Ex Parte PtchelintsevDownload PDFPatent Trial and Appeal BoardMay 24, 201814284869 (P.T.A.B. May. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/284,869 60723 7590 Avon Products, Inc. 1 Avon Place Suffern, NY 10901 FILING DATE FIRST NAMED INVENTOR 05/22/2014 Dmitri S. Ptchelintsev 05/29/2018 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. SC123X-US 4082 EXAMINER FIEBIG, RUSSELL G ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 05/29/2018 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): PATENT.DEPARTMENT@AVON.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DMITRI S. PTCHELINTSEV1 Appeal2017-007040 Application 14/284,869 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and DAVID COTT A, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a topical composition, which have been rejected as being directed to patent-ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE "Tiliacora triandra Diels of the Tiliacora family, also known as Yanang, is a species of flowering plant native to mainland Southeast Asia and used particularly in the cuisines of northeast Thailand and Laos." Spec. 1 Appellant identifies the Real Party in Interest as Avon Products, Inc. Appeal Br. 2. Appeal2017-007040 Application 14/284,869 ,r 6. "In traditional Southeast Asian medicine, Tiliacora triandra has been used as an herbal medicine for fever relief, alcohol intoxication, inflammation, and bacterial/fungal infection." Id. The Specification discloses the "use of natural plant materials of the Tiliacora family, or more specifically, the Tiliacora triandra Diels plant, ... in a topical composition for application on the face and/or body in order to improve the condition and aesthetic appearance of skin." Id. ,r 20. "[T]he natural plant materials ... alleviate the dermatological signs of chronologically or hormonally[] aged or photo-aged skin, such as fine lines, wrinkles, and sagging skin." Id. ,r 32. Claims 1-3, 6, 10, and 15-20 are on appeal. Claim 1 is illustrative and reads as follows: 1. A topical composition comprising: (a) a Tiliacora triandra Diels plant extract present in an amount from about 0.01 wt% to about 10 wt% based on the total weight of the composition; wherein said plant extract is obtained by extraction of the Tiliacora triandra Diels plant with a solvent mixture comprising from about 60% to about 90% by volume ethanol and from about 10% to about 40% by volume water; and (b) a cosmetically or physiologically acceptable vehicle. DISCUSSION The Examiner has rejected claims 1-3, 6, 10, and 15-20 under 35 U.S.C. § 101 "because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more." Ans. 2. The Examiner finds that the claimed composition "is not markedly different from it[ s] naturally occurring 2 Appeal2017-007040 Application 14/284,869 counterpart because there is no indication that extraction has caused the nature-based product to have any characteristics ( e.g., structural/functional) that are different from the naturally occurring product." Id. More specifically, the Examiner reasons that a "change in the ratio or amount of extract does not transform the claims into an exemption of the 'judicial exception' because amounts/ratios/percentages do not set forth a 'markedly different' structure as compared to the naturally-occurring product." Id. at 3 (citing Diamond v. Chakrabarty, 447 U.S. 303 (1980)). The Examiner also reasons that "[ c ]ombining naturally-derived ingredients does not amount to a claim which surmounts the judicial exception." Id. at 3--4 (citing Funk Brothers Seed Co. v. Kala lnoculant Co., 333 U.S. 127 (1948)). The Examiner finds that claim 1 does not add anything significantly beyond the naturally occurring judicial exception, because the only other limitation recites a cosmetically or physiologically acceptable vehicle, which can be water. Id. at 4. The Examiner concludes that "the claimed product is not eligible subject matter under current 35 USC 101 standards." Id. We agree with the Examiner that claim 1 is not directed to patent- eligible subject matter. Claim 1 is directed to a topical composition comprising a vehicle (which can be water; Spec. ,r 34) and an extract obtained from a Tiliacora triandra Diels plant using an ethanol/water solvent mixture. Because the components of the extract are products that occur naturally in Tiliacora triandra Diels plants, Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), is controlling. 3 Appeal2017-007040 Application 14/284,869 In Myriad, the Court considered claims directed to isolated DNA encoding the BRCAl polypeptide and fragments of at least 15 nucleotides of that DNA. Id. at 2113. The Court held that "Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention." Id. at 2117. "Myriad found the location of the BRCAl and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes 'new ... composition[s] of matter,'§ 101, that are patent eligible." Id. "Nor are Myriad's claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule." Id. at 2118. In other words, Myriad claimed the naturally occurring BRCAl gene in isolated form; i.e., after all of the additional components of a human cell, including non-BRCAl DNA, had been removed. The same analysis applies here. Claim 1 is directed to a composition comprising naturally occurring components of Tiliacora triandra Diels plants, after those components have been removed from other cell components by ethanol/water extraction. Appellant has identified certain components of Tiliacora triandra Diels plants, with their naturally occurring structures, that have properties that make them useful for treating aging skin, but discovering those properties does not make the components of the extract new compositions of matter that are patent-eligible. Rather, claim 1 is directed to a composition made up of products of nature. If a claim is directed to patent-ineligible subject matter, we next consider the elements of each claim both individually and "as an ordered combination" to determine whether 4 Appeal2017-007040 Application 14/284,869 additional elements "transform the nature of the claim" into a patent-eligible application. The Supreme Court has described the second step of this analysis as a search for an "inventive concept"-i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir. 2015) ( citation omitted, alteration in original) ( quoting Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). Here, as the Examiner pointed out (Ans. 4), the only component of the claimed composition, other than the naturally occurring compounds from Tiliacora triandra Diels, is a cosmetically or physiologically acceptable vehicle, which the Specification states can be water (Spec. ,r 34: "aqueous ... solutions"). We agree with the Examiner that combining the naturally occurring components of Tiliacora triandra Diels with water would not result in a composition with markedly different properties from those of the natural products themselves, particularly because the milieu in which they are naturally found-Tiliacora triandra Diels cells-is an aqueous environment, like all living cells. Thus, the additional element of claim 1 does not transform the nature of the claim into a patent-eligible application of the judicial exception. Appellant argues that "the claims are directed to topical compositions that comprise narrowly claimed amounts of man-made extracts derived from the naturally-occurring Tiliacora triandra plant." Appeal Br. 4. Appellant argues that even if a man-made plant extract could be considered a "judicial exception," the claim as a whole does not seek to tie 5 Appeal2017-007040 Application 14/284,869 up any judicial exception such that others cannot practice it. Appellants therefore submit that for at least the reason that the claims do not seek to tie up any judicial exception (i.e., there is no pre-emption), they constitute patent-eligible subject matter. Id. Similarly, Appellant argues that dependent claims 2, 3, 6, and 15-20 add additional limitations, so that "pre-emption of the claimed Tiliacora triandra plant is not at issue." Id. at 5. These arguments are unpersuasive, because "[ w ]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa, 788 F.3d at 1379. "Where a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Id. Appellant also argues that a botanical extract, by definition, has "markedly different characteristics" from "its naturally occurring counterpart in its natural state" ... because it involves the selection of some, but not all, plant components from amongst many others. Furthermore, those plant components will be present in amounts (i.e., relative proportions) that differ from the amounts present in the naturally occurring plant. Appeal Br. 6. Appellant argues that the evidence of record shows that different solvent systems extract different profiles of chemical components from botanical sources, and the "claimed ethanol/water solvent mixture will extract a unique constellation of constituents from the Tiliacora triandra plant, which will result in a 'different composition,' or one that is 'markedly different' from the naturally occurring plant." Id. at 7. Appellant points to 6 Appeal2017-007040 Application 14/284,869 hypothetical examples in the USPTO' s guidance regarding patent eligibility (issued December 2014), and argues that the claimed solvent system extracts a unique profile of the plant's components, which differentiates it markedly from the naturally occurring counterpart in terms of structure and function, just as the preservative and solubilizing agent in the ... "Examples" from the USPTO Guidelines materials change those products from their naturally occurring form. Id. at 7-8. This argument is also unpersuasive, because the evidence of record does not support Appellant's position that the claimed composition is markedly different from its natural source. The Specification states that [ t ]he Tiliacora triandra Diels natural plant material may be in any form including, but not limited to, the whole plant, a dried plant, a ground plant, or parts thereof, including but not limited to, seeds, needles, leaves, roots, bark, cones, stems, rhizomes, callus cells, protoplasts, organs and organ systems, e.g., flowers, and meristems, and especially extracts derived from the plant or any one or more of its parts identified above, or any combinations thereof. Spec. ,r 30. The Specification also states that "this plant material, i.e., the vines of the Tiliacora triandra Diels plant, has been newly found to provide treatment for the reduction in signs of dermatological aging by stimulating fibroblast and keratinocyte proliferation, increasing the expression of collagen, and inhibiting collagenase activity." Id. ,r 32 (emphasis added). Similarly, the Specification states that the natural plant materials, which increase proliferation of fibroblasts and keratinocytes, cell-cell adhesion in the epidermis and dermis, cell nourishment to the epidermis, cell-cell anchoring and adhesion between keratinocytes, communication 7 Appeal2017-007040 Application 14/284,869 between the dermis and epidermis, collagenase overproduction, collagen expression, and mechanical properties of the skin, alleviate the dermatological signs of chronologically or hormonally[] aged or photo-aged skin, such as fine lines, wrinkles, and sagging skin. Id. ( emphasis added). "The composition comprising these plants are [sic] effective when topically applied." Id. "[T]he natural plant materials, which increase production of collagen; inhibit collagenase activity; and stimulate fibroblast and keratinocyte proliferation, exert their effects by preferably stimulating an increase in anchoring and adhesion between keratinocytes." Id. ( emphasis added). Thus, Appellant's Specification itself provides evidence that the relevant properties of the claimed composition are shared by the naturally occurring plant material from which the Tiliacora triandra Diels extract is derived. Appellant has pointed to no persuasive evidence to show that the claimed extract-containing composition is markedly different from the natural product it is derived from. With regard to Appellant's reliance on examples from the USPTO's Interim Eligibility Guidance, Appellant has not pointed to evidence showing that the claimed composition has properties that differ from plant material of Tiliacora triandra Diels in a manner similar to that of slower spoiling resulting from addition of a preservative to juice, or increased solubility resulting from addition of a solubilizing agent to a water-insoluble compound. We therefore do not find the examples to be persuasive of the patent-eligibility of the instantly claimed composition. With regard to claims 17 and 18, Appellant argues that these claims "specify that the composition comprises at least one additional recited skin 8 Appeal2017-007040 Application 14/284,869 active agent ... selected from additional botanical extracts and pyridine- fused azabicyclic compounds." Appeal Br. 8. Appellant argues that "[b ]ecause the Examiner has failed to show or even allege that Tiliacora triandra plant material exists in nature in combination with any of the cited skin actives, claims 1 7 and 18 are markedly different from the Tiliacora triandra plant as it exists in its natural form ... [and] constitute patent- eligible subject matter." This argument is unpersuasive. "In Funk Bros. [Funk Bros. Seed Co. v. Kala lnoculant Co., 333 U.S. 127 (1948)], the Supreme Court considered a patent that claimed a mixture of naturally occurring strains of bacteria that helped leguminous plants extract nitrogen from the air and fix it in soil. The Court concluded that this mixture of bacteria strains was not patent eligible because the patentee did not alter the bacteria in any way." In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1336 (Fed. Cir. 2014). The Funk Bros. Court noted that the Court of Appeals in that case "thought that [the inventor] did much more than discover a law of nature, since he made an new and different composition of non-inhibitive strains" of bacteria. Funk Bros., 333 U.S. at 130-131. The Funk Bros. Court held, however, that "[ d]iscovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect ... is a discovery of their qualities of non-inhibition. . . . The aggregation of select strains of the several species into one product is an application of that newly-discovered natural principle." Id. at 131. The Court held that "[t]he combination of species produces no new bacteria, no change in the six species of bacteria, 9 Appeal2017-007040 Application 14/284,869 and no enlargement of the range of their utility. Each species has the same effect it always had." Id. Similarly here, claims 17 and 18 are directed to a composition comprising naturally occurring components of Tiliacora triandra Diels plant material, combined with (for example) naturally occurring components of Abies pindrow plant material found in an extract of that plant, and a vehicle such as water. Mixing the naturally occurring components of the different plant extracts, however, results in a composition that comprises natural products that are not markedly different from their natural counterparts. To paraphrase the Funk Bros. Court, the combination of extracts containing naturally occurring plant compounds produces no new compound and no change in the combined compounds; each compound has the same effect it had as part of the naturally existing plant material. We therefore agree with the Examiner that claims 17 and 18 are also directed to patent-ineligible subject matter. SUMMARY We affirm the rejection of claims 1-3, 6, 10, and 15-20 under 35 U.S.C. § 101. 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 10 Copy with citationCopy as parenthetical citation