Ex Parte Stab et al

Patent Trial and Appeal Board

Dec 12, 2017

11183376 (P.T.A.B. Dec. 12, 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.
11/183,376 07/18/2005 Franz Stab 3321-P30881 2558
13897 7590 ]
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
BREDEFELD, RACHAEL EVA
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ STAB, THOMAS BLATT, MELANIE SCHMIDT,
CLAUDIA MUNDT, STEFAN GALLINAT, KIRSTEN VENZKE,
HOLGER LENZ, and CORNELIA MEIER-ZIMMERER1
Appeal 2016-000546
Application 11/183,376
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a topical
cosmetic or dermatological skin care preparation.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Beiersdorf AG.
(Appeal Br. 3.)
Appeal 2016-000546
Application 11/183,376
STATEMENT OF THE CASE
Claims on Appeal
Claims 43^47, 49-52, 54-56, and 58-66 are on appeal. (Claims
Appendix, Appeal Br. 27-30.) Claim 43 is illustrative and reads as follows:
43. A topical cosmetic or dermatological skin care preparation,
wherein the preparation comprises, based on a total weight of the
preparation
from 0.001% to 10% by weight of (a) creatinine;
from 0.001% to 10% by weight of (b) at least one of creatine, creatine
phosphate, creatine sulphate, creatine acetate, creatine ascorbate, and
an ester of creatine and a mono- or polyfunctional alcohol; and
from 0.01% to 5% by weight of (c) a soybean germ extract which
comprises one or more of daidzin, malonyldaidzin, acetyldaidzin,
glycitin, malonylglycitin, acetylglycitin, genistin, daidzein, glycitein,
malonylgenistin, acetylgenistin, genistein and a saponin,
a ratio (a):(b) being from 2:1 to 1:2,
the preparation being effective for at least one of the treatment and
prophylaxis of one or more of symptoms of UV-induced or ozone-
induced skin damage and of inflammatory and degenerative skin
conditions.
{Id. at 27.)
Examiner’s Rejections2
1. Claims 43^47, 49, and 50 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe3 and Kelly.4 (Final Act. 10-13.)5
2. Claims 51, 54, and 55 stand rejected under pre-AIA 35 U.S.C.
2 The Examiner’s rejection under 35 U.S.C. § 101 was withdrawn in the
Answer. (Ans. 2.)
3 Sanbe, JP 2000/247866, published Sept. 12, 2000 (“Sanbe”). Both a
machine translation and a human translation are of record. References to
Sanbe herein are to the human translation.
4 Kelly et al., US 6,455,032 Bl, issued Sept. 24, 2002 (“Kelly”).
5 Office Action dated Sept. 19, 2014.
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§ 103(a) as unpatentable over Sanbe, Kelly, and Bonte.6 (Id. at 13-14.)
3. Claims 51, 52, 54, and 55 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe, Kelly, Bonte, and Duraiswami.7 (Id. at
14-15.)
4. Claims 56, 58, 62, and 63 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe, Kelly, and Duraiswami. (Id. at 15-16.)
5. Claims 56, 58, 59, and 62-66 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe, Kelly, Duraiswami, and Bonte. (Id. at
16-17.)
6. Claims 56, 58, and 61-63 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe, Kelly, Duraiswami, and Gers-Barlag.8
(Id. at 17-18.)
7. Claims 56, 58, 60, 62, and 63 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sanbe, Kelly, Duraiswami, and Forster.9 (Id.
at 19.)
8. Claims 43^47, 49-52, 54-56, and 58-66 stand provisionally rejected
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 99-101, 104-110, 114, 116, 119-126, 130-135,
137, and 144-146 of copending Application No. 10/995,203 in view of
6 Bonte et al., WO 99/62480, pub. Dec. 9, 1999 (“Bonte”). US 6,641,848
Bl, issued Nov. 4, 2003, is the US National Stage patent corresponding to
WO 99/62480.
7 Duraiswami et al., WO 00/13661, pub. March 16, 2000 (“Duraiswami”).
8 Gers-Barlag et al., US 5,788,952, issued Aug. 4, 1998 (“Gers-Barlag”).
9 Th. Forster et al., Emulsification by the phase inversion temperature
method: the role of self-bodying agents and the influence of oil polarity, Int’l
J. Cosm. Sci. 12, 217-27 (1990) (“Forster”).
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Application 11/183,376
Duraiswami, Bonte, and Forster. {Id. at 24-27.)
9. Claims 43^47, 49-52, 54-56, and 58-66 stand provisionally rejected
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 44, 57-61, and 70-74 of copending Application
No. 11/087,395 in view of Duraiswami, Forster, Gers-Barlag, and Bonte.
{Id. at 28-31.)10
10. Claims 43^17, 49-52, 54-56, and 58-66 stand provisionally
rejected on the ground of nonstatutory obviousness-type double patenting as
being unpatentable over claims 98-104, 107-109, 115, 119-121, 123, 124,
127-132, 134, and 137-143 of copending Application No. 10/995,208 in
view of Duraiswami, Bonte, and Forster. {Id. at 31-34.)
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes.
FF 1. Sanbe teaches a skin preparation for external use containing (i)
creatinine and/or creatine and (ii) an active substance. (Sanbe 2 (claim 1).)
FF 2. Sanbe teaches that the active substance may be soybean extract. {Id.
113.)
FF 3. Sanbe teaches that
Creatine or creatinine is blended into a skin preparation for
external use ... in a quantity equal to 0.01 ~ 10 weight %, and
preferably 0.05 ~ 5 weight %. Quantities less than 0.01 weight
% does not yield adequate effect, and quantities in excess of 10
weight % has a tendency to interfere with intra-preparation
stability.
10 Application No. 11/087,395 issued as US 8,808,670 B2 on Aug. 19, 2014.
The rejection is thus no longer provisional.
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Application 11/183,376
{Id. H 8.)
FF 4. The Examiner finds that:
it would have been obvious to an artisan of ordinary skill at
the time the invention was made to manipulate and optimize the
amount of creatine, creatinine, and soybean extract.
Optimization of parameters is a routine practice that would be
obvious to a person of ordinary skill in the art to employ and
reasonably expect success. One would have been motivated with
a reasonable expectation of success to determine the optimal
amount depending on the desired skin care effect.
(Final Act. 12.)
FF 5. The Examiner finds that Kelly teaches compositions applied to the
skin, and teaches that certain isoflavone compounds, such as genistein and
daidzein, protect the skin from UV induced immunosuppression and skin
damage, and that the isoflavone compounds are present in an amount from
0.05% to 10% w/w. {Id. at 11, citing Kelly col. 1,11. 6-9, col. 2,11. 54-62,
col. 7,11. 21-33, and col. 8,11. 18-19.)
DISCUSSION
Except as otherwise indicated, we adopt the Examiner’s findings and
conclusions as our own, including with regard to the scope and content of,
and motivation to combine, the prior art, as set forth in the Final Action
(Final Act. 10-19 and 24-34) and Answer (Ans. 5-10). We discern no error
in the rejection of the claims as obvious (Rejection Nos. 1-7), or as
unpatentable on the grounds of nonstatutory obviousness-type double
patenting (Rejection Nos. 8-10).
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Rejection No. 1
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a).
Analysis
We limit our consideration to claim 43 because the claims subject to
this rejection were not argued separately.
The Examiner finds that Sanbe teaches a skin preparation comprising
the combination of creatine and creatinine, and an active substance, such as
soybean extracts. (Final Act. 10-11; see FF 1,2.) The Examiner finds that
Kelly teaches that components of soybean extracts, such as genistein and
daidzein, may be used as active substances in a skin preparation. (Final Act.
II; see FF 5.)
Regarding the claimed amounts of creatine, creatinine, and soybean
extracts, the Examiner finds that Sanbe and Kelly teach “amounts that
encompass and overlap with the amounts recited in the instant claims.”
(Final Act. 12; see FF 3, 4, 5.) Regarding the claimed ratio of creatinine to
creatine, the Examiner finds that the ratios would have flowed from the prior
art, such as by merely selecting the lower values of the less preferred range
(0.01% for both, totaling 0.02%) or the greater values for the more preferred
range (5% for both, totaling 10%) to arrive at a ratio of 2:1 to 1:2 with a
reasonable expectation of success.11 (Final Act. 12-13; Ans. 8.)
11 The Examiner’s finding includes the inadvertent error of using the phrases
“more preferred range” and “less preferred range” in place of the other in
referring to Sanbe’s ranges. (Compare FF 3 to Final Act. 12-13; Ans. 8.)
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Based on these findings, the Examiner concludes that it would have
been obvious to an artisan of ordinary skill at the time the invention was
made to combine the teachings of Sanbe and Kelly, and that one would have
been motivated to do so with a reasonable expectation of success, thereby
rendering claim 43 obvious under 35 U.S.C. § 103(a). (Final Act. 11-13.)
Appellants advance several arguments based on the teachings of
Sanbe. (Appeal Br. 13-20; Reply Br. 2-5.) As to Kelly, Appellants state
that it “apparently fails to cure any of the noted deficiencies of SANBE.”
(Appeal Br. 18.)
Combination of creatinine and creatine
Appellants argue that Sanbe “fails to provide an apparent reason for
one of ordinary skill in the art to use both creatinine and creatine in a
(cosmetic) preparation.” (Appeal Br. 14.) According to Appellants, Sanbe
does not teach any advantage in such a combination, and “strongly suggests
that as long as creatinine is present, the presence of creatine can be
dispensed with.” {Id.) Appellants support this contention by arguing that
the combination of creatinine and creatine is not employed in any of the
working examples of Sanbe. {Id. at 14-15.)
We are not persuaded. A prior art reference may be read for all that it
teaches, In reMouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), and “is not
limited to the disclosure of specific working examples.” In re Mills, 470
F.2d 649, 651 (CCPA 1972). Here, Sanbe expressly teaches the
combination of creatinine and creatine. (FF 1; see also Sanbe ^ 4: “the
present inventors found that skin preparations for external use containing a
combination of creatinine and/or creatine with a chemical or active
substance . . . demonstrate higher skin care effects”.) Moreover, the reason
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to combine creatinine and creatine is because Sanbe expressly teaches to do
so.12
Weight ratios of creatinine and creatine
Appellants contend that, in view of the alleged lack of a reason to
employ creatinine and creatine simultaneously, one of ordinary skill would
not have a reason “to try to optimize the initial weight ratio of creatine and
creatinine.” (Appeal Br. 15-16.) That is, according to Appellants, one of
ordinary skill in the art “would not recognize the weight ratio of creatine and
creatinine in the compositions taught [by Sanbe] as a result-effective
variable.” {Id. at 16.)
We are not persuaded. It is well settled that “where the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955). Here, the total weight percentages
of creatine/creatinine are taught by Sanbe, with a clear indication that lower
percentages impact the effect of the preparation and higher percentages
impact stability of the preparation. (FF 3.) Moreover, given the ranges
recited in Sanbe (id.), a person of ordinary skill in the art, choosing the
combination of creatine and creatinine, may readily select an amount for
both between the lower amount (0.01%) and the higher amount of the
preferred range (5%), such as 2.0% creatinine and 2.0% creatine, that would
meet the claimed ratio limitation of 2:1 to 1:2, and the total (4.0%) would lie
within the Sanbe range of 0.01% to 10% for the creatinine/creatine
component of the Sanbe skin preparation. That is, the claimed ratio of 2:1 to
12 The combination of creatinine and creatine is thus not the result of
“hindsight” by the Examiner as Appellants contend. (Reply Br. 5.)
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1:2 recites a range that overlaps ratio ranges included within Sanbe when
creatinine and creatine are used together.13 See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.”)
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 43 for obviousness. Claims 44^4-7, 49, and 50
were not argued separately and fall with claim 43.
Rejection Nos. 2—7
Appellants respond to each of obviousness Rejection Nos. 2-7 by
relying on “at least the reasons set forth above,” and stating that the
additional cited reference(s) are “unable to cure the noted deficiencies” of
other references. (Appeal Br. 20-25.) Accordingly, because Appellants
advance no additional arguments, we affirm the rejections (Nos. 2-7) of
claims 51, 52, 54-56, and 58-66 for the reasons of record and as set forth
above in connection with Rejection No. 1. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
13 Appellants contest the Examiner’s statement that a person skilled in the art
would have been “capable of readily selecting” values within the ranges
taught by Sanbe (Final Act. 12-13), and specifically argue that “it is of no
relevance at all. . . what one of ordinary skill in the art would have been
capable of.” (Appeal Br. 16-17.) We discern no error in the Examiner’s
statement. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton,” and “[i]f a person of ordinary skill can implement a
predicable variation, § 103 likely bars its patentability.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417, 421 (2007).
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Rejection Nos. 8—10
Appellants respond to double patenting Rejection Nos. 8-10 by
stating that “Appellants will decide whether the filing of a terminal
disclaimer is appropriate once agreement on allowable subject matter has
been reached.” (Appeal Br. 25-26.) Accordingly, because Appellants
advance no additional arguments, we summarily affirm the rejections (Nos.
8-10) of claims 43^47, 49-52, 54-56, and 58-66 on the ground of
nonstatutory obviousness-type double patenting for the reasons of record.
Conclusions of Law
A preponderance of evidence of record supports the Examiner’s
rejections (Nos. 1-7) of claims 43-47, 49-52, 54-56, and 58-66 under pre-
AIA35U.S.C. § 103(a).
A preponderance of evidence of record supports the Examiner’s
rejections (Nos. 8-10) of claims 43^47, 49-52, 54-56, and 58-66 on the
ground of nonstatutory obviousness-type double patenting
(a) over claims 99-101, 104-110, 114, 116, 119-126, 130-135,
137, and 144-146 of copending Application No. 10/995,203 in view of
Duraiswami, Bonte, and Forster;
(b) over claims 44, 57-61, and 70-74 of copending Application
No. 11/087,395 (now US Patent No. 8,808,670 B2) in view of Duraiswami,
Forster, Gers-Barlag, and Bonte; and
(c) over claims 98-104, 107-109, 115, 119-121, 123, 124, 127—
132, 134, and 137-143 of copending Application No. 10/995,208 in view of
Duraiswami, Bonte, and Forster.
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SUMMARY
We affirm the rejections of all claims on appeal.
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
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