HP Ingredients Corp.

Patent Trials and Appeals Board

Aug 2, 2021

2020006042 (P.T.A.B. Aug. 2, 2021)

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.)
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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 Claims 7–11 remain pending but are withdrawn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
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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.
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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
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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
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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.

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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
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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
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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
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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
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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
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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.
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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.
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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