Ex Parte Blatt et al

Patent Trials and Appeals Board

May 30, 2019

10995208 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/995,208 11/24/2004
13897 7590 06/03/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Thomas Blatt
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.
3321-P26197 7452
EXAMINER
PURDY, KYLE A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte THOMAS BLATT, THOMAS RASCHKE,
CHRISTOPHER MUMMERT, and VOLKER KALLMA YER1
Appeal 2018-001396
Application 10/995,208
Technology Center 1600
Before ULRIKE W. JENKS, TA WEN CHANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims to cosmetic compositions which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the Real Party in Interest as Beiersdorf AG. Appeal Br.
3.
2 We have considered and herein refer to the Specification ofNov. 24, 2004
("Spec."); Final Office Action of Sept. 4, 2016 ("Final Act."); Appeal Brief
of May 16, 2017 ("Appeal Br."); Examiner's Answer of Sept. 22, 2017
("Ans."); and Reply Brief Nov. 21, 2017 ("Reply Br.").
Appeal 2018-001396
Application 10/995,208
STATEMENT OF THE CASE
"Cosmetic skin care is primarily understood to mean strengthening or
restoring the natural function of the skin as a barrier against environmental
influences (for example, dirt, chemicals, microorganisms) and against the
loss of endogenous substances (for example, water, natural fats,
electrolytes)." Spec. ,-J 3.
Chronological skin aging is caused, for example, by
endogenous, genetically determined factors. The following
structural damage and functional disorders can arise, also under
the term "senile xerosis", for example, in the epidermis and the
dermis as a result of aging:
a) Dryness, roughness and formation of dryness wrinkles,
b) Itching and altered pore structure of the skin
c) Reduced re greasing by sebaceous glands ( e.g. after
washing).
Exogenous factors, such as UV light and chemical noxae,
can have a cumulative effect and, for example, accelerate or
supplement the endogenous aging processes. In the epidermis
and dermis, for example, the following structural damage and
functional disorders arise in the skin in particular as a result of
exogenous factors; these are more far-reaching than the degree
and quality of the damage in the case of chronological aging:
d) Visible vascular dilation (teleangiectases, cuperosis);
e) Flaccidity and formation of wrinkles;
f) Local hyperpigmentation, hypopigmentation and
abnormal pigmentation (e.g., senile keratoses) and
g) Increased susceptibility to mechanical stress ( e.g.,
cracking).
Spec. ,-J,-J 6-7. The Specification describes compositions "for the care of skin
that has aged naturally and to the treatment of secondary damage from light-
aging, in particular the phenomena listed under a) through g)." Spec. ,-J 8.
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Application 10/995,208
Claims 144-158, 161, 162, and 165-189 are on appeal. Claim 144 is
representative of the rejected claims and reads as follows:
144. A cosmetic or dermatological preparation, wherein
the preparation comprises
(a) from about 0.001 % to about 10% by weight of at
least one of creatine and a creatine compound,
(b) from about 0.001 % to about 10% by weight of
creatinine, and
( c) at least about 0.1 % by weight of one or more
hydrocolloids.
Claims 144-158, 161, 162, and 165-189 have been rejected under 35
U.S.C. § 103(a) as unpatentable over Sanbe3 in view of Bleckmann4 and
Riedel. 5
3 Sanbe, JP 2000/247866, published Sept. 12, 2000 ("Sanbe"). References
are to the human translation of record. We note that the translation lists the
inventor as Sanbu but both the Examiner and Appellants refer to the
reference as Sanbe. See, e.g., Ans. 3; Appeal Br. 7. For consistency we
refer to the reference as Sanbe.
4 Bleckmann et al., US 2004/0197279 Al, published Oct. 7, 2004
("B leckmann").
5 Riedel et al., US 2002/0182234 Al, published Dec. 5, 2002 ("Riedel").
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Application 10/995,208
OBVIOUSNESS
Appellants have first presented arguments for all of the rejected
claims as a whole and then presented separate arguments for different groups
of claims. We separately address each group of claims.
Set 1 - Claims 144-152, 156-158, 162, 166-170, 176, and 1776
Issue
The issue with respect to this set of claims is whether the Examiner
properly determined that the subject matter of the claims would have been
obvious over Sanbe alone or in combination with Bleckmann and Riedel.
The Examiner finds that Sanbe teaches a composition comprising both
creatine and creatinine where each component can be present in amounts
ranging from 0.05% to 5% by weight. Ans. 3. The Examiner also finds that
Sanbe teaches that the composition may have a pH of from 3 to 9 and
exemplifies a pH of 6. Id. The Examiner finds that Sanbe teaches the use of
xanthan gum and glycerol in the compositions. Id.
Appellants contend that Sanbe does not teach or suggest the claimed
combination. Appeal Br. 8-10. 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. Appellants contends that Sanbe does
not teach any advantage of adding creatine to the composition. Id.
6 Appellants make additional arguments with respect to claims 153-155,
161, 165, 171, 172, 174, 178, 179, 182, 183, 188, and 189. (Appeal Br. 12-
20.) These claims and claims dependent from them are separately discussed
later in the opinion.
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With respect to the addition of a hydrocolloid, Appellants argue that
Sanbe does not teach or suggest the desirability of adding a hydrocolloid to
the composition. Appeal Br. 11. Appellants contend that any asserted
motivation to add a hydrocolloid to the composition of Sanbe was based on
impermissible hindsight. Id.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Ans. 3-6. The following findings are included for emphasis and
reference purposes.
FF 1. Sanbe teaches:
As a result of dedicated studies, the present inventors
found that skin preparations for external use containing a
combination of creatinine and/or creatine with a chemical or an
active substance that exhibits skin care effect demonstrate
higher skin care effects, and thus achieved the present
invention. In other words, the present invention provides skin
preparations for external use characterized in that they contain
(i) creatine and/or creatinine and (ii) an active substance(s) that
is a medicinal substance and/or a physiologically active
substance.
Sanbe ,-J 4.
FF2. Sanbe teaches "A skin preparation for external use
characterized in that it contains (i) creatinine and/or creatine and (ii) an
active substance(s) that is a medicinal substance(s) and/or a physiologically
active substance(s)." Sanbe 2, claim 1.
FF3. Sanbe teaches:
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As a result of careful studies on creatinine, it was found
that this substance has the function of significantly enhancing
such effects as among whitening, cellular stimulation, reduction
of the appearance of wrinkles, prevention of chapped skin,
antioxidation, sebum control, adstriction, anti-inflammation,
prevention of acne, softening of keratin, and promotion of
blood circulation.
Sanbe ,i 7.
FF4. Sanbe teaches that creatine has the same "enhancing skin care
effects" as creatinine. Id. ,i 9.
FF5. Sanbe teaches:
Creatine or creatinine is blended into a skin preparation
for external use according to the present invention in a quantity
equal to 0.01-10 weight%, and preferably 0.05-5 weight%.
Quantities less than 0.01 weight% does not yield adequate
effect, and quantities in excess of 10 weight % has a tendency
to interfere with intra-preparation stability.
Sanbe ,i 8.
FF6. Sanbe teaches:
In addition to the aforementioned components, arbitrary
components normally used in skin preparations for external use
may b e[ sic] blended into skin preparations for external use
according to the present invention. Examples thereof include
surfactants, oils, alcohols, moisturizing agents, thickening
agents, preservatives, antioxidants, chelating agents, pH
adjusters, fragrances, pigments, ultraviolet absorbing/dispersing
agents, vitamins, amino acids, and water. The arbitrary
components are not limited to the foregoing.
Id. iJ 23.
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FF7. Examples 35-50 of Sanbe teach cosmetic compositions
comprising from 0.1 to 0.3 wt. % xanthan gum. Id. ,r,r 48-60.
FF8. The Specification teaches that hydrocolloids may comprise "one
or more of agar agar [sic], alginic acid, carrageen, gelatin, gum arabic, pectin
and tragacanth and/or one or more of guar gum, locust bean flour, xanthan
gum, polyvinyl alcohol, polyvinylpyrrolidone, propyleneglycol alginate and
starch." Spec. ,r 43.
FF9. The Specification teaches that hydrocolloids increase the
viscosity of water. Spec. 63.
FF 10. Bleckmann also teaches that hydrocolloids increase the
viscosity of water. Bleckmann ,r 75.
FF 11. Sanbe teaches that the compositions described therein have a
pH of from 3 to 9. Sanbe ,r 9.
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 ofunpatentability. 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).
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"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).
Analysis
We find the Examiner has established that the subject matter of this
set of claims would have been obvious to one of ordinary skill in the art at
the time the invention was made over at least Sanbe. Appellants have not
produced evidence showing, or persuasively argued, that the Examiner's
determinations on obviousness are incorrect. Only those arguments made by
Appellants 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)(l)(iv)
(2015). We have identified claim 144 as representative of this set of claims;
therefore, all claims in the set fall with claim 144. We address Appellants'
arguments below.
Appellants contend that there is "no apparent reason for one of
ordinary skill in the art to employ both creatine (and/or a creatine
compound) and creatinine (and additionally, a hydrocolloid) in a
composition according to SANBE." Appeal Br. 8. Appellant argues that
mentioning of creatinine and/or creatine does no teach one skilled in the art
that the combination of creatinine and creatine would have any advantage.
Id. Appellants also contend that Sanbe actually suggests that creatine is
unnecessary as the Specification focuses on compositions containing
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creatinine. Id. Appellants argue that the properties discussed in Sanbe's
examples are limited to either creatine or creatinine but not the combination.
Id. at 8-9. Appellants contend that one skilled in the art would not have been
motivated to employ both creatine and creatinine in the same composition as
they have similar properties. Id. at 9-10.
We have considered Appellants' arguments and are unpersuaded.
Sanbe both teaches and claims a composition comprising both creatinine and
creatine. FFl and 2. Sanbe also teaches that creatine and creatinine have
the same properties. FF3. The motivation to combine the two compositions
flows from Sanbe's express teaching of a composition containing both
compounds.
Appellants also contend that Sanbe does not convey the impression
that the inclusion ofhydrocolloids such as xanthan gum is desirable. Appeal
Br. 11. Appellants contend that it is only through the use of hindsight that
one could conclude that one skilled in the art would be motivated to use
xanthan gum in the compositions of Sanbe. Id.
Again we are not persuaded by Appellants' arguments. Sanbe
specifically teaches that additional ingredients, such as thickening agents,
can be added to the composition. FF6. Xanthan gum is known to act to
increase viscosity or thicken fluid. FF8-l 0. In addition, at least a dozen
examples in Sanbe teach the inclusion of xanthan gum. FF7. Given the
teachings of Sanbe and the knowledge that xanthan gum acts as a thickening
agent, we conclude that one skilled in the art would have been motivted to
include xanthan gum in the composition of Sanbe. This conclusion is based
on the teachings of the art and not on impermissible hindsight.
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We conclude that a preponderance of the evidence supports the Examiner's
conclusion of obviousness with respect to this set of claims.
Set 2 - Claims 153-155, 178, 179 and certain of
their dependent claims (Claims 180, 181, and 184-187) 7
Issue
The issue with respect to this set of claims is whether a preponderance
of the evidence support the Examiner's conclusion that the subject matter of
claims 153-155, 178, and 179 would have been obvious over Sanbe.
In addition to the findings discussed above, the Examiner finds that
Sanbe teaches that the composition comprises creatine and creatinine in
amounts of between 0.01 % to 10% by weight and preferably 0.05% to 5%.
Ans. 4. The Examiner finds that one skilled in the art would have selected a
ratio of 1: 1 which falls within the claimed ratios. Id. The Examiner finds
that "[ c ]hoosing from a finite number of identified, predictable solutions
with a reasonable expectation [ of success] is indicative of prima facie
obviousness." (Ans. 4.)
In addition to the arguments above, which we find unpersuasive for
the reasons already discussed, Appellants argue that one skilled in the art
would not be motivated to use creatine and creatinine together, let alone
optimize the relative ratios of the components. Appeal Br. 12-13.
7 Claim 165 depends from claim 155, and claims 182, 183, and 188 depend
directly or indirectly from claim 178. However, Appellants make additional
arguments with respect to these claims. They are therefore separately
discussed later in the opinion.
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Appellants also contend that the Examiner has not properly explained why
one skilled in the art would arrive at the ratio of 1: 1. Id. at 13.
Analysis
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Ans. 3-6. We find the Examiner has established that the matter of the
claims in this set would have been obvious to one of ordinary skill in the art
at the time the invention was made over at least Sanbe. Appellants have not
produced evidence showing, or persuasively argued, that the Examiner's
determinations on obviousness are incorrect. Only those arguments made by
Appellants 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)(l)(iv)
(2015). We address Appellants' arguments below.
Appellants argue that Sanbe does not teach or suggest a reason why
one skilled in the art would use both creatine and creatinine and does not
teach or suggest the ratios recited in the claims. Appeal Br. 12-14.
We have considered Appellants' arguments and are not persuaded.
As discussed above, Sanbe specifically teaches the use of creatine and
creatinine together and teaches the amounts of each. FFl and 2, Sanbe ,-J 8.
Sanbe teaches that both creatine and creatinine share the same skin
enhancing effects. FF3 and 4. 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. Ans. 11. "[W]here the general conditions of a claim are disclosed in
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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).
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claims 153-155, 178, and
179 would have been obvious over at least Sanbe. Claims 180, 181, and
184-187, which depend directly or indirectly from claim 178 and are not
separately argued, fall with claim 178.
Set 3 - Claims 161, 165, 182, 183, and 189
Dependent claims 161, 165, 182 and 183 and independent claim 189 recite
that in the corresponding preparations the one or more hydrocolloids
comprise ammonium dimethyltauramide/vinylformamide copolymer.
Appeal Br. 14.
Issue
The issue with respect to these claims is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 161, 165, 182, 183, and 189 would have been obvious over the
combination of Sanbe and Bleckmann.
In addition to the findings discussed above, the Examiner finds that
Bleckmann teaches cosmetic compositions comprising organic
hydrocolloids. Ans. 5. The Examiner finds that the hydrocolloids taught by
Bleckmann include xanthan gum and dimethyltauramide/vinylformamide.
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 combine the teachings
of Sanbe and Bleckmann with a reasonable expectation for
success in arriving at a composition comprising ammonium
dimethyltauramide/vinylformamide as the hydrocolloid.
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Id.
Bleckmann teaches xanthan gum as equivalent to ammonium
dimethyltauramide, thus one would have been motivated to
incorporate such a hydrocolloid into the composition of Sanbe
with a reasonable expectation for success in arriving at a
composition having similar properties, i.e. improved skin feel,
imparts suitable thickness to the composition.
Appellants contend that, in addition to the arguments discussed above
with respect to the teachings of Sanbe, which we find unpersuasive for the
same reasons already set forth, there is no reason why one skilled in the art
would select dimethyltauramide/vinylformamide as the hydrocolloid to use
in the composition of Sanbe. Appeal Br. 15-16. Appellants contend that the
only place Bleckmann recites dimethyltauramide/vinylformamide is in the
claims and that the specification of Bleckmann is silent as to the use of
dimethyltauramide/vinylformamide. Id.
Findings of Fact
FF12. Bleckmann discloses a cosmetic preparation comprising an
organic hydrocolloid. Bleckmann Abstract.
FF 13. Bleckmann teaches that xanthan gum can be used as a
hydrocolloid in the disclosed compositions. Id. ,i 86.
FF 14. Bleckmann teaches that the organic hydrocolloid can be
dimethyltauramide/vinylformamide. Bleckmann claims 44, 45, and 59.
Principles of Law
"[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
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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)).
Analysis
We find the Examiner has established that the subject matter of claims
161, 165, 182, 183, and 189 would have been obvious to one of ordinary
skill in the art at the time the invention was made over at least Sanbe
combined with Bleckmann. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner's determinations on
obviousness are incorrect. Only those arguments made by Appellants 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)(l)(iv) (2015). We address
Appellants' arguments below.
Appellants contend that there is no reason why one skilled in the art
would select dimethyltauramide/vinylformamide as a hydrocolloid to use in
the composition of Sanbe. Appeal Br. 15-17. Appellants point to the fact
that dimethyltauramide/vinylformamide is only mentioned in the claims of
Bleckmann and not in the specification. Id. Appellants contends that this
demonstrates that Bleckmann does not consider
dimethyltauramide/vinylformamide to be a preferred hydrocolloid. Id
We have considered Appellants' argument and are not persuaded.
Bleckmann specifically claims dimethyltauramide/vinylformamide in three
separate claims as a hydrocolloid composition to be used in the practice of
the invention described in Bleckmann. FF 14. That Bleckmann specifically
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claims dimethyltauramide/vinylformamide is an indication that Bleckmann
considered the compound important and would lead one skilled in the art to
employ dimethyltauramide/vinylformamide as a hydrocolloid.
Bleckmann also teaches that xanthan gum is a hydrocolloid that can
be used in the practice of the invention disclosed in Bleckmann. FF 13.
Given that Bleckmann teaches that both xanthan gum and
dimethyltauramide/vinylformamide are hydrocolloids, we agree with the
examiner that one skilled in the art would have been lead to use
dimethyltauramide/vinylformamide as a substitute for xanthan gum. Ans. 5.
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that claims 161, 165, 182, 183, and 189 would have
been obvious over at least Sanbe combined with Bleckmann.
Set 4 - Claims 171 and 188 and certain of
their dependent claims (claims 17 3 and 17 5)
Dependent claims 171 and 188 recite that the preparation of
independent claims 144 and 178 is present as a hydrodispersion. While not
separately argued, claims 173 and 175 depend from claim 171 and include
the hydrodispersion limitation. 8 See Appeal Br. 24 (Claims App'x).
Issue
8 Claim 174 also depends from claim 1 71. Because Appellants make
additional arguments with respect to claim 17 4 and because the Examiner's
rejection of claim 174 further relies on at least Riedel, however, we discuss
claim 174 separately below.
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The issue with respect to this set of claims is whether a preponderance
of evidence supports the Examiner's conclusion that the subject matter of
claims 171, 173, 175, and 188 would have been obvious over Sanbe.
In addition to the findings discussed above, the Examiner contends
that the compositions of Sanbe can take the form of an emulsion which has
an aqueous phase. Ans. 3. The Examiner contends that an emulsion with an
aqueous phase is the same as a hydrodispersion and that therefore Sanbe
teaches a compositions comprising a hydrodispersion. Id.
Appellants contend that Sanbe does not teach a hydrodispersion but
only an emulsion. Appeal Br. 18-19. Appellants argue that the Examiner
has not offered any evidence to support the contention that an emulsion is a
hydrodispersion. Id. Appellants offer the definition of a hydrodispersion
found on the internet which teaches:
Hydro-dispersion gels are dispersed systems consisting
of a hydrophilic continuous phase and a lipophilic dispersed
phase. Usually, hydro-dispersion gels are oil-in-water
emulsions with a content of liquid lipid phase between 2 and
20%. In contrast to classical emulsions, the required
stabilization is not provided by the addition of traditional
emulsifiers but by means of suitable macromolecules (Figure
8). This is stressed when such formulations in particular in the
field of sun care products are called "emulsifier-free".
Id. at 19 ( quoting Daniels9). Appellants argue that the emulsions of Sanbe
contain significant amounts of emulsifiers which teaches that the
9 Daniels, Novel Gel Systems, Dermotopics (2006), found at
http://www.dermotopics.de/english/issue _ 2 _ 02 _ e/daniels _ novelgels _ 2 _ 02 _ e
.htm (last visited May 23, 2019) ("Daniels").
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compositions of Sanbe are traditional emulsions and not hydrodispersions.
Id.
Analysis
We have considered the arguments of both the Examiner and
Appellants and conclude that Appellants have the better position.
We begin by noting that the Specification teaches:
Cosmetic formulations according to the invention for the
protection of the skin against UV rays can take various forms,
as are, e.g., customarily used for this type of preparation. By
way of non-limiting example, they can be present in the form of
a solution, an emulsion of the water-in-oil (W/0) type or of the
oil-in-water (0/W) type, or a multiple emulsion, for example of
the water-in-oil-in-water (W/0/W) type, a gel, a
hydrodispersion, a solid stick, or also an aerosol.
Spec. ,-J 92. We interpret this paragraph and teaching that a hydrodispersion
is not the same as an emulsion. This conclusion is reinforced by Daniels
which teaches that a hydrodispersion has a low liquid content and does not
require the presence of traditional emulsifiers. Daniels 3.
While we agree with the Examiner that Daniels refers to
hydrodispersion gels and the claims only refer to hydrodispersions, the
teachings of Daniels coupled with the teachings of the Specification lead us
to conclude that the Examiner has not established that Sanbe' s emulsions are
hydrodispersions as the term is used in the present Specification and claims.
The Examiner has not advanced any evidence to support a contrary
conclusion.
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We conclude that a preponderance of the evidence does not support
the conclusion that the subject matter of claims 171, 173, 175, and 188
would have been obvious over Sanbe.
Set 5 - Claims 172 and 174
Dependent claims 172 and 17 4 recite that the preparation of claim 144
and claim 171, respectively, comprises one or more UV filter substances.
Issue
The issue with respect to this set of claims is whether a preponderance
of the evidence supports the Examiner's conclusion that the subject matter of
claims 172 and 174 would have been obvious over Sanbe combined with
Riedel and Bleckmann.
In addition to the findings discussed above, the Examiner finds that
Sanbe teaches that the compositions may comprise UV absorbers. Ans. 5.
The Examiner finds that Riedel teaches the inclusion of UV blockers in an
amount of from 10% to 15% which overlaps with the claimed range of from
about 0.5% to 20%. Id. at 5-6. The Examiner concludes that"[ o ]ne of
ordinary skill in the art could have pursued the known potential solutions for
identifying a useful range of UV protection with a reasonable expectation for
success. If one arrived at an amount of between 0.5-20%, as is suggested by
Riedel, this would have been the product of ordinary skill and common
sense, not one of innovation." Id. at 6.
Appellants contend that one skilled in the art would not have looked
to Riedel or Bleckmann for a teaching of amounts of UV blockers as Riedel
and Bleckmann are foaming compositions with specific emulsifiers and one
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skilled in the art would not apply the teachings of Riedel and Bleckmann to
the compositions of Sanbe. Appeal Br. 20.
Findings of Fact
FF15. The compositions of Riedel are cosmetic or dermatological
preparations. Riedel Abstract.
FF16. Riedel teaches "UV-A and/or UV-B filter substances are
usually incorporated into day creams or make-up products." Id. ,i 127
FF 17. Riedel teaches:
Preparations according to the invention advantageously
comprise substances which absorb UV radiation in the UV-A
and/ or UV-B range, the total amount of filter substances being,
for example, from 0.1 % by weight to 30% by weight,
preferably from 0.5 to 20% by weight, in particular from 1.0 to
15% by weight, based on the total weight of the preparations, in
order to provide cosmetic preparations which protect the hair
and the skin from the entire range of ultraviolet radiation. They
can also be used as sunscreens for the hair or the skin.
Id. iJ 136.
Principles of Law
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSRint'l Co. v. Teleflex Inc., 550U.S. 398,418 (2007).
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Analysis
We find the Examiner has established that the 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 Bleckmann and Riedel.
Appellants have not produced evidence showing, or persuasively argued,
that the Examiner's determinations on obviousness are incorrect. Only those
arguments made by Appellants 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)(l)(iv) (2015). We address Appellants' arguments below.
Appellants contend that Riedel and Bleckmann are directed to foam
compositions which are not the same as the compositions of Sanbe.
Appellants argue that given the nature of the different compositions, one
skilled in the art would not look to Riedel or Bleckmann for guidance as to
how much UV absorber to use. Appeal Br. 20.
We have considered Appellants' arguments and are not persuaded.
Sanbe, Bleckmann and Riedel all relate to cosmetic or dermatological
compositions. FF 3, 12, and 15. Both Riedel and Sanbe teach the inclusion
of UV filters or absorbers into the disclosed compositions. FF6, 17, and 18.
Moreover, Riedel also teaches that UV absorbers are usually incorporated
into skin care compositions not just foam compositions. FF 1 7. Given the
combined teachings of Riedel and Sanbe, we find that one skilled in the art
would have looked to Riedel for guidance as to the amounts of UV absorber
to use. Moreover, as discussed earlier, "where 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
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Appeal 2018-001396
Application 10/995,208
F.2d at 456. Thus, even if a skilled artisan would expect the optimum
amounts of UV absorber for the claimed composition to be different from
the amounts taught by Riedel, the limitation in claims 172 and 174 relating
to UV filter substances would nevertheless be obvious in light of the
combination of Sanbe and Riedel.
We conclude that a preponderance of evidence supports the
Examiner's conclusion that the subject matter of claim 172 would have been
obvious over at least Sanbe combined with Riedel. As discussed above,
claim 174 depends from claim 171 and includes the limitation that the
preparation is a hydrodispersion. We find that the Examiner has not
established a prima facie case that the art suggests the claimed
hydrodispersion preparation; therefore claims 174 is patentable over the art.
SUMMARY
We affirm the rejection of claims 144-158, 161, 162, 165-170, 172,
176-187, and 189 under 35 U.S.C. § 103(a).
We reverse the rejection of claims 1 71, 173-175, and 18 8 under 3 5
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. § l .136(a).
AFFIRMED-IN-PART
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