Ex Parte Scherner et al

Patent Trials and Appeals Board

Jun 10, 2019

12515150 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/515,150 08/31/2009
13897 7590 06/12/2019
Abel Schillinger, 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
06/12/2019 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):
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, ALEXANBER FILBRY, and
CORNELIA GATERMANN 1
Appeal2018-007024
Application 12/515, 150
Technology Center 1600
Before ULRIKE W. JENKS, TA WEN CHANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of 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.
2 We have considered and herein refer to the Specification of Aug. 31, 2009
("Spec."); Final Office Action of June 28, 2017 ("Final Act."); Appeal Brief
of Jan. 26, 2018 ("Br."); Examiner's Answer of May 3, 2018 ("Ans."); and
Reply Brief July 2, 2018 ("Reply Br.").
Appeal2018-007024
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. ,II. Glucosyl glycerides
moisturize the skin and intensify its barrier function. Id. ,r 4. Glucosyl
glycerides, however, are not storage stable in the weakly acidic pH range
used in skin care compositions. Id. The Specification describes storage
stable compositions which comprise urea and one or more glucosyl
glycerides. Spec. ,r,r 5 and 6.
Claims 32--49 are on appeal. Claim 32 is representative of the
rejected claims and reads as follows:
32. A cosmetic preparation, wherein the preparation
comprises, based on a total weight of the preparation, a
combination of (a) from 0.1 % to 15 % by weight of urea, (b)
0.01 % to 10 % by weight of one or more glucosyl glycerides
and ( c) glycerol.
Claims 32--49 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Thiem3 and Siegel4 in view ofRiedel. 5
DISCUSSION
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
the claims would have been obvious over Thiem combined with Siegel and
Riedel.
3 Thiem et al., US 5,891,854, issued Apr. 6, 1999 ("Thiem")
4 Siegel et al., US 4,146,649, issued Mar. 27, 1979 ("Siegel").
5 Riedel et al., US 2002/0182234 Al, published Dec. 5, 2002 ("Riedel").
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Application 12/515, 150
The Examiner finds that Thiem teaches cosmetic compositions
comprising 0.001-10% by weight glucosyl glycerides. Final Act. 3. The
Examiner finds that Thiem teaches that the cosmetic compositions may also
contain glycerol, cosmetic auxiliaries such as moisturizing and/or moisture-
retaining substances and UV absorbers. Id. at 3--4.
The Examiner finds that Siegel discloses a cosmetic composition
comprising "polyethoxylated fatty alcohol, polyethoxylated glycoside, water
and minor quantities of water soluble salt and amino acid or urea." Id. The
Examiner finds that Siegel teaches that the urea can be present in an amount
of from 0.01-5% of the composition. Id.
The Examiner finds that Riedel teaches a cosmetic composition
comprising urea as a moisturizer and that the cosmetic compositions in
Riedel have a pH pffrom 5-7.5. Id. at 5.
The Examiner concludes:
It 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. Combining two
components used for the same purpose is prima facie obvious
and reasonably expected to succeed. Moreover, Thiem et al., in
addition to glucosyl glycerides, specifically teaches the use of
other moisturizers. A person of ordinary skill in the art would
be motivated to combine glucosyl glyceride and urea in order to
make a moisturizing cosmetic preparation. Furthermore, Thiem
et al. teach the use of surfactants including specifically fatty
acid salts of sodium alkyl sulfates. Siegel et al. also specifically
teach the use of emulsifiers including ethoxylated higher fatty
alcohols. Therefore, it would be obvious to select known
surfactants and emulsifiers known in the art such as those
taught by Riedel et al. The examiner notes that sodium cetearyl
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Appeal2018-007024
Application 12/515, 150
sulfate is a sodium alkyl sulfate and cetheareth-20 is an
ethoxylated higher fatty alcohol. The examiner notes that the
amounts of glycosyl glycerides taught by Thiem et al. and the
amount of urea taught by Siegel et al. overlap with the ranges
found in the instantly claimed invention, they are expected to
constitute an amount of (b) that increases the storage stability of
the preparation and an amount of (a) that has a stabilizing effect
on (b ). Since the compositions of Thiem et al. and Siegel et al.
are, like the instantly claimed preparation, moisturizing
cosmetic preparations, they are expected to have the same pH.
Moreover, [t]he pH values of the compositions of Riedel et al.
overlap with the instantly claimed range of acidic pH. The
examiner notes that routine optimization of pH is prima facie
obvious and within the purview of one of ordinary skill in the
art in the absence of surprising and unexpected results.
Id. a 5-6.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prim a f acie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"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
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Appeal2018-007024
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).
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
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 regarding
this rejection. Final Act. 3---6. We find the Examiner has established that the
subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over Thiem combined with
Siegel and Riedel. 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 Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim
32 as representative; therefore, all claims, except claims 44 and 46 which
have been argued separately, fall with claim 32. We address Appellants'
arguments below.
Appellants contend that Thiem teaches away from the use of urea.
Appeal Br. 7. Appellants point to the passage in Thiem where it states:
The extremely complex interaction of the moisture-
binding substances and of the lipids of the upper skin layers is
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Application 12/515, 150
very important for the regulation of skin moistness. For this
reason, cosmetics generally contain not only balanced blends of
lipids, and water, but also water-binding substances. These
include polyols such as glycerol, sorbitol and xylitol,
ethoxylated polyols, and hydrolysed proteins. Use is also made
of the substances present in the natural moisturizing factor
(NMF) such as, for example, urea, carbohydrates ( e.g. glucose)
and amino acids ( e.g. serine). These substances are therefore of
particular importance for the care function of a cosmetic
product, for reasons including, in particular, their relatively
good compatibility with the skin and mucous membranes.
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.
It was surprising, and for the skilled worker
unforeseeable, that cosmetic or pharmaceutical formulations
characterized by an effective content of pharmaceutically
and/or cosmetically unobjectionable hexosyl glycerides and/or
(hexosyl)hexosyl glycerides remedy the disadvantages of the
prior art.
Appeal Br. 7 (quoting Thiem col. 1, 11. 32-59). Appellants contend that one
skilled in the art would interpret this passage as teaching against the use of
urea as a moisturizer. Appeal Br. 7-8. Appellants also contend that one
skilled in the art would interpret Thiem as teaching that if glyceryl
glucosides are present, no other moisturizers are needed. Id. at 8.
We are not persuaded by Appellants' arguments. While Thiem
teaches benefits of glucosyl glycerides compared to other moisturizers, the
teaching that other moisturizers might cause irritation in some circumstances
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Application 12/515, 150
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,
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. Thiem, col. 4, 11. 32-
40.
Appellants argue that Siegel does not remedy the teachings of Thiem
in that Siegel only mentions urea in passing. Appeal Br. 8. Appellants
contend that the passage in Siegel cited by the Examiner discusses the
amounts of amino acid that can be used and thus does not relate to the use of
urea. Id. at 7-8. Appellants also note that all of the examples of Siegel use
amino acids and not urea, further reinforcing Appellants' contention that
Siegel is not directed to the use of urea. Id. at 8. Appellants contend that
given Thiem's teaching away from the use or urea, on skilled in the art
would use the amino acids of Siegel rather than urea. Id.
Again we are not persuaded by Appellant's arguments. Siegel
specifically claims a composition comprising "a compound selected from the
group consisting of urea and an amino acid having 2 - 6 carbon atoms in a
quantity of 0.01 to 5%, the proportions being by weight." Siegel, col. 3, 11.
61-64 (emphasis added). Siegel also teaches "[a] further component of the
moistening composition hereof is urea or an amino acid having 2 to 6
carbon atoms, typically L-proline, L-histidine, glycine and the like." Siegel,
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Application 12/515, 150
col. 1, 11. 57---60. ( emphasis added). Siegel clearly teaches the use of urea.
"It is well settled that a prior art reference is relevant for all that it teaches to
those of ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed.
Cir. 1992).
Moreover, as discussed above, we do not find that Thiem teaches
away from the use of urea but merely cautions against the use of high levels
in certain moisturizers. In addition, the passage of Thiem cited by
Appellants also mentions amino acids as known moisturizers that might
cause irritation. Thiem col. 1, 11. 38--41. Thus, one skilled in the art reading
Thiem would not have had a preference for using amino acids over urea.
Appellants also argue that the Examiner used impermissible hindsight
in combining the references. Appeal Br. 9. Appellants contend that the
Examiner has not explained why one skilled in the art would have been
motivated to make the propose combination. Id.
Appellants' argument is not persuasive. Thiem teaches that the
disclosed formulations "may include cosmetic auxiliaries as are commonly
used in such formulations, examples being ... moisturizing and/or moisture
retaining substances." Thiem, col. 4, 11. 31-36. Thiem also teaches that urea
is a known moisturizing agent. Thiem, col. 1, 11. 38--40. Siegel teaches the
use of urea as a moisturizer in amounts which overlap with the present
claims. Siegel, col. 1. L. 57---col. 2, 1. 2, col. 3, 11. 61---64. Thus, the
references themselves provide the motivation to combine the teachings to
produce the claimed invention.
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Application 12/515, 150
Claims 44 and 46.
Claims 44 and 46 add the limitations that the composition has an
acidic pH and that the urea be present in an amount sufficient to stabilize the
glucosyl glycerides. Appeal Br. 10.
Appellants contend that "it is not clear that Siegel discloses a range of
concentration for urea" and that the Examiner improperly assumes that the
compositions of Thiem would have an acidic pH. Appeal Br. 11.
Appellants also contend that one cannot assume that even if Siegel disclosed
amounts of urea, that those amounts would be sufficient to stabilize the
glucosyl glycerides. Id. Appellants also contend that the Examiner has not
demonstrated why one skilled in the art would expect the compositions of
the references to have the required pH. Id. at 13. Lastly, Appellants argue
that Thiem and Siegel relate to very different compositions and that there
would be no reason to combine the references. Id. at 13
We have considered Appellants' arguments and are unpersuaded.
While the claims recited the limitation that the urea be present in an
amount sufficient to stabilize the glucosyl glycerides, we find nothing in the
Specification that teaches what amount of urea effectively stabilizes glucosyl
glycerides. The Specification teaches the following:
It is advantageous for the purposes of the present
invention if the preparation according to the invention contains
urea in a concentration of from 0.001 to 10% by weight,
preferably in a concentration of from 0.1 to 6% by weight, and
particularly preferably in a concentration of from 1 to 4% by
weight, in each case based on the total weight of the
preparation.
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Application 12/515, 150
Spec. ,r 8. In the examples reported in the Specification, the amounts of urea
used range from 1.5 to 10% with no mention as to which amounts are
effective in stabilizing the glucosyl glycerides.
As discussed above, Siegel teaches the use of urea in amount ranging
from 0.01 % to 5% with 5% preferred. This range overlaps with the range
recited in the present claims and the ranges taught in the Specification. We
agree with the Examiner that, absent evidence to the contrary, one skilled in
the art would expect urea in the same concentrations as taught by the
Specification to exhibit the same properties. See In re Best, 562 F.2d 1252,
1254--55 (CCPA 1977). Here, Appellants have offered no evidence to
support their contention that urea used in the same concentration as taught
both by Siegel and the instant Specification would not have the same
stabilizing effect.
With respect to the pH of the composition, the Examiner does not rely
solely on the teachings of Thiem and Siegel for this point, but also cites to
Riedel. Final Act. 5. Riedel teaches foam like cosmetic compositions where
the pH is adjusted to a range of from 5 to 7 .5 which overlaps with the range
in the claims. Riedel ,r,r 189-195, Examples 1-7. We agree with the
Examiner that since all three references relate to cosmetics to be applied to
the skin it would have been obvious to adjust the pH to a range suitable to
application to the skin as taught by Riedel. Ans. 5.
With respect to Appellants' argument that Thiem and Siegel are
directed to different compositions, both Thiem and Siegel are directed to
cosmetic compositions which comprise moisturizers. Thiem, col. 1, 11. 5-12;
Siegel, Abstract.
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Appeal2018-007024
Application 12/515, 150
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claims 32, 44, and 46
would have been obvious over Thiem combined with Siegel and Riedel.
Claims 33--43, 45, and 47--49 have not been argued separately and
therefore fall with claim 32. 37 C.F.R. § 4I.37(c)(l)(iv).
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
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