Ex Parte Yarosh

Patent Trial and Appeal Board

Apr 24, 2017

13022990 (P.T.A.B. Apr. 24, 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.
13/022,990 02/08/2011 Daniel B. Yarosh 10.05 7783
23487 7590 04/24/2017
THF FSTFF T AT TDFR mS TNC EXAMINER
155 PINELAWN ROAD CHICKOS, SARAH J
STE 345 S
MELVILLE, NY 11747 ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
04/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL B. YAROSH1
Appeal 2016-008472
Application 13/022,990
Technology Center 1600
Before, JEFFREY N. FREDMAN, TAWEN CHANG
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
composition for reducing the appearance of under-eye dark circles, which
have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Under-eye dark circles are often the result on a combination of factors
such as deep vascular congestion/superficial vascularity, hyperpigmentation,
skin translucency, and structural shadowing. Spec., 1—2. “The present
1 Appellant identifies the Real Party in Interest as ELC Management LLC.
Br. 1.
Appeal 2106-008472
Application 13/022,990
invention is based on the discovery that the combination of certain bicyclic
monoterpene diols with certain skin lightening agents surprisingly and
unexpectedly achieves synergistic reduction of the appearance of under-eye
dark circles, by simultaneously targeting vascular congestion in the dermis
layer and hyperpigmentation in the epidermis layer of the skin” Spec.4.
Claims 1—11 are on appeal. Claim 1 is the sole independent claim and
reads as follows:
1. A cosmetic or dermatological composition for reducing
appearance of under-eye dark circles, comprising at least one
bicyclic monoterpene diol and at least one skin lightening agent
in a cosmetically or pharmaceutically acceptable carrier.
The claims stand rejected as follows.
Claims 1, 2, and 4—7 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown ’9762 in view of Aoki.3
Claim 3 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Brown ’976 in view of Aoki in further view of Brown Article.4
Claims 8 and 9 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown ’976 in view of Aoki and in further view of Yano.5
2 Brown et al., US 2006/0120976 Al, published June 8, 2006 (“Brown
’976”).
3 Aoki et al., US 2007/0219158 Al, published Sept. 20, 2007 (“Aoki”).
4 Brown et al., Bicyclic monoterpene diol stimulate release of nitric oxide
from skin cells, increase microcirculation, and elevate skin temperature, 15
Nitric Oxide 70 (2006) (“Brown Article”).
5 Yano et al., US 2005/0220810 Al, published Oct. 6, 2005 (“Yano”).
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Application 13/022,990
Claims 10-11 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown ’976 in view of Aoki in further view of Bissett.6
BROWN ’976 COMBINED WITH AOKI
Issue
As seen above, all of the rejections are based on the combination of
Brown ’976 and Aoki and Appellant has only addressed the propriety of this
combination of references. Appeal Br. 2—3. Thus, all the claims stand or
fall based on the appropriateness of the combination of Brown ’976 and
Aoki. The issue before us, therefore, is whether a preponderance of
evidence supports the Examiner’s finding that the claims 1,2, and 4—7
would have been obvious over Brown ’976 combined with Aoki.
The Examiner finds that Brown ’976 discloses a cosmetic
composition for regulating pigment content and skin disorders using bicyclic
monoterpene diols. Final Act. 4. The Examiner finds that Brown ’976
discloses topical formulations. Id. The Examiner finds that while Brown
’976 does not teach the use of the specific plant extracts recited as skin
lightening agents in the claims, Aoki teaches the use of those extracts. Id.
The Examiner finds that Aoki teaches the preparation of a skin preparation
comprising an inositol derivative and the recited plant extracts. Id. The
Examiner finds that Aoki teaches that the disclosed composition does not
have a grainy feeling and gives a moist feel and promotes healthy skin. Id.
The Examiner concludes that
One of ordinary skill in the art would have been motivated to
combine the teachings of Brown [’976] with Aoki to add the 1
6 Bissett, US 2006/0263400 Al, published Nov. 23, 2006 (“Bissett”).
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Appeal 2106-008472
Application 13/022,990
% of the Scutellaria baicalensis root extract, Pyrus malus
(apple) extract and Cucumis sativus (cucumber) extract to the
composition of Brown because of the advantages that Brown
and Aoki teach. Brown describes a cosmetic composition for
regulating the pigment content in mammalian skin and treating
various skin disorders including perturbations of the
NO/cGMP/PKG pathway in a mammal. (See abstract and
claim 44). Aoki teaches that its skin preparation has excellent
sensory properties when spread over skin and keeps skin
healthy. (See Abstract). A person of ordinary skill in the art
would have been motivated by these advantages to combine the
plant extracts Scutellaria baicalensis root extract, Pyrus malus
((apple) extract, and Cucumis sativus (cucumber) extract with
2,3-cis/exo-pinanediol and a pharmaceutically acceptable
carrier to form a dermatological composition. Thus, the
invention would have been prima facie obvious to one of
ordinary skill in the art at the time of the invention as evidenced
by the references.
Final Act. 5—6.
Appellant contends that there is no motivation to combine the
references. Br. 2. Appellant argues that one skilled in the art would not be
motivated to combine the compounds of Brown ’976 which promotes
melanogenesis with skin lightening agents such as the extracts disclosed in
Aoki. Br. 3.
Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.
FF1. Brown ’976 discloses compositions for regulating melanin
content. Brown ’976, Abstract.
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Application 13/022,990
FF2. Among the active ingredients that can be used in the
composition of Brown ’976 are bicyclic monoterpene diols such as
camphendiol. Brown ’976 1158.
FF3. Brown ’976 teaches that the active ingredients can be
formulated with an acceptable carrier to form a topical formulation for
dermatological uses. Brown ’976 1172.
FF4. Brown ’976 teaches that the disclosed “compositions of the
present invention may also include other active ingredients, as well as inert
or inactive ingredients.” Id.
FF5. Aoki discloses cosmetic compositions that “can be spread over
ski without causing grain[y] feeling and has excellent effects of giving
sufficient moist feeling and keeping the skin heathy.” Aoki, Abstract.
FF6. The composition of Aoki comprises an inositol derivative and a
plant extract including extracts from Scutellaria baicalensis, Pyrus malus,
and Cucumis sativus. Aoki, Abstract and 1 59.
Principles of Law
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. . . . [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
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Appeal 2106-008472
Application 13/022,990
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419-20 (2007).
Analysis
We agree with the Examiner that one skilled in the art would have
been motivated to combine the teachings of Brown ’976 with Aoki to
produce the claimed composition. Brown ’976 teaches that the active
ingredients described therein can be formulated to produce a topical
formulation for dermatological applications and that it may contain other
active ingredients. FF3 and 4. Aoki discloses a cosmetic or dermatological
composition which gives a moist feeling and keeps skin healthy. FF5. The
composition contains plant extracts which are the same as recited in the
instant claims. FF6. We agree with the Examiner’s conclusion that one
skilled in the cosmetic art would have been motivated to combine the active
ingredients of Brown ’976 with the composition of Aoki to combine the
advantages of both products. Ans. 7—8. The resulting composition would
have the same components as the claimed composition and would be
expected to have the same properties. Ans. 8.
We have considered Appellant’s argument that one killed in the art
would not have been motivated to combine a skin lightening composition
with one that regulate melanogenesis and find it unpersuasive. As the
Examiner points out, under KSR, Appellant’s avowed purpose is not
controlling; rather, any known problem in the art can serve as motivation to
combine the reference. KSR Int’l Co., 550 U.S. at 419—20. See In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior art to
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Application 13/022,990
combine the references does not have to be identical to that of the applicant
to establish obviousness.”). We agree with the Examiner that
one of ordinary skill in the art would be motivated at the time
the invention was made to combine these teachings to achieve a
cosmetic composition that regulates the pigment content in
mammalian skin and treats various skin disorders including
perturbations of the NO/cGMP/PKG pathway and also has
excellent sensory properties and keeps skin healthy.
Ans. 8—9.
Conclusion of Law
We conclude that a preponderance of the evidence of record supports
the Examiner’s conclusion that rejected claims would have been obvious
over Brown ’976 combined with Aoki under 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a).
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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