Ex Parte Gruber et al

Patent Trial and Appeal Board

Jan 10, 2018

14660043 (P.T.A.B. Jan. 10, 2018)

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.
14/660,043 03/17/2015 James V. GRUBER 2926646-009002 4484
84331 7590 01/12/2018
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite A100
McLean, VA 22102
EXAMINER
RONEY, CELESTE A
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
docketing @ mm w vlaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES V. GRUBER and PHILIP L. LUDWIG.1
Appeal 2017-004314
Application 14/660,043
Technology Center 1600
Before DONALD E. ADAMS. JOHN E. SCHNEIDER,
and RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims a method
for treating a skin condition which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Heme-containing molecules, such as hemoglobin act as pigments that
define skin tone and color. Spec. 13. When heme-containing molecules
break down, the resulting degradation products are also pigments which can
1 Appellants identify the Real Party in Lonza Walkersville, Inc. Appeal Br.
1.
Appeal 2017-004314
Application 14/660,043
effect skin color. Spec. 14. For example, dark circles around the eyes are
caused by an accumulation of heme degradation by-products. Id. 1 5. The
Specification describes a method and topical composition to accelerate the
degradation of bilirubin, a hemoglobin degradation by-product, in the skin.
Id. 111.
Claims 1—13 and 19-25 are on appeal. Claim 1 is the sole
independent claim and reads as follows:
1. A method for accelerating the degradation of bilirubin
accumulated in the skin of a human suffering from a skin
condition, comprising contacting the skin with a topical
composition comprising:
(a) an extract from a bilirubin-producing plant;
(b) a preservative; and
(c) a dermatologically-acceptable vehicle;
wherein (a) is present in an amount from about 0. 5% to
about 20%; (b) is present in an amount from about 0.001 % to
about 3.0%; and (c) is present in an amount from about 75% to
about 99.05%, to thereby alleviate the skin condition by said
contacting.
The claims stand rejected as follows:
Claims 1—5 and 8—13 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Hines2 in view of Behr.3
Claims 6—8 have been rejected under 35 U.S.C. § 103(a) as
unpaintable over Hines in view of Behr in further view of Pirone.4
2 Hines et al., US 2010/0247563 Al, published Sept. 30, 2010 (“Hines”).
3 Behr et al., US 2007/0122492 Al, published May 31, 2007 (“Behr”).
4 Pirone et al., The Animal Pigment Bilirubin Identified in Strelitzia reginae,
the Bird of Paradise Flower, 45 HortScience 1411 (2010)(“Pirone”).
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Application 14/660,043
Claim 19 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Hines in view of Behr in further view of Chen.5
Claim 20 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Hines in view of Behr in further view of Gilman.6
Claim 22 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Hines in view of Behr in further view of Elraz.7
DISCUSSION
Hines Combined With Behr
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 1—5 and 8—13
would have been obvious over Hines combined with Behr.
The Examiner finds that Hines discloses compositions for treating
skin conditions comprising a plant extract, a preservative, and an acceptable
carrier. Final Act. 2. The Examiner finds that while Hines does not disclose
the use of a Bilirubin-producing plant extract, Behr discloses a
dermatological preparation which includes a plant extract. Id. at 3. Among
the extracts which can be used in Behr are extracts from Strelitzia reginae.
Id. The Examiner finds that it would have been obvious to one of ordinary
skill in the art to use the extract of Strelitzia reginae disclosed in Behr in the
5 Chen, US 3,067,103, issued Dec. 4, 1962 (“Chen”).
6 Gilman et al., US 2012/0045405 Al, published Feb. 23, 2012 (“Gilman”).
7 Elraz, US 2011/0250227 Al, published Oct. 13, 2011 (“Elraz”).
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Application 14/660,043
composition of Hines since both are directed to the treatment or prevention
of dermatological conditions. Id.
Appellants contend that Hines does not disclose a bilirubin producing
plant extract. Appeal Br. 11. Appellants argue that Hines does not teach or
suggest the specific amounts of plant extract recited in the claims. Id.
Appellants also argue that Hines does not teach or suggest a method for
accelerating the degradation of bilirubin. Id.
With respect to Behr, Appellants argue that there is no teaching or
suggestion to select an extract of Strelitzia reginae out of the numerous plant
extracts recited in Behr as the extract to use in Hines. Appeal Br. 12; Reply
Br. 4. Appellants also argue that there is nothing in the references to teach
or suggest that the application of a bilirubin containing extract would
accelerate the degradation of bilirubin. Appeal Br. 13. Finally, Appellants
contend that they have presented evidence of unexpected results sufficient to
overcome the Examiner’s finding of obviousness. Id. at 13—17.
Principles of Law
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007).
“It is impermissible within the framework of section 103 to pick and
choose from any one reference only so much of it as will support a given
position, to the exclusion of other parts necessary to the full appreciation of
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Application 14/660,043
what such reference fairly suggests to one of ordinary skill in the art.” In re
Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (quoting In re Wesslau, 353
F.2d 238, 241, (CCPA 1965)).
Analysis
Upon considering the record on appeal and positions taken by the
Examiner and Appellants, we find that Appellants have the better position.
While Behr teaches the use of an extract of Strelitzia reginae in a
dermatological composition, the extract is one of hundreds of “potential
plants” that could be used in practice of the invention disclosed in Behr.
Behr 1197. The Examiner has not provided any reason why one skilled in
the art would select Strelitzia reginae from numerous other plants disclosed
in Behr to create the composition used in the claimed method.
The Examiner contends that the use of an extract of Strelitzia reginae
in the composition of Hines amounts to merely substituting one plant extract
for another. Ans. 12. The Examiner, however, has not shown why one
skilled in the art would select the specific extract of Strlfitzia reginae from
the hundreds listed in Behr to achieve the claimed invention. Instead, the
Examiner improperly chose one plant extract out of hundreds without regard
to the teachings of the references.
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 1—5 and 8—13 would have been
obvious over Hines combined with Behr.
The Remaining Rejections
Each of the remaining rejections rely on the combination of Hines
with Behr discussed above. The Examiner points to nothing in the
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additional references which would motivate one skilled in the art to select an
extract from Strelitzia reginae to use in the composition of Hines. See Ans.
19—24. For the reason stated above, we find that a preponderance of the
evidence does not support the Examiner’s conclusions of obvious for each of
the remaining rejections.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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