Ex Parte Dorschner et al

Board of Patent Appeals and Interferences

Jul 30, 2008

11106257 (B.P.A.I. Jul. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALBRECHT DORSCHNER and ANJA KNUPPEL
__________

Appeal 2008-35361
Application 11/106,257
Technology Center 1600
__________

Decided: July 30, 2008
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
self-tanning oil-in-water emulsions. The Examiner has rejected the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Heard July 15, 2008.
Appeal 2008-3536
Application 11/106,257

STATEMENT OF THE CASE
Claims 30-58 are pending and on appeal (App. Br. 4). Claims 30 and
57 are representative and read as follows:
30. A process for preparing a self-tanning oil-in-water
emulsion, wherein the process comprises changing a pH of a
mixture comprising an aqueous phase, an oil phase,
dihydroxyac[e]tone and one or more emulsifiers A whose
lipophilicity is pH-dependent to effect a phase inversion which
results in the self-tanning oil-in-water emulsion.

57. A method of tanning skin, wherein the method comprises
topically applying an emulsion obtained by the process of claim
30 to skin in an amount which is effective to tan skin.

The Examiner relies on the following documents:
Ascione US 5,858,334 Jan. 12, 1999
Alban US 5,318,774 Jun. 7, 1994
Gers-Barlag US 5,876,702 Mar. 2, 1999

The following rejections are before us for review:
Claims 57 and 58 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ascione (Ans. 3-4).
Claims 57 and 58 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Alban (Ans. 4).
Claims 30-56 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Ascione and Gers-Barlag (Ans. 5-8).
Claims 30-58 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Gers-Barlag and Alban (Ans. 9-12).
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ANTICIPATION -- ASCIONE
ISSUE
The Examiner cites Ascione as disclosing “oil-in-water ultra-fine
emulsions containing dihydroxyacetone for tanning the skin” (Ans. 3). The
Examiner notes that “the emulsifiers used in the composition read on the
instant emulsifier A as defined by [Appellants’] specification [at] pages 19-
20” (id.).
The Examiner contends that the limitation in claim 57, requiring the
product used in that claim to be made by the process of claim 30, “is a
product-by-process limitation” which does not distinguish the claimed
product from identical prior art products (id.). Therefore, the Examiner
finds, “in [the] instant case the same emulsion is used to tan the skin and
thus the process limitation does not provide a patentable difference to the
product” (id. at 4).
Appellants contend that “a phase inversion initiated by a pH change
(as recited in claims 30 and 42 from which claims 57 and 58 depend)
necessarily implies that a compound which increases or lowers the pH is
employed during the preparation of the emulsion. For example, in Example
6 of GERS-BARLAG NaOH is added to the system until a pH of 7 is
reached” (App. Br. 10 (citing Gers-Barlag, col. 21, ll. 1-3)).
Thus, Appellants argue, “an emulsion employed in the processes of
present claims 57 and 58 would necessarily comprise a substance which can
be traced back to the presence of significantly acidic or basic compound in
the materials which are employed for preparing the emulsion” (App. Br. 10).
In contrast, Appellants contend, the materials used in Ascione’s emulsions
do not appear to contain “any significantly acidic or basic compound at all.
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This means that the emulsion of Example I of ASCIONE does not comprise
any substance which can be traced back to the presence of significantly
acidic or basic compound in the materials which are employed for preparing
the emulsion” (id.). Therefore, Appellants conclude, Ascione’s emulsions
are “necessarily different from the emulsions recited in present claims 57
and 58,” and Ascione therefore “does not anticipate present claims 57 and
58” (id.)
Appellants do not argue claims 57 and 58 separately. We select claim
57 as representative of the rejected claims. 37 C.F.R. § 41.37(c)(1)(vii).
The issue with respect to this rejection, then, is whether Appellants have
shown that the Examiner erred in finding that Ascione meets all of the
limitations recited in claim 57.
FINDINGS OF FACT (“FF”)
1. Claim 57 recites a method of tanning skin in which an emulsion
obtained by the process of claim 30 is topically applied to skin in an amount
effective to tan the skin.
Claim 30, in turn, recites a process for preparing a self-tanning oil-in-
water emulsion. The process has one step: changing the pH of a mixture in
order to effect a phase inversion which results in the self-tanning oil-in-
water emulsion. The mixture contains an aqueous phase, an oil phase,
dihydroxyacetone, and one or more emulsifiers “A” whose lipophilicity is
pH-dependent.
2. The Specification discloses the “[t]he emulsifier(s) A is/are
particularly advantageously chosen from the group of mono-, oligo- and
polyethoxylated compounds, in particular polyethoxylated mono- or
polybasic alcohols or fatty acids, for example . . . - fatty alcohol ethoxylates”
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(Spec. 19). The Specification further discloses that “[i]t is advantageous to
choose the fatty alcohol ethoxylates from the group of ethoxylated stearyl
alcohols, cetyl alcohols, [or] cetylstearyl alcohols” (id. at 20). Ceteareth-20
is listed among the suitable fatty alcohol ethoxylate emulsifiers (id. at 21).
3. Ascione discloses “artificial suntan compositions having improved
activity . . . which comprise specific oil-in-water emulsions (in a
cosmetically acceptable vehicle or carrier) containing dihydroxyacetone as
the self-tanning agent” (Ascione, col. 1, ll. 15-19). Ascione discloses that
when its composition is “applied to the skin, especially to the face, it elicits a
tanning effect, the appearance of which is similar to that which may result
from prolonged exposure to the sun (natural tan) or under a UV lamp” (id. at
col. 1, ll. 24-27). Ascione therefore discloses the step in claim 57 of
applying the oil-in-water emulsion to the skin in an amount effective to tan
skin.
4. Ascione discloses that its self-tanning oil-in-water emulsions have the
following composition:
(i) aqueous phase: from 50% to 95% by weight,
preferably from 70% to 90% by weight, relative to the total
weight of the formulation;
(ii) oily phase: from 5% to 50% by weight, preferably
from 10% to 30% by weight, relative to the total weight of the
formulation;
(iii) dihydroxyacetone: from 0.5% to 10% by weight,
preferably from 1% to 7% by weight, relative to the total
weight of the formulation; and
(iv) (co)emulsifier(s): from 0.5% to 20% by weight,
preferably from 2% to 10% by weight, relative to the total
weight of the formulation.

(Ascione, col. 3, l. 58, through col. 4, l. 3.)
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5. Ascione discloses that “the emulsifier systems appropriate to the
present invention are nonionic emulsifiers and, more particularly, are
polyoxyethylenated and/or polyoxypropylenated fatty alcohols (i.e.,
compounds prepared by reacting an aliphatic fatty alcohol such as behenyl
alcohol or cetyl alcohol, with ethylene oxide or propylene oxide or an
ethylene oxide/propylene oxide mixture)” (Ascione, col. 4, ll. 41-48).
6. Example 1 of Ascione is an oil-in-water emulsion, obtained by
temperature change-induced phase inversion, that contains dihydroxyacetone
and cetylstearyl alcohol containing 15 mol of ethylene oxide (see id. at col.
5, ll. 15-59). The composition of claim 1 is also disclosed as containing
fragrance and preservatives (id. at col. 5, ll. 44-46).
7. Ascione discloses that its compositions can contain a variety of
additional ingredients consistent with the self-tanning utility:
Exemplary traditional cosmetic adjuvants and additives
suitable for formulation into the aqueous phase and/or into the
fatty phase of the emulsions according to the invention
(depending on their water-soluble and/or lipid-soluble
character), are, in particular, ionic or nonionic thickeners,
softeners, antioxidants, opacifiers, stabilizers, emollients, insect
repellants, organic sunscreens which are active in UV-A and/or
UV-B, photoprotective inorganic nanopigments and pigments,
moisturizers, vitamins, fragrances, preservatives, fillers,
sequestering agents, dyes, or any other constituent typically
formulated into artificial suntan preparations.

(Ascione, col. 3, ll. 35-47.)
PRINCIPLES OF LAW
It is well settled that “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
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It is also “well settled that the presence of process limitations in
product claims, which product does not otherwise patentably distinguish
over the prior art, cannot impart patentability to that product.” SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006)
(quoting In re Stephens, 345 F.2d 1020, 1023 (CCPA 1965). As stated in In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted):
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based
on the product itself. The patentability of a product does not
depend on its method of production. If the product in a
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though
the prior product was made by a different process.

Also, once the Examiner establishes that a product recited in terms of its
process of making is prima facie unpatentable due to anticipation,
Appellants bear the burden of proving “that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
Id. at 698 (quoting In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977)).
ANALYSIS
We do not agree with Appellants that the Examiner has failed to
establish a prima facie case that Ascione anticipates claim 57. As required
by claim 57, Ascione discloses a method of tanning skin in which an oil-in-
water emulsion that contains dihydroxyacetone is topically applied to the
skin (FF 3).
Ascione discloses that its self-tanning oil-in-water emulsions also
contain, as emulsifiers, polyoxyethylenated fatty alcohols (FF 5), with
polyoxyethylenated cetylstearyl alcohol being used in Example 1 (FF 6). As
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the Examiner points out (Ans. 3), and Appellants do not dispute, the
emulsifiers used by Ascione are the same as those disclosed in Appellants’
Specification (see FF 2) as meeting the requirements of “emulsifier[] A” in
claim 30.
We therefore agree with the Examiner that the composition applied to
the skin in Ascione contains both of the ingredients used in the preparative
method of claim 30 -- dihydroxyacetone and an emulsifier A whose
lipophilicity is pH-dependent. Moreover, because the composition is an oil-
in-water emulsion, Ascione’s self-tanning composition has the structural
relationship between the oil and aqueous phases that results from the
preparative method of claim 30.
Because its emulsion is prepared by phase inversion (FF 6), Ascione
provides further evidence that the structure of its oil-in-water emulsion is the
same as that of the emulsion produced by claim 30, and used in claim 57.
Therefore, because it has the same ingredients and structure required by
claim 57, we agree with the Examiner that it was reasonable to conclude that
Ascione’s composition is the same as that claimed, and therefore anticipates
claim 57.
Appellants argue that an emulsion employed in the process of claim
57 “would necessarily comprise a substance which can be traced back to the
presence of significantly acidic or basic compound in the materials which
are employed for preparing the emulsion” (App. Br. 10; see also Reply Br.
2-4). We are not persuaded by this argument.
First, claim 30 does not require the emulsion to have any particular
pH. The claim therefore does not inherently or necessarily require the
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emulsion used in claim 57 to have any particular concentration or amount of
hydrogen ions.
Second, Appellants have not provided persuasive evidence showing
that Ascione’s compositions differ from those encompassed by claim 57.
Given that the composition of Ascione’s Example 1 contains fragrance and
preservatives (FF 6), and that Ascione discloses its compositions as
containing a variety of cosmetic additives (FF 7), it is not clear that the
compositions described by Ascione necessarily lack materials that would be
traced back to a change in the composition’s pH.
Moreover, because Appellants have not pointed to any specific
evidence showing any difference between the products described by Ascione
and a product encompassed by the claims, Appellants have not met the
burden required to rebut the Examiner’s prima facie case of anticipation.
See Thorpe, 777 F.2d at 698.
In sum, because the Examiner has established by a preponderance of
the evidence that the emulsion of Ascione has the same ingredients and
structure as the emulsion prepared by the process of claim 30, we agree with
the Examiner that it was reasonable to conclude that Ascione’s self-tanning
compositions are encompassed by the compositions recited in claim 57. The
fact that Ascione’s emulsion was not made by the same process as claimed
does not render it any less anticipatory. See In re Thorpe, 777 F.2d at 697.
We therefore affirm the Examiner’s rejection of claim 57 as
anticipated by Ascione. Because it was not argued separately, claim 58 falls
with claim 57. 37 C.F.R. § 41.37(c)(1)(vii).
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ANTICIPATION -- ALBAN
ISSUE
Claims 57 and 58 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Alban (Ans. 4). The Examiner cites Alban as disclosing, “for
imparting an artificial tan to human skin,” the use of oil-in-water emulsions
that contain dihydroxyacetone and emulsifiers that “read on the instant
emulsifier A as defined by [Appellants’] specification [at] pages 19-20”
(id.). Applying reasoning similar to that in the anticipation rejection based
on Ascione, the Examiner finds that Alban’s self-tanning process anticipates
claim 57 because Alban’s emulsion contains the same ingredients as the
emulsion used in claim 57 (id.).
As in the rejection over Ascione, Appellants contend that, because it
is prepared by the process of claim 30, an emulsion used in the process of
claim 57 “would necessarily comprise a substance which can be traced back
to the presence of significantly acidic or basic compound in the materials
which are employed for preparing the emulsion” (App. Br. 12). Because
Alban’s emulsions do not contain any “substance which can be traced back
to the presence of significantly acidic or basic compound in the materials
which are employed for preparing the emulsion,” Appellants contend, Alban
cannot anticipate claim 57 (App. Br. 11-12; see also Reply Br. 3-4).
Appellants do not argue claims 57 and 58 separately. We select claim
57 as representative of the rejected claims. 37 C.F.R. § 41.37(c)(1)(vii).
The issue with respect to this rejection, then, is whether Appellants have
shown that the Examiner erred in finding that Alban meets all of the
limitations recited in claim 57.
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FINDINGS OF FACT
8. In Example IV, Alban discloses an oil-in-water emulsion described as
a “High SPF Artificial Tanning Lotion With Glycerin” (Alban, col. 13, l. 7).
Alban discloses that “[t]his emulsion has improved stability and is useful for
topical application to the skin to provide an artificial tan and to provide
protection of the skin from the harmful effects of ultraviolet radiation” (id. at
col. 13, ll. 43-46).
9. The oil-in-water emulsion disclosed in Alban’s Example IV contains
dihydroxyacetone, ceteareth-12, and ceteareth-20, and sunscreen (Alban,
col. 13, ll. 27-35).
10. The composition of Alban’s Example IV contains a number of
ingredients in addition to the dihydroxyacetone and ceteareth emulsifiers,
including disodium EDTA, and fragrance (id. at col. 13, ll. 18, 37).
ANALYSIS
We do not agree with Appellants that the Examiner has failed to
establish a prima facie case that Alban anticipates claim 57.
As required by claim 57, Alban discloses a method of tanning skin in
which an oil-in-water emulsion that contains dihydroxyacetone is topically
applied to the skin (FF 8, 9). Alban also discloses that its self-tanning oil-in-
water emulsion contains ceteareth-12 and ceteareth-20 (FF 9), which, as the
Examiner points out (Ans. 4), and Appellants do not dispute, are emulsifiers
disclosed in Appellants’ Specification (see FF 2) as meeting the
requirements of “emulsifier[] A” in claim 30.
We therefore agree with the Examiner that Alban’s composition
contains both of the ingredients used in the preparative method of claim 30
-- dihydroxyacetone and an emulsifier A whose lipophilicity is
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pH-dependent. Moreover, because the composition is an oil-in-water
emulsion, Alban’s self-tanning composition has the structural relationship
between the oil and aqueous phases that results from the preparative method
of claim 30. Therefore, because it has the same ingredients and structure
required by claim 57, we agree with the Examiner that it was reasonable to
conclude that Alban’s composition is the same as that claimed, and therefore
anticipates claim 57.
Appellants’ arguments do not persuade us that Alban’s compositions
differ from those encompassed by claim 57. Specifically, given that the
composition of Alban’s Example IV contains fragrance and disodium EDTA
(FF 10), it is not clear that the composition described by Alban necessarily
lacks materials that would be traced back to a change in the composition’s
pH.
Therefore, because it has the ingredients and structure required in the
preparative method of claim 30, we agree with the Examiner that it was
reasonable to conclude that Alban’s self-tanning compositions are
encompassed by the compositions recited in claim 57. Because Appellants
have not pointed to any specific evidence showing any difference between
the products described by Alban and a product encompassed by the claims,
Appellants have not met the burden required to rebut the Examiner’s prima
facie case of anticipation. See Thorpe, 777 F.2d at 698.
We therefore affirm the Examiner’s rejection of claim 57 as
anticipated by Alban. Because it was not argued separately, claim 58 falls
with claim 57. 37 C.F.R. § 41.37(c)(1)(vii).
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OBVIOUSNESS – ASCIONE AND GERS-BARLAG
ISSUE
Claims 30-56 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Ascione and Gers-Barlag (Ans. 5-8).
The Examiner cites Ascione as disclosing the preparation, by
temperature change-induced phase inversion, of oil-in-water emulsions that
contain dihydroxyacetone and nonionic emulsifiers which “are
polyoxyethylenated and/or polyoxypropylenated fatty alcohols” (Ans. 6).
The Examiner concedes that “Ascione does not teach the instant method of
phase inversion by varying pH” (id.).
To meet that limitation, the Examiner cites Gers-Barlag as disclosing
the preparation of oil-in-water emulsions by phase inversions induced by
changing either the temperature or the pH of the mixture (id. at 7-8). The
Examiner states:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the teaching
of Ascione and Gers-Barlag and utilize the instant process of
varying the pH for phase inversion rather than Ascione's
process of varying temperature for phase inversion for making
the microemulsion. One would have been motivated to do so
with the expectation of similar results since Gers-Barlag teaches
the varying the pH or varying the temperature provides o/w
[(oil-in-water)] microemulsions and Ascione teaches the use of
temperature to provide o/w microemulsions. Thus, a skilled
artisan would have reasonably expected success in the instant
combination since Gers-Barlag teaches that either process
provides an o/w microemulsion, i.e. both processes are
functionally equivalent in that they both function to cause phase
inversion and yield an o/w microemulsion. Furthermore,
Ascione teaches the same types of emulsifiers as those taught in
Gers-Barlag to help phase inversion; thus one would have
expected similar results.
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(Id. at 8.)
Appellants contend, for a number of reasons, that the Examiner has
failed to establish a prima facie case of obviousness based on Ascione and
Gers-Barlag (see App. Br. 12-17). Appellants do not present separate
argument with respect to any of the claims subject to this ground of
rejection. We select claim 30 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The issue with respect to the obviousness rejection, then, is whether
the Examiner has established a prima facie case of obviousness of claim 30
based on Ascione and Gers-Barlag.
FINDINGS OF FACT
11. As noted above, claim 30 recites a process for preparing a self-tanning
oil-in-water emulsion. The process has one step: changing the pH of a
mixture in order to effect a phase inversion which results in the self-tanning
oil-in-water emulsion. The mixture contains an aqueous phase, an oil phase,
dihydroxyacetone and one or more emulsifiers “A” whose lipophilicity is
pH-dependent.
12. Ascione discloses a process of preparing a self-tanning composition
having dihydroxyacetone and emulsifiers meeting the requirements of
emulsifier “A” in claim 30 (see FF 2-6, above), the process using a
temperature change-induced phase inversion to create an oil-in-water
emulsion (see FF 6). Ascione discloses:
[I]n a first embodiment of the preparative process according to
the invention, the phase inversion of the emulsion is conducted
in the presence of DHA (which DHA is preferably present in
the initial aqueous phase); in a second embodiment of this
process, which is preferred, this DHA is introduced only after
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the emulsion has been obtained by phase inversion. It is of
course possible to utilize both embodiments concurrently.

(Ascione, col. 4, ll. 24-31.)
13. Ascione does not disclose using a pH change-induced phase inversion
to prepare its oil-in-water emulsions.
14. Gers-Barlag discloses the use of oil-in-water emulsions to improve the
solubility of UV-filtering compounds useful in sunscreens (see Gers-Barlag,
col. 2, l. 21, through col. 5, l. 5). Gers-Barlag discloses that UV-filtering
compounds suitable for use in its emulsions include 4,4',4"-(1,3,5-triazine-
2,4,6-triyltriimino)tris-benzoic acid tris(2-ethylhexyl ester), synonym: 2,4,6-
tris[anilino-(p-carbo-2'-ethyl-1'-hexyloxy)]-1,3,5-triazine (id. at col. 1, ll. 64-
67) and 2-phenylbenzimidazole-5-sulphonic acid and its salts (id. at col. 2,
ll. 27-28).
15. Gers-Barlag discloses processes in which the relatively insoluble UV
filtering compounds are incorporated “into emulsions, in particular O/W
emulsions, O/W microemulsions or O/W/O emulsions” (Gers-Barlag, col. 5,
ll. 21-23) by a process that includes a phase inversion step performed by
“varying at least one parameter chosen from the group consisting of pH,
temperature and the concentration or concentrations of at least one of the
emulsifiers chosen” (id. at col. 5, ll. 58-60).
16. Gers-Barlag discloses that emulsifiers useful in it processes are those
whose “lipophilicity either depends on the pH such that the lipophilicity is
increased or decreased by raising or lowering the pH, it being unimportant
which of the two possible changes in lipophilicity is effected by raising or
lowering the pH” (Gers-Barlag, col. 4, ll. 57-61).
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17. Example 6 of Gers-Barlag discloses preparing an O/W/O, or oil-in-
water-in-oil, emulsion by increasing the pH to 7 with NaOH to induce a
phase inversion (Gers-Barlag, col. 20, l. 52, through col. 21, l. 3).
18. Gers-Barlag discloses that “[i]t lies here within the general expertise
of the expert and requires no inventive step at all to determine the
temperature or pH range in which phase inversion takes place for a given
emulsifier or a given emulsifier system in a given aqueous/oily phase
system” (Gers-Barlag, col. 18, ll. 46-50).
19. Gers-Barlag discloses:
The cosmetic and dermatological formulations according to the
invention can comprise cosmetic auxiliaries such as are usually
used in such formulations, for example preservatives,
bactericides, perfumes, substances for preventing foaming,
dyestuffs, pigments which have a coloring action, thickeners,
humidifying and/or humectant substances, fats, oils, waxes or
other customary constituents of a cosmetic or dermatological
formulation, such as alcohols, polyols, polymers, foam
stabilizers, electrolytes, organic solvents or silicone derivatives.

(Gers-Barlag, col. 15, ll. 15-24.)
20. Gers-Barlag also discloses that it is “in general preferred” for its
compositions to contain antioxidants (Gers-Barlag, col. 25-28), and that the
antioxidants can be any of a number of compounds having widely varying
structures and properties (see id. at col. 15, l. 29, through col. 16, l. 6).
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PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. “[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.”

In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted,
bracketed material in original). Thus, as the Supreme Court has pointed out,
“a patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
In KSR, however, the Supreme Court also indicated that it is obvious
to choose from among known equivalent solutions to a problem:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that is was obvious under § 103.

Id. at 1742.
The Supreme Court further noted that the analysis under 35 U.S.C. §
103 “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 1741. The Court also advised that “[a] person of ordinary skill is . . . a
person of ordinary creativity, not an automaton.” Id. at 1742.
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The Court thus implicitly endorsed the principle that “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”).
ANALYSIS
We do not agree with Appellants that the Examiner has failed to
establish a prima facie case of obviousness of claim 30 based on Ascione
and Gers-Barlag. One of ordinary skill in the art using temperature
change-induced phase inversions to prepare dihydroxyacetone-containing
oil-in-water emulsions according to Ascione (see FF 6, 12) would have been
advised by Gers-Barlag that oil-in-water emulsions useful in delivering
cosmetic agents could be obtained using phase inversions induced by either
temperature change or pH change in the presence of emulsifiers whose
lipophilicity is pH-dependent (FF 15, 16). Being a person of ordinary
creativity and common sense, see KSR, 127 S. Ct. at 1742-43, one of
ordinary skill would have reasonably inferred from Gers-Barlag that
temperature change and pH change were equivalently useful methods of
preparing oil-in-water emulsions, and would therefore have been prompted
by the disclosed equivalence of the two methods to prepare the oil-in-water
emulsions of Ascione using the pH change-induced phase inversion methods
disclosed by Gers-Barlag.
Appellants argue that one of ordinary skill in the art would not have
been motivated to combine the disclosures of the two references because the
dihydroxyacetone in Ascione’s emulsions is a compound that has no
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resemblance to the UV-filtering compounds of Gers-Barlag, and because
Ascione’s dihydroxyacetone is present in the aqueous phase of its emulsions,
whereas the UV-filtering compounds of Gers-Barlag is present in the oil
phase (App. Br. 13; see also Reply Br. 4).
We are not persuaded by this argument. As discussed above, we
agree with the Examiner that one of ordinary skill viewing Gers-Barlag
would have reasoned that changing pH and changing temperature were
equivalent methods of inducing a phase inversion to make oil-in-water
emulsions. As also discussed above, “[e]xpress suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d at 301.
Moreover, Ascione clearly discloses that the water or oil phase of its
emulsions can contain a number of ingredients, including “organic
sunscreens which are active in UV-A and/or UV-B” (Ascione, col. 3, ll. 42-
43 (FF 7)). Therefore, because both references are directed to preparing oil-
in-water emulsions for topical use on the skin in the context of tanning skin,
we do not agree that one of ordinary skill practicing Ascione’s methods
would have considered Gers-Barlag irrelevant.
Appellants argue that one of ordinary skill would not have been
motivated to substitute Ascione’s temperature change-induced phase
inversion methods with the pH change methods of Gers-Barlag because
Gers-Barlag focuses on inducing phase inversions by changing temperature,
as evidenced by the fact that only one of Gers-Barlag’s six examples uses
pH change to effect an inversion, and that example yields an O/W/O
emulsion, not the oil-in-water emulsions used by Ascione (App. Br. 14).
Appellants further urge that, even if Gers-Barlag is considered to teach
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equivalent creation of phase inversions using pH and temperature change,
that teaching is limited to Gers-Barlag’s very specific emulsion system that
contains sparing oil-soluble UV-filtering compounds, an emulsion system
very different from Ascione’s (Reply Br. 5-6).
We are not persuaded by these arguments. It is well settled that, “in a
section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.’” Merck & Co. Inc. v.
Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Thus, “[a]ll the disclosures in a
reference must be evaluated, including nonpreferred embodiments, and a
reference is not limited to the disclosure of specific working examples.” In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations omitted).
In the instant case, Gers-Barlag clearly discloses that phase inversions
useful in making oil-in-water emulsions can be induced by “varying at least
one parameter chosen from the group consisting of pH, temperature and the
concentration or concentrations of at least one of the emulsifiers chosen”
(Gers-Barlag, col. 5, ll. 58-60 (FF 15)). Based on this disclosure, we agree
with the Examiner that it was reasonable to consider pH and temperature
change equivalent ways of obtaining a phase inversion.
Moreover, Gers-Barlag discloses that its compositions can contain a
wide variety of different cosmetically acceptable ingredients (see FF 19, 20).
Given the widely varying properties of the ingredients disclosed as being
suitable in its emulsions, we do not agree with Appellants that one of
ordinary skill would have considered Gers-Barlag’s emulsion systems to be
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so sensitive to changing ingredients as to be unsuitable for making oil-in-
water emulsions that contain dihydroxyacetone.
Appellants argue that one of ordinary skill in the art would not have
had a reasonable expectation of performing the claimed process because
Ascione failed to disclose using a pH change to induce a phase inversion in a
dihydroxyacetone-containing mixture, despite the reasonableness in
assuming that the inventors of Ascione would have been aware of Gers-
Barlag’s disclosure that changing the pH was a suitable method of inducing
phase inversions (App. Br. 14-15; see also Reply Br. 6-8). Appellants urge
that the reason Ascione did not contemplate using pH change to induce
phase inversion is because of Ascione’s apparent concerns for the stability of
dihydroxyacetone, as evidenced by the inclusion of dihydroxyacetone in the
emulsions after inducing phase inversion, and by Alban’s disclosure of the
pH sensitivity of dihydroxyacetone (App. Br. 15-16; see also Reply Br. 8).
We are not persuaded by these arguments. Establishing non-
obviousness from the failure of others to invent the claimed subject matter
requires “evidence that, notwithstanding knowledge of the references, the art
tried and failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127
(CCPA 1977); see also, In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(“Absent a showing of . . . the failure of others, the mere passage of time
without the claimed invention is not evidence of nonobviousness.” (quoting
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
2004))).
While Appellants urge that it is reasonable to assume that the
inventors of Ascione were aware of the Gers-Barlag disclosure, Appellants
have not provided any evidence showing that the inventors of Ascione, or
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anyone else, tried, and failed, to make a dihydroxyacetone-containing oil-in-
water emulsion by changing the pH of a mixture containing
dihydroxyacetone to induce a phase inversion. Argument by counsel cannot
take the place of evidence. In re Cole, 326 F.2d 769, 773, (CCPA 1964); In
re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
Moreover, we do not agree that the pH sensitivity of
dihydroxyacetone would have discouraged one of ordinary skill in the art
from using a pH change to induce a phase inversion to yield the emulsions
of Ascione. The final pH of the emulsion in Gers-Barlag’s Example 6,
which uses pH change to create the phase inversion, is 7. While Alban
discloses that dihydroxyacetone is pH sensitive (Alban, col. 4, ll. 1-10 (FF
25 infra)), Alban nonetheless states that its emulsions “preferably have a pH
range from about 2.5 to about 7” (id. at col. 4, ll. 18-19 (FF 25 infra)). Thus,
contrary to Appellants’ argument, Gers-Barlag discloses using a pH that is
suitable for maintaining dihydroxyacetone-containing emulsions.
In sum, we agree with the Examiner that one of ordinary skill in the
art would have considered claim 30 prima facie obvious in view of Ascione
and Gers-Barlag. Because Appellants have not provided argument or
evidence sufficient to rebut the Examiner’s prima facie case, we affirm the
Examiner’s rejection of claim 30. Because they were not argued separately,
claims 31-56 fall with claim 30. 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS -- GERS-BARLAG AND ALBAN
ISSUE
Claims 30-58 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Gers-Barlag and Alban (Ans. 9-12). The Examiner cites
Gers-Barlag as disclosing oil-in-water emulsions that contain UV-filtering
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compounds that are sparingly soluble in oil, the emulsions being prepared by
inducing a phase inversion by changing the pH of a mixture containing
emulsifiers whose lipophilicity is pH-dependent (id. at 9).
The Examiner concedes that “Gers-Barlag does not teach the instant
water-soluble compound dihydroxyac[et]one (DHA) or a method of tanning
the skin” (id. at 11). To meet those limitations the Examiner cites Alban as
teaching that, although “a tan is highly desirable since [it] denotes youth and
health . . ., consumers apply sun protection agents while foregoing a tan”
because of the deleterious effects of UV radiation (id.). Thus, the Examiner
finds, “Alban teaches it would be highly desirable to provide a
dihydroxyacetone containing emulsion for delivering both an artificial tan
and also for providing protection from ultraviolet radiation” (id.).
The Examiner states:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the teaching
of Gers-Barlag and Alban and utilize DHA in the composition
of Gers-Barlag. One would have been motivated to do so since
Gers-Barlag teaches a sunscreen formulation and Alban teaches
the advantage of providing a composition that provides both
sun protection and tanning at the same time by using a
sunscreen and DHA, wherein the consumer need not give up a
tanned look or sun protection. Therefore, a skilled artisan would
have been motivated to add DHA to Gers-Barlag's composition
to simultaneously provide[] tanning and sun protecting benefits
for the advantages taught by Alban, i.e. a multi-beneficial
composition.

(Id. at 11-12.)
Appellants contend, for a number of reasons, that the Examiner has
failed to establish a prima facie case of obviousness based on Gers-Barlag
and Alban (see App. Br. 18-23). Appellants do not present separate
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argument with respect to any of the claims subject to this ground of
rejection. We select claim 30 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The issue with respect to the obviousness rejection, then, is whether
the Examiner has established a prima facie case of obviousness of claim 30
based on Gers-Barlag and Alban.
FINDINGS OF FACT
21. Gers-Barlag does not disclose dihydroxyacetone in its emulsions.
22. Alban discloses that, in view of the desirability of a sun-tanned
appearance, and the importance of protecting against UV-induced skin
damage, “it would be highly desirable to provide a dihydroxyacetone
containing emulsion for delivering both an artificial tan and also for
providing protection from ultraviolet radiation (Alban, col. 2, ll. 40-42).
23. (Reiterating FF 8 for convenience.) In Example IV, Alban discloses
an oil-in-water emulsion described as a “High SPF Artificial Tanning Lotion
With Glycerin” (Alban, col. 13, l. 7). Alban discloses that “[t]his emulsion
has improved stability and is useful for topical application to the skin to
provide an artificial tan and to provide protection of the skin from the
harmful effects of ultraviolet radiation” (id. at col. 13, ll. 43-46).
24. (Reiterating FF 9 for convenience.) The oil-in-water emulsion
disclosed in Alban’s Example IV contains dihydroxyacetone, ceteareth-12,
and ceteareth-20, and sunscreen (Alban, col. 13, ll. 27-35).
25. Alban discloses:
An essential component of the water phase of the compositions
of the present invention is an alkyl hydroxyalkylcellulose or
derivative thereof. These materials are nonionic, water-soluble
cellulose-based materials containing both a hydrophobic alkyl
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group and a shorter chain, hydrophilic hydroxylalkyl group.
Without being limited by theory, it is believed that the
hydrophobic alkyl chain provides a viscosity and rheological
effect through intramolecular and intermolecular associations.
Also, it is believed that the hydrophobic alkyl group can
interact with other components of the formulation.

(Alban, col. 4, l. 62, through col. 5, l. 5.) Alban discloses that “[t]he alkyl
hydroxyalkylcellulose . . . is present from about 0.1% to about 5%, more
preferably from about 0.1% to about 1%, and most preferably from about
0.4% to about 0.6%” (id. at col. 5, ll. 24-27).
26. Alban discloses:
The pH of a formulation is an important factor in
determining the stability of the dihydroxyacetone. For
example, it is well known that dihydroxyacetone rapidly
degrades at extremes of alkaline pH. Suppliers of
dihydroxyacetone suggest a preferred formulation pH range of
between 4 and 6, and recommend the use of a buffer system to
stabilize the pH value at about 5. . . . However, the
compositions of the instant invention preferably do not contain
a buffer, because it has been determined that unbuffered
formulations demonstrate improved chemical and physical
stability compared to buffered formulations. The compositions
of the instant invention preferably have a pH range from about
2.5 to about 7, more preferably from about 2.5 to about 6, even
more preferably from about 3.5 to about 5, and most preferably
from about 4 to about 4.75.

(Alban, col. 4, ll. 3-21 (citation omitted).)
27. Alban discloses that, in its dihydroxyacetone-containing emulsions,
“[a] very highly preferred optional component . . . is a sunscreening agent”
(Alban, col. 6, ll. 44-45). Alban discloses that 2-phenyl-benzimidazole-5-
sulfonic acid is one of a number of sunscreening agents suitable in its
emulsions (id. at col. 7, ll. 3-4).
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ANALYSIS
We do not agree with Appellants that the Examiner has failed to
establish a prima facie case of obviousness of claim 30 based on
Gers-Barlag and Alban. One of ordinary skill in the art using Gers-Barlag’s
pH change-induced phase inversions to prepare oil-in-water emulsions that
contain UV-filtering compounds (FF 15, 16) would have been advised by
Alban of the desirability of including dihydroxyacetone in such
compositions in order to impart self-tanning properties to the emulsion (see
FF 22-24). Being a person of ordinary creativity and common sense, see
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742-43 (2007), one of
ordinary skill would have reasonably inferred that including Alban’s
dihydroxyacetone in the mixture to be phase-inverted would confer self-
tanning properties to the final emulsion. We therefore agree with the
Examiner that a person of ordinary skill in the art would have been prompted
to include dihydroxyacetone in the pH-induced phase-inverted mixture of
Gers-Barlag, in order to obtain a composition having the desirable
combination of sunscreening and self-tanning properties.
Appellants argue that one of ordinary skill in the art would not have
been motivated to combine the disclosures of the two references because
Alban’s emulsions are prepared conventionally, with no mention of using
phase inversion, and because the dihydroxyacetone in Alban’s emulsions,
which is present in the aqueous phase of its emulsions, has no resemblance
to the UV-filtering compounds of Gers-Barlag, which are present in the oil
phase (App. Br. 18-19; see also Reply Br. 9). Appellants further argue that
the emulsion systems used in the references are sufficiently different to have
dissuaded their combination because, unlike the emulsions of Gers-Barlag,
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Alban teaches that an alkyl hydroxyalkylcellulose, or derivative, is an
essential component of its emulsions (App. Br. 19; see also Reply Br. 9).
Appellants further urge that one of ordinary skill in the art would not have
had a reasonable expectation of success in combining the references’
teachings, in view of Alban’s disclosure of the criticality of an alkyl
hydroxyalkylcellulose in its emulsion (App. Br. 22-23; Reply Br. 11-12).
We are not persuaded by these arguments. As discussed above, Gers-
Barlag discloses that its compositions can contain a wide variety of different
cosmetically acceptable ingredients (see FF 19, 20). As also discussed
above, given the widely varying properties of the ingredients disclosed as
being suitable in its emulsions, we do not agree with Appellants that one of
ordinary skill would have considered Gers-Barlag’s emulsion systems to be
so sensitive to additional ingredients as to be unsuitable for making oil-in-
water emulsions that contain dihydroxyacetone. We therefore agree with the
Examiner that one of ordinary skill in the art would have been prompted to
include dihydroxyacetone in the mixtures of Gers-Barlag, with a reasonable
expectation that so doing would yield an oil-in-water emulsion having both
self-tanning and UV-protecting properties.
Moreover, Alban discloses that sunscreens suitable for combination
with dihydroxyacetone include 2-phenyl-2-benzimidazole-5-sulfonic acid
(FF 27), one of the two preferred sunscreen agents in Gers-Barlag’s
emulsions (FF 14). Given Alban’s disclosure of the desirability of
combining dihydroxyacetone and 2-phenyl-2-benzimidazole-5-sulfonic acid,
we agree with the Examiner that one of ordinary skill in the art practicing
Gers-Barlag’s methods would have been prompted to include
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dihydroxyacetone in the 2-phenyl-2-benzimidazole-5-sulfonic
acid-containing emulsions of Gers-Barlag.
Appellants argue that one of ordinary skill would not have been
motivated to use the pH change method of Gers-Barlag to induce the phase
inversion because Gers-Barlag focuses on inducing phase inversions by
changing temperature, as evidenced by the fact that only one of Gers-
Barlag’s six examples uses pH change to effect an inversion, and that
example yields an O/W/O emulsion, not the oil-in-water emulsions used by
Ascione (App. Br. 20). Appellants further argue that the pH sensitivity of
dihydroxyacetone would have dissuaded one of ordinary skill in the art from
using pH change to induce the phase inversion, particularly given Ascione’s
use of only temperature change to induce phase inversion in
dihydroxyacetone-containing mixtures (id. at 21-22), and given the risk of
localized pH extremes during addition of (Reply Br. 11).
We are not persuaded by these arguments. As Appellants point out,
the final pH of the emulsion in Gers-Barlag’s Example 6, which uses pH
change to create the phase inversion, is 7. While Alban discloses that
dihydroxyacetone is pH sensitive (FF 25), Alban nonetheless states that its
emulsions “preferably have a pH range from about 2.5 to about 7” (Alban,
col. 4, ll. 18-19 (FF 25)). Thus, as pointed out above, Gers-Barlag discloses
using a pH that is suitable for maintaining dihydroxyacetone-containing
emulsions. We therefore do not agree that the pH sensitivity of
dihydroxyacetone would have discouraged one of ordinary skill in the art
from including it in a mixture with a UV-filtering compound and an
emulsifier whose lipophilicity is pH-dependent, and effecting a pH change to
induce a phase inversion to yield an oil-in-water emulsion.
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In sum, we agree with the Examiner that one of ordinary skill in the
art would have considered claim 30 prima facie obvious in view of Gers-
Barlag and Alban. Because Appellants have not provided argument or
evidence sufficient to rebut the Examiner’s prima facie case, we affirm the
Examiner’s rejection of claim 30. Because they were not argued separately,
claims 31-58 fall with claim 30. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the Examiner’s rejection of claims 57 and 58 under
35 U.S.C. § 102(b) as anticipated by Ascione.
We affirm the Examiner’s rejection of claims 57 and 58 under
35 U.S.C. § 102(b) as anticipated by Alban.
We affirm the Examiner’s rejection of claims 30-56 under 35 U.S.C. §
103(a) as being obvious in view of Ascione and Gers-Barlag.
We affirm the Examiner’s rejection of claims 30-58 under 35 U.S.C. §
103(a) as being obvious in view of Gers-Barlag and Alban.

AFFIRMED

cdc

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON VA 20191
29