Ex Parte Blatt et al

Patent Trial and Appeal Board

Mar 14, 2017

10571530 (P.T.A.B. Mar. 14, 2017)

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.
10/571,530 11/03/2006 Thomas Blatt 3321-P29294 3297
13897 7590
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
03/16/2017 EXAMINER
BREDEFELD, RACHAEL EVA
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BLATT, UTE BREITENBACH,
STEFAN GALLINAT, LUDGER KOLBE, CHRISTOPHER MUMMERT,
FRANZ STAEB, and RAINER WOLBER1
Appeal 2015-005363
Application 10/571,530
Technology Center 1600
Before ULRIKE W. JENKS, JACQUELINE T. HARLOW, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
treating symptoms associated with skin aging by applying compositions
containing licochalcone A to the skin. The Examiner rejects the claims as
anticipated, obvious, and on the grounds of nonstatutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Beiersdorf AG.
Appeal Br. 3.
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STATEMENT OF THE CASE
Claims 45—64 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claims 45 and 63 are representative of the
claims on appeal, and read as follows:
45. A method of treating symptoms of intrinsic or extrinsic
skin ageing in a human in need thereof, wherein the method
comprises applying to the human’s skin licochalcone A in a form
of a cosmetic or dermatological preparation and in an amount
and for a period of time which is effective for treating a symptom
of intrinsic or extrinsic skin ageing.
63. A method of treating damaging effects of ultraviolet
radiation on skin in a human in need thereof, wherein the method
comprises applying to the human’s skin licochalcone A in a form
of a cosmetic or dermatological preparation and in an amount
and for a period of time which is efficient to treat a damaging
effect of ultraviolet radiation.
Appellants seek review of the following rejections:
I claims 45—48, 51, 52, and 54—64 under 35 U.S.C. § 102(b) as
being anticipated by Kishida;2
II. claims 45—52 and 54—64 under 35 U.S.C. § 103(a) as
unpatentable over Kishida;
III claims 45—64 under 35 U.S.C. § 103(a) as unpatentable over
Kishida in view of Gers-Barlag;3 and
2 Kishida et al., JP2001-163718, published June 19, 2001 (“Kishida”), all
references are made to the machine translation of record (see form 892,
mailed May 21,2010).
3 Gers-Barlag et al., US 5,788,952, issued Aug. 4, 1998 (“Gers-Barlag”).
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IV. claims 63 and 64 under 35 U.S.C. § 103(a) as unpatentable over
Kishida in view of Holzle4 and Matsukawa.5
The Examiner rejected claims 45—64 on the ground of nonstatutory
obviousness-type double patenting over claims 1—6, 10-16, 18—27, and 30-
32 of the ’349 patent6 in view of Gers-Barlag, claims 1—4 and 12—18 of the
’356 patent7 in view of Gers-Barlag, and claims 1—20 of the ’717 patent8 in
view of Gers-Barlag. Appellants do not present these rejections for review.
Appeal Br. 31. Accordingly, we summarily affirm these rejections.
Additionally, we note that the Examiner also provisionally rejected
claims 45—64 on the ground of nonstatutory obviousness-type double
patenting9 over claims in copending Application No. 10/985,733 in view of
Gers-Barlag; claims in copending Application No. 10/966,036; and claims in
copending Application No. 11/004,650 in view of Kishida and Gers-Barlag.
Appellants do not provide substantive arguments with respect to these
rejections. See Appeal Br. 31—32. Accordingly, we summarily affirm these
rejections.
4 Holzle, Pigmented lesions as a sign of photodamage, 111 British Journal of
Dermatology 48—50 (1992).
5 Matsukawa, US 6,214,352 Bl, issued Apr. 10, 2001.
6 Tom Diek et al., US 8,470,349 B2, issued June 25, 2013 (“the ’349
patent”).
7 Raschke et al., US 7,799,356 B2, issued Sept. 21, 2010 (“the ’356 patent”).
8 Stab et al., US 7,824,717 B2, issued Nov. 2, 2010 (“the ’717 patent”).
9 The Examiner also provisionally rejected claims 45—64 on the ground of
nonstatutory obviousness-type double patenting over claims 14, 15, 20, 24—
33, 25—43 of the copending Application No. 10/581,271 which has now been
abandoned (Notice of Abandonment mailed Nov. 14, 2016). Accordingly,
this rejection is moot.
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I. Anticipation by Kishida
The issue is: Does Kishida’s method of administering Appellants’
active agent, licochalcone A, in Appellants’ concentration to the same
patient population as Appellants inherently anticipate Appellants’ claimed
method?
Findings of Fact
FF1. Kishida teaches that “the sebum acrinia agent [containing
licochalcone A] which is the external preparations for controlling the
excessive sebum secretion from an outer skin.” Kishida 11, see also
claim 1 (“[a] sebum acrinia agent containing the licochalcone A as an
active substance”). In addition to having antimicrobial action,
platelet-aggregations inhibition, and antitumor action —
licochalcone A also functions as an androgen receptor coupling
inhibition agent as well as a testosterone 5alpha-reductase inhibitor.
See Kishida abstract, claims 1—4, and H 8, 19, and 47.
FF2. Kishida teaches that licochalcone A can be formulated for use in
“common skin external preparations containing arbitrary bioactive
substances and assistants, for example, an astringent, sterilization and
an antimicrobial agent, a whitening agent, an ultraviolet ray
absorbent, a moisturizer, a cell activator, resolution and an
antiallergic agent, an antioxidation activity oxygen elimination agent,
etc. as a base.” Kishida 124 (emphasis added), see 1125-33.
FF3. Kishida teaches that the active substance licochalcone A can be
synthesized or extracted from a legume. It is “contained also in the
glycyrrhiza (Glycyrrhiza inflata, Glycyrrhiza echinata, etc.) of a
legume” and can be extracted using organic solvent. Id. at 120.
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FF4. Kishida teaches the production of a cream that in addition to
licochalcone A contains: beeswaxes, cetanols, hydrophilic lanolin,
squalane, and glyceryl monostearate, aloe extract, polyoxyethylene
sorbitan monolaurate, polyethylene glycols, ethanol, and preservative.
Kishida 146.
FF5. The Examiner finds that Kishida exemplifies “a cream comprising
licochalcone A in an amount of 0.002% of the total composition and
polyethylene glycol in an amount of 0.05% of the total composition.”
Final Act. 2—3; Kishida 146 (working example 5).
FF6. The Specification discloses that the preparation can contain “from
0.0001 % to 5% by weight, particularly from 0.001 % to 1 % by
weight, most particularly from 0.005% to 0.15% by weight of
licochalcone A, relative to the total weight of the preparation.” Spec.
135.
FF7. The Specification discloses that “[t]heprophylaxis or the cosmetic or
dermatological treatment with the active ingredient” is achieved when
the active ingredient is “applied on the affected skin areas.” Spec. 151
(emphasis added).
FF8. The Specification lists the following symptoms (a—g) as damage
resulting from ageing by light. Spec. 17.
a) dryness, roughness, and formation of dryness wrinkles;
b) itching;
c) reduced oil restoration by sebaceous glands (for
example, after washing).
d) visible vasodilatations (telangiectasias, cuperosis);
e) flabbiness and formation of wrinkles;
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f) local hyperpigmentation, hypopigmentation, and
absence of pigmentation (for example, age spots), and
g) increased susceptibility to mechanical stress (for
example, chapping).
Spec. 5—6.
Principles of Law
“Products of identical chemical composition can not have mutually
exclusive properties.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990).
“[IJnherent anticipation does not require that a person of ordinary skill in the
art at the time would have recognized the inherent disclosure.” Schering
Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
Analysis
The Examiner finds that Kishida teaches using the same composition
as instantly claimed including the method of applying the composition to the
skin, therefore, the result of “treating a symptom of intrinsic or extrinsic skin
ageing” is inherent. Final Act. 4 (“Kishida teaches all the structural
features/ingredients of the composition recited in the instant claims and all
the active steps of the method recited in the instant claims”). The
Examiner’s position is that “the instant patient population recited in claim 45
is directed to the entire human population [(a genus)] since everyone is
subjected to chronological ageing.” Final Act. 3; Advisory Act. 2 (“the
patient population of Kishida falls within the patient population recited in
the instant claims”). The Examiner has established that all humans age and
that “skin ageing results from the body’s natural processes as well as
exposure to the environment.” Advisory Act. 2 (citing Stibich10 in support).
10 Stibich, Skin Ageing-How skin ages, http://longevity.about.com/od/
lifelongbeauty/p/skin_aging.htm (last visited 2/21/2010).
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According to the Examiner, Kishida teaches applying a composition
containing licochalcone A to the skin of patients in need of controlling
excessive sebum secretion (a species), and because every human is subjected
to continuous chronological aging (the genus), the treatment of Kishida
inherently achieves the same result.
The facts before us are similar to those in Perricone, where the Court
found that a method claim preamble that required “preventing sunburn
damage to exposed skin surfaces,” was satisfied by a prior art skin
composition which had been applied to skin surfaces, but for a different
purpose. Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed.
Cir. 2005). Perricone stated that “[bjecause [the prior art] discloses the very
same composition and teaches its topical application, the district court
correctly applied the inherency doctrine. Using the same composition
claimed by Dr. Perricone in the same manner claimed by Dr. Perricone
naturally results in the same claimed skin benefits'1'’ {id. at 1380; emphasis
added). By analogy, Kishida administers the identical active agent,
licochalcone A, having the same concentration to the same patient
population as Appellants, thus, Kishida’s method will inherently result in
“treating a symptom of intrinsic or extrinsic skin ageing” as claimed. See
FF1-FF4.
We note that “[i]t is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the process again
patentable.” In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990).
SeeAvenus Pharma Deutschland GmbHv. Lupin, Ltd., 499 F.3d 1293, 1300
(Fed. Cir. 2007) (disclosure of an obvious species in the prior art renders a
later claim to a genus unpatentable as obvious). Here, Kishida teaches
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applying creams and lotions containing licochalcone A to patient’s skin in
order to treat excessive sebum secretion from the outer skin. See FF1—FF4.
Because “Kishida’s composition would necessarily treat the damaging
effects of ultraviolet radiation on skin . . . [and] the instant claims do not
specify any particular damaging effects on skin resulting from UV radiation
and all humans are exposed to ultraviolet radiation or the sun” the
application of licochalcone A to patient’s skin as disclosed in Kishida
anticipates the claimed method. Final Act. 3.
It is not dispositive that Kishida does not appreciate that
licochalcone A was effective for treating a symptom of intrinsic or extrinsic
skin aging. Rather, as long as Kishida carried out the same step as claimed
and administered the licochalcone A to the same patient population, the
Examiner had a sound basis to believe that treating a symptom of intrinsic or
extrinsic skin aging would be achieved. Because Kishida expressly teaches
the same step applying licochalcone A to the skin on the same patient
population as recited in claim 45, the Examiner’s burden was properly
discharged.
Claim 45
Appellants contend that claim 45 recites three limitations that are not
disclosed in Kishida. Specifically, that “the treatment of a human in need
thereof and the application to the human’s skin of licochalcone A in the form
of a cosmetic or dermatological preparation (i) in an amount and (ii) for a
period of time which is efficient to treat a symptom of intrinsic or extrinsic
skin ageing.” Appeal Br. 8. We address Appellants contentions below:
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in need thereof
Appellants contend their preamble is “directed to methods of
treatment to be performed on those in need of such treatment require the
specific intent to effect such treatment” namely “treating symptoms of
intrinsic and extrinsic skin ageing.” Appeal Br. 14, citing Jansen v. Rexall
Sundown Inc., 342 F.3d 1329 (Fed. Cir. 2003).
We are not persuaded by Appellants’ argument that the Jansen
specific intent requirement is applicable to the claims under consideration.
The question is whether Rashida’s method, even if it does not disclose any
intent to treat symptoms of intrinsic or extrinsic skin aging, nevertheless
necessarily results in treatment by carrying out the steps disclosed in
Kishida.
Jansen was an infringement case, requiring the court to construe the
subject claim “so as to sustain [its] validity, if possible.” Whittaker Corp. v.
UNR Indus., 911 F.2d 709, 712 (Fed. Cir. 1990) (citing ACSHosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984). In contrast,
during prosecution, a claim must be given its broadest reasonable
interpretation. Unlike the case here, in Jansen, the patentee was arguing a
broad construction to establish infringement. 342 F.3d at 1331. However,
the court “strictly construed” the claim against the inventor, in view of
statements made during prosecution. Id. at 1334.
Furthermore, the Examiner’s position is that “all humans’ skin would
necessarily have some damage from being exposed to ultraviolet radiation.
Since all humans have been in contact with the sun, there is no doubt that
that all humans’ skin would have some negative effects as result of the sun.”
Final Act 9. “Skin ageing results from the body’s natural processes as well
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as exposure to the environment.” Advisory Act. 2 (citing Stibich (“As we
age, our skin changes and aging happens. It becomes less flexible and less
elastic. We get wrinkles and other signs of aging. There are two main
reasons for this—the body’s natural processes and exposure to the
environment. . . . Most of the damage comes from the sun’s UV rays.”).
Because all humans are experiencing some form of extrinsic and intrinsic
skin aging, every individual is reasonably considered to meet the limitation
of a human “in need thereof’ of treatment.
In spite of lack of intent to treat symptoms of extrinsic and intrinsic
skin aging, we find Kishida anticipates claim 45, under the doctrine of
inherency. Kishida teaches the production of a licochalcone A containing
cream and lotions, and applying these compositions to the skin of patients
with the intent of treating excessive sebum secretions. As noted by the
Examiner, the rejection is “not based on linking Kishida’s intent to treat
excessive sebum secretion to the instant claims’ treatment of intrinsic or
extrinsic skin ageing and/or damaging effects of ultraviolet radiation.” Ans.
11. Indeed, the Examiner relies on the fact that the “the patient population
of Kishida [(a species)] falls within the patient population recited in the
instant claims [(a genus)].” Id. Given the broad language of claim 45,
“treating symptom of intrinsic or extrinsic skin aging” is the “natural result
flowing from” Kishida’s disclosure. Kishida’s lack of intent to treat intrinsic
or extrinsic skin aging does not change our analysis. See, e.g., Perricone,
432 F.3d at 1378 (quoted above).
period of time
In this case, Appellants challenge the Examiner’s interpretation of the
phrase “for a period of time” as recited in claim 45, arguing that the
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“treatment involves applying the composition for longer than just a day” and
that the “composition is (repeatedly) applied.” Appeal Br. 11. Appellants
contend that the claims do define “a period of time” because “the period of
time which (in combination with the applied amount of licochalcone A) is
effective for treating the symptoms of intrinsic or extrinsic skin
ageing/damaging effects of ultraviolet radiation.” Appeal Br. 11. “[T]o
topically treat symptoms of intrinsic and extrinsic skin ageing a composition
has to be applied to the affected areas of the skin over a certain period of
time. In other words, it is apparent that a corresponding treatment involves
applying the composition for longer than just a day.” Appeal Br. 11.
We agree with the Examiner that Appellants have not directed us to
“evidentiary support in the instant specification or in the form of objective
evidence” that “treatment involves applying its composition for longer than
just a day” or that it “is (repeatedly) applied.” Ans. 7.
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. In re Am. Acad. ofSci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we first turn to the
Specification to determine whether the meaning of the phrase “for a period
of time” can be discerned. Here, the Specification does not provide a
definition of for the phrase “for a period of time.” The Specification does
disclose treating symptoms of “intrinsic or extrinsic skin aging” includes
symptoms such as dryness, roughness, formation of dryness wrinkles, or
itching. See FF7. The ordinary artisan would understand the application of
a moisturizer in the form of a cream or a lotion would treat the symptom of
dryness even if it does so for only for a short period of time. Thus, the
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broadest reasonable interpretation for “for a period of time” in light of the
Specification would be the time period from the application of the product
onto the skin until the product is either washed off, worn off, or another dose
is applied the skin. “Period of time” as understood in light of the
Specification can encompass “applying the composition for longer than just
a day” or even include repeated application as argued by Appellants,
however, “period of time” is not limited to such a construction. Thus,
“period of time” includes a single application of the composition onto the
skin as well as repeated applications.
amount
Appellants contend that there is a “fundamental difference between
the concentration of an active ingredient in a preparation that is to be applied
to skin and the actual amount of active ingredient that is applied to skin by
means of the preparation.” Appeal Br. 10; see 25, see Reply Br. 2—3.
We recognize, but are not persuaded by, Appellants’ contentions. As
pointed out by the Examiner, Appellants “ha[ve] not defined in the
specification or claimed a specific amount of licochalcone A that needs to be
applied to the skin” in order to see a particular beneficial effect. Advisory
Act. 2; Ans. 6. We note that the dependent claim (see claim 46) recites a
particular concentration range which the Examiner finds encompasses the
concentration disclosed in Rashida’s cream product. FF5. The Examiner
relies on the fact that the “the patient population of Kishida falls within the
patient population recited in the instant claims” and that these patients are
treated with a composition having the same concentration licochalcone A
and thereby would necessarily achieve the same result. Ans. 9; FF1—FF5.
“[T]he amount of applied composition and the period of application taught
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in Kishida would necessarily be effective for treating symptoms of intrinsic
and extrinsic skin ageing.” Ans. 9; FF6. It is important to note that
symptoms of intrinsic and extrinsic aging includes dryness. FF8. Given the
broad language of claim 45, “treating symptom of intrinsic or extrinsic skin
aging” is the “natural result flowing from” Kishida’s disclosure. Kishida
discloses applying a cream product containing licochalcone A to the skin.
FF1—FF4. One of ordinary skill in the art would recognize that the
application of a cream product, even without the active agent licochalcone
A, would treat skin dryness a symptom of intrinsic or extrinsic skin aging.
FF8. Kishida’s lack of stated intent to treat intrinsic or extrinsic skin aging
does not change our analysis. See, e.g., Perricone, 432 F.3d at 1378 (quoted
above).
We agree with the Examiner that Appellants’ arguments with respect
to the frequency of application and amount is not persuasive as these are
features not recited in the claims. Ans. 6. As stated by our reviewing court
in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the
game is the claim.” It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
In sum, Appellants’ arguments do not persuade us that the evidence
relied on by the Examiner is inadequate for finding anticipation based on
inherency. Accordingly we affirm the rejection of claim 45, claims 46-48,
51, and 52, were not argued separately and fall with claim 45.
Claim 56—62
Appellants contend that Kishida does not disclose treating wrinkles as
recited in claim 56, treating telangiecstsias as recited in claim 57, treating
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photodermatoses as recited in claim 58, treating pigmentation disorder as
recited in claim 59, treating itching as recited in claim 60, treating dry skin
condition and homy layer barrier disorders as recited in claim 61, or treating
hair loss as recited in claim 62. Appeal Br. 16—18.
“The Examiner agrees with the Federal Circuit decision [in Jansen]
that claims directed to methods of treatment to be performed on those in
need of such treatment require the specific intent to effect such treatment.”
Ans. 11. The present claims, however, do not recite specific treatment that
is applied to a selected patient population. The Examiner explains that “the
‘wherein’ language recited in dependent claims 54-62 does not require the
patient population specified in the instant claims to necessarily have the
specific symptoms of wrinkles, telangiecstsias, pigmentation disorders,
itching, dry skin, hair loss, etc.” Id. As noted by our reviewing court a
“‘whereby clause in a method claim is not given weight when it simply
expresses the intended result of a process step positively recited.’” Hoffer v.
Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (quoting Minton v.
Nat’lAss’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir.
2003)). Because the “[dependent claims 54-62 only require the patient
population administered the composition to have symptoms of intrinsic or
extrinsic skin ageing and/or damaging effects of UV radiation on skin,
which as noted above, is directed to the entire human population” the claims
are not limited to the recited condition. Ans. 12. We agree with the
Examiner’s interpretation that the claims as written do not narrow the patient
population as argued by Appellants. For example, claim 54 indicates that if
you follow the method of claim 45 you would also effectively treat
hypoactive skin conditions. Claim 54 as written, however, does not instruct
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to select a particular patient population (species) form the genus of all
humans and then apply the treatment to that selected species. Therefore, we
affirm the rejection of claims 54—62 for the reasons set out by the Examiner.
Claims 63 and 64
Appellants contend that Kishida does not disclose treating the
damaging effects of ultraviolet radiation on skin. Appeal Br. 18.
As noted by the Examiner, claim 63 does “not specify any particular
damaging effects on skin resulting from UV radiation” and because “all
humans are exposed to ultraviolet radiation or the sun,” all humans
experience some form of damage caused by the sun. Final Act. 3. Because
all humans experience some form of extrinsic and intrinsic skin aging as a
result of the sun, all humans are reasonably considered to meet the
population that is “in need thereof’ treatment. Kishida administers the
identical active agent, licochalcone A, having the same concentration to the
same patient population (a human) as Appellants, thus, Kishida’s method
will inherently result in “treating] a damaging effect of ultraviolet
radiation” as claimed. See FF1—FF4. In spite of lack of intent to treat
damaging effect of ultraviolet radiation, we find Kishida anticipates claim
63, under the doctrine of inherency. Kishida teaches the production of a
licochalcone A containing cream and lotions, and applying these
compositions to the skin of patients with the intent of treating excessive
sebum secretions. The Examiner relies on the fact that the “the patient
population of Kishida [(a species)] falls within the patient population recited
in the instant claims [(a genus)].” Ans. 11. Given the broad language of
claim 63 which recites “to treat a damaging effect of ultraviolet radiation”
this, however, is the “natural result flowing from” Kishida’s disclosure.
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Kishida’s lack of stated intent to treat a damaging effect of ultraviolet
radiation does not change our analysis. See, e.g., Perricone, 432 F.3d at
1378 (quoted above). Accordingly, we affirm the rejection of claim 63 and
dependent claim 64.
II. Obviousness over Kishida
The Examiner has rejected claims 45—52 and 54—64, more specifically
49 and 50 that are directed to Radix Glycyrrhizae inflate extracts, as obvious
based on Kishida. Final Act. 6. The Examiner finds that Kishida “teach[es]
that licochalcone A can be synthesized and extracted from glycyrrhiza
echinata in addition to being extracted from glycyrrhiza inflate” the
Examiner concludes that “one would have been motivated to try using any
one of the extracts of licochalcone A since Kishida [] suggest the use of the
instant extract as a suitable alternative.” Final Act. 6; FF3. The Examiner
acknowledges that Radix Glycyrrhizae inflate is not disclosed in Kishida, but
concludes that “[i]t is also within the skill of an artisan to select a given
extract [of licochalcone A even from a different plant] depending on
availability and costs.” Id.
Appellants contend that the Examiner has not sufficiently articulated
why, “despite the fact that KISHIDA is completely silent with respect to the
treatment of symptoms of intrinsic or extrinsic skin ageing and the damaging
effects of ultraviolet radiation with licochalcone A and that there is no
apparent connection between excessive sebum secretion and symptoms of
intrinsic or extrinsic skin ageing and the damaging effects of ultraviolet
radiation on skin,” Kishida would render the claims obvious. Appeal Br. 27.
This argument is not persuasive because, as discussed above (/.), we
conclude that Kishida inherently anticipates “treating a symptom of intrinsic
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or extrinsic skin aging” because it is the “natural result flowing from”
Rashida’s application of a licochalcone A containing composition onto the
skin. See, e.g., Perricone, 432 F.3d at 1378 (quoted above).
III. Obviousness over Kishida and Gers-Barlag
The Examiner has rejected claims 45—64, more specifically claim 53
that is directed to a hydrodispersion, as obvious based on Kishida and Gers-
Barlag. The Examiner concludes that based on the teachings of Gers-Barlag
that hydrodispersions are advantageous because they lack emulsifiers that
often produce allergic reactions one of “ordinary skill at the time the
invention was made [would have found it obvious] to formulate the rendered
obvious skin preparations of Kishida [] into a hydrodispersion” as well.
Final Act. 12.
Appellants contend that the Examiner has not sufficiently articulated
why, “despite the fact that KISHIDA is completely silent with respect to the
treatment of symptoms of intrinsic or extrinsic skin ageing and the damaging
effects of ultraviolet radiation with licochalcone A and that there is no
apparent connection between excessive sebum secretion and symptoms of
intrinsic or extrinsic skin ageing and the damaging effects of ultraviolet
radiation on skin,” the proposed combination would render the claims
obvious. Appeal Br. 27.
This argument is not persuasive because, as discussed above (/.), we
conclude that Kishida inherently anticipates “treating a symptom of intrinsic
or extrinsic skin aging” because it is the “natural result flowing from”
Kishida’s disclosure of applying the licochalcone A containing composition
onto the skin. See, e.g., Perricone, 432 F.3d at 1378 (quoted above).
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IV. Obviousness over Kishida, Holzle, and Matsukawa
The issue is: Does Kishida’s method of administering Appellants’
active agent, licochalcone A, in Appellants’ concentration to the same
patient population as Appellants in conjunction with the teachings of Holzle
and Matsukawa render treating a damaging effect of ultraviolet radiation
obvious?
Findings of Fact
FF9. Holzle teaches that “[cjhronic exposure to ultraviolet (UV) radiation
causes skin changes, known as photodamage. Apart from damage to
the connective tissue of the dermis and to keratinocytes, pigmented
lesions known as ‘age spots’, occur.” Holzle, abstract.
FF10. Matsukawa teaches:
Tyrosine, which is a type of amino acid, is converted by the
action of tyrosinase enzyme into melanin, a black-brown to red-
brown pigment, which is the cause of skin blemishes and spots.
In order to prevent the production of melanin under the action of
tyrosinase, various compounds have been used or proposed to
inhibit the activity of tyrosinase in the fields of cosmetics and
foods.
Matsukawa 1:14—20. Compounds that are known to inhibit tyrosinase
include “ascorbic acid, sulfur compounds, hydroquinone, kojic acid,
and natural plant extracts.” Id. at 1:21—23.
FF 11. Matsukawa teaches:
tyrosinase inhibiting agents containing extracts or fractions
prepared from Gardenia fruit, Sophora root, and Rosa fruit as the
active ingredients. The tyrosinase-inhibiting agents of this
invention may be used for improving the skin color and the like.
Id. at 1:6—12.
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FF12.Matsukawa teaches that in addition to the tyrosinase-inhibiting agents
the compositions can also contain “[wjhitening agents” that include
“oil-soluble Glycyrrhizae extract (Glycyrrhizae hydrophobic flavones,
glabridin, glabrene, licochalcone A) and the like.” Id. 3:11—18.
Matsukawa teaches that the compositions can also include ultraviolet
absorbing agents. See id. 3:19-23.
FF13. Matsukawa teaches:
Cosmetics containing whitening agents may be
manufactured in the form of emulsion, lotion, cream, jelly, and
pack type cosmetics by standard methods using general
components used in the manufacture of cosmetics, such as the oil
components, detergents, moisturizing agents, fragrances, water,
alcohol, thickening agents, colors, etc., and the tyrosinase-
inhibiting agent of this invention can be added at any appropriate
step in the manufacturing process.
Id. 3:51-59.
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As expressly
recognized in KSR, any art recognized need or problem can provide a reason
for combining claim elements. Id.
Analysis
The Examiner finds that the “claims do not specify any particular
damaging effects on skin resulting from UV radiation and all humans are
exposed to ultraviolet radiation or the sun.” Final Act. 13. “Holzle teaches
chronic exposure to UV radiation causes photodamage that includes
pigmented spots.” Final Act. 13; FF9. While, “Matsukawa teaches
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tyrosinase-inhibiting agents that can be used with various cosmetic
components (abstract) [including whitening agents] and for improving skin
color and the like.” Final Act. 13; FF10—FF13. Matsukawa identifies
whitening agents containing licochalcone A. FF12.
Appellants contend that “there is no motivation for one of ordinary
skill in the art wishing to take advantage of the teaching of KISHIDA for
treating excessive sebum secretion of skin to consult HOLZLE and
MATSUKAWA for further guidance, and neither has the Examiner provided
any persuasive explanation in this regard.” Appeal Br. 30.
As an initial matter, we do not find Appellants’ arguments persuasive
because the arguments attack Kishida, Holzle, and Matsukawa individually
(see, e.g., App. Br. 29-31), where the rejection is based on their
combination, and are, therefore, improper. In re Keller, 642 F.2d 413, 426
(CCPA 1981).
Matsukawa suggests the use of licochalcone A as a suitable whitening
agent. FF12. Specifically, suggesting that that licochalcone A has a
whitening effect and can be incorporated into a cosmetic preparation, such
as a lotion, emulsion, cream, etc. that are used for the purpose of improving
skin color. FF12 and FF13. Matsukawa also suggest including ultraviolet
absorbing agents into the formulation. FF12. Kishida teaches compositions
containing licochalcone A for use in controlling sebum secretions and that
licochalcone A be formulated to be applied to the skin. See FF1—FF4.
Kishida’s formulations can additionally include whitening agents as well as
ultraviolet absorbing agents. FF2. Here, both Kishida and Matsukawa are
concerned with the production of lotions or creams for application to the
skin. FF1—FF4 and FF10—FF13. One of ordinary skill in the art would have
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found it reasonable to consult Rashida’s formulations that contain
licochalcone A, for the purpose of establishing reasonable concentrations
that can be applied to the skin as suggested in Matsukawa.
Matsukawa explains that tyrosinase converts tyrosine to melanin.
Matsukawa does not teach that UV radiation results in the production of
melanin resulting skin blemishes and spots. FF10. Matsukawa teaches,
however, the combination of tyrosinase inhibiter including formulation
containing whitening agents and UV absorbing agents can be used to
improve skin color. FF11—FF13. Holzle teaches that “[cjhronic exposure to
ultraviolet (UV) radiation causes skin changes, known as photodamage” that
results in “pigmented lesions known as ‘age spots.’” FF9. We agree with
the Examiner’s conclusion that based on the combination of references it
would have been obvious to apply a composition containing tyrosinase
inhibiter, whitening agents, and UV absorbing agents to the skin for the
purpose of improving skin damage such as hyperpigmentation (FF8)
recognized to be caused by UV radiation (FF9).
Accordingly, we affirm the obviousness rejection of claim 63.
Appellants do not separately argue dependent claim 64, therefore, this claim
falls with claim 63. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 45—48, 51, 52, and 54—64 under 35
U.S.C. § 102(b) by Kishida.
We affirm the rejection of claims 45—52 and 54—64 under 35 U.S.C.
§ 103(a) over Kishida.
We affirm the rejection of claims 45—64 under 35 U.S.C. § 103(a)
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over Kishida and Gers-Barlag.
We affirm the rejection of claims 63 and 64 under 35 U.S.C. § 103(a)
as unpatentable over Kishida, Holzle, and Matsukawa.
Because Appellants do not to present the nonstatutory obviousness-
type double patenting rejections for review, we summarily affirm these
rejection for the reason set out by the Examiner. See Appeal Br. 31; see
Final Act. 16—35.
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
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