Ex Parte Goldstein et al

Patent Trial and Appeal BoardMar 14, 2017

13500423 (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. 13/500,423 06/25/2012 Danny Goldstein 57840 7587 67801 7590 03/16/2017 MARTIN D. MOYNIHAN d/b/a PRTSI, INC. P.O. BOX 16446 ARLINGTON, VA 22215 EXAMINER AKHOON, KAUSER M ART UNIT PAPER NUMBER 1642 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): usptomail@ipatent.co.il PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANNY GOLDSTEIN, TAL SADE, YURI YASMAN, OLGA PRIVALOVA, and LIOR BENALTABET Appeal 2016-003522 Application 13/500,4231 Technology Center 1600 Before FRANCISCO C. PRATS, TAWEN CHANG and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to stable microcapsules for topical application. The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We reverse. 1 According to Appellants, the real parties in interest is Targa Biotechnologies, Ltd. App. Br. 2. Appeal 2016-003522 Application 13/500, 423 STATEMENT OF THE CASE Claims 1—8, 23, 24, and 28 are on appeal. Claim 1, the only independent on appeal, is illustrative and reads as follows: 1. Stable microcapsules for topical application comprising 0.1-99% benzoyl peroxide and a non-porous shell of a wall-forming polymeric material selected from the group consisting of a polyacrylate, a polymethacrylate, a cellulose ether, a cellulose ester, and a combination thereof, wherein at least a part of said benzoyl peroxide is in a core of said microcapsules and wherein said microcapsules immediately release the core-encapsulated benzoyl peroxide following contact with the skin. App. Br. 13 (emphasis added). The claims stand rejected as follows: Claims 1—8, 23, 24, and 28 under 35 U.S.C. § 103(a) as unpatentable over the combination of Babtsov2 and Fredon3; and Claims 9—11 under 35 U.S.C. § 103(a) as unpatentable over the combination of Babtsov, Fredon, and Kvitnitsky.4 OBVIOUSNESS OVER THE COMBINATION OF BABTSOV AND FREDON The Examiner found that Babstov taught “stable microencapsulation of cosmetic ingredients, vitamins and pharmaceutical substances with a wall-forming material that is a polymer of polyacrylates such as polyacrylic acid[,] polymethacrylates such as poly(methylmethacrylate), poly(n- 2 Babstov et al., US Patent No. 6,932,984 Bl, issued Aug. 23, 2005 (“Babstov”). 3 Fredon et al., US Patent Publication No. 2009/0191245 Al, published July 30, 2009 (“Fredon”). 4 Kvitnitksy et al., WO 2007/023495 A2, published March 1, 2007 (“Kvitnitksy”). 2 Appeal 2016-003522 Application 13/500, 423 butylmethacrylate), Eudragit RSPO, cellulose ethers such as (Cl_4alkyl)cellulose, or cellulose esters such as cellulose acetate.” Ans. 4. While Babstov does not state that its microcapsule is non-porous, the Examiner found that Babstov’s shell was inherently nonporous because it includes the same components required by the claims. Id. at 4—5. The Examiner acknowledged that Babstov did not teach benzoyl peroxide as the active agent in its microencapsulation system, but found that this element was supplied by Fredon, which taught that “encapsulation of benzoyl peroxide (a cosmetic ingredient) in a polymeric system could increase cutaneous penetration.” Id. at 5. The Examiner concluded that it would have been obvious to “combine the teaching of Babtsov and Fredon because Babtsov teaches that microencapsulation of active agents (that decompose or oxidize) in his compositions is a suitable mean[s] for protecting them while retaining their biological efficacy.” Id. at 5. Appellants argue, inter alia, that the encapsulation systems taught by Fredon and Babtsov are significantly different. App. Br. 8—9. Fredon discloses “porous particles” that “‘ comprise pores open toward the outside ’ and consequently exhibit ‘controlled release of the active principled'’'’ Id. (internal citations to Fredon omitted). Babstov describes microcapsules that “rupture completely upon being rubbed on skin thereby releasing their contents.'” Id. at 9. Unlike Fredon’s capsules, which exhibit controlled release, Babstov’s capsules “release their contents immediately upon application on the skin.” Id. In view of these differences, Appellants argue: It would be apparent to one of ordinary skill in the art that microcapsules such as described by Babtsov which release their contents immediately upon application on the skin cannot exhibit the controlled gradual release which results in desirable effects according to Fredon. 3 Appeal 2016-003522 Application 13/500, 423 Fredon would therefore provide no motivation to use the microcapsules of Babtsov for incorporating benzoyl peroxide, in view of the significant structural and functional differences between the microcapsules of Babtsov and the porous particles described by Fredon. Reply Br. 7. We agree with Appellants that the Examiner has not shown that the cited references would have made obvious a non-porous microcapsule comprising benzoyl peroxide. Babtsov teaches that “vitamins such as A, C, E and F ... are very unstable in solution and sensitive to various factors, which result in their fast decomposition and losing their biological activity when unprotected.” Babtsov col. 3,11. 47—59. Babtsov further teaches “[encapsulating these vitamins is a suitable mean[s] for protecting them while retaining their biological efficacy.” Id. at col. 3,11. 63—65. The Examiner relies on this teaching as providing motivation to encapsulate Fredon’s benzoyl peroxide. Ans 5. The Examiner, however, does not identify, and we do not find, any teaching in Babtsov or Fredon that benzoyl peroxide was known to be unstable or prone to decomposition when unprotected. Accordingly, it is not clear why Babtsov’s teaching regarding encapsulation would have motivated the person of ordinary skill to encapsulate benzoyl peroxide. Moreover, Fredon teaches that the advantages of its benzoyl peroxide composition (increased cutaneous penetration and reduced irritation) are derived from the use of a porous encapsulation system. Fredon states: In point of fact, it is[] surprising[ that], by employing benzoyl peroxide in a form encapsulated in a polymeric system of porous particles, together with the naphthoic acid, compositions according to the invention are 4 Appeal 2016-003522 Application 13/500, 423 provided exhibiting the desired advantages when they are applied topically to the skin. . . . Thus, this invention features the use of a polymeric system of porous particles as an agent for increasing the cutaneous penetration of benzoyl peroxide and/or of at least one naphthoic acid compound, and/or for reducing the cutaneous irritation of the said benzoyl peroxide and/or of at least one naphthoic acid compound. Fredon ]f]f 28—30. The Examiner has not articulated sufficient reason why the person of ordinary skill would have had reason to forgo the advantages taught by Fredon of encapsulating benzoyl peroxide in a porous system in order to encapsulate benzoyl peroxide in Babtsov’s non-porous capsule. Accordingly, we reverse the Examiner’s decision to reject claims 1—8, 23, 24, and 28 under 35 U.S.C. § 103(a) as obvious over the combination of Babtsov and Fredon. OBVIOUSNESS OVER THE COMBINATION OF BABTSOV, FREDON AND KVITNITSKY The rejection of dependent claims 9—11 over the combination of Babtsov, Fredon and Kvitnitsky relies upon the underlying obviousness rejection over Babtsov and Fredon discussed above. Ans. 8. Having reversed the rejection over Babtsov and Fredon with respect to claim 1, we also necessarily reverse the further obviousness rejection over dependent claims 9—11. SUMMARY For the reasons set forth herein the Examiner's decision to reject claims 1—8, 9—11, 23, 24, and 28 is reversed. REVERSED 5