Ex Parte Gibbons et al

Patent Trial and Appeal BoardMay 13, 2014

11726041 (P.T.A.B. May. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CLYDE GIBBONS, ANDREW DAVID WATSON, and SIAN MORRIS __________ Appeal 2012-003575 Application 11/726,041 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a topical cosmetic composition. The Examiner rejected the claims on the grounds of obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as The Proctor & Gamble Company. (See App. Br. 1.) Appeal 2012-003575 Application 11/726,041 2 STATEMENT OF THE CASE Background “The present invention relates to cosmetic compositions comprising a hydrophilic extract of Seabuckthorn, especially Seabuckthorn berries in combination with one or more hydrophilic vitamins. Seabuckthorn is a shrub having the latin name ‘Hippophae Rhamnoides’, which is native to Eurasia.” (Spec. 1:6-9.) The Claims Claims 1-9, 11-13, 19, 21-26, and 31 are on appeal. Independent claim 1 is illustrative and reads as follows: 1. A topical cosmetic composition comprising a hydrophilic extract of Seabuckthorn and a hydrophilic vitamin component, wherein said topical cosmetic composition comprises by weight more hydrophilic vitamin component than hydrophilic extract of Seabuckthorn. The Issues The only rejection identified by Appellants to be reviewed on Appeal is the following: Claims 1-9, 11-13, 19, 21-26, and 31 are rejected as unpatentable over LaClau2 as evidenced by Baker,3 in view of Gupta.4,5 2 LaClau et al., FR 2840809 A1, machine translation from Espacenet provided, published December 19, 2003. As set forth in MPEP § 1207.02, an Examiner may rely upon a machine translation of a foreign language document in support of a rejection. Appellants have not challenged the accuracy of any relevant portions of the machine translation of the LaClau reference. Appeal 2012-003575 Application 11/726,041 3 Appellants have not made separate arguments for any of the rejected claims (App. Br. 3-5). Accordingly, we choose independent claim 1 to be representative, and the other claims on appeal will stand or fall together with this representative claim. 37 C.F.R. § 41.37(c)(1)(vii) (2011). FINDINGS OF FACT FF1. LaClau discloses the “[u]se of a hydrophilic fraction of sea-buckthorn fruit for preparing a cosmetic, dermatological or pharmaceutical composition for treatment of the dermis” (LaClau, title). FF2. LaClau discloses that the prior art already knows many properties of the different fractions of seabuckthorn fruit (Hippophaë Rhamnoides), and cites to a study showing the photoprotective and anti-inflammatory properties of seabuckthorn seed oil and to another study showing the bacteriostatic and healing properties of seabuckthorn in a topical application (LaClau, machine translation at page 1 of 5). FF3. LaClau provides an example of an anti-wrinkle cream composition that contains 0.010% of seabuckthorn extract and 3 Baker, Hippophaë rhamnoides: an NFT valued for centuries, NFT Highlights 1-3 (1993), http://www.winrock.org/fnrm/factnet/factpub/FACTSH/hippo.htm. 4 Gupta, US 2004/0081672 A1, published Apr. 29, 2004. 5 Although Appellants’ Brief identifies the rejected claims as “1-9, 22-23, 29, 21-26, and 31” (App. Br. 3 (emphasis added)), we understand this to be a typographical error since the Examiner only rejected claims 1-9, 11-13, 19, 21-26, and 31 based on this combination of prior art (Ans. 5). Appeal 2012-003575 Application 11/726,041 4 0.5% of seabuckthorn juice (LaClau, Example 1, machine translation at page 3 of 5).6 FF4. Baker evidences that “[s]ea buckthorn [sic] fruit is rich in vitamins C, E, K, B1, B2, as well as niacinamide” (Baker, page 2, subheading “Food”). FF5. Gupta discloses the application of niacinamide “for the synergistic treatment or prevention of topical disorders of skin such as acne, rosacea, skin wrinkles, age-spots, canker sores, striae distensae (stretch marks), pimples, and skin redness” (Gupta, abstract). FF6. Gupta discloses that “[t]he amount of skin beneficial niacinamide . . . in the formulation is from about 0.1% to about 50% by weight, preferably from 5% to 20% by weight, most preferably from 1% to 10% by weight” (Gupta, ¶ 38). FF7. Appellants’ Specification identifies niacinamide as a preferred hydrophilic vitamin (Spec. 4:24-25). PRINCIPLES OF LAW An applicant may rebut a prima facie case of obviousness by providing a “showing of facts supporting the opposite conclusion.” Such a showing dissipates the prima facie holding and requires the examiner to “consider all of the evidence anew.” In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citations omitted). “One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected 6 The machine translation of LaClau refers to “argousier,” which is the French word for seabuckthorn (Ans. 5). Appeal 2012-003575 Application 11/726,041 5 results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that person of ordinary skill in the relevant art would have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The unexpected results must be “different in kind and not merely in degree from the results of the prior art.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). “Moreover, the applicant’s showing of unexpected results must be commensurate in scope with the claimed range.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). ANALYSIS LaClau discloses an anti-wrinkle cream composition that includes 0.010% of seabuckthorn extract and 0.5% of seabuckthorn juice (FF1-3). Gupta discloses compositions for skin treatment that includes anywhere from 0.1% to 50% by weight of skin beneficial niacinamide, which is a hydrophilic vitamin (FF5-7). Seabuckthorn fruit is known to be inherently rich in niacinamide and other vitamins (FF4). Because LaClau and Gupta are both directed to compositions useful for the same purpose (i.e., topical skin creams), the references establish a prima facie case of obviousness to combine the active ingredients disclosed therein in their respective amounts to arrive at the claimed topical cosmetic composition comprising by weight more hydrophilic vitamin component than hydrophilic extract of Seabuckthorn. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious to combine two compositions each of which is taught by Appeal 2012-003575 Application 11/726,041 6 the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”). As noted by the Examiner, “[t]here would be a reasonable expectation of success since both the composition of LaClau and the niacinamide of Gupta are being taught as being useful for anti-wrinkle compositions, wherein the composition of LaClau already has trace amounts of niacinamide in the seabuckthorn juice” (Ans. 6). We have considered Appellants’ arguments and the evidence submitted in rebuttal, but do not find them sufficient to overcome the prima facie showing of obviousness. Appellants initially argue that a prima face case has not been established because the Examiner’s “reliance on seabuckthorn seed oil is irrelevant to the claim limitation of ‘a hydrophilic extract of Seabuckthorn’” (App. Br. 4). We do not find merit in this argument given LaClau’s explicit disclosure of a “hydrophilic fraction” of seabuckthorn fruit (FF1). Appellants further rely upon a declaration submitted by one of the inventors, Andrew Watson, to argue that the presumption of obviousness has been overcome by a showing of unexpected results. Mr. Watson’s declaration examined the synergistic effects of seabuckthorn with four hydrophilic vitamins: niacinamide, Stay C 50 (a stabilized vitamin C preparation of sodium ascorbyl phosphate, panthenol, and retinyl acetate (Vitamin A acetate) (Watson Decl.7 ¶ 3). The declaration describes two different tests that Appellants assert show unexpected results from the combination of a hydrophilic extract of seabuckthorn and a hydrophilic 7 Declaration of Andrew D. Watson, submitted July 23, 2010. Appeal 2012-003575 Application 11/726,041 7 vitamin when compared to the predicted additive effect (App. Br. 4-5; Watson Decl. ¶¶ 4-5). In the first test, hyaluronic acid (“HA”), a glycosaminoglycan correlated with skin hydration, was measured in a human skin equivalent culture treated with the (i) vehicle with and without seabuckthorn, (ii) Stay C + vehicle with and without seabuckthorn, and (iii) panthenol + vehicle with and without seabuckthorn. The following results were reported: (Watson Decl. ¶ 4). Mr. Watson asserts that “[t]he measured HA production percentage of Seabuckthorn and Stay C is 332.1%, which may be compared to the predicted additive effect of 227.2%,” and “[l]ikewise, the measured HA production percentage of Seabuckthorn and panthenol is 397.1%, which may be compared to the predicted additive effect of 321.3%” (Id.). In the second test, procollagen I C-peptide (“PC1”), which indicates new collagen synthesis, was measured in a culture treated with the (i) vehicle with and without seabuckthorn, (ii) niacinamide + vehicle with and without seabuckthorn, and (iii) retinyl acetate + vehicle with and without seabuckthorn. The following results were reported: Appeal 2012-003575 Application 11/726,041 8 (Watson Decl. ¶ 5). Mr. Watson asserts that “[t]he measured PC1 percentage of Seabuckthorn and niacinamide is 386.4%, which may be compared to the predicted additive effect of 162.6%,” and “[l]ikewise, the measured PC1 percentage effect of Seabuckthorn and retinyl acetate is 484.2%,which may be compared to the predicted additive effect of 313.2%” (id.). From the foregoing results, Mr. Watson concludes that a topical composition comprising a combination of a hydrophilic extract of seabuckthorn and a hydrophilic vitamin yields an unexpected improvement in the effects associated with hyaluronic acid and procollagen I C-peptide (Watson Decl. ¶ 6). We cannot draw the same conclusion given the relatively small difference between the reported results for the combination and the predicted additive effect. Indeed, when the reported standard deviations are taken into account, there does not appear to be any statistically significant difference between the measured effect and predicted additive effect in the hyularonic acid test. Accordingly, this does not show unexpected results. See, e.g., In re Susi, 440 F.2d 442, 446 (CCPA 1971) (“to overcome a finding of prima facie obviousness by establishing that the Appeal 2012-003575 Application 11/726,041 9 claimed compositions are superior to what one of ordinary skill in the art would expect, it was up to appellant to bring forward reasonable evidence”). For the procollagen I C-peptide test results, there does appear to be some difference between the combined effect and the predicted additive effect based on the standard deviations that are reported. However, even assuming an unexpected difference for the tested vitamins (more so for retinyl acetate than niacinamide), Appellants have not established unexpected results that are commensurate in scope with the claimed invention. Representative claim 1 is broadly directed to the combination of hydrophilic seabuckthorn with any hydrophilic vitamin. Other than a conclusory statement in Mr. Watson’s declaration that “[i]t is [his] professional opinion that a sufficient number of species at relevant concentrations have been studied to evidence the trend for hydrophilic vitamins” (Watson Decl. ¶ 6), Appellants have presented no evidence or explanation as to why the results of his studies can be extrapolated to all hydrophilic vitamins. Although Appellants are not “required to test every embodiment within the scope of [their] claims,” they must “demonstrate[] that an embodiment has an unexpected result and provide[] an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner.” In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). They have failed to do so here. Because there are significant differences in the results for even the limited vitamins reported in Mr. Watson’s declaration, we cannot draw an inference of unexpected results for all combinations of hydrophilic vitamins with hydrophilic seabuckthorn. See In re Grasselli, 713 F.2d 731, 743 (Fed. Appeal 2012-003575 Application 11/726,041 10 Cir. 1983) (concluding that unexpected results “limited to sodium only” were not commensurate in scope with claims to a catalyst having “‘an alkali metal’”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (affirming the obviousness of a genus containing “several hundred compounds,” where unexpected results were proved for “only one” such compound). Accordingly, we find that Appellants have not rebutted the prima facie case of obviousness. SUMMARY We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as being rendered obvious by LaClau in view of Gupta. Claims 2-9, 11-13, 19, 21- 26, and 31 fall with claim 1. 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 cdc