HP Ingredients Corp.Download PDFPatent Trials and Appeals BoardAug 2, 20212020006042 (P.T.A.B. Aug. 2, 2021) 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. 16/358,798 03/20/2019 Juan Carlos BERTOGLIO US16/358798 1038 22925 7590 08/02/2021 Pharmaceutical Patent Attorneys, LLC 801 Brickell Avenue Suite 800 Miami, FL 33131-4924 EXAMINER KANTAMNENI, SHOBHA ART UNIT PAPER NUMBER 1627 NOTIFICATION DATE DELIVERY MODE 08/02/2021 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): administration@LicensingLaw.net docket@LicensingLaw.net mark.pohl@licensinglaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUAN CARLOS BERTOGLIO and JUAN EDUARDO CARRASCO-ZUBER Appeal 2020-006042 Application 16/358,798 Technology Center 1600 Before ULRIKE W. JENKS, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims to a topical cream comprising delphinidin as anticipate and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as InnoBioscience LLC. (Appeal Br. 1.) Appeal 2020-006042 Application 16/358,798 2 STATEMENT OF THE CASE Appellant’s Specification indicates that rosacea is a chronic skin disease for which “[t]here is to-date no satisfactory treatment.” (Spec. 1.) Appellant’s invention is directed to a delphinidin composition which can be applied topically to treat rosacea. (Id.) Claims 1–6 have been finally rejected by the Examiner and are the claims before us on appeal. Claims 7–11 remain pending but are withdrawn from consideration as being directed to a non-elected invention.2 Claim 1 reproduced below, is illustrative of the claimed subject matter: 1. A topical cream comprising Delphinidin in an amount effective to ameliorate dermal inflammation due to rosacea or lupus. (Appeal Br. 20 (Claims Appendix).) 2 Appellant’s arguments regarding the Examiner’s restriction requirement (Appeal Br. 5–8; Reply Br. 1–4) are not considered, as the propriety of a restriction is a matter petitionable to the Director not appealable to the Board. See, e.g., In re Hengehold, 440 F.2d 1395, 1403–04 (CCPA 1971). We are aware that Appellant filed a petition with the Director concerning the restriction, which was denied. Although the Director denied Appellant’s petition in its Decision dated March 24, 2020, the propriety of the restriction did not thereafter become ripe for Appeal to the Board. Id. We do not agree with Appellant that In re Haas, 486 F.2d 1053 (CCPA 1973) requires otherwise. In particular, in Haas, there was not “the usual restriction requirement under 35 U.S.C. § 121 wherein separate claims directed to an invention ‘independent and distinct’ from an elected invention are withdrawn from consideration in a particular application,” as is the case here. Id. at 1056. Instead, in that case the claims at issue “were withdrawn from consideration not only in this application but prospectively in any subsequent application because of their content. In effect there had been a denial of patentability of the claims.” Id. No such effective denial of patentability has occurred here as Appellant is free to pursue the patentability of those claims at least through the filing of a divisional Appeal 2020-006042 Application 16/358,798 3 The prior art relied upon by the Examiner is: Name Reference Date Park3 KR20080102751 (A) Nov. 26, 2008 Deroles et al. US 2011/0263723 A1 Oct. 27, 2011 Tsubota et al. US 2015/0359812 A1 Dec. 17, 2015 The following grounds of rejection by the Examiner are before us on review: Claims 1–3 under 35 U.S.C. § 102(a)(1) as unpatentable over Park. Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Park and Deroles. Claims 4–6 under 35 U.S.C. § 103(a) as unpatentable over Park and Tsubota. DISCUSSION Administrative matters Before addressing the Examiner’s rejections, we address a few administrative matters. a. Declaration We note that Appellant asks us to consider a Declaration of Juan Hancke, Ph.D., submitted for the first time with the filing of Appellant’s Appeal Brief. (Appeal Br. 11.) That Declaration was not filed in response to a new ground of rejection made by the Examiner in the Examiner’s Answer, and no other exception for this late date filing of evidence applies application. Thus, while Hengehold was not controlling in Haas, id., it is here. 3 The Examiner relies on the machine translation of this reference, as do we, which we refer to as Park. Appeal 2020-006042 Application 16/358,798 4 to admit the Declaration into the record. Thus, the Declaration is not part of the record on appeal before us, and we do not consider its content in reviewing the rejections on appeal. 37 CFR § 41.33 (“All other affidavits or other Evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).”). b. Machine Translation of Park Appellant urges that the machine translation of Park on which the Examiner relies in the rejection of the claims is inaccurate because it omits (a) “the first page of the patent,” (b) the abstract, and (c) the figures, and because it renders the tables unintelligible and “entirely replaces the claims . . . with a different set of claims.” (Appeal Br. 8–9.) Appellant alleges that it provides a certified translation of the original Korean document which differs significantly from the machine translation. We do not find that Appellant has established the machine translation of Park is inaccurate. The omission of the figures, abstract, and the first page from the translation does not establish the translated portions of the Park publication that the Examiner relied on are inaccurate. Moreover, the certified translation provided by Appellant is of the Korean Patent Registration Publication (B1), Registration No. 10-0902768, which was registered June 8, 2009, and issued June 15, 2009. That Patent Registration Publication is not the same document as the published application, Park Publication No. KR20080102751 (A), published November 26, 2008, on which the Examiner relied. Nevertheless, comparing paragraphs 3 and 4 of the certified translation of the Korean Patent Registration Publication that is derived from the application which was published with what appears to be Appeal 2020-006042 Application 16/358,798 5 corresponding paragraphs of the machine translation at 1 of the published application, we conclude that the machine translation has similar disclosure. For example, the machine translation provides: The present invention relates to a dermatological composition, and more particularly, to a dermatological composition which is excellent in product stability and can be safely used without adverse effects on the skin and has excellent wrinkle, anti- inflammatory, antioxidant, anti- As an active ingredient. In addition the machine translation at 2 provides: The present inventors have sought to develop a novel substance which is excellent in wrinkle improving effect, hair loss prevention or hair growth promoting effect, antioxidative effect, anti- obesity effect and anti- inflammatory effect and high stability, As a result, it has been found that a composition containing delphinidin as an active ingredient can provide a composition for skin condition improvement, anti- inflammation, antioxidant and anti- obesity which is excellent in its efficacy and safety. Paragraph 3 of the certified translation of the Patent Registration Publication provides: The present invention relates to a composition for skin, more particularly a composition for skin comprising delphinidin as an active ingredient which has excellent product stability, can be used safely without side effect to skin, and has excellent effects on wrinkle improvement, anti-inflammation, anti-oxidation, anti-obesity, prevention of hair loss, and promotion of hair growth. . . . Thus, both the machine translation of the published application on which the Examiner relies, and the certified translation of the published patent registration derived from the application which was published, describe a composition for application to the skin that includes delphinidin as an active ingredient that can be applied safely thereto and which has wrinkle Appeal 2020-006042 Application 16/358,798 6 improvement effects, as well as anti-inflammatory effects and anti-oxidation effects. Thus, Appellant has not established that the machine translation of the published application is not sufficiently accurate to determine whether the published Korean application anticipates the claimed invention. Consequently, we refer to and rely on the machine translation in reviewing the Examiner’s rejections of the claims on appeal. c. Claims 2 and 3 In the Reply Brief, Appellant indicates that the appeal of claim 2 is no longer maintained. (Reply Br. 1.) This claim, however, remains pending in the application and rejected by the Examiner. “An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.” 37 CFR § 41.31. Given that Appellant does not contest the Examiner’s rejection of claim 2 as being anticipated by Park, we summarily affirm that rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived.”); see also MPEP 1205.02. In the Appeal Brief at footnote 1, Appellant indicates that the rejection of claim 3 is not appealed. This claim, however, also remains pending in the application and rejected by the Examiner. Given that Appellant does not contest the Examiner’s rejection of claim 3 as being anticipated by Park, we summarily affirm the Examiner’s rejection of claim 3 as being anticipated by Park. Id. Appeal 2020-006042 Application 16/358,798 7 Claim 1: Anticipation by Park The Examiner found that Park teaches a composition for improving skin conditions which composition is in the form of a cream and that includes delphinidin at 0.01%, 0.1% or 1% by weight. (Final Action 4 (citing Park Translation 9, and claims); see also id. at 5.) The Examiner also found that Park teaches the delphinidin compound has anti-oxidant properties and that the composition can be used for treating aging. (Id. at 4 (citing Park Translation 5).) Thus, the Examiner concludes that Park discloses the claimed composition including the requisite effective amount of delphinidin. We agree with the Examiner’s findings and conclusion of anticipation. Appellant’s Specification indicates that it is now “widely recognized that the therapeutic efficacy” of two prior art topical rosacea treatments, metronidazole and azelaic acid, “can be attributed to their anti-inflammatory and antioxidant effects.” (Spec. 6.) Appellant’s Specification indicates that a topical cream containing 1% Delphinidin is effective to treat inflammation associated with rosacea. (See, e.g., Spec. 10, 12.) In addition to the disclosure at pages 1–2 of Park discussed above, which indicates that compositions that include delphinidin have anti- inflammatory and anti-oxidation properties, we note as the Examiner did, that Park teaches three specific cream formulations of delphinidin compositions that were made. (Park 9.) They had .01%, 0.1% and 1.0% weight percent delphinidin. (Id.) In addition, we note that the claims of Park even indicate the composition comprising delphinidin as the active ingredient can inhibit inflammation and has anti-oxidative properties. (Id. at Claims.) In light of the foregoing and Appellant’s disclosure indicating that Appeal 2020-006042 Application 16/358,798 8 a topical cream containing 1% delphinidin is effective to treat inflammation associated with rosacea, we conclude that Park’s topical cream formulation having 1.0% weight percent delphinidin would necessarily have an amount of delphinidin effective to treat inflammation associated with rosacea. Consequently, we do not agree with Appellant that Park differs from claim 1 in the physical dosage form or the amount of delphinidin claimed (Appeal Br. 10). We note that contrary to Appellant’s assertion, the Examiner’s anticipation rejection does not rely on inherency (Appeal Br. 11). Park explicitly describes each element of the claim. Even if Park did not recognize the anti-inflammatory benefits of delphinidin, we would arrive at the same conclusion. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellant’s argument concerning a requirement that Park disclose the “claimed range” with specificity (Appeal Br. 12) is unavailing. “It is . . . an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985); In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.”). Park does not simply disclose a possible range in which Appeal 2020-006042 Application 16/358,798 9 delphinidin may be present in a topical cream. Rather, in addition to disclosing a range, Park discloses a specific amount of delphinidin in three topical cream compositions, one of which is a composition that includes 1% by weight delphinidin, which Appellant’s Specification describes as ameliorating dermal inflammation. Even if Park also teaches formulations comprising delphinidin in amounts that would not ameliorate dermal inflammation, Park’s specific disclosure of a cream having an amount of delphinidin (1%) that would ameliorate inflammation anticipates claim 1. Appellant’s argument that the creams described by Park at page 9 are said to be “nutritional creams” (Appeal Br. 13–14) does not establish that these creams are not anticipatory. First, the claim requirement that the cream be a “topical cream” is an intended use limitation of the claimed composition. “[A] preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). “[T]he rule against giving invention-defining effect to intended-use preamble language reflects . . . the ‘well settled’ fundamental principle ‘that the recitation of a new intended use for an old product does not make a claim to that old product patentable.’” Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). Second, even if one were to determine that a “topical cream” was a limiting requirement, we conclude that Park’s disclosure is sufficient to teach that the cream having 1% delphinidin is a cream for topical application. In particular, even though the machine translation of the Appeal 2020-006042 Application 16/358,798 10 composition at 9 states that the cream is a “nutritional” composition, the remainder of the description indicates that the cream was tested as a cosmetic to determine changes in skin elasticity. (Park 9 (“The wrinkle- improving effect of cosmetics containing delphinidin was measured through clinical studies.”).) Thus, it is evident that despite being called a “nutritional cream,” the cream was applied topically as a “cosmetic” to the skin, not as a food or dietary supplement as suggested by Appellant (Appeal Br. 13). In light of the above, we affirm the Examiner’s rejection of claim 1 as being anticipated by Park. Claims 4–6: Obviousness by Park and Deroles or Park and Tsubota The Examiner found that Deroles teaches a topical cream product that can be used as a cosmetic that includes a delphinidin anthocyanin pigment, such as delphinidin-3-O-glucoside, and that anthocyanin pigments have been reported to have antioxidant properties. (Final Action 7 (citing, inter alia, Deroles claims 25, 38, 46, and ¶ 3).) The Examiner concludes that it would have been obvious to one of ordinary skill in the art to have included the delphinidin-3-O-glucoside as the delphinidin compound in the topical cream of Park in an amount taught by Park, given that Park teaches delphinidin has anti-oxidant properties and can be used to treat effects of aging. (Id.) The Examiner found that Tsubota teaches a therapeutic composition for treating dry eye that includes “at least one or more of active substances delphinidin-3-O-sambubioside-5-O-glucoside, delphinidin-3,5-O- diglucoside, delphinidin-3-O-sambubioside, delphinidin-3-O-glucoside.” (Final Action 10 (citing, inter alia, Tsubota, Abstr.).) The Examiner further found that Tsubota teaches the foregoing active substances have antioxidant Appeal 2020-006042 Application 16/358,798 11 properties. (Id. at 10–11 (citing Tsubota ¶ 42, 44, 135).) The Examiner concluded that it would have been obvious to one of ordinary skill in the art to have selected one of the delphinidin active substances disclosed in Tsubota for inclusion in the Park topical cream because Tsubota teaches the compounds have antioxidant properties, which Park teaches is a property of the delphinidin used in its disclosed cream. (Id.) We agree with the Examiner’s conclusion of obviousness in both cases. As the Examiner noted, Park teaches that delphinidin has anti-oxidant properties, which makes it useful in compositions to prevent or treat conditions by inhibiting or eliminating the oxidation state, including “for prevention or treatment of aging.” (Park 4–5.) Moreover, Park teaches that the delphinidin that can be used is derived from anthocyanin-based plant pigment substance and “can be obtained using various extraction methods known in the art.” (Id. at 3.) Deroles teaches that delphindim-3-O-glucoside is extracted from plant material. (Deroles ¶¶ 128–35.) Tsubota teaches that delphinidin-3,5-O- diglucoside and delphinidin-3-O-glucoside are obtained as an extract from plant material. (Tsubota Abstr.) Moreover, there is no dispute that Tsubota teaches these compounds have anti-oxidant properties (Tsubota ¶ 135) and that Deroles teaches it is known that anthocyanin pigments (which delphinidins are known to be) possess anti-oxidant properties. Thus, we agree with the Examiner that it would have been obvious to one having ordinary skill in the art to include delphinidin-3,5-O-diglucoside or delphinidin-3-O-glucoside as the delphinidin compound in the topical cream Appeal 2020-006042 Application 16/358,798 12 composition of Park in the amounts described therein, i.e., including 1%, and reasonably expect the component to provide anti-oxidant properties. Appellant’s argument that the rejection relying on Deroles is in error because one of ordinary skill in the art “would not have considered purple- blue coloration suitable for topical formulations,” is not found persuasive. Appellant provides no evidence to support such an assertion. “Attorney argument is not evidence.” Icon Health & Fitness v. Strava, 849 F.3d 1034, 1043 (Fed. Cir. 2017) (citing See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Furthermore, Park teaches that it was known that delphinidins are plant pigment substances (Park 3), and Park, nevertheless, includes them for use in topical creams to be applied to the skin. Appellant’s arguments that the rejections with respect to Deroles and Tsubota are in error because the fact that Deroles’s compound is an anti- oxidant does not establish that it is art recognized as an equivalent “for the claimed use” (Appeal Br. 17) and that treating aging is not the claimed use (Id. 18–19) are also not persuasive. All that the prior art need establish is equivalency for the same prior art use. “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 combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). Moreover, it is obvious to those skilled in the art to substitute one known equivalent for another. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Appeal 2020-006042 Application 16/358,798 13 Cir. 2007) (“[T]his court finds no . . . error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [alkaline reactive compound] for another.”). Here, Deroles and Park both teach that delphinidin compounds can be used in topical creams. Tsubota teaches that delphinidin compounds can be applied as a “liquid[] or the like” to the eye. (Tsubota ¶ 68; see also id. ¶ 65.) Moreover, all of the references teach that the compounds have anti-oxidant properties, which is sufficient to provide one with a reasonable expectation that the Deroles delphinidin or the Tsubota delphinidin could be substituted for the Park delphinidin compound and achieve the benefit Park teaches would be achieved from the anti- oxidant property of delphinidin. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Appellant’s additional argument that the substitution of Tsubota’s compound for Park’s compound “fails to teach with specificity an amount effective to treat rosacea” (Appeal Br. 19) is also not persuasive of non- obviousness. That is because the Examiner relies on Park to teach inclusion of delphinidin compounds, which are known to have anti-oxidant properties, in a topical composition in varying amounts including ones that Appellant’s Specification indicates are effective to ameliorate dermal inflammation due to rosacea, as discussed in the anticipation rejection above. For the foregoing reasons, we affirm the Examiner’s rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as being unpatentable over Park and Deroles, and of claims 4–6 under 35 U.S.C. § 103(a) as being unpatentable over Park and Tsubota. Appeal 2020-006042 Application 16/358,798 14 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3 102(a)(1) Park 1–3 4, 5 103 Park, Deroles 4, 5 4–6 103 Park, Tsubota 4–6 Overall Outcome 1–6 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation