12867975 (P.T.A.B. Apr. 19, 2017)

Ex Parte Peters et al

Patent Trial and Appeal BoardApr 19, 2017

12867975 (P.T.A.B. Apr. 19, 2017)

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. 12/867,975 01/31/2011 Lars Erik Peters MYCP-0001 4999 24353 7590 04/21/2017 BOZICEVIC, FIELD & FRANCIS LLP Bozicevic, Field & Francis 201 REDWOOD SHORES PARKWAY SUITE 200 REDWOOD CITY, CA 94065 EXAMINER WANG, CHANG YU ART UNIT PAPER NUMBER 1649 NOTIFICATION DATE DELIVERY MODE 04/21/2017 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): docket@bozpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARS ERIK PETERS and TODD LORENZ1 Appeal 2015-007236 Application 12/867,975 Technology Center 1600 Before CHRISTOPHER G. PAULRAJ, TAWEN CHANG, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims directed to a cosmetic composition. Claims 9—13 and 17—192 are on appeal as rejected under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification states, “[cjontrary to the established convention in the art, the present inventors have developed agents that operate 1 We understand the Real Party in Interest to be Myocept Inc. App. Br. 1. 2 Appellants indicate (App. Br. 16, Claims App’x.) claims 1—8 and 14—16 are cancelled; the Examiner entered Appellants’ amendment cancelling claims 1—8 and 14—16 (Advisory Action dated Jan. 26, 2015). Appeal 2015-007236 Application 12/867,975 postsynaptically to effect immediate, temporary, and optionally partial skeletal muscle paralysis. This postsynaptic approach to chemodenervation offers many advantages over prior art presynaptic approaches (e.g., the use ofbotulinum toxin).” Spec. 1 6. Further, the present invention provides postsynaptic chemodenervation polypeptides, methods of making the same, and methods of using the same to treat neuromuscular disorders. The subject postsynaptic chemodenervation polypeptides include short chain a-neurotoxins, as well as long- chain a-neurotoxins that bind preferentially to human muscular nAchR instead of human neuronal, a7/4/3/2-containing nAChR. The subject polypeptides exhibit at least 100-fold higher affinity for human a 1-subunit- containing, muscular nAchRs than for any of the human a7, a3, a4, a2-subunit-containing .... [T]he affinity of an a-neurotoxin for a particular human receptor can be expressed as the inverse equilibrium dissociation constant (1/KD) measured in receptor binding assays with labeled toxin molecules. Id. 17. “[T]he polypeptide is administered intramuscularly or transdermally. Preferably the relaxation or slackening of the cutaneous tissue results in lessening of wrinkles or fine lines of the skin.” Id. 118. The appealed claims can be found in the Claims Appendix of the Appeal Brief. Claim 9 is the sole independent claim on appeal, is representative, and reads as follows: 9. A cosmetic composition comprising a recombinant a- neurotoxin lacking a fifth disulfide bond in loop II of the three finger fold and a transdermal chaperone, wherein said a- neurotoxin exhibits a KD for the alpha-1-containing, human muscular nAChR that is at least 100-fold less than it’s [sic] KD for any of the neuronal aAChR comprising a7nAChR, a3 nAChR, a4nAChR, and a2nAChR. App. Br. 16 (Claims App’x). 2 Appeal 2015-007236 Application 12/867,975 The following rejection is on appeal:3 Claims 9-13 and 17—19 stand rejected under 35 U.S.C. § 103(a) over He,4 Rosso,5 Servent,6 and Wen.7 Ans. 2. DISCUSSION An invention composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 3 The Examiner has withdrawn the rejection of claims 1, 3—4, 6—11, 18, and 19 under 35 U.S.C. § 102(b) over Servent and the rejection of claims 1—4, 6— 11, and 17—19 under 35 U.S.C. § 102(b) over He (see citations for references in footnotes, below). Ans. 11; see also Advisory Action dated Jan. 26, 2015. 4 Ying-Ying He et al., Cloning and Purification of a-neurotoxins from King Cobra (Ophiophagus hannaj, 44 Toxicon 295—303 (2004) (“He”). 5 Jean-Pierre Rosso et al., Characterization of a-neurotoxin and Phospholipase A2 Activities from Micrurus Venoms, Determination of the Amino Acid Sequence and Receptor-binding Ability of the Major a- neurotoxin from Micrurus nigrocinctus nigrocinctus, 238 Eur. J. Biochem. 231-39 (1996) (“Rosso”). 6 Denis Servent et al., Only Snake Curaremimetic Toxins with a Fifth Disulfide Bond Have High Affinity for the Neuronal a7 Nicotinic Receptor, 272 J. Bio. Chem. 24279-86 (1997) (“Servent”). 7 U.S. Patent No. US 7,659,252 B2 (issued to Long-Ping Wen et al. on Feb. 9, 2010) (“Wen”). 3 Appeal 2015-007236 Application 12/867,975 Each of He, Rosso, and Servent, is an academic disclosure of a- neurotoxin polypeptides of snake venoms; however, nothing in these references suggests using any part of snake venom for cosmetics or in a transdermal application. This is acknowledged by the Examiner. Ans. 7 (“He, Rosso or Servent does not teach that the a-neurotoxin is a recombinant a-neurotoxin, and also fails to teach a transdermal chaperon/peptide in a cosmetic composition as recited in claim 9.”). The Examiner has not shown why a person of ordinary skill in the art would have looked to Wen’s teachings in order to remedy this common deficiency among the other references with respect to the claimed invention. Wen discloses topical and transdermal pharmaceuticals or cosmetics and the transdermal chaperone of claim 9, but Wen does not suggest applying a neurotoxin, of any sort, cosmetically or transdermally, and provides no motivation to combine its teachings with the other references. In fact, Wen indicates more than once that its disclosed “active agent,” which is transdermally applied, is non-toxic. See, e.g., Wen 19:1—5. Such disclosure tends to teach away from combining the snake venom neurotoxins with Wen’s transdermal chaperone. SUMMARY We find the final rejection does not identity a motivation to combine the cited prior art and, therefore, the claims would not have been obvious. The rejection over He, Rosso, Servent, and Wen is reversed. REVERSED 4