Ex Parte Breyfogle et al

Patent Trial and Appeal Board

Feb 7, 2017

12728185 (P.T.A.B. Feb. 7, 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.
12/728,185 03/19/2010 Laurie Ellen Breyfogle 11272 4865
27752 7590 02/09/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
HELM, CARALYNNE E
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
02/09/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURIE ELLEN BREYFOGLE, PAUL ROBERT TANNER, and
JOSEPH MICHAEL ZUKOWSKI1
Appeal 2015-007992
Application 12/728,185
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stable
water-in-oil emulsion personal-care composition, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellants’ Specification notes that water-in-oil emulsions “have a
tendency to feel greasy and heavy when the external phase is built using a
traditional gel network structure comprising, e.g., mineral oil and fatty
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company. (Appeal Br. 1.)
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Application 12/728,185
alcohols.” (Spec. 1.) It is known to use silicone-based materials instead, but
when these emulsions are used in conjunction with sunscreens, the majority
of highly effective ones being oily or oil-soluble, “sunscreen solubility and
product stability” is an issue. (Id.) Appellants’ Specification notes that
while silicone elastomers have been used with sunscreens in water-in-oil
emulsions and those compositions provide “better skin feel,” the silicone
elastomers are expensive and “typically collapse in the present of polar
sunscreen oils, which ultimately results in product instability in the form of
syneresis.” (Id. at 2.) Appellants Specification also notes that water-in-oil
emulsions are known to be thickened with waxy materials, however, those
formulations are “[tjypically . . . solids at room temperature.” (Id.) Also,
according to Appellants Specification, in such compositions “at high
temperatures, a significant portion of the wax may melt, leading to changes
in product viscosity/rheology that compromise the product’s composition or
aesthetic properties— for example, syneresis, component settling, or
substantial viscosity growth.” (Id.) Appellants’ invention is directed to a
stable water-in-oil emulsion that includes a polar oil, such as a sunscreen,
and also includes a hydrocarbon wax, as well as a silicone elastomer. (Id. at
2-3.)
Claims 1—14 are on appeal. Claim 1 is representative and reads as
follows:
1. A stable personal-care composition in the form of a water-in-oil
emulsion comprising:
a) from about 0.01 % to about 10% of a hydrocarbon wax which is
straight chain wax saturated to greater than 90%, wherein at least
some of the wax forms discrete wax crystals within the oil phase;
b) greater than 10% of a polar oil; and
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Application 12/728,185
c) from about 1 % to about 8% of a non-emulsifying silicone
elastomer; wherein the weight ratio of wax to polar oil is from
about 0.01 to about 0.5, and wherein the personal care composition
is not in the form of a solid.
(Appeal Br. 10.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1—4, 6, 8, 9, and 12—14 under 35 U.S.C. § 103(a) as
unpatentable over Kawa,2 Fontaine,3 Leotsakos,4 Lemoine,5 and Traynor.6
Claims 10-11 under 35 U.S.C. § 103(a) as unpatentable over Kawa,
Fontaine, Feotsakos, Femoine, Traynor, and Kim.7
Claims 3—5 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Kawa, Fontaine, Feotsakos, Femoine, Traynor, Fezer,8 and Willemin.9
DISCUSSION
Obviousness: Claim 1
The Examiner finds that Kawa teaches a cosmetic composition that
can include sun screens and self-tanning agents, as well as polypeptides for
improving the sensory profile of the product that is a storage stable
2 Kawa et al., US 7,179,880 B2, issued Feb. 20, 2007.
3 Fontaine et al., US 2006/0013792 Al, published Jan. 19, 2006.
4 Feotsakos et al., US 2009/0298971 Al, published Dec. 3, 2009.
5 Femoine et al., US 2011/0212144 Al, published Sept. 1, 2001.
6 Traynor et al., US 7,001,592 Bl, issued Feb. 21, 2006.
7 Kim et al., WO 2007/017434 Al, published Feb. 15, 2007(English
equivalent US 2010/0135918 Al, published June 3, 2010).
8 Fezer et al., US 2006/0193807 Al, published Aug. 31, 2006.
9 Willemin et al., US 2007/0009453 Al, published Jan. 11, 2007.
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Application 12/728,185
emulsion. (Final Action 3.) The Examiner further finds that Kawa
exemplifies a water-in-oil stable emulsion in a lotion form that includes “2%
beeswax, 4% non-emulsifying silicone elastomer (SFE 839), 7% C12-05
alcohol benzoate (Finsolv TN), 3% dicaprylyl carbonate (Cetiol CC), 3%
dibutyl adipate (Cetiol B), 3% cocoglycerides in the form of Myritol 331,
vitamins (tocopherol), and particulate materials (bentone38).” (Id.; Ans. 5)
The Examiner finds that Kawa teaches a number of alternative waxes
to beeswax that could be used in the disclosed compositions including
polyalkylene waxes, microcrystalline wax, camauba wax, and hydrogenated
jojoba oil. (Id.; Ans. 2, 3, 5.)
The Examiner finds that Fontaine teaches cosmetic water-in-oil
emulsions that, like Kawa, can include a number of different waxes, such as
polyethylene wax —which is a polyalkylene wax—, microcrystalline wax,
camauba wax, or hydrogenated jojoba oil. (Final Action 4; Ans. 2—3, 5.)
The Examiner finds that one of the polyethylene waxes described by
Fontaine is Performalene® 400, which Lemoine shows is a polyethylene
wax that is known to form crystallites in the fatty phase of water-in-oil
emulsions. (Id.) The Examiner finds that it would have been obvious to
one of ordinary skill in the art to substitute the beeswax in the exemplified
formula of Kawa with Performalene® with an expectation of success,
including maintaining of a lotion form, given the use of Performalene® 400
in water-in-oil cosmetic emulsions and Kawa’s teaching that polyalkylene
waxes could be used in just the same manner as beeswax. (Id.) The
Examiner contends that the resultant formulation would have a hydrocarbon
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Application 12/728,185
wax to polar oil ratio of 0.125, which is within the claimed range. (Final
Action 4—5.)
We agree with the Examiner’s finding that it would have been
obvious to substitute Performalene® for the beeswax in composition 71 of
Kawa and thus obtain a composition that meets the requirements of claim 1.
Appellants argue that there is no motivation to combine Kawa and Fontaine
as Kawa does not disclose a function for the “fats and waxes” it discloses as
an optional ingredient for use in its compositions and there “is no disclosure
in Kawa or Fontaine .. . that these two waxes[, beeswax and polyethylene
wax,] are equivalent,” and Fontaine teaches solid compositions including
when the wax is used in as little as 3%, and thus, one of ordinary skill in the
art would not substitute the polyethylene wax in the Kawa composition.
(Appeal Br. 5—7.) We do not find this argument persuasive.
Kawa, in addition to exemplifying water-in-oil emulsion compositions
with waxes in them (beeswax and microcrystalline wax) (e.g., Kawa cols.
25— 31 (Tables 4—7), teaches a list of waxes in addition to those exemplified
that it deems equivalent for use in the types of emulsions disclosed that have
improved sensory properties and water resistance. (Kawa 8:46—53; 14:10—
47.) This list includes polyalkylene waxes and directly suggests that
beeswax and polyalkylene waxes (as well as hydrogenated jojoba oil, and
camauba waxes) are equivalent and interchangeable for use in the disclosed
compositions. Furthermore, while waxes may have been disclosed generally
in Kawa as an optional ingredient, the fact that Kawa exemplifies waxes in
water-in-oil compositions would have prompted one of ordinary skill in the
art to look to the list of possible alternatives for waxes to modify such
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compositions. It would have been obvious to those skilled in the art to
substitute one known equivalent for another. See In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007)(“[T]his court finds no . . .
error in [the] conclusion that it would have been obvious to one skilled in the
art to substitute one ARC [alkaline reactive compound] for another.”).
Appellants argue that one of ordinary skill in the art would not deem
the exemplified beeswax in Kawa, and the polyalkylene wax disclosed in
Fontaine to be equivalent substitutes. (Appeal Br. 7; see also Reply Br. 3.)
Appellants contend that the fact that Fontaine’s composition is a solid and
Kawa’s composition is not a solid, teaches that the waxes used in both
compositions are not interchangeable. (Id.) We do not find this argument
persuasive. We find (like the Examiner) that Fontaine’s list of waxes that
may be used in water-in-oil emulsions overlaps the list provided in Kawa,
including that Kawa lists polylakylene waxes, which encompasses
polyethylene waxes, and microcrystalline wax (compare Fontaine 146, with
Kawa 14:38-47). While Fontaine teaches that the waxes disclosed can be
used to form solid water-in-oil emulsions, Kawa teaches that these waxes
can be used to formulate creams and lotions.
Furthermore, Kawa exemplifies water-in-oil emulsion that contain
a. beeswax that are lotions or creams (Kawa col. 31, Table 7
(compare cream composition 67: beeswax 4%, with lotion
composition 71: beeswax 2%), col. 29, Table 6 (cream
composition 64: beeswax 7%), col. 27, Table 5 (cream
composition 54: beeswax 1%), col. 25, Table 4 (compare lotion
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composition 40: beeswax 5%, with cream composition 42:
beeswax 7%)), and
b. microcrystalline wax that are a lotion or a cream (e.g., Kawa
col. 25, Table 4 (compare cream composition 35:
microcrystalline wax 5%, with lotion composition 38:
microcrystalline wax 2%))
Moreover, the amount of wax to include in water-in-oil composition
disclosed in Fontaine overlaps the disclosure in Kawa of the amounts used
of waxes in the examples. (Fontaine 1^46-47 (noting wax used in a range of
from 1 %—10%)). In light of the fact that Kawa teaches the same wax can be
used to achieve a cream composition or a lotion, we do not find it to be the
case that the mere presence of a wax that is listed in Fontaine that overlaps
with the waxes listed in Kawa would be understood by one of ordinary skill
in the art to be a wax that would necessarily result in a solid water-in-oil
composition. Rather, one of ordinary skill in the art would have understood
that these waxes could be substituted into Kawa, which includes components
not indicated to be included in the Fontaine compositions, and achieve a
lotion or cream composition and that substitution in an amount of 2% would
be likely to result in a lotion composition, and higher amounts could result in
a thicker composition.
We agree with the Examiner, that one of ordinary skill in the art
would have found it obvious to substitute Performalene® in composition 71
of Kawa in the same amount that beeswax was present with a reasonable
expectation of successfully obtaining a lotion composition having the same
properties Kawa indicates is achieved by the beeswax formulation. The fact
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that such a substitution would achieve the claimed ratio, even though it does
not mention such a ratio or recognize “the importance of providing the
proper ratio of hydrocarbon wax to polar oil” (Appeal Br. 3), is sufficient to
render obvious the claimed invention, contrary to Appellants’ argument
(Appeal Br. 2; Reply Br. 1—2). That is because the substitution of a
polyethylene wax such as Performalene® for beeswax at the same
percentage beeswax was disclosed to have been used at in the Kawa
composition 71 is prima facie obvious. For a prima facie case of
obviousness to be established, the references need not recognize the problem
solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992).
The Supreme Court stated in KSR that “when 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 7 Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (citing United States v. Adams, 383 U.S. 39, 50—
51 (1966)). Appellants have not provided evidence demonstrating
unexpected results in using the claimed polyethylene wax in a composition
comprising greater than 10% polar oil and from about 1% to about 8% of a
non-emulsifying silicone elastomer. According to Appellants, citing In re
Borkowski, 422 F.2d 904 (CCPA 1970), such data is not required, because
the “claimed invention is otherwise enabled.” (Reply Br. 2.) Appellants’
reliance on In re Borkowski is misplaced. While it is true that a working
example is not necessary to satisfy enablement, the issue here is whether
Appellants have provided sufficient evidence to rebut the Examiner’s prima
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facie case of obviousness. “One way for a patent applicant to rebut aprima
facie case of obviousness is to make a showing of ‘unexpected results,’ i.e.,
to show that the claimed invention exhibits some superior property or
advantage that a person of ordinary skill in the relevant art would have found
surprising or unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
However, a recognition of a latent property, such as stability and non-solid
stick formation (Reply Br. 2 (citing Spec. 7:32—8:1)), does not render the
claims nonobvious. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985)(“The
fact that [Appellants have] recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious.”); see
also In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[m]ere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.”).
Claims 2—4, 6, 8—9, and 12—14 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants agree that claims 10—11 fall with claim 1. (Appeal Br. 8)
Appellants have also not argued claims 3—5 separately (Appeal Br. 8),
and those claims, likewise, fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Claim 7
Claim 7 requires that the composition of claim 1 comprise viscosity
growth less than 25,000 centipoises. (Appeal Br. 10.) According to the
Specification, “viscosity growth” is the difference between the initial
viscosity measurement of a batch of material twenty-four hours after
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Application 12/728,185
manufacture compared to viscosity measurements on “undisturbed samples
from the same batch that spent 5 days at 40 °C, then [were] returned to room
temperature 24 h prior to analysis.” (Spec. 16.)
The Examiner finds that Lezer teaches the use of polyethylene and
polymethylene waxes, such as Cirebelle™ 303, in cosmetic compositions
and that it would have been obvious to substitute Cirebelle™ 303 for the
polyethylene wax in the composition of Kawa as modified by Fontaine to
include a polyethylene wax. (Final Action 7.) The Examiner finds that such
a wax is exemplified by Appellant as being a wax according to the
invention, and that in light of that, the modified composition would have the
viscosity growth claimed. (Final action 7—8.)
Appellants appear to argue that because the composition is a
“hypothetical composition” in an obviousness rejection, it is not an identical
composition to which a theory of inherency can be applied. (Appeal Br 8.)
However, that is not the law. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (en banc) (“the discovery that a claimed composition possesses a
property not disclosed for the prior art subject matter, does not by itself
defeat aprima facie case [of obviousness]”). However, we find the
Examiner did not provide a sound basis for believing that the modified
composition would have the claimed viscosity growth. Fezer does not
provide viscosity measurements, nor does Kawa. Moreover, the examples in
the Specification do not provide viscosity analysis for the compositions that
include Cirebelle™ 303. Indeed, there are no examples in the Specification
where viscosity analyses are provided.
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SUMMARY
We affirm the rejection of claims 1—4, 6, 8, 9, and 12—14 under 35
U.S.C. § 103(a) as unpatentable over Kawa, Fontaine, Leotsakos, Lemoine,
and Traynor.
We affirm the rejection of claims 10-11 under 35 U.S.C. § 103(a) as
unpatentable over Kawa, Fontaine, Leotsakos, Lemoine, Traynor, and Kim.
We affirm the rejection of claims 3—5 under 35 U.S.C. § 103(a) as
unpatentable over Kawa, Fontaine, Leotsakos, Lemoine, Traynor, Lezer, and
Willemin.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Kawa, Fontaine, Leotsakos, Lemoine, Traynor, Lezer and
Willemin.
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-IN-PART
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