Ex Parte Pain et al

Patent Trial and Appeal BoardNov 1, 2016

12663015 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/663,015 04/08/2010 123223 7590 11/03/2016 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Sabine Pain 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. 074050-0050-US (287556) 1578 EXAMINER WHITE, DOUGLAS F ART UNIT PAPER NUMBER 1653 NOTIFICATION DATE DELIVERY MODE 11/03/2016 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SABINE PAIN, COLETTE DEZUTTER, VALERIE ANDRE, CORINNE REYMERMIER, ISABELLE ORLY, and ERIC PERRIER Appeal2015-004525 Application 12/663,015 Technology Center 1600 Before DONALD E. ADAMS, JOHN G. NEW, and TIMOTHY G. MAJORS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. Â§ 134(a) involves claims 18-20, 22-26, 29-32, and 34--38 (App. Br. 2). Examiner entered a rejection under 35 U.S.C. Â§ 103(a).2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify "[t]he real party in interest [as] BASF Beauty Care Solutions France, S.A.S." (App. Br. 1 ). 2 Application 12/663,021 stands abandoned, therefore, the provisional rejection over Application 12/663,021 is moot (see Ans. 2). Appeal2015-004525 Application 12/663,015 STATEMENT OF THE CASE Appellants' disclosure "concerns the active components modulating the expression of neuromediating receptors coded by the POMC (proopiomelanocortin) gene" (Spec. 1 :3-5). As Appellants explain, "Achillea millefolium is the species that was elected in response to the Restriction Requirement dated September 18, 2012" (App. Br. 8). Thus, we limit the scope of our review to Appellants' elected invention. Ex parte Ohs aka, 2 USPQ2d 1460, 1461 (BP AI 1987). Claims 18, 31, and 32 are representative and reproduced, in the context of Appellants' elected species, below: 18. A cosmetic method of stimulating the expression of a receptor of a neuromediator coded by the POMC gene chosen from among MC-1 [JR, MC-2R, and Âµ opioid R, it at least one type of skin cell[] expressing at least one of these receptors and a product of the POMC gene comprising applying to skin in need thereof an effective amount of a topical cosmetic composition comprising . . . an aqueous extract of common yarrow plant (A chill ea millefolium) obtained by macerating the plant in water. (App. Br. A-1; see generally App. Br. 8.) 31. The method according to claim [18], wherein the extract is a whole plant extract. (App. Br. A-3.) (Id.) 32. The method according to claim 18, wherein the ingredient is in an amount between 0.01 % and 5% (v/v) of the total volume of the composition. 2 Appeal2015-004525 Application 12/663,015 The claims stand rejected as follows: Claims 18-20, 22-26, and 29-38 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Mulvanerty,3 Grollier,4 Fiume,5 and Naydenov. 6 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Appellants disclose, the use of a topical composition comprising, inter alia, an aqueous extract of common yarrow plant (Achillea millefolium) obtained by macerating the plant in water "to encourage epithelialization, or to improve cellular proliferation and differentiation, notably at the epidermal level" (Spec. 12:13-15). FF 2. Mulvanerty discloses a "topical composition[] compris[ing] at least two, more preferably at least three, and most preferably all four extracts selected from the group consisting of calendula, yarrow, wild rose, and plantain extracts," wherein the topical composition comprises "about 10- 30%" yarrow extract (Mulvanerty 2:21-28 and 9:3--4; see generally Ans. 3; App. Br. 9). 3 Mulvanerty, WO 2007 /030666 A2, published Mar. 15, 2007. 4 Grollier et al., US 4,948,583, issued Aug. 14, 1990. 5 Monice Zondlo Fiume, Final Report on the Safety Assessment of Yarrow (Achillea millefolium) Extract, 20(Suppl. 2) International Journal of Toxicology 79-84 (2001). On this record, this document is, alternatively, referred to by the title of the Journal or as "Toxicology." The document, however, is a report prepared by "Monice Zondlo Fiume" (see 79: n.1 ). Therefore, we elect to refer to this document by the name of its author. 6 Naydenov et al., WO 2005/063266 Al, published July 14, 2005. 3 Appeal2015-004525 Application 12/663,015 FF 3. Mulvanerty's extract "may be made with a menstruum comprising alcohol and water" (Mulvanerty 3: 1-2; see also id. at 8: 12 (Mulvanerty exemplifies "steep[ing] [yarrow] in a liquid menstruum (50% alcohol and 50% water (50A: SOW; 100 proof)), thereby infusing the liquid with the active constituents of the herb"); see Ans. 3; App. Br. 9). FF 4. Mulvanerty discloses that "[i]n a preferred embodiment, the extracts are made from yarrow petals, leaves, and/or whole flowers" (Mulvanerty 2:23-24; Ans. 11; App. Br. 10). FF 5. Mulvanerty discloses a method of "promoting wound healing by administering the topical compositions of [Mulvanerty's] invention to a wound site" (Mulvanerty 2:3-5; id. at 9:33-34; see Ans. 3). FF 6. Mulvanerty' s composition "may further comprise at least one additional therapeutic agent," such as "anti-aging agents" (Mulvanerty 4: 10-11, 20-21; id. at 9:21-27; see Ans. 3). FF 7. Examiner relies on Grollier "to show that it is known to macerate the yarrow flower to obtain an extract used in cosmetics" (Ans. 11; see generally Ans. 3). FF 8. Fiume discloses the use of yarrow extract, as an ingredient in skin treatment, in the cosmetic industry at concentrations ranging from 0-0.1 %, 0.1-1 %, 1-5% and 10-25% (see generally Ans. 4 and 10). FF 9. Naydenov discloses a therapeutic composition comprising Achillea millefolium L. (Naydenov 12:20). ANALYSIS Based on the combination of Mulvanerty, Grollier, Fiume, and Naydenov, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to topically administer an 4 Appeal201S-004S2S Application 12/663,0lS effective amount of an extract comprising an aqueous extract of common yarrow plant (Achillea millefolium) obtained from macerating the plant in water to skin cells at a wound site in order "to encourage epithelialization, or to improve cellular proliferation and differentiation, notably at the epidermal level" (see generally Ans. S---6; FF 2-8; see FF 1 ). Claim 18: We recognize, but are not persuaded by, Appellants' contention that "a topical cosmetic composition comprising an aqueous extract of Achillea millefolium that is obtained by macerating the plant in water is not taught by the cited art" (App. Br. 8-9). Initially, we note that Appellants' claim 18 relates to a composition comprising an aqueous extract of Achillea millefolium that is obtained by macerating the plant in water (App. Br. A-1 ). A composition obtained by macerating Achillea millefolium in, for example, "a liquid menstruum (SO% alcohol and SO% water (SOA: SOW; 100 proof))" will comprise ingredients obtained from the water portion of the extract and the alcohol portion of the extract. Absent evidence, and notwithstanding Appellants' contentions, to the contrary, Appellants' claim 18 does not exclude an aqueous extract obtained by macerating A chill ea millefolium in "a liquid menstruum (SO% alcohol and SO% water (SOA: SOW; 100 proof))," as disclosed by Mulvanerty (see FF 3; see Ans. 7 (Appellants failed to establish that a product "'obtained by macerating the plant in water' provides a structurally different product than one found in the prior art"); cf App. Br. 8-10; see also Reply Br. 2-3). In re Pearson, 494 F.2d 1399, 140S (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). s Appeal2015-004525 Application 12/663,015 Mulvanerty discloses that topical administration of a composition comprising an aqueous extract of common yarrow plant (Achillea millefolium) obtained by macerating the plant in water to skin (see, e.g., FF 5). Absent evidence to the contrary, we find no error in Examiner's conclusion that an individual who topically applies Mulvanerty's composition to skin will achieve the same benefit from the composition as required by Appellants' claimed invention (Ans. 3). Appellants' claim 18 does not require an anti-aging effect, therefore, we are not persuaded by Appellants' contentions regarding the anti-aging components of Mulvanerty's composition (App. Br. 9). Claim 31: We recognize, but are not persuaded by, Appellants' contention that "Mulvanerty does not disclose obtaining an Achillea Millefolium extract using the whole plant, as recited in [Appellants'] claim 31" (App. Br. 10- 11). To the contrary, we agree with Examiner's conclusion that absent evidence to the contrary, a person of ordinary skill in the art would have reasonably expected that an Achillea Millefolium extract of petals, leaves, and/or whole flowers would provide the same benefit as an extract of the whole plant (see Ans. 12-13). Claim 32: Fiume discloses the use of Achillea Millefolium extract, in the cosmetic industry, as an ingredient of skin care products at a variety of ranges, including ranges that encompass Appellants' claimed range (see FF 8; cf App. Br. A-3). "[W]here there is a range disclosed in the prior art, and 6 Appeal2015-004525 Application 12/663,015 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). Further, "where[, as here,] the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). For the foregoing reasons, we are not persuaded by Appellants' contention that the combination of Mulvanerty, Grollier, Fiume, and Naydenov fails to suggest the subject matter of Appellants' claim 32 (App. Br. 10). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claims 18, 31, and 32 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination ofMulvanerty, Grollier, Fiume, and Naydenov is affirmed. Claims 19, 20, 22-26, 29, 30, and 33-38 are not separately argued and fall with claim 18. TIME PERIOD FOR RESPONSE 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). AFFIRMED 7