BEIERSDORF AG

Patent Trials and Appeals Board

Jan 20, 2022

2021000759 (P.T.A.B. Jan. 20, 2022)

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. 15/306,585 10/25/2016 Sven FEY 3321-P50332 2706 13897 7590 01/20/2022 Abel Schillinger, LLP 12414 Alderbrook Drive Suite 201 Austin, TX 78758 EXAMINER GULLEDGE, BRIAN M ART UNIT PAPER NUMBER 1699 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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 SVEN FEY, DANA RETZER, and JANNE MOEBIUS ____________ Appeal 2021-000759 Application 15/306,585 Technology Center 1600 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and ULRIKE W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s decision to reject claims 10-29 (Final Act.2 1). 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 “BEIERSDORF AG of Hamburg, Germany” (Appellant’s August 3, 2020, Appeal Brief (Appeal Br.) 3). 2 Examiner’s January 7, 2020, Final Office Action. Appeal 2021-000759 Application 15/306,585 2 STATEMENT OF THE CASE Appellant’s disclosure “relates to stabilized, oxidation-sensitive and/or UV-sensitive active ingredients, and also to cosmetic and dermatological formulations comprising stabilized oxidation-sensitive and/or UV-sensitive active ingredients” (Spec.3 1). Appellant’s independent claims 10 and 28 are reproduced below: 10. A cosmetic product, wherein the product comprises a container and a cosmetic preparation inside the container, the container comprising a tubular body whose walls have a transmittance for visible light of from 25% to about 100% and on whose top end a dispenser head is mounted and which is bounded at its bottom by a movable drawing plunger, and the cosmetic preparation comprising (i) an external fluid gel phase on aqueous basis having a transmittance for light of a wavelength of 700 nm of from 30% to 100% and/or having a viscosity at 25°C and a shear rate of about 10 of from 1,000 to 10,000 mPas; optionally comprising customary auxiliaries selected from ethanol, isopropanol, propylene glycol, glycerol, ethylene glycol, ethylene glycol monoethyl ether, ethylene glycol monobutyl ether, propylene glycol monomethyl ether, propylene glycol monoethyl ether, propylene glycol monobutyl ether, diethylene glycol monomethyl ether, diethylene glycol monoethyl ether, silicon dioxide, aluminum silicates, hyaluronic acid, xanthan gum, hydroxypropylmethylcellulose, or polyacrylates; and/or adjuvants which are dispersible or soluble in water, and (ii) an internal solid particulate phase comprising substantially spherical particles whose average diameter is from 0.1 mm to 10 mm, a volume ratio (ii) : (i) ranging from 20% : 80% to 74%: 26%. (Appeal Br. 26.) 28. A cosmetic product, wherein the product comprises a container and a cosmetic preparation inside the container, the 3 Appellant’s October 25, 2016, Specification. Appeal 2021-000759 Application 15/306,585 3 container comprising a tubular body whose walls have a transmittance for visible light of from 25% to about 100% and on whose top end a dispenser head is mounted and which is bounded at its bottom by a movable drawing plunger, and the cosmetic preparation comprising (i) an external fluid gel phase on aqueous basis comprising one or more hydrocolloids selected from celluloses, methylcelluloses and polyacrylates and having a transmittance for light of a wavelength of 700 nm of from 30% to 100% and a viscosity at 25°C and a shear rate of about 10 of from 5,000 to 8,000 mPas; optionally comprising customary auxiliaries selected from ethanol, isopropanol, propylene glycol, glycerol, ethylene glycol, ethylene glycol monoethyl ether, ethylene glycol monobutyl ether, propylene glycol monomethyl ether, propylene glycol monoethyl ether, propylene glycol monobutyl ether, diethylene glycol monomethyl ether, diethylene glycol monoethyl ether, silicon dioxide, aluminum silicates, hyaluronic acid, xanthan gum, hydroxypropylmethylcellulose, or polyacrylates; and/or adjuvants which are dispersible or soluble in water, and (ii) an internal solid particulate phase comprising substantially spherical particles whose average diameter is from 2 mm to 7.5 mm and comprising (A) a polymer matrix which is substantially insoluble in water, (B) one or more substances selected from ubiquinones and/or plastoquinones, (C) one or more light filter substances selected from metal oxide pigments, and, optionally, (D) one or more light filter substances selected from customary cosmetic light protection filter substances, a volume ratio (ii) : (i) ranging from about 60%: 40% to 40%: 60%. (Id. at 30-31.) Appeal 2021-000759 Application 15/306,585 4 Grounds of rejection before this Panel for review: Claims 10-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda4 and Hilliard.5 Claims 22-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda, Hilliard, and Chevlier.6 Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda, Hilliard, and Neubourg.7 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS The rejection over the combination of Masuda and Hilliard: The cosmetic product set forth in Appellant’s claim 10,8 reproduced above, comprises a container and a cosmetic preparation inside the container. The container of Appellant’s claim 10, comprising a tubular body whose walls have a transmittance for visible light of from 25% to about 100% and on whose top end a dispenser head is mounted and which is bounded at its bottom by a movable drawing plunger. 4 Masuda, US 7,025,233B2, issued Apr. 11, 2006. 5 Hilliard Jr., US 2012/0276177 A1, published Nov. 1, 2012. 6 Chevalier, US 2002/0197288 A1, published Dec. 26, 2002. 7 Neubourg, US 2012/0315315 A1, published Dec. 13, 2012. 8 Appellant’s claims 11-21 depend directly or indirectly from Appellant’s claim 10. Appeal 2021-000759 Application 15/306,585 5 The cosmetic preparation of Appellant’s claim 10 comprises (i) an external fluid gel phase on aqueous basis having a transmittance for light of a wavelength of 700 nm of from 30% to 100% and/or having a viscosity at 25°C and a shear rate of about 10 of from 1,000 to 10,000 mPas and (ii) an internal solid particulate phase comprising substantially spherical particles whose average diameter is from 0.1 mm to 10 mm.9 Appellant’s claim 10 further requires that the volume ratio of elements (ii) : (i) of the cosmetic preparation ranges from 20% : 80% to 74%: 26%. Examiner finds that Masuda generally discloses a container within the scope of Appellant’s claimed invention, but “does not discuss the transparency of the container, nor . . . the specific components of the cosmetic composition contained therein” (Ans. 3 (citing Masuda Abstract, Figure 1, 1: 36-39, 5:12-60)). Examiner further finds that Hilliard discloses a transparent container (Ans. 5). With regard to the cosmetic preparation, Examiner finds that Hilliard discloses a cosmetic preparation within the scope of Appellant’s claim 1, with the exception of Appellant’s claimed volume ratio (Ans. 3-5 (citing Hilliard Abstract, Figures 1-2, Example 1, Claim 11, ¶¶ 7-9, 21, 27, 28, 51, and 70)). Examiner recognizes that Hilliard does not disclose the volume ratio of particles to gel required by Appellant’s claimed invention, but instead discloses that particles are present in its composition in a range of 0.01-25 wt% (Ans. 4). According to Examiner “[t]here is no simplistic conversion between volume and mass, as even from the working example disclosed by Hilliard et al. (example 1) the volume of the particles cannot be 9 We do not address the optional elements that may present in the cosmetic preparation set forth in Appellant’s claim 10. Appeal 2021-000759 Application 15/306,585 6 determined without preparing the formulation” (id. at 4-5). Thus, Examiner concedes that “it is unclear whether the example prepared by Hilliard . . . (or other embodiments suggested [therein]) reads upon or overlaps” Appellant’s claimed volume ratio (id. at 5). Nonetheless, Examiner reasons that, on this record, a person of ordinary skill in this art would have found it obvious-to-try various combinations of elements set forth in Hilliard and, thus, may ultimately formulate a product having the specific volume ratio required by Appellant’s claimed invention (see id.). Specifically, Examiner finds: [T]hat with respect to amounts, obvious to try is an appropriate motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See MPEP 2144.05(II)(B). And the requirements for an obvious to try rationale are present in the instant situation, as there is a recognized problem in the art (as discussed by Hilliard . . ., as the particles provide a visually distinguishable, oriented pattern that is aesthetically pleasant to provide consumer appeal and product identification), a finite number of identified, predictable potential solutions (the amounts), and a finding that one of ordinary skill in the art could have persuade potential solutions with a reasonable expectation of success (Hilliard . . . teaches the particles can be quite varied and provide no warnings as to when they do not work). There are no functional limitations in the claims, and there is no evidence on the record that the instantly claimed amounts and ranges are critical to achieving any particular outcome. See MPEP 2143(I)(E). (Id. (emphasis added).) Thus, based on the combination of Masuda and Hilliard, Examiner concludes that, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious to have used the container taught by Masuda to deliver the composition taught by Hilliard. . . . Doing so would utilize fluid discharge pump which can discharge a fluid accurately while its production costs are low and its configuration is simple, and by Appeal 2021-000759 Application 15/306,585 7 making it transparent, the consumer can view the pattern of the cosmetic through the package. Thus, the product recited by independent instant claim 10 is rendered prima facie obvious. (Id. at 5-6.) We are not persuaded. As discussed above, Examiner finds that Masuda “does not discuss . . . the specific components of the cosmetic composition contained” within its container and, thus, Examiner relies on Hilliard to make up for this deficiency in Masuda (Ans. 3). Hilliard “relates to compositions, and in particular to multi-phase compositions comprising visually distinguishable patterns formed from particles dispersed, oriented, and suspended in at least one of the phases” (Hilliard ¶ 2). As Hilliard explains, “the ‘multi-phase’ personal care compositions comprise at least two visually distinguishable phases that are present within the container as a visibly distinguishable pattern formed as a result of visible particles being present in at least one of the visually distinguishable phases” (id. ¶ 20). As discussed above, Examiner finds that the problem addressed by Hilliard relates to the use of particles to “provide a visually distinguishable, oriented pattern that is aesthetically pleasant to provide consumer appeal and product identification” (Ans. 5). Examiner asserts that Hilliard provides a “finite number of identified, predictable potential solutions” to the foregoing problem, specifically the amount of particle present in the composition (id.). Hilliard’s disclosure, however, is not so limited. As Appellant explains, Hilliard discloses, “[a]side from just changing amounts of the particles, a person of ordinary skill in the art can vary (i) size, (ii) shape, (iii) color, (iv) aspect ratio, (v) material, or (vi) composition of the particles, to name just a few possible approaches” (Appeal Br. 16; see generally Hilliard ¶¶ 26, 27, and 42-45). Appeal 2021-000759 Application 15/306,585 8 We recognize: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that is was obvious under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For the reasons discussed above, however, we find that Examiner failed to establish that the combination of Masuda and Hilliard provides a finite number of identified, predictable solutions that would have led a person of ordinary skill in this art to Appellant’s claimed volume ratio. As the O’Farrell Court explained, the obvious-to-try rationale does not apply when what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possible arrived at a successful result, where the prior art gave . . . no direction as to which of many possible choices is likely to be successful. In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). Stated differently: “[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). In re Stepan Company, 868 F.3d 1342, 1347 (Fed. Cir. 2017). For the foregoing reasons, we find that Examiner failed to establish an evidentiary basis, on this record, to support a conclusion that the combination of Masuda and Hilliard makes obvious Appellant’s claimed Appeal 2021-000759 Application 15/306,585 9 invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). The rejection over the combination of Masuda, Hilliard, and Chevlier: The product of Appellant’s independent claim 28,10 reproduced above, is substantially similar to Appellant’s independent claim 10, discussed above, and requires, inter alia, a volume ratio (ii) : (i) ranging from about 60% : 40% to 40% : 60%. Examiner relies on the combination of Masuda and Hilliard as discussed above (Ans. 6-7). Examiner further finds that Hilliard discloses “visible beads are prepared with materials which include sodium alginate,” and “may also include pigments and benefit agents,” such as TiO2 and anti- aging agents, respectively (id. at 7 (citing Hilliard ¶¶ 40, 42, 45, and 102); see also Ans. 7 (citing Hilliard ¶ 45) (Examiner finds that Hilliard “suggests including UV absorbers”). Examiner finds, however, that the combination of Masuda and Hilliard does not disclose “ubiquinone” or “benzophenone-3” and relies on Chevalier to make up for these deficiencies (Ans. 7 (citing Chevalier Abstract, ¶¶ 5, 96)). Based on the combination of Masuda, Hilliard, and Chevlier, Examiner concludes that, before the effective filing date of Appellant’s 10 Appellant’s claims 22-27 depend directly or indirectly from Appellant’s claim 10 and Appellant’s claim 29 depends directly from Appellant’s claim 28. Appeal 2021-000759 Application 15/306,585 10 claimed invention, it would have been prima facie obvious “to have used coenzyme Q10 as an anti-aging compound” and “benzophenone-3 as a UV- absorber” in the product suggested by the combination of Masuda and Hilliard (Ans. 7). Examiner failed, however, to establish an evidentiary basis on this record to support a conclusion that Chevlier makes up for the deficiencies in the combination of Masuda and Hilliard discussed above (see generally Appeal Br. 22-23). The rejection over the combination of Masuda, Hilliard, and Neubourg: As discussed above, Appellant’s claim 19 depends from Appellant’s independent claim 10. Examiner relies on the combination of Masuda and Hilliard as discussed above (Ans. 7-8). In addition, Examiner finds that although Hilliard “suggests the inclusion of surfactants,” the combination of Masuda and Hilliard “does not suggest the inclusion of ammonium acryloyldimethyl- taurate/vinylpyrrolidone” (id. (citing Hilliard ¶ 79)). Examiner relies on Neubourg to “disclose cosmetic formulations, and teaches that ammonium acryloyldimethyltaurate/vinylpyrrolidone is a useful emulsifier for such cosmetics” (Ans. 8 (citing Neubourg ¶ 129)). Based on the combination of Masuda, Hilliard, and Neubourg, Examiner concludes that, before the effective filing date of Appellant’s claimed invention, it would have been prima facie obvious “to have used ammonium acryloyldimethyltaurate/vinylpyrrolidone as an emulsifier in the composition” suggested by the combination of Masuda and Hilliard” (Ans. 8). Appeal 2021-000759 Application 15/306,585 11 Examiner failed, however, to establish an evidentiary basis on this record to support a conclusion that Chevlier makes up for the deficiencies in the combination of Masuda and Hilliard discussed above (see generally Appeal Br. 24). CONCLUSION The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 10-21 under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda and Hilliard is reversed. The rejection of claims 22-29 under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda, Hilliard, and Chevlier is reversed. The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over the combination of Masuda, Hilliard, and Neubourg is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 10-21 103 Masuda, Hilliard 10-21 22-29 103 Masuda, Hilliard, Chevalier 22-29 19 103 Masuda, Hilliard, Neubourg 19 Overall Outcome 10-29 REVERSED