Ex Parte Chen et al

Patent Trial and Appeal Board

Feb 23, 2018

13738001 (P.T.A.B. Feb. 23, 2018)

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.
13/738,001 01/10/2013 Theresa Chen JCO5094USNP 9601
27777 7590 02/27/2018
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
j nju spatent @ coru s .j nj. com
lhowd@its.jnj.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THERESA CHEN, CHRISTINA IRENE LEE,
JIPSHA THAKRAR, ANNE-SOPHIE BRILLOUET, and
MARISA DEVITA DUFORT
Appeal 2017-000249
Application 13/738,0011
Technology Center 1600
Before FRANCISCO C. PRATS, RYAN H. FLAX, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a composition
for cosmetic use. The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Johnson & Johnson
Consumer Inc. App. Br. 2.
Appeal 2017-000249
Application 13/738,001
STATEMENT OF THE CASE
Background
Wrinkles, puffmess, and sagging, particularly related to
skin under the eyes are problematic signs of aging. While it is
known to apply various compositions to skin under the eyes,
various drawbacks still remain. In particular, the inventors
have recognized that it would be desirable to reduce the
appearance of the above signs of under eye skin aging in a
manner that provides a pleasant tightening sensation to skin
under the eyes. Even more importantly, the inventors have
recognized that it is important to provide these benefits without
introducing negative perceptions, such as over-tightening or
undesirable flaking of the composition.
Spec. 1:10-17. The Specification discloses a composition that “provides an
improved appearance in a comfortable manner with reduced flaking.” Id. at
1:22-23.
Claims 1-15, 17, and 19 are on appeal.2 Claim 1 is illustrative and
reads as follows:
1. A composition, comprising:
water;
about 0.75% to about 1.25% by weight of a clay portion,
wherein the clay portion comprises bentonite; and
polymer particles having an average particle size of less
than about 20 microns and a refractive index of about 1.3
to about 1.4;
wherein the composition is completely free of hydrophobic
compounds.
App. Br. 8 (Claims Appendix).
2 Claims 16 and 18 are cancelled. App. Br. 9-10 (Claims Appendix).
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Application 13/738,001
Claim 14, the only other independent claim, recites that the
composition includes “about 70% to about 90% by weight of water” and “an
additional polymer having a weight average molecular weight of about 1000
to about 750,000.” Id. at 9.
Appellants seek our review of the rejection of claims 1-11, 14, 15, 17,
and 19 under pre-AIA 35 U.S.C. § 103(a) as obvious over Harding,3
Centerchem,4 and Maitra5 and the rejection of claims 12 and 13 under pre-
AIA 35 U.S.C. § 103(a) as obvious over Harding, Centerchem, Maitra, and
Spiegel.6 The same issues are dispositive as to the appeal of each rejection,
as Appellants concede.7 We select claim 1 as representative of the claims on
appeal. 37 C.F.R. § 41.37(c)(l)(iv).
OBVIOUSNESS
In rejecting claims 1-11, 14, 15, 17, and 19, the Examiner cites
Harding as teaching “a personal care product for topical use on the skin, and
for purposes of controlling the signs of aging” which include “fine lines,
wrinkles, hyperpigmentation, sagging skin, lack of radiance, dark under-eye
circles, puffy eyes, sallowness, spider veins, appearance of cellulite and
combinations thereof.” Ans. 4. The Examiner finds Harding teaches “a
cosmetically acceptable carrier that may be aqueous, anhydrous or an
emulsion” in an amount ranging from “about 1 to about 99.9%” and
including water as a useful carrier. Id. The Examiner further finds Harding
3 U.S. 2006/0089277 Al, published Apr. 27, 2006 (“Harding”).
4 AuraSphere N, Centerchem Inc., Product Bulletin (2008) (“Centerchem”).
5 U.S. 2010/0266649 Al, published Oct. 21, 2010 (“Maitra”).
6 U.S. 5,045,308, issued Sept. 3, 1991 (“Spiegel”).
7 See App. Br. 6 (“The arguments set forth above govern here.”)
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Application 13/738,001
teaches that “thickeners can be utilized as part of a cosmetically acceptable
carrier of compositions” and that inorganics may be thickeners. Id. The
Examiner finds that Harding teaches “clays such as bentonites and hectorites
among inorganics that may be used as thickeners.” Id. The Examiner finds
that Harding “clearly teaches an aqueous anti-aging composition (Harding,
par. [0068], Ex. 1 and Tab. 1), which may be prepared, according to
Harding's direct teachings, to include clays, such as bentonites and
hectorites, as thickeners.” Id. at 5.
The Examiner finds that because Harding teaches that the carrier of
the disclosed compositions “‘MAY be aqueous, anhydrous or an emulsion,’
and ‘[ajmounts of the carrier MAY range from about 1 to about 99.9%,’”
that the skilled artisan could have followed these teachings to make a
composition “completely free of hydrophobic compounds” as required by
claims 1 and 14. Id. Thus, the Examiner concludes that the skilled artisan
would have found it obvious to make the claimed compositions, including
“to have modified [the composition] to be free of hydrophobic components.”
Id. at 6.
The Examiner finds that Harding does not expressly teach the recited
polymer particles. Id. However, the Examiner finds Centerchem teaches
“Aurasphere N” is “a particulate suspension that is used as a visual/tactile
modifier ... for minimizing the appearance of lines and wrinkles, protecting
the skin barrier, and firming the skin” and its use on the skin “results in a
fine powdery film that appears virtually wrinkle free with a smooth and silky
feel.” Id. The Examiner finds Centerchem teaches the claim element
“polymer particles having an average particle size of less than about 20
microns and a refractive index of about 1.3 to about 1.4.” Id.
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Application 13/738,001
The Examiner concludes that the ordinarily skilled artisan would have
found it obvious to incorporate “Aurasphere N” as taught by Centerchem in
the “anti-aging/anti-wrinkle composition” of Harding to obtain the
advantages of “minimizing the appearance of lines and wrinkles, protecting
the skin barrier, and firming the skin.” Id. at 7.
The Examiner finds Maitra teaches a ‘“gel system comprising a fractal
network of nanoparticles and macroscopic particles,’ which is ‘capable of
forming an ‘optical gel’ effective to blurr [] fine lines and wrinkles as a
consequence of the size domain differences between the fractal particles and
the macroscopic particles.’” Id. The Examiner further finds Maitra
discloses “macroscopic organic particles [] of a size ranging from 1-200
microns . . . which reasonably encompasses the polyester particles of
‘Aurasphere N’ per Centerchem” and metal oxide nanoparticles that are
neither hydrophobic compounds nor polysaccharide gums. Id. at 7-8. The
Examiner finds Maitra discloses that “fractal networks of nanoparticles wrap
around the macroscopic particles and increases the interfacial area over
which lateral light diffusion occurs, which causes the appearance of
wrinkles, fine lines, pores and skin imperfections to vanish while allowing
the skin to appear natural and flawless.” Id. at 8.
The Examiner concludes that the skilled artisan would have been
further motivated to incorporate the Aurasphere N microparticulate
suspension with Maitra’s macroscopic organic particles and Maitra’s
nanoparticulate metal oxide particles “to obtain the further advantage of a
fractal network that increases the interfacial area over which lateral light
diffusion occurs, thus causing the appearance of wrinkles, fine lines, pores
and skin imperfections to vanish while allowing the skin to appear natural
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and flawless.” Id. The Examiner further concludes that the weight ranges of
the clay and water components and the polymer particle size, molecular
weights, and weight ratios of the polymer particles to the clay portions that
are taught by the references overlap with the claimed ranges and render the
ranges of those claims obvious. Id. at 8-10.
Appellants contend that “the claimed invention is patentable over the
cited references” because the references do not suggest the claimed
composition and because the claimed composition “provides unexpected
improvements in consumer acceptability.” Appeal Br. 4-6.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a prima
facie case of unpatentability. . . .
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.
Here, Appellants do not persuade us that a preponderance of the
evidence fails to support the Examiner’s conclusion that the cosmetic
composition of claim 1 would have been obvious to an ordinary artisan.
Unless otherwise indicated herein, we adopt the Examiner’s findings of fact,
reasoning on scope and content of the claims and prior art, and conclusions
set out in the Final Action and Answer. Final Act. 2-15, Ans. 3-22. Only
those arguments made by Appellants in the Appeal Brief and properly
presented in the Reply Brief have been considered in this Decision.
Arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”).
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As required by claim 1, Harding discloses a composition (personal
care product) comprising water in an amount of 1 to 99.9% by weight of the
composition, and bentonite clay in an amount of 0.0001 to 10% by weight.
Harding Abstract, 29, 44. Harding teaches that the composition may
contain, but does not require hydrophobic compounds. Id. at 29.
Centerchem discloses a particulate suspension for use in improving the
visual appearance of the skin and in which the average size of the particles
has the claimed size and refractive index. Centerchem 1-2. See also Spec.
4:15-20, discussing characteristics of commercially available
“AURASPHERE” product. Maitra discloses macroscopic organic particles
within the claimed size range and metal oxide nanopartricles used in
combination to diffuse light in order to improve the visible appearance of
skin. Maitra Abstract, 8, 60, 73, 74.
We agree with the Examiner (see, e.g., Ans. 9-10) that the skilled
artisan would have been motivated to combine the teachings of Harding,
Centerchem, and Maitra to make the claimed composition for the purpose of
improving the visible appearance of skin. We are not persuaded by
Appellants’ argument that the Examiner’s proffered motivation for making
the claimed composition “is not relevant to the claimed under eye
composition or the unique stability achieved with the claimed composition
that is completely free of hydrophobic compounds.” App. Br. 4. As the
Supreme Court has stated, “neither the particular motivation nor the avowed
purpose of the patentee controls” in determining whether a claim is obvious.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). The Examiner
has articulated a fact-based reason for a skilled artisan to have included
polymer particles having an average particle size of less than about 20
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microns and a refractive index of about 1.3 to about 1.4 with the teachings of
Harding to make the claimed composition. In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996) (“[T]he motivation in the prior art to combine the references
does not have to be identical to that of the applicant to establish
obviousness.”).
Appellants further argue the compositions “do not suggest an under
eye composition containing both a clay portion including bentonite
combined with polymer particles having an average particle size of less than
about 20 microns and a refractive index of about 1.3 to about 1.4.” App. Br.
4.
We are not persuaded. Appellants have not argued that Harding,
Centerchem, or Maitra do not teach what the Examiner has determined they
teach. Rather, Appellants argue the precise composition is not taught by the
references. Id. But the rejection is for obviousness, not anticipation.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. “[WJhen the question is whether a patent claiming
the combination of elements of prior art is obvious,” the answer depends on
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at All. Furthermore,
‘“a reference must be considered not only for what it expressly teaches, but
also for what it fairly suggests.’” In re Baird, 16 F.3d 380, 383 (Fed. Cir.
1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)).
As discussed above, we agree with the Examiner that Harding,
Centerchem, and Maitra teach the elements of the claimed composition, and
that the skilled artisan would have been motivated to combine the teachings
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of these references to obtain a composition that minimizes the appearance of
lines and wrinkles, protects the skin, and has light diffusion properties; doing
so would combine “familiar elements according to known methods” and
would be likely to “yield predictable results.” KSR, 550 U.S. at 416.
Appellants have not provided evidence or persuasive evidence to the
contrary.
Appellants next argue that the claimed composition is not obvious
because it demonstrates unexpectedly superior results in relation to
compositions containing hydrophobic compounds. App. Br. 4-5.
Appellants argue that the superior results are demonstrated by 1) Example
El of the Specification, and 2) the results of testing a composition
comparative to El as discussed in the Thaknar Declaration.8 Id.
Appellants argue that the comparative composition “was the same as
Example El according to the present invention . . . except it contained 3%
by weight FINSOLV TN (C12-15 alkyl benzoate), a hydrophobic compound
(replacing 3% by weight of the water).” Thakrar Deck ^ 3. Appellants
argue the stability of the comparative composition was tested as described in
the Thaknar Declaration, which details storage of samples in jars at varying
temperatures for defined periods, subjecting them to freeze/thaw cycles,
inspection of the contents, and evaluation of application to the skin.
Thaknar Deck ^ 4. Appellants argue that the comparative composition did
not share the “unique stability achieved with the claimed composition that is
completely free of hydrophobic compounds.” App. Br. 4-5.
8 Declaration of Jipsha Thakrar under 37 C.F.R. § 1.132, executed April 21,
2014. Jipsha Thakrar is an employee of the assignee and inventor of the
subject application. Thakrar 1,2.
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The Examiner responds:
the alleged improved characteristics for Example El ... in
terms of skin application versus the stability tested comparative
formulation ... are attributed to the absence of a hydropho[b]ic
compound [FINSOLV] .... However, it is noted that the
stability test described in par. 4 of the Declaration was only
performed for the comparative formulation, and not the
inventive composition, Example El.
Ans. 17-18. The Examiner further finds that the comparative composition
El tested only a single concentration of one type hydrophobic compound
despite that the claim is generic to all such compounds, and does not even
test the effect of hydrophobic compounds from the various definitional
categories listed in Appellants’ Specification. Id. at 18-19. The Examiner
further finds that no comparison was made to the closest prior art, Harding.
Id. From this, the Examiner concludes the testing is not commensurate in
scope, does not show that the differences observed are in fact unexpected,
and does not overcome the prima facie case of obviousness. Id.
We agree. See In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”). See also Bristol-Myers Squibb Co. v. Teva Pharms.
USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014) (“To be particularly probative,
evidence of unexpected results must establish that there is a difference
between the results obtained and those of the closest prior art, and that the
difference would not have been expected by one of ordinary skill in the art at
the time of the invention.”).
We acknowledge, but are not persuaded by Appellants’ argument that
the comparative composition in the DECLARATION, not the
composition of Harding, is the closest comparator to the
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claimed invention to show the criticality of freedom from
hydrophobic compounds. Harding is a very different
formulation from the claimed composition, one based on
quaternary ammonium compounds, clays not being the primary
ingredient. What could be closer than two compositions, one
with and one without a hydrophobic compound?
App. Br. 5. As discussed above, the results of the testing of a single
comparative composition El are insufficient to overcome the strong case of
prima facie obviousness, which precedent establishes requires sufficient
comparative data to show that the unexpected results are valid over the
entire breadth of the claim to prove the subject claims are patentable over the
prior art. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir.
2007) (secondary consideration of unexpected results “does not overcome
the strong showing of obviousness in this case.”).
In sum, for the reasons discussed, Appellants do not persuade us that a
preponderance of the evidence fails to support the Examiner’s conclusion
that the claimed composition would have been prima facie obvious to an
ordinary artisan. We, therefore, affirm the Examiner’s rejection of
obviousness of claim 1 over Harding, Centerchem, and Maitra. Because
they were not argued separately, claims 2-11, 14, 15, 17, and 19 fall with
claim 1. Because, as noted above, Appellants rely on the arguments
addressed above as to the rejection of claims 12 and 13 over Harding,
Centerchem, Maitra, and Spiegel, we likewise affirm that rejection.
SUMMARY
For the reasons discussed, we affirm the rejection of claims 1-11, 14,
15, 17, and 19 under pre-AIA 35 U.S.C. § 103(a) as obvious over Harding,
Centerchem, and Maitra, and the rejection of claims 12 and 13 under pre-
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AIA 35 U.S.C. § 103(a) as obvious over Harding, Centerchem, Maitra, and
Spiegel.
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
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