Ex Parte Michos et alDownload PDFPatent Trials and Appeals BoardMay 14, 201913519736 - (D) (P.T.A.B. May. 14, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/519,736 06/29/2012 30633 7590 05/15/2019 W.R. GRACE & CO.-CONN. 7500 GRACE DRIVE COLUMBIA, MD 21044 FIRST NAMED INVENTOR Demetrius Michos 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. W9884-03 5581 EXAMINER VANHORN, ABIGAIL LOUISE ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 05/15/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEMETRIUS MICROS and JAMES NEIL PRYOR Appeal2018-000994 Application 13/519,736 Technology Center 1600 Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and RYAN H. FLAX, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a composition comprising particulate material. The Examiner rejected the claims as obvious and on the ground of provisional obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as W.R. Grace & Co. (App. Br. 3). 2 We have considered the Specification of June 28, 2012 ("Spec."); Final Office Action of Sept. 22, 2016 ("Final Action"); Appeal Brief of June 22, 2017 ("App. Br."); Examiner's Answer of Sept. 6, 2017 ("Ans."); and Reply Brief of Nov. 6, 2017 ("Reply Br."). Appeal2018-000994 Application 13/519,736 Statement of the Case Background "Cosmetic creams having the ability to hide wrinkles and other skin imperfections are widely used" (Spec. ,r 2). A "way to hide wrinkles and other skin imperfections is to create a film on the skin surface, which is capable of obscuring the imperfection via light diffusion" (id.). "[C]onventional thinking regarding the use of light diffusing pigments has been to load a composition with light diffusing pigments so as to maximize intra-film light scattering" (id. ,r 4). The Specification states, "the use of particles that have a refractive index similar to that of the non-volatile component present in the composition/film results in enhanced obscuration properties in the resulting film" (id. ,r 12). The Claims Claims 1, 3, 7, 10, 11, 25, 31, 45, 46, 48-54, and 60-62 are on appeal. Claim 1 is representative and reads as follows: 1. A composition comprising: particulate material having a particulate material refractive index ranging from about 1.2 to about 1.8, said particulate material consisting of alumina, boron nitride, or silica particles, said particulate material being precipitated particles or gel particles; and a fluid phase in an amount of from about 10.0 wt% to about 98.0 wt% based on a total weight of the composition, said fluid phase comprising: from about 1. 0 wt% to about 60 wt% of at least one non-volatile fluid component, based on a total weight of the fluid phase, said at least one non-volatile fluid component having a non-volatile fluid component refractive index ranging from about 1.2 to about 1.8, and 2 Appeal2018-000994 Application 13/519,736 from about 99. 0 wt% to about 40 wt% of at least one volatile fluid component based on a total weight of the fluid phase; wherein the composition, after being dried on a substrate, forms a continuous, transparent film (a) that exhibits less than 50% intra-film light scattering and greater than about 50% surface light scattering based on a total amount of light scattering by the film, and (b) has an optical performance ratio of at least 4.0. The Re} ections A. The Examiner rejected claims 1, 3, 7, 10, 11, 25, 31, 45, 46, 48-54, and 60-62 under 35 U.S.C. § I03(a) as obvious over Luizzi, 3 Kostinko, 4 Chiao, 5 Gray, 6 and Wason7 (Final Act. 5-11). B. The Examiner rejected claims 1, 3, 7, 10, 11, 25, 31, 45, 46, 48-54, and 60-62 on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 39 and 41-50 of copending Application No. 13/519,763 in view of Wason (Final Act. 11-15). A. 35 U.S.C. § 103(a) The Examiner finds Luizzi teaches "skin compositions including tensioning polymers" where liquid vehicles "include one or more of water, C 1 to C6 alcohols and glycols" "in a concentration from about 30 to about 3 Luizzi et al., US 2006/0210513 Al, published Sept. 21, 2006. 4 Kostinko et al., US 2003/0131536 Al, published July 17, 2003. 5 Chiao et al., Densities and Refractive Indices for Glycol-Water Solutions, 29 Analytical Chemistry 1678-81 (1957). 6 Gray, WO 2008/022836 Al, published Feb. 28, 2008. 7 Wason, Cosmetic properties and structure of fine-particle synthetic precipitated silicas, 29 J. Soc. Cosmet. Chem. 497-521 (1978). 3 Appeal2018-000994 Application 13/519,736 99%" (Final Act. 6-7). The Examiner finds Luizzi teaches "to reduce the shine and/or glossiness of the film, mattifying agents may be incorporated into the skin care composition. Examples include silica (including fumed silica, precipitated silica ... from about 0.5% to about 20%" (Final Act. 7). The Examiner finds Luizzi teaches the resultant composition is translucent and forms "a film on the skin that has sufficient tensioning to reduce the appearance of wrinkles" (Final Act. 7). The Examiner acknowledges that Luizzi does not exemplify precipitated silica, or teach "how to achieve transparency," and is "silent with respect to the light scattering and optical performance ratio" (Final Act. 8). The Examiner finds Gray teaches "fumed silica lessens the appearance of wrinkles" and "if the refractive index of the oil (nonpolar liquid to which the silica is added) is near to that of the fumed silica then the gel will be transparent" (Final Act. 8). The Examiner finds Kostinko teaches "precipitated silica has a refractive index of about 1.43 8 to 1.451, water has a refractive index of about 1.332, [and] glycerin has a refractive index of 1.472," and finds Chiao teaches "hexylene glycol has a refractive index 1.4275" (Final Act. 8). The Examiner determined that it would have been obvious to "manipulate the solvent type and concentration in order to have the refractive index of the liquid vehicle match the refractive index silica in order for the composition to be transparent" (Final Act. 8). The Examiner also finds: Since silica is known to lessen the appearance of wrinkles by means of optimum, even distribution of light and[,] as evidenced by Wason[,] both fumed silica and precipitated silica 4 Appeal2018-000994 Application 13/519,736 have an overlapping surface area and other similar properties and both are taught for use in compositions for reducing the appearance of wrinkles by Luizzi et al., [there] is use in hiding skin imperfections (i.e. wrinkles) would have been obvious. (Final Act. 9). The Examiner finds "[i]t would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results." (Final Act. 10). The issue with respect to this rejection is: Does a preponderance of the evidence of record support the Examiner's conclusion that the prior art render obvious the "greater than about 50% surface light scattering" and "optical performance ratio of at least 4.0" limitations required by claim 1? Findings of Fact (FF) 1. Luizzi teaches a way to obtain "reduction in the appearance of wrinkles is to topically apply a composition containing a dispersion of a tensioning polymer" (Luizzi ,r 1 ). 2. Luizzi teaches the "skin care composition includes a liquid vehicle" which may include "water, Cl to C6 alcohols (such as ethanol and isopropanol), and glycols (such as propylene glycol and hexylene glycol)" in a "concentration from about 30% to about 99%" (Luizzi ,r,r 67---68). 3. Luizzi teaches "to reduce the shine and/ or glossiness of film, mattifying agents may be incorporated ... including fumed silica, precipitated silica, and colloidal silica" in amounts "from about 0.5% and about 20%" (Luizzi ,r,r 78, 83). 4. Luizzi teaches the skin care composition is "substantially clear. By substantially clear it is meant transparent or translucent" (Luizzi ,r 95). 5. Gray teaches "fumed silica ... lessens the appearance of wrinkles by means of optimum, even distribution of light" (Gray 26:29-37). 5 Appeal2018-000994 Application 13/519,736 6. Gray teaches: Nonpolar liquids such as vegetable oils, liquid paraffin or isopropyl myristate can be converted to spreadable gels for example with a undensified, hydrophilic fumed silica having a BET surface area of 200 ± 25 m2/g. If the refractive index of the oil is near to that of the fumed silica (1.46) then the gel will be transparent. (Gray 19:30-20:2). 7. Wason teaches fumed silica has a surface area of 200-400 m2/g (see Wason 501, Table 1 ). 8. Kostinko teaches "commercially available precipitated silicas have a refractive index of about 1.43 8 to 1.451, while water has a refractive index of 1.332, 98% glycerin has a refractive index of 1.472 and 70% sorbitol has a refractive index of 1.456" (Kostinko ,r 4). 9. Chiao teaches that hexylene glycol has a refractive index at 20QC of 1.4275 (see Chiao 1679, Table 1). Principles of Law "Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." MEHL/Biophile Int 'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). Analysis Appellants contend that the combined prior art fails to guide one skilled in the art to modify the disclosed compositions of Luizzi as discussed herein so as to result in a composition that, after being dried on a substrate, forms a continuous, transparent film (a) that exhibits less than 50% intra-film light scattering and greater than about 50% surface light scattering based on a total amount of light scattering by the film, and (b) has an optical performance ratio of at least 4.0. 6 Appeal2018-000994 Application 13/519,736 (App. Br. 14). Appellants contend "none of the teachings of Luizzi, Kostinko, Chiao, Gray and Wason teach light scattering, and especially light scattering at a film surface, as a film property to be optimized" (App. Br. 15). The Examiner responds that the "art (Gray) recognizes that in order to achieve a transparent composition the refractive index of the silica must match the liquid vehicle. Therefore, the prior art suggests the same claimed composition" (Ans. 6). The Examiner finds "the fact that applicant has found out that the prior art's composition scatters light is not patentably distinguishable since the prior art suggests the same composition as claimed and applicant is merely attempting to claim an unrecognized property of the prior art" (Ans. 6). We agree with Appellants because even if Gray supports optimizing cosmetic compositions to be transparent (FF 6) by creating an optimum even distribution of light (FF 5), Gray does not suggest that surface light scattering should exceed "about 50%" nor does Gray suggest compositions with optical performance ratios of "at least 4.0," as required by claim 1. The Examiner does not identify teachings to optimize either of these parameters in any of the prior art, and "[ m ]issing from the ... analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention." In re Stepan Company, 868 F.3d 1342, 1346 (Fed. Cir. 2017). This is a situation where the "surface light scattering" and "optical performance ratio" parameters that the Examiner suggests could be optimized were not recognized as result-effective variables and therefore not reasonably subject to routine optimization. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). 7 Appeal2018-000994 Application 13/519,736 To the extent that the Examiner relies upon inherency and burden shifting based on In re Best, 562 F.2d 1252, 1254 (CCPA 1977), the Examiner has not established that the obvious composition would necessarily have the optical properties required by instant claim 1. That is, the tensioning product of Luizzi incorporates additional components including a tensioning polymer not required by the instant claim 1. Therefore, even if Luizzi' s composition included fumed silica and hexylene glycol in the amounts recited by Wason, Gray, and Chiao, the evidence of record does not show that the resulting composition would necessarily share the optical properties of "greater than about 50% surface light scattering" and "an optical performance ration of at least 4.0" due to the presence of Luizzi's tensioning polymer. In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981 ). Thus, the Examiner has not established the necessary predicate of identical compositions required to shift the burden under Best. Conclusion of Law A preponderance of the evidence of record does not support the Examiner's conclusion that the prior art render obvious the "greater than about 50% surface light scattering" and "optical performance ratio of at least 4.0" limitations required by claim 1. B. Provisional Obviousness-Type Double Patenting We decline to reach this undisputed provisional rejection. See In re Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The rejection is provisional and Application No. 13/519,763 remains copending and not allowed; accordingly, the issues are not ripe for decision. 8 Appeal2018-000994 Application 13/519,736 SUMMARY We reverse the rejection of claims 1, 3, 7, 10, 11, 25, 31, 45, 46, 48- 54, and 60-62 under 35 U.S.C. § 103(a) as obvious over Luizzi, Kostinko, Chiao, Gray, and Wason. We do not reach the rejection of claims 1, 3, 7, 10, 11, 25, 31, 45, 46, 48-54, and 60-62 on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 39 and 41-50 of copending Application No. 13/519,763 in view of Wason. REVERSED 9 Copy with citationCopy as parenthetical citation