Ex Parte Brown

Board of Patent Appeals and Interferences

Jun 11, 2008

10047817 (B.P.A.I. Jun. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD ALLEN BROWN
____________

Appeal 2008-1911
Application 10/047,817
Technology Center 1600
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Decided: June 11, 2008
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Before TONI R. SCHEINER, DONALD E. ADAMS and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 7-9, 11-32, and
53-58, the only claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
INTRODUCTION
The claims are directed to a pigmented cosmetic composition (claims
1, 7-9, 11-28, and 53-58) and a particulate sunscreen composition (claims
29-32). Claim 1 is illustrative:
Appeal 2008-1911
Application 10/047,817

1. A pigmented cosmetic composition comprising a water-in-oil
emulsion, said emulsion comprising:
(a) from about 30% to about 40% by weight of an oil phase;
(b) from about 30% to about 50% by weight of an aqueous phase;
(c) from about 5% to about 15% by weight of a pigment;
(d) from about 3 to about 6% by weight of a cetyl dimethicone
copolyol emulsifier; and
(e) a separation inhibitor comprising a silicone elastomer, wherein the
silicone elastomer comprises a dimethicone cross-polymer, and wherein said
silicone elastomer is present in an amount of from about 0.1% to about 7%
by weight of said composition, wherein the composition is stable for at least
three months at about 50 ºC.

The Examiner relies on the following prior art references to show
unpatentability:
Stepniewski et al. US 5,599,533 Feb. 4, 1997
Collin et al. US 5,656,672 Aug. 12, 1997
Rapaport US 5,730,991 Mar. 24, 1998
Dorogi et al. US 5,882,661 Mar. 16, 1999

The rejection as presented by the Examiner is as follows:
Claims 1, 7-9, 11-32, and 53-58 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Stepniewski, Rapaport and
Dorogi with or without Collin.
We reverse.

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Application 10/047,817

DISCUSSION
The Examiner finds that Stepniewski teaches a cosmetic formulation
that comprises an oil phase, an aqueous phase, a pigment, cetyl dimethicone
copolyol, and a separation inhibitor in concentration ranges that include the
ranges set forth in Appellant’s claimed invention (Ans. 4-5). Specifically,
the Examiner finds that Stepniewski teaches a formulation comprising 0.01-
20% by weight of cetyl dimethicone copolyol (Ans. 7).
The Examiner finds that Collin teaches “water-in-oil compositions
which preferably comprise ‘a silicone-containing emulsifying agent, which
is used in a proportion of from 0.5% to 10%, and preferably from 1% to 6%,
of the total weight of the emulsion’” (Ans. 8). In this regard, the Examiner
finds that Collin exemplifies “two cosmetic compositions wherein the
amount of cetyl dimethicone copolyol is 3% by weight of the composition
(Examples 2 and 4)” (id.).
To reach limitations of the dependent claims that are not taught by
Stepniewski, the Examiner relies on Rapaport and Dorogi. For example, as
to the requirement in claim 55 of a sunscreening agent that is octyl
methoxycinnamate, the Examiner relies on Rapaport to teach “that octyl
methoxycinnamate is a preferred sunscreen agent for use in topical
compositions” (Ans. 5). As to the requirement in claim 57 of a preservative
that is at least one compound selected from the group consisting of
phenoxyethanol, methylparaben, propylparaben, and disodium
ethylenediaminetetraacetate (EDTA), the Examiner relies on Dorogi to
“teach that phenoxyethanol, methyl paraben and propyl parabene are
preferred preservatives for use in topical compositions” (id.).
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Application 10/047,817

Appellant’s argument focuses on the cetyl dimethicone copolyol
component of the claims. Each of Appellant’s claims requires from about 3
to about 6% by weight of a cetyl dimethicone copolyol emulsifier.
According to Appellant “Rapaport and Dorogi et al. do not even mention the
use of cetyl dimethicone copolyol in any amount, let alone in the amount of
about 3-6wt%” and “Stepniewski et al. broadly describes the use of a
surfactant in the range of about 0.01-20 wt%” (App. Br. 4). Appellant,
however, does not dispute that Collin teaches cosmetic compositions
comprising cetyl dimethicone copolyol in a concentration of from 0.5% to
10%, and preferably from 1% to 6% and provides two examples of cosmetic
compositions comprising 3 wt % cetyl dimethicone copolyol (Ans. 8).
Relying on In re Aller, 220 F.2d 454, 459 (CCPA 1955) the Examiner
finds that “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” (Ans. 7 and 10). Accordingly, the Examiner concludes
that “[b]ecause all of the components of the herein-claimed topical
compositions have been disclosed in the prior art for incorporation into
topical compositions, the optimization of the amount of the components is
not considered inventive because it is a matter of routine experimentation for
the skilled artisan possessing the above-cited prior art” (Ans. 7). While we
agree with the initial premise set forth by the Examiner, we disagree that the
evidence of record leads to a conclusion that Appellant’s claimed invention
is prima facie obvious.
Exceptions to the general rule set forth in Aller have been found
wherein “the results of optimizing a variable, which was known to be result-
effective, were unexpectedly good.” In re Antonie, 559 F.2d 618, 620
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Application 10/047,817

(CCPA 1977). Appellant’s claimed invention requires that “the composition
is stable for at least three months at about 50 ºC” (see e.g., Claim 1). The
Examiner recognizes that Stepniewski does “not teach that the compositions
comprising the emulsion are stable for at least three months at about 50 ºC”
(Ans. 5). The Examiner does not identify, and we do not find, a teaching in
any of Rapaport, Dorogi, or Collin that makes up for this deficiency in
Stepniewski. Instead, we are left with the Examiner’s assertion that “[t]he
recitation that the instantly claimed compositions are ‘stable for at least three
months at about 50 ºC’ is an inherent feature of the product rendered
obvious by the teachings of the prior art” (Ans. 6). We are not persuaded as
Appellant’s declaratory evidence refutes the Examiner’s conjecture.
Specifically, Appellant provides declaratory evidence that
“compositions comprising a cetyl dimethicone copolyol emulsifier in an
amount outside of the claimed range were not similarly stable” (App. Br. 5).
According to Appellant, the fourth Rule 132 Declaration “summarizes the
results of the three prior Rule 132 Declarations and describes the amounts of
all the ingredients in each formulation” (id.). In the fourth Declaration,
Appellant provides “[c]omparative Samples A and B comprising about 1
wt% and about 8 wt% cetyl dimethicone copolyol, respectively, were not
similarly stable” to compositions comprising cetyl dimethicone copolyol in
the range set forth in the claimed invention. Stated differently, Appellant
has provided evidence that a cetyl dimethicone copolyol concentration that
falls on either side of the claimed concentration range produces a result that
fails to meet the requirements of the claimed invention.
While the Examiner acknowledges the results of Appellant’s fourth
declaration the Examiner simply restates that Aller supports a finding that
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Application 10/047,817

“[it] is a matter of routine experimentation to test various concentrations of
the emulsifier from within the range taught by Stepniewski et al. to arrive at
the optimal range from within the broad disclosure” (Ans. 10). The
Examiner, however, fails to appreciate that none of the prior art references
relied upon teach a composition that is stable for at least three months at
about 50 ºC and therefore, there is no way a person of ordinary skill in the
art would have been directed to optimize the concentration of cetyl
dimethicone copolyol to reach this specific stability requirement.
At best, Collin teaches a preparation that is stable for two months at
45 ºC (Collin, col. 7, ll. 17-44). However, as Appellant explains, while
Collin may exemplify compositions comprising 1, 2, and 3 wt% cetyl
dimethicone copolyol, “[i]t cannot be said that Collin et al. knowingly
provides one of [ordinary] skill in the art the knowledge to prepare a
composition that is stable for at least three months at about 50 ºC by adding
3-6 wt% of a cetyl dimethicone copolyol” (App. Br. 7). The Examiner fails
to rebut this argument. Accordingly, we find that the weight of the evidence
falls in favor of Appellant.
Accordingly, we reverse the rejection of claims 1, 7-9, 11-32, and 53-
58 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Stepniewski, Rapaport and Dorogi with or without Collin.

CONCLUSION
In summary, we reverse the rejections of claims 1, 7-9, 11-32, and 53-
58 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Stepniewski, Rapaport and Dorogi with or without Collin.

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Appeal 2008-1911
Application 10/047,817

REVERSED

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