Ex Parte Swanson et al

Patent Trial and Appeal Board

Jul 20, 2016

13189182 (P.T.A.B. Jul. 20, 2016)

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).
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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").
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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).
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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
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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
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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.
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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.
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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?
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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).
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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
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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
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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
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