Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Jun 30, 2020

2019006344 (P.T.A.B. Jun. 30, 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.
14/863,600 09/24/2015 Hua Du JCO5178USNP1 6209
27777 7590 06/30/2020
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
ALAWADI, SARAH
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUA DU, YAN LI, TAO LIU, and YINGXIN MA
____________

Appeal 2019-006344
Application 14/863,600
Technology Center 1600
____________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to methods of improving the barrier function of skin and for
moisturizing the skin. 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 Johnson & Johnson Consumer, Inc. as
the real party in interest. Appeal Br. 2. Herein, we refer to the Final Action
mailed January 2, 2019 (“Final Act.”); Appellant’s Appeal Brief filed June
3, 2019 (“Appeal Br.”); and Examiner’s Answer mailed June 21, 2019
(“Ans.”).
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STATEMENT OF THE CASE
The Specification states that “the present invention relates to
compositions comprising extracts of Ampelopsis grossedentata and Albizia
julibrissin for improving the condition and appearance of the skin, such as
by improving skin barrier protection, improving hydration and
moisturization of the skin and reducing inflammation of the skin, and
providing anti-aging properties to the skin.” Spec. 1.
Claims 1, 2, 6–11, 13, 14, 16–21, 25–30, and 32–38 are on appeal and
can be found in the Claims Appendix of the Appeal Brief. Claim 1 is
illustrative. It reads as follows:
1. A method of improving the barrier function of skin
by promoting the generation of sodium L-pyrrolidone
carboxylate, said method comprising applying to the skin a
topical composition comprising an extract of Ampelopsis
grossedentata leaves, an extract of Albizia julibrissin flowers and
a topical carrier, wherein the weight ratio in the composition of
the extracts of Ampelopsis grossedentata leaves to Albizia
julibrissin flowers is between 1:7 to 7:1, the total amount of the
combination of the Ampelopsis grossedentata leaves extract and
the Albizia julibrissin flowers extract is from about 0.0005% to
about 30% by weight of the composition and the total amount of
the extracts is effective to promote sodium L-pyrrolidone
carboxylate generation in skin.
Appeal Br. 11.
Examiner’s obviousness-type double patenting rejections were
withdrawn in the Answer. Ans. 3. Accordingly, the only rejection
remaining in this appeal is Examiner’s rejection of claims 1, 2, 6–11, 13, 14,
16–21, 25–30, and 32–38 under 35 U.S.C. § 103 as unpatentable over
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Fournial2 and Kishida.3 Appeal Br. 6. Appellant does not argue claims 2, 6–
11, 13, 14, 16–21, 25–30, and 32–38 separately from claim 1. We focus on
claim 1 for our analysis and the other claims stand or fall with that claim.
See 37 C.F.R. § 41.37(c)(1)(iv).
The issue is: Does the preponderance of evidence of record support
Examiner’s conclusion that the cited prior art renders the method of claim 1
obvious?
Findings of Fact
FF1. Fournial teaches the application of cosmetic formulations to the skin
comprising an extract of Albizia julibrissin “for treating cutaneous fatigue, in
particular for improving the radiance of skin and eye contour (under eye bags
and dark circles) and for treating the loss of skin suppleness.” Fournial,
Abstr., ¶¶ 35–38, 82–88. Fournial teaches the extract is preferably obtained
from Albizia julibrissin flowers and/or seeds, using ethanol or a similar
solvent. Id. ¶¶ 47, 77, 108–110, claim 2.
FF2. Fournial teaches that an effective amount of Albizia julibrissin extract
is an amount ranging “from 0.0001% to 25%, and furthermore particularly
from 0.001% to 10% based on the total weight of the composition.” Fournial
¶ 74. Fournial further teaches that a “person skilled in the art is able to adjust
the amount of extract depending on the desired effect.” Id.
FF3. Fournial teaches that the Albizia julibrissin extract compositions
applied in its methods may include topical carriers (see Fournial ¶¶ 97, 106)

2 Fournial et al., US 2015/0017269 A1; published Jan. 15, 2015
(“Fournial”).
3 Kishida et al., JP2002370962 A (English abstract); published Dec. 24,
2002 (“Kishida”).
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as well as additional active ingredients such as skin-lightening, moisturizing,
and anti-aging agents (id. ¶¶ 52, 97, claim 4).
FF4. Kishida teaches that extracts made from the leaves of Ampelopsis
grossedentata contain tyrosinase, elastase and collagenase inhibitors and
have “excellent fairness improving property (pigmentation inhibitory effect),
aging prevention property, and moisturizing property.” Kishida, 2.
FF5. Kishida teaches that a lotion containing 1% wt of 50% ethanol extract
from Ampelopsis grossedentata leaves as an active ingredient “showed
excellent wrinkle improvement and moisturizing effect” over a control group
treated with conventional lotion. Kishida, 3.
Analysis
Examiner finds that Fournial teaches methods of “topically applying
an effective amount of Albizia Julibrissin extract to the skin of a subject” to
improve “brightness and complexion of skin and . . . dark circles.” Final
Act. 4. Examiner further determines that Fournial teaches compositions of
Albizia julibrissin flower extract comprising pharmaceutical carriers and
other agents such as skin-lightening agents. Id. Examiner finds Kishida
teaches that “Ampelopsis grossedentata leaf extracts have excellent
whitening/depigmenting properties plus provide good moisturizing and anti-
aging properties” and therefore a skilled artisan would have been motivated
to add them as a whitening agent to the Albizia julibrissin compositions
applied in Fournial’s methods. Id. at 5.
Regarding the ranges recited in claim 1, Examiner determines that
“the modified Fournial teaches and suggests ratios [that] overlap [with] the
claimed ratios of 1:1, 1:5, 1:7 . . . given the [amount of] Albizi juilibrissin”
flower extract taught “in Fournial for inclusion in cosmetics [is] from .001-
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10% and Kishida suggests about 1% by weight” of Ampelopsis
grossedentata leaf extract is effective. Id. at 6. Moreover, Examiner
determines “the modified Fournial teaches the active method steps
equivalent to the instant claims in that the extracts are applied to the skin in a
topical formulation, thus the barrier and moisturization of the skin [and
promotion of sodium L-pyrrolidone carboxylate (PCA) generation] would
necessarily follow from topical administration.” Id.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2–7; FF1–FF5) and agree that
the claims are rendered obvious by the combination of Fournial and Kishida
as articulated by Examiner. We address Appellant’s arguments below.
We not persuaded by Appellant’s argument that the rejection fails to
“raise a prima facie case of obviousness” because Fournial “does not have
the botanicals cited in the claims” and “there is no direction or suggestion
provided to one of skill in the art to use Ampelopsis grossedentata leaf
extract as an additional agent.” See Appeal Br. 6–7. Fournial teaches
cosmetic formulations comprising one (Albizia julibrissin flower extract) of
the two recited botanical extracts. FF1. Kishida teaches lotions comprising
the other recited extract. FF4–FF5. Examiner has articulated a rationale for
combining them premised on Fournial’s teaching that other active agents,
such as skin lightening and moisturizing agents, can be included in its
formulations and Kishida’s teaching that an extract taken from Ampelopsis
grossedentata leaves is such an agent. See Final Act 5. The record supports
that finding. FF3–FF5. Thus, the references provide a reason to combine
their teachings. Arctic Cat, Inc. v. Bombardier Recreational Prods., Inc.,
876 F.3d 1350, 1359 (Fed. Cir. 2017) (“Motivation to combine is
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a factual determination as to whether there is a known reason a skilled
artisan would have been motivated to combine elements to arrive at a
claimed combination.”).
In addition, as Examiner determined, each reference discloses an
amount of their respective extracts (FF2, FF5) that when combined overlaps
with the weight ratio and total weight percentage ranges recited in claim 1.
See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“[W]e and our
predecessor court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.”). Thus, Examiner has met
the burden to establish a prima facie showing.
Appellant asserts that “Examiner relies on information gleaned solely
from Applicant’s specification” because only the Specification shows a
combination of extracts that is effective to improve barrier function of skin.
See Appeal Br. 7–8. Again, we are not persuaded. Both Fournial (see FF1)
and Kishida (see FF4–FF5) teach that their respective extracts provide a
number of benefits when applied to the skin. As Examiner determined, it is
those teachings in the prior art that provide a sufficient rationale for
combining the references. See Final Act. 5. Accordingly, the rationale for
combining the references in Examiner’s rejection is premised on the prior
art––not the Specification.
Appellant urges that Fournial teaches away from the claimed
invention because it “teaches a preference to provide a range of wider
cosmetic properties [0052] rather than selecting an additional agent that has
the same properties (i.e., tyrosinase inhibitor).” Appeal Br. 7. Appellant’s
argument, however, is both legally and factually in error. As a legal matter,
a reference does not teach away if it “does not criticize, discredit, or
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otherwise discourage investigation into the invention claimed.” Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quotations
omitted). Here, Fournial merely states that “preferably” additional agents
are chosen “to provide a range of wider cosmetic properties.” Fournial ¶ 52.
Thus, Fournial does not teach away from the use of two tyrosinase
inhibitors. Second, Kishida teaches that in addition to inhibiting tyrosinase
its extract, in fact, provides a range of wider cosmetic properties. FF4.
These additional properties include the skin lightening, moisturizing, and
anti-aging properties recited in Fournial. See FF3. Thus, Kishida teaches
that its extract contains exactly the type of additional active agents that
Fournial says are “preferably” combined with its botanical extract. See
Fournial ¶ 52.
Finally, Appellant relies on Examples 3–6 and 8 of the Specification
to argue that the combination of the recited botanical extracts provides an
unexpected, synergistic effect over the individual extracts in various assays.
See Appeal Br. 9. However, evidence of unexpected results must be
“commensurate in scope with the degree of protection sought by the
claim[s]” to demonstrate non-obviousness. See In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005).
We agree with Examiner that Appellant’s evidence of unexpected and
synergistic results is not reasonably commensurate with the scope of claim
1. See Final Act. 7; Ans. 8–10. Examples 3, 5, 6 and 8 show results for the
combination of one type of Ampelopsis grossedentata leaf extract (E1) with
one type of Albizia julibrissin flower extract (E2) in a 1:1 ratio. See Spec.
36, 38–41 (Tables 1 and 3–6). Thus, these examples do not demonstrate
synergistic results for either the weight ratio range, i.e., “1:7 to 7:1,” or the
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weight percentage range for the total amount of the extracts, “about 0.0005%
to about 30%,” recited in claim 1.
The only example that provides results for a range of weight ratios,
Example 4, is also not reasonably commensurate with claim 1. Example 4
shows PCA promotion results for combinations at 1:1, 3:1, 7:1, and 1:7
weight ratio of E1 to E2. Spec. 36–37 (Table 2). But claim 1 recites a 1:7 to
7:1 weight ratio range with a total weight percentage of the two extracts
ranging from “about 0.0005% to about 30%.” Thus, as Examiner points out,
claim 1 “encompasses embodiments having amounts of .000072% of one
extract and .0005% of another . . . . However, Example 4 . . . does not
disclose any amounts lower than .00025% for each of the individual
extracts.” Final Act. 7. Accordingly, the data in Example 4 does not
demonstrate synergy for 7:1 and 1:7 weight ratio combinations at the lower
limit of the recited weight percentage range.
Moreover, Example 4 does not evidence synergistic results at the
upper end of the recited weight percentage range. The highest concentration
of any extract tested in Example 4 is 0.002%. Spec. 37. Example 4 reports
results for a 1:1 combination of E1 and E2 at that concentration, i.e., a total
weight percentage of 0.004%. Id. But a weight percentage of 0.004% is
7500 times less than the upper end (30%) of the range in claim 1. Data for a
narrower range may demonstrate unexpected results over a broader range
where one of skill in the art “would be able to determine a trend in the
exemplified data which would allow the artisan to reasonably extend the
probative value thereof.” MPEP § 716.02(d)(I). However, Appellant has
not sufficiently demonstrated such a trend here, particularly given the
magnitude of the difference between the ranges recited in claim 1 and the
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ranges tested in Example 4. Indeed, Appellant’s briefing fails to address
Examiner’s rationale for finding that the data in these examples is not
reasonably commensurate with the scope of its claims. Accordingly, we
agree with Examiner that Appellant’s results are not reasonably
commensurate with the breadth of the weight ratio and weight percentage
ranges recited in claim 1.4 Thus, given the breadth of the claims at issue,
Appellant’s results are not sufficiently probative of nonobviousness to
overcome Examiner’s prima facie showing. See Harris, 409 F.3d at 1344.
For these reasons, we determine that the preponderance of the
evidence supports Examiner’s rejection of claims 1, 2, 6–11, 13, 14, 16–21,
25–30, and 32–38 as obvious over Fournial and Kishida. Accordingly, we
affirm.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6–11,
13, 14, 16–
21, 25–30,
32–38
103 Fournial, Kishida 1, 2, 6–11,
13, 14, 16–
21, 25–30,
32–38

4 In addition, Examples 3–6 and 8 only report results for E1 and E2, i.e.,
extracts prepared in “95% ethanol/water” according to Examples 1 and 2.
See Spec. 34–35. Appellant’s claims, however, encompass extracts prepared
using a wider range of solvents. See Appeal Br. 11 (claim 2 reciting that
“the extracts are polar extracts prepared using polar solvents selected from”
a Markush group of solvents). Indeed, claim 1 is not limited to polar
extracts and thus encompasses extracts prepared with non-polar solvent
systems. Appellant has not shown that the single combination of extracts
demonstrated in Examples 3–6 and 8 is reasonably commensurate with the
much broader scope of extracts encompassed by claim 1.
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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