Ex Parte JANSEN et al

Patent Trial and Appeal Board

May 9, 2018

14445434 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/445,434 07/29/2014
27752 7590 05/11/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Joseph HARRY JANSEN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13485 7085
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH HARRY JANSEN and PAUL ROBERT TANNER
Appeal2017-007345 1
Application 14/445,4342
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 20-26. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b ).
We affirm.
1 Our Decision refers to Appellants' Appeal Brief ("Appeal Br.," filed Dec.
19, 2016) and Reply Brief ("Reply Br.," filed Apr. 6, 2017), and the
Examiner's Final Office Action ("Final Act.," mailed July 18, 2016) and
Answer ("Ans.," mailed Feb. 6, 2017).
2 According to Appellants, the real party in interest is The Procter & Gamble
Company of Cincinnati, Ohio. Appeal Br. 1.
Appeal2017-007345
Application 14/445,434
Statement of the Case
Background
Appellants' application "relates generally to a multi-step method of
improving the appearance and feel of human skin." Spec. 1: 1-2. "More
specifically, the method includes applying a finisher composition that has a
high powder content and a UV agent as an overlying top layer to an
underlying layer of skin care composition, thereby improving the look and
feel of the treated skin." Id. at 1:2-7.
According to the Specification, particulate materials have the benefit
of acting as an opacifying agent with a masking effect, but high levels of
powder can be difficult to spread on skin, can be noticeably white, and can
flake off skin. Id. at 2:4--14. Humectants have the benefits of reducing
visible texture and can improve skin strength and function but high levels of
glycerin can make skin look shiny and greasy, and glycerin can be thick and
slow to absorb into the skin. Id. at 2: 15-23. UV agents can protect the skin
from sun damage but can have a heavy, oily skin feel. Id. at 3: 1-3.
The Specification describes a method of skin care based on the
application of an underlying layer and a finishing layer (powder layer),
where the finishing layer includes an oil-in-water emulsion with a non-
volatile oil (a UV protectant) and spherical particles. Id. at 3:5-10, 7:24--
8:2, 9:26-10:4. In some embodiments, the finishing composition is free or
substantially free of glycerin or other humectants. Id. at 3:5-10. The
Specification explains that powder may offset the undesirable greasiness
associated with oils and may diffuse light. Id. at 11 : 13-1 7. According to
the Specification, it is important that the particles protrude from the dry film
formed by the skin care product in order to create a "rough" film and to
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Application 14/445,434
diffuse light and reduce the surface area of the film contacted by the user's
hand. Id. at 11 :28-12:4.
The Claims
Claim 1, the sole independent claim on appeal, is reproduced below
and is representative of the subject matter on appeal:
1. A method of improving the look and feel of skin,
compnsmg:
a. applying an underlying layer of a skin care composition to a
target portion of skin; and
b. applying an overlying layer of a finisher composition on top
of the underlying skin care composition layer, wherein the
finisher composition is an oil-in-water emulsion comprising
i. a continuous aqueous phase that include about 20 to
85 % by weight of the finisher composition of water,
ii. a dispersed oil phase comprising a non-volatile oil, the
non-volatile oil comprising a liquid UV agent present at an
amount of at least 50% by weight of the non-volatile oil,
iii. 10 to 25%, by weight of substantially spherical
particles selected from the group consisting of starch particles,
silicone elastomer particles and combinations thereof, wherein
the substantially spherical particles have a particle size of from
about 2 to 40 microns, the substantially spherical particles
being sized to protrude from the underlying skin care
composition layer,
iv. a weight ratio of the non-volatile oil to the
substantially spherical particles about 1: 10 to about 1: 1,
v. optionally, about 1 to 20 wt% of a volatile oil, and
vi. wherein the finisher composition is substantially free
of glycerin.
Appeal Br., Claims App.
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Application 14/445,434
The Issues
A. The Examiner rejected claim 24 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
B. The Examiner rejected claims 1 and 20-26 are rejected under
35 U.S.C. § 103 as being unpatentable over Maitra3 and Rosevear4.
A. 35 USC§ 112 (Written Description)
The Examiner rejected claim 24 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. The Examiner finds that
Appellants have not shown possession of the limitation "comprises a chroma
of less than about 20 according to the Chroma Method," as recited in claim
24. Final Act. 2-3. Appellants have not challenged this rejection in its
Appeal Brief and any arguments with respect to this rejection are, therefore,
waived. 37 C.F.R. § 4I.37(c)(l)(iv). We, therefore, sustain the Examiner's
rejection under 35 U.S.C. § 112(a) of claim 24.
B. 35 USC§ 103 over Maitra and Rosevear
Claim 1
The Examiner finds that Maitra discloses a method of applying two
( or more) distinct compositions to the skin, with a basecoat applied directly
to the skin and a topcoat, applied on top thereof, to alter the scattering
behavior of visible light to provide cosmetic improvement of the appearance
of wrinkles, fine lines, skin imperfections, and the like. Final Act. 4--5
3 Maitra, US 2009/0148393 Al, pub. June 11, 2009.
4 Rosevear, US 7,172,754 Bl, iss. Feb. 6, 2007. We note that the Examiner
referred to this reference as U.S. 7,127,754 (Final Act. 3), and we regard this
as a typographical error. Appellants understood the reference to be
Rosevear. See Appeal Br. 3.
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Application 14/445,434
( citing Maitra ,r,r 23, 34). The Examiner finds that Maitra discloses UV
protection. Id. at 4 (citing Maitra ,r,r 38, 49). Maitra discloses the UV
protection in a two-step method (Maitra ,r 49), or optionally with the
application of a third composition (Maitra ,r 3 8).
The Examiner finds that Rosevear similarly describes cosmetic
sunscreen compositions designed to reduce the gloss and shine of skin onto
which such compositions are applied. See Final Act. 5 ( citing Rosevear,
Abs., 1:8-35). The Examiner finds that Rosevear discloses, in one
embodiment, oil-in-water emulsions which achieve the same gloss reducing
object. Id. (citing Rosevear, 14:65-15:30). In particular, Rosevear discloses
an oil-in-water emulsion containing 54% water, zinc oxide powder in
concentrations of 2 .1 %, the liquid sunscreen ethylhexylmethoxycinnamate
( synonymous with octyl methoxycinnamate) in concentrations of 6%, and
the remainder of the non-volatile oils in the oil phase comprising 1 %
silicone fluid, 0.78% glycerol monostearate, and 0.5% DC5225, rendering
the liquid sunscreen agent greater than 50% of the non-volatile oil phase. Id.
(citing Rosevear, 15:5-25). The Examiner finds that Rosevear elsewhere
describes a particular preference for spherical powders having an average
particle size of 0.2-30 microns, such as aluminum starch octensylsuccinate.
Final Act. 5 (citing Rosevear, 10:61-12:10). The Examiner also reasons,
inter alia, that it would have been obvious to vary the composition of the
humectant from glycerin to another humectant. See Final Act. 5---6.
The Examiner reasons:
One having ordinary skill in the art at the time of the instant
invention would have found it prima facie obvious to employ the
matte sunscreening oil-in water emulsion of Rosevear either as
the "topcoat" or as the "third coat" of the method of Maitra,
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Application 14/445,434
owing to either the matte/non-reflective appearance of the
Rosevear [oil-in-water] emulsion satisfying the visual light
diffusion properties described as desirable for Maitra's topcoat,
or owing to the explicit Rosevear teaching regarding the
inclusion of sunscreening actives in the third composition,
respectively.
Id. at 7-8.
Appellants argue that Maitra and Rosevear do not teach or suggest
certain limitations of independent claim 1, i.e., "the substantially spherical
particles being sized to protrude from the underlying skin care composition
layer," and "iv. a weight ratio of the non-volatile oil to the substantially
spherical particles about 1: 10 to about 1: 1." Appeal Br. 1-8.
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Maitra and Rosevear render
obvious claims 1 and 20-26?
"the substantially spherical particles being sized to protrude from the
underlying skin care composition layer"
Appellants assert that neither Maitra nor Rosevear, alone or in
combination, recognizes the importance of ensuring that the particles are
sized to protrude from the underlying layer of a 2-layer skin care product
when the particles are included in the overlying layer of the 2-layer product.
Appeal Br. 6. Appellants assert that Maitra's basecoat is between
approximately 1. 0 and approximately 20 microns ( citing Maitra ,r 3 5), that
the particles of Rosevear range from 0.1 to 7 5 microns ( citing Rosevear,
11 :31 ), and that "it cannot be said that the particles will inherently protrude
from the basecoat layer of Maitra." Appeal Br. 5.
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Maitra discloses the use of powder in a topcoat as follows:
Preferable light diffusers for use in a diffused topcoat include
nylon, polyurethane, silica beads, Tospearl (Momentive ),
silicone elastomers such as Velvesil (Momentive), poly (methyl
methacrylate) (PMMA), polyethylene (PE), polystyrene (PS),
polytetrafluoroethylene (PTFE, e.g., Teflon®),
polymethylsiloxane, cellulose beads, boron nitride, mica,
polyurethane powder, sericite, silica, fumed silica, fumed
alumina, silicone powder and combinations thereof. The light
diffuser is preferably present from about 0.01 weight% to about
50 weight % of the total weight of the composition.
Maitra ,r 30. Figure 3 ofMaitra depicts a schematic representation of light
diffusion using a two-step foundation (pigmented basecoat and diffused
topcoat) on skin.
Rosevear discloses the use of conjugated linoleic acid in a water-in-oil
or oil-in-water emulsion to decrease facial shine. Rosevear, 1:52-58, 14:65-
15:3. Rosevear, in one embodiment, discloses the use of particulate
materials as helpful:
Particulate materials useful herein include but are not limited to
bismuth oxychloride, sericite, mica, mica treated with barium
sulfate or titanium dioxide, zeolite, kaolin, silica, boron nitride,
lauroyl lysine, nylon, talc, styrene, polystyrene, ethylene/acrylic
acid copolymer, aluminum oxide, silicone resin, barium sulfate,
calcium carbonate, cellulose acetate, PTFE, polymethyl
methacrylate, starch, modified starches, silk, glass, and mixtures
thereof. Preferred organic powders/fillers include polymeric
particles chosen from the methylsilsesquioxane resin
microspheres such as those sold by Toshiba Silicone under the
name Tospearl 145A; microspheres of polymethylmethacrylates
such as those sold by Seppic under the name Micropearl M 100;
the spherical particles of crosslinked polydimethylsuloxanes,
especially such as those sold by Dow Coming Toray Silicone
under the name Trefil E 506C or Trefil E 505C; spherical
particles of polyamide and more specifically Nylon 12,
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Application 14/445,434
especially such as those sold by Atochem under the name
Orgasol 2002N Nat COS; polystyrene microspheres such as those
sold by Dyno Particles under the name Dynospheres; ethylene
acrylate copolymer sold by Kobo under the name FloBead
EA209; PTFE; polypropylene; aluminum starch
octenylsuccinate such as sold by National Starch under the name
Dry Flo; microspheres of polyethylene such as those sold by
Equistar under the name ofMicrothene FN510-00; silicone resin;
platelet shaped powder made from L-lauroyl lysine, and mixtures
thereof. Especially preferred are spherical powders with an
average primary particle size from 0.1 to 75 microns, preferably
from 0.2 to 30 microns.
Rosevear, 11:3-32.
The Examiner agrees with Appellants that Maitra discloses a cosmetic
thickness between 0.1 and 20 microns and that Rosevear discloses
particulates to be incorporated within the range of 0.1-75 and preferably
0.2-30 microns. Ans. 7. Nevertheless, the Examiner reasons that where the
claimed limitation is an overlapping range or subset of the prior art,
Appellants are required to show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range, which Appellants have not done. Ans. 8 ( citing In re
Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to apply the sunscreen of Rosevear as a
second or third topcoat in Maitra, given the teaching in Maitra to apply a
sunscreen as a second or third layer, on top of a basecoat. See Final Act. 7-
8. We further agree with the Examiner that Appellants are essentially
attempting to claim a range of particle sizes in a finishing layer that overlaps
with known particle sizes, and that this creates a prima facie case of
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obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Maitra
discloses a basecoat of between 0.1 and 20 microns (Maitra ,r 35) and Maitra
discloses the use of particulate matter in a finishing layer in order to diffuse
light (id. ,r 30). Rosevear also discloses the use of particulate material,
particularly spherical powders from 0.2 to 30 microns, as part of a
composition that is intended to reduce shine (Rosevear, 11 :30-32).
"[ A ]n applicant may overcome a prim a facie case of obviousness by
establishing 'that the [ claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
range."' In re Peterson, 315 F.3d at 1330 (emphasis in original) (citation
omitted). An applicant may also overcome a prim a facie case of
obviousness by demonstrating an optimization of values. Id.
Appellants here argue the existence of criticality of particles that
protrude from an underlying layer, pointing to the disclosure in the
Specification that it is important for particles to protrude from an underlying
layer to "diffusely reflect[] light (i.e., creat[ing] a bumpy-looking surface)."
Reply Br. 3--4 (citing Spec. 11:28-12:4). However, Maitra and Rosevear
already disclose compositions with particulate matter that diffuse light and
reduce shine. See Maitra, Fig. 3; Rosevear, 1 :8-9. Maitra refers to the
particulate matter as "suitable light diffusers." Maitra ,r 30. Appellants do
not offer any data to show optimization. The Specification refers to a study
showing a perceived reduction in bumpiness of the skin (Spec. 36:15-
48: 15), but that is different from showing a bumpiness of the particulate
matter. Nor does the Specification show a comparison to the prior art
compositions based on the size of the particles. In sum, Appellants have not
shown criticality based on the size of the particles relative to the prior art.
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Accordingly, we agree with the Examiner that Maitra and Rosevear
render obvious the limitation of an overlying layer with "substantially
spherical particles being sized to protrude from the underlying skin care
composition layer," as recited in independent claim 1.
"a weight ratio of the non-volatile oil to the substantially spherical particles
about 1:10 to about 1:1"
Appellants argue that Rosevear discloses a weight ratio of 1 :20 to
8000: 1 and that the Examiner fails to explain why a person of ordinary skill
in the art would select a ratio between 1 : 10 and 1 : 1. Appeal Br. 7.
Appellants assert that Rosevear discloses that particulates may be present at
0.01 % to 20% (citing Rosevear, 10:66-67) and that carrier may be present
from about 1 % to about 80%, by weight of the composition ( citing
Rosevear, 6:42--43). Id. However, the Examiner correctly finds that
Rosevear specifically discloses an embodiment where nonvolatile oils
represent 8.28% of the composition, while indicating that the particle
concentrations to be included in these compositions fall within the range of
0.01-20%. Ans. 8. As the Examiner finds, Rosevear discloses non-volatile
oil in an oil-in-water emulsion with 6.00% EthylhexylMethoxyCinnamate,
1.00% Silicone Fluid, 0.78% Glycerol Monostearate, and 0.5% DC 5225C.
Rosevear, 15:5-25; see Final Act. 5---6. The Examiner concludes that
Appellants are attempting to claim a subset of the prior art range or
overlapping ranges, and the limitation is therefore prima facie obvious. Ans.
8-9.
Appellants argue that the Specification demonstrates criticality to the
claimed range because it discloses that if there is too little volatile oil, there
will be undesirable whiteness, and if there is too much non-volatile oil, the
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Application 14/445,434
skin may appear undesirably shiny. Reply Br. 4 ( citing Spec. 14: 10-21,
42:20-44:7, Exs. 45--47). However, the data in Examples 45--47 do not
present a comparison to the prior art range. At most, Table 18 shows a
comparison within the claimed range from a ratio of 1 :4 to 1: 1. As such,
Appellants have not demonstrated criticality for the range of 1: 10 to 1: 1, as
recited in independent claim 1.
Accordingly, we agree with the Examiner that Maitra and Rosevear
render obvious the limitation of an overlying layer with "a weight ratio of
the non-volatile oil to the substantially spherical particles about 1: 10 to
about 1: 1," as recited in independent claim 1.
"wherein the finisher composition is substantially free of glycerin"
Appellants also argue that there is no disclosure of a finisher
composition that is substantially free of glycerin, as recited in independent
claim 1. Appeal Br. 9. However, the Examiner relied on the teaching in
Rosevear that there were alternatives to glycerin for humectants. Final Act.
6 (citing Rosevear, 7:57-8:2). Indeed, Rosevear discloses:
Humectant may be incorporated into compositions of the present
invention. Humectants are normally polyols. Representative
polyols include glycerin, diglycerin, polyalkylene glycols and
more preferably alkylene polyols and their derivatives including
propylene glycol, dipropylene glycol, polypropylene glycol,
polyethylene glycol and derivatives thereof, sorbitol,
hydroxypropyl sorbitol, hexylene glycol, 1,2-butylene glycol,
1,2,6-hexanetriol, isoprene glycol, 2-methyl-1,3-propanediol,
ethoxylated glycerol, propoxylated glycerol and mixtures
thereof.
Rosevear, 7:56-67. We agree with the Examiner that a person of ordinary
skill would have understood that any of these compounds could be
substituted for glycerin. As such, we agree with the Examiner that Maitra
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and Rosevear render obvious the limitation "wherein the finisher
composition is substantially free of glycerin," as recited in independent
claim 1.
We, therefore, sustain the Examiner's rejection under§ 103 of
independent claim 1.
claim 25
"wherein the finisher composition comprises less than 1 wt% of a pigment"
Appellants argue that neither Maitra nor Rosevear discloses a finisher
composition comprising less than 1 % pigment. Appeal Br. 8. Appellants
assert that every example in Rosevear includes at least 2% pigment. We are
unpersuaded by Appellants' argument for similar reasons as for the
preceding argued limitations. Ranges with close mathematical differences
are analyzed in a similar manner to overlapping ranges where there is an
expectation, as here, that the adjacent ranges will have similar properties.
See In re Brandt, 886 F.3d 1171, 1176-77 (Fed. Cir. 2018); In re Peterson,
315 F.3d at 1329. Appellants argue that a range of less than 1 % pigment is
important, referring to the disclosure in the Specification at page 18, lines 7-
12 and Examples 49 and 50 at page 46, line I -page 47, line 14. Reply Br.
4--5. Those portions of the Specification compare 3.43% pigment to 0%
pigment and disclose decreased skin appearance of bumpiness with 0%
pigment, but do not compare a pigment concentration of 2.1 %, as disclosed
in Rosevear to the claimed < 1 % pigment. See Ans. 9. If anything, the
Specification supports the understanding that this is a predictable art, but
does not provide adequate support for an understanding that the claimed
difference would be more than negligible as compared to Rosevear. See In
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re Brandt, 886 F.3d at 1176-77. Accordingly, we sustain the Examiner's
rejection under§ 103 of claim 25.
Claims 20-24 and 26
Appellants do not argue the patentability of claims 20-24 and 26
separately from claim 1, from which they depend. We, therefore, sustain the
Examiner's rejection under§ 103 of claim 20-24 and 26, for similar reasons
as for independent claim 1.
DECISION
The Examiner's decision to reject claim 24 under 35 U.S.C. § 112 is
affirmed.
The Examiner's decision to reject claims 1 and 20-26 under 35 U.S.C.
§ 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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