Ex Parte Narasimhan et alDownload PDFPatent Trial and Appeal BoardMay 23, 201812874342 (P.T.A.B. May. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/874,342 09/02/2010 27777 7590 05/25/2018 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Saroja Narasimhan 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. JC05005USNP 7050 EXAMINER LEE, WILLIAM Y ART UNIT PAPER NUMBER 1629 NOTIFICATION DATE DELIVERY MODE 05/25/2018 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAROJA NARASIMHAN and JOSEPH L. LIBRIZZI. 1 Appeal2017-008110 Application 12/874,342 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to personal care products which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE "Organopolysiloxanes (i.e., silicones) have gained acceptance in skin- care formulations to aid inemolliency, spreading, and general enhancement of skin feel. In particular, so-called 'silicone elastomers,' polymers of 1 Appellants identify the Real Party in Interest as Johnson & Johnson Consumer, Inc. Appeal Br. 2. Appeal2017-008110 Application 12/874,342 organosiloxanes that have been cross-linked, in combination with silicone fluids, have been used in consumer products to impart an improved skin feel." Spec. 1. Silicone elastomers, however, are difficult to formulate, expensive and are unpredictable. Id. The Specification describes the use of silicone water-in-oil emulsifiers in combination with low nitrogen amino- functional silicone gums, a non-silicone emulsifier and a hydrophobic agent to overcome the disadvantages of using silicone elastomers. Spec. 2. Claims 23-33 are on appeal. Claim 23 is representative of the rejected claims and reads as follows: 23. A composition comprising a silicone water-in-oil emulsifier selected from the group consisting of Cetyl PEG/PPG- I 0/1 Dimethicone, Lauryl PEG-9 Polydimethylsiloxyethyl Dimethicone, Lauryl Polyglyceryl-3 Polydimethylsiloxyethyl Dimethicone, Bis-PEG/PPG-14/ 14 dimethicone copolyol, and Dimethicone/PEG-10/15 Crosspolymer; an amino-functional silicone gum having a nitrogen content that is about 3% or less by weight based on the total weight of aminofunctional silicone gum and selected from the group consisting of aminopropyldimethicone and morpholine-modified polydimethylsiloxane; a hydrophobic agent; a non-silicone primary emulsifier; and water; provided that if the silicone water-in-oil emulsifier comprises Dimethicone/PEG-10/15 Crosspolymer then the aminofunctional silicone gum comprises aminopropyldimethicone gum and if the silicone water-in-oil emulsifier comprises Bis-PEG/PPG-14/14 dimethicone copolyol then the amino-functional silicone gum comprises morpho line-modified polydimethy lsiloxane. 2 Appeal2017-008110 Application 12/874,342 The claims have been rejected as follows: Claims 23-33 have been rejected under 35 U.S.C. § 103(a) as unpatentable overNawaz2 in view ofBahr3, Shin-Etsu, 4 Mateu, 5 Berthiaume6 and Nair. 7 OBVIOUSNESS Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claims 23-33 would have been obvious over Nawaz combined with Bahr, Shin-Etsu, Mateu, Berthiaume and Nair. The Examiner finds that Nawaz discloses a skin care emulsion comprising a cross-linked polyorganosiloxane polymer, an amino-functional gum, a hydrophobic agent, a non-silicone emulsifier and water. Ans. 5. The Examiner finds that Bahr teaches a silicone water-in-oil emulsion comprising a cross-linked organpolysiloxane polyoxyalkylene emulsifier which is more stable than traditional emulsifiers. Id. The Examiner find that while Nawaz does not teach the specific silicone emulsifiers recited in the claims, the use of those emulsifiers in cosmetics is taught by Shin-Etsu and Mateu. Ans. 6-7. 2 Nawaz et al., US 2002/0058051 Al, published May, 6, 2002 ("Nawaz"). 3 Bahr et al., US 4,853,474, issued Aug. 1, 1989 ("Bahr"). 4 Shin-Etsu Product Brochure, Emulsifiers for Cosmetic Products, (2002) ("Shin-Etsu"). 5 Mateu et al. US 2004/0018219 Al, published Jan. 29, 2004 ("Mateu"). 6 Berthiaume et al. US 5,578,298, issued Nov. 26, 1996 ("Berthiaume"). 7 Nair et al., Cosmetic Ingredients Review Expert Panel, 22 Int'l J. Toxicology 11 (2003)("Nair"). 3 Appeal2017-008110 Application 12/874,342 With respect to the use of low nitrogen amino functional silicone gum, the Examiner finds that the gums used in Nawaz are similar to those used in the present Specification and would intrinsically possess the same properties. Ans. 7-8. The Examiner finds that the use of low nitrogen amino functional silicone gums is taught by Berthiaume and Nair. Ans. 8. The Examiner concludes The rationale to support a finding of obviousness are prior art elements such as compositions as taught by Nawaz (comprising silicone emulsifiers, silicone gums, a hydrophobic agent and non-silicone primary emulsifier, where preferred silicone emulsifiers as claimed by applicant are specifically taught by Shin-Etsu and Mateu and silicone gums as per claim 23 are taught by Berthiaume and Nair) in combination with a known method (i.e., known technique from Bahr, use of an organopolysiloxane polyoxyalkylene emulsifier known to stabilize formulations) to predictably arrive at applicant's claimed inventive composition. Ans. 9. Principles of Law In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. "[The Examiner] can satisfy this burden only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references." The patent applicant may then attack the Examiner's prima facie determination as improperly made out, or the applicant may present objective evidence tending to support a conclusion of nonobviousness. 4 Appeal2017-008110 Application 12/874,342 In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted, alteration in original). "Mere improvement in properties does not always suffice to show unexpected results. In our view, however, when an applicant demonstrates substantially improved results ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary." In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (emphasis in original). "The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains." In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). Analysis We adopt the Examiner's findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established that subject matter of the claims would have been obvious to a person of ordinary skill in the art at the time the invention was made in view ofNawaz combined with Bahr, Shin-Etsu, Mateu, Berthiaume and Nair. Appellants have not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect. Only those arguments made by Appellants in the Brief have been considered in this Decision. Arguments not presented in the Brief are waived. See 3 7 C.F .R. § 41.37(c)(l)(iv) (2015). We have identified claim 23 as representative; therefore, all claims fall with claim 23. We address Appellants' arguments below. 5 Appeal2017-008110 Application 12/874,342 Appellants begin by arguing that none of the references show the combination of "a silicone water-in-oil emulsifier with a low nitrogen containing amino-functional silicone gum in a single composition." Appeal Br. 3. This argument is unpersuasive. As the Examiner has demonstrated, the combination of references teaches each of the respective elements of the claims and provides the motivation to combine the references. Ans. 5-8. Appellants have offered no reasoning or evidence to show why the combination of references is improper. Appellants next argue that there is sufficient evidence in the record of objective indicia of non-obviousness to overcome the Examiner's prima facie case of obviousness. Appeal Br. 3-5. Appellants point to Table 5 of the Specification as providing evidence of unexpected results achieved using the claimed combination. Appeal Br. 4. Appellants contend that the data in Table 5 shows that a composition of the invention exhibited improved tactile aesthetics when compared with prior art compositions. Id. We have considered Appellants' argument as well as the data in Table 5 and find it unpersuasive. While Table 5 shows that the composition of the invention had a higher mean "pickup" score8 than prior art compositions, Appellants have not shown that a 0.4 difference in pickup score (6.0 for inventive composition E5 as compared to comparative composition C23) represents a substantial improvement. Thus the evidence is not sufficient to overcome the Examiner's finding of obviousness. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ("[T]he burden of showing unexpected results rests on he who asserts them. Thus it is not enough to show that results are 8 "By 'pickup,' it is meant the amount of product that remains on the finger of the panelist after touching the product." Spec. 21. 6 Appeal2017-008110 Application 12/874,342 obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference"). In addition, as the Examiner points out, the data is not commensurate with the scope of the claims. Example E5 comprises lauryl PEG-9 Polydimethylsiloxyethyl dimethicone (KF 6038; Spec. 4 and 14 (Table 2)) and amino-modified silicone gum aminopropyldimethicone (KF 8018; id. at 6 and 14 (Table 2)). The Markush groups listed in the claim 23 for the silicone emulsifier and silicone gum include other compounds. Appellants have offered no persuasive evidence that the same results as achieved using the specific compounds used in example E5 would be achieved using the additional compounds recited in claim 23. See In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with [the] scope of the claims.") Thus, even assuming the result shown for composition E5 is surprising, the results reported in Table 5 are not commensurate with the scope of claim 23. Conclusion We conclude that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claim 23 would have been obvious over Nawaz combined with Bahr, Shin-Etsu, Mateu, Berthiaume and Nair. Claims 24-- 33 have not been argued separately and therefore fall with claim 23. 37 C.F.R. § 41.37(c)(l)(iv). 7 Appeal2017-008110 Application 12/874,342 SUMMARY We affirm the rejection under 35 U.S.C. § 103(a). 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 8 Copy with citationCopy as parenthetical citation