Ex Parte Swanson et al

Patent Trial and Appeal Board

May 27, 2016

12841980 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/841,980 07/22/2010
27752 7590 06/01/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
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.
11241R 3137
EXAMINER
WHEELER, THURMAN MICHAEL
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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 SWANSON, TOMOHIRO HAKOZAKI, and
LEO TIMOTHY LAUGHLIN II
Appeal2014-004318
Application 12/841,980 1
Technology Center 1600
Before ERIC B. GRIMES, ELIZABETH A. LA VIER, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134(a) of the Examiner's
rejections of claims 1-5, 7, and 9-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellants' briefs do not expressly identify the real party (or parties) in
interest. However, a Statement Under 37 C.F.R. § 3.73(b), dated January
12, 2011, indicates an assignment of this application from the inventors to
the Proctor & Gamble Company.
Appeal2014-004318
Application 12/841,980
The Specification relates to methods and compositions for inhibiting
PAR2 activation of keratinocytes. Spec. 1: 1-11. Claim 1 is representative:
1. A composition for inhibiting P AR2 activation of
keratinocytes comprising a vitamin B3 compound, an N-acyl
amino acid compound, and an amount of Laminaria Saccharina
extract sufficient to boost P AR2 inhibition of the vitamin B3
compound and the N-acyl amino acid compound.
Appeal Br. 9 (Claims App.). Appellants argue all of the pending claims
together, focusing on claim 1. See Appeal Br. 2-7; Reply Br. 1-3. We
follow suit.
REJECTION ON APPEAL
Claims 1-5, 7, and 9-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Millikin2 and Baldo. 3 Final Action 3.
DISCUSSION
The Examiner relies on Millikin to teach all of the elements of claim 1
except for using Laminaria saccharina extract ("L.s. extract") in a personal
care composition. See Final Action 3--4. In particular, the Examiner
explains that Millikin teaches skin and hair care compositions with active
ingredients including, inter alia, vitamin B3 and N-acyl amino acid
compounds. Id. at 3 (citing Millikin i-f 5). These compositions can be used
prophylactically or to treat keratinous tissue conditions, and are useful in
skin-lightening and acne treatment (if anti-acne actives are also included in
the composition). Id. (citing Millikin i-fi-15, 73, 128, claim 12). The
2 Millikin et al., US 2008/0069784 Al, published Mar. 20, 2008
("Millikin").
3 Baldo, US 2008/0119527 Al, published May 22, 2008.
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Appeal2014-004318
Application 12/841,980
Examiner turns to Baldo to teach using L.s. extract as an anti-seborrhoeic
active agent to treat localized hyperpigmentation. Id. at 4 (citing Baldo i-fi-12,
14, 82). The Examiner finds that it would have been obvious to one of
ordinary skill in the art to add an anti-seborrhoeic active agent (such as the
L.s. extract taught by Baldo) to Millikin's composition to treat the darkening
of skin caused by acne or to treat greasy skin. See id. at 4. The Examiner
further finds that "[ t ]he inhibiting of P AR2 activation of keratinocytes would
be an intrinsic property provided by the composition comprising vitamin B3,
a N-acyl amino acid compound and laminaria saccharina as a taught by
Millik[i]n and Baldo, as a whole." Id. at 4--5.
Appellants present four largely interrelated arguments, none of which
we find persuasive. First, Appellants assert that the references do not teach
or suggest each of the claimed elements because "Appellants are unable to
find any disclosure in Baldo that Laminaria saccharina is useful for use as a
depigmenting agent, let alone boosting the P AR2 inhibiting properties of
other hyperpigmentation actives." Appeal Br. 3. Rather, L.s. extract is "just
one example out of the vast number of anti-seborrhoeic active agents
disclosed by Baldo." Id. These arguments go to the intended use of L.s.
extract in Baldo, but the issue is whether Baldo teaches "an amount of
Laminaria Saccharina extract sufficient to boost P AR2 inhibition of the
vitamin B3 compound and the N-acyl amino acid compound," as recited in
claim 1. Claim 1 is a composition claim. Thus, whether or not Baldo
appreciated the utility of using L.s. extract for P AR2 inhibition is immaterial
to whether the L.s. extract as used in Baldo would, in fact, inhibit PAR2.
See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) ("The fact that
appellant uses [a chemical] for a different purpose does not alter the
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Appeal2014-004318
Application 12/841,980
conclusion that its use in a prior art composition [would have been] prima
facie obvious from the purpose disclosed in the references."). As the
Examiner notes, Baldo teaches ranges of an anti-seborrhoeic active agent (of
which L.s. extract is one option) by composition weight that overlap with
those taught in the Specification. Ans. 5 (citing Baldo i-f 102; Spec. 5, 11. 23-
27). If the amounts of L.s. extract disclosed in the Specification are
"sufficient to boost PAR2 inhibition of the vitamin B3 compound and the N-
acyl amino acid compound," so too would those disclosed in Baldo, if
included in a composition with a vitamin B3 compound and an N-acyl
amino acid compound. As to Appellants' critique that L.s. extract is just one
active agent among many described in Baldo (see Appeal Br. 3), we note
that Baldo lists L.s. extract among a relatively limited Markush group of
active agents (see Baldo, claim 10). Accordingly, L.s. extract would have
been among "a finite number of identified, predictable solutions," KSR
International Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007), to which one of
skill in the art would have turned in pursuit of the goals identified by the
Examiner, i.e., to treating greasy skin or acne-related darkening of skin (see
Final Action 4--5), that would have motivated the combining Baldo with
Millikin.
Second, Appellants argue that the Examiner improperly relies on
inherency as a substitute for the P AR2 inhibition properties of the
composition disclosed in claim 1. Appeal Br. 4. We disagree. As explained
above, satisfying claim 1 requires a particular "amount" of L.s. extract. That
this amount is defined functionally, in terms of its P AR2 inhibition and in
relation to other components of the composition, does not change this fact.
Inherency is appropriate in an obviousness analysis "when the limitation at
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Appeal2014-004318
Application 12/841,980
issue is the 'natural result' of the combination of prior art elements." PAR
Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014)
(quoting In re Oelrich, 666 F.2d 578, 581(CCPA1981)). Such is the case
here. Baldo and the Specification disclose overlapping ranges of L.s.
extract, as noted above. Within that overlapping range, it follows that the
L.s. extract from Baldo, if used in a composition including a vitamin B3
compound and an N-acyl amino acid compound, would naturally result in
the inhibition of P AR2.
Third, Appellants argue that the Examiner has failed to establish that
P AR2 inhibition-boosting is necessarily present in the prior art combination.
See Appeal Br. 5. According to Appellants, "the Office is not relying on the
inherent disclosure of a prior art reference, but on the allegedly inherent
properties of a hypothetical composition formed as a result of combining
elements from two different prior art references." Id. We disagree. The
Examiner relies on Baldo alone for the use of L.s. extract, and thus on Baldo
alone for the inherent P AR2-inhibition-boosting effects of L.s. extract.
Fourth, Appellants argue that there would have been no reason, aside
from impermissible hindsight, for one of ordinary skill in the art to have
combined Millikin and Baldo as recited in the claims, because Millikin and
Baldo disclose "a multitude of actives, which could potentially be combined
to form a multitude of different compositions." Appeal Br. 6. However,
Appellants appear to acknowledge that the ordinarily skilled artisan would
have recognized some benefits of combining Baldo and Millikin, just not the
benefit of using L.s. extract to boost the PAR2-inhibitory effects of the other
compounds:
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Appeal2014-004318
Application 12/841,980
[b ]ased on the disclosure in Baldo and Millikin, one of ordinary
skill in the art would expect the ranges ofN-acyl amino acid
and vitamin B3 compounds disclosed in Baldo[4] to result in a
composition th[ at] provides a known skin lightening benefit,
and the ranges of Laminaria Saccharina disclosed in Baldo to
result in a composition that provides a known anti-seborrheic
benefit. However, it was not known that Laminaria Saccharina
can boost the PAR-2 inhibiting activity ofN-acyl amino acid
and vitamin B3 compounds. Thus, the skilled artisan would not
expect the composition to provide such property.
Reply Br. 2. It is enough, however, if the ordinarily skilled artisan would
have had reason to combine the references, in the manner claimed, for a
reason other than that appreciated by the inventors. See KSR, 550 U.S. at
419 ("In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls."). The Examiner's rationales for combining Millikin and Baldo as
claimed, i.e., to treat darkening of the skin caused by acne, or to treat greasy
skin (see Final Action 4--5, and discussion supra), are sufficient to render
obvious the claimed compositions.
Having fully considered Appellants' arguments as presented in their
briefs, we are unpersuaded the Examiner erred in rejecting claim 1. Claims
2-5, 7, and 9-21 fall with claim 1.
CONCLUSION
For the reasons of record and as described herein, the Examiner's
rejection of claims 1-5, 7, and 9-21 is affirmed.
4 We assume Appellants meant "Millikin" instead of "Baldo" here, as
Millikin (not Baldo) teaches using N-acyl amino acids and vitamin B3. See
Millikin if 5.
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Appeal2014-004318
Application 12/841,980
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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