Helga Biergiesser et al.

Patent Trials and Appeals Board

Nov 18, 2020

2019004196 (P.T.A.B. Nov. 18, 2020)

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.
10/995,203 11/24/2004 Helga Biergiesser 3321-P26196 7451
13897 7590 11/18/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELGA BIERGIESSER, THOMAS BLATT,
MELANIE SCHMIDT, FRANZ STÄB, UWE SCHӦNROCK
Appeal 2019-004196
Application 10/995,203
Technology Center 1600
Before ULRIKE W. JENKS, TAWEN CHANG, and
JOHN E. SCHNEIDER Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 147–194. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Beiersdorf A.G.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to the use of creatine and creatinine in
dermatological compositions for the treatments and prevention of various
skin conditions. Spec. ¶ 2. Claim 147 reproduced below, is illustrative of the
claimed subject matter:
147. An active substance combination comprising
(a) (i) creatinine and (ii) at least one of creatine, creatine
phosphate, creatine sulfate, creatine acetate, creatine ascorbate,
and an ester of creatine and a mono- or polyfunctional alcohol
(b) at least one retinoid selected from retinol, an ester of
retinol, retinoic acid, an ester of retinoic acid, and retin-1-al,
an initial weight ratio of creatinine to creatine being from about
10 : 1 to about 1 : 10.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Howard et al. US 6,524,611 B2 February 25, 2003
Shapiro et al. US 6,649,176 B1 November 18, 2003
Yu et al. US 2003/0017130 A1 January 23, 2003
Sanbe2 JP2000-247866 2000

REJECTION
The Examiner has rejected claims 147–194 under 35 U.S.C. § 103(a)
as unpatentable over Sanbe as evidenced by Howard, combined with Shapiro
and Yu.

2 Citations are to the English machine translation of record.
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OPINION
Appellant has presented separate arguments for four groups of claims:
Group 1 – claims 147, 148, 151, 152, 156–164, 166, 168–171, 173, 175–
180, 182, 183, 185, 186, and 188–194; Group 2 – claims 149, 167, and 181;
Group 3 – claims 155, 165, and 174; and Group 4 – claims 150, 153, 172,
184, and 187. We shall discuss each group of claims in turn.
Group 1 – Claims 147, 148, 151, 152, 156–164, 166, 168–171, 173, 175–
180, 182, 183, 185, 186, and 188–194
Issue
The issue with respect to this group of claims is whether a
preponderance of the evidence supports the Examiner’s conclusion that the
subject matter of the claims would have been obvious to one skilled in the
art at the time the invention was made over Sanbe.
The Examiner finds that Sanbe teaches the preparation of a skin care
composition containing creatine and/or creatinine in amounts ranging from
0.05% to about 5% by weight. Final Act. 7. The Examiner also finds that
Sanbe teaches the inclusion of vitamin A (retinol) to provide added anti-
wrinkling benefit. Id.
The Examiner finds that selection of the recited ratios would have
been obvious based on the teachings of the prior art. Id. at 8. The Examiner
finds that, given the amounts of creatine and creatinine taught by Sanbe,
[a]ny person would have readily be[en] capable of . . . selecting
the lower values of the more preferred range (i.e. 0.01%) or the
greater values for the less preferred range (i.e. 5%) for both of
creatinine and creatine and arrive at a ratio of 1:1 (which
obviates the instant claims) with a reasonable expectation that
the mixture would have some cosmetic/dermatological benefit.
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Id. The Examiner finds that the teachings of Howard that creatine and
creatinine have a natural equilibrium with each other reinforces the finding
that the claimed composition would have been obvious. Id.
The Examiner concludes
it would have been obvious to one of ordinary skill in the
art at the time the invention was made to use the
teachings of Sanbe with a reasonable expectation for
success in arriving at a composition comprising creatine,
creatinine and a retinoid such as retinol. Therefore, a
composition comprising creatine, creatinine and a
retinoid such as retinol is prima facie obvious to one of
ordinary skill in the art at the time the invention was
made, as evidenced by the references, especially in
absence of evidence to the contrary.

Id. at 9.
Appellant contends that Sanbe does not teach or suggest the claimed
combination. Appeal Br. 9–12. Appellants contend that Sanbe teaches the
use of creatinine alone in that Sanbe only discusses the advantages of using
creatinine and the examples are limited to compositions containing either
creatine or creatinine but not both. Id. Appellant contends that Sanbe does
not teach any advantage of adding creatine to the composition. Id.
Appellant also contends that Sanbe does not teach or suggest the
initial weight ratios recited in the claims. Id. at 12–19. Appellant also argues
that Sanbe does not teach that the initial weight ratio is a result effective
variable such that one skilled in the art would seek to optimize the ratios. Id.
at 13.
Appellant contends that while Howard may teach that there is a pH
dependent equilibrium between creatine and creatinine, that teaching does
not support a finding that Sanbe teaches the claimed ratios. Id. Appellant
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also contends that the teachings of Howard are limited to aqueous
compositions and that it is unknown if the compounds exhibit the same
behavior in other compositions such as emulsions. Id. at 14–15. Appellant
contends that while creatine and creatinine may be water soluble, they may
also be soluble in the oil phase and exhibit different properties. Id. at 16.
Appellant contends that Sanbe does not provide one skilled in the art
any motivation to use both creatine and creatinine nor does it provide a
motivation to use the two materials in the recited ratios. Id. at 17–19.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
A prior art reference may be read for all that it teaches, In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012), and “is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding the rejection of claim 147. We find the Examiner has
established that the subject matter of this claim would have been obvious to
one of ordinary skill in the art at the time the invention was made over
Sanbe. Appellant has not produced evidence showing, or persuasively
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argued, that the Examiner’s conclusion on obviousness are incorrect. Only
those arguments made by Appellant in the Briefs have been considered in
this Decision. Arguments not presented in the Briefs are waived. See 37
C.F.R. § 41.37(c)(1)(iv) (2018). We have identified claim 147 as
representative; therefore, all other claims in Group 1 fall with claim 147. We
address Appellants’ arguments below.
Appellant contends that Sanbe does not teach or suggest that creatine
and creatinine should be used in combination. Appeal Br. 9–11. Appellant
points out the Sanbe generally discusses the use of either creatine or
creatinine and that none of the examples teach the use of both compounds.
Id. We are unpersuaded by this argument.
Sanbe teaches skin preparations for external use “characterized by
containing . . . active substances which are (i) creatinine and/or creatine and
(ii) drug effect substance and/or a physiological active substance.” Sanbe ¶ 4
(emphasis added); see also id. ¶¶ 5, 8, claim 1. Sanbe also teaches that
creatine and creatinine have similar properties. Sanbe ¶ 9. The motivation to
combine the two compositions flows from Sanbe’s express teaching of a
composition containing both compounds. See Ans. 7–8.
Appellant also contends that Sanbe does not teach the ratios of
creatine to creatinine recited in the claims. Appeal Br. 12–13. Appellant
contends that there is no reason to use both creatine and creatinine let alone
optimize the ratio of the two components. Id. Appellant also contends that
while Howard may teach that creatine and creatinine reach equilibrium when
in an aqueous solution, there is no evidence that this might occur in other
systems such as that taught by Sanbe. Id. at 13.
We have considered Appellant’s argument and remain unpersuaded.
As discussed above, Sanbe specifically teaches the use of creatine and
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creatinine together and teaches the amounts of each. Sanbe ¶ 8, claim 1.
Sanbe also teaches that both creatine and creatinine share similar skin
enhancing effects. Sanbe ¶ 9. We agree with the Examiner that following the
teachings of Sanbe, one skilled in the art would reasonably arrive at the
composition containing both compounds within the ratios recited in the
claims. Final Act. 8, Ans. 9. “[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).
With respect to Appellant’s argument regarding Howard, again, we
are not persuaded. As discussed above, our conclusion that the ratios recited
in the claims would have been obvious are based on Sanbe alone and does
not rely on the teachings of Howard.3
Conclusion
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of claim
147 would have been obvious to one of ordinary skill in the art at the time
the invention was made over Sanbe. Claims 148, 151, 152, 156–164, 166,

3 While the Examiner does not rely on Howard for teaching the ratios recited
in the claims we note that Howard teaches
It is preferred that the mole:mole ratio of creatinine to
creatine is not more than 10:1. More preferred is a ratio
of not more than 5:1. Most preferred is a ratio of
creatinine to creatine which is not too high (since
creatinine is an inactive ingredient) and the most
preferred pH is 5 to 7 where the mole:mole ratio of
creatinine to creatine ranges from about 1.2:1 to 1:2.
Howard col. 6, ll. 17–23.
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168–171, 173, 175–180, 182, 183, 185, 186, and 188–194 have not be
argued separately and therefore fall with claim 147.
Group 2 – Claims 149, 167, and 181
Claims 149, 167, and 181 narrow the ratio of creatine to creatinine to
from 2:1 to 1:2. Appeal Br. 24, 27, and 29 (Claims App.). While the claims
have been argued separately, the reasoning and arguments presented by the
Examiner and Appellant are the same as discussed above. See Final Act. 8;
Appeal Br. 19; Ans. 9–11. For the reasons stated above we find that at
preponderance of the evidence supports the Examiner’s conclusion that the
subject matter of claims 149, 167, and 181 would have been obvious over
Sanbe.
Group 3 – Claims 155, 165, and 174
Claims 155, 165, and 174 add the limitation that the composition
comprises an ester of creatine and a mono- or polyfunctional alcohol.
Appeal Br. 20.
Issue
The issue with respect to this group of claims is whether a
preponderance of the evidence supports the Examiner’s conclusion that the
subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Sanbe combined with
Shapiro.
The Examiner findings with respect to Sanbe are discussed above.
The Examiner finds that Shapiro teaches a cosmetic composition comprising
mineral water and an active ingredient such as creatine and esters thereof.
Final Act. 9. The Examiner finds that Shapiro teaches that esters of creatine
maintain the same beneficial properties as the original compound. Id. The
Examiner concludes “[i]t would have been obvious to use creatine esters
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with a reasonable expectation for success in the final composition exhibiting
the desired cosmetic benefits. Here, combining prior art elements according
to known methods to yield predictable results is prima facie obvious.” Id.
Appellant contends that Shapiro does not teach the use of ester of
creatine and a mono- or polyfunctional alcohol in that Shapiro only specially
mentions creatine monohydrate and creatine hemisulfate. Appeal Br. 20.
Appellant contends that the Examiner has improperly used hindsight in
making the rejection. Id.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Sanbe combined with
Shapiro. Appellant has not produced evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
Only those arguments made by Appellant in the Briefs have been considered
in this Decision. Arguments not presented in the Briefs are waived. See 37
C.F.R. § 41.37(c)(1)(iv). We address Appellants’ arguments below.
Appellant contends that Shapiro does not teach the esters recited
in claim 155, as it only exemplifies creatine monohydrate and creatine
hemisulfate. Appeal Br. 20. Appellant also contends that none of the
examples contain any creatine compound. Id.
We have considered Appellant’s argument and are not persuaded.
Shapiro teaches the use of cosmetically acceptable creatine esters. Shapiro,
Abstr; col. 1, ll. 6–10, col. 2, ll. 23–29, col. 3, ll. 33–36, col. 4, ll. 30–45, col.
5, claim 2. Shapiro also teaches that “[w]hat is meant by cosmetically
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acceptable salt or ester is one that does not eliminate the therapeutic benefit
of the compound (e.g., its hydrating, nourishing, or metabolic enhancing
properties).” Id. col. 3, ll. 37–40. We agree with the Examiner that it would
have been obvious to substitute the creatine ester of Shapiro for the creatine
of Sanbe, because it would involve substituting one compound for its known
functional equivalent. See Final Act. 9. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007), citing United States v. Adams, 383 U.S. 39, 50-51 (1966).
Appellant also contends that the rejection is based on improper use of
hindsight. Appeal Br. 20–21. Again, we are not persuaded by this argument.
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In the present case,
the rejection at issue relies solely on the teaching of Sanbe and Shapiro. We
discern nothing in the rejection which is based on knowledge stemming
solely from the Appellant’s disclosure.
Conclusion
Based on the foregoing, we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of
claims 155, 165, and 174 would have been obvious to one of ordinary skill
in the art at the time the invention was made over Sanbe combined with
Shapiro.
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Group 4 – Claims 150, 153, 172, 184, and 187
Claims 150, 153, 172, 184, and 187 add the limitation that the
composition comprises one of retinyl palmitate, retin-1-al or an ester of
retinol.
Issue
The issue with respect to this group of claims is whether a
preponderance of the evidence supports the Examiner’s conclusion that the
subject matter of claims 150, 153, 172, 184, and 187 would have been
obvious to one of ordinary skill in the art at the time the invention was made
over Sanbe combined with Yu.
The Examiner’s findings with respect to Sanbe are discussed above.
The Examiner finds that while Sanbe does not teach the use of retinyl
palmitate retinoic acid, retin-1-al or an ester of a retinal, Yu teaches the use
of the compounds. Final Act. 9. The Examiner concludes “[t]he inclusion of
these retinoids in the formulation of Sanbe would have been obvious as the
simple substation of retinoic acid or even the mere addition of these known
retinoid actives to obtain predictable results is indicative of obviousness.” Id.
Appellant contends that Yu does not teach the recited retinoids as
retinoids are only listed as optional compounds and the only specific
retinoids listed in Yu are retinoic acid and 13-cis retinoic acid. Appeal Br.
22. Appellant also argues that none of the examples of Yu contain a retinoid.
Id.
Appellant contends that the rejection is based on the improper use of
hindsight. Id.

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Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Sanbe combined with
Yu. Appellant has not produced evidence showing, or persuasively argued,
that the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. §
41.37(c)(1)(iv). We address Appellants’ arguments below.
Appellant contends that the combination of Sanbe and Yu does not
teach or suggest the retinoids recited in the claims. Appeal Br. 22. We are
not persuaded.
Sanbe teaches that the disclosed composition can contain vitamin A
and vitamin A derivatives. Sanbe ¶ 12. Yu teaches a cosmetic composition
that contain retinoids and lists retinol, retinal, retinoic acid, retinyl acetate,
retinyl palmitate, methyl retinoate, ethyl retinoate, propyl retinoate and
isopropyl retinoate as examples of retinoids that can be used. Yu ¶¶ 227,
228, 391, 413, claim 5. We agree with the Examiner that it would have been
obvious to one of ordinary skill in the art to use one of the retinoids
identified in Yu in the composition of Sanbe, given Sanbe’s teaching to
include vitamin A or a vitamin A derivative. See Ans. 11.
We are not persuaded by Appellant’s argument regarding the lack of a
retinoid in any of the examples of Yu. Yu discusses the use or retinoid
several time in the disclosure and specially claims the recited retinoids. A
prior art reference may be read for all that it teaches, In re Mouttet, 686 F.3d
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1322, 1331 (Fed. Cir. 2012), and “is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972).
We are also unpersauded by Appellant’s argument regarding the
impermissible use of hindsight. Appeal Br. 22. Appellant has not pointed to,
nor do we discern, any teaching in the present disclosure that form the basis
for the present rejection. The rejection is based solely on the teachings of the
references. In re McLaughlin, 443 F.2d at 1395.
Conclusion
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of
claims 150, 153, 172, 184, and 187 would have been obvious to one of
ordinary skill in the art at the time the invention was made over Sanbe
combined with Yu.
CONCLUSION
The Examiner’s rejection of claims 147–194 under 35 U.S.C. § 103(a)
as unpatentable over Sanbe, Shapiro, and Yu, as evidenced by Howard, is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
147–194 103(a) Sanbe, Howard,
Shapiro, Yu
147–194
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED