Ex Parte Swanson et al

Patent Trial and Appeal Board

Mar 24, 2016

13228150 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/228, 150 09/08/2011
27752 7590 03/28/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Cheri Lynn Swanson
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.
11870 6914
EXAMINER
TRAN, SUSAN T
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHERI LYNN SW ANSON, MICHAEL KOGANOV,
SHANE WHITAKER, LEO TIMOTHY LAUGHLIN II,
TOMOHIRO HAKOZAKI, LARRY RICHARD ROBINSON,
JOHN CRIST BIERMAN, JASON MICHAEL PRICE,
and KURT GLEN KRONHOLM1
Appeal2014-001548
Application 13/228,150
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and RICHARD J. SMITH,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composition suitable for lightening regions of mammalian skin that have
been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is The Procter & Gamble
Company. (Appeal Br. 1.)
Appeal2014-001548
Application 13/228,150
STATEMENT OF THE CASE
Background
"The present invention provides Ficus serum fraction derived from
fresh Ficus leaf cell juice. The present invention also provides cosmetic
compositions comprising Ficus serum fraction. The Ficus serum fraction is
present in the composition at an amount effective for attaining the desired
skin lightening result." (Spec. 4, 11. 6-9.)
Claims on Appeal
Claims 1-9 and 11-20 are on appeal. (Appeal Br. 8-10.)
Independent claim 1 is illustrative and reads as follows:
1. A cosmetic composition suitable for lightening regions of
mammalian skin, comprising:
a. an effective amount of Ficus serum fraction derived from
fresh Ficus leaf juice, wherein said Ficus serum fraction is not
a traditional extract; and
b. a dermatologically acceptable carrier.
Examiner's Rejections
1. Claims 1-9 and 11-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Millikin2 and Koganov. 3 (Ans. 3.)
2. Claims 1-9 and 11-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Koganov and Millikin. (Id. at 5.)
2 Millikin et al., US 2008/0206373 Al, published Aug. 28, 2008
("Millikin").
3 Koganov et al., US 2003/0175235 Al, published Sept. 18, 2003
("Koganov").
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Application 13/228,150
Appellants have presented arguments for the patentability of claims
1-9 and 11-20 as a group. (Appeal Br. 3-7.) Therefore, we limit our
discussion to claim 1 as representative of those claims.
FINDINGS OF FACT
We adopt the Examiner's findings and analysis concerning the scope
and content of the prior art. The following findings are included for
emphasis and reference convenience.
FF 1. The Examiner finds that Millikin teaches a composition comprising an
extract of Ficus benghalensis and a dermatologically acceptable carrier.
(Ans. 3.)
FF 2. The Examiner finds that Millikin teaches a method for lightening skin,
comprising applying the Ficus benghalensis extract composition to the skin
in need of such treatments. (Id.)
FF 3. Millikin states that "[e]ffective amount" means "an amount of a
compound or composition sufficient to significantly induce a positive
benefit, preferably a positive keratinous tissue appearance or feel benefit ...
(i.e., to provide a reasonable benefit to risk ratio, within the scope of sound
judgment of the skilled artisan)." (Millikin, i-f 14.)
FF 4. The Examiner finds that "Koganov teaches a cosmetic composition
comprising an effective amount of cell serum derived from a plant." (Ans.
4.)
FF 5. The Examiner finds that Koganov teaches a process for obtaining cell
serum, comprising "pressing fresh plant leaves to obtain plant cell juice,
filtering the fresh juice, and fractionating." (Id.)
FF 6. Koganov teaches "a method of extracting bioactive botanical
compositions that preserves the bioactivity of the composition ... [and]
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Application 13/228,150
botanical compositions that are able to meet the industry standards with
respect to shelf life, cytotoxicity, quality, and performance." (Koganov, i-f
7.)
FF 7. The Specification states that "[t]he term 'traditional extract' as used
herein refers to those extracts produced by solvent extraction of compounds
from plant material" and that the plant material can be dehydrated and/or
undehydrated. (Spec. 7, 11. 8-10.)
ISSUE
Whether a preponderance of evidence of record supports the
Examiner's conclusion of obviousness with respect to claim 1.
ANALYSIS
Rejection No. 1
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to optimize the cosmetic composition of Millikin (FF
1, 2) by including 1Tlicus serum in view of the advantages suggested in
Koganov (FF 6), with the expectation of obtaining an improved cosmetic
composition without toxicity. (Ans. 10.) Appellants argue that Millikin and
Koganov do not disclose a ficus serum fraction, and do not provide any
teaching or suggestion of an effective amount of ficus serum fraction.
(Appeal Br. 4.) Appellants also argue that Millikin teaches the use of a
traditional extract and Koganov teaches away from such extracts, and that
combining Millikin and Koganov would impermissibly change the principle
of operation of the extract of Millikin. (Id. at 5---6.)
We find that the Examiner has satisfied the burden of showing "some
articulated reasoning with some rational underpinning to support the legal
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Application 13/228,150
conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). Moreover, the Examiner has established a prima facie case of
obviousness and, as discussed below, Appellants have not overcome that
prima facie case.
Ficus Serum Fraction
Appellants argue Millikin and Koganov separately, and conclude that
neither reference, "alone or in combination, disclose a ficus serum fraction."
(Appeal Br. 4.) We are not persuaded by this argument. The test for
obviousness is what the combined teachings of Millikin and Koganov would
have suggested to those of ordinary skill in the art. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (citing cases). Moreover, one cannot establish
nonobviousness by attacking references individually where the Examiner
bases the rejection on a combination of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). We
thus agree with the Examiner that the combination of Millikin and Koganov
suggests a composition comprising a Ficus serum fraction.
Effective Amount of Ficus Serum Fraction
Appellants argue that "the Office has not shown where in the
combination of Millikin and Koganov there is any teaching or suggestion of
an effective amount of ficus serum fraction." (Appeal Br. 4.) In support of
that argument, Appellants reference the definition of "safe and effective
amount" from the Specification, and state that "one of ordinary skill in the
art would appreciate that an effective amount of ficus serum fraction is an
amount sufficient to significantly induce a a [sic] skin lightness benefit."
(Id. at 4--5.) Appellants also reference Table 9 of the Specification as
indicating "the differences in activity of a ficus serum fraction and a ficus
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Application 13/228,150
extract," arguing that, notwithstanding the teachings of Millikin, one of
ordinary skill would not necessarily recognize "what an effective amount of
ficus serum fraction is." (Id. at 5; Reply Br. 1-2.) Finally, Appellants argue
that "the Office must provide some evidence or reasoning to explain why the
ordinary skilled artisan would recognize what an effective amount of ficus
serum fraction is." (Appeal Br. 5.)
We are not persuaded by Appellants' arguments. "[W]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).
Here, Millikin and Koganov both address the effective amount of
Ficus extract or plant juice serum, respectively. (FF 3---6.) Moreover, the
Examiner found that "one of ordinary skill in the art would have been
motivated to, by routine experimentation[,] prepare a botanical cosmetic
composition comprising ficus serum fraction in an effective amount useful
to induce positive benefit." (Ans. 9.) In this case, as taught by Millikin, that
positive benefit would be skin lightening.
Appellants also argue that "the Office must provide some evidence or
reasoning" regarding a teaching or suggestion of the effective amount of
ficus serum fraction. (Appeal Br. 5.) That evidence and reasoning has been
provided by the Examiner and restated above. Moreover, Appellants are
reminded that the establishment of a prima facie case of obviousness, as the
Examiner has done here, shifts the burden of producing contrary evidence or
arguments to Appellants. See In re Best, 562 F.2d 1252, 1254--55 (CCPA
1977); In re Oetiker, 977 F.2d 1443, 1445--46 (Fed. Cir. 1992).
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Application 13/228,150
Finally, Appellants contend that the Examiner's response to
Appellants' "effective amount" argument is based on a perceived
equivalency of the traditional extract of Millikin with the ficus serum
fraction recited in claim 1. (Reply Br. 2-3.) However, contrary to
Appellants' contention, claim 1 is obvious for the reasons set forth above,
including that a person skilled in the art would have been motivated to
prepare, and capable of preparing, a cosmetic composition comprising an
effective amount of Ficus serum fraction. (Ans. 9.)
Principle of Operation and Teaching Away
Appellants argue that combining Millikin and Koganov "would
impermissibly change the principle of operation of the extract of Millikin."
(Appeal Br. 6.) Appellants attempt to supplement that argument with the
contention that "Koganov teaches away from the use of extracts such as
those disclosed in Millikin." (Id.)
We are not persuaded by Appellants' arguments. The principle of
operation of Millikin's botanical extract is to provide a positive skin benefit
"without undue toxicity, incompatibility, instability, allergic response, and
the like." (FF 3; Ans. 11-12; Millikin, i-f 13.) The plant cell juice serum of
Koganov has the same or similar principle of operation. (FF 4, 6.)
Accordingly, any difference between a botanical extract and plant cell juice
serum would not affect the overall principle of operation. See In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) ("difference in the circuitry-electrical
versus optical-does not affect the overall principle of operation of a
programmable arithmetic processor").
A reference may be found to "teach away" if the reference criticizes,
discredits, or otherwise discourages the claimed invention. See In re Fulton,
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391F.3d1195, 1201 (Fed. Cir. 2004). Koganov cannot be said to teach
away from the claimed invention because it teaches that a Ficus serum
fraction preserves the bioactivity of a botanical composition. (FF 4---6.)
Thus, far from criticizing, discrediting, or discouraging, Koganov
encourages the claimed invention.
Rejection No. 2
Appellants respond to Rejection No. 2 by relying on the same
arguments as set forth above in connection with Rejection No. 1.
Accordingly, for the reasons set forth above, we find that the Examiner has
established a prima facie case of obviousness and that Appellants have not
overcome that prima facie case.
CONCLUSION OF LAW
A preponderance of evidence of record supports the Examiner's
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 2-9
and 11-20 were not argued separately and therefore fall with claim 1.
SUMMARY
We affirm the rejections of all claims on appeal.
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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