Ex Parte Blatt et alDownload PDFPatent Trial and Appeal BoardMar 14, 201710571530 (P.T.A.B. Mar. 14, 2017) Copy Citation 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. Appeal 2015-005363 Application 10/571,530 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”). 2 Appeal 2015-005363 Application 10/571,530 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. 3 Appeal 2015-005363 Application 10/571,530 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. 4 Appeal 2015-005363 Application 10/571,530 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; 5 Appeal 2015-005363 Application 10/571,530 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). 6 Appeal 2015-005363 Application 10/571,530 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 7 Appeal 2015-005363 Application 10/571,530 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: 8 Appeal 2015-005363 Application 10/571,530 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 9 Appeal 2015-005363 Application 10/571,530 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 10 Appeal 2015-005363 Application 10/571,530 “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 11 Appeal 2015-005363 Application 10/571,530 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 12 Appeal 2015-005363 Application 10/571,530 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 13 Appeal 2015-005363 Application 10/571,530 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 14 Appeal 2015-005363 Application 10/571,530 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. 15 Appeal 2015-005363 Application 10/571,530 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 16 Appeal 2015-005363 Application 10/571,530 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). 17 Appeal 2015-005363 Application 10/571,530 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. 18 Appeal 2015-005363 Application 10/571,530 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 19 Appeal 2015-005363 Application 10/571,530 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 20 Appeal 2015-005363 Application 10/571,530 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) 21 Appeal 2015-005363 Application 10/571,530 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 22 Copy with citationCopy as parenthetical citation