Udo Hoppe et al.

Patent Trials and Appeals Board

Sep 28, 2021

2020004297 (P.T.A.B. Sep. 28, 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.
08/716,371 01/26/2004 Udo Hoppe 3321-P29689 5709
13897 7590 09/28/2021
Abel Schillinger, LLP
12414 Alderbrook Drive
Suite 201
Austin, TX 78758
EXAMINER
MCMILLIAN, KARA RENITA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
09/28/2021 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UDO HOPPE, GERHARD SAUERMANN,
VOLKER SCHREINER, and KLAUS-MICHAEL STEIGER
Appeal 2020-004297
Application 08/716,371
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims directed to a topical cosmetic composition as
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 Beiersdorf AG.
Appeal Br. 3. Herein we refer to the Final Office Action mailed April 19,
2019 (“Final Act.”), Appeal Brief filed November 18, 2019 (“Appeal. Br.”),
Examiner’s Answer mailed March 23, 2020 (“Ans.”), and the Reply Brief
filed May 22, 2020 (“Reply Br.”).
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CLAIMED SUBJECT MATTER
The Specification explains that skin ages as a result of endogenous
and genetically determined influences. Spec. 1:9–10. Exogenous factors
such as ultraviolet (UV) light and chemicals also effect the natural aging
process. Id. 1:10–13.
The claims are directed to topical cosmetic compositions for the care,
prophylaxis, and treatment of skin that has been aged by light. Id. 2:7–8.
Independent claims 77, 90, and 99, reproduced below, are illustrative of the
claimed subject matter:
77. A topical cosmetic or dermatological composition, wherein
the composition is present as a storage-stable emulsion and
comprises from 0.01 % to 10 % by weight of (a) one or more
compounds selected from retinols, retinals and β-carotene, from
0.1 % to 1 % by weight of (b) coenzyme Q10, and at least
34.4 % by weight of water.
90. A topical cosmetic or dermatological composition, wherein
the composition is present as a storage-stable O/W emulsion
and comprises (a) one or more compounds selected from all-
trans retinol, all-trans retinal, and β-carotene, from 0.1 % to 1
% by weight of (b) coenzyme Q10, and at least 34.4 % by
weight of water, a weight ratio (a):(b) being from 2:1 to 1:2.

99. A topical cosmetic or dermatological composition, wherein
the composition is present as a storage-stable emulsion and
comprises from 0.01 % to 10 % by weight of (a) one or more
compounds selected from retinols, retinals and β-carotene, from
0.001 % to 10 % by weight of (b) one or more compounds
selected from plastoquinones, alkyl plastoquinones, and a
plastoquinone without isoprene substituent, and at least 34.4 %
by weight of water.
Appeal Br. 20–22 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bertelli US 4,654,373 Mar, 31, 1987
Wilmott et al.
(“Wilmott”)
US 4,826,828 May 2, 1989
Pearce US 5,318,993 Jun. 7, 1994
Neigut US 5,378,461 Jan. 3, 1995
Zeligs US 6,093,706 Jul. 25, 2000
Keinan EP 0243849 A2 Nov. 4, 1987
Sivell et al. (“Sivell”) Vitamin A Activity in Foods of
Animal Origin, 35 J. SCI. FOOD
AGRIC. 931–939
1984
REJECTIONS
Appellant seeks review of the following grounds of rejection:
I. claims 77, 78, 80–84, 86, 88–90, 92, 93, 95, 96 and 98 under
35 U.S.C. § 103(a) as unpatentable over Neigut in view of
Sivell and Wilmott;
II. claim 99 under 35 U.S.C. § 103(a) as unpatentable over Neigut
in view of Sivell, Wilmott, Pearce, and Keinan; and
III. claims 77, 78, 80–84, 86–93 and 95–98 under 35 U.S.C.
§ 103(a) as unpatentable over Zeligs in view of Sivell and
Bertelli.

OPINION
I. Obviousness over Neigut, Sivell, and Wilmott
The issue is whether the preponderance of evidence of record supports
Examiner’s conclusion that the claims are obvious over the teachings of
Neigut, Sivell, and Wilmott.
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Findings of Fact
FF1. Neigut teaches compositions for topical application containing “a
carrier, a ubiquinone, and vitamins A and E to provide a balm of
various desired consistencies.” Neigut Abstract. “Ubiquinones
include vitamin K1, which serves as a antihemorrhagic agent, and
the Q coenzymes, such as Co-Q4 through Q15.” Id. 2:12–16. Neigut
explains that “Coenzyme Q10 has been identified as an important
enzyme necessary in metabolism, a powerful antioxidant, and an
immunostimulating agent.” Id. 2:22–25; see Ans. 4.
FF2. Neigut teaches formulations containing squalane, vitamin A, and
coenzyme Q10. See Neigut 7:19–10:28. Neigut teaches
a composition of squalane, coenzyme Q10, vitamin A, and
vitamin E. The composition may comprise any form of
balm, including but not limited to a liquid, emulsion,
cream, ointment, suspension, powder, bath oil, emollient
or powder. Additionally, vitamin D, gamma linolenic
acid, and/or cis linoleic acid may be added to the
composition of the present invention to further improve
its therapeutic effect.
Id. 4:1–9, see also id. 4:27–43; see Ans. 4.
FF3. Examiner finds that Neigut generally teaches compositions
containing emulsions and creams but does not specifically recite
“the type of emulsion, i.e. W/O or O/W.” Ans. 6.
FF4. Neigut teaches that squalene2 and squalane are effective transport
mediums. Neigut 5:62–63. Neigut teaches that other carriers can be
used with similar effectiveness such as “plant-derived oils, animal

2 Squalene is a naturally-occurring, polyunsaturated hydrocarbon and
squalane is the hydrogenated version of squalene.
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derived oil, aqueous solutions, mineral oils, dimethyl sulfoxide
(DMSO), glycerin, propylene glycol, and similar solutions.” Id.
5:68–6:2 (emphasis added); see Ans. 21.
FF5. Neigut teaches a balm composition containing:
carrier solution chosen from the group consisting
of squalene and squalane, said carrier solution
comprising at least 40 weight percent of the balm;
50,000 to 750,000 iu of vitamin A for every
100 ml of carrier solution;
1,200 to 18,000 iu of vitamin E for every 100 ml
of carrier solution;
250 mg to 3,000 mg of a benzoquinone having a
structure of Q10; and
1,000 to 12,000 iu of vitamin D for every 100 ml
of carrier solution.
Neigut 16:7–19 (claim 1), see also id. 5:26–42 (citing squalene
(C30H62) or squalene (C30H50) in a range 40–60%).
FF6. Example 5 of Neigut teaches a composition that can be
manufactured as a low viscosity emulsion or viscous ointment
depending on the amount of cornstarch added. Neigut 9:43–46; see
Ans. 20–21. The example 5 composition are listed in the table
below:
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The components making up the composition of example 5 is
reproduced in the table above. Neigut 8:50–68; see Ans. 20–21.
FF7. Examiner finds that “a benzoquinone having a structure of Q10
(i.e. a quinone having 10 isoprene units).” Ans. 5.
FF8. Sivell teaches that all-trans retinol is vitamin A. The chemical
structure of Vitamin A is reproduced below

The figure, reproduced above, is an excerpt of Sivell’s Figure 1
showing all-trans retinol, i.e. vitamin A. Sivell 932; see Ans. 5.
FF9. Wilmott teaches compositions containing 0.005 to 1.0 weight
percent retinol that may be diluted with cosmetically acceptable
carriers or vehicles, such as water in oil emulsions. Wilmott,
Abstract; Ans. 7. Retinol compositions containing between 0.005
to 1.0 percent by weight “can reduce facial fine lines and wrinkles
with minimal irritant effects.” Willmott 1:65–66; see Ans. 7.
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FF10. Wilmott teaches that “[t]he relative ratios of the water and oil
phases is optimally 2 to 1.” Willmott 3:22–23. Wilmott teaches
that in order to stabilize retinol and to minimize the potential for
separation of the oil in water emulsion, “[n]o more than 2 percent
water should be present.” Id. 2:17–18.
FF11. Wilmott teaches that “[u]ltraviolet absorbers or sunscreens,
antioxidants and the like may be present in the compositions of
the invention to enhance the stability of retinal against
degradation.” Willmott 2:49–52; see Ans. 7.
FF12. Wilmott teaches formulation containing water and a retinoid
blend. Formulation B teaches a composition containing
57.12406% water and 1.00224% retinoid blend in conjunction
with additional ingredients. Wilmott 5:1–15. Formulation B is
made by blending a concentrated retinoid composition with a
water in oil emulsion before application to the skin. Id. 4:42–68.
Wilmott teaches retinoid concentrations of 0.1, 0.25, and 0.5
weight percent in a blended formulation containing 59.5 % water.
Id. 6: 38–43.
Analysis
Examiner finds that Neigut teaches compositions comprising
“ubiquinone, vitamin A and β-carotene for topical administration to the skin
wherein the composition can be in the form of an emulsion, including
creams, ointments, etc.” Ans. 5; FF1–FF6. Examiner finds that “all-trans
retinal is vitamin A.” Ans. 5; FF7. Examiner acknowledges that Neigut does
not teach the specific ratios as claimed, the use of UV absorber, or whether
the composition “is in the form of an O/W or W/O emulsion.” Ans. 5.
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Examiner also acknowledges that Neigut does not exemplify “a composition
comprising the specific amounts of water as claimed in the instant
application.” Id. Examiner relies on Wilmott for teaching water in oil
emulsions. Ans. 7.
Examiner finds that Wilmott teaches that retinal may be irritating to
the skin, and “that compositions containing more than 0.005 to 1% weight
percent retinal (vitamin A) may be diluted with cosmetically acceptable
carriers or vehicles to form emulsions, preferably water in oil emulsions, in
order to reduce the retinal level so that the composition can be applied
topically without irritation to the skin.” Ans. 7; FF8, FF9.
Examiner concludes that, based on the combination of Neigut and
Wilmot, one of ordinary skill in the art would have found it obvious to arrive
at compositions containing between 0.005 to 1% retinal formulated in the
form of an emulsion in order to apply it to the skin while at the same time
minimize skin irritation. Ans. 8; FF8, FF9.
We find that Examiner has provided evidence to support a prima facie
case of obviousness. We adopt Examiner’s findings and conclusions with
respect to these claims. We provide the following additional comment to the
argument set forth in the Appeal Brief and Reply Brief.
Appellant contends that Neigut teaches that water may be a possible
component only once. Appeal Br. 1. Appellant contends that even though
Neigut teaches emulsions, that does not mean these are water in oil
emulsions. Neigut “uses the term ‘emulsion’ for compositions which do not
contain any water but instead contain (polar) organic solvents such as
propylene glycol and glycerin which can dissolve water-soluble components
(and may form a non-aqueous emulsion).” Id. at 12. Appellant contends that
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the only reasonable conclusion based on Neigut is that the use of water
should be avoided. Reply Br. 3.
Claim 77
We are not persuaded by Appellant’s contention that Neigut’s
teaching suggests avoiding water. Examiner explains that Neigut “requires
the carrier to comprise 40% of squalene or squalene and thus up to 60% of
the carrier may be any other component such as water since Neigut et al.
contemplates forms including creams, emollients and emulsions which
typically contain water.” Ans. 6–7; FF4, FF5. Examiner finds that “Neigut
utilizes propylene glycol and glycerin or propylene glycol as the additional
carrier combined with the squalane carrier,” therefore, Neigut specifically
teaches “that other carriers can be used with similar effectiveness including
any non-toxic organic or inorganic carrier or transport medium such as
aqueous solutions.” Ans. 21; FF4 (reciting a list of effective carriers). Neigut
teaches that propylene glycol and aqueous solutions are equivalent carriers.
FF4. Neigut teaches a composition containing squalane and propylene glycol
in in equal amounts in addition to vitamin A and CoQ10. FF6; see also
Ans. 21 (“Neigut teaches that a light emulsion or a higher viscosity emulsion
such as ointments/creams may be prepared.”). We agree with Examiner that
substituting propylene glycol carrier for an aqueous carrier is obvious based
on the teachings of Neigut, and that this substitution would reasonably result
in the claimed composition. See In re Omeprazole Patent Litig., 483 F.3d
1364, 1374 (Fed. 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.”).
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We are not persuaded by Appellant’s contention that Neigut does not
teach the use of water. See Appeal Br. 11 (citing Example 6); Reply Br. 2. A
reference disclosure is not limited only to its preferred embodiments, but is
available for all that it discloses and suggests to one of ordinary skill in the
art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); see also In re Susi, 440
F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments.). Here, Neigut teaches that other carriers can be
used with similar effectiveness and suggests “plant-derived oils, animal
derived oil, aqueous solutions, mineral oils, dimethyl sulfoxide (DMSO),
glycerin, propylene glycol, and similar solutions” are equivalent carriers.
FF4; Ans. 21 (“Neigut et al. specifically teaches that it has been found that
other carriers can be used with similar effectiveness including any non-toxic
organic or inorganic carrier or transport medium such as aqueous
solutions.”).
We are also not persuaded by Appellant’s contention that “the retinal
in the compositions (emulsions) [of Wilmott] shows only limited stability.”
Appeal Br. 9. Specifically, Appellant contends that Wilmott teaches that “it
[is] necessary to combine retinal and the emulsion only shortly before the
intended application of the blend onto the skin (in other words, the resultant
emulsion is not storage-stable).” Id. In other words, Appellant contends that
even if Wilmott mixes the retinal containing composition with a water in oil
emulsion prior to use, this composition is not storage-stable in light of
Wilmott’s teaching that retinol only has limited stability in the presence
water. See FF10.
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Here, the Specification does not define what is encompassed by
“storage-stable.” Therefore, storage-stable is reasonably interpreted to
encompass an emulsion that does not separate after mixing for a sufficient
time so that it can be applied to the skin of subject. Examiner explains that
Wilmott’s retinal concentrate “may be diluted with cosmetically acceptable
carriers or vehicles to form emulsions, preferably water in oil emulsions, in
order to reduce the retinal level so that the composition can be applied
topically without irritation to the skin.” Ans. 21; FF8. In addition, Wilmott
“provides motivation to include ultraviolet absorbers or sunscreens, and
antioxidants to the retinal compositions to enhance the stability of retinal
against degradation (see [Wilmott] column 2 lines 49-52).” Ans. 22; FF11.
We conclude, considering the totality of the cited evidence and
arguments, that the preponderance of the evidence supports Examiner’s
conclusion of obviousness with respect to claim 77, and Appellant has not
provided sufficient rebuttal evidence or evidence of secondary
considerations that outweighs the evidence supporting Examiner’s
conclusion. As Appellant does not argue the claims separately, claims 78,
80, 82, 86, 88, 89, 92, 93, 95, 96 and 98 fall with claim 77. 37 C.F.R.
§ 41.37 (c)(1)(iv).
Claims 83, 84, and 90
Appellant contends that, with respect to claims 83, 84, and 90, “[t]he
lowest weight ratio disclosed in [Neigut] . . . appears to be 7.9:1.5 = 5.3:1
(table in col. 15), the highest weight ratio being 8.3:0.75 = 11:1.” Appeal Br.
14.
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We are not persuaded and agree with Examiner that Neigut teaches a
retinol to Q10 ratio of 2:1 to 1:2. Specifically, we agree with Examiner’s
finding that
Neigut teaches compositions comprising from 0.8% (50,000 iu)
to 12% (750,000 iu) by weight of vitamin A, preferably 8%
(500,000 iu) and from 0.25% (250 mg) to 3% (3,000 mg) by
weight of coenzyme Q10, preferably 1 % (1,000 mg)” ([Neigut]
column 5 lines 25-43). Thus the weight percent ratio range of
vitamin A to CoQ10 encompass a ratio of 1:1 as well as 2:1 to
1:2 as claimed in the instant claims.
Ans. 22–23; see FF5, FF7.
We conclude, considering the totality of the cited evidence and
arguments, that the preponderance of the evidence supports Examiner’s
conclusion of obviousness with respect to claims 83, 84, and 90, and
Appellant has not provided sufficient rebuttal evidence or evidence of
secondary considerations that outweighs the evidence supporting Examiner’s
conclusion.
Conclusion
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection under 35 U.S.C. § 103(a) as
unpatentable over the combination of Neigut, Sivell, and Wilmott is
affirmed.
II. Obviousness over Neigut, Sivell, Wilmott, Pearce, and Keinan
With respect to this rejection, Appellant does not present any
additional arguments instead relying on the same arguments relied upon with
respect to claim 77, discussed above. See Appeal Br. 18.
Examiner acknowledges that Neigut, Sivell, and Wilmott, do not
specifically disclose plastoquinone as a component of the composition.
Ans. 17. Examiner looks to Pearce and Keinan for teaching that
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plastoquinones are structurally similar to benzoquinones. Id. at 18. Examiner
concludes, and we agree, that based on structural similarity ubiquinone and
plastoquinone are species of benzoquinones with similar function. Id. We
also agree with Examiner’s conclusion that based on this structural similarity
it would have been obvious to one of ordinary skill in the art at the time the
invention was made “to substitute a plastoquinone for coenzyme Q10
(ubiquinone-10) in the composition of Neigut.” Id. Thus, for these reasons as
well as those discussed above (see I.), we find that the Examiner has
established a prima facie showing of obviousness with respect to claim 99,
which Appellant has failed to rebut. Accordingly, we affirm the rejection of
this claim as well.
III. Obviousness over Zeligs, Sivell, and Bertelli
The issue is whether the preponderance of evidence of record supports
Examiner’s conclusion that the claims are obvious over the teachings of
Zeligs, Sivell, and Bertelli.
Findings of Fact
FF13. Zelgis teaches vitamin A composition for treating oxidative
epithelial damage. Zeglis 2:39–45. “[V]itamin A derivatives are
selected from the group consisting of retinoic acid, 13-cis-retinoic
acid, N-(4-hydroxyphenyl)retinamide, all-trans-retinoic acid,
retinal palmitate, β-carotene, other precursors and derivatives of
retinoic acid, vitamin A3 and vitamin A derivatives, and mixtures
thereof.” Id. 2: 50–55, see id. 4:35–45 (“retinal palmitate and
precursor β-carotene, may be used.”), see id. 4:64–66 (“A

3 Vitamin A is also known as all-trans retinol. See above FF8.
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combined DHEA-retinoid-containing cream (0.75% DHEA,
0.075% retinoid) for topical treatment is prepared by forming an
oil-in-water emulsion.”); id. 5:35–36 (“retinoid concentration is
about 0.001 % to about 0.01 %”), id. 5:13–14 (“the retinoic-acid
concentration is about 1 %”).
FF14. Zeligs teaches topical application “in such forms as creams,
lotions, lipsticks, and dispersible powders.” Id. 4:51–52. Zeligs
teaches “[a]combined DHEA-retinoid-containing cream (0.75%
DHEA, 0.075% retinoid) for topical treatment is prepared by
forming an oil-in-water emulsion.” Id. 4: 64–66. “[T]he cream
base carrier also comprises ultraviolet-light blocking agents such
as zinc oxide, para-aminobenzoic acid, or methyl-cinnamate;
vitamin D; and additional lipids such as ceramides.” Id. 5: 39–42.
The compositions are “used topically or systemically to reduce the
changes associated with intrinsic and photo-aging of skin. The
combination also has an anti-proliferative, anti-carcinogenic, and
differentiation enhancing effects on other epithelial tissues.” Id. 3:
35–39.
FF15. Zeligs teaches adding about 0.002% to about 0.01 % ubiquinone4
into the formulation. Id. 6:15–16; see Ans. 13 (Examiner finds
that ubiquinone is also known as “(coenzyme Q10)”).
FF16. Zeligs teaches a cream containing water and retinoic acid.
Example 4 of Zeligs is reproduced below:

4 Ubiquinones include Q10. See above FF1.
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The above table shows the components A–E which are combined
to form an oil in water cream containing DHEA and retinoic acid.
Id. 11: 14–40, see id. 4:64–5:17 (describing the production of an
oil-in-water emulsion).
FF17. Bertelli teaches using “[c]oenzyme Q10 directly in impaired or
damaged tissue” for the treatment caused by heat, cold, or U.V.
rays. Bertelli 2:34–35.
FF18. Bertelli teaches using coenzyme Q10 as the active principle in
amount from 0.1 to 10%. Id. 2: 54–56, see also id. 8:29–31
((claim 2) “the amount of Coenzyme Q10 in said composition is
0.1%–10% by weight.”).
FF19. Bertelli teaches using Coenzyme Q10 compositions in the form of
“a paste, cream, ointment, gel, lotion or unguent.” Id. 8: 39–40
(claim 5).
Analysis
Examiner finds that Zeligs teaches an oil-in-water emulsion for
topical application that contains vitamin A or vitamin a derivatives and
ubiquinone. Ans. 10–13; FF15–FF19. Zeligs teaches that the composition is
useful for treating photo damage of the skin. Ans. 14; FF14 (“used topically
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or systemically to reduce the changes associated with intrinsic and photo-
aging of skin.”). Examiner acknowledges that Zeligs ubiquinone
concentration is lower than the 0.1 to 1% range recited in the claims.
Ans. 13; FF15. Examiner looks to Bertelli for teaching higher ranges of
ubiquinone for application to the skin. Ans. 14; FF18. Bertelli teaches
compositions for the treatment of skin diseases and skin damage caused by
heat, cold, or UV rays. Ans. 14; FF17. Examiner concludes that, based on
the combined teaching of the references, “an ordinary skilled artisan would
have been motivated to vary and/or optimize the amounts of each ingredient
in the composition of Zeligs such that an optimal composition is produced
and thus arrive at the instant invention.” Ans. 15 (citing In re Aller, 220 F.2d
454, 456 (CCPA 1955) and In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”)).
We find that Examiner has provided evidence to support a prima facie
case of obviousness. We adopt Examiner’s findings and conclusions with
respect to these claims as set out in the Final Office Action and Answer. We
provide the following additional comment to the argument set forth in the
Appeal Brief and Reply Brief.
Appellant contends that the ubiquinone concentration taught in Zeligs
is 0.01%, which is about one tenth of the amount recited in present claims.
Reply Br. 3. The higher concentration of coenzyme Q10 taught in Bertelli is
for non-cosmetic compositions. Reply Br. 4; see Appeal Br. 16 (“The
concentration range for coenzyme Q10 in the (cosmetic) compositions of
ZELIGS, i.e., about 0.002% to about 0.01 %, apparently is right in the
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middle of the range disclosed by BERTELLI for cosmetic compositions like
those disclosed in ZELIGS.”).
We are not persuaded by Appellant’s contention that the recited uses
between cosmetic applications versus pharmaceutical applications would
have discouraged one of ordinary skill in the art from applying the teachings
of Bertelli to Zeligs. We agree with Examiner that both Bertelli’s and Zeligs’
compositions are applied topically to the skin for the purpose of treating
photo-damage to the skin. Compare FF14 with FF17; Ans. 24. As Examiner
explains, based on the combined references
it would have been obvious to a person of ordinary skill in the
art to include ubiquinone in the composition comprising
retinoid compounds when delivered topically to treat intrinsic
and photo-aging of the skin with a reasonable expectation of
improved success. . . . Although Zeligs teaches from about
0.002% to about 0.01 % of ubiquinone, at the time of the instant
invention pharmaceutical formulations containing from 0.0001
to 10% of coenzyme Q10 was known in the art to be useful for
the treatment of skin diseases (Bertelli abstract).
Ans. 24. Because these compositions are used for the same purpose of
treating photo-damage, we agree with Examiner’s conclusion that selecting
the optimal parameters to achieve a beneficial effect would have been
obvious. See Ans. 25 (citing In re Boesch, 617 F.2d 272 (CCPA 1980); In re
Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellant contends that in Zeligs, coenzyme Q10 is an optional
ingredient while it is the principle ingredient in Bertelli. Appeal Br. 16. In
other words, Appellant contends that there is no reason to combine the active
components of Zelig with the active components of Bertelli.
We are not persuaded.
It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
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purpose, in order to form a third composition which is to be
used for the very same purpose. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)(citations omitted).
Zeligs teaches using the retinoic acid containing composition to
reduce the changes associates with photo aging of the skin. FF16. Zelig
explains that “[s]un exposure produces ‘photo-aging,’ which accelerates
these changes and stimulates the development of premalignant, raised,
roughened areas (actinic keratoses), and malignant tumors (squamous and
basal cell carcinomas).” Zeligs 1:14–18. Bertelli explains that the
pharmaceutical compositions are “useful for the local application of
Coenzyme Q10 on the cutis in cases of metabolic respiratory impairments of
the cutis, caused by chemical or physical treatments (heat, cold, U.V. rays)
or simply by a slowing of cutaneous respiratory processes connected for
example with age and wear.” Bertelli 2:37–41. Here, both Zelig and Bertelli
teach applying their respective active ingredients onto the skin for the
purpose of treating damage to the skin cause by sun exposure, i.e. UV rays.
Following the Kerhoven rationale we determine that it would be obvious to
arrive a composition that combines the actives of Zelig and Bertelli in order
to form a third composition that is useful for the very same purpose of
reducing photo-aging of the skin.
Appellant acknowledges that Zelig discloses emulsions but contends
that Bertelli does not appear to disclose any emulsions. See Appeal Br. 17
(“It also must not be overlooked that in contrast to ZELIG, BERTELLI does
not appear to be disclose any emulsions.”).
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We are not persuaded. Bertelli teaches the use of creams. FF19. One
of ordinary skill in the art would have understood that creams are either oil-
in-water or water-in-oil emulsions.
We conclude, considering the totality of the cited evidence and
arguments, that the preponderance of the evidence supports Examiner’s
conclusion of obviousness with respect to claim 77, and Appellant has not
provided sufficient rebuttal evidence or evidence of secondary
considerations that outweighs the evidence supporting Examiner’s
conclusion. As Appellant does not argue the claims separately, claims 78,
80–84, 86–93, and 95–98 fall with claim 77. 37 C.F.R. § 41.37 (c)(1)(iv).
Conclusion
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection under 35 U.S.C. § 103(a) as
unpatentable over the combination of Zeligs, Sivell, and Bertelli is affirmed.
CONCLUSION
For the reasons set out above (see I), the rejection of claims 77, 78,
80–84, 86, 88–90, 92, 93, 95, 96, and 98 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Neigut, Sivell, and Wilmott is
affirmed.
For the reasons set out above (see II), the rejection of claim 99 under
35 U.S.C. § 103(a) as unpatentable over the combination of Neigut, Sivell,
Wilmott, Pearce, and Keinan is affirmed.
For the reasons set out above (see III), the rejection of claims 77, 78,
80–84, 86–93, and 95–98 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Zeligs, Sivell, and Bertelli is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
77, 78, 80–
84, 86, 88–
90, 92, 93,
95, 96, 98
103 Neigut, Sivell,
Wilmott
77, 78, 80–
84, 86, 88–
90, 92, 93,
95, 96, 98

99 103 Neigut, Sivell,
Wilmott, Pearce,
Keinan.
99
77, 78, 80–
84, 86–93,
95–98
103 Zeligs, Sivell,
Bertelli
77, 78, 80–
84, 86–93,
95–98

Overall
Outcome
77, 78, 80–
84, 86–93,
95–99

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