Ex Parte Fares et al

Patent Trial and Appeal Board

Feb 12, 2015

12112375 (P.T.A.B. Feb. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HANI FARES, JOHN D. STRICKLAND,
RITAMARIE GUERRERO, and ISABELLE HANSENNE
__________

Appeal 2012-008011
Application 12/112,375
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
ROBERT A. POLLOCK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a skin
care composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as L’Oréal S. A.
(see App. Br. 1).
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Statement of the Case
Background
“There are many types of lotions, creams or gels available on the
market which provide a benefit to the skin of the user” (Spec. 1 ¶ 3).
“Silicone emulsions are more difficult to stabilize than conventional
emulsions, but they provide a luxurious feel” (Spec. 1 ¶ 3).
The Claims
Claims 1–4 and 6–14 are on appeal. Claims 1 and 4 are representative
and read as follows:
1. A skin care composition comprising:
a) at least one high internal phase emollient-in-water
emulsion;
b) at least one thickening agent present in an amount
of from about 0.01% to about 5% by weight, based
on the total weight of the composition;
c) at least one primary emulsifier chosen from a
water-in-silicone emulsifier;
d) at least one non-emulsifying silicone elastomer;
e) at least one active agent; and
f) water; and
wherein the composition is a silicone-in-water emulsion.

4. The composition of claim 1, wherein (a) is present in
an amount of from about 40% to about 60% by weight,
based on the total weight of the composition.

The Issue
The Examiner rejected claims 1–4 and 6–14 under 35 U.S.C. § 103(a)
as obvious over Pate,2 Charbit,3 Midha,4 and Sunkel5 (Ans. 4–8).

2 Pate et al., US 6,783,766 B2, issued Aug. 31, 2004.
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The Examiner finds that Pate teaches “cosmetic formulations
comprising a high internal phase ratio (HIPR) emollient-in-water emulsion
combined with a partial cosmetic formulation” (Ans. 4). The Examiner
finds that Pate teaches “the HIPR emulsion is combined with water, a
thickener, and a fragrance (active agent) for cosmetic application (see
components (a), (b), (e), and (f) of pending claim 1)” (Ans. 4). The
Examiner finds that Pate “specifically suggests including a thickener in the
finished cosmetic products” (Ans. 6).
The Examiner acknowledges that Pate differs in the amount of
thickener used (see Ans. 6), “does not specifically include an emulsifier
which is a water-in-silicone emulsifier” (Ans. 6) and does not necessarily
include a non-emulsifying silicone elastomer (see Ans. 7).
The Examiner finds that “Charbit teaches topically applicable
emulsion formulations for applications such as minimizing wrinkles on the
skin . . . Charbit teaches Example 1 having 0.3% by weight of Hostacerin
AMPS thickener” (Ans. 5–6). The Examiner finds that Midha teaches
“PEG/PPG-18/18 Dimethicone among the silicone emulsifiers desirable for
their low HLB properties” (Ans. 6). The Examiner finds that Sunkel teaches
“cosmetic compositions comprising non-emulsifying and emulsifying
crosslinked siloxane elastomers” (Ans. 7).
The Examiner finds it obvious to “employ a quantity of 0.3% by
weight thickener in the total formulation [of Pate] based on the Example 1 of

3 Charbit, Y., US 2005/0186169 A1, published Aug. 25, 2005.
4 Midha et al., US 2006/0078524 A1, published Apr. 13, 2006.
5 Sunkel et al., US 6,524,598 B2, issued Feb. 25, 2003.
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Charbit” and “since Charbit teaches that including a thickener desirably
enhances the stability of the emulsion compositions” (Ans. 6). The
Examiner finds it obvious to “implement polyoxyethylene modified
polydimethylsiloxane as suggested by Midha into the formulations of Pate . .
. since Midha teaches the desirable conditioning benefits and since Midha
teaches polydimethylsiloxane as an especially preferred silicone” (Ans. 7).
The Examiner finds it obvious to “implement the nonemulsifying
crosslinked silicone elastomers as taught by Sunkel into the formulations of
Pate . . . since Sunkel et al. teaches that the combination of emollient types
facilitate desirable balance between oil and water phases to an extent
sufficient to ensure long-term storage stability” (Ans. 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Pate, Charbit, Midha, and
Sunkel render the claims obvious?
Findings of Fact
1. Pate teaches “a high internal phase ratio (HIPR) emollient-in-
water emulsion is contacted with a partial cosmetic formulation to produce
an advanced cosmetic product” (Pate, col. 1, ll. 57–60).
2. The Specification teaches that “[s]uitable inorganic water
thickeners for use in the composition of the present invention include, but
are not limited to . . . clays . . . Carbomers . . . . Polyacrylamides” (Spec. 3–4
¶ 20).
3. The Specification teaches that “[s]uitable polymeric thickeners
for use in the composition of the present invention include natural and
modified natural polymers such as xanthan gum . . . Preferred thickening
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agents include acrylate copolymers , such as . . . Aristoflex HMS” (Spec 4–5
¶¶ 22–23).
4. Pate teaches that:
Minor amounts, preferably not greater than 5%, more
preferably not greater than 1%, and most preferably not
greater than 0.5% by weight, of water-compatible
substances, that is, substances which, by themselves are
incapable of forming aqueous HIPR emulsions, can be
added to the emollient prior to emulsification of the
emollient. Examples of such water-compatible substances
include rheology modifiers such as carbomers, acrylic
copolymers, polyacrylamides, polysaccharides, natural
gums, and clays

(Pate, col. 5, ll. 5–14).
5. The Specification teaches that “[s]uitable water-in-silicone
emulsifiers for use in the present invention include, but are not limited to . . .
ethoxylated/propoxylated silicones such as PEG/PPG-18/18 Dimethicone . .
. and Cetyl PEG/PPG-10/1 Dimethicone . . . ethoxylated silicones such as
PEG-10 Dimethicone” (Spec. 5 ¶ 27).
6. Pate teaches that the “HIPR sunscreen-in-water emulsion
advantageously includes a stabilizing amount of an additive to . . . prevent
diffusion of the sunscreen active disperse phase from small droplets of the
disperse phase to larger ones. The additive is . . . for example . . . a silicone
such as silicone oil or dimethicone” (Pate, col. 3, ll. 28–37).
7. The Specification teaches that “[s]uitable non-emulsifying
silicone elastomers for use in the composition of the present invention
include, but are not limited to, those sold under the names ‘DC 9040’ [Dow
Corning 9040]” (Spec. 6 ¶ 33).
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8. Pate teaches, in Example 1, that an “HIPR emulsion containing
Dow Corning 9040 Silicone Elastomer Blend is prepared . . . First, Dow
Corning 345 fluid (19.5%) and TERGITOLTM 15-s-12 . . . are added to the
Dow Corning 9040 Elastomer Blend (78.1%). The ingredients are mixed
until uniform” (Pate, col. 6, ll. 4–10).
9. Pate teaches that the mixture, or “disperse phase is merged at
the mixer with a separate deionized water stream phase containing a
DOWICIL™ 200 antimicrobial” ((Pate, col. 6, ll. 14–16).
10. The Specification teaches that “[s]uitable other active agents
include, but are not limited to, abrasives; absorbents; antimicrobial and
antifungal actives; aesthetic components such as fragrances” (Spec. 12 ¶ 59).
11. Pate teaches that “an HIPR emulsion of mineral oil and a
separately prepared HIPR emulsion of petrolatum can be combined with a
partial cosmetic formulation containing water, thickener, fragrance, and
color to form a body lotion” (Pate, col. 5, ll. 49–52).
12. Charbit teaches that “acrylic tetrapolymers . . . not only make it
possible to tighten the skin effectively and so to mask wrinkles and fine lines
and signs of tiredness etc., but also have self-emulsification properties”
(Charbit 1 ¶ 12).
13. Charbit teaches that “in order to enhance the stablllty of such
compositions . . . it may be useful to combine it with at least one thickener,
which for example may be . . . Aristoflex HMS” (Charbit 3 ¶ 44).
14. Charbit, in Example 1, shows the use of 0.3% Aristoflex HMS
(see Charbit 3–4 ¶ 48).
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15. Midha teaches “multi-phase personal care compositions
suitable for use on mammalian skin and hair. These compositions comprise a
conditioning phase and an oil continous benefit phase” (Midha 1 ¶ 2).
16. Midha teaches that “silicone emulsifiers suitable for use herein
include . . . PEG/PPG-18/18 Dimethicone” (Midha 6 ¶ 56).
17. Sunkel teaches “cosmetic compositions comprising a
combination of non-emulsifying and emulsifying crosslinked siloxane
elastomers” (Sunkel, col. 1, ll. 10–12).
18. Sunkel teaches that “[p]referred organopolysiloxane
compositions are dimethicone/vinyl dimethicone crosspolymers. Such
dimethicone/vinyl dimethicone crosspolymers are supplied by a variety of
suppliers including Dow Corning (DC 9040 and DC 9041)” (Sunkel, col. 5,
ll. 33–37).
19. The Specification teaches that the “HIP emulsions are generally
present in the composition of the present invention in an amount ranging
from about 10% to about 80% by weight; such as from about 35% to about
65% by weight; such as from about 40% to about 60% by weight, based on
the total weight of the composition” (Spec. 3 ¶ 17).
Principles of Law
“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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–8; FF 1–18) and agree that claims
1 and 4 are rendered obvious by Pate, Charbit, Midha, and Sunkel.
In particular, we note that Pate teaches a cosmetic composition which
may include ingredients including: (a) high internal phase emollient-in-water
emulsion (FF 1); (b) rheology agents (i.e. thickening agents in the parlance
of the Specification (FF 2–3)) including carbomers, clays, and
polyacrylamides in amounts up to 5% (FF 4); (c) an emulsifier (i.e. a
compound which stabilizes an emulsion) including dimethicone or silicon oil
(FF 6); (d) a non-emulsifying silicone elastomer (cf. “DC 9040” in the
Specification (FF 7)) such as Dow Corning 9040 Silicone Elastomer Blend
(i.e. DC 9040) (FF 8–9); (e) an active agent such as a fragrance or
antimicrobial agent (FF 11) (cf. fragrances or antimicrobial actives in the
Specification (FF 10); and water (FF 9).
Charbit teaches that acrylic tetrapolymers such as aristoflex HMS
have self-emulsification properties, help mask wrinkles, and are used in
amounts including 0.3% (FF 12–14). Midha teaches cosmetic compositions
using silicone emulsifiers including PEG/PPG-18/18 Dimethicone (FF 15–
16). Sunkel also teaches the use of DC 9040 in cosmetic compositions (FF
17–18).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have had reason to use
less than 5% amount thickeners because Pate prefers to use “[m]inor
amounts, preferably not greater than 5%” of rheology modifiers such as clay,
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carbomers and polyacrylamides (FF 5) and Charbit exemplifies the use of
0.3% thickener (FF 14). We further agree with the Examiner that the use of
Midha’s silicone emulsifier PEG/PPG-18/18 Dimethicone (FF 16) in Pate’s
cosmetic composition would have been an obvious substitution for the
generic dimethicone taught by Pate (FF 6). We also agree that the use of DC
9040 would have been obvious since both Pate and Sunkel teach the use of
DC 9040 in cosmetic compositions (FF 8, 18). Such a combination is
merely a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
We address Appellants’ arguments below.
Claim 1
Appellants contend that “[s]urprisingly, Appellant has found that the
claimed composition yields a stable composition with superior texture and
silkiness over other products devised by the prior art” (App. Br. 3–4).
We are not persuaded. Currently, Appellants only have attorney
argument and general statements in the Specification supporting this idea,
not evidence. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements . . . [do] not suffice.”) Further,
Appellants do not identify any comparison with the closest prior art, here the
composition of Pate. See In re Baxter Travenol Labs., 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.”).
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Appellants contend that
Pate in its Examples 4 and 5, teaches the use of the thickener
Carbopol® 980 in amounts of 25% and 23.4%, respectively.
In view of this clear teaching regarding the amount of
thickener employed by Pate, there clearly exists no
motivation on the part of the routineer to wish to, instead,
use the amount of thickener disclosed in Charbit’s Example
1.

(App. Br. 5).
We are not persuaded. Appellants’ calculation is not correct. Pate
Example 4 incorporates 177.15 g of water, 15 g of glycerin, 0.3 g of
trisodium EDTA, 0.3 g of DOWICIL, 30 g of tricglyceride emulsion, 1.5 g
of triethanol amine, 0.75 g of fragrance along with 75 g of a 2% aqueous
dispersion of Carbopol 980 carbomer. A 2% aqueous dispersion of the
carbomer means that only 2% of the 75 g or 1.5 g is the carbopol thickener,
with water making up the remaining 73.5 g of the dispersion. Because the
total amount of ingredients in the entire composition is 300 g, and the
amount of carbomer is 1.5 g, the actual amount of thickener in Pate Example
4 is 0.5%.
We note that this 0.5 % amount of carbomer is exactly in line with
Pate’s teaching that “preferably not greater than 0.5% by weight, of . . .
modifiers such as carbomers” should be used in the composition (FF 4).
Appellants also argue that “Pate teaches away from using Appellant's
claimed amount. Clearly, 23.4% and 25% by weight of thickener, is far
outside of Appellant’s claimed maximum amount of about 5%” (App. Br. 5).
We are not persuaded in light of the above calculation and because
Pate specifically teaches that “preferably not greater than 0.5% by weight, of
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. . . modifiers such as carbomers” should be incorporated into the cosmetic
composition. Thus, rather than teaching away, Pate teaches towards the
amount of thickener recited in claim 1. Like our appellate reviewing court,
“[w]e will not read into a reference a teaching away from a process where no
such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellants contend that “Charbit clearly teaches that a tetrapolymer
be employed in its composition. However, it is only when a tetrapolymer is
used that Charbit provides for the possibility that a thickener may be
employed” (App. Br. 6).
We find this argument unpersuasive for several reasons. First, the
claims do not exclude the use of tetrapolymers as argued by the Examiner
(Final Rej. 9). See Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d
1322, 1327 (Fed. Cir. 1999) (The transitional term “comprising” is
“inclusive or open-ended and does not exclude additional, unrecited
elements or method steps.”) Second, Charbit is simply relied upon to
confirm amounts of thickeners that may be used in cosmetic compositions
such as those of Pate, demonstrating that the ordinary artisan is aware than
amounts as low as 0.3% may be employed (FF 14), while Pate discusses
amounts preferably not greater than 0.5% (FF 4).
Claim 4
Appellants contend, regarding the amounts of high internal phase
emollient-in-water emulsion recited in claim 4, that “[u]nder no
rational/logical line of reasoning would one of ordinary skill in the art, or a
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lay person for that matter, believe that about 40% includes 17 %” (App. Br.
7).
We are not persuaded. While Pate does not exemplify amounts of
HIPR which are “about 40%” or higher, Pate generally teaches that “a high
internal phase ratio (HIPR) emollient-in-water emulsion is contacted with a
partial cosmetic formulation to produce an advanced cosmetic product”
(Pate, col. 1, ll. 57–60; FF 1). Examples of finished cosmetic products
described in Pate are hand lotions, body lotions, body washes, conditioners,
shampoos, and facial creams. (Col. 5, ll. 52-54.) The ordinary artisan would
reasonably understand that the amount of HIPR used in the cosmetic
formulations is an optimizable variable depending upon the desired
emollient properties of the specific finished cosmetic product. “[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants have provided no
evidence that the selection of “about 40% to about 60%” of HIPR yields an
unexpected result, rather than simply represents routine optimization of the
HIPR amounts in cosmetic compositions. Indeed, Appellants’ own
Specification teaches that the HIPR amounts may range from 10% to about
80% (see Spec. 3 ¶ 17; FF 19), further supporting the position that the
selected sub range simply represents routine optimization.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Pate,
Charbit, Midha, and Sunkel render the claims obvious.
SUMMARY
In summary, we affirm the rejection of claims 1 and 4, 11, and 13–16
under 35 U.S.C. § 103(a) over Pate, Charbit, Midha, and Sunkel. Pursuant
to 37 C.F.R. § 41.37(c), claims 2, 3, and 6–14 fall with claim 1, as these
claims were not argued separately.

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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