Ex Parte SenGupta et al

Patent Trial and Appeal Board

Jan 4, 2013

11345064 (P.T.A.B. Jan. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ASHOKE K. SENGUPTA, KEVIN CURETON,
ILONA LIN, and THOMAS W. BEIHOFFER
__________

Appeal 2011-003395
Application 11/345,064
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a sunscreen composition, a sunscreen wipe, and a method
of protecting human skin from UV radiation. The Patent Examiner rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2011-003395
Application 11/345,064

2
STATEMENT OF THE CASE
Claims 14-38 and 57 are on appeal. Claim 14 is representative and
reads as follows:
14. A sunscreen composition, either impregnating a wipe substrate or
comprising a sunscreen spray, wherein the composition comprises an oil
phase dispersed stably as emulsion droplets in a water phase that contains
i) a booster for the sun protection factor (SPF), comprising a combination of
water-dispersible particulate materials, and a water-soluble or water-
dispersible phenolic polymer; and ii) a water-soluble shear-thinning polymer
having a weak acid group, a weight average molecular weight of 1,000 -
100,000 Dalton, and an anionic charge density of no less than 1.5
milliequivalents per gram of the polymer; the said sunscreen composition
meeting the following specifications:
(a) the in-vivo sun protection factor (SPF) is ≥ 1.8 times the weight
percent of the sunscreen active(s) contained therein, based on the weight of
the sunscreen composition;
and
(b) wherein the viscosity is at least 50,000 cps at 0.5 rpm and 35,000
cps at 1 rpm, as measured on a Brookfield RVT viscometer, at 25 °C , using
spindle # 7, after cooling the composition to room temperature and storing it
at that temperature for about 24 hours and the shear thinning index of the
composition is greater by a factor of at least 1.05 with the weak acid
polymer contained therein than without the polymer, the shear thinning
index being defined as the ratio of viscosities of the sunscreen composition
at 0.5 rpm and 20 rpm, measured on a Brookfield RVT viscometer at 25 °C,
using spindle 7, after cooling the composition to room temperature and
storing it at that temperature for about 24 hours.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
claims 14-29, 31-38, and 57 over SenGupta ‗4111 and Kamrin-
Balfour;
2

1
Ashoke K. SenGupta et al., US 6,500,411 B2, issued Dec. 31, 2002.
Appeal 2011-003395
Application 11/345,064

3
claim 30 over SenGupta ‗411, Kamrin-Balfour, and El-Nokaly;3
claims 14-29, 31-38, and 57 over SenGupta ‗418 and Kamrin-Balfour;
claim 30 over SenGupta ‗418, Kamrin-Balfour, and el-Nokaly.
Appellants do not request review of the rejections over the SenGupta
‗418 patent. (See Final Rej. 8-15; App. Br. 3.) We therefore summarily
affirm them. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02
(―If a ground of rejection stated by the examiner is not addressed in the
appellant‘s brief, that ground of rejection will be summarily sustained by the
Board.‖). The failure to appeal is a waiver under Ex parte Frye, 2010 WL
889747 *4 (BPAI 2010) (precedential) (―If an appellant fails to present
arguments on a particular issue—or, more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection‖).

OBVIOUSNESS
Appellants state: ―For purposes of this appeal, claims 14-38 and 57
are grouped and argued together.‖ (App. Br. 3; Reply Br. 7.) We select
claim 14 as representative. Claims 15-38 and 57 will stand or fall with claim
14. 37 C.F.R. § 41.37(c)(1)(vii).
The Issues
Appellants contend that:
a) contrary to the rejection‘s findings, SenGupta ‗411 does not describe
an oil-in-water (O/W) emulsion comprising a particulate material, a

2
Lori Kamrin-Balfour, US 2006/0078515 A1, filed Oct. 13, 2004, published
April 13, 2006.
3
Magda El-Nokaly et al., US 2003/0228339 A1, published Dec. 11, 2003.
Appeal 2011-003395
Application 11/345,064

4
phenolic polymer, and a water soluble polymer; and the SenGupta
patent fails to teach a combination of a phenolic polymer and a shear-
thinning polymer (App. Br. 7);
b) the rejection could not meet the charge density limitation of no less
than 1.5 milliequivalent per gram with a material with an inherently
variable charge density (id.);
c) SPF and shear-thinning index values are not inherent in different,
discrete compositions (id.);
d) SenGupta taught away from Appellants‘ claims (id. at 8-9);
e) the Examiner failed to read the SenGupta patent as a whole (id. at 9-
10).

Findings of Fact
1. SenGupta described an additive composition for a sunscreen in the
form of an oil-in-water emulsion. (SenGupta, col. 2, ll. 14-25.)
2. SenGupta stated that smectite clays ―are popular particulate gellants
or thickeners for aqueous compositions, particularly oil-in-water
(O/W) emulsions‖ (id. at col. 2, ll. 35-37). It was an object of
SenGupta‘s invention ―to modify the surface of a particulate
thickener/gellant, preferably a smectite clay, in a manner that provides
for achieving the thickener-performance of the particulate material in
water and/or in one or more hydrophillic solvents, particularly the
solvents used in personal care and cosmetic product manufacturing‖
(id. at col. 3, ll. 38-45).
3. SenGupta described metal oxides as particulate sunscreens, and stated
that ―a highly deflocculated state is required for the suspended metal
Appeal 2011-003395
Application 11/345,064

5
oxide particles to perform most effectively as particulate UVR-
filters.‖ (Id. at col. 3, ll. 57-59.)
4. SenGupta explained that the highly deflocculated state of dispersion
of the particulate UVR-filter particles is attained and preserved by
using dispersants (surface-modifiers). (Id. at col. 4, ll. 2-4.)
5. SenGupta explained that ―a strong dispersing effect of a dispersant on
clay platelets may tend to oppose thickening or gelation in smectite
clay dispersions,‖ and:
Therefore, a critical object of the present invention is to identify
and use those natural polymers as dispersants or surface-
modifiers that can deflocculate particles of UVR-filters
effectively, while facilitating exfoliation of clay platelets and
stabilizing the same against face-to-face coagulation, without
strongly impeding thickening or gelation by the clay platelets.

(Id. at col. 4, ll. 13-21.)
6. SenGupta identified polyphenols as natural polymers to use as
dispersants:
In order to ensure that the particulate-based additive disclosed
herein provides for antioxidant functionality, an essential object
of the present invention is to use those natural polymers as
dispersants for the particulate components of the additive,
which are polyphenols.

(Id. at col. 4, ll. 25-29.)
7. SenGupta stated:
Polymers and surfactants are often used in modifying
particle surfaces to achieve various properties, including
properties that provide for interparticle repulsion.
. . .
When using either a non-ionic polymer (e.g, polyvinyl
alcohol) or a polyelectrolyte (ionic polymer) for modifying the
Appeal 2011-003395
Application 11/345,064

6
surface of clay to be used as a thickener, the molecular weight,
the molecular structure or shape, and the charge density of the
polymer are important considerations. . . . Additionally, a
polyelectrolyte (e.g., polyacrylate) with a high charge density
when adsorbed on the surface of dispersed particles may
produce a strong electrostatic repulsion between the particles,
which again may not be favorable for thickening.

(Id. at col. 5, l. 51 – col. 6, l. 16.)
8. SenGupta‘s additive
preferably contains one or more particulate-based thickeners,
such as a smectite clay . . . , and most preferably one or more
smectite clays. According to one important embodiment of the
present invention, the thickener particles are co-dispersed with
particles of one or more particulate UVR-filters such as
titanium dioxide, zinc oxide . . . . Another important
component of the multifunctional-additive compositions is a
dispersant or surface-modifier for the foregoing particulate
materials, selected from the family of polyphenolic, natural
polymers such as lignosulfonates, lignins, humates, tannates,
and derivatives thereof.

(Id. at col. 8, ll. 43-57.)
9. SenGupta taught that ―[p]referably, at least 90% of the particles of the
particulate adsorbent/absorbent material are colloidal in size (< 1
micron).‖ (Id. at col. 10, ll. 49-51.)
10. SenGupta taught:
Although the natural polymer-based dispersants or
surface-modifiers contained in the aqueous mastergel are non-
gum and non-cellulosic natural polymers, the mastergel may
contain one or more additional thickening agents besides
swellable layered silicates, including gums and cellulosics, as
well as proteins and polyacrylates.

(Id. at col. 10, ll. 52-57.)
Appeal 2011-003395
Application 11/345,064

7
11. SenGupta stated: ―The ranges of proportions of the various key
ingredients included in mastergel (or additive-concentrate)
compositions are given in Table I, based on the total weight of the
mastergel.‖ (Id. at col. 11, ll. 50-53.)
12. SenGupta‘s Table I designates polyacrylates as a preferred key
ingredient with ―thickener supplement‖ functionality:

(Id. at col. 12, ll. 3-19.)
13. SenGupta identified Sokalan® PA 30CL from BASF, molecular
weight 8,000, as a dispersant, and disclosed that ―polyacrylate fell
short of Vanisperse A in dispersing TiO2, although it was found (see
Example 1) to be a good dispersant for a smectite clay.‖ (Id. at col.
14, ll. 5-28.)

Appeal 2011-003395
Application 11/345,064

8
Principles of Law
A prior art reference is said to teach away from an Applicant‘s
invention ―when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.‖ In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,] 1349
n. 8 [(Fed.Cir.2000)] (―The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.‖).
Where the prior art contains ―apparently conflicting‖ teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered ―for its
power to suggest solutions to an artisan of ordinary skill....
consider[ing] the degree to which one reference might
accurately discredit another.‖ In re Young, 927 F.2d 588, 591
(Fed.Cir.1991).

Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

Analysis
a) Appellants argue that SenGupta never taught a composition
comprising particulate clay, particulate sun blocker, a phenolic polymer, and
the water soluble polymer polyacrylate. The Examiner found this argument
unpersuasive and rebutted it by directing attention to SenGupta at col. 12,
Table I. (Ans. 18.) We agree with the Examiner. SenGupta stated: ―The
Appeal 2011-003395
Application 11/345,064

9
ranges of proportions of the various key ingredients included in mastergel
(or additive-concentrate) compositions are given in Table I, based on the
total weight of the mastergel.‖ (FF 11.) Table I discloses ―Preferred Key
Ingredient,‖ it lists gelatin, gums, and polyacrylates as ―Thickener
Supplement,‖ and it assigns thickener supplement by weight in the whole.
(FF 12.) The mastergel‘s other key ingredients include: Thickener (smectite
clays), Particulate UVR-Filter (TiO2 and ZnO), and Natural Polymer
Dispersant (lignosulfate, lignin, humate, i.e., phenolic polymer). Given the
short list in each category, and the assignment of weight for each category,
we agree with the Examiner that SunGupta disclosed a mastergel
composition comprising clay, particulate UV filter, phenolic polymer and
polyacrylate. See In re Schaumann, 572 F.2d 312, 316-17 (CCPA 1978).
Although the Examiner did not point to them, SenGupta‘s claims 25 and 79
include polyacrylate and are more evidence that Appellants are mistaken.
Appellants contend that the SenGupta patent failed to teach a
combination of a phenolic polymer and a shear-thinning polymer. (App. Br.
7.) The Examiner found that SenGupta did disclose the combination of
lignosulfate and polyacrylate in a composition, and the evidence supports
that finding. See the discussion above. The Examiner found that SenGupta
described a polyacrylate with molecular weight 8,000 listed in Table III at
column 13 (Ans. 4), designated Sokalan® PA 30 CL (FF 13). The
Examiner‘s theory is that it would have been obvious to use Sokalan® PA
30 CL for the polyacrylate SenGupta called for.
Appellants agree that SenGupta‘s Sokalan® PA 30 CL is a shear-
thinning polymer, as required by claim 14. (App. Br. 7.) However,
Appellants contend that when SenGupta tested Sokalan® PA 30 CL for its
Appeal 2011-003395
Application 11/345,064

10
ability to disperse TiO2, it failed. (Id.) In fact, SenGupta did not report that
Sokalan® PA 30 CL failed. What SenGupta reported was that Sokalan® PA
30 CL ―fell short of Vanisperse A in dispersing TiO2, although it was a good
dispersant for a smectite clay.‖ (FF 13.) We agree with Appellants that
SenGupta‘s Examples 1 and 2 reported testing lignosulfonates and Sokalan®
PA 30 CL separately, not in combination. The explicitly reported result was
that Sokalan® PA 30 CL was a good dispersant for a smectite clay. That
result is entirely consistent with SenGupta‘s calling for polyacrylate as a key
ingredient in its composition. (FF 12.) The fact that lignosulfonate was a
better dispersant for the TiO2 component doesn‘t cancel SenGupta‘s Table I
teaching of a composition comprising both lignosulfonate and polyacrylate.

b) Appellants contend that the rejection could not meet the charge
density limitation of no less than 1.5 milliequivalent per gram with a
material with an inherently variable charge density. (App. Br. 7.)
Appellants have agreed that SenGupta‘s Sokalan® PA 30 CL is an example
of ―Appellants‘ claimed shear-thinning polymer.‖ (Id.) Sokalan® PA 30
CL accordingly must have the requisite charge density. The fact that
SenGupta did not mention the charge density does not change the nature of
the compound. Because SenGupta rendered obvious the composition
comprising Sokalan® PA 30 CL, a species of shear-thinning polymer, it
rendered obvious the claim using a broader category of shear-thinning
polymer. See Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d
1293, 1300 (Fed. Cir. 2007) (disclosure of an obvious species in the prior art
renders a later claim to a genus unpatentable as obvious).

Appeal 2011-003395
Application 11/345,064

11
c) Appellants contend that the claimed limitations on values of the SPF
and shear-thinning index values are not inherent in SenGupta‘s different,
discrete compositions. (App. Br. 7-8.) The Examiner found however that
SenGupta taught or suggested the same percentages, or overlapping
percentages, of key ingredients that Appellants‘ composition comprises as
specified in various dependent claims. (Ans. 4-5.) Those findings are
undisputed. Based on those findings, the Examiner reasoned that the
composition suggested by SenGupta would have the same properties. (Id. at
6-7.) We agree. The weight of the evidence is sufficient to shift the burden
to Appellants to demonstrate error. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977).

d) Appellants argue ―[t]here was no reason to combine the disparate
teachings in the SunGupta patent wherein phenolic polymers yielded
successful compositions and shear-thinning polymers continuously failed to
yield successful compositions.‖ (App. Br. 8-9.) According to Appellants,
―the SenGupta patent teaches away from the combination of the phenolic
polymer with a shear-thinning polymer and clearly illustrates that the
inclusion of the shear-thinning polymer would be unsatisfactory for
providing a high level of thickening and preventing coagulation.‖ (Id. at 8,
emphasis omitted.) These arguments are unpersuasive because the evidence
contradicts them. First, SenGupta described phenolic polymers and
polyacrylates as key ingredients in the same composition. (FF 12.) That is
the opposite of teaching away. SenGupta did teach that the two kinds of
polymer had different dispersion properties, e.g., that phenolic polymers
were better at dispersing TiO2 than polyacrylatyes. (FF 13.) However,
Appeal 2011-003395
Application 11/345,064

12
SenGupta taught that polyacrylates should be included to disperse clay. (FF
13.) Second, Appellants cite no evidence that SenGupta considered its
compositions as unsuccessful or failures. The arguments about unsuccessful
compositions appear to be only attorney arguments, unsupported by
evidence. Even if a person of ordinary skill in the art would have read
polyacrylate shear-thinning ―failure‖ into SenGupta‘s polyacrylate test
results, SenGupta expressly taught that polyacrylate should be included for
its clay dispersing properties.

e) Appellants contend that the rejection ―failed to read the SenGupta
patent as a whole and mistakenly asserted that the SenGupta patent teaches
the application of any polymer and combination thereof.‖ (App. Br. 9.) On
the contrary, rather than making assertions about ―any‖ polymer or
combination, the rejection identified specific evidence that SenGupta taught
certain polymers as key ingredients to be combined in its sunscreen
preparation. The Examiner‘s position is based on evidence sufficient to
support the Examiner‘s findings and conclusions. Following Appellants‘
encouragement to read the whole of the SenGupta patent, we find no
evidence that the Examiner erred in reading SenGupta to include both
phenolic and polyacrylate polymers in one composition. (Compare, e.g.,
SenGupta‘s claims 14 and 27.)

SUMMARY
We affirm the rejection of claims 14-29, 31-38, and 57 under
35 U.S.C. § 103(a) as unpatentable over SenGupta ‗411 and Kamrin-
Balfour.
Appeal 2011-003395
Application 11/345,064

13
We affirm the rejection of claim 30 under 35 U.S.C. § 103(a) as
unpatentable over SenGupta ‗411, Kamrin-Balfour, and El-Nokaly.
We affirm the rejection of claims 14-29, 31-38, and 57 under
35 U.S.C. § 103(a) as unpatentable over SenGupta ‗418 and Kamrin-
Balfour.
We affirm the rejection of claim 30 under 35 U.S.C. § 103(a) as
unpatentable over SenGupta ‗418, Kamrin-Balfour, and El-Nokaly.
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

kmm