Ex Parte Swanson et alDownload PDFPatent Trial and Appeal BoardMar 24, 201613228150 (P.T.A.B. Mar. 24, 2016) Copy Citation 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"). 2 Appeal2014-001548 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] 3 Appeal2014-001548 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 4 Appeal2014-001548 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 5 Appeal2014-001548 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). 6 Appeal2014-001548 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, 7 Appeal2014-001548 Application 13/228,150 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 8 Copy with citationCopy as parenthetical citation