Ex Parte ALBRECHT

Patent Trial and Appeal BoardJan 14, 2019

14845651 (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/845,651 09/04/2015 20462 7590 01/16/2019 GlaxoSmithKline Global Patents UP4110 1250 South Collegeville Road Collegeville, PA 19426 FIRST NAMED INVENTOR Martin ALBRECHT 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CU64590Cl 4358 EXAMINER CHICKOS, SARAH J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 01/16/2019 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): US_cipkop@gsk.com laura.m.mccullen@gsk.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAR TIN ALBRECHT (APPLICANT: KUHS GMBH) Appeal 2018-002048 Application 14/845,651 1 Technology Center 1600 Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and DAVID COTTA, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. Â§ 134(a) involves claims 1-19 (Br. 5; see also Final Act. 2 2; see generally Ans. 3 5). 4 Examiner entered a rejection under 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellant identifies "Kuhs, GMBH ... a whole owned subsidiary of GlaxoSmithKline plc." as the real party in interest (see Appellant's March 20, 2017 Appeal Brief (Br.) 3). 2 Examiner's June 17, 2016 Final Office Action. 3 Examiner's September 22, 2017 Answer. 4 Examiner denied entry of Appellant's claim 20 (see Examiner's September 23, 2016 Advisory Action). Therefore, we decline Appellant's request for "the Board to enter claim 20 into the record for this appeal" (Br. 5). Appeal 2018-002048 Application 14/845,651 STATEMENT OF THE CASE Appellant's disclosure "relates to a cosmetic or pharmaceutical composition, to be applied topically" (Spec. 1 :3--4). Claim 1 is representative and reproduced below: 1. A cosmetic composition for topical application, said composition comprising: a hydrophilic outer phase comprising water; at least one cosmetic active ingredient which is rice bran wax; and at least one carrier substance for the active ingredient; wherein: a) the carrier substance forms a planar structure which comprises at least two lamellar double membrane layers, arranged one over another in the manner of a sandwich; b) between adjacent double membrane layers, aligned parallel to each other, a layer of an inner phase comprising water is arranged; c) the active ingredient is distributed in the double membrane layer and in the layer of the inner phase such that the layer of the inner phase contains the active ingredient in a concentration range between 2% by weight and 98% by weight, and the double membrane layer contains the active ingredient in a concentration between 98% by weight and 2% by weight, respectively, in relation to the total concentration of the active ingredient; d) the outer phase comprises the active ingredient in a concentration between 0% by weight and 2% by weight, in relation to the total concentration of the active ingredient; and e) the carrier substance comprises hydrogenated phosphatidylcholine. (Br. 14 (emphasis added).) Appellant's claims 2-19 depend directly or indirectly from Appellant's claim 1 (see id. at 14--17). 2 Appeal 2018-002048 Application 14/845,651 Ground of rejection before this Panel for review: 5 Claims 1-19 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Albrecht, 6 De Souza Costa, 7 and Arquette. 8 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS Examiner finds that Albrecht discloses a cosmetic composition for topical application of an active ingredient, wherein the composition comprises a lamellar structure (see Final Act. 5; see generally id. at 5-8; see also Br. 9 ("Albrecht ... discloses a carrier system containing a number of similar components necessary to construct a lamellar system as that herein")). Although Examiner recognizes that Albrecht is "silent as to the amount of active ingredient present in the double membrane layer and the inner and outer phase" of its composition, Examiner concludes that because Appellant's claimed composition appears to be the same as Albrecht's, "absent a showing of unapparent differences ... the burden is on the [Appellant] to prove that the composition of the claimed method is different from those taught by the prior art and to establish patentable differences" (Ans. 7-8 (citing In re Best, 562 F.2d 1252 (CCPA 1977)). We are not persuaded. 5 We recognize that Examiner objects to several claims in this Appeal (see Final Act. 2-3; Ans. 3-5; cf Br. 8-9). These objections are petitionable rather than appealable. Therefore, we decline to address the merits of these objections. 6 Albrecht et al., US 2005/0208012 Al, published Sept. 22, 2005. 7 De Souza Costa et al., WO 2007/033453 Al, published Mar. 29, 2007. 8 Arquette, US 2004/0265249 Al, published Dec. 30, 2004. 3 Appeal 2018-002048 Application 14/845,651 Notwithstanding Examiner's assertion that Albrecht's composition is the same as Appellant's, Examiner recognizes that "Albrecht does not teach rice bran wax," which is a required component of claim 1 (Final Act. 8; see also Br. 9). Thus, we are not persuaded that Examiner established a sufficient evidentiary basis on this record to shift the burden to Appellant to prove that Appellant's claimed composition is different than Albrecht's composition ( cf Final Act. 7-8). In this regard, we note Examiner's reliance on Arquette to make up for Albrecht's failure to disclose rice bran wax (Final Act. 8 ("[t]he compositions of Arquette also contain rice bran wax"); see also Ans. 6 ("rice bran wax [is] taught by Arquette")). 9 As Appellant explains, however, Appellant's [ c ]laim 1 [] requires components for a skin care formulation that produce a bilayer lamellar system containing a cosmetic active ingredient, e.g. rice bran wax. Lamellar systems such as this one are not the traditional w/o or o/w emulsion as the Examiner appears to confuse with the use of the secondary references of De Souza [Costa] and Arquette. Nor are the lamellar systems such as this the same as a liposome. (Br. 9-10; see also id. at 10-11.) Thus, Appellant contends that "[t]he use of rice bran wax in an o/w or w/o emulsion does not mean that their incorporation into another type of formulation ( e.g., the instant lamellar structure) would be obvious, nor would its incorporation into such a lamellar system produce a stable formulation with skin protective effects" (id. at 12). In addition, Appellant contends that "Albrecht ... when fairly and reasonable interpreted by the person of ordinary skill in the art ( and without 9 Examiner relies on De Souza Costa to disclose cupuacu butter and shea butter, which relates to subject matter in Appellant's dependent claims (see Final Act. 8 and 9; see generally Ans. 6 and 8). 4 Appeal 2018-002048 Application 14/845,651 impermissible use of hindsight) does not describe, teach or reasonably suggest the claimed combination of rice bran wax in a lamellar system with the particular concentration[] ranges" required by Appellant's claimed invention and neither De Souza Costa nor Arquette remedy these deficiencies in Albrecht (id. at 13). We agree. Simply stated, Examiner failed to establish an evidentiary basis on this record to support a conclusion that a product resulting from Examiner's combination of prior art would have, initer alia, distributed Appellant's active ingredient, rice bran wax, across the double membrane layer, layer of the inner phase, and outer phase in the identical, or substantially identical, manner as required by Appellant's claimed invention. See Best, 562 F.2d at 1255 (permitting the PTO to shift the evidentiary burden to Appellant only when "the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes"). For the foregoing reasons, we find that Examiner failed to establish an evidentiary basis on this record to support a conclusion that the combination of Albrecht, De Souza Costa, and Arquette makes obvious Appellant's claimed invention (see Final Act. 4--9; see also Ans. 5-8). CONCLUSION The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1-19 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Albrecht, De Souza Costa, and Arquette is reversed. REVERSED 5