Ex Parte Pruche et alDownload PDFPatent Trial and Appeal BoardNov 17, 201612216693 (P.T.A.B. Nov. 17, 2016) Copy Citation 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. Appeal2014-009589 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 ). 2 Appeal2014-009589 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 3 Appeal2014-009589 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 4 Appeal2014-009589 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 5 Appeal2014-009589 Application 12/216, 693 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. 6 Appeal2014-009589 Application 12/216, 693 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 7 Copy with citationCopy as parenthetical citation