Gloria Lu et al.

Patent Trials and Appeals Board

Feb 18, 2020

14982220 - (D) (P.T.A.B. Feb. 18, 2020)

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.
14/982,220 12/29/2015 Gloria LU OA15419/US/
BN/31710-0032
3455
144293 7590 02/18/2020
McNees Wallace & Nurick, LLC/L'OREAL
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
02/18/2020 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 GLORIA LU, PATRICIA BRIEVA, and DONNA MCCANN 1
____________

Appeal 2018-006567
Application 14/982,220
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Inventors, Gloria Lu, Patricia
Brieva, and Donna McCann, and the Assignee, L’OREAL, as the real
parties-in-interest. App. Br. 1.

Appeal 2018-006567
Application 14/982,220

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–7, 9–13, 17, 19, and 23–25 as
unpatentable under 35 U.S.C. § 103(a) over the combination of Baldo (FR
3012328 A1, May 1, 2015)2 (“Baldo”); Glycolic Acid vs. Lactic Acid: Which
One Should You Use?, Beautiful with Brains (July 18, 2015) (last accessed
February 4, 2020), http://beautifulwithbrains.com/2015/07/28/glycolic-acid-
lactic-acid-difference (“Beautiful”), and T. Vinson, What you need to know
about peels, Synergie Skin (March 4, 2014) (last accessed February 4,
2020), http://www.synergieskin.com/what-you-need-to-know-about-peels/
(“Vinson”).
Claims 20–22 stand rejected as unpatentable under 35 U.S.C. § 103(a)
over the combination of Baldo, Beautiful, Vinson, and Jones (WO
2008/139182 A2, November 20, 2008) (“Jones”).
Claims 1–7, 9–13, 17, and 19 also stand rejected as unpatentable
under 35 U.S.C. § 103(a) over Scholz (US 2006/0052452 A1, March 9,
2006) (“Scholz”).
Claims 20–22 also stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Scholz and Agarwal (US 2013/0338236 A1, December 19,
2013) (“Agarwal”).
Claims 1–7, 9–13, 17, and 19–25 were rejected as unpatentable under
the nonstatutory doctrine of obviousness-type double patenting over claims

2 We rely on the machine translation by the European Patent Office of record
in the Examiner’s Final Rejection.
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1–7, 10–12, 14–16, and 20 of co-pending Application No. 14/752,269 in
view of Baldo and Jones.3
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a chemical peel composition
including alpha-hydroxy acid, salicylic acid, and phenylethyl resorcinol.
Spec. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A topically applicable chemical peel composition consisting
of:
from about 8% to about 12%, by weight, of alpha hydroxy
acid;

from about 0.1 % to about 2.0%, by weight, of salicylic
acid;

from about 0.1 % to about 2.0%, by weight, of
phenylethyl resorcinol;

an additive selected from the group consisting of
preservatives, stabilizers, antioxidants, thickening agents,
surfactants, pigments, colorants, fragrances, vitamin A acid,
and combinations thereof;

3 Application No. 14/752,269 was abandoned on June 12, 2019. The
rejection is therefore moot.
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balance essentially dermatologically acceptable liquid
solvent;

wherein the composition is configured to chemically
induce skin removal.

App. Br. 12.

ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner’s findings,
reasoning, and conclusion that the claims are obvious over the combination
of Baldo, Beautiful, Vinson, and Jones, and the combination of Scholz and
Agarwal. We address below the arguments raised by Appellant.

A. Obviousness over Baldo, Beautiful, Vinson, and Jones
Issue 1
Appellant argues that Baldo does not teach or suggest formulations
that include phenylethyl resorcinol together with alpha-hydroxy and salicylic
acid. App. Br. 6.

Analysis
The Examiner finds “Baldo teaches a cosmetic peeling composition
(configured to chemically induce skin removal) comprising [] phenylethyl
resorcinol from … 0.3 to 10 wt%.” Final Act. 3 (citing Baldo 16). The
Examiner finds the transitional phrase “consisting of” recited in the claims
does not exclude Baldo’s composition, which only requires a hydroxyl-
diphenyl methane compound of formula (I), e.g., phenylethyl resorcinol. Id.
at 4.
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The Examiner finds that Baldo teaches combining phenylethyl
resorcinol with additional desquamating agents. Final Act. 4 (citing Baldo
16–17). Desquamating agents include alpha-hydroxy acids, e.g., lactic acid
and glycolic acid; beta-hydroxy acids, e.g. salicylic acid; and mixtures
thereof. Id. at 4–5 (citing Baldo 16–17). The Examiner finds Baldo teaches
that a person of ordinary skill in the art would have selected the amount of
additional peeling agent necessary to achieve the desired effect, ranging
from 0.001 to 50 wt.%, preferably 0.01 to 10 wt.%. Id. at 5 (citing Baldo
17–18).
The Examiner finds that Baldo teaches the composition may include
additional active agents, such as an antioxidant. Final Act. 5 (citing Baldo
18). The Examiner finds that Baldo teaches the composition includes a
“physiologically acceptable medium comprising water, optionally in
admixture with alcohols inclusive of ethanol.” Id. (citing Baldo 18). The
Examiner further finds that: “Baldo further teaches chemical peels using
glycolic acid or salicylic acid in particular are not without side effects;
salicylic acid peels can give rise to salicylism overdose.” Id. at 6 (citing
Baldo 14–15).
The Examiner acknowledges that “Baldo does not specifically teach 8
to 12 wt% alpha hydroxy acid and 0.1 to 2 wt% salicylic acid as required by
claims 1 and 17.” Final Act. 6. The Examiner finds Beautiful and Vinson
teach conventional amounts of alpha-hydroxy acid and salicylic acid used in
chemical peels. See id. at 6–7. The Examiner finds that Beautiful teaches
over-the-counter skin peeling compositions containing 10% alpha-hydroxy
acid, e.g., glycolic or lactic acid. Id. at 6 (citing Beautiful 2, 6). The
Examiner finds that: “Vinson teaches salicylic acid is a great peels agent due
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to its ability to penetrate the pore and reduce inflammation; even clients with
sensitive skin benefit from low level, 5% or less.” Id. at 7 (citing Vinson, 1).
The Examiner concludes that it would have been obvious for one
skilled in the art to combine Baldo with Beautiful and Vinson as the
compositions all refer to chemical peels including alpha-hydroxy acids.
Final Act. 7. The Examiner concludes that it would similarly have been
obvious in view of Beautiful to optimize the amount of lactic acid at about
10%; thus, balancing between efficacy at low concentrations and irritation at
high concentrations. Id. The Examiner further concludes that it would have
been obvious in view of Vinson to optimize the amount of salicylic acid to
less than 5%; thus, treating sensitive skin and avoiding side effects. Id. at 8.
The Examiner notes that the amounts of peeling agents are result-effective
variables that are capable of routine optimization by persons of ordinary
skill. Id.
Appellant argues that Baldo teaches formulations with high
concentrations of hydroxylated diphenylmethane derivatives as an
alternative to salicylic acid peels. App. Br. 6. Appellant argues that Baldo’s
teaching that “peelings with salicylic acid may give rise to cases of
salicylism in the event of an overdose or of prolonged application” teaches
away from the use of any salicylic acid. Id. (citing Baldo 1–2). As a result
of this alleged teaching away, Appellant argues, “a person skilled in the art
would substitute salicylic acid with hydroxyl diphenylmethane as a
desquamating agent.” Reply Br. 3 (citing Baldo 16).
Appellant further argues that Baldo does not disclose the claimed
elements in any particular example, and does not provide guidance for
preparing compositions containing the specific combination of alpha-
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hydroxy acid, salicylic acid, and phenylethyl resorcinol. App. Br. 6.
Appellant argues that the “fact that Baldo mentioned salicylic acid as a
possible annex ingredient does not overweigh the fact that Baldo teaches
away from the use of salicylic acid, as further evidenced by preferred
formulations lacking salicylic acid in favor of the hydroxylated
diphenylmethane derivatives.” Id.
We do not find Appellant’s arguments persuasive. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We agree with Appellant that Baldo teaches that salicylic acid-based
chemical peeling compositions may cause side effects due to overdose. See
Baldo 15. However, “[t]he degree of teaching away will of course depend
on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.” Gurley, 27
F.3d at 553.
Appellant’s composition requires a combination of alpha-hydroxy
acid, salicylic acid, and phenylethyl resorcinol in specific ranges (claims 1
and 17) or amounts (claim 19). Baldo teaches preferred embodiments in
which phenylethyl resorcinol is “implemented in conjunction” with
additional peeling agents. Baldo 16. More specifically, Baldo teaches
preferred supplementary peeling agents selected from “alpha-hydroxy acids,
such as … lactic acid … [and] beta-hydroxy acids, such as salicylic acid …
and mixtures thereof.” Id. at 17. Baldo teaches that a person of ordinary
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skill in the art would have been able to choose the necessary amount of
supplementary peeling agent within a range of 0.01 to 10 wt.% to achieve
the desired effect on the skin. Id.
Contrary to Appellant’s argument, Baldo does not teach that the
combination is unlikely to be productive as a chemical peel composition or
discourage or discredit their use. Rather, Baldo suggests that the
combination of phenylethyl resorcinol with an alpha-hydroxy acid and a
reduced amount of salicylic acid will provide an effective and well-tolerated
peeling composition. See Baldo 15, 17. Accordingly, we are not persuaded
by Appellant’s argument that Baldo teaches away from combining
phenylethyl resorcinol and alpha-hydroxy acid with a reduced amount of
salicylic acid.

Issue 2
Appellant argues that the Examiner erred in relying on Beautiful and
Vinson for providing guidance in selecting specific acids and amounts
thereof to combine with phenylethyl resorcinol. App. Br. 6.

Analysis
Appellant argues “neither Beautiful nor Vinson avoids or prevents
problems related to overdose or prolonged application of salicylic acid.”
App. Br. 7. Appellant argues that the references teach anecdotal information
about the tolerance level of alpha-hydroxy and salicylic acids, rather than
scientific evidence that salicylic acid at 5% would avoid the problems taught
by Baldo. Id. Appellant argues that the references do not teach a range of
active compounds and further do not teach improving upon formulations
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such as Baldo. Id. Appellant therefore alleges that, absent any such
teachings, the Examiner must have impermissibly engaged in hindsight
reconstruction. Id.
We are not persuaded by Appellant’s argument. Beautiful and Vinson
teach conventional amounts of alpha-hydroxy and salicylic acids,
respectively. Vinson specifically teaches low level salicylic acid peels (5%
or less) will benefit subjects with sensitive skin. Vinson 1. Baldo,
Beautiful, and Vinson all teach that the amount alpha-hydroxy and salicylic
acids may be adjusted by a person of ordinary skill in the art to achieve the
desired effect of a chemical peel with reduced side effects. See Baldo 15,
17; Beautiful 6; Vinson 1.
“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.” In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003).
Because Baldo teaches combining phenylethyl resorcinol with alpha-
hydroxy acid and salicylic acid in ranges that encompass the claimed
amounts, the burden shifts to Appellant to show that the claimed invention
would not have been obvious. Peterson, 315 F.3d at 1330. Appellant has
not provided any evidence that the claimed amounts are critical or achieve
unexpected results. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990).
With respect to Appellant’s argument that the Examiner
impermissibly relied upon hindsight analysis, we note that:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
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takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellant points
to no evidence of record to demonstrate that the Examiner’s analysis
employed any knowledge that could have been gleaned only from
Appellant’s Specification. Rather, the prior art cited by the Examiner
teaches both the combination of claimed components, as well as the
motivation to combine the components in a single composition.
We consequently affirm the Examiner’s conclusion that Appellant’s
claims 1–7, 9–13, 17, 19 and 23–25 are obvious over the combination of
Baldo, Beautiful, and Vinson. Furthermore, Appellant relies upon the same
arguments with respect to the Examiner’s rejection of claims 20–22 over the
combination of Baldo, Beautiful, Vinson, and Jones. See App. Br. 8. For
the reasons that we have explained, we similarly affirm this rejection.

B. Obviousness over Scholz and Agarwal
Issue 1
Appellant argues that Scholz does not teach the compositions that
include each of the claimed components in the recited ranges. App. Br. 8–9.

Analysis
The Examiner finds that “Scholz teaches antimicrobial compositions
comprising an antiseptic inclusive of resorcinols inclusive of phenyl ethyl
resorcinol in amounts of 0.5 wt% to no greater than 8 wt%.” Final Act. 10
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(citing Scholz ¶¶17, 86, 90). The Examiner finds that the claimed
transitional phrase “consisting of” does not exclude Scholz’s composition,
which only requires an antiseptic, e.g., phenylethyl resorcinol. Id. at 10–11.
The Examiner finds that Scholz teaches the compositions may further
include an enhancer component including an alpha-hydroxy acid, a beta-
hydroxy acid, or combinations thereof. Id. at 11 (citing Scholz ¶¶ 22, 100).
The beta-hydroxy acid may include salicylic acid. Id. (citing Scholz ¶ 109).
The amounts of alpha-hydroxy acid and beta-hydroxy acid may range from
0.1 wt.% to 10 wt.%. Id. (citing Scholz ¶¶ 106, 110). The Examiner finds
that Scholz teaches that “[h]igher concentrations may become irritating.” Id.
The Examiner finds Scholz teaches that the compositions may include
additives, such as a surfactant. Final Act. 11 (citing Scholz ¶ 90). The
compositions may include a hydrophilic vehicle, such as water and ethanol.
Id. (citing Scholz ¶¶ 90, 126, 154). The Examiner finds that the claimed
intended use, “configured to chemically induce skin removal,” does not
confer a structural difference over Scholz’s antiseptic composition. Id. at
12. Therefore, the Examiner finds that “all that is required to achieve the
result of chemically inducing skin removal is the combination of alpha
hydroxy acid, salicylic acid and phenylethyl resorcinol rendered obvious by
Scholz.” Id.
Appellant argues that Scholz teaches antimicrobial compositions and
“does not in any way suggest any desirability of including phenylethyl
resorcinol, alpha-hydroxy acid and salicylic acid in combination.” App. Br.
9. Rather, Appellant argues that Scholz provides “extensive lists of myriad
possible components … and describes broad ranges of these myriad
components.” Id. Appellant further argues that “[n]ot one single example
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exists in Scholz that includes each of the ingredients as recited in the instant
claims, and there is not any hint or suggestion in the specification that such a
formulation is even contemplated.” Id.
We are not persuaded by Appellant’s argument. Scholz’s teachings
are not limited to the exemplary embodiments set forth in the reference.
Rather, “all disclosures of the prior art, including unpreferred embodiments,
must be considered.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989). Moreover, the disclosure of “a multitude of
effective combinations does not render any particular formulation less
obvious.” Id.
Scholz teaches compositions that may include a combination of
phenylethyl resorcinol combined with a mixture of alpha-hydroxy acid and
salicylic acid. Scholz 32, claim 6. Scholz teaches amounts of these
components in ranges that overlap the claimed amounts. Scholz ¶¶ 90, 106,
110.
Our reviewing court has observed that:
The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other
variable within the claims.[] These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.

Woodruff, 919 F.2d at 1578 (citations omitted). As we have explained
supra, Appellant has not provided any evidence that the claimed ranges are
critical, or that the claimed range produces any unexpected results.
We consequently affirm the Examiner’s conclusion that Appellant’s
claims 1–7, 9–13, 17, and 19 are obvious over Scholz. Furthermore,
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Appellant relies upon the same arguments with respect to the Examiner’s
rejection of claims 20–22 over the combination of Scholz and Agarwal. See
App. Br. 10. For the reasons that we have explained, we similarly affirm
this rejection.

CONCLUSION
The rejection of claims 1–7, 9–13, 17, 19–25 as unpatentable under 35
U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
Claims
Rejected
35 U.S.C. §  Basis Affirmed Reversed
1–7, 9–13,
17, 19, 23–25
103 Baldo, Beautiful,
Vinson
1–7, 9–13, 17,
19, 23–25

20–22 103 Baldo, Beautiful,
Vinson, Jones
20–22
1–7, 9–13,
17, 19, 23–25
103 Scholz 1–7, 9–13, 17,
19, 23–25

20–22 103 Scholz, Agarwal 20–22
Overall
Outcome
1–7, 9–13, 17,
19–25