Ex Parte Sagawa et al

Patent Trial and Appeal BoardMar 25, 2016

11283931 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111283,931 11122/2005 38108 7590 03/29/2016 CERMAK NAKAJIMA MCGOWAN LLP 127 S. Peyton Street Suite 210 ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Koichiro Sagawa 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. US-230 6392 EXAMINER PAGONAKIS, ANNA ART UNIT PAPER NUMBER 1628 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): cgoode@cnmiplaw.com ip@cnmiplaw.com scermak@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOICHIRO SAGA WA, YOSHINOBU TAKINO, and YUSUKE AMIN0 1 Appeal2013-007759 Application 11/283,931 Technology Center 1600 Before ERIC B. GRIMES, JOHN G. NEW, and JACQUELINE T. HARLOW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1Appellants state the real party-in-interest is Ajinomoto Co., Inc. App. Br. 3. Appeal2013-007759 Application 11/283,931 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-7. Specifically, claims 1---6 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of McClung (US 6,579,543 Bl, June 17, 2003) ("McClung") and Kenji Kobata et al., Novel Capsaicinoid-like Substances, Capsiate and Dihydrocapsiate, from the Fruits of a N onpungent Cultivar, CH-19 Sweet, of Pepper (Capsicum annuum L), 46(5) J. AGRIC. FOOD CHEM. 1695-97 (1998). Claim 7 stands rejected as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination ofMcClung, Kobata, and Aung-Din (US 2003/0013753 Al, January 16, 2003) ("Aung-Din") We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to topically applied circulation enhancing agents and to skin and hair cosmetics and bath agents containing the same. More specifically, the present invention relates to a topically applied circulation enhancing agent that is suited for use over the entire body, has good solubility, absorbs well through the skin, and causes little irritation; and to skin and hair cosmetics and bath agents containing the same. Spec i-f 3. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 2 Appeal2013-007759 Application 11/283,931 1. A method of enhancing blood circulation in a subject in need of enhanced blood circulation comprising topically administering an agent comprising a capsinoid compound, wherein the concentration of said capsinoid compound in said agent is from 0.5 weight% to 5.0 weight%. App. Br. 11. THE EXAMINER'S PRIMA F ACIE CASE The Examiner finds McClung teaches a method of relieving pain by topically applying a composition comprising at least one compound having blood circulation promotion activity including, but not limited to, capsaicinoids obtained from Capsicum annuum. Ans. 5 (citing McClung, col. 6, 11. 32-36). The Examiner finds McClung teaches the capsaicinoid is effective in the range of 0.01 to 0.2%. The Examiner finds Kobata teaches dihydrocapsiate is a capsaicinoid- like substance. Ans. 6 (citing Kobata 1695). The Examiner concludes that one of ordinary skill in the art would have found it prima facie obvious to have administered dihydrocapsiate for the enhancement of blood circulation. Ans. 6. The Examiner finds one would have been motivated to do so because capsaicinoids are known to have this activity and the elected dihydrocapsiate is a capsaicinoid-like compound. Id. Therefore, one of skill would have a reasonable expectation that dihydrocapsiate would be effective in enhancing blood circulation. Id. For the reasons set forth below, we do not agree that the Examiner has established a prima facie case of obviousness. 3 Appeal2013-007759 Application 11/283,931 A. Claims 1---6 Issue ISSUES AND ANALYSES Appellants argue the Examiner erred in finding the combined cited prior art references teach or suggest the limitations of claim 1. App. Br. 5. Analysis Appellants argue McClung is cited by the Examiner as teaching pain relief by topically applying a composition containing a compound having blood circulation activity. App. Br. 6. According to Appellants, McClung teaches such compositions may include capsaicinoids in non-purified form, but does not teach the claimed capsinoids. Id. Appellants also argue that Kubota teaches the structure of dihydrocapsiate (a capsinoid), a capsaicinoid-like substance, however Appellants dispute the Examiner's finding that capsinoids could be reasonably expected to have properties similar to capaicinoids. Id. Appellants assert, rather, that the capsinoids recited in claim 1 are structurally distinctly from capsaicinoids, despite their similar names. Appellants state the structure of dihydrocapsaicin (a capsaicinoid) is: whereas the structure of dihydrocapsiate (a capsinoid) is: 4 Appeal2013-007759 Application 11/283,931 Id. Appellants point out that capsinoids differ from capsaicinoids by substituting an oxygen for the nitrogen at the number 2 position of the carbon chain relative to the phenyl ring. Id. at 7. Appellants argue further that the chemical properties of capsinoids also differ from capsaicinoids. App. Br. 7. Appellants point to their Specification, which discloses that capsinoids, unlike capsaicinoids, were previously reported to have no effect when applied to the skin, although this property had not been studied in detail. Id. (see, e.g., Spec. i-f 22 (citing T. Iida et al., TRPVJ activation and induction of nociceptive response by a non- pungent capsaicin-like compound, capsiate, 44(7) NEUROPHARMACOLOGY, 958---67 (2003)). Appellants' Specification further states that the effect of topical application of capsinoids on circulatory system activity was a novel result first reported in their Specification. Id. Appellants also argue the prior art distinguishes the properties of capsinoids and capsaicinoids. Id. at 7-8 (citing Appellants' Information Disclosure). Finally, Appellants argue that McClung, which does not even suggest capsinoids, teaches using the capsaicinoid-type compounds at concentrations of0.01to0.2%, and preferably at 0.05 to 0.15% which, Appellants contend, is significantly lower than the concentrations for capsinoid in the claimed method (0.5 weight% to 5.0 weight%). App. Br. 8 (citing McClung col. 6, 1. 37). Therefore, Appellants assert, it would not have been obvious to use a greater concentration than that taught by McClung. Id. The Examiner responds that Kobata explicitly teaches that dihydrocapsiate is a capsaicinoid-like substance. Ans. 8. As such, the Examiner finds Kobata acknowledges that the dihydrocapsiate is structurally 5 Appeal2013-007759 Application 11/283,931 and functionally related to capsaicinoid compounds. Id. The Examiner finds that because Kobata teaches dihydrocapsiate is capsaicinoid-like and because McClung teaches that capsaicinoids enhance blood circulation promotion activity, a person of ordinary skill in the art would have been motivated to administer a capsaicinoid-like compound for the enhancement of blood circulation. Id. The Examiner finds a person of ordinary skill would have a reasonable expectation of success that dihydrocapsiate would be effective in enhancing blood circulation. Id. The Examiner further finds, with respect to the relative chemical structure of capsinoids and capsaicinoids, that both the nitrogen and oxygen substitutions are hydrogen bond accepting groups, and therefore one of ordinary skill would expect the compounds to have similar hydrogen bonding behavior, with consequent homologous activity. Id. at 8-9. With respect to the prior art cited by Appellants in their Information Disclosure Statement, the Examiner has reviewed the literature cited by Appellants and finds no studies that compare and contrast the activity of capsinoids and capsaicinoids and further finds that several of them characterize capsinoids as capsaicinoid analogues. Id. at 9. Finally, with respect to Appellants' arguments with respect to the concentrations taught by the prior art and recited in the claims, the Examiner finds McClung explicitly teaches capsaicinoid compounds are topically applied in the range of 0.01 to 0.2% by weight. Id. at 10. The Examiner finds the range recited in claim 1 to be 0.5% to 5% by weight and consequently finds the difference between the ends of the ranges as 0.3%, which the Examiner finds is not a significant difference. 6 Appeal2013-007759 Application 11/283,931 Appellants reply, with respect to the Examiner's finding that the substitution of oxygen for nitrogen in capsinoids are both hydrogen bond accepting groups, that it is well-known in the art that the amide bonds formed by nitrogen and the ester bonds formed by oxygen are different and impart very different functions to the compounds they reside within. Reply Br. 4. Appellants argue, by way of example, if one replaced a nitrogen with an oxygen in a protein, the protein would not be able to function as a protein, as all structural and functional similarity would be lost. Id. We are persuaded by Appellants' arguments. McClung teaches capsaicinoids increase circulatory activity. See McClung col. 6, 11. 29-32. Kobata teaches the structure of capsinoids, an analog of capsaicinoids (it refers to capsinoids as "capsaicinoid-like substances") with certain chemical properties similar to capsaicinoids2, and which are produced by a variety of the same species of pepper plant, Capsicum annuum. See Kobata 1695. However, capsinoids possess other chemical properties which are unlike those of capsaicinoids; most conspicuously, they lack the pungent or irritating properties of capsaicinoids. See, e.g., Kobata 1697. Because capsinoids differ from capsaicinoids in their chemical structure and in one of their most conspicuous properties, and because Appellants' Specification discloses that the prior art at least suggests that capsinoids have no effect when applied topically to the skin, we do not agree with the Examiner's 2 Kobata teaches: "[Capsinoids] develop an intense blue color by 2,6- dichloroquinone-4-chloroimide and ammonia on thin-layer chromatography, similarly to capsaicinoid. However, [ capsinoids] differ from capsaicinoid in their Rf values." Kobata 1695. Kobata also teaches: "We expected that the [ capsinoids] would be a kind of nonpungent capsaicinoid occurring in natural resources." Id. 7 Appeal2013-007759 Application 11/283,931 conclusion that it would have been obvious to a person of ordinary skill in the art to substitute capsinoids for capsaicinoids as a topically-applied composition, and to then reasonably expect a resultant effect on circulatory activity. We consequently conclude the Examiner failed to establish a prim a facie conclusion of obviousness and we reverse the rejection of claim 1. Furthermore, because Appellants argue claims 2---6 together with claim 1, we similarly affirm the Examiner's rejection of those claims. B. Claim 7 Issue Appellants argue claim 7 separately. App. Br. 9. Claim 7 recites: "The method of claim 1, wherein said agent is topically administered to the scalp." Id. at 12. Appellants argue the Examiner erred in finding motivation to combine Aung-Din with McClung and Kobata. Id. at 9. Analysis Appellants repeat their arguments supra with respect to McClung and Kobata. App. Br. 9. Furthermore, contend Appellants, a person of ordinary skill in the art would not be motivated to combine Aung-Din with McClung, and Kobata. Appellants argue Aung-Din relates only to topical treatment of migraine pain with a composition containing a (non-capsaicinoid) serotonin agonist, and McClung teaches the use of non-purified capsaicinoids of Capsicum annuum for the stimulation of the blood and heart. Id.; see Aung- Din Abstr. Therefore, argue Appellants, there is no connection between the 8 Appeal2013-007759 Application 11/283,931 migraine treatment taught by Aung-Din and the methods taught by McClung. Id. We agree with Appellants' argument that a person of ordinary skill would not be motivated to combine the teachings Aung-Din with those of McClung and Kobata, but we find it to be moot. McClung teaches topical application of capsaicinoids and topical application includes application to the skin of the scalp. See McClung col. 1, 11. 13-17. However, because we conclude supra that it would not have been obvious to combine the teachings of McClung and Kobata, we reverse the Examiner's rejection of claim 7. CONCLUSION For the reasons set forth supra, we do not agree with the Examiner's reasoning or conclusion that claims 1-7 are prim a facie obvious. We consequently reverse the rejection of the claims. DECISION The Examiner's rejection of claims 1-7 as unpatentable under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 9