43–52 under 35 U.S.C. § 103(a) as obvious based on Mori2 (Ans. 5). The Examiner finds that Mori discloses that “Pueraria lobata root is pulverized and extracted in a solvent to make a cosmetic preparation. . . . Examples of preparations are given . . . where 36 g of dried extract was dissolved in 500 ml solvent.” (Id. at 6.) Regarding the claim language requiring the plant extract to inhibit phospholipase A2, the Examiner finds that “the activity of the extract which appears to be the same extract made by the same method as taught in the present specification would have been inherent in the composition of the extract” (id.). Appellants contend that inhibition of phospholipase A2 activity is not inherent in the compositions of Mori because the reference teaches no concentration of root extract and certainly not a concentration . . . that a priori would be expected by the person of ordinary 2 Hideji Mori, JP 2001-348338 A, published Dec. 18, 2001. Our citations are to the English translation made of record Dec. 27, 2010. Some of the pages of the translation are unnumbered; our numbering follows from the page numbered 2. Appeal 2012-005409 Application 10/365,897 3 skill in the art to render inherent the property of phospholipase A2 type I or type II activity inhibition. (Br. 6.) Appellants also argue that “inherency is irrelevant to the issue of obviousness. Rather, inherency is an issue of novelty.” (Id.) The issue presented is whether the evidence of record supports the Examiner’s position that the composition disclosed by Mori would reasonably be expected to inhibit phospholipase A2. Findings of Fact 1. The Specification states: By « to inhibit », the inventors mean the fact that said active principle inhibits the phospholipase A2, so as to induce an enzymatic activity which is less than that induced without placing the phospholipase A2 in contact with the potentially active substance, all conditions of temperature, of contact time, and of operating conditions being identical, or comparable in other respects. (Spec. 8:9–14.) 2. The Specification describes an extract (“Extract 1”) of Pueraria Lobata (id. at 25:18) that is made as follows: Extract 1 is made after grinding the roots and then 5% (w/w) alcohol extraction in 70% ethanol. A decoction is made by heating the mixture at 60°C for 1 hour and then the supernatant is filtered. A second decoction is made from the plug obtained in the same proportion at 5% (w/w) in 70% ethanol. The alcohol of the two supernatants obtained is evaporated off with a rotary evaporator and then the plug is dried by lyophilization. The dry product obtained is re-dissolved at 5% (w/w) in a mixture made up of 69.6% water (w/w), butylene glycol (25%), methyl paraben (0.1%). (Id. at 26:8–17.) Appeal 2012-005409 Application 10/365,897 4 3. The Specification discloses that Extract 1 inhibits the activity of phospholipase A2 type I and type II (id. at 26:19 to 28:10). 4. Mori discloses that “[t]he kudzu root (Puerariae Radix) used in the present invention is the root, excluding the periderm, of kudzu (Pueraria lobata Ohwi)” (Mori 6, ¶ 8). 5. Mori provides the following working example: 500 g of kudzu root (Puerariae Radix) was dried and pulverized, immersed in 2 liters of 50 vol% ethanol aqueous solution, and set aside to extract for 7 days at room temperature. Then [the mixture] was filtered, and the filtrate was collected, concentrated, dried and hardened, and freeze-dried. 36.0 g of this dried powder was dissolved in 500 ml of ethanol. (Id. at 10, ¶ 18 (bracketed material in translation).) 6. The Examiner has calculated that when 36 g of dried extract are dissolved in 500 ml of solvent, the resulting solution has a concentration of 6.7% extract (Ans. 6). Appellants have not disputed this finding. Principles of Law Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). Appeal 2012-005409 Application 10/365,897 5 Analysis Claim 43 is directed to a cosmetic composition comprising a plant extract such as Pueraria lobata extract. Claim 43 also requires that the plant extract in the composition inhibits phospholipase A2, type I or type II. Claim 43 does not require any particular degree of inhibition, and the Specification defines “to inhibit” as including any degree of inhibition (FF 1). Mori discloses a composition comprising Pueraria lobata extract (FF 5). The extract was made by combining 500 g of pulverized Pueraria lobata root (which Mori refers to as “Puerariae Radix”) with 2 liters of 50% ethanol, allowing the extraction to proceed at room temperature for 7 days, then filtering, removing the solvent (drying), and freeze-drying (FF 5). Mori discloses a composition containing 36 g of the dried extract in 500 ml of ethanol (FF 5). The Examiner has calculated that this composition contains 6.7% extract (FF 6). The Specification discloses a composition (“Extract 1”) that was made as follows: ground root of Pueraria lobata was combined (5% w/w) with 70% ethanol; the mixture was heated to 60° C for 1 hour and filtered; the solid material (“plug”) was combined at 5% w/w with 70% ethanol to make a “second decoction”; the alcohol is evaporated and the solid material is freeze-dried (lyophilized) (FF 2). The Specification states that Extract 1 is made by re-dissolving the dry product at 5% w/w in a solvent (FF 2). The Specification discloses that Extract 1 inhibits the activity of phospholipase A2 type I and type II (FF 3). Thus, both Mori’s composition and the Specification’s Extract 1 were made by combining ground (or pulverized) Pueraria lobata root with an Appeal 2012-005409 Application 10/365,897 6 ethanol solvent, filtering to remove solids, evaporating the solvent, freeze- drying, and dissolving the dried extract in a solvent. Mori’s composition contains dried extract at a concentration of 6.7%. The Specification discloses that Extract 1, which contains dried extract at 5% w/w, inhibits phospholipase A2 type I and type II. In view of the similarities of starting materials and methods of preparation between Mori’s composition and the Specification’s Extract 1, it is reasonable to conclude that Mori’s composition would also exhibit the property of inhibiting phospholipase A2 type I and type II. “Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d at 1255. In this case, the burden is properly shifted to Appellants to show that the enzyme-inhibiting activity of the claimed composition is not shared by Mori’s composition. Appellants argue that an “artisan would have had no expectation that Pueraria lobata root extract should be, or could be, successfully compounded to inhibit phospholipase A2 enzymes” (Br. 5). Based on the evidence of record, however, it is reasonable to conclude that Mori’s composition would possess phospholipase A2-inhibiting activity, even if it was not compounded with the intention of obtaining that activity and even if that activity was not recognized by Mori. See Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006) (“[A] reference may anticipate even when the relevant properties of the thing disclosed were not appreciated at the time.”). Appeal 2012-005409 Application 10/365,897 7 Appellants also argue that “[t]he inhibition of phospholipase A2 enzymatic activity by the claimed plant extracts, therefore, is unexpected and nonobvious” (Br. 5–6). This argument is also unpersuasive. “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.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). Thus, even if the prior art does not suggest the properties of a claimed composition—making them unexpected—a claim to a composition is nonetheless unpatentable if it reads on a prior art composition. Finally, Appellants argue that “inherency is irrelevant to the issue of obviousness. Rather, inherency is an issue of novelty.” (Br. 6.) Appellants also argue that “inhibition of phospholipase A2 activity is not inherent in the compositions of Mori because the reference teaches no concentration of root extract” (id.). These arguments are also unpersuasive. First, the burden-shifting of In re Best is applicable to rejections based on either § 102 or § 103: Where . . . the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, [or] on “prima facie obviousness” under 35 U.S.C. § 103, . . . the burden of proof is the same. In re Best, 562 F.2d at 1255 (emphasis added). Second, Appellants’ argument that Mori teaches no concentration of root extract is unpersuasive because it is contrary to the evidence. As discussed above, Mori discloses a composition containing 36 g of dried extract in 500 ml of solvent, which the Examiner calculates to be a Appeal 2012-005409 Application 10/365,897 8 concentration of 6.7%. Appellants’ Specification itself provides evidence that a composition containing 5% w/w dried extract inhibits the activity of phospholipase A2 type I and type II. Therefore, the burden is properly shifted to Appellants to provide evidence that a composition made as described by Mori does not also inhibit the activity of phospholipase A2 type I and type II. Conclusion of Law The evidence of record supports the Examiner’s position that the composition disclosed by Mori would reasonably be expected to inhibit phospholipase A2. Claims 44–52 have not been argued separately and therefore fall with claim 43. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the rejection of claims 43–52 under 35 U.S.C. § 103(a) based on Mori. 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 bar Copy with citationCopy as parenthetical citation