Ex Parte Scherner et alDownload PDFPatent Trial and Appeal BoardSep 21, 201612515150 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/515,150 08/31/2009 13897 7590 09/23/2016 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 FIRST NAMED INVENTOR Cathrin Schemer 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. 3321-P36635 6631 EXAMINER KASSA, JESSICA M ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): mail@Abel-IP.com hmuensterer@abel-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CATHRIN SCHERNER, RAINER KROEPKE, UTE BREITENBACH, ALEXANDER FILBRY, and CORNELIA GATERMANN. 1 Appeal2013-010214 Application 12/515,150 Technology Center 1600 Before ULRIKE W. JENKS, JOHN E. SCHNEIDER and TIMOTHY G. MAJORS, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to cosmetic compositions which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Beiersdorf, AG. Appeal Br. 3. Appeal2013-010214 Application 12/515,150 STATEMENT OF THE CASE The present invention is directed to cosmetic compositions containing one or more glucosyl glycerides and urea. Spec. i-f 1. Glucosyl glycerides moisturize the skin and intensify its barrier function. Id. at i-f 4. Glucosyl glycerides, however, are not storage stable in the weakly acidic pH range used in skin care compositions. Id. Claims 8-10, 12-16, 18-21, 23-26, 28, and 30 are on appeal. Claim 8 is illustrative and reads as follows: 8. A cosmetic preparation, wherein the preparation comprises a combination of (a) urea and (b) one or more glucosyl glycerides. The claims stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thiem2 combined with Siegel3 and Riedel4 . DISCUSSION Issue In rejecting the pending claims, the Examiner finds that Thiem teaches cosmetic compositions containing glycosyl glycerides, particularly glucosyl glycerides. Final Act. 5. The Examiner also finds that Thiem teaches that the cosmetic compositions may also contain cosmetic auxiliaries including moisturizing and/or moisture-retaining agents such as urea. Id. With respect to Siegel, the Examiner finds that Siegel teaches a skin moisturizing composition comprising "polyethoxylated fatty alcohol, 2 Thiem el al, US 5,891,854, issued Apr. 6, 1999 ("Thiem"). 3 Siegel et al., US 4,146,649 issued Mar. 27, 1979 ("Siegel"). 4 Riedel et al., US 2002/0182234 Al, published Dec. 5, 2002 ("Riedel"). 2 Appeal2013-010214 Application 12/515,150 polyethoxylated glycoside, water and minor quantities of water soluble salt and amino acid or urea (abstract). The urea or amino acid may vary in quantity from about 0.01-5°/o and preferably from 0.05-5% of the composition." Id. at 6. The Examiner goes on to find that Riedel teaches self-foaming and/or foam-like cosmetic or dermatological preparation. Id. at 7. With respect to Riedel, the Examiner also finds that Riedel teaches cosmetic compositions with a pH of from 5 to 7.5. Id. The Examiner concludes that "[i]t would have been obvious to a person of ordinary skill in the art at the time the present invention was made to make a cosmetic composition comprising both glucosyl glyceride and urea and thus produce the instantly claimed invention since they are both known in the art as moisturizers." Id. at 7. Appellants contend that the combination of references is improper because Thiem teaches away from the proposed combination. Appeal Br. 10-11. Appellants point to Col. 1 of Thiem were it states A problem which remains unresolved, however, is that even the substances glucose and glycerol, which in principle are entirely unobjectionable, may give rise in particularly sensitive individuals and at very high levels to certain symptoms of irritation to the skin and mucous membranes. The aim was therefore to find moisture-providing substances (moisturizers) possessing an even better compatibility than, for example, glucose and glycerol. Appeal Br. 11. Appellants argue that this passage would lead one skilled in the art away from the combination asserted by the Examiner. Id. at 11-13. With respect to claims 28 and 30, Appellants contend that the Examiner has not shown that one skilled in the art would use urea to 3 Appeal2013-010214 Application 12/515,150 stabilize glucosyl glycerides. Id. at 13-15. Appellants also argue that the Examiner has not shown that the moisturizing compositions would have the same pH. Id. at 16 The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that claims 8-10, 12-16, 18- 21, 23-26, 28, and 30 would have been obvious over Thiem combined with Siegel and Riedel under 35 U.S.C. § 103(a). Findings of Fact We adopt as our own the Examiner's findings and analysis. The following findings are included for emphasis and reference convenience. FF 1. Thiem teaches the use of glycosyl glycerides as moisturizers in cosmetic compositions. Thiem, col. 3, 1. 63 -col. 4, 1. 3. FF2. Among the glycosyl glycerides useful in the composition of Thiem are glucosyl glycerides. Thiem, col. 3, 11. 18---60. FF3. Thiem teaches that the cosmetic compositions described therein may include cosmetic auxiliaries as are commonly used in such formulations, examples being preservatives, bactericides, perfumes, substances for preventing foaming, dyes, pigments having a colouring action, thickeners, surfactants, emulsifiers, softening, moisturizing and/or moisture-retaining substances, fats, oils, waxes or other customary constituents of a cosmetic or dermatological formulation, such as alcohols, polyols, polymers, foam stabilizers, electrolytes, organic solvents or silicone derivatives. Thiem, col. 4, 11. 32--40. FF4. Thiem teaches that urea can be used as a natural moisturizing factor. Thiem, col. 1, 11. 3 8--41. 4 Appeal2013-010214 Application 12/515,150 FF5. Siegel teaches a cosmetic composition comprising a polyethoxy fatty alcohol and a polyethoxy glycoside. Siegel, col. 1, 11. 18-3 8. FF6. The cosmetic composition of Siegel also comprises about 0.05 to about 5% by weight of urea. Siegel, col. 4, 1. 66----67 (claim 7) FF7. Siegel teaches that water soluble salts, amino acids, or urea serve to penetrate the skin and help retain moisture. Siegel, Abstract, see col. 1, 1. 46 to col. 2, 1. 4. FF 8. Riedel teaches self-foaming and/or foam like cosmetic compositions. Riedel, Abstract. FF9. The compositions of Riedel comprised moisturizers including urea and hyaluronic acid. Riedel i-f 110. FFlO. The examples of Riedel have pHs ranging from 5 to 7.5. Riedel i-fi-1189-195. Principles of Law A proper § 103 analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teaching of the prior art." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). "[T]he patentability of ... composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int 'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). "Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been 5 Appeal2013-010214 Application 12/515,150 described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). "Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Analysis Claim 8 is representative of the rejected claims and is directed to a cosmetic composition comprising urea and one or more glucosyl glycerides, We agree with the Examiner that based on the combination of references the subject matter of claim 8 would have been obvious to one skilled in the art at the time the invention was made. Thiem teaches the use of glucosyl glycerides in cosmetic compositions. FFl and 2. The compositions of Thiem may also contain auxiliary components such as moisturizers or moisture retaining substances. FF3. Thiem, Siegel, and Riedel all teach that urea is a moisture-retaining component used in cosmetics. FF4, FF6, and FF9. Appellants contend that Thiem teaches away from the claimed composition. Appeal Br. 10-12, Reply Br. 2--4. Appellants also contend that adding urea to the composition of Thiem would render it unfit for its intended purpose. Appeal Br. 13-14. We are unpersuaded. While Thiem teaches benefits of glucosyl glycerides compared to other moisturizers, the 6 Appeal2013-010214 Application 12/515,150 teaching that other moisturizers might cause irritation in some circumstances does not rise to the level of teaching away. In re Gurley, 27 F.3d at 553. At best, Thiem suggest that urea should not be used at "very high levels" or by "particularly sensitive individuals." Thiem col. 1, 11. 46-53. At most this would lead one skilled in the art to limit the use of components like urea but not eliminate them altogether from cosmetic compositions. Moreover, as the Examiner points out, Thiem expressly teaches the use of other even "less desirable" moisturizers such as glucose in the described composition therefore Thiem's teaching would not in any way lead away from the use of urea. Ans. 10, FF3. With respect to claims 28 and 30 Appellants argue that the references do not teach the use of urea to stabilize the glucosyl glycerides. Appeal Br. 14--16, Reply Br. 4--5. We are unpersuaded. As the Examiner points out, "[ t ]he stabilization of glycosyl glycerides by urea will necessarily happen when they are combined in the same composition regardless as to whether the prior art recognized that particular advantage." Ans. 11; In re Baxter Travenol Labs., 952 F.2d at 392. With respect to Appellants' argument that the Examiner has not put forth any evidence that the cosmetic compositions would have been expected to have the claimed pH, Appeal Br. 15, we are unpersuaded. As the Examiner points out, Riedel discloses cosmetic compositions having pH values which overlap with the claimed ranges. Ans. 10-11. Absent persuasive argument or evidence to the contrary, it would have been obvious to one skilled in the art to find the optimum pH range. Id. 7 Appeal2013-010214 Application 12/515,150 Conclusion of Law We conclude that the Examiner has established by a preponderance of the evidence that claims 8, 28, and 30 would have been obvious over Thiem combined with Siegel and Riedel under 35 U.S.C. § 103(a). Claims 9, 10, 12-16, 18-21, and 23-26 have not been argued separately and therefore fall with claim 8. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection of claims 8-10, 12-16, 18-21, 23-26, 28, and 30 under 35 U.S.C. § 103(a) as unpatentable over Thiem combined with Siegel and Riedel. 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