Ex Parte Iino et al

Patent Trials and Appeals Board

Apr 22, 2019

13822762 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/822,762 03/13/2013 Masato Iino
22428 7590 04/24/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
053466-0547 4907
EXAMINER
CLARK, AMYL YNN
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASATO IINO,
NOBUHIKO OCHIAI, and MAKOTO TSUNENAGA
Appeal 2018-006306
Application 13/822, 7 62 1
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS,
JOHN E. SCHNEIDER, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 9 and 12 (Final
Act. 2 l; see also Br. 4-5). Examiner entered a rejection under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Shiseido Company, Ltd." as the real party in interest
(Appellants' Appeal Brief (Br.) 2).
2 Examiner's April 27, 2017 Final Office Action.
Appeal 2018-006306
Application 13/822,762
STATEMENT OF THE CASE
Appellants' disclosure "relates to an inhibitor for hyaluronidase which
has a good hyaluronidase inhibitory activity" (Spec. ,-J 1 ). Claim 9 is
representative and reproduced below:
9. A method for alleviating or preventing one or more
skin problems selected from a group consisting of skin aging,
wrinkled skin, rough skin, dry-and-rough skin, acne and atopic
dermatitis in a subject who is suffering from reduction in
hyaluronic acid, comprising administering a composition
comprising between 0.0001 and 0.1 w/w% crude rosemary
extract and between 0.000001 and 0.01 w/w% retinal acetate to
the subject,
wherein the rosemary extract is extracted from whole
plant or leaves of rosemary with 1,3-butylene-glycol aqueous
solution.
(Br. 10.)
Grounds of rejection before this Panel for review:
Claims 9 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wilmott3 and Tanaka. 4
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
3 Wilmott et al., US 4,826,828, issued May 2, 1989.
4 Tanaka, JP 2003002819 A, published January 8, 2003, as translated at
"https://www4.j-platpat.inpit.go.jp/cgi-bin/tran _web_ cgi _ effe?u-
http://www4.j-platpat.inpit...," (last accessed Sept. 19, 2016).
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Application 13/822,762
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Ans. 3-4) and provide the following for emphasis.
FF 1. Tanaka discloses that "[ u ]ltraviolet rays participate in aging of the
skin deeply, and it is though that it is the cause of a silverfish wrinkle,"
wherein "injury by the active oxygen etc. which arise by ultraviolet rays is
received, production of collagen or hyaluronic acid is inhibited, and the
fibroblast of the skin causes a wrinkle" (Tanaka ,-J 2 (emphasis added)).
FF 2. Appellants disclose that
the amount of hyaluronic acid is decreased with increasing age,
thereby skin aging, such as a finely wrinkled skin or dry and
rough skin is thought to appear. Therefore, many cosmetics
comprising hyaluronic acid are provided as an aged skin
improving agent. However, such previous cosmetics cannot
improve the aged skin fundamentally, but merely exert a
moisture retention effect on the skin surface .... Hyaluronidase
is an enzyme which can degrade hyaluronic acid as speculated
from its name, and is distributed widely in the living body and
also present in the skin.
(Spec. ,-J 3.)
FF 3. Wilmott "relates to stable compositions containing retinol which
upon topical application to the skin cause wrinkle effacement and other
beneficial effects. It also relates to use of such compositions in combination
with or including moisturizers" (Wilmott 1: 15-19; see Ans. 3 and 5).
FF 4. Wilmott discloses compositions "topically applied to the skin [in]
concentration which result in application of 0.005 to 1.0 weight percent
retinol, preferably 0.01 to 0.50 weight percent" (Wilmott 3:47-50; see id. at
4: 10-40 ( exemplifying a composition comprising 0.09977 weight percent
Retinol Acetate); Ans. 3 and 5).
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Application 13/822,762
FF 5. Wilmott discloses the application of its retinol composition to "areas
where fine lines, wrinkles, dry or inelastic skin or large pores are observed"
(Wilmott 3:50-52).
FF 6. Wilmott discloses that "a moisturizer is [optimally] applied with or
after application of the retinol composition to enhance the tactile comfort
associated with application of the compositions and to enhance the wrinkle
effacement and other benefits achieved by the compositions," wherein
"[p ]referred moisturizing ingredients suitable for use [in Wilmott' s]
preferred compositions ... [include] hyaluronic acid sodium salt" (Wilmott
3:52-55, 3:66-4:2).
FF 7. Wilmott discloses that its preferred retinol compositions may be
formulated with a moisturizer at a concentration of "up to 35% by weight of
the final formulation" (Wilmott 3: 61-65).
FF 8. Examiner finds that Willmott does not disclose a composition
comprising rosemary extract (Ans. 3).
FF 9. Tanaka discloses "a composition comprising rosemary extract for
treating wrinkles" (Ans. 3 (citing Tanaka Abstract, ,-J,-J 4-5, Table 1, and
Examples); see also Ans. 6).
FF 10. Tanaka's "rosemary extract can be obtained by extraction with
butylene glycol and water" (Ans. 3 ( citing Tanaka ,-J 25); see also Ans. 6).
FF 11. Tanaka discloses "that the [rosemary] extract can be used in the
amount of 0.00001 to 20% by weight" (Ans. 3 ( citing Tanaka ,-J 29); see also
Ans. 6).
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Appeal 2018-006306
Application 13/822,762
ANALYSIS
Based on the combination of Wilmott and Tanaka, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to combine Willmott's retinal acetate composition
with Tanaka's aqueous butylene glycol extracted rosemary because, at the
time of Appellants' claimed invention, "it was known that retinol acetate and
rosemary extract were ... useful ingredients that could be applied topically
and could be used for treating wrinkles as clearly taught by" Willmott and
Tanaka (Ans. 3; see also id. at 4 ("Based on the disclosure by these
references that retinol acetate and rosemary extract are effective ingredients
for treating wrinkles, the artisan would have been motivated to combine the
claimed ingredients into a single composition")). In this regard, Examiner
finds that, at the time of Appellants' claimed invention, it was "well known
that it is prima facie obvious to combine two or more ingredients each of
which is taught by the prior art to be useful for the same purpose in order to
form a third composition which is useful for the same purpose," wherein
"[t]he idea for combining them flows logically from their having been used
individually in the prior art" (Ans. 3-4 ( citing In re Kerkhoven, 626 F .2d
846, 850 (CCPA 1980)); see also Ans. 4 ("No patentable invention resides
in combining old ingredients of known properties where the results obtained
thereby are no more than the additive effect of the ingredients"). We find no
error in Examiner's prima facie case of obviousness.
"Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put into
the last opening in a jig-saw puzzle. It is not invention." Sinclair & Carroll
Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945). Therefore, we are not
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Application 13/822,762
persuaded by Appellants' contention that "the Office Action fails to provide
a motivation for an ordinary skilled artisan to select rosemary extract from
the at least 24 different substances or plant extracts (including rosemary)
taught to reduce 8-0HdG function in Tanaka" (Br. 6). See also Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[D]isclos[ ure of] a multitude of effective combinations does not render any
particular formulation less obvious").
"[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness."
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004). Therefore, we are not persuaded by Appellants' contention that "the
Office Action fails to provide any motivation for selecting rosemary extract
in the amount claimed, pointing out only that Tanaka teaches one to use it in
an incredibly broad range of 0.00001 to 20% by weight," which Appellants'
claimed range falls within (Br. 6). Cf Iron Grip Barbell Co., 392 F.3d at
1322.
Overlapping ranges support a prima facie case of obviousness. See In
re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Therefore, we are also not
persuaded by Appellants' contention that because "Tanaka expressly states
in paragraph 29 that its preferred range of 0.01 to 10%, which [overlaps
Appellants' claimed range] ... combining Tanaka and following its
preferred teaching would most likely lead to a composition that is not within
the scope of' Appellants' claimed invention (Br. 6 (emphasis omitted)). Cf
In re Geisler, 116 F.3d at 1468.
Tanaka discloses that "[ u ]ltraviolet rays participate in aging of the
skin deeply, and it is though that it is the cause of a silverfish wrinkle,"
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Application 13/822,762
wherein "injury by the active oxygen etc. which arise by ultraviolet rays is
received, production of collagen or hyaluronic acid is inhibited, and the
fibroblast of the skin causes a wrinkle" (FF 1 ). Therefore, we are not
persuaded by Appellants' contention that "[t]he Office Action ... does not
teach administering ... a composition to 'a subject who is suffering from
reduction in hyaluronic acid"' or that "even if ... [Wilmott and Tanaka] are
combined for the asserted reason, there still would not be any suggestion to
administer the composition to the particular subjects of the claimed methods
who are 'suffering from reduction in hyaluronic acid"' (Br. 6; see also id. at
7 ("at no point does Wilmott discuss any relationship between retinol acetate
and hyaluronidase activity, nor has the Office pointed to any evidence of
such a relationship"); cf FF 2).
Appellants contend that "the amounts [ of the compositions'
ingredients] recited in the claims on [ A Jppeal are keyed to the unexpected
result shown in [Appellants'] Fig. l" (Br. 8; see generally id. at 7-8). As
Examiner explains, however, Appellants' Figure 1 relates to compositions
comprising: (a) 0.000165% rosemary extract, (b) 0.0000516% retinol
acetate, or (c) a combination of0.000165% rosemary extract and
0.0000516% retinol acetate (Ans. 6). Thus, as Examiner explains,
Appellants' assertion of unexpected results is not commensurate in scope
with Appellants' claimed invention (id.). We agree with Examiner.
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 9 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Wilmott and Tanaka is
affirmed. Claim 12 is not separately argued and falls with claim 9.
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Appeal 2018-006306
Application 13/822,762
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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