Ex parte Ribier et al.

Board of Patent Appeals and Interferences

Apr 26, 1999

08050315 (B.P.A.I. Apr. 26, 1999)

Application for patent filed May 10, 1993. According 1
to applicants, this application is the U.S. designated filing
of International Application PCT/FR92/00824, filed August 27,
1992. Applicants claim priority under 35 U.S.C. § 119 of the
September 13, 1991, foreign filing date of French Application
91-11344.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALAIN RIBIER, PASCAL RICHART,
and ROSE-MARIE HANDJANI
____________
Appeal No. 96-2897
Application 08/050,3151
____________
HEARING: April 7, 1999
____________
Before WILLIAM F. SMITH, GRON, and LORIN, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
Appeal No. 96-2897
Application 08/050,315
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DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal under 35 U.S.C. § 134 of an examiner’s
final rejection of Claims 36-39. The examiner has indicated
that
Claims 50-52, the only other claims pending in this
application, are allowed (Supplemental Examiner’s Answer, p.
1, para. 3
(Paper No. 35)).
1. Introduction
Claims 36-39 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by European Patent 274,961 (hereafter EP),
published July 20, 1988. Claims 36-39 also stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Devissaguet
et al. (Devissaguet), U.S. 5,049,322, patented September 17,
1991
(prior art under § 102(e) based on an application filing date
of December 31, 1987). With regard to EP and Devissaguet,
appellants state (Appeal Brief (Br.), p. 5, first sentence and
n. 1):
One issue is presented for appeal1
. . . . .
-------------------
Appeal No. 96-2897
Application 08/050,315
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Although the Examiner has separately rejected1
claims 36-41 under Sections 102(b) and 102(e), the
references upon which the Examiner relies are equivalent.
See, page 2, lines 9-10 of the Office Action of June 5,
1995 (Paper No. 15). Accordingly, for the convenience of
the Board, the appellants respectfully submit that only
one issue is raised in the present appeal.
Accordingly, we shall only review the merits of the examiner’s
rejections of Claims 36-39 under Section 102(e) over
Devissaguet. The rejections of the same claims under Section
102(b) over EP shall stand or fall with the examiner’s
rejections of Claims 36-39 under Section 102(e) over
Devissaguet. Claims 36-39 on appeal are transcribed below:
36. A composition for the treatment of the upper
epidermal layers of the skin, said composition
comprising,
in a carrier suitable for topical application to the
skin,
nanocapsules of a nonbiodegradable polymer encapsulating
an oily phase,
said oily phase, encapsulated in said nanocapsules
of said nonbiodegradable polymer, containing an effective
active oil or an oil having anti-free radical activity,
said nanocapsules of said nonbiodegradable polymer
having a size ranging from 100 to 1,000 nm and being
present in an amount ranging from 0.1 to 20 percent by
weight based on the total weight of said composition.
37. The composition of Claim 36 wherein said
nanocapsules of said nonbiodegradable polymer have a
size ranging from 200 to 800 nm.
38. The composition of Claim 36 wherein said
nanocapsules of said nonbiodegradable polymer are present
in an amount ranging from 0.5 to 10 percent by weight
based on the total weight of said composition.
Appeal No. 96-2897
Application 08/050,315
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39. The composition of Claim 36 wherein said
nonbiodegradable polymer is selected from the group
consisting of a vinyl chloride-vinylacetate
copolymer
and a methacrylic acid-methacrylic acid methyl
ester copolymer.
2. Discussion
Our decision on review of the merits of the examiner’s
rejection of the subject matter appellants claim under 35
U.S.C. § 102 over the subject matter Devissaguet describes
depends entirely on the interpretation to be accorded two
phrases in Claim 36 on appeal. The examiner’s answers and
appellants’ briefs emphasize arguable differences between the
claimed subject matter depending upon the respective limiting
capacity each attributes to the functional language and the
manner in which each interprets the scope of the encapsulated
“oily phase . . . containing an effective active oil”
component of the claimed composition (Examiner’s Answer
(Ans.), p. 3, last para., to p. 4, last para.). We hold that
the examiner erroneously interpreted the functional language
of the claims on appeal and erroneously interpreted the term
“active oil” of the same claims based on inadequate
consideration of the description of the invention in
appellants’ specification.
Appeal No. 96-2897
Application 08/050,315
Elimination of the need for fact-specific analysis2
of claims and prior art by reliance on per se rules in
determining patentability is legally incorrect. In re Ochiai,
71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
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First, the claimed “composition” is defined as being
useful “for the treatment of the upper epidermal layers of the
skin” (Claim 36, l. 1-2). The examiner held that the claim
language of utility does not further limit the claimed
invention (Ans., p. 4, last para.) and therefore cannot2
exclude nonbiodegradable nanocapsules containing an “active
oil” such as “benzyl benzoate” which the prior art reference
encapsulated in nanocapsules made of a nonbiodegradable
copolymer of vinyl chloride and vinyl acetate (Ans., p. 4,
third para., and Devissaguet, col. 5, Example 1). Appellants
cited a standard chemical reference which indicated that
benzyl benzoate “[m]ay cause skin irritation in humans” (The
Merck Index, Eleventh Edition, Merck & Co., Inc., Rahway,
N.J., p. 176, no. 1141 (1989)(Appeal Brief (Br.), Appendix B))
and argued that persons having ordinary skill in the art would
not have understood that encapsulated skin irritants would be
useful “for the treatment of the upper epidermal layers of the
skin” as are the compositions appellants claim. Thus,
Appeal No. 96-2897
Application 08/050,315
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appellants argue that the functional language excludes
encapsulated benzyl benzoate from the claims (Br., p. 8). We
hold that the functional language of Claim 36 excludes skin-
irritating oils from the compositions appellants claim.
In determining anticipation in this case, the functional
language in the preamble of Claim 36 is essential to
particularly point out the invention and cannot be
disregarded. See Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-678,
7 USPQ2d 1315, 1317 (Fed. Cir. 1988), for its reference to the
following instruction:
In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987) states:
Whether a preamble of intended purpose constitutes
a limitation to the claims is, as has long been
established, a matter to be determined on the facts
of each case in view of the claimed invention as a
whole.
. . . .
This purpose, set forth in the [preambles of the]
claims themselves, “is more than a mere statement
of purpose; and that language is essential to
particularly point out the invention defined by
the claims.” In re Bulloch, 604 F.2d 1362, 1365,
203 USPQ 171, 174 (CCPA 1979).
Accordingly, we reverse the examiner’s rejection as based, at
least in part, on an erroneous interpretation of the scope of
the claimed subject matter.
Appeal No. 96-2897
Application 08/050,315
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Second, Claim 36 defines the encapsulated “oily phase” as
containing (1) an “active oil” (Claim 36, l. 8) or (2) an “oil
having anti-free radical activity” (Claim 36, l. 8). See page
3, last full paragraph, of the Appeal Brief (Br.). At pages
5-6, bridging paragraph, of the Appeal Brief, appellants
define the term “active oil” with reference to the
specification as follows:
The presently claimed invention provides a cosmetic
composition of nanocapsules of a biodegradable polymer
which encapsulates an oily phase. The oily phase of the
presently claimed composition contains an effective
active
oil or an oil having anti-free radical activity. The
specification exemplifies an active oil as an oil which
screens out UV-A and/or UV-B radiation; an oil having
bactericidal and/or fungicidal activity, an oil with
humectant activity or an oil with anti-free radical
activity. See, page 6, line 19 to page 7, line 1 of
the specification.
Thereafter, appellants argued (Br., p. 6, first full para.)
that the oils Devissaguet discloses, i.e., “a vegetable or a
mineral oil, or any oily substance, for example olive oil,
benzyl benzoate, isopropyl myristate, glycerides of fatty
acids . . . , volatile oils, etc.” (Devissaguet, col. 3, l.
19-23), are not “active oil[s]” within the meaning of the term
in appellants’ claims.
Rather than interpret the term “active oil” in the claims
Appeal No. 96-2897
Application 08/050,315
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in light of the teaching in the specification as a whole and
give the term the broadest reasonable interpretation which is
consistent with the invention described in the specification,
as In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989),
directs at 321, 13 USPQ2d at 1322, the examiner focussed on
appellants’ limited definition of the term based on the active
oils the “specification exemplifies” (Br., p. 6, first full
sentence). In so doing, the examiner erred. The examiner
should have fairly considered what the term “active oil” would
have meant to persons having ordinary skill in the art upon
reading the description of the invention in the specification
as a whole. We must remand this case so to allow the examiner
to interpret the claim language and determine the scope of
appellants’ claims in accordance with established patent law.
Only after having ascertained exactly what subject matter is
being claimed should the examiner consider the patentability
of the claimed subject matter under 35 U.S.C. §§ 102 and 103.
“Once having ascertained exactly what subject matter is being
claimed, the next inquiry must be into whether such subject
matter is novel.” In re Wilder, 429 F.2d 447, 450, 166 USPQ
545, 548 (CCPA 1970). “Before considering the rejections
under 35 U.S.C. 103 . . . we must first decide . . . [what]
Appeal No. 96-2897
Application 08/050,315
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the claims include within their scope . . . .” In re Geerdes,
491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974).
On remand, before the examiner decides anew exactly what
subject matter is being claimed, we direct the examiner’s
attention to page 6, line 19, to page 7, line 21, of the
specification. More specifically, the examiner should compare
the appellants’ teachings at page 6, line 19, to page 7, line
1, and page 7, lines 2-21, to Devissaguet’s Examples 2, 4, 5,
6,
and 7 at columns 5-7 and Devissaguet’s teachings at column 3,
lines 19-33. For example, appellants’ specification teaches
that (1) simple triglycerides, triglycerides modified by
oxyethylenation, volatile silicone oils and mineral oils are
“nonactive carrier oils” (Spec., p. 7, l. 2-5), and (2) “[t]he
active ingredient is preferably an oleophilic active
ingredient which dissolves in oil” (Spec., p. 7, l. 6-7).
However, the specification also teaches (Spec., p. 7, l. 10-
21):
It is possible, according to the invention, to
introduce into the oily phase at least one nonoily active
ingredient in a carrier oil and/or in an active oil.
This active ingredient, irrespective of its presentation,
may be a humectant such as hyaluronic acid, orotic acid
or a lipoprotein, an anti-acne agent, a lipid regulator
such as an extract of Centella asiatica or gamma-
Appeal No. 96-2897
Application 08/050,315
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orizanol,
anti-aging agent such as vitamin A palmitate, a colorant,
a pigment, an emollient such as an isopropyl ester, a
keratolytic agent such as retinoic acid or 5-n-octanoyl-
salicylic acid.
Thus, when the specification teaches that “[t]he oily phase
encapsulated in the nanocapsules may contain an active oil . .
.” (Spec., p. 6, l. 19-20) such as “an agent for screening out
UV-A and/or UV-B, . . . and/or a bactericidal and/or
fungicidal essential oil such as thyme oil, [and/or] an oil
with humectant activity . . .” (Spec., p. 6, l. 21-27), the
examiner should ask whether persons having ordinary skill in
the art reasonably would have interpreted the term “active
oil” of Claim 36 in light of the teaching in appellants’
specification as including
(1) active ingredients such as a colorant, a pigment, an
emollient, a keratolytic agent, etc., in a nonactive carrier
mineral oil (compare Devissaguet, col. 3, l. 24-33);
(2) vegetable oils or lipids such as olive and peanut oil
(compare Devissaguet, col. 3, l. 19-20 and 21, and col. 7,
Example 6); (3) mineral oils (compare Devissaguet, col. 3,
l. 20); (4) glycerides of fatty acids (compare Devissaguet,
col. 3, l. 21-22); (5) lipophilic medicinal agents such as
the analgesic, anti-inflammatory agent indomethacin (compare
Appeal No. 96-2897
Application 08/050,315
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Devissaguet, col. 3, l. 24-27, and cols. 5-6, Example 2);
and/or lipophilic dyes or pigments (compare Devissaguet, col.
3, l. 28-29, and col. 6, Example 4). Only after determining
exactly what subject matter is encompassed by appellants’
claims should the examiner proceed to consider the
patentability of the claimed subject matter under 35 U.S.C. §
102 over subject matter the prior art describes and under 35
U.S.C. § 103 in view of the prior art teachings.
On this record, we are constrained to reverse the
examiner’s finding of anticipation based on an erroneous
interpretation of the functional language and scope of the
claimed subject matter. However, we remand this case to the
examiner for de novo interpretation of the meaning of the term
“active oil,” concomitant determination of the scope of the
subject matter claimed, and thereafter, reconsideration of the
patentability of pending Claims 36-39 under 35 U.S.C. §§ 102
and 103 in light of the prior art teaching of record.
3. Conclusion
We reverse the examiner’s rejections of Claims 36-39
under
35 U.S.C. § 102(b) as being anticipated by European Patent
274,961, published July 20, 1988, and under 35 U.S.C. § 102(e)
Appeal No. 96-2897
Application 08/050,315
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as being anticipated by Devissaguet.
We remand this application to the examiner for de novo
claim interpretation and further action consistent with this
decision and the supporting opinion.
This application, by virtue of its "special" status,
requires an immediate action. Manual of Patent Examining
Procedures § 708.01(d)(7th ed., rev. 3, July 1998). It is
important that the Board be informed promptly of any action
affecting the appeal in this case.
REVERSED; REMANDED
William F. Smith )
Administrative Patent Judge )
)
)
)
Teddy S. Gron ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Hubert C. Lorin )
Administrative Patent Judge )
tdc
Appeal No. 96-2897
Application 08/050,315
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B.J. Sadoff
Nixon & Vanderhye, P.C.
1100 North Glebe Road, 8th Floor
Arlington, VA 22201-4714