12910886 (P.T.A.B. Sep. 21, 2016)

Ex Parte Janssen et al

Patent Trial and Appeal BoardSep 21, 2016

12910886 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/910,886 79525 7590 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 10/25/2010 09/23/2016 FIRST NAMED INVENTOR Frank Janssen 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. H 08688 US 9085 EXAMINER KARPINSKI, LUKE E ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK JANSSEN and SUSANNE DICKHOF 1 Appeal2014-002922 Application 12/910,886 Technology Center 1600 Before FRANCISCO C. PRATS, ULRIKE W. JENKS, JACQUELINE T. HARLOW, Administrative Patent Judges. JENKS, Administrative Patent Judge. uECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) involving claims directed to a cosmetic emulsion containing ultraviolet (UV) filter substances. The Examiner rejects the claims as indefinite and obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Henkel AG & Co. KGaA (Br. 1 ). Appeal2014-002922 Application 12/910,886 STATEMENT OF THE CASE The Specification explains that one problem with the known water- soluble organic ultraviolet (UV) filter 2-phenylbenzimidazole-5-sulfonic acid is its tendency "to crystallize out upon extended storage, causing the SPF (sun or light protection factor) of the composition to drop drastically" (Spec. i-f 8). The goal, therefore, is to formulate sunscreen compositions that are stable for long term storage (id. at i-f 16). Claims 1-9 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1, the sole independent claim, is representative of the claims on appeal, and reads as follows: 1. Cosmetic oil-in-water emulsion comprising: (a) UV filter 4-(tert-butyl)-4' -methoxydibenzoylmethane, (b) UV filter Polysilicone-15, ( c) UV filter 2-cyano-3,3-phenylcinnamic acid 2-ethylhexyl ester, ( d) at least one water-soluble UV filter chosen from at least one derivative ofbenzimidazole sulfonic acid, ( e) at least one neutralization agent for the water-soluble UV filter chosen from amino-Ci to C6 alkanols and/or amino- C1 to c6 alkanediols, in particular selected from 2-amino-2- methylpropan-1-ol, 2-amino-2-methylpropane-1,3-diol, 2- aminopropan-1-ol, 3-aminopropan-1-ol, 1-aminopropan-2-ol (MIP A), or 2-amino-2-(hydroxymethyl)propane-1,3-diol (TRIS), (t) at least one salt of C12-20 alkyl phosphate as an anionic oil-in- water emulsifier, and (g) at least one C14-20 mono- or diacyl glyceride, wherein the emulsion has a pH of 6.0 to 8.0 at 20Â° C. 2 Appeal2014-002922 Application 12/910,886 Appellants request review of the Examiner's following rejections: I. claims 1 and 3-92 under 35 U.S.C. Â§ 112, second paragraph as being indefinite because the scope of the claim cannot be determined; and II. claims 1-9 under 35 U.S.C. Â§ 103(a) as unpatentable over Johncock3 in view ofBerg-Schultz. 4 I. Indefiniteness The Examiner finds that the phrase "derivative of benzimidazole" is not clear because neither the Specification nor the originally filed claims provide a definition of the scope encompassed by this term (Final Rej. 25; Ans. 3). The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that the phrase "derivative ofbenzimidazole" is unclear in light of the Specification? Findings of Fact FF 1. The Specification describes that "[ d]erivatives of benzimidazole sulfonic acid ... include phenylene-1,4-bis(2-benzimidazyl)-3 ,3 ' - 5,5'tetrasulfonic acid (UV-A) and its salts" (Spec. if 38). 2 In the Answer, the Examiner withdrew the rejection of claim 2 on this basis (Ans. 6). 3 Johncock et al., WO 2007/135196 A2, published Nov. 29, 2007 ("Johncock"). 4 Berg-Schultz et al., US 2006/0073106 Al, published Apr. 6, 2006 ("Berg- Schultz"). 5 Office Action mailed Mar. 19, 2013. 3 Appeal2014-002922 Application 12/910,886 FF2. Additionally, the Specification describes an alternate derivative of benzimidazole sulfonic acid as a "water soluble organic UV filter substances include 2-phenylbenzimidazole-5-sulfonic acid (INCI name Phenylbenzimidazole Sulfonic Acid ... , commercially available under the names Neo Heliopan Hydro from Symrise or Eusolex 232 from Merck KGaA; UV-B filter) and its salts" (id. at 39). Analysis "Appellants note [that] the full term as claimed is: 'derivative of benzimidazole sulfonic acid"' and not just derivative of benzimidazole, citing several paragraphs in the Specification for support (Br. 7; see FF 1 and FF2). We do not agree with the Examiner's position that the claims are indefinite because of the use the phrase "derivative of benzimidazole sulfonic acid." As pointed out by Appellants, this phrase is adequately defined in the Specification by way of examples (Br. 7; see Spec. i-fi-136-48). Breadth of a claim is not to be equated with indefiniteness. In re Miller, 441F.2d689, 693 (CCPA 1971), see also MPEP Â§ 2173.04 ("For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear."). We find that the claims are directed to a genus of compounds - those that are considered benzimidazole sulfonic acid derivatives. Here, the Specification provides at least two examples of such derivatives that are encompassed by the genus as claimed (FF 1 and FF2, see Spec. original claim 2). Based on the disclosure of two compounds that fall within the genus ofbenzimidazole sulfonic acid derivatives we find that one of ordinary skill in the chemical arts would reasonably understand the scope of the claims in light of the Specification. 4 Appeal2014-002922 Application 12/910,886 Accordingly, we reverse the rejection of claim 1 and any of its dependents as being indefinite based on the breadth of the claim language. II. Obviousness over Johncock and Berg-Schultz The Examiner has rejected claims 1-9 under 35 U.S.C. Â§ 103(a) as being unpatentable over Johncock and Berg-Schultz. Because the claims are not separately argued, we focus our discussion on representative claim 1 (see Br. 12). The Examiner's position is that Johncock teaches sunscreen compositions containing all the components as claimed (Final Rej. 4 ). The Examiner recognizes that Johncock does "not teach emulsifier percentages" and looks to Berg-Schultz for this disclosure (id. at 5). Appellants contend that Johncock teaches away from the combination because the Examiner is picking and choosing from two different emulsions contained in the reference, namely the "old" prior art emulsion and the "new" emulsion (Br. 8). Appellants point out that "[f]or components (a) through (d), (t), and (g), the Office cites to the second (new) emulsion disclosed in Johncock. For component (e), however, the Office cites to the first (old)" emulsion (Br. 9). Appellants contend that Johncock teaches away from the combination as cited by the Examiner because "Johncock explains at length why claimed component ( e ), a noted component of prior art emulsions, is not to be used in the new emulsion disclosed therein (on which the Office relies for the other components (a) through (d), (t), and (g))" (Br. 9). The issue is: Does the preponderance of evidence of record support the Examiner's conclusion that the combination of references render obvious the claimed cosmetic oil-in-water emulsion containing the recited sunscreens 5 Appeal2014-002922 Application 12/910,886 in addition to at least one of the requisite neutralizing agents as set out in the claim? Findings of Fact FF3. Johncock teaches cosmetic preparations "containing phenylbenzimidazole sulfonic acid (i.e. 2-phenylbenzimidazole- 5-sulfonic acid) neutralised with basic amino acids such as arginine, lysine, omithine and histidine so that the pH of the preparation can be at or below 7 .0 without incurring crystallisation of the phenylbenzimidazole sulfonic acid" (Johncock 1: 3---6). Specifically, Johncock teaches cosmetic sunscreen formulations containing phenylbenzimidazole sulfonic acid "having a pH-value in the range ... from 5.5 to 7.0, preferably from 6.0 to or below 7.0, and more preferably in the range of 6.0 to 6.8" when mixed with basic amino acids such as arginine, lysine, histidine, and omithine (Johncock 7:11-14). FF4. Johncock teaches the desirability to extend the use of known sunscreen products. Modem sun protection products contain mixtures of UV filters to absorb both UVB and UV A radiation . . . . It is therefore desirable that the way currently allowed safe and effective UV absorbing materials used for cosmetic or pharmacological preparations be extended. In this respect, one of the most efficient UVB absorbing materials that has been in commercial use since 1934, phenylbenzimidazole sulfonic acid, has a major disadvantage in the way that it is currently formulated. It is very insoluble in water (0.25% w/w); therefore it must be neutralised with a hard base, such as for example but not limited to, sodium hydroxide or potassium hydroxide, or with 6 Appeal2014-002922 Application 12/910,886 amines, such as for example but not limited to, triethanolamine or aminomethylpropanol or trishydroxyaminomethane, in order to render the UV filter soluble in a cosmetic or pharamacological preparation. Importantly, if phenylbenzimidazole sulfonic acid is not sufficiently neutralised it will form crystals in the cosmetic or pharmacological preparation (see figure 1) rendering it less effective and giving the preparations an unacceptable sandy or grainly feel. Crystal formation starts at pH 7.0; generally, the pH of a cosmetic formulation comprising phenylbenzimidazole sulfonic acid has to remain above 6. 8 in order to prevent the free acid from recrystallising. . . . This restriction has prevented the use of phenylbenzimidazole sulfonic acid in formulations with pH at or below 7.0, in particular in the many cosmetic or pharamacological preparations formulations with a pH from 5.5 to 7.0 and 6.0 to 7.0. It is therefore desirable to find a way that allows cosmetic or pharmacological preparations to be formulated with phenylbenzimidazole sulfonic acid at a pH of or below 7 .0 in order to broaden its application. (Johncock 2: 14-3:7 (emphasis added).) FF5. The Examiner finds that the entire disclosure of Johncock shows that "the presence of any triazine compounds (entire disclosure)" is not required (Final Act. 5; Ans. 4). FF6. Johncock teaches a sunscreen formulation containing 2- phenylbenzimidazole-5-sulfonic acid (a.k.a. Neo HeliopanÂ® Hydro), arginine, and sodium hydroxide, a hard base, in the final sunscreen product (Johncock 58-59, Formulation Example 3B.) Principle of Law 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., v. Biocraft Laboratories, Inc., 874 F.2d 804, 7 Appeal2014-002922 Application 12/910,886 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("All the disclosures in a reference must be evaluated, including nonpreferred embodiments, and a reference is not limited to the disclosure of specific working examples." (Citations omitted).) In any case, it is well settled that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or even non-preferred embodiments. See In re Susi, 440 F .2d 442, 446 n.3 (CCPA 1971). Analysis We have reviewed Appellants' response that the Examiner erred in rejecting claims 1-9 as obvious over the cited art (Br. 9). We disagree with Appellants' contentions and adopt the findings concerning the scope and content of the prior art set forth in the Examiner's Answer and the Final Action dated March 19, 2013. For emphasis, we highlight and address the following: We recognize, but are not persuaded by, Appellants contention that Johncock's new emulsions using amino acids to neutralize the phenylbenzimidazole sulfonic acid component teach away from including a hard base as discussed with the "old" emulsions (see Br. 8-12). We agree with the Examiner's conclusion that "[t]here is no teaching away; Johncock ... merely provide[ s] two embodiments with different pH requirements" (Ans. 7). All of the disclosure constitutes prior art not just the preferred embodiments. See Merck, 874 F.2d at 807. The Examiner reasons that Johncock "provides sufficient teachings and motivation to use 8 Appeal2014-002922 Application 12/910,886 aminomethylpropanol[, a hard base,] in a topical cosmetic formulation" (Ans. 6; FF4). "[N]owhere do[ es] Johncock ... refer to formulations employing aminomethylpropanol [(a.k.a. a hard base)] in a disparaging manner, Johncock ... merely states that said formulations are required to maintain a pH of 6.8+ in order to achieve an optimized formulation with good skin feel" (Ans. 7; FF3). We agree with the Examiner's finding, and further note that Johncock even provides an example where the final product not only contains a neutralizing amino acid but also contains a hard base, specifically, sodium hydroxide (FF6). As such, we agree with the Examiner's conclusion that there is nothing in Johncock that would teach away from incorporating a hard base into a formulation that also contains other amino acid neutralizer (see Ans. 7). We conclude that the evidence cited by the Examiner supports a prima facie case of obviousness with respect to claim 1, and Appellants have not provided sufficient rebuttal evidence or evidence of secondary considerations that outweighs the evidence supporting the prima facie case. As Appellants do not argue the claims separately, claims 2-9 fall with claim 1. 37 C.F.R. Â§ 41.37 (c)(l)(iv). 9 Appeal2014-002922 Application 12/910,886 SUMMARY We reverse the rejection of claims 1 and 3-9 under 35 U.S.C. Â§ 112, second paragraph as being indefinite. We affirm the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as obvious over Johncock in view of Berg-Schultz. Claims 2-9 were not separately argued and fall with claim 1. 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. Â§ 1.136(a). AFFIRMED 10