Ex Parte Ehlis et al

Patent Trial and Appeal Board

Mar 1, 2017

12746186 (P.T.A.B. Mar. 1, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/746,186 09/17/2010 Thomas Ehlis 32471/23828 7266
4743 7590 03/03/2017
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/03/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS EHLIS and MYRIAM SOHN1
Appeal 2016-001655
Application 12/746,186
Technology Center 1600
Before RICHARD J. SMITH, RYAN H. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a cosmetic formulation. Claims 1, 6, 25, 26, and 37-43
are on appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 We understand the Real Party in Interest to be BASF SE. Br. 3.
Appeal 2016-001655
Application 12/746,186
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1,37, and 38 are independent claims and read as
1. A cosmetic formulation comprising:
(a) particulates having an absorption in the range of 400 to
800nm, wherein the particulates are iron (III) oxide, magnetite,
interference-pigments based on mica and coated with iron oxide,
or mixtures thereof; and
(b) UV filters selected from (bi) particulate organic UV-filters,
wherein the (bi) particulate organic filters are benzotriazoles
shown below in formula (1)
wherein Ri and R2 independently from each other are Ci-Cisalkyl
which may be substituted by one or more radicals selected from
Ci-C4alkyl, C5-Ci2cycloalkyl and C6-Cioaryl.
37. A cosmetic formulation comprising:
(a) particulates having an absorption in the range of 400 to
800nm, wherein the particulates are interference-pigments based
on mica and coated with iron oxide; and
(b) compound shown below by formula (2)
follows:
(1)
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Appeal 2016-001655
Application 12/746,186
(2),
wherein the cosmetic formulation is free of soluble organic UV
filters (b2) and other soluble UV filters.
38. A cosmetic formulation comprising:
(a) particulates having an absorption in the range of 400 to
800nm, wherein the particulates are iron (III) oxide, magnetite,
interference-pigments based on mica and coated with iron oxide,
or mixtures thereof; and
(b) UV filters selected from (bi) particulate organic UV-filters,
wherein the (bi) particulate organic filters are (I) benzotriazoles,
(II) triazine derivatives, or (III) mixtures thereof,
wherein (I) the benzotriazoles are shown below in formula (1)
wherein Ri and R2 independently from each other are Ci-Cisalkyl
which may be substituted by one or more radicals selected from
Ci-C4alkyl, Cs-Ci2cycloalkyl and C6-Cioaryl, and
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Application 12/746,186
wherein (II) the triazine derivatives are shown below in
formula (3)
wherein R3 and R4 independently from each other are hydrogen;
Ci-Ci8alkyl; or C6-Ci2aryl;
Rs, R6 and R7 independently from each other are hydrogen;
hydroxy; halogen; Ci-Cisalkyl; Ci-Cisalkoxy; C6-Ci2aryl;
biphenylyl; C6-i2aryloxy; Cisalkylthio; carboxy; -COOM; Ci-
Ci8-alkylcarboxyl; aminocarbonyl; mono- or di-Ci-
Cisalkylamino; Ci-Cioacylamino; or -COOH; and
M is an alkali metal ion.
Br. 21, 24—26 (Claims App’x).
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Appeal 2016-001655
Application 12/746,186
The following rejection is on appeal:
Claims 1, 6, 25, 26, and 37-43 stand rejected under 35 U.S.C.
§ 103(a) over Ehlis2 and Huber.3 Final Action 3.
FINDINGS OF FACT
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. The facts set out below highlight certain evidence.
FF1. Huber discloses:
UV-stabilized particles which are distinguished by the fact that
they reflect or absorb light having wavelengths of from 290 to
500 nm. The invention furthermore relates to a process for the
production of the particles according to the invention and to the
use thereof in surface coatings ... in cosmetic formulations.
Huber Abstract, | 5; see also Final Action 5 (discussing Huber).
FF2. Huber discloses “[preference is given to the use of pearlescent
pigments. In particular, TiCF- and/or Fe2C>3-coated mica pigments.” Huber
110; see also Final Action 5 (discussing Huber).
FF3. Huber discloses “[t]he UV resistance of the above-mentioned
particles is significantly increased by application of UV protection agents or
UV stabilisers [sic] to the particle surface.” Huber at 115. “Suitable UV
stabilisers [sic] are known to the person skilled in the art and are
commercially available, such as, for example, UV absorbers.” Id. at 118.
2 U.S. Patent Application Pub. No. US 2004/0191191 A1 (published Sept.
30, 2004) (hereinafter “Ehlis”).
3 U.S. Patent Application Pub. No. US 2006/0155007 A1 (published July 13,
2006) (hereinafter “Huber”).
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Application 12/746,186
“Suitable UV absorbers are, for example, benzotriazoles, [and] triazines.”
Id. at 119. “It is furthermore also possible to employ mixtures of different
UV protection agents, with no limits being set on the mixing ratio.” Id. at
123; see also Final Action 5 (discussing Huber).
FF4. Ehlis discloses “[t]he present invention relates to the use of
specific symmetrical triazine derivatives for the protection of human and
animal hair and skin against the damaging effect of UV radiation, cosmetic
compositions comprising these triazine derivatives and processes] for
preparation of these compounds.” Ehlis 1 1; see also Final Action 5
(discussing Ehlis).
FF5. Ehlis discloses a triazine derivative compound of the following
formula:
%
Ehlis 119; see also Final Action 5 (discussing Ehlis).
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Application 12/746,186
FF6. Ehlis discloses that its triazole derivative can be combined with
benzotriazole compounds, iron oxides, and mica. Ehlis 1 55 (Table 1); see
also Final Action 5 (discussing Ehlis).
FF7. Ehlis discloses “UV-filter combinations (C) comprising (ci) at
least one symmetrical triazine derivatives [sic] of formula (1) [see FF5,
supra\; and (C2) at least one benzotriazole derivative of formula
wherein T2 is Ci-Cioalkyl or phenyl-substituted C1-C4 alkyl.” Ehlis H 96—
100; see also Final Action 5 (discussing Ehlis) and Br. 11 (conceding Ehlis’
disclosure).
FF8. Asa most preferred benzotriazole derivative, Ehlis discloses the
following:
Ehlis H101—03; see also Final Action 5 (discussing Ehlis).
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Application 12/746,186
DISCUSSION
We find the Examiner has established that the claims would have been
obvious over Ehlis and Huber. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner’s determination of
obviousness is incorrect. Only those arguments made by Appellant in the
Briefs have been considered in this Decision. Arguments not presented in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Appellants’
arguments are limited to independent claims 1,37, and 38. Br. 9.
Accordingly, claims 6, 25, 26, and 39-43 stand or fall on the basis of claims
1, 37 and 38. We address Appellants’ arguments below.
Appellants argue that Ehlis does not disclose iron oxide coated mica,
an absorption range of 400—800nm, and combining an interference pigment
with benzotriazole as required by each of claims 1, 37, and 38. Br. 10-12.
Appellants also argue that there would not have been motivation to combine
Ehlis and Huber because “there is no motivation within the four comers of
Ehlis for one of ordinary skill in the art to arrive at independent claims 1, 37,
and 38” and Huber is over-inclusive in the materials disclosed for its UV-
protectant cosmetic composition. Br. 12—19. For the reasons explained
below, we do not find Appellants’ arguments persuasive.
Relying on the prior art combination cited by the Examiner, a person
of ordinary skill in the art would see that Huber teaches a cosmetic
formulation with UV protection in the 290-500 nm range, which overlaps
the 400 to 800 nm range recited in the claims. FF1. “A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap [even slightly] the ranges disclosed in the prior art.” In re Peterson,
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Application 12/746,186
315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, reading Huber, the
skilled artisan would see that this composition can be composed of iron
oxide coated mica particles combined with a mixture of UV
stabilizers/absorbers, and as specific examples, benzotrizoles and triazines.
FF2, FF3.
Looking to Ehlis, the person of ordinary skill in the art would see that
a preferred embodiment of the reference’s cosmetic composition (FF4)
includes the benzotriazole compound recited in Appellants’ claims 1, 37,
and 38, and the triazine derivative recited in Appellants’ claim 38. FF5,
FF7, FF8. Moreover, Ehlis teaches that its triazole derivative may be
combined with benzotriazole compounds, iron oxides, and mica. FF6.
We agree with the Examiner’s rationale for making the prior art
combination. Final Action 6. Both references are directed to cosmetic
formulations providing UV protection. One reference (Huber) suggests
types of components for such a UV protection formulation and the other
(Ehlis) provides specific discussion on compounds that are particularly
useful for such components. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). “[W]hen 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 417. Here, the
cited prior art combination would have been merely combining familiar
elements to achieve predictable results.
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Application 12/746,186
SUMMARY
The rejection of claims 1, 6, 25, 26, and 37-43 under 35 U.S.C.
§ 103(a) over Ehlis and Huber is affirmed.
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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