Ex Parte Msika

Patent Trial and Appeal Board

Dec 11, 2012

10808701 (P.T.A.B. Dec. 11, 2012)

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.
10/808,701 03/25/2004 Philippe Msika 065691-0355 6071
22428 7590 12/11/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
12/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PHILIPPE MSIKA
__________

Appeal 2011-000811
Application 10/808,701
Technology Center 1600
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of reducing skin stretchmarks. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
The Specification teaches that “[s]tretchmarks are visible marks on
the skin resulting from the skin being stretched due to a gain in weight or
mechanical stresses, which usually concern women, after puberty or a first
pregnancy” (Spec 1 ¶ 0003). “The present invention relates to a cosmetic
method for preventing and/or treating skin stretchmarks, and to the use of a
composition to prepare a dermatological medicinal product for preventing
and/or treating stretchmarks” (Spec. 1 ¶ 0002).
The Claims
Claims 1-24 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for reducing the formation of and/or treating skin
stretchmarks in a person, comprising
applying to at least one area of skin comprising one or more
stretchmarks a composition comprising, in a suitable vehicle, at least
one soya peptide.

The issues
A. The Examiner rejected claims 1-6, 8-10, 21, and 22 under 35 U.S.C. §
103(a) as obvious over Rapaport
1
and Frei
2
(Ans. 4-6).
B. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as obvious
over Rapaport, Frei, and Andary
3
(Ans. 6).

1
Rapaport et al., US 5,444,091, issued Aug. 22, 1995.
2
Frei et al., Activation of fibroblast metabolism in a dermal and
skin equivalent model: a screening test for activity of peptides, 20
INT. J. COSMETIC SCIENCE 159-173 (1998).
3
Andary et al., US 5,719,129, issued Feb. 17, 1998.
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C. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as obvious
over Rapaport, Frei, and Flick
4
(Ans. 6-7).
D. The Examiner rejected claims 12-17, 23, and 24 under 35 U.S.C. §
103(a) as obvious over Rapaport and Quelle
5
(Ans. 7-8).
E. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as obvious
over Rapaport, Quelle, and Flick (Ans. 8-9).
F. The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as
obvious over Rapaport, Frei, and Quelle (Ans. 9-10).
A. 35 U.S.C. § 103(a) over Rapaport and Frei
The Examiner finds that “Rapaport teaches a method of treating striae
distensae lesions (stretchmarks) by topically applying to the affected skin a
composition comprising alpha-hydroxy acids” (Ans. 4). The Examiner finds
that Rapaport teaches “that the composition promotes rigidity and elasticity
of the skin; the reference indicates that alpha hydroxy acids elicit[ ] a
hyperplastic response in the epidermis and dermis that counters the
breakdown of collagen cross linking and/or stimulates the production of
materials which promote both rigidity and elasticity of the skin” (Ans. 4-5).
The Examiner finds that “Frei teaches fermented soya peptide
extracted from Lactobacillus bacterium stimulate collagen formation and
elastin synthesis when applied to skin, and increases skin firmness,
elasticity, and tone” (Ans. 5).

4
Flick, E., Cosmetic and Toiletry Formulations, 2nd ed., vol. 4,
(1995), Noyes Publications, p. 114.
5
Quelle, G., DE 4244418 A1, published Jul. 1, 1993, (We rely on
the Quelle translation with pages numbered 1-29).
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The Examiner finds it obvious to
modify the composition of Rapaport by incorporating soya
peptide, as motivated by Frei, because Rapaport 1) teaches
that stretchmarks are treated by countering the breakdown of
collagen cross linking and/or stimulating production of
materials which promote[ ] the rigidity and elasticity of the
skin, and 2) suggests adding additives to enhance the
performance of the product; and Frei teaches that soya
protein stimulates collagen formation and elastin synthesis,
thereby improving firmness and elasticity of skin.

(Ans. 5).
Appellant contends that “the Office has not met its burden to clearly
articulate, in view of the Declaration testimony, why a person of ordinary
skill in the art would have a „reasonable expectation of success‟ in
combining Rapaport with Frei” (App. Br. 7).
Appellant contends that the “Office erred by failing to provide the
requisite evidentiary support for its scientific theory underlying the
obviousness rejection, and the Office erred in failing to properly weigh the
Declaration testimony providing strong evidence of nonobviousness over the
art of record” (App. Br. 9).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that Rapaport and Frei render
claim 1 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Rapaport teaches that “[s]triae distensae lesions are skin stretch
marks, and are conditions, such as dry skin, ichthyosis, hyperkeratosis, most
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common in women, after puberty or after a first pregnancy” (Rapaport, col.
1, ll. 13-15).
2. Rapaport teaches that “treatment of striae distensae lesions and
associated dermal presentations is by application of a composition
containing the alpha hydroxy acid, preferably glycolic acid, in a
concentration of the alpha hydroxy acid or salt thereof of from 2 to about 30
percent” (Rapaport, col. 3, ll. 21-25).
3. Rapaport teaches that:
Suitable alpha hydroxy acid treatment compositions work in
reducing striae distensae skin stretch marks by virtue of
acids such as glycolic acid eliciting a hyper plastic response
in the epidermis and dermis that counters the breakdown of
collagen cross linking and/or stimulates the permanent
production of interfibrillary material, such as
glycoaminoglycans, which promote both rigidity and
elasticity.

(Rapaport, col. 4, ll. 31-38).
4. Frei teaches that:
A soya derived peptide was used for an efficiency study in
3-dimensional models. In the dermal equivalent model, this
peptide increased fibroblast proliferation by 40% and led to
a stimulation of collagen formation (+65%) and elastin (+
16%) synthesis. The effect of this soya peptide on
glycosaminoglycan synthesis was also significant, with
increases of 36% for chondroitin-4-sulfate and 68% for
hyaluronic acid. These results were confirmed using a
skin equivalent model. In this model, the soya peptide
increased the thickness of the epidermis.

(Frei 159, abstract).
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5. Frei teaches that “a milk peptide and a soya peptide added to
the culture medium of DE could promote fibroblastic renewal when cells are
proliferative. No further effect on cell renewal was observed when cells
were quiescent, as in normal skin in vivo” (Frei 170).
6. Frei teaches that in “a study model which reproduces the
environment in which dermal fibroblasts and keratinocytes develop in vivo,
the significant stimulating effect of a soya peptide on extracellular matrix
component synthesis and its action on epidermal differentiation have been
shown clearly. This peptide is able to stimulate regeneration of metabolic
activity, which may help the skin to look younger” (Frei 171).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima face case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
To establish a prima facie case of obviousness, the examiner must find
“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.”
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
O’Farrell states that “[o]bviousness does not require absolute
predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988). O’Farrell identifies
two kinds of error. In some cases, what would have been
“obvious to try” would have been to vary all parameters or
try each of numerous possible choices until one possibly
arrived at a successful result, where the prior art gave either
no indication of which parameters were critical or no
direction as to which of many possible choices is likely to be
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successful…. In others, what was “obvious to try” was to
explore a new technology or general approach that seemed
to be a promising field of experimentation, where the prior
art gave only general guidance as to the particular form of
the claimed invention or how to achieve it.

(Id.)
Analysis
We can agree with the Examiner that Rapaport teaches that alpha
hydroxy acids reduce stretchmarks by “eliciting a hyper plastic response in
the epidermis and dermis that counters the breakdown of collagen cross
linking and/or stimulates the permanent production of interfibrillary
material, such as glycoaminoglycans, which promote both rigidity and
elasticity” (Rapaport, col. 4, ll. 33-38; FF 3). We can also agree with the
Examiner that Frei teaches that soya peptides stimulate collagen formation
(FF 4) and help skin look younger (FF 6). We also give little weight to the
Msika Declaration,
6
which mainly recites opinions of the inventor on a
number of different legal issues. See In re Reuter, 670 F.2d 1015, 1023
(CCPA 1981) (expert‟s opinion on ultimate legal issue entitled to no
weight).
However, the Examiner has not established that soya peptide, when
applied to stretchmarks, would have been expected to result in the same
effect as alpha hydroxy acids, nor has the Examiner established that the
response in epidermis to soya peptides is the same response caused by alpha
hydroxy acids. The Examiner provides no reason why the ordinary artisan
of Rapaport, concerned with stretch marks, would have selected Frei‟s anti-

6
Declaration of Philippe Msika, filed Nov. 14, 2008.
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aging soya peptides from among the thousands or more known active agents
for skin care treatment, in order to apply the soya peptide for treatment of
the stretchmarks. There is no clear nexus for this selection. See KSR, 550
U.S. at 418 (There must be “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.”).
We also agree with Appellant that there would not have been a
reasonable expectation of success, since there is no reasonable indication of
what parameters were necessary to treat skin stretchmarks, and any of the
myriad of prior art compounds used for skin treatment could be selected to
treat this condition without any indication in the prior art of either Rapaport
or Frei as to which of these myriad of compounds would be successful in
reducing stretchmarks. This situation falls into the first type of error
identified by O’Farrell, since there are many possible choices for
compounds which might treat stretchmarks (or any other skin condition), but
the prior art of Rapaport and Frei give no guidance to suggest that soya
peptides would have any capacity to treat and reduce stretchmarks.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Rapaport and Frei render claim 1 obvious.
B.-C. 35 U.S.C. § 103(a) over Rapaport, Frei, and Andary or Flick
Each of these rejections relies upon the underlying obviousness
rejection over Rapaport and Frei. Having reversed the rejection of claim 1
over Rapaport and Frei above, we necessarily reverse these obviousness
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rejections, which do not suggest the treatment of stretch marks with soya
peptides as required by claim 1.
D. 35 U.S.C. § 103(a) over Rapaport and Quelle
The Examiner finds that “Rapaport, as discussed above, teaches a
method of treating stretchmarks by topically applying to the affected skin a
composition comprising alpha-hydroxy acids” (Ans. 7). The Examiner finds
that “Quelle teaches the use of tripeptide Gly-His-Lys in cosmetic
compositions to treat the skin against aging by increasing the radical
scavenger effect and the stimulation of collagen synthesis of fibroblasts”
(Ans. 7). The Examiner finds it obvious to
modify the composition of Rapaport by incorporating the
tripeptide Gly-His-Lys, as motivated by Quelle, because
Rapaport 1) teaches that stretchmarks are treated by
countering the breakdown of collagen cross linking and/or
stimulating permanent production of materials which
promotes the rigidity and elasticity of the skin, and 2)
suggests adding additives to enhance the performance of the
product; and Quelle teaches that the tripeptide promotes
collagen synthesis and better antioxidant activity.

(Ans. 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that Rapaport and Quelle render
claim 12 obvious?

Findings of Fact
7. Quelle teaches that “effective preparations are then called
Preparation B and GHL peptide (GHL = glycyl-histidyl-lysine = tripeptide
fraction A)” (Quelle 3).
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8. Quelle teaches that these preparations can be used in
“cosmetics, for skin care, as an anti-aging factor and radical scavenger
complex” (Quelle 4).
9. Quelle teaches that:
At least three properties of the effect of the preparations
described in this invention suggest a possible successful
application in skin care: the increase in the metabolic
activity, the radical scavenger effect, and the stimulation of
collagen synthesis of fibroblasts. The cosmetic preparations
for skin care: hydrating and day creams for dry skin, night
creams, sun protection preparations, after-sun lotions, anti-
wrinkle creams, skin protection creams and aftershave
lotions should contain a minimum concentration of 2-5% of
the preparations described in this invention.

(Quelle 18).
Analysis
Similar to the previous analysis, the Examiner has not established that
GHL peptide, when applied to stretchmarks, results in the same effect as
alpha hydroxy acids. The Examiner has not established that the response in
epidermis to GHL peptides is the same response caused by alpha hydroxy
acids. The Examiner provides no reason why the ordinary artisan of
Rapaport, concerned with stretch marks, would have selected Quelle‟s GHL
peptides from among the thousands or more known active agents for skin
care treatment, in order to apply the GHL peptide for treatment of the
stretchmarks. There is no clear nexus for this selection. See KSR, 550 U.S. at
418 (There must be “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.”).
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We also conclude that there would not have been a reasonable
expectation of success, since there is no reasonable indication of what
parameters were necessary to treat skin stretchmarks, and any of the myriad
of prior art compounds used for skin treatment could be selected to treat this
condition without any indication in the prior art of either Rapaport or Quelle
as to which of these myriad of compounds would be successful in reducing
stretchmarks. This situation falls into the first type of error identified by
O’Farrell, since there are many possible choices for compounds which
might treat stretchmarks (or any other skin condition), but the prior art of
Rapaport and Quelle give no guidance to suggest that GHL peptides would
have any capacity to treat and reduce stretchmarks.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Rapaport and Quelle render claim 12 obvious.
E.-F. 35 U.S.C. § 103(a) over Rapaport, Quelle and Frei or Flick
Each of these rejections relies upon the underlying obviousness
rejection over Rapaport and Quelle. Having reversed the rejection of claim
12 over Rapaport and Quelle above, we necessarily reverse these
obviousness rejections, which do not suggest the treatment of stretch marks
with tripeptides as required by claim 12.

SUMMARY
In summary, we reverse the rejection of claims 1-6, 8-10, 21, and 22
under 35 U.S.C. § 103(a) as obvious over Rapaport and Frei.
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We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Rapaport, Frei, and Andary.
We reverse the rejection of claim 11 under 35 U.S.C. § 103(a) as
obvious over Rapaport, Frei, and Flick.
We reverse the rejection of claims 12-17, 23, and 24 under 35 U.S.C.
§ 103(a) as obvious over Rapaport and Quelle.
We reverse the rejection of claim 18 under 35 U.S.C. § 103(a) as
obvious over Rapaport, Quelle, and Flick.
We reverse the rejection of claims 19 and 20 under 35 U.S.C. § 103(a)
as obvious over Rapaport, Frei, and Quelle.

REVERSED
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