Ex Parte Roudot et al

Patent Trials and Appeals Board

Feb 6, 2019

14376687 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/376,687 08/05/2014
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
02/08/2019
FIRST NAMED INVENTOR
Angelina Roudot
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.
085507-536429 1047
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGELINA ROUDOT, ANNE F ALIP, and
FLORENCE L'ALLORET 1
Appeal2018-000826
Application 14/376,687
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify L'OREAL as the real party-in-interest. App. Br. 2.
Appeal 2018-000826
Application 14/376,687
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-20. Specifically, claims 1-20 stand
rejected as unpatentable under 35 U.S.C. § I03(a) as obvious over Ehlis et
al. (US 2009/0196894 Al, Aug. 6, 2009) ("Ehlis"). 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to an anti-sun composition
comprising hydrophobic silica aerogel particles and an oil phase containing
at least one polar oil and at least one lipophilic organic UV-screening agent.
See Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A non-pulverulent antisun composition consisting
essentially of, in a cosmetically acceptable
medium:
c) at least one oil phase containing:
(iii) at least one non-volatile polar hydrocarbon-based oil
(iv) at least one lipophilic organic UV-screening agent
2 The Examiner also rejected claims 1-12 and 15-20 under the nonstatutory
doctrine of obviousness-type double patenting over claims 1-10 of co-
pending application 14/355,446. Final Act. 3. The Examiner withdrew this
rejection. Ans. 5.
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Application 14/376,687
d) at least hydrophobic silica aerogel particles
the said [sic] composition comprising less than 5% by weight of
non-volatile non-cyclic silicone oil relative to the total weight
of the composition.
App. Br. 13.
ISSUES AND ANALYSIS
We decline to adopt the Examiner's findings of fact, reasoning, and
conclusion that the appealed claims are prima facie obvious over the cited
prior art, and we enter a new ground of rejection. We address the arguments
raised by Appellants below.
Issue 1
Appellants argue that the Examiner erred by finding that Ehlis teaches
antisun oil compositions including hydrophobic silica aerogels. App. Br. 8.
Analysis
The Examiner finds that Ehlis teaches "sunscreen oil compositions
comprising 10-15% octyldodecyl neopentanoate ( component a), 1-10%
sunscreens selected from bisethylhexyoxyphenol methoxyphenyl triazine
and ethylhexyl methoxycinnamate (component b), [and] 1-3% silica silylate
(component c)." Final Act. 5 (citing Ehlis ,r 128, Example 4). The
Examiner finds that "[ t ]he hydrophobic silica compounds include Aerosil
and Cab-0-Sil products obtained by surface modification with trimethylsilyl
groups." Id. (citing Ehlis ,r,r 42, 43). Ehlis teaches specific silica silylate
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materials including "Aerosil R812® by the company Degussa and Cab-0-Sil
TS-530® by the company Cabot." (Ehlis ,r 43).
The Examiner finds that, although the Ehlis' s examples contain more
than 5% non-volatile non-cyclic silicon oil, e.g., phenyl trimethicone, "Ehlis
teaches that at least one non-volatile oil is present in the formulation in
amounts of 1---60% of the composition." Final Act. 5-6 (citing Ehlis ,r 24).
Therefore, the Examiner determines "[ o ]ne would have been motivated at
the time of the invention to adjust the amount of the non-volatile oils to
include less than 5% phenyl trimethicone and 1---60% non-volatile
hydrocarbon oil because only one non-volatile oil is necessary in the
formulation." Final Act. 6.
We agree with the Examiner that Ehlis teaches a sunscreen oil
composition with at least one oil phase containing at least one non-volatile
polar hydrocarbon-based oil, e.g., octyldodecyl neopentanoate, and at least
one lipophilic organic UV-screen agent, e.g., ethylhexyl cinnamate. We
further agree with the Examiner's determination that it would have been
prima facie obvious to adjust the amount of non-volatile non-cyclic silicone
oil to less than 5% relative to the total weight of the composition.
Appellants argue that: "Ehlis suggests silica aerosils, but not silica
aerogels." App. Br. 8 (citing Ehlis ,r,r 42, 43). Appellants distinguish
between compositions containing hydrophobic silica dimethyl silylate, e.g.,
Aerosil® R 972, and hydrophobic silica silylate aerogel, e.g., Dow Coming
VM-2270. See Reply Br. 2-3 (citing Spec. 49-50).
We agree with Appellants that Ehlis does not teach the use of
hydrophobic silica aerogels. Although the Examiner correctly identifies that
both the hydrophobic silicas taught by Ehlis and the claimed hydrophobic
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silica aerogel are silica silylate compounds, the two materials are
characterized by different physical properties and manufacturing methods.
See Spec. 5-9. For example, silica aerogels may be manufactured by a sol-
gel process and later treated with silylating agents to form a hydrophobic
silica aerogel. See Spec. 5---6.
Because we find that Ehlis does not disclose the claimed elements, the
prior art rejections of the remaining dependent claims on appeal that
incorporate Ehlis fall with the rejection of the independent claim.
NEW GROUND OF REJECTION
We here enter a new ground of rejection. Independent claim 1 is
rejected as unpatentable under 35 U.S.C. § I03(a) as being obvious over
Ehlis and Zhao (WO 2009/120602 Al, Oct. 1, 2009) ("Zhao").
As we have explained supra, we agree with the Examiner that Ehlis
teaches or suggests the limitations of claim 1 except for "hydrophobic silica
aero gel particles."
Zhao teaches topical skin compositions including sebum absorption
ingredients, particularly silica silylate. See Zhao ,r,r 5, 6. Zhao teaches
[ s ]ilica silylate is a hydrophobic silica derivative where some of
the hydroxyl groups on the surface of the fumed silica have
been replaced by trimethylsiloxyl groups. This ingredient can
be purchased under the Tradenames VM-2270 (Dow Coming,
United States), Aerosil R 812 (Degussa AG, Germany), Aerosil
RX 300 (Degussa AG, Germany), Sipemat D 17 (Degussa AG,
Germany), CAB-0-SIL TS-530 (Cabot, United States), Wacker
HDK H2000 (Wacker-Chemie AG, Germany).
Zhao ,r 29. Zhao further teaches that compositions containing a silica
silylate "can be sunscreens having a sun protection factor (SPF) of 1, 5, 10,
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15, 20, 25, 30 ... or more." Zhao ,r 7. Therefore, we find Zhao teaches
combining silica silylate with a sunscreen compound, wherein the silica
silylate may include hydrophobic fumed silica, e.g., Aerosil R812 and Cab-
0-Sil TS-530, or interchangeably, hydrophobic silica aerogel, e.g., VM-
2270.
We conclude that it would have been obvious for a person of ordinary
skill in the art to modify the formulations of Ehlis with the hydrophobic
silica aerogel particles of Zhao. In particular, Zhao teaches hydrophobic
silica aerogels as known alternatives to hydrophobic silica silylate, both
combinable with sunscreens. "[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
The person of ordinary skill in the art would have had a reasonable
expectation of success given Zhao's teaching that the compounds are
interchangeable.
Therefore, we find that the combination of Ehlis and Zhao teaches a
non-pulverulent anti-sun composition including at least one oil phase
containing at least one non-volatile polar hydrocarbon-based oil and at least
one lipophilic organic UV-screening agent, at least hydrophobic silica
aerogel particles, and less than 5% of a non-volatile non-cyclic silicone oil.
Having established that the prior art combination teaches the claimed
elements and limitations, we address Appellants' remaining arguments
against the Examiner's rejection.
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Issue 2
Appellants argue that the Examiner erred for failing to consider
evidence of nonobviousness presented in the Specification. App. Br. 8.
Analysis
Appellants argue "[a] comparison of compositions 1 and 4 according
to the present invention that contain the silica aerogel exhibits a higher level
of screening efficiency as compared to compositions 2 and 6 which contain
Aerosil particles (e.g. Aerosil R 972)." App. Br. 8. (citing Spec. 49--50).
Appellants further argue that "the prior art fails to teach or suggest the
improved stabilizing effect achieved by the present invention." App. Br. 10.
We agree with the Examiner's finding that the comparative test results
are not persuasive evidence of nonobviousness where the test compares
formulations containing a silica (trimethyl) silylate aerogel against a
formulation containing a silica dimethyl silylate. Ans. 5. We find
formulations containing silica dimethyl silylate are not the closest prior art
as compared to formulations containing silica silylate. "[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388,392 (Fed. Cir. 1991). Therefore, we are not persuaded
that the Examiner erred in considering Appellants' comparative testing.
As to the "improved stabilizing effect," Appellants do not present any
evidence in their Brief or the Specification. "[I]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice." In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In the absence of any
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evidence, we are not persuaded that the Examiner erred with respect to this
lSSUe.
Issue 3
Appellants argue that the Examiner erred for failing to consider the
transitional phrase "consisting essentially of' excludes solid tanning
particles from the formulation. App. Br. 8.
Analysis
Appellants argue that the claimed transition "consisting essentially of
... excludes components that would defeat the purposes of the claimed
antisun compositions." App. Br. 8. In particular, Appellants seek to exclude
Ehlis' solid tanning particles, where "including the solid tanning particles in
the compositions of the invention would be contrary to and counterintuitive
to the desired effects according to the present invention and are excluded in
the use of the term 'consisting essentially of."' App. Br. 8-9.
We do not find this argument persuasive because Appellants have not
provided any evidence that the addition of tanning particles would materially
affect the basic and novel characteristics of the claimed antisun composition.
See In re Herz, 537 F.2d 549, 551-52 (CCPA 1976). Contrary to Appellants
argument, Ehlis teaches compositions "for enhancing the natural sun
protection factor of the skin, for the protection of the skin against
electromagnetic radiation in the range of visible light (wavelength>400 nm)
or near UV light (UV-Al, especially wavelengths>360 nm)." Ehlis ,r 7.
Moreover, Ehlis teaches "substances which produce brown dyes upon
contact with the skin as a result of a chemical reaction with the keratin
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without the action of natural or artificial light." Ehlis ,r 2 ( emphasis added).
As noted by the Examiner, Ehlis teaches the composition preferably
comprises further components including UV absorbers. Ans. 6. ( citing Ehlis
,r 94). Moreover, Ehlis' Example 4, cited by the Examiner, includes UV
absorbing agents in addition to tanning particles. See Ehlis ,r 128, Example
4.
Therefore, we are not persuaded that the Examiner erred in
considering the transitional phrase.
Issue 4
Appellants argue that the Examiner erred for failing to consider "non-
pulverulent antisun composition" limiting on the scope of the claims. App.
Br. 9.
Analysis
Appellants argue that the recited preamble "a non-pulverulent antisun
composition" gives life and meaning the claims and thus limits the scope of
the claims. App. Br. 9. Appellants also argue, "it would have not been
obvious to exclude the solid tanning particles from the compositions of
Ehlis. To do so would render Ehlis unsatisfactory or inoperative for its
intended purposes and therefore is non-obvious." Id.
We examine the preamble to determine if either limitation
distinguishes the prior art. The Specification states, "the term 'non-
pulverulent composition' means any composition that is not in the form of a
loose or compact powder." Spec. 5. The claimed composition itself
contains "aerogel particles." Therefore, broadest reasonable interpretation
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of "non-pulverulent composition" means a non-powder composition that
may include particles. Like the claimed non-pulverulent composition, Ehlis
teaches an oil composition containing particles. Therefore, the term "non-
pulverulent" does not distinguish from the prior art.
The other term claimed in the preamble is "antisun." Incorporating
"antisun" as a limitation repeats the previous argument that tanning particles
are incompatible with an antisun composition. As discussed above, we find
Ehlis teaches tanning particles are compatible with antisun compositions,
particularly tanning agents that color the skin without exposure to light. See
Ehlis if 2, 7.
Consequently, we are not persuaded by Appellants' arguments with
respect to this issue.
Issue 5
Appellants argue that it would not have been obvious to modify Ehlis
to decrease the amount of non-volatile non-cyclic silicone oil to less than 5%
by weight. App. Br. 10.
Analysis
Appellants argue "Ehlis does not suggest that the amount of non-
volatile non-cyclic silicone is a result-effective parameter." App. Br. 10.
The Examiner finds that Ehlis teaches a range of 1---60% non-volatile oil,
including non-volatile silicone oils, which overlaps the claimed range of less
than 5% by weight. Ans. 6 (citing Ehlis ,r 24). "Aprimafacie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325,
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1329 (Fed. Cir. 2003). Because Appellants have not provided any evidence
that the range of less than 5% by weight non-volatile non-cyclic silicon oil is
critical, Appellants have not overcome the Examiner's showing of prima
facie obviousness as to the claimed range. See In re Woodruff, 919 F. 2d
1575, 1578 (Fed. Cir. 1990).
We consequently conclude that the combination of Ehlis and Zhao
teaches all of the elements and limitations of independent claim 1.
Therefore, we reject independent claim 1 under 35 U.S.C. § 103(a) as being
obvious over Ehlis and Zhao.
We have entered a new ground for only the independent claim and
leave it to the Examiner to evaluate the patentability of the other claims in
view this combination with other newly found or previously cited references.
DECISION
The Examiner's rejection of claims 1-20 as obvious under 35 U.S.C.
§ 103(a) is reversed.
We have also entered a new ground of rejection for independent claim
1 pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides that "[a]
new ground of rejection ... shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
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rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
REVERSED
37 C.F.R. § 4I.50(b)
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