Ex Parte Vielhaber et al

Patent Trial and Appeal Board

Jan 9, 2017

11917370 (P.T.A.B. Jan. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
1507-20 5910
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
11/917,370 12/13/2007
28249 7590 01/09/2017
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
Gabriele Vielhaber
01/09/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABIRELE VIELHABER, GERHARD SCHMAUS,
and RAVIKUMAR PILLAI.1
Appeal 2016-000866
Application 11/917,370
Technology Center 1600
Before MELANIE L. McCOLLUM, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
compositions to alleviate itching and skin redness which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to compositions containing
anthranilic acid amides and a cooling agent that alleviate itching. Spec. 1.
1 Appellants identify the Real Party in Interest as Symrise AG. Br. 3.
Appeal 2016-000866
Application 11/917,370
Cooling agents useful in the practice of the invention include menthol and
menthyl lactate. Spec. 12-13.
Claims 1—6, 10, 11, 16—25, 27, and 30 are on appeal. Claim 1 is
illustrative and reads as follows:
where the symbols in the compound or each compound of
Formula 1 are defined as follows:
m = 0, 1, 2 or 3,
p = 0, 1 or 2,
n = 0, lor 2,
where, when n = 1 or 2, R1 and R2 in pairs are each H or
together are another chemical bond,
where, when m = 1, 2 or 3, each X independently of the others
is OH, Oalkyl or Oacyl,
and where, when p = 1 or 2, each Y independently of the others
is OH, Oalkyl or Oacyl,
and
R3 =H or alkyl, R3 = H also representing the corresponding
cosmetically or pharmaceutically acceptable salts and solvates;
and
(b) one or more cooling agents, wherein the combination of said
compound(s) of Formula 1 and said cooling agent(s) results in a
mixture having improved efficacy for the alleviation of itching
and/or the reduction of skin reddening.
1. A mixture comprising:
(a) one or more compounds of Formula 1:
Y,
2
Appeal 2016-000866
Application 11/917,370
Claims 1—6, 10, 11, 16—25, 27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Herrmann,2 as evidenced by US
2006/0089413,3 in view of Zelle4 and Singh5.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1—6, 10, 11, 16—
25, 27, and 30 obvious over Herrmann combined with Zelle and Singh under
35 U.S.C. § 103(a).
The Examiner finds that Herrmann is directed to anthranilic acid
amides with the general formula:
2 Schmaus et al., WO 2004/047833 A2, published June 10, 2004. While
Schmaus is the first listed inventor, both the Examiner and the Appellants
refer to the reference and the English version as “Herrmann.” For
consistency, we will also refer to the reference as Herrmann.
3 Schmaus et al., US 2006/0089413 Al, published Apr. 27, 2006, which is
the English version of Herrmann above. All citations are to the English
version.
4 Zelle et al., US 2003/0147928 Al, published Aug. 7, 2003 (“Zelle”).
5 Singh at al., US 6,428,772 Bl, issued Aug. 6, 2002 (“Singh”).
DISCUSSION
Issue
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Appeal 2016-000866
Application 11/917,370
and their use for treating itching and skin reddening. Final Act. 5. The
Examiner finds that Zelle discloses the use of menthol to alleviate the
symptoms of itching. Id. The Examiner also finds that Singh discloses the
use of menthyl lactate to relieve itching. Final Act. 6. The Examiner
concludes that
it would have been obvious to modify Herrmann and Zelle such
that the antipruritic active was that of menthyl lactate as it was
known at the time the invention was made that menthol and
menthyl lactate are both known to treat itching (pruritis) and
provide a cooling benefit the treated skin. One would have a
reasonable expectation for success in formulating a composition
comprising the anthranilic acid amide together with a cooling
active, such as menthyl lactate, with a reasonable expectation
for success in arriving at a composition wherein the mixture of
Formula 1 and cooling agent results in a mixture having
improved efficacy for the alleviation of itching and/or reduction
of skin reddening.
Id.
Appellants contend that the claimed compositions have a surprising
synergistic effect. Appeal Br. 7. Appellants argue that none of the
references teach or suggest the claimed composition. Id. Appellants argue
that Herrmann does not teach the use of cooling agents. Appeal Br. 7—8.
Appellants argue that Zelle does not teach the use of menthol to control
itching and that Singh teaches away from using menthol lactate to control
itching. Appeal Br. 8—10.
Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.
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Application 11/917,370
FF1. Herrmann teaches the use of anthranilic acid amides and their
derivatives “for the treatment or prevention of itching (pruritus), skin
reddening, [and] development of weals and/or allergic skin reactions.”
Herrmann 123.
FF2. Herrmann teaches that
it is also possible, and in some cases advantageous, to
combine the histamine release inhibitors according to the
invention with further active compounds, for example with
other, optionally even synergistically intensifying, histamine
release inhibitors or with anti-inflammatory substances and/
or substances that reduce itching and reddening, the action
of which is based on a different principle of action.
Herrmann 1104.
FF3. Zelle teaches the use of a cream containing Vaseline, calendula
oil and menthol to alleviate itching. Zelle | 6.
FF4. Singh teaches that
Mild cooling of the skin is known to be effective in
reducing the itching which accompanies acne. To achieve a
mild cooling sensation, it is known to use alcohol, common in
acne treatments, as well as counter-irritants, such as camphor,
menthol and menthyl lactate. In a study reported by Bromm et
al in Neuroscience Letters 1995 March, 187:3, pp. 157-160, the
effects of cooling and menthol on histamine induced itching
were investigated. Both cooling and menthol were found to be
effective, although menthol does not reduce skin temperature.
Singh col. 1,11. 39-49.
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Application 11/917,370
Principles of Law
A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teaching of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the
nature of the teaching is highly relevant, and must be weighed
in substance. A known or obvious composition does not
become patentable simply because it has been described as
somewhat inferior to some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“Synergism, in and of itself, is not conclusive of unobviousness in that
synergism might be expected.” In re Kollman, 595 F.2d 48, 55 fn. 6 (CCPA
1979). Expected beneficial results are not evidence of nonobviousness. See
In re Skoner, 517 F.2d 947, 950 (CCPA 1975). “[W]e attribute no magic
status to synergism per se since it may be expected or unexpected.” In re
Huellmantel, 324 F.2d 998, 1003 (CCPA 1963).
Analysis
Claim 1 is representative of the rejected claims and is directed to a
composition comprising an anthranilic acid amide and a cooling agent
having improved efficacy for the alleviation of itching and/or skin
reddening.
We agree with the Examiner that the subject matter of claim 1 would
have been obvious to one skilled in the art at the time the invention was
made. Herrmann teaches the use of anthranilic acid amides and their
derivatives to alleviate itching and skin redness. FF1. Herrmann also
teaches that other itch relieving compounds can be used with the anthranilic
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Application 11/917,370
acid amides. FF2. Singh teaches that cooling agents such as menthol and
menthyl lactate can be used to alleviate itching and skin redness. FF4. We
agree with the Examiner that it would have been obvious to combine the
teachings of Hermann and Singh to create a composition for the treatment of
itching. Final Act. 6.
Appellants contend that Zelle does not teach the use of menthol as a
treatment of itching. Appeal Br. 8—9. While we agree that the teaching of
Zelle may be ambiguous, Singh provides a clear teaching that menthol and
menthyl lactate can be used as cooling agents to alleviate itching. FF4.
Thus the combination of Singh and Herrmann renders the subject matter of
claim 1 obvious.
Appellants argue that Singh teaches away from the use of menthol and
menthyl lactate to alleviate itching citing to the passage in Singh where is
states that “[a]part from any effectiveness in reducing itching,
counterirritants are known to be irritating to the skin, as is alcohol, so it
would be desirable to achieve cooling without such compounds.” Singh
col.l, 11. 50—53. While Singh teaches that the use of certain cooling agents
may be less desirable than some alternatives, this is not a teaching away
from making the claimed combination.
Appellants also argue that evidence of synergistic results rebuts the
Examiner’s prima facie case of obviousness. We are unpersuaded. To rebut
a prima facie case of obviousness, Appellants must show not only a
synergistic effect, but that the effect is unexpected. See In re Skoner, 517
F.2d at 950. While Appellants may have produced evidence that combining
the two ingredients produces a synergistic effect, Appellants have only
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Application 11/917,370
offered attorney argument to show that the result is unexpected. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 1 would have been obvious over Herrmann
combined with Zelle and Singh under 35 U.S.C. § 103(a).
Claims 2—6, 10, 11, 16—25, 27, and 30 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a).
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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