Ex Parte Marion

Board of Patent Appeals and Interferences

Aug 30, 2011

11224959 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CATHERINE MARION
__________

Appeal 2011-008009
Application 11/224,959
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for treating greasy skin. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
Claims 1-17 and 19-21 are on appeal. Claims 1, 5, and 21 are
representative and read as follows:
1. A method for the treatment of greasy skin, comprising applying to
skin in need of such treatment a composition comprising, in a
physiologically acceptable medium, (a) at least one water-soluble ascorbic
acid compound and (b) porous polyamide particles having a mean diameter,
by volume, of less than or equal to 10μm, wherein the composition is in the
form of an O/W emulsion.

5. The method according to Claim 1, wherein the porous particles have a
specific surface, measured according to the BET method, of greater than or
equal to 1 m2/g.

21. The method according to Claim 1, wherein the ascorbic acid
compound is ascorbyl glucoside.

The Examiner rejected the claims as follows:
• claims 1-14, 16, 17, 19, 20, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Gueret,1 Creton,2 Nakane,3 and Robinson;4 and
• claim 15 under 35 U.S.C. § 103(a) as unpatentable over Gueret,
Creton, Nakane, Robinson, and Ito.5

1 US Patent No. 6,419,935 B1issued to Jean-Louis H. Gueret, Jul. 16, 2002.
2 Patent Application Publication No. US 2002/0176843 A1 by Isabelle
Creton, published Nov. 28, 2002.
3 US Patent No. 5,122,418 issued to Toshihiko Nakane et al., Jun. 16, 1992.
4 US Patent No. 7,285,570 B2 issued to Larry Richard Robinson et al., Oct.
23, 2007.
5 US Patent No. 6,437,002 issued to Shinobu Ito et al., Aug. 20, 2002.

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OBVIOUSNESS
The Issues
The Examiner’s position is that Gueret disclosed a method for
cleansing skin and removing impurities by topically applying a patch
comprising ascorbic acid and ORGASOL® polyamide powder. (Ans. 3.)
The Examiner found that Gueret disclosed that the thickness of the particles
ranged from about 10 microns to about 100 microns. (Id.) The Examiner
also found that ORGASOL® is nylon 12 and has an average particle size of
6.6 microns, as evidenced by Creton and Nakane. (Id.) According to the
Examiner, since the prior art taught the same type of polyamide particles
used in the claimed invention, the surface area recited in claim 5 was
inherently met. (Id.) However, the Examiner found that Gueret failed to
teach a composition in the form of an oil-in-water emulsion. (Id. at 4.)
The Examiner found that Robinson taught that while a patch is a
suitable vehicle for a cosmetic to ensure the continuous exposure of the
keratinous tissue or a more intensive treatment, its composition could also be
formulated into a cream or lotion emulsion. (Id. at 5.) According to the
Examiner, modifying Gueret’s composition into an emulsion would have
been “an obvious variation of the prior art.” (Id.)
Regarding claim 21, the Examiner found that Robinson taught that it
was well known in the cosmetic art to use ascorbic acid, its salts or
derivatives, including ascorbyl glucoside, as antioxidants and skin lightening
agents. (Id. at 5.) According to the Examiner, it would have been obvious
to a person of ordinary skill in the art at the time the invention was made to
combine the prior art teachings and modify Gueret’s composition by using
ascorbyl glucoside as the ascorbic acid compound, motivated by Robinson’s
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teaching that “these compounds are functional equivalents of ascorbic acid.”
(Id.)
Appellant contends that the Examiner’s finding that Robinson
suggested an “‘interchangeability of the type of vehicles’ to arrive at an W/O
emulsion on [a] patch as in the present claims is clearly erroneous.” (App.
Br. 5.) Appellant asserts that Robinson simply taught that its compositions
may be applied in various forms, e.g., mousse, polishes, lipsticks, etc. (Id. at
6.) According to Appellant, this teaching does not overcome Gueret’s
teaching “that its patch is not meant to have water, emulsions or the like[,]
but rather an anhydrous composition.” (Id.) Appellant asserts that Gueret
used an anhydrous composition for the patch “because of its ease of use as it
relates to the ability of the composition to stay on the polyethylene sheet.”
(Id.) Therefore, according to Appellant, Gueret taught away from including
other types of formulations on the patch. (Id.) Additionally, Appellant
asserts that modifying Gueret by forming an oil-in-water emulsion would
alter “the principle purpose of why Gueret chose anhydrous
compositions….” (Id. at 6-7.)
Appellant also contends that the Examiner erroneously found “that the
particle sizes of the porous polyamide particles defined in the claims are
inherently the same in the cited art….” (Id. at 8.) In particular, Appellant
asserts that while the Specification suggests ORGASOL® as preferred
particles, it does not state that all ORGASOL® powders have the particle
size and surface area recited in claims 1 and 5. (Id.) According to
Appellant, Gueret’s teaching to use ORGASOL® does not provide sufficient
information to inherently disclose the size of particles recited in the claimed
invention. (Id. at 9.) In support of this position, Appellant asserts that the
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International Cosmetic Ingredient Dictionary and Handbook6 provides
evidence that ORGASOL® polyamide particles are available in several
sizes, e.g., 5, 10 and 20 microns. (Id. at 8-9, citing Ex. 1.)
Appellant also asserts that the cited references do not teach, as
explained in the present application, that particles having a volume average
diameter of less than or equal to 10 μm are able to enter the sebaceous
follicle and provide “a lasting[] improvement of the mattness of the skin.”
(Id. at 9.)
Regarding claim 21, Appellant additionally argues that the Examiner
erroneously found that ascorbyl glucoside is a functional equivalent of
ascorbic acid. (Id. at 10.) According to Appellant, Table 2 of the present
application “shows that ascorbyl glucoside was more effective (effective
concentration ten times lower) at reducing lipogenesis when compared to
ascorbic acid.” (Id.)
Appellant does not separately argue the rejection applied to claim 15.
(See App. Br. 4.)
The issues are: (a) whether the record supports the Examiner’s
conclusion that the cited references would have made the claimed method
for treating greasy skin prima facie obvious; and, if so (b) whether
Appellant’s evidence establishing that ascorbyl glucoside was more effective
than ascorbic acid at reducing lipogenesis was such that the totality of
evidence weighs in favor of the nonobviousness for the method of claim 21 .

6 John A. Wenninger et al., INT’L. COSMETIC INGREDIENT DICTIONARY AND
HANDBOOK, vol. 1, p. 864, NYLON-12, (7th ed.1997).
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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 3-6.)
2. The Specification states that “ascorbyl glucoside reduces lipogenesis
at an effective concentration which is ten times lower than that necessary for
ascorbic acid to produce a comparable level of inhibition.” (Spec. p. 30, ll.
12-16.)
3. Wenninger listed these trade names for nylon 12:

(Wenninger, 864.)
Principles of Law
“Where, as here, the claimed and prior art products are identical or
substantially identical…, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
The inherent properties of prior art elements need not be disclosed in
the prior art. See In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990)
(obviousness rejection affirmed where using claimed elements in the manner
suggested by the prior art necessarily resulted in claim-recited effect).
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“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Analysis
Claims 1 and 5
After considering all the evidence and arguments, we conclude that
the record supports a conclusion that claims 1 and 5 would have been prima
facie obviousness. In particular, we disagree with Appellant’s assertions
that the Examiner erred in finding that (i) Robinson suggested a composition
prepared as a patch could alternatively be formulated as an W/O emulsion,
and (ii) Gueret inherently disclosed the recited specific surface area required
by claim 5. (App. Br. 5, 8.)
Appellant acknowledges that Robinson taught that its compositions
may be applied in various forms. (See App. Br. 6.) Specifically, the
Examiner correctly found that Robinson taught various forms in which its
composition for treating keratinous tissue may be formulated including an
emulsion and a patch. (Ans. 5.) According to Appellant, Robinson’s
teaching does not overcome the fact that Gueret allegedly taught away from
formulating its patch as an emulsion. (App. Br. 6-7.) Appellant states that
“Gueret uses an anhydrous composition for the patch because of its ease of
use as it relates to the ability of the composition to stay on the polyethylene
sheet.” (App. Br. 6.) Appellant also states that “Gueret teaches not to
include other types of formulations on the patch.” (Id.) However, Appellant
has not provided any citation to Gueret supporting these assertions. See In
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re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Attorney’s arguments in a
brief cannot take the place of evidence). Nor do we see from Gueret that
these assertions are supported. Consequently, Appellant has not
persuasively established that Gueret taught away from the Examiner’s
proposed modification. See, Fulton, 391 F.3d at 1201.
Moreover, we are not persuaded by Appellant’s assertion that
modification of Gueret’s vehicle would render it unsatisfactory for its
intended purpose. (App. Br. 6-7.) According to Appellant “an oil-in-water
emulsion could not nor would be applied on [a polyethylene sheet] in order
to obtain a patch….” (Id. at 7.) However, the Examiner’s modification of
Gueret involves preparing the composition as an emulsion rather than a
patch, not placing an emulsion on a patch. (See Ans. 5, 8.)
Appellant challenges the Examiner’s finding that Gueret’s disclosure
of using ORGASOL® porous particles inherently disclosed the recited
specific surface area required by claim 5 by asserting that not all
ORGASOL® powders “have the particle size and surface area in Claims 1
and 5.” (App. Br. 8.) In support of this contention, Appellant cites the INT’L
COSMETIC INGREDIENT DICTIONARY AND HANDBOOK, listing ORGASOL®
products having different particle sizes. (Id. at 8-9, Ex. 1.) According to
Appellant, this handbook establishes that “Gueret does not provide sufficient
disclosure to inherently disclose the size of the particles and the Office has
not established that that which is in the claims is necessarily present in the
cited publication.” (Id. at 9.) We disagree with Appellant.
First, the Examiner did not rely on inherency when addressing the
particle size of the porous polyamide particles, recited in claim 1. Rather,
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the Examiner found that Gueret disclosed a range of particle sizes that
included 10 microns, which satisfies the claim limitation. (Ans. 3.)
Additionally, the Examiner found that (i) Gueret disclosed using
ORGASOL®, which Creton disclosed as Nylon 12 sold by the company
Atochem, and (ii) Nakane disclosed Nylon 12 having an average particle
size of 6.6 microns. (Id.) These findings are supported by the evidence and
provide a rationale basis for concluding that it would have been obvious to
use polyamide particles having an average particle size of 10 microns as
disclosed in Gueret, or 6.6 microns as disclosed in Nakane in the modified
composition of Gueret. The cosmetic dictionary lists three sizes for
ORGASOL® from Atochem: 20, 10, and 5 microns. (FF-3.) That evidence
confirms Gueret’s disclosure.
Second, the fact that ORGASOL® particles were available in various
sizes does not address surface area, the parameter to which the Examiner’s
inherency finding was directed. (See Ans. 3.) As the Examiner explained,
the Gueret’s Assignee is Appellant’s Assignee, therefore, Appellant is in the
best position to demonstrate whether the prior art polyamide particles
actually differ from the particles recited in the claimed invention. (Id. at 9.)
Appellant has not produced pertinent evidence, and in the absence of that
kind of evidence, Appellant has not established that the Examiner’s
inherency finding was erroneous. See Best, 562 F.2d at 1255.
Appellant also challenges the Examiner’s rejection by asserting that
the cited references do not teach that particles having a volume average
diameter of less than or equal to 10 μm are able to enter the sebaceous
follicle and provide “a lasting[] improvement of the mattness of the skin,” as
described in the Specification. (App. Br. 9.) However, the prior art
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disclosed using particles within this size range. The asserted lasting
improvement of the mattness of the skin is an inherent property of these
particles that need not be disclosed in the prior art. See Woodruff, 919 F.2d
at 1577-78.
Accordingly, we affirm the rejection of claims 1 and 5. Appellant has
not separately argued claims 2-4 and 6-20. Therefore, these claims fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 21
Appellant separately argues claim 21, asserting that the Examiner
erroneously found that ascorbyl glucoside is a functional equivalent of
ascorbic acid. (App. Br. 10.) According to Appellant, Table 2 of the
Specification “shows that ascorbyl glucoside was more effective (effective
concentration ten times lower) at reducing lipogenesis when compared to
ascorbic acid.” (Id.)
The Examiner found that Robinson taught that ascorbic acid, its salts
or derivatives, including ascorbyl glucoside, are functionally equivalent
antioxidants and skin lightening agents. (Ans. 5.) Based upon this finding
the Examiner reasoned that a skilled artisan would have found it obvious to
use ascorbyl glucoside as the ascorbic acid compound in Gueret’s
composition. We find that the Examiner’s finding is supported by the
evidence and that this finding provided a sound basis to conclude that the
claimed invention would have been prima facie obvious. However, we also
find that Appellant has overcome prima facie obviousness by establishing
with persuasive evidence that ascorbyl glucoside is not functionally
equivalent to ascorbic acid with respect to reducing lipogenesis. (FF-2.)
Accordingly, we reverse the obviousness rejection of claim 21.
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Claim 15
Appellant has not argued the separate rejection of claim 15. (App. Br.
4.) Therefore, this claim falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSIONS OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the method of claim 1 prima facie obvious.
However, Appellant’s evidence establishing that ascorbyl glucoside
was more effective than ascorbic acid at reducing lipogenesis was such that
the totality of evidence weighs in favor of the nonobviousness for the
method of claim 21.

SUMMARY
We affirm the rejection of claims 1-14, 16, 17, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Gueret, Creton, Nakane, and
Robinson;
we reverse the rejection of claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Gueret, Creton, Nakane, and Robinson; and
we affirm the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Gueret, Creton, Nakane, Robinson, and Ito.
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-IN-PART

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