Ex Parte Mohammadi et al

Patent Trial and Appeal Board

Oct 20, 2014

11679269 (P.T.A.B. Oct. 20, 2014)

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.
11/679,269 02/27/2007 Fatemeh Mohammadi 06.12 3300
23487 7590 10/21/2014
THE ESTEE LAUDER COS, INC
155 PINELAWN ROAD
STE 345 S
MELVILLE, NY 11747
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
10/21/2014 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 FATEMEH MOHAMMADI,
ANNA CZARNOTA, and BASSI-SARNA MANJU1
__________

Appeal 2012-006222
Application 11/679,269
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition and to a skin protection method. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claims 1–20 are on appeal (Br. 1). The claims subject to each
rejection have not been argued separately and therefore stand or fall

1 Appellants identify the real party in interest as The Estée Lauder
Companies, Inc. (Br. 1).
Appeal 2012-006222
Application 11/679,269

2
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and reads
as follows:
1. A cosmetic composition comprising:
at least one chemical ultra-violet (UV) light absorber;
at least one solvent selected from the group consisting of dimethicone,
dicaprylyl carbonate, lauryl lactate, neopentyl glycol diheptanoate, glycerin,
and combinations thereof; and
at least one diphenyl silicone elastomer gellant comprising
diphenylsiloxy phenyl trimethicone,
wherein the composition is anhydrous and transparent and is
essentially free of ethanol.
Claims 1–3 and 11–13 stand rejected under 35 U.S.C. § 103(a) as
obvious over US Patent No. 6,916,464 B2 to Hansenne et al., patented
July 12, 2005 (hereinafter “Hansenne ’464”) in view of US Patent
No. 7,276,553 B2 to Garrison et al., patented Oct. 2, 2007 (Ans. 5).
Claims 4, 9, 10, 14, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Hansenne ’464 in view of Garrison and US Patent
No. 6,024,944 to Hansenne, patented Feb. 15, 2000 (hereinafter
“Hansenne ’944”) (Ans. 7).
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hansenne ’464 in view of Garrison, Hansenne ’944, and
US Publication No. 2003/0228339 A1 to El-Nokaly et al., published
Dec. 11, 2003 (Ans. 9).
Claims 7, 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hansenne ’464 in view of Garrison and US Patent
No. 6,936,241 B2 to Yamada et al., patented Aug. 30, 2005 (Ans. 11).
Appeal 2012-006222
Application 11/679,269

3
Claims 1–3 and 11–13 stand rejected under 35 U.S.C. § 103(a) as
obvious over US Patent No. 6,503,517 B1 to Mohammadi et al., patented
Jan. 7, 2003, in view of Garrison (Ans. 13).
Claims 4, 9, 10, 14, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Mohammadi in view of Garrison and
Hansenne ’944 (Ans. 15–16).
Claims 5, 6, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Mohammadi in view of Garrison, Hansenne ’944, and El-
Nokaly (Ans. 18).
Claims 7, 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
obvious over Mohammadi in view of Garrison and Yamada (Ans. 20).
I
The Examiner relies on Hansenne ’464 for teaching “sunscreen
compositions comprising sunscreen agents . . . , solvents, specifically
neopentyl glycol diheptanote [sic] . . . , silicone elastomers . . . , that said
compositions may be free of ethanol . . . , that said compositions may be
anhydrous and transparent . . . , [and] that said compositions are intended for
topical application to the skin” (Ans. 5). The Examiner finds that
Hansenne ’464 does “not teach any specific silicone elastomers” (id. at 6).
The Examiner relies on Garrison for teaching “stable emulsions
comprising diphenylsiloxy phenyltrimethicone (DPT)” (id.). The Examiner
concludes that it would have been obvious “to produce the formulations of
Hansenne [’464] with DPT as taught by Garrison” (id.).
Appeal 2012-006222
Application 11/679,269

4
Analysis
Appellants argue that the “Office Action asserts that Hansenne [’464]
teaches ethanol as an optional ingredient, which contemplates ethanol-free
compositions[, a]nd . . . that the compositions are taught to be optionally
anhydrous and transparent[, b]ut . . . that these features are not taught in
combination with one another, even when combined with Garrison” (Br. 3).
We are not persuaded.
Hansenne ’464 is directed to sunscreen compositions (Hansenne ’464,
col. 1, ll. 5–7). Hansenne ’464 discloses that its “compositions preferably,
but do not necessarily, contain at least one alcohol” and that “[e]xamples of
such alcohols include ethanol” (id. at col. 1, ll. 41–44). Hansenne ’464 also
discloses that its “composition may be anhydrous” (id. at col. 25, ll. 29–30).
In addition, Hansenne ’464 discloses that its composition may be clear (id. at
col. 25, ll. 37–38). Based on these disclosures, we conclude that the
Examiner has set forth a prima facie case that Hansenne ’464 suggests a
composition that is anhydrous, transparent, and essentially ethanol-free.
Appellants also argue that “[n]othing in Garrison teaches or suggests
formulations including DPT which are anhydrous” (Br. 3 (emphasis
omitted)). In fact, Appellants argue that “Garrison teaches away from the
use of its disclosed aromatic silicones in an anhydrous environment” (id.).
We are not persuaded.
Garrison discloses “water-in-silicone emulsions . . . comprised of
(1) an aqueous phase . . . and (2) a silicone phase containing an aromatic
silicone” (Garrison, col. 2, ll. 25–30). Garrison also discloses that examples
of the aromatic silicones include diphenyl siloxy phenyltrimethicone (id. at
Appeal 2012-006222
Application 11/679,269

5
col. 4, ll. 33–39). However, Appellants have not demonstrated that Garrison
teaches away from including diphenyl siloxy phenyltrimethicone in the
anhydrous compositions of Hansenne ’464. As noted by the Examiner, “a
teaching of the benefit of one formulation does not constitute a proper
teaching away” from a different formulation (Ans. 22).
As noted by Appellants (Br. 4), Garrison, in discussing the invention
of a published application, discloses that “none of the examples of [this]
invention as cosmetic preparations are emulsions, or contain water,
indicating the applicability of this approach to stabilized aesthetic chromatic
emulsions is severely limited and generally unsuitable for cosmetic utilities”
(Garrison, col. 1, ll. 60–67). We do not agree with Appellants that this
teaching suggests that anhydrous compositions are not suitable for any
cosmetic utilities (Br. 4). Moreover, Hansenne ’464 suggests an anhydrous
cosmetic composition comprising a silicone elastomer (Hansenne ’464, col.
1, ll. 5–7, col. 3, ll. 28–36, & col. 25, ll. 29–30). In addition, we conclude
that the Examiner has set forth a prima facie case that it would have been
obvious to include diphenyl siloxy phenyltrimethicone in the anhydrous
composition of Hansenne ’464 (Ans. 21–23).
Conclusion
The evidence supports the Examiner’s conclusion that Hansenne ’464
and Garrison suggest the composition of claim 1. We therefore affirm the
obviousness rejection of claim 1 over Hansenne ’464 and Garrison.
Claims 2, 3, and 11–13 fall with claim 1.
Appeal 2012-006222
Application 11/679,269

6
II
In rejecting claims 4, 9, 10, 14, 19, and 20, the Examiner additionally
relies on Hansenne ’944 (Ans. 7–9). Appellants argue that nothing in
Hansenne ’944 remedies the shortcomings of Hansenne ’464 and Garrison
(Br. 4). However, having found no shortcomings in the combination of
Hansenne ’464 and Garrison, we affirm the obviousness rejection of
claims 4, 9, 10, 14, 19, and 20 over Hansenne ’464, Garrison, and
Hansenne ’944 for the reasons of record.
III
In rejecting claims 5, 6, 15, and 16, the Examiner additionally relies
on El-Nokaly (Ans. 9–11). In rejecting claims 7, 8, 17, and 18, the
Examiner additionally relies on Yamada (id. at 11–13).
Appellants do not specifically traverse these rejections. Therefore,
having found no shortcomings in the combination of Hansenne ’464 and
Garrison, we affirm the obviousness rejection of claims 5, 6, 15, and 16 over
Hansenne ’464, Garrison, Hansenne ’944, and El-Nokaly and the
obviousness rejection of claims 7, 8, 17, and 18 over Hansenne ’464,
Garrison, and Yamada for the reasons of record.
IV
The Examiner relies on Mohammadi for teaching “sunscreen
compositions comprising sunscreen agents, solvents, specifically glycerin
. . . , silicone elastomers . . . , [and] that said compositions may be
anhydrous” (Ans. 13). The Examiner finds that Mohammadi does “not teach
any specific silicone elastomers as claimed” (id. at 14).
Appeal 2012-006222
Application 11/679,269

7
The Examiner relies on Garrison as discussed above (id.). The
Examiner concludes that it would have been obvious “to produce the
formulations of Mohammadi et al. with DPT as taught by Garrison” (id.).
With regard to the composition being transparent, the Examiner finds
that Mohammadi teaches “compositions similar to those claimed, which are
commonly transparent when applied. Further the compositions of
Mohammadi et al. comprise the same components as claimed and would
necessarily have all of the same properties.” (Id. at 15.) With regard to the
absence of ethanol, the Examiner finds that Mohammadi does “not require
ethanol is present” (id.).
Analysis
Appellants argue: “Garrison specifically teaches away from
anhydrous cosmetic compositions. Therefore, the anhydrous embodiments
of Mohammadi teach away from their combination with the strictly aqueous
invention of Garrison.” (Br. 4.) We are not persuaded by this argument for
the reasons discussed above.
Conclusion
The evidence supports the Examiner’s conclusion that Mohammadi
and Garrison suggest the composition of claim 1. We therefore affirm the
obviousness rejection of claim 1 over Mohammadi and Garrison. Claims 2,
3, and 11–13 fall with claim 1.
V
In rejecting claims 4, 9, 10, 14, 19, and 20, the Examiner additionally
relies on Hansenne ’944 (Ans. 15–18). In rejecting claims 5, 6, 15, and 16,
the Examiner additionally relies on El-Nokaly (id. at 18–19). In rejecting
Appeal 2012-006222
Application 11/679,269

8
claims 7, 8, 17, and 18, the Examiner additionally relies on Yamada (id. at
20–21).
Appellants do not specifically traverse these rejections. Therefore,
having found no shortcomings in the combination of Mohammadi and
Garrison, we affirm the obviousness rejection of claims 4, 9, 10, 14, 19, and
20 over Mohammadi, Garrison, and Hansenne ’944, the obviousness
rejection of claims 5, 6, 15, and 16 over Mohammadi, Garrison,
Hansenne ’944, and El-Nokaly, and the obviousness rejection of claims 7, 8,
17, and 18 over Mohammadi, Garrison, and Yamada for the reasons of
record.
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. § 1.136(a).

AFFIRMED

cdc