Ex Parte Mills et al

Patent Trial and Appeal Board

May 23, 2017

13700894 (P.T.A.B. May. 23, 2017)

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.
13/700,894 02/05/2013 Matthew Mills 084708-0046 3590
20277 7590 05/25/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
CHICKOS, SARAH J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
ipdocketmwe @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MILLS and ALLAN KURTZ1
Appeal 2017-007446
Application 13/700,894
Technology Center 1600
Before MELANIE L. McCOLLUM, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is Pacific Shore Holdings. App.
Br. 3.
Appeal 2017-007446
Application 13/700,894
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—22, which stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of George et al. (US 7,247,323 B2, July 24, 2007) (“George”),
McClellan et al. (US 2006/0003033 Al, January 5, 2006) (“McClellan”),
and Gupta (US 2006/0110415 Al, May 25, 2006) (“Gupta”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to cosmetic formulations suitable for
application to the lips. The lip cosmetic formulations can contain at least
caffeine, extract of Hoodia gordinii2 and extract of green tea. The lip
cosmetic formulations can also contain a bioavailable chromium source
and/or F-camitine. Optionally, the lip cosmetic formulations can also
contain a sunscreen. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A lip cosmetic formulation comprising:
caffeine;
extract of Hoodia gordonii;
extract of green tea; and
2 The scientific name of the succulent plant known as Bushman’s hat.
2
Appeal 2017-007446
Application 13/700,894
an emollient base in which the caffeine, the extract
of Hoodia gordonii and the extract of green tea are
formulated, the emollient base comprising about 50% to
about 95% of the lip cosmetic formulation by weight and
comprising at least one of soybean oil, safflower oil,
beeswax, paraffin and coconut oil;
wherein the lip cosmetic formulation is a lipstick, a
lip gloss or a lip balm.
App. Br. 9.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner findings and conclusions that
the claims on appeal are obvious over the cited prior art references. We
address the arguments raised on appeal by Appellants below.
Issue
Appellants argue the Examiner erred because that the creams of
McClellan could not reasonably have been considered by one having
ordinary skill in the art to be synonymous with the lipsticks, lip glosses and
lip balms of George. App. Br. 6.
Analysis
The Examiner finds, in relevant part, that George teaches cosmetic
compositions for use on the lips as a lip gloss. Final Act. 3. The Examiner
finds George expressly teaches the compositions can include caffeine, green
tea leaf and extracts, and an extract of Hoodia gordonii. Id. at 4.
3
Appeal 2017-007446
Application 13/700,894
The Examiner finds McClellan teaches a cream containing between
about 5 to about 50% emollient and a green tea extract. Final Act. 7. The
Examiner concludes that it would have been prima facie obvious for one of
ordinary skill in the art making the George lip gloss to add the 50%
emollient of McClellan in order to reduce the appearance of wrinkles and
increase lip skin firmness, moisture and elasticity, as taught by McClellan.
Id. at 8.
Appellants argue paragraph [0050] of McClellan teaches that its
lotions and creams can be formulated as emulsions as well as solutions.
App. Br. 6—7. According to Appellants, emulsions and solutions are forms
that a person of ordinary skill in the art would not reasonably associate with
lipsticks, lip glosses and lip balms. Id. at 7.
Appellants argue further that paragraph [0053] of McClellan teaches
that if its compositions [formulations] are “formulated as a gel or cosmetic
stick, a suitable amount of a thickening agent... is added to a cream or lotion
formulation.” App. Br. 7. Appellants contend that, since McClellan
specifically teaches altering a cream to make it suitable for use as a cosmetic
stick, it follows that McClellan fails to establish that a lipstick, lip gloss, or
lip balm can suitably contain about 50% to about 95% emollient base by
weight. Id. Appellants assert that, since the creams of McClellan need to be
altered to be used as a cosmetic stick, it follows that they must be a priori
unsuitable. Id. Therefore, Appellants argue, the teachings of McClellan
address a different formulation type than the lipsticks, lip glosses and lip
balms of George, and there would be no motivation for a person of ordinary
skill in the art to combine the references. Id.
4
Appeal 2017-007446
Application 13/700,894
Alternatively, Appellants argue, because McClellan teaches altering a
cream with a thickening agent for suitable use as a cosmetic stick, it
reasonably follows that the loading of emollient in the altered cosmetic stick
formulation would have a lower weight percentage than in the original
cream. App. Br. 7. That is, the thickening agent would dilute the emollient
of the original cream formulation, in which case the emollient’s
concentration would necessarily fall below the claimed range. Id.
Consequently, Appellants argue, McClellan further fails to establish that a
lipstick, lip gloss or lip balm containing the claimed amount of emollient
base is taught or suggested by the combined cited prior art references. Id.
The Examiner responds that McClellan teaches a cream containing
between about 5 to about 50% emollient and also teaches that its creams can
reduce the appearance of wrinkles and increase skin firmness, moisture and
elasticity. Ans. 5 (citing McClellan || 30, 40, 46). The Examiner concludes
it would have been obvious to a person of ordinary skill in the art to
incorporate the 50% emollient taught by McClellan into the lip composition
comprising caffeine, extract of Hoodia gordonii and green tea leaf extract
taught by George to reduce the appearance of skin wrinkles and to increase
lip firmness, moisture and elasticity as taught by McClellan. Id. The
Examiner finds that a person of ordinary skill in the art of cosmetic and skin
care formulation would be able to formulate a lipstick, lip gloss or a lip balm
with the claimed 50% amount of emollient base, particularly since much of
lip cosmetic art is concerned with hydrating and moisturizing the lips (e.g.,
to prevent chapped lips or to soften and hydrate lips and prevent or alleviate
the signs of aging on the lips). Id.
5
Appeal 2017-007446
Application 13/700,894
The Examiner finds paragraph [0046] of McClellan defines an
emollient as a component that is used for the prevention or relief of dryness.
Ans. at 5—6. The Examiner finds this aim is a common goal or purpose of
lip formulations as evidenced by Lane. Id. at 6 (citing e.g., Lane (US
5,503,825, April 2, 1996) (“Lane”) col. 1,11. 10—21) (“Lip balms have long
been used to protect lips from the effects of the environment, such as
sunlight, wind, and cold. Lip balms may be comprised of a variety of
ingredients such as fats, oils, waxes and emollients which soften lips and
protect against the effects of wind”) (emphasis added)).
Therefore, the Examiner finds, the concept of using emollients in a lip
composition (such as to prevent chapped lips or to soften and hydrate lips
and prevent or alleviate the signs of aging on the lips) would not only have
been well within the skill of an ordinary artisan, having been previously well
known in the art, it would also have been commonly known to those of
ordinary skill in the art to alter the concentration of the emollient to achieve
a desired result. Ans. 6. The Examiner also finds it is not credible to argue
that the creams of McClellan could not reasonably have been considered by
one having ordinary skill in the art to be the same as the lipsticks, lip glosses
and lip balms of George. Id. The Examiner finds it was well known in the
art that lip glosses and lip balms can be creams, and that they are not a
different formulation type as asserted by Appellants. Id. As evidenced by
Lane that expressly teaches lip balms can be made up of a variety of
ingredients, and can be formulated as a stick, salve, cream, or ointment. Id.
(citing Lane col. 1,11. 10-21, col. 3,11. 3—7).
furthermore, the Examiner points out, Appellants’ arguments assume
that all lipsticks, lip glosses and lip balms are formulated as sticks, which is
6
Appeal 2017-007446
Application 13/700,894
not correct. Ans. 6. Therefore, the Examiner finds, and contrary to
Appellants’ argument, it need not logically follow that, since McClellan
teaches altering a cream to make it suitable for use as a cosmetic stick, the
cream must have been unsuitable beforehand. Id. at 6—7. The Examiner
finds the addition of a thickener for a stick formulation only suggests that
this is helpful in formulating a stick composition, but does not negate the
clear teaching of 50% emollient for the cream compositions taught by
McClellan. Id. at 7.
We are not persuaded by Appellants’ arguments. As an initial matter,
Appellants argue that “[e]mulsions ... are forms [that a person of] ordinary
skill in the art would not reasonably associate with lipsticks, lip glosses and
lip balms.” See App. Br. 7. Appellants provide no evidence of record in
support of this contention and we consequently afford such attorney
argument little probative weight. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Nor does Appellants’ Specification provide any explicit
definition of the claim terms “lip glosses and lip balms” that would
necessarily exclude the compositions, including emulsions, taught by
McClellan.
Appellants next argue that, since McClellan specifically teaches
altering a cream to make it suitable for use as a cosmetic stick, it logically
follows that the cited disclosure of McClellan fails to establish a lipstick, lip
gloss, or lip balm can suitably contain about 50% to about 95% emollient
base by weight. See App. Br. 7. We are not persuaded because Appellants’
argument is not commensurate with the scope of the claims. Claim 1 recites
“wherein the lip cosmetic formulation is a lipstick, a lip gloss or a lip balm.”
The claims do not require that the claimed composition be in the form of a
7
Appeal 2017-007446
Application 13/700,894
stick, as in a lipstick, and Appellants adduce no evidence to demonstrate that
a lip gloss or a lip balm must necessarily be in the form of a stick or that the
compositions taught by McClellan are necessarily unsuitable for these uses.
Appellants also argue that adding a thickening agent would
necessarily dilute the amount of emollient in the compositions taught by
McClellan to less than 50%, contrary to the requirements of claim 1. We are
not persuaded. McClellan teaches: “If the topical pharmaceutical and
cosmetic compositions of the present disclosure are formulated as a gel or a
cosmetic stick, a suitable amount of a thickening agent, as disclosed supra, is
added to a cream or lotion formulation.” McClellan | 53. Appellants
maintain that the addition of a “suitable amount of a thickening agent”
would decrease the amount of emollient in the cream compositions of
McClellan to less than 50%. See McClellan 148. We disagree, again
because the claims do not require Appellants’ composition to be in the form
of a cosmetic stick (as in lipstick) requiring addition of a thickening agent.
Consequently, we affirm the Examiner’s rejection of the claims.
DECISION
The Examiner’s rejection of claims 1—22 as unpatentable under 35
U.S.C. § 103(a) 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)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
8