Ex Parte Den Brave et al

Patent Trial and Appeal Board

Dec 21, 2016

13058247 (P.T.A.B. Dec. 21, 2016)

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.
13/058,247 05/03/2011 Kerstin Den Brave BHD-4662-1814 9406
23117 7590 12/23/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BUCKLEY, AUDREA
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KERSTIN DEN BRAVE, HEIDI MOSER,
and HORST WESTENFELDER1
Appeal 2015-007361
Application 13/058,247
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to cosmetic
compositions comprising a tanning agent and titanium dioxide particles,
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as DSM IP Assets B.V. (Br.
2.)
Appeal 2015-007361
Application 13/058,247
STATEMENT OF THE CASE
Appellants’ “invention relates to novel cosmetic or dermatological
compositions comprising at least one specific titanium dioxide and at least
one self-tanning agent and a cosmetically acceptable carrier.” (Spec. 1:IS­
IS.) According to the Specification, “[t]he compositions are in particular
suitable for artificial/sunless tanning and/or browning of human skin.” (Id.
at 1:15—16.)
Claims 1, 6—8, 10—13, and 18—20 are on appeal. Claim 1 is
illustrative:
1. A cosmetic or dermatological composition comprising:
at least one self-tanning agent, and
at least one additive selected from titanium dioxide particles,
wherein the titanium dioxide particles are double coated titanium
dioxide particles having
an inner inorganic silica coating and an outer organic
coating selected from the group consisting of silicone oils,
alkyl silanes, olefmic acids, polyols or organophosphonic
acids and mixtures thereof, wherein the titanium dioxide
particles are substantially free of coating formed of
aluminum or an aluminum compound, and wherein
the self-tanning agent comprises at least one of erythrulose and
dihydroxyacetone.
(Br. 10 (Claims App’x).) Appellants elected erythrulose as the self-tanning
agent. (See 12/21/09 Resp. to Restriction Requirement 1; see also Ans. 2.)
We limit our analysis of claims to the patentability of the elected species.
See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
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Application 13/058,247
The claims stand rejected as follows:
I. Claims 1, 6—8, and 12 under 35 U.S.C. § 103(a) over Wolber2
and New Materials.3
II. Claims 10, 11, 13, and 18—20 under 35 U.S.C. § 103(a) over
Wolber, New Materials, and Doring.4
REJECTION I
Issue
Has the Examiner established by a preponderance of the evidence that
claims 1, 6—8, and 12 would have been obvious over Wolber and New
Materials?
Findings of Fact
FF 1. The Examiner’s findings of fact and statement of Rejection I
may be found at pages 2-4 of the Examiner’s Answer. We adopt those
findings and provide the following for emphasis.
FF 2. Wolber teaches “cosmetic and dermatological preparations,
comprising one or more self-browning substances, for colouring the skin . . .
of humans and animals.” (Wolber Abstract.)
FF 3. The Examiner finds that Wolber teaches an example
preparation including, among other ingredients, erythrulose at 0.5% by
weight and titanium dioxide at 1% by weight. (Ans. 2—3, citing Wolber at
2 Wolber et al., WO 2005/004826 Al, published Jan. 20, 2005. Our citations
are to the German-language original reference.
3 Press Release, New Materials International, New DSM Nutritional
Products enriches the PARSOL range with PARSOLTX (May 16, 2006).
4 Doring et al., US 2006/0008426 Al, published Jan. 12, 2006.
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31 (Example lb).) The Examiner finds that Wolber teaches UV-A filter
substances include PARSOL® 1789. (Id., citing Wolber at 13.) Appellants
do not dispute these findings.
FF 4. New Materials teaches “PARSOL TX is a new microfme
Titanium Dioxide that eliminates once and for all the compatibility issue
with PARSOL 1789 .. . without any side effects, like deactivation or
discoloration.” (New Materials 2.) New Materials further teaches
PARSOL TX also significantly contributes to in vivo SPF, and
offers an excellent transparency profile when formulated. It also
has superior stability due to a very complete surface treatment^]
PARSOL TX offers a very high degree of formulation flexibility,
is compatible with almost all cosmetic ingredients and, of course,
complements the entire PARSOL range.
(Id.)
FF 5. Appellants’ Specification discloses “the titanium dioxide is a
double coated titanium dioxide having an inner inorganic silica coating and
an outer organic coating .... Such coated titanium dioxide nanoparticles
. . . are commercially available as PARSOL® TX.” (Spec. 4:12—18.) The
outer coating of PARSOL® TX comprises dimethicone (a silicone oil). (Id.
at 5:10-13.)
Principles of Law
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
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Application 13/058,247
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
Appellants argue the patentability of claims 1, 6—8, and 12 as a group.
We select claim 1 as representative.
The Examiner finds that Wolber teaches a skin-toning product
comprising, inter alia, erythrulose as a self-tanning agent, and substantially
aluminum-free titanium dioxide particles. (Ans. 2.) The Examiner finds
that Wolber further teaches PARSOL® 1789 may be used as a UV-A filter
agent. (Ans. 3.)
The Examiner finds that Wolber does not teach the double-coated
titanium dioxide particles recited in claim 1, and so turns to New Materials.
(Ans. 3.) The Examiner finds that the claimed titanium dioxide particles are
commercially-available as PARSOL® TX. (Id. (citing Appellants’
Specification).) The Examiner finds New Materials describes the
advantages of PARSOL® TX including, in particular, that “PARSOL TX
solves a compatibility issue exhibited by PARSOL 1789.” (Id. at 3^4.)
The Examiner concludes it would have been obvious to combine the
teachings of Wolber and New Materials, thus producing the composition of
claim 1. (Id. at 3.) The Examiner reasons that both Wolber and New
Materials relate to sun-screening agents useful in personal care
compositions, and it would have been obvious “to substitute PARSOL TX as
taught by New Materials [] for PARSOL 1789 disclosed in the formulations
of Wolber” in order to predictably obtain the benefits of PARSOL® TX
taught in New Materials (e.g., solving compatibility problems of PARSOL®
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Application 13/058,247
1789, significantly contributing to in vivo SPF, excellent transparency
profile, etc.). {Id. at 3—4, 8.)
We agree with the Examiner’s fact-finding, reasoning, and conclusion
that claim 1 would have been obvious based on the cited references.
Appellants argue the invention relates to the “surprising discovery that
double coated titanium dioxide particles ... do not cause compositional
discoloration when employed conjointly with erythrulose.” (Br. 5.)
According to Appellants, “neither Wolber [] nor the New Materials article
teach[] that there is even a discoloration issue of titanium dioxide particles in
combination with erythrulose, let alone how such an issue could be solved.”
(Id.)
This argument is unpersuasive. It is not necessary that the skilled
artisan combine the references for the same reasons that prompted
Appellants’ invention. KSR, 550 U.S. at 419. Nor must the art expressly
disclose an alleged newly-discovered property of an otherwise obvious
composition. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (the
“statement that a prima facie obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and results of a
claimed structure is not the law.”)
Based on the preponderance of the evidence, we agree with the
Examiner that the skilled person would have combined the teachings of
Wolber and New Materials and produced a composition within the scope of
claim 1. The skilled person would have predictably modified the tanning
composition of Wolber by including PARSOL® TX for its known benefits.
New Materials teaches that PARSOL® TX “eliminates once and for all the
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compatibility issue with PARSOL 1789 .. . without any side effects, like
deactivation or discoloration.” (FF 4.) Other advantages to using
PARSOL® TX include significant in vivo SPF, excellent transparency, and
superior stability. (FF 4.)
Appellants’ Specification discloses that “[i]t has surprisingly been
found, that the combination of certain titanium dioxides with a self-tanning
agent in cosmetic compositions . . . significantly improv[es] the stability of
the compositions [and] reduc[es] the discoloration of the formulations while
showing an enhanced transparency.” (Spec. 17—20; see also id. at 12—14.)
But these results appear consistent with the expected benefits that the art
already recognized are provided by PARSOL® TX. (FF 4.) Appellants have
thus not presented evidence of unexpected results sufficient to overcome the
Examiner’s prima facie case.
Appellants argue “the rationale expressed by the Examiner belies the
art knowledge of a skilled person.” (Br. 6.) In support, Appellants cite the
Mendrok-Edinger Declaration and Exhibits A and B (data sheets for
PARSOL® 1789 and PARSOL® TX) attached to the Declaration.5 (Id.)
More specifically, Appellants argue “a skilled person in the art would never
envisage to replace PARSOL® 1789 . . . [with] PARSOL® TX” because
PARSOL® 1789 is a UV-A filter and PARSOL® TX is a UV-B filter that
provides “insufficient coverage in the UVA range.” (Id.; see also Mendrok-
Edinger Decl. 14 (citing Exhibits A and B).) Mendrok-Edinger opines that
a substitution of PARSOL® TX for PARSOL® 1789 “would not be
5 See Declaration of Christine Mendrok-Edinger dated July 3, 2014
(“Mendrok-Edinger Decl.”).
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considered in the first instance” and “a skilled person would have absolutely
no expectation of success in filtering UV-A wavelengths if PARSOL® TX
additive was in fact substituted for PARSOL® 1789 additive.” (Mendrok-
Edinger Decl. 3—5.)
We are unpersuaded. First, Appellants’ evidence is inconsistent
regarding the UV-A protection provided by PARSOL® TX. Although
Appellants argue and Mendrok-Edinger opines that PARSOL® TX provides
“insufficient coverage in the UVA range,” the data sheet for PARSOL® TX
that is relied upon as proof expressly states “PARSOL® TX provides very
good SPF performance and significant UV-A protection.” (See Mendrok-
Edinger Exhibit B (emphasis added).) Second, claim 1 does not require a
UV-A protecting agent, much less one with optimal protective activity.
Accordingly, we agree with the Examiner that “substitution of one type of
UV filter for another type of UV filter . . . may be considered the use of a
known technique of selecting a UV-filter appropriate for the particular
desired UV control.” (Ans. 7.) And third, Appellants’ argument presumes
the Examiner’s combination of Wolber and New Materials requires
wholesale replacement of PARSOL® 1789 with PARSOL® TX — instead
of, for example, a partial substitution resulting in a composition with both
ingredients. As the Examiner noted, it would have been obvious to the
skilled person “to substitute PARSOL® TX as taught by New Materials for
at least some of the PARSOL® 1789 disclosed in the formulations of
Wolber.” (Ans. 6 (emphasis added).) In this way, even assuming
Appellants’ characterization of the UV-A and UV-B protective properties of
the compounds is accurate, the skilled person would predictably prepare a
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formulation including both PARSOL® TX and PARSOL® 1789 to provide
broader protection.
Appellants contend “the New Materials publication only discloses
that, based on the new grade of Titanium dioxide the combination of
PARSOL® 1789 & PARSOL® TX is now possible.” (Br. 6.) New
Materials does not, Appellants argue, contain any suggestion that the two
compounds “would suitably be exchanged.” (Id.) This argument is
unpersuasive for the reasons previously discussed. Whether New Materials
teaches that PARSOL® 1789 and PARSOL® TX should be combined in
cosmetic compositions (as Appellants suggest) or entirely exchanged, either
option produces a composition with all the elements of claim 1.
Finally, Appellants’ argument that the Examiner used “impermissible
hindsight reasoning” is also unpersuasive. (Br. 6, 8.) New Materials
provides explicit teachings concerning the benefits of PARSOL® TX in
cosmetic compositions that would have motivated the skilled person to use
PARSOL® TX in the tanning composition of Wolber. This combination
would have been obvious without resort to Appellants’ Specification.
Conclusion of Law
We conclude the Examiner established by a preponderance of the
evidence that claim 1 would have been obvious over Wolber and New
Materials. Claims 6—8 and 12 have not been argued separately and fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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REJECTION II
The Examiner rejected claims 10, 11, 13, and 18—20 as obvious over
Wolber, New Materials, and Doring. The Examiner finds that Wolber does
not teach the specific amount of erythrulose recited in these claims (e.g.,
claim 18 reciting the erythrulose is present in an amount of 1—5% by weight)
and that Wolber does not clearly teach “at least one further light screening
agent” as in claim 13. (Ans. 4.)
The Examiner finds that Doring cures these deficiencies. (Id.)
According to the Examiner, Doring teaches formulations that include from
0.1 to 8% of self-tanning compounds such as erythrulose. (Id. at 4—5 (citing
Doring 1149).) The Examiner further finds Doring teaches multiple
photoprotective filter substances that protect against UV rays. (Id. at 4
(citing Doring || 18, 34, and 58—75).)
The Examiner concludes the skilled artisan would have predictably
designed formulations within the scope of the claims based on routine
optimization in view of the teachings of the cited art. (Ans. 5.)
Appellants reprise their prior arguments. (Br. 9 (“one would not
obvious[ly] arrive at the claimed invention herein based on the all[e]ged
combination of Wolber et al and the New Materials article.”).)
We adopt the Examiner’s findings of fact, reasoning, and conclusion
that claims 10, 11, 13, and 18—20 would have been obvious over Wolber,
New Materials, and Doring. (Ans. 4—5.) Appellants’ arguments are
unpersuasive for the reasons previously stated.
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SUMMARY
We affirm the rejection of claims 1, 6—8, and 12 over Wolber and
New Materials. We affirm the rejection of claims 10, 11, 13, and 18—20
over Wolber, New Materials, and Doring.
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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