Ex Parte Suda et al

Board of Patent Appeals and Interferences

Jul 28, 2011

10540632 (B.P.A.I. Jul. 28, 2011)

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.
10/540,632 06/23/2005 Yukimitsu Suda IWI-16057 2754
7609 7590 07/28/2011
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
SULLIVAN, DANIELLE D
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
07/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YUKIMITSU SUDA, MARI YOSHIDA,
ERIKO KAWAI, and SHIGERU MUGIKURA
__________

Appeal 2011-004143
Application 10/540,632
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
complex powder, an oily external composition for skin, and methods for
treating rough skin and sensitive skin. The Patent Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appeal 2011-004143
Application 10/540,632

2
STATEMENT OF THE CASE
The invention concerns “an oily external composition for skin having
an excellent rough skin recovering/preventing effect….” (Spec. [0006].)
Claims 1 and 7-12 are on appeal. Claim 1 is representative and reads
as follows:
1. An oily external composition for skin comprising:
a complex powder including lipophilic base powder and zinc oxide,
where the surface of lipophilic base powder is covered with zinc oxide; and
an oil component;
wherein said complex powder is dispersed and swelled in said oil
component,
wherein the zeta-potential of said lipophilic base powder is a negative
value at pH 7.5, and
wherein the zinc oxide covers from 5 to 50% of the total surface area
of said lipophilic base powder dispersed in said oil component, and
wherein the lipophilic base powder is one or more selected from the
group consisting of silicone resin, silicone rubber, and silicone resin-
covered-silicone rubber.

The Examiner rejected claims 1 and 7-12 under 35 U.S.C. § 103(a) as
unpatentable over Nakane1 and Kobayashi. 2

OBVIOUSNESS
The Issue
The Examiner’s position is that Nakane taught a composition for
protecting skin from the sun comprising “30% zinc oxide covered
polymethyl methacrylate (7%)” in the form of an emulsion in an oil
component. (Ans. 5.) The Examiner found that Nakane differed from the

1 US Patent No. 5,122,418 issued to Toshihiko Nakane et al., Jun. 16, 1992.
2 US Patent No. 5,928,660 issued to Kazuo Kobayashi et al., Jul. 27, 1999.
Appeal 2011-004143
Application 10/540,632

3
claimed invention by disclosing polymethyl methacrylate as the lipophilic
base powder instead of a base powder selected from the group consisting of
silicone resin, silicone rubber, or silicone resin-covered-silicone rubber.
(Id.)
The Examiner found that Kobayashi taught a cosmetic comprising
powdered silicone rubber which has a good feeling and spreading
characteristics on the skin. (Id.) The Examiner also found that Kobayashi
taught that “[u]sing an aqueous suspension of a powdered silicon rubber
containing a non-crosslinked oil causes a softening feeling of the skin and
improves cosmetic durability wherein the oil impregnates (swells) the
powdered silicone rubber.” (Id. at 5-6.) Additionally, the Examiner found
that Kobayashi taught that a powdered silicone rubber whose surface is
covered by a fine inorganic powder shows good stability. (Id. at 6.)
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to substitute
Kobayashi’s silicone rubber base powder for Nakane’s polymethyl
methacrylate base powder. (Id.) The Examiner reasoned that a skilled
artisan would have been motivated to do so to yield a composition having an
improved feeling to the skin and cosmetic durability, as taught by
Kobayashi. (Id.)
Appellants contend that the combined prior art did not teach or
suggest a composition “wherein the zinc oxide covers from 5 to 50% of the
total surface area of said lipophilic base powder dispersed in said oil
component.” (App. Br. 12.) In particular, Appellants assert that Nakane’s
exemplary composition listing “30% zinc oxide covered polymethyl
metacrylate resin” referred to a covered powder having 30% by weight of
Appeal 2011-004143
Application 10/540,632

4
zinc oxide rather than a surface area covering rate. (Id.) According to
Appellants, this interpretation is not supported by Nakane’s Specification
which stated that “the surface of one type of core powder is substantially
completely covered with another type of coating powder….” (Id.)
Appellants assert “it is readily discernable by a skilled artisan from a study
of Figures 1-3 that ‘substantially completely’ is [a] value very near to
100%.” (Id. at 13, citing Nakane’s Figs. 1-3.)
The issue with respect to this rejection is whether the record supports
the Examiner’s conclusion that the cited references would have made
obvious the claimed invention “wherein the zinc oxide covers from 5 to 50%
of the total surface area of said lipophilic base powder dispersed in said oil
component.”

Findings of Fact
1. Nakane taught a composition for protecting skin from the sun
comprising “30% zinc oxide covered polymethyl methacrylate (7%)” in the
form of an emulsion in an oil component. (Ans. 5.)
2. Nakane stated, “The present invention relates to a composite powder
wherein the surface of one type of core powder is substantially completely
covered with another type of coating powder….” (Nakane col. 1, ll. 14-
17)(Emphasis added.)
3. Nakane disclosed a figure depicting an electron micrograph of an
exemplary composite powder of the invention wherein the spherical powder
is almost completely covered, i.e., substantially completely covered, by
another powder. (Id. at Fig. 1; see also, col. 6, ll. 17-19; col. 13, ll. 51-57.)

Appeal 2011-004143
Application 10/540,632

5
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

Analysis
We agree with Appellants that Nakane’s disclosure of an exemplary
composition comprising “30% zinc oxide covered polymethyl methacrylate”
(FF-1) did not teach a composition “wherein the zinc oxide covers from 5 to
50% of the total surface area of said lipophilic base powder dispersed in said
oil component.” At first glance, the prior art phrase “30% zinc oxide
covered polymethyl methacrylate” may appear to refer to a surface area
covering rate. However, when considered in context with Nakane’s
remaining disclosure, it is apparent that this is not the case.
Nakane disclosed that its “invention relates to a composite powder
wherein the surface of one type of core powder is substantially completely
covered with another type of coating powder.” (FF-2.) Nakane also
disclosed a figure depicting an electron micrograph of a composite powder
of the invention wherein the spherical powder is almost completely, i.e.,
substantially completely covered, by another powder. (FF-3.) From these
disclosures, it is evident that the total surface area of the lipophilic base
powder covered by zinc oxide in Nakane’s composition is significantly
greater than 30%, i.e., nearly 100%.
Appeal 2011-004143
Application 10/540,632

6
Because the Examiner only relied on Nakane for teaching a
composition “wherein the zinc oxide covers from 5 to 50% of the total
surface area of said lipophilic base powder dispersed in said oil component”
we conclude that the Examiner has not established a prima facie case of
obviousness.

CONCLUSION OF LAW
The record does not support the Examiner’s conclusion that the cited
references would have made obvious the claimed invention “wherein the
zinc oxide covers from 5 to 50% of the total surface area of said lipophilic
base powder dispersed in said oil component.”

SUMMARY
We reverse the rejection of claims 1 and 7-12 under 35 U.S.C.
§ 103(a) as unpatentable over Nakane and Kobayashi.

REVERSED

lp