Ex Parte Iino et alDownload PDFPatent Trials and Appeals BoardApr 22, 201913822762 - (D) (P.T.A.B. Apr. 22, 2019) Copy Citation 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). 2 Appeal 2018-006306 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). 3 Appeal 2018-006306 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). 4 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 5 Appeal 2018-006306 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," 6 Appeal 2018-006306 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. 7 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 8 Copy with citationCopy as parenthetical citation