Ex Parte Yarosh et alDownload PDFPatent Trial and Appeal BoardJan 23, 201814675321 (P.T.A.B. Jan. 23, 2018) 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. 14/675,321 03/31/2015 Daniel B. Yarosh 12.79D2 4406 23487 7590 01/23/2018 THF FSTFF T AT TDFR mS TNC EXAMINER 155 PINELAWN ROAD HOLLOMAN, NANNETTE STE 345 S MELVILLE, NY 11747 ART UNIT PAPER NUMBER 1612 MAIL DATE DELIVERY MODE 01/23/2018 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. YAROSH, LIEVE DECLERCQ, YOKO NIKI, and NAOAKI SAITO1 (Applicant: ELC Management LLC) Appeal 2017-003233 Application 14/675,321 Technology Center 1600 Before DEBORAH KATZ, RICHARD J. SMITH, and DAVID COTTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method for reducing the appearance of melanin in mammalian skin or hair that have been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is ELC Management LLC. (Br. 2.) Appeal 2017-003233 Application 14/675,321 STATEMENT OF THE CASE Claims on Appeal Claims 1—10 are on appeal. (Claims Appendix, Br. 10-11.) Claim 1 is illustrative and reads as follows: 1. A method for reducing the appearance of melanin in mammalian skin or hair in need of such reduction by treating the skin or hair with a melanin-reducing effective amount of at least one inhibitor of palmitoyl-protein thioesterase (PPT). Examiner’s Rejection Claims 1—10 stand rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Hines.2 (Ans. 2—3.) FINDINGS OF FACT The following findings are provided for emphasis and reference purposes. Additional findings may be found in this Decision and the Examiner’s Answer. FF 1. Palmitoylated peptide-2 (PP2) is an inhibitor of palmitoyl-protein thioesterase (PPT). (Br. 10, claims 1, 2, and 4.) FF 2. Palmitoyl tripeptide-8 is a palmitoylated peptide-2. (Ans. 2.) Appellants do not dispute this finding.3 (Br. 4.) FF 3. Hines discloses topical skin care compositions comprising palmitoyl tripeptide 8. (Hines Tflf 7, 22, 29 and 54, claims 1 and 3; see also Ans. 2.) FF 4. Hines discloses 2 Hines et al., US 2011/0044920 Al, pub. Feb. 24, 2011 (“Hines”). 3 Palmitoyl tripeptide-8 is used interchangeably with palmitoylated tripeptide-8. (See, e.g., Br. 6—7.) 2 Appeal 2017-003233 Application 14/675,321 a method of lightening skin or evening skin tone comprising applying the compositions of the present invention to the skin. The method can further comprise identifying] a person in need o/lightening skin or evening skin tone. The methods can further include inhibiting melanogenesis in a skin cell, inhibiting tyrosinase or tyrosinase synthesis in a skin cell, or inhibiting melanin transport to keratinocytes in a skin cell. The composition can act as an alpha melanin stimulatory hormone antagonist. The composition can even out pigmentation of the skin. In non- limiting aspect, lightening skin can include reducing the appearance of an age spot, a skin discoloration, a freckle, a sun spot, hyper-pigmented skin, etc., by topical application of the composition to the age spot, a skin discoloration, a freckle, a sun spot, hyper-pigmented skin, etc. (Hines 127 (emphases added).) FF 5. The Examiner finds that “Hines [] anticipates the instant claims insofar as [it] disclose[s] a composition comprising a melanin reducing- effect amount of at least one inhibitor of PPT comprising PP2.” (Ans. 3.) DISCUSSION We adopt the Examiner’s findings as our own, including the Examiner’s finding of anticipation, as set forth in the Answer (Ans. 2—5). We discern no error in the rejection of claims 1—10 as anticipated. We limit our consideration to claim 1 because the claims were not argued separately. Issue Whether a preponderance of evidence of record supports the Examiner’s rejection under pre-AIA 35 U.S.C. § 102(b). 3 Appeal 2017-003233 Application 14/675,321 Analysis Appellants contest the anticipation finding by arguing that Hines “does not disclose the Appellants’ claimed methods with sufficient specificity to constitute an anticipation under the statute.” (Br. 3.) Appellants further contend that they are “claiming very specific methods for reducing the appearance of melanin,” and that “one of ordinary skill in the art could not reasonably recognize a connection between palmitoylated tripeptide-8 and the very specific methods claimed.” {Id. at 4.) In support of those arguments, Appellants contend that Hines “is specifically directed to compositions containing extracts of Acacia” that may be used for “a wide variety of diseases” or “skin conditions,” and that some of the compositions in Hines do not include palmitoyl tripeptide-8. {Id. at 4— 6.) As to the Examiner’s reliance on paragraph 27 of Hines (FF 4), Appellants argue that “there is no indication whatsoever that such compositions need contain palmitoyl tripeptide-8 for any purpose, let alone the purpose of reducing the appearance of melanin in skin or hair.” (Br. 6.) Appellants also refer to the disclosure in Hines that palmitoylated tripeptide-8 is commercially available as NEUTRAZEN™, and provide an Appendix to their Brief comprising Internet entries regarding NEUTRAZEN™ and other palmitoylated tripeptide-8 related products that, according to Appellants, indicate that palmitoylated tripeptide-8 is “useful only for the purpose of preventing, reducing and/or reversing inflammation in skin.” (Br. 7, citing Hines 159.) Appellants thus contend “that one of ordinary skill in the art could not have recognized an efficacy of palmitoylated tripeptide-8 for reducing the appearance of melanin in skin or hair prior to the date of their invention.” {Id.) 4 Appeal 2017-003233 Application 14/675,321 Appellants further argue that because Hines fails to guide one of ordinary skill to a method of reducing the appearance of melanin in skin or hair with the use of palmitoyl tripeptide-8, Hines “also cannot guide one of ordinary skill in the art in selecting an amount of palmitoyl tripeptide-8 suitable for the explicit purpose of reducing the appearance of melanin in the skin or the hair.” (Br. 7.) We are not persuaded by Appellants’ arguments. A claim is anticipated if a prior art reference discloses every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, the Examiner established a prima facie case of anticipation (Ans. 2—3), thereby shifting the burden to Appellants to rebut that prima facie case. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011.) However, Appellants do not persuasively rebut the Examiner’s finding that Hines discloses every limitation of claim 1. Specificity of Hines We are not persuaded by Appellants’ “sufficient specificity” argument. (Br. 3—8.) Hines discloses the method of reducing the appearance of melanin in skin by treating the skin with “the compositions of the present invention,” which includes compositions comprising palmitoyl tripeptide 8 (an inhibitor of palmitoyl-protein thioesterase (PPT)). (FF 1—4; Ans. 4—5.) That disclosure is sufficient to satisfy the requirements for a finding of anticipation. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341—44 (Fed. Cir. 2016). 5 Appeal 2017-003233 Application 14/675,321 Recognition of properties of palmitoylated tripeptide-8 We are not persuaded by Appellants’ argument that a person of ordinary skill in the art would not have recognized “a connection between palmitoylated tripeptide-8” and reducing the appearance of melanin. (Br. 4, 7.) Hines expressly discloses a method of reducing the appearance of melanin by applying compositions that include an inhibitor of PPT. (FF 1— 4.) Moreover, the alleged absence of a specific disclosure in Hines of a melanin-reducing property of palmitoyl tripeptide 8 is immaterial because Hines expressly discloses palmitoyl tripeptide 8. See, e.g., Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985); see also In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.”). Amount of palmitoyl tripeptide-8 The Examiner finds that Hines discloses “a melanin reducing-effect amount” of palmitoyl tripeptide-8. (Ans. 2—3.) Appellants acknowledge various disclosures within Hines of amounts of palmitoylated tripeptide-8, but argue that Hines does not guide one of ordinary skill in the art to selecting an amount for the purpose of reducing the appearance of melanin in the skin or hair. (Br. 7—8.) However, Appellants fail to provide persuasive arguments or evidence that Hines does not disclose “a melanin reducing-effective amount” of palmitoylated tripeptide-8 sufficient to rebut the Examiner’s prima facie case of anticipation. See Schreiber, 128 F.3d at 1477. Appellants’ argument that Hines fails to “guide one of ordinary skill 6 Appeal 2017-003233 Application 14/675,321 in the art in selecting an amount of palmitoyl tripeptide-8” (Br. 7) thus fails to satisfy Appellants’ rebuttal burden. See Jung, 637 F.3d at 1365. Accordingly, for the reasons of record and as set forth above, we affirm the rejection of claim 1 as anticipated by Hines. Claims 2—10 fall with claim 1 because they were not argued separately. Conclusion A preponderance of evidence of record supports the Examiner’s rejection of claims 1—10 under pre-AIA 35 U.S.C. § 102(b). SUMMARY We affirm the rejection of all claims on appeal. 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 7 Copy with citationCopy as parenthetical citation