Ex Parte Norman

Patent Trial and Appeal Board

Jan 23, 2017

13491357 (P.T.A.B. Jan. 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.
13/491,357 06/07/2012 Greg Norman MKAY.P0316US/11206026 9647
32425 7590 01/25/2017
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
EXAMINER
ZHANG, YANZHI
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
aoipdocket @ nortonrosefulbright .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG NORMAN
Appeal 2015-001381
Application 13/491,3571
Technology Center 1600
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
sunscreen composition. The Examiner rejected the claims on appeal under
35 U.S.C. § 103(a) as obvious.
We reverse.
1 According to Appellant, the real party in interest is Mary Kay, Inc. App.
Br. 1.
Appeal 2015-001381
Application 13/491,357
STATEMENT OF THE CASE
Claims 1 and 3—15 are on appeal. Claim 1, the only independent
claim, is illustrative and reads as follows:
1. A sunscreen composition comprising:
(i) A combination of ultraviolet light absorbing agents
including:
and
(ii) a combination of solubilizers and stabilizers to
solubilize and stabilize said ultraviolet light absorbing
agents, said combination including Cl2-15 alkyl
benzoate, dipropylene glycol dibenzoate, PPG-15
stearyl ether benzoate, and dicaprylyl carbonate,
wherein said ultraviolet light absorbing agents are stable
and solubilized within the sunscreen composition when stored
at room temperature for 1 month, and
wherein the sunscreen has a SPF of at least 35 and a PFA of
at least 4.
App Br. 12 (symbols C1-C5 added for reference purposes).
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Appeal 2015-001381
Application 13/491,357
The claims stand rejected as follows:
Claims 1, 3—8, and 10-15 as unpatentable under 35 U.S.C. § 103(a)
over the combination of Zofchak,2 Walele,3 and Tanner4 as evidenced by
Glogau5 (“the First Rejection”).
Claim 9 as unpatentable under 35 U.S.C. § 103(a) over the
combination of Zofchak, Walele, Tanner, and Huner6 as evidenced by
Glogau (“the Second Rejection”).
REJECTION OF CLAIMS 1, 3-8 AND 10-15 OVER ZOFCHAK,
WALELE AND TANNER AS EVIDENCED BY GLOGAU
The Examiner found that Zofchak disclosed “all [of] the key
ingredients” of the claimed composition including “homosalate (Cl),
ethylhexyl salicylate (C2), [djioxybenzone, benzophenone-3 (C3),
avobenzone (C4), 2-ethylhexyl-2-cyano-3,3-diphenyl (C5), as well as
cyclomethicone, dipropyleneglycol dibenzoate, glycerin, a glycol and
water.” Ans. 8. The Examiner acknowledged that Zofchak did not disclose
PPG-15 stearyl ether benzoate as a solubilizer and/or stabilizer, but found
that this limitation was disclosed by Walele. Id. at 6. The Examiner also
acknowledged that Zofchak did not disclose dicaprylyl carbonate, but found
that this limitation was disclosed by Tanner. Id. at 7. Based on these
2 Zofchak et al., US Patent No. 7,135,165 B2, issued Nov. 14, 2006
(“Zofchak”).
3 Walele et al., US Patent No. 4,791,097, issued Dec. 13, 1988 (“Walele”).
4 Tanner, US Patent Publication No. 2007/0297996 Al, published Dec. 27,
2007 (“Tanner”).
5 Glogau, Aesthetic and Anatomic Analysis of the Aging Skin, 15(2)
Seminars in Cutaneous Medicine and Surgery 134—138 (1996).
6 Huner et al., US Patent No. 6,787,147 Bl, issued Sept. 7, 2004 (“Huner”).
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Application 13/491,357
disclosures, the Examiner found the claimed composition obvious,
explaining:
It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for
the same purpose, in order to form a third composition to
be used for the very same purpose.... [T]he idea of
combining them flows logically from their having been
individually taught in the prior art. [] In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
(citations omitted) (see MPEP § 2144.06). Additionally,
a person of ordinary skill in the art would have been
motivated to combine and substitute the organic
sunscreen and solubilizer/stabilizers disclosed by Walele
et al. and Tanner, because such combination and
substitution was shown to provide lack of greasiness,
pleasant skin feel in sunscreen compositions, as required
by Zofchak. The combination of these teachings would
have been no more than a combining prior art elements
according to known methods to yield predictable results,
especially absent of evidence of the contrary.
Id. at 8. With respect to the stability requirement of claim 1, and the
requirement that the composition have “a SPF of at least 35 and [a] PFA of
at least 4,” the Examiner found that these properties would be inherent in the
composition rendered obvious by Zofchak, Walele, and Tanner because it is
identical to the composition claimed by Appellant. Id. at 15.
Appellant argues, inter alia, that the Examiner has “failed to establish
any apparent reason to combine the components selected from the various
cited references,” Reply Br. 6, and that the Examiner has failed to “provide
rational[e] or evidence tending to show inherency.” Id. 10. We agree with
the Appellant that the Examiner has not provided sufficient reason to
combine the individual components disclosed in the prior art to arrive at the
claimed composition and that the Examiner has not sufficiently
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Application 13/491,357
demonstrated that the composition obtained by combining the disclosures in
the art would inherently have the properties recited in the claims.
In order to arrive at the claimed composition, the Examiner combines:
five specific UV blocking agents selected from a list of components of
sunscreens currently on the market disclosed in the “Background of the
Invention” section of Zofchak (see, Zofchak col. 2,1. 66 — col. 3,1. 21); two
particular high density esters selected from a list of high density esters useful
in Zofchak’s inventive composition (see, id. at col. 9,11. 43—48); one
particular benzoic acid ester selected from a list of particularly preferred
esters (see, Walele col. 3,11. 57—68); and one particular polar solvent
selected from a list of polar solvents (see Tanner 139). The Examiner’s
proposed reasons for combining these components are that they are “taught
by the prior art to be useful for the same purpose” and “provide lack of
greasiness, pleasant skin feel.” See, Ans. 8.
While all of the components identified by the Examiner are taught to
be components of sunscreens, the Examiner has not established that the
person of ordinary skill in the art would have understood the various
components to useful for the same purpose. Indeed, the prior art suggests
that certain of the components the Examiner proposes to combine have
different purposes and that they are used in different types of compositions.
Compare Zofchak col. 6,11. 5—8 (disclosing high-density esters that “cause a
phase separation between the otherwise miscible sunscreen and emollient
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Application 13/491,357
ingredients”) with Walele col. 4,11. 23—24 (disclosing benzoic acid esters
that are “useful as foam modifiers for aqueous surfactant compositions”).7
The Examiner has also failed to establish that “a lack of greasiness,
pleasant skin feel” would have provided reason to combine the components
recited in the claim. It appears the Examiner drew this rationale from
Walele’s teaching that “[t]he afore-described benzoic acid esters have the
following properties: 1. Lack of greasiness, pleasant skin feel. . .” See,
Walele col. 5,11. 7—9. The Examiner, however, does not explain how
Walele’s teaching regarding the properties of its benzoic acid esters provides
reason to combine Tanner’s dicaprylyl carbonate with the specific
components individually disclosed in Zofchak. Because the Examiner has
not provided sufficient reason to combine the various components identified
in the prior art, we reverse the Examiner’s rejections of claims 1 and 3—15.
In addition, we reverse the Examiner’s rejections of claims 1 and 3—15
because the Examiner has not established that the prior art meets the SPF,
PFA and stability requirements of claim 1. The Examiner contends that the
stability requirement of claim 1, and the requirement that the composition
have “a SPF of at least 35 and [a] PFA of at least 4” are met inherently
because the composition rendered obvious by the combination of Zofchak,
Walele, and Tanner has the same components as recited in the claimed
composition. Ans. 15. The Examiner, however, has not established that all
compositions including the claimed components have the claimed stability,
SPF and PFA. It seems likely that changing the amounts and ratios of the
7 Appellant contends that “surfactants are used to avoid [] phase-separation —
they are used to emulsify two phases such as oil and water phases to create
an emulsion.” App. Br. 10.
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Application 13/491,357
various components present in the claimed composition would affect the
stability, SPF and PFA of the resulting composition. Accordingly, even if
the claimed composition were suggested by the combination of Zofchak,
Walele and Tanner, these claimed properties cannot be said to be inherent in
the suggested composition. As the Examiner does not provide any reason
why it would have been obvious to formulate a composition having the
claimed properties, the Examiner has not established that the claimed SPF,
PFA and stability are present in or suggested by that art. For this additional
reason, we reverse the Examiner’s rejections of claims 1 and 3—15.
REJECTION OF CLAIM 9 OVER ZOFCHAK, WALELE, TANNER AND
HUNER AS EVIDENCED BY GLOGAU
In the Second Rejection, the Examiner applied the teachings of
Zofchak, Walele and Tanner in the same way that they were applied in
connection with the First Rejection. Ans. 11. The Examiner added Huner in
the Second Rejection to address the negative limitation of the claim 9. Id.
As the Examiner does not contend that Huner rectifies the deficiencies
discussed above, we reverse the Second Rejection for the reasons already
discussed in connection with the First Rejection.
SUMMARY
For the reasons set forth herein, the Examiner’s final decision to reject
claims 1, 3—8, and 10-15 as unpatentable over the combination of Zofchak,
Walele, and Tanner as evidenced by Glogau is reversed. For the same
reasons, the Examiner’s final decision to reject claim 9 as unpatentable over
the combination of Zofchak, Walele, Tanner, and Huner as evidenced by
Glogau is reversed.
REVERSED
7