Ex Parte Swanson et alDownload PDFPatent Trial and Appeal BoardJul 20, 201613189182 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/189,182 07/22/2011 27752 7590 07/22/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Cheri Lynn Swanson 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. 11810 9691 EXAMINER TATE, CHRISTOPHER ROBIN ART UNIT PAPER NUMBER 1655 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHERILYNN SW ANSON, TOMOHIRO HAKOZAKI, and LEO TIMOTHY LAUGHLIN II Appeal2014-005943 Application 13/189,182 Technology Center 1600 Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , ,.. .. ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg crnm1s to a memoa of inhibiting tyrosinase activity. The Examiner rejected the claims as anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company (see App. Br. 1 ). Appeal2014-005943 Application 13/189,182 Statement of the Case Background "It is well recognized that tyrosinase is an essential component of melanin synthesis ... A need exists for novel methods and compositions by which to inhibit tyrosinase activity" (Spec. 1: 10-14 ). "Extracts of Laminaria Saccharina, a species of brown algae, are known in the art. One example is sold under the tradename Phlorogine" (Spec. 1: 15-16). The Claims Claims 1-5, 7-22, 24, and 25 are on appeal. 2 Independent claim 1 is representative and reads as follows: 1. A method of inhibiting tyrosinase activity comprising the step of applying a composition comprising a safe and effective amount of Laminaria Saccharina extract to a substrate in need of tyrosinase inhibition, wherein the composition is applied for a period of time sufficient for the Laminaria Saccharina extract to inhibit tyrosinase activity. The Issues3 A. The Examiner rejected claims 1-5, 7-22, 24, and 25 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, 35 U.S.C. § 103(a) as obvious over "Lauder Product"4 (Final Act. 2--4). 2 Claims 6 and 23 were cancelled (see Amendment (filed 711112013) 5). 3 The Examiner noted that the double patenting rejections are withdrawn over a terminal disclaimer or otherwise mooted (see Ans. 9). 4 Extra Concentrated Brightening Essence, XP-002610976, Estee lauder brand 1--4 (2008) (hereinafter "Lauder Product" for consistency with Appellants' usage). 2 Appeal2014-005943 Application 13/189,182 B. The Examiner rejected claims 1-5, 7-22, 24, and 25 under 35 U.S.C. § 103(a) as obvious over Willemin5 (Final Act. 4---6). C. The Examiner rejected claims 1-5, 7-22, 24, and 25 under 35 U.S.C. § 103(a) as obvious over Pelletier6 and Willemin (Final Act. 6-9). A. 35 U.S.C. §§ 102(b)/103(a) over "Lauder Product" The Examiner finds that the "Lauder Product" teaches "a commercial product termed 'Extra Concentrated Brightening Essence' (launched March 1, 2008 by Estee Lauder) which is used to reduce age spots and dark spots on a subject's via topical application thereto. The website document discloses that this product contains Laminaria saccharina extract" (Final Act. 2). The Examiner finds that "the cited website document is likely to inherently possess the same characteristics of the Laminaria saccharina extract-containing composition employed within the instantly claimed method" (id. at 3). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that use of the Laminaria saccharina extract containing "Lauder Product" inherently anticipates or renders obvious the claims? Findings of Fact 1. The Specification teaches the "compositions of the present invention may comprise Laminaria Saccharina extract in any amount allowing for reasonable delivery of the composition to a substrate. 5 Willemin et al., US 2008/0014162 Al, published Jan. 17, 2008 ("Willemin"). 6 Pelletier et al., US 2009/0192124 Al, published July 30, 2009 ("Pelletier"). 3 Appeal2014-005943 Application 13/189,182 Surprisingly, it has been found that small quantities of Laminaria Saccharina extract provide appreciable tyrosinase inhibition effect" (Spec. 3:26-29). 2. The Specification teaches that the "compositions of the present invention may comprise Laminaria Saccharina extract in amounts less than about 1.25%, 0.5%, 0.25%, 0.125%, 0.075%, 0.0250%, 0.0125%, 0.0063%, or 0.0031 %" (Spec. 3 :29-31 ). 3. The Specification teaches that the "composition may be applied and left on the substrate for a sufficient contact time and/or repeatedly applied a sufficient number of times to achieve the desired inhibition of tyrosinase. In certain embodiments, the contact time is greater than about 1 hour, 2 hours, 6 hours, 8 hours, 12 hours, or 24 hours" (Spec. 11:7-10). 4. "Lauder Product" teaches that: The CyberWhite EX system helps correct the appearance of the three different kinds of dark spots that can cloud your complexion: 1. STUBBORN AGE SPOTS APPEAR VIRTUALLY INVISIBLE. Fast-acting Melanin Dissolving Technology penetrates the deepest layers of skin's surface to reduce the appearance of stubborn age spots until they become virtually invisible to the naked eye. 2. SMALL SURFACE DARK SPOTS ARE CLEARED AW A Y. The sugar-derived refinisher N Acetyl Glucosamine helps skin speed away the smallest surface dark spots to reveal visibly brighter, clearer, beautifully even-toned skin. 3. FUTURE DARK SPOTS ARE VISIBLY DISCOURAGED. Super-potent Melanin Interception Technology reduces the visible skin-darkening effects of histamine release. Skin is visibly calmed, helping visibly discourage future spots ("Lauder Product" 1-2). 4 Appeal2014-005943 Application 13/189,182 5. "Lauder Product" teaches to "[u]se the product after your normal skincare regime. Put a sufficient amount on a sponge and spread over all skin" ("Lauder Product" 2). 6. "Lauder Product" teaches that one of the ingredients is laminaria saccharina extract ("Lauder Product" 3). Principles of Law Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnotes omitted). Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 2--4; FF 1-5). We begin with claim interpretation because before a claim is properly interpreted, its scope cannot be compared to the prior art. Here, the phrases "safe and effective amount" and "period of time sufficient" are at issue. Regarding "safe and effective" amounts of Laminaria Saccharina extract necessary for activity, the Specification states that "small quantities of Laminaria Saccharina extract provide appreciable tyrosinase inhibition 5 Appeal2014-005943 Application 13/189,182 effect" (FF 1) including amounts less than 0.0031 % (FF 2). The Specification provides no minimum amount necessary for efficacy. Regarding "period of time", the Specification teaches application "for a sufficient contact time ... to achieve the desired inhibition of tyrosinase", with times as short as one hour (FF 3). Therefore, we interpret these phrases in claim 1 to encompass administration of amounts of Laminaria Saccharina extract that may be less than 0.0031 % for periods of time as short as one hour (FF 1-3). Appellants contend that the Lauder Product does not contain any disclosure of: 1) inhibiting tyrosinase activity or a method of reducing tyrosinase activity; 2) what a safe and effective amount of Laminaria Saccharina extract is; or 3) applying a composition comprising a safe and effective amount of Laminaria Saccharina extract for a period of time sufficient for the Laminaria Saccharina to inhibit tyrosinase activity. (ii .. pp. Br. 3.) Appellants fhrther contend that even if "the Lauder Product is likely to inherently possess the same characteristics as the composition recited in claims 1 and 8 of the present application, this is not enough to establish inherency. The Office must show that the Lauder Product necessarily possesses the alleged inherent property" (App. Br. 6). We do not find these arguments persuasive because the "Lauder Product" teaches a Laminaria Saccharina extract containing composition that functions to reduce age spots (FF 4), a function that the Examiner reasonably correlates with tyrosinase inhibition based on the Specification's own teaching that "an area on the facial skin surface in need of tyrosinase inhibition" is when "the area is a hyperpigmented spot" (Spec. 1:35-2: 1; cf Ans. 2). Moreover, the Examiner reasonably finds that "in vivo functional 6 Appeal2014-005943 Application 13/189,182 effects - i.e., the Laminaria saccharina extract within the composition inhibiting tyrosinase activity ... would be inherent upon topical application" (Ans. 3--4). The Examiner has, therefore, reasonably established a prima face case that the prior art process of using the "Lauder Product" "after your normal skincare regime. Put a sufficient amount on a sponge and spread over all skin" (FF 4--6) inherently applies a "safe and effective" amount of Laminaria saccharina extract for a period of time that inherently "inhibits tyrosinase activity." This case reasonably shifts the burden to Appellants to demonstrate that application of the "Lauder Product" as directed does not meet the requirements of claim 1, as reasonably interpreted. Best, 562 F .2d at 1255. Appellants have provided no such evidence. Appellants contend that "[ s ]imply because the Lauder Product discloses a spot improvement benefit does not mean that the skilled artisan would necessarily recognize that it also suggests inhibiting tyrosinase activity" (App. Br. 4). We find this argument unpersuasive because it fails to address the inherency issue. There is no requirement that the skilled artisan recognize that the "Lauder Product" containing Laminaria saccharina extract inhibits tyrosinase activity, only that it actually does so. This is similar to Perricone, where a method claim preamble which required "preventing sunburn damage to exposed skin surfaces," was found satisfied by a prior art skin composition which had been applied to skin surfaces, but for a different purpose. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378-79 (Fed. Cir. 2005). "[T]he new realization alone [that the old composition would prevent sunburn damage] does not render the old invention patentable." (Id. 7 Appeal2014-005943 Application 13/189,182 at 1377.) Similarly, the new realization by Appellants that a process of applying Laminaria saccharina extract to skin will inhibit tyrosinase does not overcome the prior art teachings to use the "Lauder Product" containing Laminaria saccharina extract to the skin (FF 4--6). We recognize, but find unpersuasive, Appellants' contention that "[ w ]hy would the skilled artisan be prompted to modify the composition of the Lauder Product such that it contains an amount of Laminaria Saccharina effective for inhibiting tyrosinase activity" (App. Br. 5). As already noted, the amount of Laminaria saccharina extract is reasonably interpreted as "effective for inhibiting tyrosinase activity" to some degree, particularly given that the "Lauder Product" teaches the inhibition of age spots, the result of inhibiting tyrosinase activity (FF 4 ). Lastly, Appellants contend that "claims 8 and 25 both recite, inter alia, a composition comprising 0.025% or less of a Laminaria Saccharina extract" (App. Br. 7). We find this argument persuasive. The Examiner has provided no evidence demonstrating these specific amounts of Laminaria Saccharina extract in the "Lauder Product". While the placement of Laminaria Saccharina extract in the ingredient list suggests very small amounts, the evidence is lacking for the specific amount. We note that this argument would support the anticipation rejection of claim 1 because Appellants are essentially contending that the "Lauder Product" may contain more than 0.025% Laminaria Saccharina extract, which would inherently satisfy the safe and effective amounts to inhibit tyrosinase activity requirements of claim 1. 8 Appeal2014-005943 Application 13/189,182 Conclusions ofLaw The evidence of record supports the Examiner's conclusion that use of the Laminaria saccharina extract containing "Lauder Product" inherently anticipates or renders obvious claim 1. The evidence of record does not support the Examiner's conclusion that use of the Laminaria saccharina extract containing "Lauder Product" inherently anticipates or renders obvious claims 8 and 25. B. and C. 35U.S.C.§103(a) over Willemin alone or with Pelletier Because the same issues are dispositive for both of these rejections, we will consider them together. The Examiner finds that Willemin teaches a method for treating skin disorders in need of a calmative - such as inflammatory hyperpigmentation, via topically applying to the skin surface ... a dermatological composition ... that comprises ... a calmative anti-inflammatory agent such as Laminaria saccharina extract - especially the commercial Laminaria saccharina extract product kno\'l/n as Phlorogine ® ... including within a level of 0.0001 to 10% - preferably a level of0.0005 to 2% ... (Final Act. 4--5). The Examiner finds it obvious to "topically apply to the skin of a subject's skin suffering from inflammatory hyperpigmentation, a dermatological composition comprising an effective amount of a Laminaria saccharina extract ... as a calmative anti-inflammatory agent thereto, based upon the beneficial teachings provided by Willemin" (Final Act. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Willemin alone or with Pelletier render the claims obvious? 9 Appeal2014-005943 Application 13/189,182 Findings ofFact 7. The Specification teaches that a "suitable Laminaria Saccharina extract containing composition is commercially available as Phlorogine and/or Phlorogine BG ... Phlorogine and/or Phlorogine BG contain approximately about 1 % to about 2.5% dry Laminaria Saccharina extract" (Spec. 4, 11. 3-5). 8. Willemin teaches "non-therapeutic method to prevent and/or treat skin in need of a calmative comprising at least a step of applying to the skin a composition comprising at least one C-glycoside derivative" (Willemin i-f 2). 9. Willemin teaches that the "C-glycoside derivative used according to the invention may also be combined with at least 0.00001 % to 95% by weight of an anti-inflammatory agent or another calmative, or a mixture thereof' (Willemin i-f 369). 10. Willemin teaches that exemplary anti-inflammatory agents include "the water-glycol extract of the alga Laminaria saccharina, especially Phlorogine® sold by the company SECMA" (Willemin i-f 375). 11. Willemin teaches that the "concentration of anti-inflammatory compound may range between 0.0005% and 2% by weight relative to the total weight of the composition" (Willemin i-f 3 77). 12. Pelletier teaches the "use of specific ceramides as skin- depigmenting agent, and also to a process for depigmenting the skin" (Pelletier i-f 1 ). 13. Pelletier teaches calmatives including "an extract of Laminaria saccharina" (Pelletier i-f 67). 10 Appeal2014-005943 Application 13/189,182 Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 4--9; FF 7-13) and agree that the claims are rendered obvious by Willemin alone or with Pelletier. We will address Appellants' arguments below. Appellants contend that "Laminaria saccharina is listed as one of the many additional calmatives in the laundry list. Paragraph [0402]. However, there is no disclosure in Willemin of using an extract of Laminaria saccharina to inhibit tyrosinase activity, as recited in claims 1, 8 and 25 of the present application" (App. Br. 7). We do not find this argument persuasive. Willemin teaches applying a composition to the skin (FF 8) that may comprise Laminaria saccharina extract (FF 9-10) in amounts overlapping those required by the claims (FF 11 ). The resulting inherent tyrosinase activity "cannot become nonobvious simply by ... claiming the [result] . . . . To hold otherwise would allow any formulation-no matter how obvious-to become patentable merely by testing and claiming an inherent property." Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012). See also Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.") Appellants contend that in this case, claim 1 recites "a safe and effective amount Laminaria saccharina extract." Claims 8 and 25 recite a composition comprising 0.025% or less of a Laminaria Saccharina extract, and leaving the composition on the area for 11 Appeal2014-005943 Application 13/189,182 a period of time sutlicient for the Laminaria Saccharina extract to inhibit tyrosinase activity. Since each of these limitations is an element in its respective claim, the Office must show that the claim element is taught or suggested in the prior art. (App. Br. 8). We find this argument unpersuasive because Willemin specifically teaches a range for anti-inflammatory Laminaria saccharina compounds of 0.0005% and 2% (FF 10-11), a range that substantially overlaps the range of 0.0031 % to 1.25% disclosed in the Specification (FF 2). "A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellants have provided no evidence rebutting this prima face case of obviousness. Appellants "submit that the Office Action has not shown why the skilled artisan would specifically select Laminaria Saccharina from the multitude of other calmatives, and then incorporate a specific amount (e.g., safe and effective amount) in a skin care composition without resorting to impermissible hindsight" (App. Br. 8). We are not persuaded, consistent with Wrigley, where the Federal Circuit found a "strong case of obviousness based on the prior art references of record. [The claim] recites a combination of elements that were all known in the prior art, and all that was required to obtain that combination was to substitute one well-known ... agent for another." Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). Here, Willemin teaches a number of well-known agents including Laminaria saccharina extract (FF 10) as well as a range of amounts (FF 10), reasonably rendering the claims prima facie obvious. Appellants have not addressed the 12 Appeal2014-005943 Application 13/189,182 obviousness case by providing any evidence of a secondary consideration such as unexpected results. Appellants similarly argue Pelletier, but these arguments are cumulative to the arguments relative to Willemin alone (see App. Br. 9) and unpersuasive for the same reasons. Conclusion of Law The evidence of record supports the Examiner's conclusion that Willemin alone or with Pelletier render the claims obvious. SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § § 102(b )/103 (a) as anticipated by "Lauder Product". Claims 2-7 fall with claim 1. We reverse the rejection of claims 8-22, 24, and 25 under 35 U.S.C. § § 102(b )/103 (a) as anticipated by "Lauder Product". We affirm the rejection of claim 1under35 U.S.C. § 103(a) as obvious over Willemin. Claims 2-5, 7-22, 24, and 25 fall with claim 1. We affirm the rejection of claim 1under35 U.S.C. § 103(a) as obvious over Willemin and Pelletier. Claims 2-5, 7-22, 24, and 25 fall with claim 1. 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 13 Copy with citationCopy as parenthetical citation