Rossana Castellana

Patent Trials and Appeals Board

Jul 20, 2020

2019006605 (P.T.A.B. Jul. 20, 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.
12/086,453 06/12/2008 Rossana Castellana G0830-4US 7795
159443 7590 07/20/2020
Calderone Bullock LLC
Two Greentree Centre, Suite 301
9000 Lincoln Drive East
Marlton, NJ 08053
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
USP@calderonebullock.com
docketing@calderonebullock.com
kbullock@calderonebullock.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROSSANA CASTELLANA
____________

Appeal 2019-006605
Application 12/086,453
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134(a) involving claims to a
product for treating skin or mucous membranes. The Examiner rejected the
claims as indefinite and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as the inventor,
Rossana Castellana (see Appeal Br. 4).
2 We have considered and herein refer to the Specification of Apr. 12, 2012
(“Spec.”); Non-Final Office Action of May 29, 2018 (“Non-Final Act.”);
Appeal Brief of Mar. 28, 2019 (“Appeal Br.”); Examiner’s Answer of July
1, 2019 (“Ans.”); and Reply Brief of Sept. 2, 2019 (“Reply Br.”).
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Statement of the Case
Background
“[T]he practice of chemical peeling in [] surgery is known, to treat
skin problems by means of the direct application on the region of damaged
skin of various chemical substances such as trichloroacetic acid (TCA), in
various concentrations, according to the desired and necessary depth of the
intervention” (Spec. ¶ 5). “However, TCA is an extremely aggressive agent
which, when it is very concentrated, on the one hand brings the benefits of
exfoliation and renovation of the epidermis, and on the other hand, in order
to obtain these benefits, has serious side effects” (id. ¶ 11). “One purpose of
the present invention is to produce a product for treating the skin and the
mucous membranes, based on TCA, which allows a tissue renewal due to
the TCA, but without damaging the surface layers of the epidermis” (id.
¶ 12).
The Claims
Claims 104–119 are on appeal. Independent claim 104 is
representative and reads as follows:
104. A product for treating the skin and mucous
membranes selected from a cream, an ointment, a liquid, a gel,
and an aerosol, wherein the product is prepared by:

mixing a suitable quantity of trichloroacetic acid with a
composition of hydrogen peroxide (H2O2) to form a first
mixture, wherein the trichloroacetic acid in the first mixture is
in a concentration of 30% to 35% w/w and the composition of
hydrogen peroxide in the first mixture is present in a
concentration of about 50% to about 85%

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providing a determinate quantity of basic compound to
buffer the first mixture to obtain a pH value of between 2.3 and
2.6 of the first mixture; and

adding the basic compound to the first mixture in order to
buffer the first mixture,

wherein the buffered first mixture is a product.

(Claims App.).

The Rejections
A. The Examiner rejected claims 104–119 under 35 U.S.C. § 112, second
paragraph, as indefinite (Non-Final Act. 3–5).
B. The Examiner rejected claims 104–108 and 112–116 under 35 U.S.C.
§ 103(a) as obvious over Sakon3 (Non-Final Act. 5–10).
C. The Examiner rejected claims 109–111 and 117–119 under 35 U.S.C.
§ 103(a) as obvious over Sakon and McCoy4 as evidenced by Glycerine5
(Non-Final Act. 10–13).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds “[t]he claims are directed to a product, however,
the product is defined by product-by-process limitations of an intermediate
to be incorporated into the final product” (Non-Final Act. 4). The Examiner
finds that the claims do not define the components and their weight
percentages in the product (id.). The Examiner concludes “one of ordinary

3 Sakon et al., US 5,560,857, issued Oct. 1, 1996.
4 McCoy, US 5,259,888, issued Nov. 9, 1993.
5 The Soap and Detergent Association, Glycerine & Oleochemical Division,
Glycerine: an overview (1990).
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skill in the art would not be reasonably apprised of the scope of the
invention” (id.).
Appellant contends:
In this instance, the claims are definite as the process
recited therein clearly and precisely informs persons skilled in
the art of the boundaries of [the] protected subject matter. The
claims at issue describe a product as being prepared by
preparation of a first mixture, provision of a determinate
quantity of basic compound to buffer the first mixture to the
recited pH level and adding the basic compound to the first
mixture

(Reply Br. 3).

The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the claims are indefinite?
Principles of Law
“[F]or a claim to comply with section 112, paragraph 2, it must satisfy
two requirements: first, it must set forth what ‘the applicant regards as his
invention,’ and second, it must do so with sufficient particularity and
distinctness, i.e., the claim must be sufficiently ‘definite.’” Solomon v.
Kimberly-Clark Corp., 216 F.3d 1372, 1377 (Fed. Cir. 2000).
Analysis
We find Appellant has the better position. As stated by Appellant, the
claims recite a product-by-process (Reply Br. 2). Because determining the
patentability of product-by-process claims depends on the product itself, we
review the claims to identify the product at issue. See In re Thorpe, 777
F.2d 695 (Fed. Cir. 1985).
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Appellant argues the product at issue is a “buffered first mixture”
(Appeal Br. 5). Claims 104 and 112 each recite a product prepared by the
steps of: (1) mixing TCA and H2O2, and (2) adding a quantity of basic
compound to buffer the first mixture, thereby forming a buffered first
mixture.6 Accordingly, claimed process steps result in a buffered first
mixture, and therefore, the claims identify the product prepared by the
claimed process. Because the claims identify the product prepared by the
claimed process, we determine that the claims set forth the invention with
sufficient particularity and distinctiveness.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that the claims are indefinite under 35 U.S.C. § 112,
second paragraph.

B and C. 35 U.S.C. § 103(a)
Because both rejections rely on Sakon as a primary reference, we
discuss the rejections together.
The Examiner finds Sakon teaches “an aqueous acidic solution (the
claimed liquid) having a pH in the range from 1 or more to less than 5
containing . . . hydrogen fluoride [HF], from 0.3 to 20.0% by weight H2O2,
and at least one of acids selected from the group consisting of trichloroacetic
acid” (Non-Final Act. 7). The Examiner finds Sakon teaches:

6 The claims recite “wherein the buffered first mixture is a product” (Claims
App., emphasis added). Although we find the claims set forth the invention
with sufficient particularity, the duplicative recitation of “a product,” in
addition that of the preamble, does not improve the clarity of the claim and
“the product” would be preferred.
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compositions with pH of 2.4, 2.5, and 2.6 in examples 4, 8, 13,
15, 17–31, 36, and 37, compositions comprising 0.3% by
weight of H2O2 (3 g/L assuming the density of the solution
being about 1000 g/L)) in example 31 and 45, [and a]
composition comprising 0.01 M trichloroacetic acid (1.63 g/L)
in example 3

(id. at 7). The Examiner, taking into account “the inferences and creative
steps that a person of ordinary skill in the art would employ,” determines “it
would have obvious to have selected various combinations of various
disclosed ingredients . . . from within a prior art disclosure, to arrive [at]
compositions ‘yielding no more than one would expect from such an
arrangement’” (id. at 10).
The issue with respect to this rejection is:
Does a preponderance of evidence of record support the Examiner’s
conclusion that the prior art renders the claims obvious?
Findings of Fact (“FF”)
1. Sakon teaches “a solution for cleaning silicon semiconductors
and silicon oxides” (Sakon 1:6–7).
2. Sakon teaches a cleaning solution that includes “an aqueous
solution containing 0.005% by weight or more to less than 0.05% by weight
hydrogen fluoride, 0.3% by weight or more to 20.0% by weight or less
hydrogen peroxide having a pH of one or more to less than 5” (Sakon 3:31–
35).
3. Sakon teaches the “aqueous acidic solution may contain, in
addition of the hydrogen fluoride and hydrogen peroxide, at least one of
acids, salts and bases.” The acids may include trichloroacetic acid. The
bases may include ammonia (Sakon at 44–53).
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4. Sakon’s Table 1 includes Examples 3, 4, 8, 15, 31, and 45 of
cleaning solutions incorporating various additives, reproduced in part below:
Example No.
of the
present
invention
Composition of cleaning solution
HF H2O2 Other additives
wt.% wt.% mol/liter pH
3 0.048 10.0 0.01 trichloroacetic acid 1.9
4 0.045 15.0 None 2.4
8 0.030 8.0 None 2.5
15 0.030 3.0 0.01 ammonium chloride 2.5
31 0.020 0.3 None 2.6
45 0.005 0.3 None 3.0

(Sakon 9–12).

Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).

Analysis
Appellant contends “[a] person of skill in the art would not have been
motivated to modify Sakon to arrive at the invention as claimed” (Appeal
Br. 10). Appellant asserts that a person of ordinary skill in the art would
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have been “a clinical researcher or medical doctor with extensive
dermatological expertise” (id.). Appellant contends that a person of ordinary
skill in the art would not have sought to modify “a reference disclosing an
industrial process, e.g., cleaning [] semiconductor surface[s]” to devise a
treatment for skin and mucous membranes (id.).
Appellant further contends that the Examiner does not “provide any
motivation other than a generic statement that the elements of the claims
existed individually, and that their re-arrangement is obvious” (id.).
Appellant argues, that the Examiner failed to “articulate and reason or
motivation for the ‘re-arrangement’” (id.).
We find Appellant’s argument persuasive. The Examiner refers to the
creative steps employed by those of ordinary skill in the art to arrive at an
expected composition (see Non-Final Act. 10). The “analogous arts test”
governs the question of whether a skilled artisan would have looked to an
unrelated prior art reference. Under this test, “a reference is either in the
field of the applicant’s endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on [that] reference as
a basis for rejection.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006).
The prior art cited by the Examiner relates to cleaning solutions for
semiconductors, not compositions for treating the skin or mucous
membranes (see FF 1). The Examiner does not establish that Sakon is in the
same field of endeavor as McCoy or Glycerine or that these references are
pertinent to the same problem. The Examiner does not explain why a person
of ordinary skill in the remote art of semiconductor cleaning solutions would
have modified the component amounts to arrive at the claimed invention in
the dermatological field. Moreover, the Examiner does not explain why a
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person of ordinary skill in the art in a dermatological field would have had a
reason “to combine the elements in the way the claimed new invention
does.” See KSR at 418. Accordingly, the Examiner has not identified a
reason why a person of ordinary skill in the art would have modified the
prior art, and we do not sustain the Examiner’s rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the prior art renders claims 104–119 obvious under 35 U.S.C. § 103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
104–119 112, second
paragraph
Indefiniteness 104–119
104–108,
112–116
103(a) Sakon 104–108,
112–116
109–111,
117–119
103(a) Sakon, McCoy,
Glycerine
109–111,
117–119
Overall
Outcome
104–119

REVERSED