Ex Parte Wagner et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613000163 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 13/000,163 01/28/2011 Barbara Wagner C23897 1017 4743 7590 12/22/2016 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER BASQUILL, SEAN M ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BARBARA WAGNER, REINHOLD OHRLEIN, BERND HERZOG, KAI EICHIN, GABRIELE BAISCH, and STEPHANIE PORTMANN1 Appeal 2015-005114 Application 13/000,163 Technology Center 1600 Before ERIC B. GRIMES, RYAN H. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a method of improving the UV absorbing and UV screening capacity for protecting human and animal hair and skin against UV radiation, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “Reactive oxygen species (ROS) and radicals play a pivotal role in inducing oxidative damage and aging processes in skin cells.” (Spec. 1.) 1 Appellants identify the Real Party in Interest as BASF SE. (Br. 3.) Appeal 2015-005114 Application 13/000,163 UVA radiation “mainly produces free radicals/reactive oxygen species through interaction with endogenous photosensitizers. These free radicals will cause indirect damage to DNA, proteins and membranes.” (Spec. 2.) “Natural and synthetic antioxidants are used in many different cosmetic and/or topical pharmaceutical products in order to prevent or mitigate the adverse effects of oxidants and/or radicals.” (Spec. 1.) “The purpose of sun care products is the reduction of skin damage produced by single and repeated exposure to solar ultraviolet (UV) radiation.” (Spec. 2.) “Sun care products therefore contain UV absorbers as a first defen[s]e line. Their purpose is to attenuate the UV radiation of the sun. Antioxidants are used in sun care products as a secondary line of defen[s]e. Their purpose is to neutralize reactive radicals.” (Id.) Appellants’ invention “relates to the use of one or more benzotropolone[s] and their derivatives as antioxidants and UV absorbers and their use in sunscreens and/or cosmetic compositions.” (Spec. 1.) Claims 1, 4, 9, 10, 16, 17, and 32—35 are on appeal.2 Claim 1, the only independent claim, is representative and reads as follows: 1. A method of improving the UV absorbing and UV screening capacity for protecting human and animal hair and skin against UV radiation comprising applying thereto to a subject in need thereof a benzotropolone and their derivatives, wherein the benzotropolone derivatives correspond to the formula 2 Claims 2, 3, 6—8, 11—14, and 18—31 are also pending but have been withdrawn from consideration. (Br. 3.) 2 Appeal 2015-005114 Application 13/000,163 R2, R3, R4, R5 and R6 independently of one another are hydrogen; OH; Ci-C3oalkyl, C2-C3oalkenyl, Ci-C3oalkoxy, C3- C^cycloalkyl or Ci-C3ohydroxyalkyl, which may be substituted by one or more E and/or interrupted by one or more D; Cr- C2oaryl, which may be substituted by one or more G; C4- C2oheteroaryl, which may be substituted by one or more G, C2- Cigalkenyl, C2-Cigalkynyl, C7-C2saralkyl, CN, or—CO-R17; Ci- Csomono- or dialkylamino; COR9; COOR9; CONR9R10; CN; SO2R9; OCOOR9; OCOR9; NHCOOR9; NR9COR10; NH2; *- (CO)-NH-(CH2)ni-(PO)-(ORii)2; -(CO)-0-(CH2)ni-(PO)- (ORn)2; sulphate; sulphonate; phosphate; phosphonate; - (CH2)n2-[0-(S02)]n3-0Rli; -0-(CH2)n4(C0)n5-Ri 1; -(0)n6- (CH2)n7)-(PO)-(OR9)2; -(0)n6-(CH2)n7-S02-0R9; halogen; organosilanyl; organosiloxanyl; or a sugar residue linked directly in an a- or P-mode via the anomeric oxygen to the benzotropolone system or via a linear or branched alkylene, alkenylene, alkadiene or alkatriene spacer (sugar- (CH2)n-(Xi)i or o-benzotropolone system, wherein n = 1-10 and Xi = -0-; - (CO)-; -O-CO-; -COO-, -NH-; -S-; -S02-); Ri, R7 and Rg are hydrogen; R9 and Rio independently from each other are hydrogen; Ci-Cigalkyl or C3-Ci2-cycloalkyl which may be substituted by one or more E and/or interrupted by one or more D; C6-C2oaryl, which may be substituted by one or more G; C4- C2oheteroaryl,which may be substituted by one or more G; organosilanyl; organosiloxanyl; or a sugar residue linked directly in an a- or P-mode via the anomeric oxygen or via a linear or branched alkylene, alkenylene, alkadiene or alkatriene spacer (sugar- (CH2)n-*, wherein n = 1-10); or 3 Appeal 2015-005114 Application 13/000,163 R9 and Rio together form a five or six membered ring, R11 is hydrogen; or Ci-Cs-alkyl; ni, n2, n4 and n7 independently from each other are a number from 1 to 5; n3, n5 and n6 independently from each other are a 0; or 1; D is -CO-; -COO-; -S-; -SO-; -S02-; -0-; -NR14-; - SiRi9R2o-; -POR11-; -CRi2=CRb-; or -C=-; and E is -OR18; -SR18; -NR14R15; -NR14COR15; -COR17; - COORie; CONR14R15; -CN; halogen; or S03Ri8; S02Ri8; P03(Ri8)2; P02(Ri8)2; organosilanyl; organosiloxanyl; or a sugar residue linked directly in an a- or P-mode via the anomeric oxygen or via a linear or branched alkylene, alkenylene, alkadiene or alkatriene spacer (sugar- (CH2)n-(Xi)i oro-*, wherein n = 1-10 and Xi = -0-; -C(=0)-; -O-CO-; -COO-; -NH-; -S-; -S02-); G is E; Ci-Cisalkyl, which is optionally interrupted by D; Ci- Cisperfluoroalkyl; Ci-Cisalkoxy, which is optionally substituted by E and/or interrupted by D; wherein R12, Ri3, R14 and R15 independently of each other are hydrogen; C6-Cisaryl which is optionally substituted by OH, Ci-Cisalkyl or Ci-Cisalkoxy; Ci-Cisalkyl, which is optionally interrupted by -0-; or R14 and R15 together form a five or six membered ring, Ri6 is hydrogen; Ce-Cisaryl which is optionally substituted by OH, Ci-Cisalkyl or Ci-Cisalkoxy; Ci-Cisalkyl, which is optionally interrupted by -0-; Rn is H; C6-Cisaryl which is optionally substituted by OH, Ci-Cisalkyl or Ci-Cisalkoxy; Ci-Cisalkyl, which is optionally interrupted by -0-; Ris is hydrogen; Ce-Cisaryl, which is optionally substituted by OH, Ci-Cisalkyl or Ci-Cisalkoxy; Ci-Cisalkyl, which is optionally interrupted by -0-; 4 Appeal 2015-005114 Application 13/000,163 R19 and R20 independently of each other are hydrogen; Ci-Cigalkyl or C6-Cigaryl; which is optionally substituted by Ci-Cigalkyl; and * means that this radical is directed to the benzotropolone moiety. (Appeal Br. 28—31.) The following ground of rejection by the Examiner is before us on review: Claims 1, 4, 9, 10, 16, 17, and 32—35 under 35 U.S.C. § 103 as unpatentable over Fisher,3 Ho4 and Silverstein.5 DISCUSSION The Examiner finds that Fisher discloses topical compositions applied to the skin to protect against radiation damage caused by UV radiation, such as erythema, that include UV blockers and compounds which inhibit matrix metalloproteinases (“MMP”). (Final Action 5; Ans. 9.) The Examiner finds that Fisher teaches the MMP inhibitors include “those compounds known to provide antioxidant effect,” including polyphenols, “and indeed flavones and flavonoid derivatives.” (Id.; Ans. 7, 12, see also Ans. 9 (referring to Fisher’s disclosure of “isoflavones and flavonols such as quercetin”.) According to the Examiner, Fisher teaches that flavonoid derivatives “are particularly preferred antioxidants and anti-MMP agents to be used in the topically applied sunscreen compositions disclosed.” (Ans. 7—8.) The Examiner finds 3 Fisher et al., US 2005/0058709 Al, published Mar. 17, 2005. 4 Ho et al., US 2006/0241154 Al, published Oct. 26, 2006. 5 Silverstein et al., Spectrometric Identification of Organic Compounds, 5th ed., 289-302 (1991). 5 Appeal 2015-005114 Application 13/000,163 that Fisher indicates the combination, “when applied topically to the hair and skin, prevents] photoaging by reducing the amount of UV radiation contacting the skin, as well as blocking the production of reactive oxygen species that induce the MAP kinase cascade and activate MMP.” (Final Action 5—6.) According to the Examiner, Fisher does not specifically recite the use of the claimed benzotropolones, but substitution of such a compound into Fisher would have been obvious in light of the teachings of Ho. (Final Action 6—7; Ans. 7—8.) The Examiner finds “Ho describes a variety of polyphenol compounds having anti-inflammatory and antioxidant activity due to their ability to scavenge reactive oxygen species” and “indicates that compounds containing the benzotropolone moiety demonstrate excellent anti inflammatory and antioxidant properties.” (Final Action 6.) According to the Examiner, Ho indicates “that such benzotropolone compounds are suitable for topical administration to the skin of subjects in need of such treatment,” including “compound 15, ‘GACa,’ corresponding to the species elected by [Appellants].” (Id.) Moreover, the Examiner finds that Ho teaches “the claimed benzotropolone derivatives [are] derived from flavonoids, and therefore represent flavonoid derivatives within the understanding of Fisher.” (Ans. 12.) The Examiner contends that, in light of the foregoing, “the skilled artisan would recognize that utilizing the instantly claimed GACa as an antioxidant in the compositions and methods of Fisher amounts to little more than the selection of a known material for incorporation into a composition, based on its recognized suitability for its 6 Appeal 2015-005114 Application 13/000,163 intended use.” (Final Action 7; see also Ans. 7—8.) The Examiner contends the motivation to substitute is provided by Fisher express[ly] teaching . . . that including antioxidant agents, specifically those known to scavenge reactive oxygen species, reduce[s] the activation of MMP and reduce [s] both erythema and alternative signs of photoaging. and that Ho teaches that the benzotropolone compounds [claimed] are not only recognized as antioxidants and ROS scavengers suitable for topical application to the skin, but are also chemical compounds falling within the general description of “polyphenols” disclosed as suitable antioxidants by the teachings of [FJisher (Final Action 7; see also Ans. 7—8.) We disagree with the Examiner’s findings of fact with respect to Fisher teaching generally that the subgenus of “flavonoid derivatives” “are particularly preferred antioxidants and anti-MMP agents to be used in the topically applied sunscreen compositions disclosed.” (Ans. 7—8.) In assessing the teachings of the prior art, it is essential for “the decisionmaker [to] forget what he or she has been taught. . . about the claimed invention.” In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). While “the decisionmaker [of course] must bring judgement to bear[, i]t is impermissible . . . simply to engage in a hindsight reconstruction of the claimed invention.” In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991). Fisher teaches that its “preferred inhibitors of UV-induced increases in the levels and/or activity of MMPs” are retinoids (Fisher | 57; Br. 11), not flavonoid derivatives generally as the Examiner contends (Ans. 8). It is true that Fisher also describes flavonols, such as quercetin, and isoflavones as potential MMP inhibitors that could be used in a composition for topical 7 Appeal 2015-005114 Application 13/000,163 application (Fisher | 66, Ans. 8—9). However, Fisher acknowledges “the general unpredictability, of determining whether a given compound will inhibit erythema and/or MMP-mediated degradation of the skin after exposure to UV radiation.” (Fisher | 85.) Moreover, as Appellants note, Fisher “specifically separates the discussions regarding topical versus oral administration” of MMP inhibitors. (Br. 14; Fisher 1100.) And with regard to “[pjolyphenols, like epigallocatechin-3-galiate (EGCG), a major tea polyphenol,” Fisher refers to its use in an orally administered composition. (Fisher 1106.) Fisher discloses that “[t]he oral MMP inhibitor (or combination thereof) can be combined with an antioxidant, preferably one having MMP inhibiting activity,” like flavonoids, including quercetin, as well as synthetic derivatives in an oral composition. (Fisher 1125.) While quercetin and certain other antioxidant flavonols are noted for use in both topical and oral administration, Fisher does not similarly disclose the use of “[pjolyphenols, like epigallocatechin-3-galiate (EGCG), a major tea polyphenol” (Fisher 1106) in a topical composition, much less benzotropolones in general. The Examiner contends that the Fisher discussion of polyphenols we note above “refer[sj to the limiting effect to be applied to the claims'1'’ rather than limiting the impact of the reference teachings with respect to the disclosed use of polyphenols described. (Ans. 8.) While Fisher does mention “claims” when discussing polyphenols, it is referring to the idea that the claims should not be deemed to cover oral intake of naturally occurring dietary amounts of such compounds, but rather are directed to “a dose that is significantly greater . . . preferably, at least about five times 8 Appeal 2015-005114 Application 13/000,163 what is likely to be found with a normal dietary intake.” (Fisher 1106.) We do not find the reference to claim interpretation regarding oral dosage amount of polyphenols to broaden the teaching of Fisher with regard to suggesting polyphenol use in topical applications. That is, in light of the foregoing discussion, we disagree with the Examiner’s contention that Appellants’ interpretation of Fisher’s discussion of polyphenols is a “cramped and limited reading of what Fisher, when read in its entirety, conveys to the person or ordinary skill in the art” (Ans. 8). In our opinion, it is only with the benefit of Appellants’ claims that the Examiner extends Fisher’s explicit teaching regarding polyphenols as a class to be used in topical applications. “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Even if it might be the case that Fisher teaches that polyphenols are a potential class of antioxidants that might be applied topically, we do not agree with the Examiner that the claimed invention would be obvious from the teachings of Fisher and Ho. There is no dispute that “some of Ho’s benzotropolone moieties may overlap with compounds of presently recited formula (1).” (Br. 17.) However, while Ho may indicate that these benzotropolones may have “anti-inflammatory and antioxidant activity due to their ability to scavenge reactive oxygen species” (Ho 14), as Appellants note, “no portion of Fisher teaches or suggests that all antioxidants [even if they have this activity] . . . reduce both erythema and alternative signs of photoaging, as the Examiner has alleged.” (Br. 18.) Indeed, quite to the 9 Appeal 2015-005114 Application 13/000,163 contrary; as we noted above, Fisher indicates “the general unpredictability, of determining whether a given compound will inhibit erythema and/or MMP-mediated degradation of the skin after exposure to UV radiation.” (Fishery 85.) We agree with Appellants that “there is no reason to combine the teachings of Ho with those of Fisher.” (Br. 17.) Fisher does not disclose benzotropolones in general are useful in its method of reducing erythema or photoaging, much less topically. Fisher would at best suggest polyphenols like EGCG in an oral composition. (See, e.g., Fisher 1106.) However, even then, Fisher as a whole suggests that the outcome would be unpredictable. (Fisher | 85.) Contrary to the Examiner’s position, one of ordinary skill in the art would not have any reasonable expectation from the art that any polyphenol or flavonoid compound with antioxidant properties would be effective in reducing the activation of MMP and reducing erythema and/or alternative signs of photoaging.6 As the Examiner aptly noted, “it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect.” (Ans. 12 (emphasis added).) For the reasons 6 The Examiner relies on Silverstein as support for the proposition that finding the claimed benzotropolones would have the inherent ability to absorb UV radiation (Final Action 7—8), and not as evidence that the claimed compounds would be expected to reduce erythema and/or alternative signs of photoaging. Because the Examiner’s reliance on Silverstein is not relevant to the deficiencies discussed above, a discussion of the Examiner’s assertions regarding it is not warranted, and we take no position on their accuracy. 10 Appeal 2015-005114 Application 13/000,163 discussed, we disagree with the Examiner that the art teaches the selection will reasonably predictably result in the disclosed effect. For the foregoing reasons, we reverse the Examiner’s rejection of claim 1 as being obvious over Fisher, Ho, and Silverstein. SUMMARY We reverse the Examiner’s rejection of claims 1, 4, 9, 10, 16, 17, and 32—35 under 35 U.S.C. § 103 as unpatentable over Fisher, Ho, and Silverstein. REVERSED 11 Copy with citationCopy as parenthetical citation