Ex Parte Ptchelintsev

Patent Trial and Appeal Board

May 24, 2018

14284869 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/284,869
60723 7590
Avon Products, Inc.
1 Avon Place
Suffern, NY 10901
FILING DATE FIRST NAMED INVENTOR
05/22/2014 Dmitri S. Ptchelintsev
05/29/2018
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.
SC123X-US 4082
EXAMINER
FIEBIG, RUSSELL G
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
05/29/2018 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):
PATENT.DEPARTMENT@AVON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DMITRI S. PTCHELINTSEV1
Appeal2017-007040
Application 14/284,869
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and DAVID COTT A,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a topical
composition, which have been rejected as being directed to patent-ineligible
subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
"Tiliacora triandra Diels of the Tiliacora family, also known as
Yanang, is a species of flowering plant native to mainland Southeast Asia
and used particularly in the cuisines of northeast Thailand and Laos." Spec.
1 Appellant identifies the Real Party in Interest as Avon Products, Inc.
Appeal Br. 2.
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Application 14/284,869
,r 6. "In traditional Southeast Asian medicine, Tiliacora triandra has been
used as an herbal medicine for fever relief, alcohol intoxication,
inflammation, and bacterial/fungal infection." Id.
The Specification discloses the "use of natural plant materials of the
Tiliacora family, or more specifically, the Tiliacora triandra Diels plant, ...
in a topical composition for application on the face and/or body in order to
improve the condition and aesthetic appearance of skin." Id. ,r 20. "[T]he
natural plant materials ... alleviate the dermatological signs of
chronologically or hormonally[] aged or photo-aged skin, such as fine lines,
wrinkles, and sagging skin." Id. ,r 32.
Claims 1-3, 6, 10, and 15-20 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A topical composition comprising:
(a) a Tiliacora triandra Diels plant extract present in an amount from
about 0.01 wt% to about 10 wt% based on the total weight of the
composition; wherein said plant extract is obtained by extraction of
the Tiliacora triandra Diels plant with a solvent mixture comprising
from about 60% to about 90% by volume ethanol and from about 10%
to about 40% by volume water; and
(b) a cosmetically or physiologically acceptable vehicle.
DISCUSSION
The Examiner has rejected claims 1-3, 6, 10, and 15-20 under
35 U.S.C. § 101 "because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more." Ans. 2. The Examiner finds that the claimed
composition "is not markedly different from it[ s] naturally occurring
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counterpart because there is no indication that extraction has caused the
nature-based product to have any characteristics ( e.g., structural/functional)
that are different from the naturally occurring product." Id.
More specifically, the Examiner reasons that a "change in the ratio or
amount of extract does not transform the claims into an exemption of the
'judicial exception' because amounts/ratios/percentages do not set forth a
'markedly different' structure as compared to the naturally-occurring
product." Id. at 3 (citing Diamond v. Chakrabarty, 447 U.S. 303 (1980)).
The Examiner also reasons that "[ c ]ombining naturally-derived ingredients
does not amount to a claim which surmounts the judicial exception." Id. at
3--4 (citing Funk Brothers Seed Co. v. Kala lnoculant Co., 333 U.S. 127
(1948)).
The Examiner finds that claim 1 does not add anything significantly
beyond the naturally occurring judicial exception, because the only other
limitation recites a cosmetically or physiologically acceptable vehicle, which
can be water. Id. at 4. The Examiner concludes that "the claimed product is
not eligible subject matter under current 35 USC 101 standards." Id.
We agree with the Examiner that claim 1 is not directed to patent-
eligible subject matter. Claim 1 is directed to a topical composition
comprising a vehicle (which can be water; Spec. ,r 34) and an extract
obtained from a Tiliacora triandra Diels plant using an ethanol/water
solvent mixture. Because the components of the extract are products that
occur naturally in Tiliacora triandra Diels plants, Association for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), is controlling.
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In Myriad, the Court considered claims directed to isolated DNA
encoding the BRCAl polypeptide and fragments of at least 15 nucleotides of
that DNA. Id. at 2113. The Court held that "Myriad did not create anything.
To be sure, it found an important and useful gene, but separating that gene
from its surrounding genetic material is not an act of invention." Id. at 2117.
"Myriad found the location of the BRCAl and BRCA2 genes, but that
discovery, by itself, does not render the BRCA genes 'new ...
composition[s] of matter,'§ 101, that are patent eligible." Id. "Nor are
Myriad's claims saved by the fact that isolating DNA from the human
genome severs chemical bonds and thereby creates a nonnaturally occurring
molecule." Id. at 2118.
In other words, Myriad claimed the naturally occurring BRCAl gene
in isolated form; i.e., after all of the additional components of a human cell,
including non-BRCAl DNA, had been removed. The same analysis applies
here. Claim 1 is directed to a composition comprising naturally occurring
components of Tiliacora triandra Diels plants, after those components have
been removed from other cell components by ethanol/water extraction.
Appellant has identified certain components of Tiliacora triandra Diels
plants, with their naturally occurring structures, that have properties that
make them useful for treating aging skin, but discovering those properties
does not make the components of the extract new compositions of matter that
are patent-eligible. Rather, claim 1 is directed to a composition made up of
products of nature.
If a claim is directed to patent-ineligible subject matter,
we next consider the elements of each claim both individually
and "as an ordered combination" to determine whether
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additional elements "transform the nature of the claim" into a
patent-eligible application. The Supreme Court has described
the second step of this analysis as a search for an "inventive
concept"-i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375 (Fed. Cir.
2015) ( citation omitted, alteration in original) ( quoting Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
Here, as the Examiner pointed out (Ans. 4), the only component of the
claimed composition, other than the naturally occurring compounds from
Tiliacora triandra Diels, is a cosmetically or physiologically acceptable
vehicle, which the Specification states can be water (Spec. ,r 34: "aqueous
... solutions"). We agree with the Examiner that combining the naturally
occurring components of Tiliacora triandra Diels with water would not
result in a composition with markedly different properties from those of the
natural products themselves, particularly because the milieu in which they
are naturally found-Tiliacora triandra Diels cells-is an aqueous
environment, like all living cells. Thus, the additional element of claim 1
does not transform the nature of the claim into a patent-eligible application
of the judicial exception.
Appellant argues that "the claims are directed to topical compositions
that comprise narrowly claimed amounts of man-made extracts derived from
the naturally-occurring Tiliacora triandra plant." Appeal Br. 4. Appellant
argues that
even if a man-made plant extract could be considered a
"judicial exception," the claim as a whole does not seek to tie
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up any judicial exception such that others cannot practice it.
Appellants therefore submit that for at least the reason that the
claims do not seek to tie up any judicial exception (i.e., there is
no pre-emption), they constitute patent-eligible subject matter.
Id. Similarly, Appellant argues that dependent claims 2, 3, 6, and 15-20 add
additional limitations, so that "pre-emption of the claimed Tiliacora triandra
plant is not at issue." Id. at 5.
These arguments are unpersuasive, because "[ w ]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Ariosa, 788 F.3d at 1379. "Where
a patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id.
Appellant also argues that
a botanical extract, by definition, has "markedly different
characteristics" from "its naturally occurring counterpart in its
natural state" ... because it involves the selection of some, but
not all, plant components from amongst many others.
Furthermore, those plant components will be present in
amounts (i.e., relative proportions) that differ from the amounts
present in the naturally occurring plant.
Appeal Br. 6.
Appellant argues that the evidence of record shows that different
solvent systems extract different profiles of chemical components from
botanical sources, and the "claimed ethanol/water solvent mixture will
extract a unique constellation of constituents from the Tiliacora triandra
plant, which will result in a 'different composition,' or one that is 'markedly
different' from the naturally occurring plant." Id. at 7. Appellant points to
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hypothetical examples in the USPTO' s guidance regarding patent eligibility
(issued December 2014), and argues that
the claimed solvent system extracts a unique profile of the
plant's components, which differentiates it markedly from the
naturally occurring counterpart in terms of structure and
function, just as the preservative and solubilizing agent in the
... "Examples" from the USPTO Guidelines materials change
those products from their naturally occurring form.
Id. at 7-8.
This argument is also unpersuasive, because the evidence of record
does not support Appellant's position that the claimed composition is
markedly different from its natural source. The Specification states that
[ t ]he Tiliacora triandra Diels natural plant material may be in
any form including, but not limited to, the whole plant, a dried
plant, a ground plant, or parts thereof, including but not limited
to, seeds, needles, leaves, roots, bark, cones, stems, rhizomes,
callus cells, protoplasts, organs and organ systems, e.g.,
flowers, and meristems, and especially extracts derived from
the plant or any one or more of its parts identified above, or any
combinations thereof.
Spec. ,r 30.
The Specification also states that "this plant material, i.e., the vines of
the Tiliacora triandra Diels plant, has been newly found to provide
treatment for the reduction in signs of dermatological aging by stimulating
fibroblast and keratinocyte proliferation, increasing the expression of
collagen, and inhibiting collagenase activity." Id. ,r 32 (emphasis added).
Similarly, the Specification states that
the natural plant materials, which increase proliferation of
fibroblasts and keratinocytes, cell-cell adhesion in the epidermis
and dermis, cell nourishment to the epidermis, cell-cell
anchoring and adhesion between keratinocytes, communication
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between the dermis and epidermis, collagenase overproduction,
collagen expression, and mechanical properties of the skin,
alleviate the dermatological signs of chronologically or
hormonally[] aged or photo-aged skin, such as fine lines,
wrinkles, and sagging skin.
Id. ( emphasis added). "The composition comprising these plants are [sic]
effective when topically applied." Id. "[T]he natural plant materials, which
increase production of collagen; inhibit collagenase activity; and stimulate
fibroblast and keratinocyte proliferation, exert their effects by preferably
stimulating an increase in anchoring and adhesion between keratinocytes."
Id. ( emphasis added).
Thus, Appellant's Specification itself provides evidence that the
relevant properties of the claimed composition are shared by the naturally
occurring plant material from which the Tiliacora triandra Diels extract is
derived. Appellant has pointed to no persuasive evidence to show that the
claimed extract-containing composition is markedly different from the
natural product it is derived from.
With regard to Appellant's reliance on examples from the USPTO's
Interim Eligibility Guidance, Appellant has not pointed to evidence showing
that the claimed composition has properties that differ from plant material of
Tiliacora triandra Diels in a manner similar to that of slower spoiling
resulting from addition of a preservative to juice, or increased solubility
resulting from addition of a solubilizing agent to a water-insoluble
compound. We therefore do not find the examples to be persuasive of the
patent-eligibility of the instantly claimed composition.
With regard to claims 17 and 18, Appellant argues that these claims
"specify that the composition comprises at least one additional recited skin
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active agent ... selected from additional botanical extracts and pyridine-
fused azabicyclic compounds." Appeal Br. 8. Appellant argues that
"[b ]ecause the Examiner has failed to show or even allege that Tiliacora
triandra plant material exists in nature in combination with any of the cited
skin actives, claims 1 7 and 18 are markedly different from the Tiliacora
triandra plant as it exists in its natural form ... [and] constitute patent-
eligible subject matter."
This argument is unpersuasive. "In Funk Bros. [Funk Bros. Seed Co.
v. Kala lnoculant Co., 333 U.S. 127 (1948)], the Supreme Court considered
a patent that claimed a mixture of naturally occurring strains of bacteria that
helped leguminous plants extract nitrogen from the air and fix it in soil. The
Court concluded that this mixture of bacteria strains was not patent eligible
because the patentee did not alter the bacteria in any way." In re Roslin
Institute (Edinburgh), 750 F.3d 1333, 1336 (Fed. Cir. 2014).
The Funk Bros. Court noted that the Court of Appeals in that case
"thought that [the inventor] did much more than discover a law of nature,
since he made an new and different composition of non-inhibitive strains" of
bacteria. Funk Bros., 333 U.S. at 130-131. The Funk Bros. Court held,
however, that "[ d]iscovery of the fact that certain strains of each species of
these bacteria can be mixed without harmful effect ... is a discovery of their
qualities of non-inhibition. . . . The aggregation of select strains of the
several species into one product is an application of that newly-discovered
natural principle." Id. at 131. The Court held that "[t]he combination of
species produces no new bacteria, no change in the six species of bacteria,
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and no enlargement of the range of their utility. Each species has the same
effect it always had." Id.
Similarly here, claims 17 and 18 are directed to a composition
comprising naturally occurring components of Tiliacora triandra Diels plant
material, combined with (for example) naturally occurring components of
Abies pindrow plant material found in an extract of that plant, and a vehicle
such as water. Mixing the naturally occurring components of the different
plant extracts, however, results in a composition that comprises natural
products that are not markedly different from their natural counterparts. To
paraphrase the Funk Bros. Court, the combination of extracts containing
naturally occurring plant compounds produces no new compound and no
change in the combined compounds; each compound has the same effect it
had as part of the naturally existing plant material. We therefore agree with
the Examiner that claims 17 and 18 are also directed to patent-ineligible
subject matter.
SUMMARY
We affirm the rejection of claims 1-3, 6, 10, and 15-20 under
35 U.S.C. § 101.
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. § 1.136(a).
AFFIRMED
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