Ex Parte HUANG et al

Patent Trials and Appeals Board

May 15, 2019

14401285 - (D) (P.T.A.B. May. 15, 2019)

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.
14/401,285 11/04/2015 Samuel HUANG JCO5057USPCT 1474
27777 7590 05/17/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
HELM, CARALYNNE E
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL HUANG, LYDIA ZENG, AMIGO GU,
LINDA ZHANG, and JIANG WU1
Appeal 2018-003616
Application 14/401,285
Technology Center 1600
Before JOHN G. NEW, JOHN E. SCHNEIDER, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a composition comprising a gloss agent. Claims 1, 9, 10, 13, 14, 16, 17,
and 19 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 Appellants identify the Real Party in Interest as “Johnson & Johnson
Consumer Inc.” Br. 2.
Appeal 2018-003616
Application 14/401,285
STATEMENT OF THE CASE
Independent claim 1 is representative and is reproduced below:
1. A composition comprising
a gloss agent selected from the group consisting of
isodecyl neopentanoate, isostearyl isostearate, ethylhexyl
benzoate, phenethyl benzoate, PPG-3 benzyl ether myristate,
hydrogenated polydecene, and combinations of two or more
thereof,
an emollient film facilitator selected from the group
consisting of polyglyceryl-2 tetraisostearate, polyglyceryl-2
diisostearate, polyglyceryl-2 isostearate, polyglyceryl-2
triisostearate, polyglyceryl-3 diisostearate, sucrose polysoyate,
diisostearyl malate, dipentaerythrityl tri-polyhydroxystearate,
and combinations of two or more thereof, and
a polysaccharide film-forming polymer selected from the
group consisting of iota carrageenan gum, gellan gum, xanthan
gum, kappa carrageenan gum, agar, konjac gum, and
combinations of two or more thereof,
wherein the composition comprises a greater amount, on a
weight percent basis, of emollient film facilitator than the gloss
agent.
Br. 7 (Claims Appendix; formatting added).
The following rejections are appealed:
Claims 1, 9, 10, 13, 14, and 17 stand rejected under 35 U.S.C.
§ 103(a) over Raschke2 and Blin.3 Final Action 3.
Claims 1, 9, 13, 14, and 17 stand rejected under 35 U.S.C. § 103(a)
over Raschke and Torizuka.4 Final Action 4.
2 US 7,799,356 B2 (issued Sept. 21, 2010) (“Raschke”).
3 US 2005/0095213 A1 (published May 5, 2005) (“Blin”)
4 US 6,440,429 B1 (issued Aug. 27, 2002) (“Torizuka”).
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Application 14/401,285
Claim 16 stands rejected under 35 U.S.C. § 103(a) over Raschke and
Blin or Torizuka, and also Drucks.5 Final Action 6.
Claim 19 stands rejected under 35 U.S.C. § 103(a) over Raschke and
Blin or Torizuka, and also Le Fur.6 Final Action 7.
DISCUSSION
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Arguments made by Appellants in the Appeal Brief have been considered in
this Decision (no Reply Brief was submitted); arguments not so-presented in
the Brief are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any
bases for asserting error, whether factual or legal, that are not raised in the
principal brief are waived.”).
As applicable to the rejections on appeal and to Appellants’ arguments
in response, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Put
another way, “when a patent claims a structure [or method] already known
in the prior art that is altered by the mere substitution [or addition] of one
element for [or to] another known in the field, the combination must do
more than yield a predictable result.” Id. It is obvious to those skilled in the
5 US 2002/0102289 A1 (published Aug. 1, 2002) (“Drucks”).
6 US 2005/0238730 A1 (published Oct. 27, 2005) (“Le Fur”).
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Application 14/401,285
art to substitute one known equivalent for another. See In re Omeprazole
Patent Litig., 483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no
. . . error in [the] . . . conclusion that it would have been obvious to one
skilled in the art to substitute one ARC [alkaline reactive compound] for
another.”).
“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
claim extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S.
at 419. “[T]he question is whether there is something in the prior art as a
whole to suggest the desirability, and thus the obviousness, of making the
combination, not whether there is something in the prior art as a whole to
suggest that the combination is the most desirable combination available.”
In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (internal quotation marks
and citation omitted).
“To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention.” Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
“[I]t is well settled that unexpected results must be established by factual
evidence. ‘Mere argument or conclusory statements in the specification
does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
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Application 14/401,285
The Examiner determined that the claims would have been obvious
over the prior art combination of Raschke and either of Blin or Torizuka.
Final Action 3—6; Answer 2—6. In the case of claim 16, which depends from
claim 1, the Examiner cited these same prior art combinations, also adding
Drucks. Final Action 6—7; Answer 2—6. In the case of claim 19, which also
ultimately depends from claim 1, the Examiner cited the same prior art
combinations, also adding Le Fur. Final Action 7—8; Answer 2—6.
Specifically, the Examiner determined that Raschke taught a topical
cosmetic preparation for treating aging skin that included 2.5 wt%
hydrogenated polydecene (a gloss agent), 3.5 wt% isopropyl palmitate (an
ester oil of the oil phase), castor oil (a component of the oil/lipid phase), and
xanthan gum (a polysaccharide film-forming polymer), where the ratio of
emollient film facilitator to gloss agent was 15:2.5 (6:1). Final Action 3, 4—
5 (citing Raschke at cols. 3, 7, 9, 22, 32). Acknowledging that Raschke did
not teach diisostearyl malate, the Examiner determined that Blin and
Torizuka taught diisostearyl malate as a component of an oil phase, fatty
acid ester, in a cosmetic product, and also taught or suggested that
diisostearyl malate was an equivalent alternative of, inter alia, isopropyl
palmitate and castor oil for such a purpose. Final Action 3—6 (citing Blin
1337; Torizuka col. 2). The Examiner determined that it would have been
obvious to use Blin’s or Torizuka’s diisostearyl malate in place of Raschke’s
isopropyl palmitate and/or castor oil because the prior art taught these
components to be equivalent alternatives for the same purpose. Final Action
3—4, 5—6. We discern no error in the Examiner’s determinations.
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Application 14/401,285
Appellants argue that Blin’s and Torizuka’s listing of diisostearyl
malate, isopropyl palmitate, and castor oil as a group and that each was
useful for the same purpose in a cosmetic would not make it obvious to
substitute these materials for one another, for example, to use diisostearyl
malate in Raschke’s composition, because the prior art references do not
indicate doing so provides a “Gloss Improvement of 9.5% and above” to the
composition. Br. 3^4. Appellants also argue that their claimed invention
produces a “surprising result,” which is this 9.5% gloss improvement. Id. at
4. Regarding the rejections including Drucks and Le Fur, Appellants argue
only that these references fail to cure the deficiencies of the other cited prior
art. Id. at 5. These arguments are not persuasive.
Supreme Court precedent informs us that claiming the mere
substitution of one element for another known in the field is not patentably
distinguishable over a prior art combination that teaches the claimed subject
matter and the equivalence of the substituted elements. KSR, 550 U.S. at
416. Likewise, our reviewing court has held that such a substitution is
obvious. Omeprazole, 483 F.3d at 1374. The cited prior art list diisostearyl
malate, isopropyl palmitate, and castor oil as each and all useful in the oil
phase of a topical cosmetic composition. See Raschke cols. 22, 32; Blin
1337; Torizuka col. 2. There is no persuasive evidence that there would
have been any unpredictability in making such a substitution. Thus, such a
substitution would have been obvious in view of the cited prior art
combination.
Regarding Appellants’ contention of unexpected results, Appellants
have not established that the improved gloss factor with the claimed
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Application 14/401,285
invention was unexpected and have not compared their invention’s results to
the closest prior art. Thus, there is no persuasive evidence that the alleged
unexpected results overcome the Examiner’s strong prima facie case for
obviousness.
Furthermore, unexpected results that are probative of non-obviousness
are those that are “different in kind and not merely in degree from the results
of the prior art.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1322 (Fed. Cir. 2004) (citation omitted). Appellants argue that the resultant
9.5% increase in glossiness achieved by their claimed composition is
unexpected. See Br. 3^4. But, we are not persuaded that an increase in
glossiness of 9.5%, when compared to prior art compositions already
intended to exhibit a degree of glossiness (see, e.g., Blin || 3, 14), rises to
the requisite level of a “difference in kind” so as to be probative on non­
obviousness and, therefore, sufficient to overcome the Examiner’s prima
facie determination of obviousness.
For the reasons above, we are not persuaded that the Examiner erred
in determining obviousness and conclude a prima facie case therefore has
been made and not rebutted. The obviousness rejections are affirmed.
SUMMARY
The obviousness rejections under 35 U.S.C. § 103(a) are each
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)(l)(iv).
AFFIRMED
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