Ex Parte Mahmood

Patent Trial and Appeal BoardApr 4, 2016

12971368 (P.T.A.B. Apr. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/971,368 12/17/2010 27777 7590 04/06/2016 BERNARD F PLANTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Khalid Mahmood 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. JC05014USNP 7799 EXAMINER EBRAHIM, NABILA G ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 04/06/2016 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KHALID MAHMOOD Appeal2014-000472 Application 12/971,3 68 1 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) involving claims directed to compositions comprising a non-polar Lilium martagon extract. The Examiner rejects claims 1, 3-5, 10-17, and 19-23 under 35 U.S.C. Â§ 103(a) and under the judicially created doctrine of obviousness type double patenting. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse the rejection underÂ§ 103(a), but affirm the double patenting rejection. 1 According to Appellant, the real party in interest is Johnson & Johnson Consumer Companies, Inc. Br. at 3. Appeal2014-000472 Application 12/971,3 68 STATEMENT OF THE CASE Claims 1, 3-5, 10-17, and 19-23 of U.S. Patent Application No. 12/971,3 68 2 are on appeal. 3 These claims can be found in the Claims Appendix of the Appeal Brief. Independent claim 1 reads as follows: 1. A composition comprising an extract comprising a nonpolar Lilium martagon flower extract, a non-polar Lilium martagon bulb extract, or a combination or two or more thereof, a carrier, and a material selected from the group consisting of surfactants, chelating agents, emollients, humectants, conditioners, preservatives, opacifiers, fragrances, and combinations of two or more thereof. App. Br. 20, Claims Appendix (line breaks added). Independent claim 16 reads as follows: 1 t: A " " " " i u. ri. compos1t10n compnsmg an extract selected from the group cons1stmg of non-polar Lilium martagon flower extracts, non-polar Lilium martagon bulb extracts, and combinations or [sic] two or more thereof, and an additional skin lightening active agent. Id. at 21 (line breaks added). 2 All references herein to the "Specification" or "Spec." are to the published version of the appealed application (Pub. No. 2012/0156267 Al, published June 21, 2012). 3 Claims 1-23 were finally rejected. Final Action 1 (entered Oct. 29, 2012). Claims 2, 6-9, and 18 were subsequently cancelled by Appellants. App. Br. 5. 2 Appeal2014-000472 Application 12/971,3 68 The above-reproduced independent claims are directed to an extract from the plant Lilium martagon, which is a species of lily that grows across Northern Asia and Europe. Spec. i-f 3. The Specification describes extracting from the various parts of this plant, e.g., the flower, stem, leaves, and/or bulb, using a non-polar solvent, a polar solvent, or a non-polar solvent with a polar modifier. Spec. i-fi-115-16. The Specification describes non-polar extracts of Lilium martagon as being prepared using non-polar solvents, e.g., chloroform or hexane. See, e.g., Spec. i-fi-116-29. The Specification describes polar extracts of Lilium martagon as being prepared using polar solvents, e.g., water or methanol. Id. The Specification does not indicate what type of extract (non-polar or polar) results from using a non-polar solvent with a polar modifier. Id. The Specification describes Lilium martagon extracts as useful for cosmetic purposes, specifically skin lightening. See Spec. i-fi-15-8, 65-95. The Specification describes that the extracts can be used with "[a ]ny suitable carrier," such as cosmetically-acceptable carriers for use in contact with the body and skin. Spec. i-f 41. For such purposes, the Specification describes various means by which the extracts can be packaged for application to the skin, including various carriers such as lotions, creams, gels, sticks, wipes, patches, etc. See Spec. i-fi-141-72. The Specification also describes that the extracts can be combined with an additional (or more than one) skin lightening active agent. Spec. i-f 52. The Specification also describes that the extracts can be combined with "[a] variety of other materials," such as, "for example, chelating agents, humectants, opacifiers, conditioners, preservatives, fragrances and ... surfactants." Spec. i-f 61. 3 Appeal2014-000472 Application 12/971,3 68 The following grounds of rejection are on appeal: A. Claims 1, 3-5, 10-13, 16, 17, 19, and 23 under 35 U.S.C. Â§ 103(a) as being unpatentable over Satou4, Eisenreichova5, Tetsuro 6, and Kubo 7 (Final Action 2-5); and B. Claims 1, 3-5, 10-13, 16, 17, 19, and23 under the judicially created doctrine of obviousness type double patenting over claims 1-22 of application number 12/971,5188 in view of Oddos9 (Final Action 5). FINDINGS OF FACT FF 1. The terms "polar" and/or "non-polar" (or "nonpolar"), relating to extracts or solvents, are not expressly defined in the Specification. FF2. Polar extracts, as disclosed in the Specification, are obtained using polar solvents. See, e.g., Spec. i-fi-f 18. 4 Satou et al., A Pyrroline Glucoside Ester and Steroidal Saponins from Lilum Martagon, 41PHYTOCHEMISTRY1225-230 (1996) (hereinafter "Satou"). 5 Eisenreichova et al., The Study of Constituents of Lilium Candidum L., 51 ACTA Facultatis Pharmaceuticae Universitatis Comenianae 27-37 (Tomus LI, Department of Pharmacognosy and Botany, Faculty of Pharmacy, Comenius University, Bratislava)(2004) (hereinafter "Eisenreichova"). 6 Kawabata et al., Anti-Inflammatory and Anti-Melanogenic Steroidal Saponnin Glycosides from F enugreek (Trigonella foenum-graecum L.) Seeds, 77 PLANT A MED. 705-710 (Oct. 26, 2010) (hereinafter "Tetsuro"). 7 U.S. Patent Application Pub. No. US 2011/0059145 Al (published Mar. 10, 2011) (hereinafter "Kubo"). 8 U.S. Patent Application Ser. No. 12/971,518 issued as U.S. Patent 8,293,293 B2 on Oct. 23, 2012 (hereinafter Mahmood '293). 9 U.S. Patent Application Pub. No. US 2012/0101156 Al (published Apr. 26, 2012) (hereinafter "Oddos"). 4 Appeal2014-000472 Application 12/971,3 68 FF3. Non-polar (or nonpolar) extracts, as disclosed in the Specification, are obtained using non-polar extracts. See, e.g., Id. at i-f 17. FF4. Water and methanol are described in the Specification to be polar solvents. Id. at i-f 16. FF5. Chloroform, C 1---C8 alkanes, and hexane are described in the Specification to be non-polar solvents. Id. at i-f 17. FF6. Satou does not disclose or suggest a non-polar extract, but discloses using methanol (hot MeOH) solvent to obtain an extract from L. martagon. See Satou 1225, 1227, 1229--30. FF7. Satou discloses a processes using only methanol as an extracting solvent, which may also use chloroform in subsequent purifying steps. See Satou 1229 (CHCh-MeOH used in a silica gel column to purify extracts extracted with hot MeOH). FF8. Appellants have provided evidence that steroidal saponins are polar. See Br. 12 (citing Sahu10 and Dinan11). 12 The Examiner does not dispute that steroidal saponins are polar. Ans. 5---6. lO Sahu et al., Steroidal Saponins, 89 INDIAN INST. OF CHEM. BIO. 45-127, 46 (2008) ("Steroidal saponins are usually highly polar compounds" .... ). 11 Dinan et al., Chromatograhic Procedures for the Isolation of Plant Steroids, 935 J. CHROMATOGRAPHY 105-123, 108 (2001) (identifying steroidal saponins (SS) as "[p ]olar to very polar"). 12 Sahu and Dinan are not expressly identified in the Evidence Appendix of the Appeal Brief, but are cited at page 12 thereof. Br. 12, 23. 5 Appeal2014-000472 Application 12/971,3 68 DISCUSSION A. The rejection of claims 1, 3-5, 10-13, 16, 17, 19, and23 under 35 U.S.C. Â§ 103(a) as being unpatentable over, Satou, Eisenreichova, Tetsuro, and Kubo All claims depend from one of independent claims 1 and 16 and the rejection of all claims underÂ§ 103(a) relies on the disclosure of the Satou reference and, so, we address all claims together. The question presented is whether a combination of Satou, Eisenreichova, Tetsuro, and Kubo disclosed or rendered obvious a non-polar Lilium martagon extract (from its flower and/or bulb) as recited by independent claims 1 and 16? The answer 1s: no. Of these four combined references the Examiner determined that Satou disclosed "a nonpolar Lilium martagon flower extract" and/or "a non- polar Lilium martagon bulb extract," as recited by independent claim 1 and substantially identically by independent claim 16 (see above). Final Action 2-3; Ans. 3---6. While the claims are open-ended by their using the transitional term "comprising," they require one of the above-identified non- polar extracts. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) ("comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added). Therefore, if Satou did not disclose this subject matter or render it obvious (no other reference is indicated as doing so), the rejection must fall. Satou does not disclose or suggest a non-polar extract. Satou discloses using methanol (hot MeOH) solvent to obtain an extract from L. martagon. See Satou 1225, 1227, 1229-30. Satou discloses that the extracts obtained by this method included a new phenylpropanoid ester of a pyrroline 6 Appeal2014-000472 Application 12/971,3 68 derivative and two new steroidal saponins. Id. 1225. The Examiner focuses on the resultant steroidal saponins in rejecting the claims (Final Action 2-3). See Br. 12 (citing Sahu and Dinan), Ans. 5---6 (acknowledging Sahu and Dinan, but not disputing that steroidal saponins are polar). Moreover, the Examiner does not establish that any non-polar extracts are obtained by the process of Satou (or any other cited reference) or that Satou suggests using a non-polar solvent for extraction. The Examiner, in agreement with the Specification (i-fi-f 16-29), points to the fact that Satou discloses the use of chloroform, a non-polar solvent, in its process of obtaining Lilium martagon extracts to determine that Satou's extracts satisfy the claim terms as being non-polar. Ans. 3; Final Action 2. However, as explained by Appellant and disclosed in the reference, Satou's processes use only methanol as an extracting solvent and may use chloroform in subsequent purifying steps. See Br. 11-12; see also, e.g., Satou 1229 (CHCh-MeOH used in a silica gel column to purify extracts extracted with hot MeOH). But, by this chloroform-including step in the Satou process, the polar extract has already been obtained using only the polar methanol solvent. Br. 11. We find Appellant's arguments persuasive. Because Satou fails to disclose or render obvious "a nonpolar Lilium martagon flower extract" and/or "a non-polar Lilium martagon bulb extract," and no other reference of the Examiner's combination is asserted to do so, the rejection of claims 1-23 under 35 U.S.C. Â§ 103(a) is reversed. 7 Appeal2014-000472 Application 12/971,3 68 B. The rejections of claims 1, 3-5, 10-13, 16, 17, 19, and 23 under the judicially created doctrine of obviousness type double patenting over claims 1-22 of Mahmood '293 in view of Oddos Appellant does not argue that the double patenting rejection is in error, but only that, if the referenced application issues into a patent prior to the allowance of the appealed application, which it has, that the Examiner contact Appellant's counsel so that the rejection can be addressed at that time. Br. 18. Because Appellant does not identify any substantive error in the rejection of claims 1, 3-5, 10-17, and 19-23 under the judicially created doctrine of obviousness type double patenting, the rejection is affirmed. SUMMARY The rejection of claims 1, 3-5, 10-17, and 19-23 under 35 U.S.C. Â§ 103(a) is reversed. The rejection of claims 1, 3-5, 10-17, and 19-23 under the judicially created doctrine of obviousness type double patenting is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8