Ex Parte Pruche et al

Patent Trial and Appeal Board

Nov 17, 2016

12216693 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/216,693 07/09/2008
21839 7590 11/21/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Francis Pruche
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.
1016800-001042 9565
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS PRUCHE and PA TRICK CHOISY 1
Appeal2014-009589
Application 12/216, 693
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to methods of
artificially coloring the skin. The Examiner rejected the claims for
obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The sole rejection before for review is the Examiner's rejection of
claims 1---6, 11, 14, and 15, under 35 U.S.C. § 103(a), for obviousness over
Moller, 2 Stroud, 3 and Pastore. 4 Ans. 2-9.
1 Appellants state that "L'Oreal is the real party in interest and is the
assignee of the instant application." App. Br. 2.
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Application 12/216, 693
Claim 1, the sole independent claim on appeal, illustrates the appealed
subject matter and reads as follows (App. Br., Claims App'x 1-2 (emphasis
added)):
1. A regime or regimen for artificially coloring the skin,
comprising topically applying onto the skin of an individual
seeking such treatment, a composition containing a thus
effective amount of dehydroascorbic acid and/or a monomeric
derivative thereof of formula (I) below and/or an isomer thereof
of formula (I') below and/or a polymer derivative thereof:
{I)
2 Dr. Hinrich Moller and Dr. Horst Hoffkes, DE 197 45 354 Al (published
April 15, 1999) (translation entered by Appellants June 15, 2011). The
translation does not include page numbers. Accordingly, we cite to the first
page following the cover sheet as page 1, and to the remaining pages as if
numbered consecutively.
3 Eric. M. Stroud and John A. Scott, U.S. Patent No. 6,231,837 Bl (issued
May 15, 2001).
4 Paolo Pastore et al., Characterization of dehydroascorbic acid solutions by
liquid chromatography/mass spectrometry, 15 Rapid Commun. Mass
Spectrom. 2051-2057 (2001 ).
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Application 12/216, 693
in which OR1 and OR2, which may be identical or different, are
each OH; a linear or branched, saturated or unsaturated C1--C30
alkoxy radical; a glycoside; a linear or branched, saturated or
unsaturated C1--C30 aliphatic carboxylic acid ester, which may
be substituted with an aryl group or a heterocycle; an aryl or
heterocyclic carboxylic acid ester which may be substituted
with at least one linear or branched, saturated or unsaturated
C1--C30 alkyl radical; a phosphate group; a sulfate group, and
also polymeric derivatives thereof, formulated into a topically
applicable physiologically acceptable medium therefor;
wherein the dehydroascorbic acid and/ or a monomeric
derivative thereof of formula (I) and/or an isomer thereof of
formula (I') and/or a polymer derivative thereof is combined
with ascorbic acid or a derivative or salt thereof.
OBVIOUSNESS
The Examiner found that Moller describes a method of using an
aqueous composition containing dehydroascorbic acid to artificially color
skin, the method differing from the claimed methods in that Moller does not
"explicitly disclose that the aqueous composition comprises ascorbic acid,
and/or the monomeric and/or dimeric dehydroascorbic acid derivatives
having structural formula II) and III), respectively; and also contains
exfoliant agents." Ans. 8.
Despite those differences, the Examiner concluded that the claimed
methods would have been obvious to an ordinary artisan when the teachings
of Moller were combined with the teachings in Stroud and Pastore. Id. at 8.
The Examiner reasoned as follows:
Moller et al. disclose a regime or regimen for artificially
coloring keratinous fibers (i.e. skin, hair or nails), comprising
topically applying onto the keratinous fibers of an individual an
aqueous composition containing an effective amount of
dehydroascorbic acid having structural formula I). Since
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Application 12/216, 693
"keratinous fibers" is a term recognized by one of skill in the art
to encompass the skin (as well as hair and nails); and since
Stroud et al. disclose that an effective regime or regimen for
artificially coloring the skin comprises topically applying onto
the skin of an individual an aqueous composition containing
dihydroxyacetone (an artificial coloring agent) as well as
acidifying agents, wherein the aqueous composition is
maintained at an acidic pH of about 4; and further since Pastore
et al. disclose that in acidic aqueous solution, dehydroascorbic
acid is naturally present in the stable hydrated form of the
bicyclic hemiketal having structural formula II), which is its
biologically active form of dehydroascorbic acid, and which is
produced "in situ" not only from dehydroascorbic acid, but also
just as well from spontaneous ascorbic acid oxidation and/or by
hydration and breakdown of dimeric derivatives having
structural formula III), one of ordinary skill in the art would be
motivated to employ in the Moller et al. method an acidic
aqueous composition[]in which dehydroascorbic acid is
provided as any one or a combination of compounds I), II),
and/or III), and ascorbic acid, with the reasonable expectation
that the resulting method will utilize an acidic aqueous
composition compnsmg the bicyclic hemiketal having
structural formula II), which is the biologically active form of
dehydroascorbic acid, and will thus successfully artificially
color the skin of an individual.
Ans. 8-9.
As stated inin re Oetiker, 977F.2d1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), the
Supreme Court emphasized "an expansive and flexible approach" to the
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Application 12/216, 693
obviousness question, but also reaffirmed the importance of determining
"whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue." Id. at 418 (emphasis added).
Ultimately, therefore, "[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
We agree with Appellants that a preponderance of the evidence does
not support the Examiner's contention that the cited references would have
suggested performing the process recited in claim 1, in the fashion recited by
the claim. Specifically, claim 1 recites a method for artificially coloring the
skin, which is performed by "topically applying onto the skin of an
individual seeking such treatment" dehydroascorbic acid or the named
derivatives, in combination with ascorbic acid or a derivative thereof. App.
Br., Claims App'x 1-2.
As the Examiner contends, Moller describes its invention as "an agent
for dyeing keratin fibers containing ... dehydroascorbic acid." Moller 2.
As Appellants point out, however, Moller states expressly that
"[s]taining of the skin should be avoided." Id. (emphasis removed). Thus,
rather than suggesting the step recited in claim 1, application of a
dehydroascorbic acid-containing dyeing agent to the skin of an individual
desirous of artificially coloring his or her skin, Moller expressly teaches that
application to the skin should be avoided. Accordingly, we agree with
Appellants that Moller would not have suggested applying Moller' s dyeing
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agent to the skin of an individual seeking to artificially color his or her skin,
as claim 1 requires.
Moreover, given Moller' s teaching that staining skin with its dyeing
agent should be avoided, we also agree with Appellants that the cited
references would not have suggested including Moller' s dyeing agent in
Stroud's self-tanning compositions. We, therefore, further agree with
Appellants that an ordinary artisan would not have combined the teachings
of Moller and Stroud in the manner posited by the Examiner.
The Examiner's arguments do not persuade us to the contrary.
In particular, we are not persuaded that artificially coloring skin is an
unpreferred embodiment suggested by Moller, as the Examiner contends.
See Ans. 10-11. Although Moller generically describes "dyeing keratin
fibers," the sole mention of skin in Moller identified by either the Examiner
or Appellants is the statement that "[s]taining of the skin should be avoided."
Moller 2.
Moreover, as Appellants point out, when explaining keratin fibers that
should be dyed, Moller uniformly refers to hair or hair-like fibers, with no
mention of skin. See id. ("The object of the present invention is a colorant
for keratin fibers, particularly human hair . . . . In keratin fibers are wool, to
understand fur, feathers, and in particular human hair."); id. at 8 (discussing
examples of cationic surfactants "suitable for use in the inventive hair
treatment"); id. at 9 (discussing inclusion of suitable "[h ]air conditioning
compounds"); id. at 11 (discussing application to human hair).
We, therefore, agree with Appellants that, reading the reference as a
whole, an ordinary artisan would not have understood skin as a less
preferred keratinous tissue (or fiber) that Moller suggested should be dyed.
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We acknowledge, but are not persuaded by, the Examiner's
contention that "Moller clearly discloses by the statement 'staining of the
skin' that their method does in fact artificially color the skin." Ans. 11.
That an ordinary artisan might have understood that Moller' s dyeing agent
would inadvertently stain skin does not persuade us that Moller would have
suggested the method step recited in claim 1: applying that dyeing agent to
the skin of an individual desirous of artificial skin coloration. Indeed, given
Moller' s direct teaching that staining of the skin should be avoided, we are
not persuaded that an ordinary artisan would have practiced the process
recited in Appellants' claim 1 based on the teachings of cited references,
without having first consulted Appellants' disclosure. As our reviewing
court has noted, such hindsight is an improper foundation for an obviousness
analysis. See Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
In sum, for the reasons discussed, we agree with Appellants that the
combination of Moller, Stroud, and Pastore does not suggest the process
recited in claim 1. Accordingly, we reverse the Examiner's rejection of that
claim, and its dependent claims, over those references.
REVERSED
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