Ex Parte Susak et al

Patent Trial and Appeal Board

Dec 4, 2018

13266598 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/266,598 02/06/2012 Milanka Susak
23487 7590 12/04/2018
THE ESTEE LAUDER COS, INC
155 PINELA WN ROAD
STE 345 S
MELVILLE, NY 11747
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.
09.16 6478
EXAMINER
DICKINSON,PAUL W
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
12/04/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MILANKA SUSAK, ISMAIL AHMED SYED,
LINDA JOSEPHINE NAJDEK, and
MIRELA CRISTINA IONITA-MANZATU
Appeal 2017-011844
Application 13/266,598
Technology Center 1600
Before RICHARD M. LEBOVITZ, MICHAEL J. FITZPATRICK, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Milanka Susak, Ismail Ahmed Syed, Linda Josephine Najdek, and
Mirela Cristina Ionita-Manzatu ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as ELC Management LLC. Appeal
Br. 1.
Appeal 2017-011844
Application 13/266,598
STATEMENT OF THE CASE
The Specification
According to Appellants, their invention is directed to topical
compositions such as sunscreens. Spec. 1: 16-24. More particularly, it is
directed to topical compositions "comprising at least one a-cyanodi-
phenylacrylate and at least one organosiloxane-based film forming
polymer." Spec. 3:1-2.
The Rejected Claims
Claims 1-20 stand rejected. Final Act. 1. Of those, claims 1 and 17
are independent. Appeal Br. 5-7. Claim 1 is representative and reproduced
below.
1. A topical composition comprising at least one a-
cyanodiphenylacrylate, at least one organosiloxane-based film
forming polymer, at least one metal oxide particle, and
dimethicone silylate, wherein said composition is in the form of
an aqueous solution, dispersion, or emulsion.
Appeal Br. 5.
The Appealed Rejections
The following rejections are before us for review:
1. claims 1-5 and 7-9 under 35 U.S.C. § 103 as unpatentable over
Bonda2 and Morrison3 (Final Act. 2; Ans. 2);
2. claims 1-5 and 7-13 under 35 U.S.C. § 103 as unpatentable
over Bonda, Morrison, Joerger, 4 and Tanzer, 5 (Final Act. 2-3; Ans. 3); and
2 US 2009/0074687 Al, published Mar. 19, 2009 ("Bonda").
3 US 6,964,773 Bl, issued Nov. 15, 2005 ("Morrison").
4 US 2007/0207113 Al, published Sept. 6, 2007 ("Joerger").
5 US 2006/0147505 Al, published July 6, 2006 ("Tanzer").
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Appeal 2017-011844
Application 13/266,598
3. claims 1-10 and 14--20 under 35 U.S.C. § 103 as unpatentable
over Bonda, Morrison, Joerger, Tanzer, and Patil6 (Final Act. 3; Ans. 4).
DISCUSSION
Appellants argue all rejections together, addressing only claim 1. See
Appeal Br. 2-3. The sole argument presented by Appellants is that the prior
art does not disclose or suggest "wherein said composition is in the form of
an aqueous solution, dispersion, or emulsion." See id. at 3. The argument is
not persuasive.
The Examiner determined that claim 1 was unpatentable because "[i]t
would have been obvious to one of ordinary skill in the art at the time the
instant invention was made to combine the alpha-cyanodiphenylacrylate of
Bonda with the composition of Morrison." Ans. 2; see also Ans. 2-3
(providing a rationale for the combination).
Appellants assert that Morrison "teaches away from ... aqueous
compositions," as both the Examiner and Appellants interpret the claims to
require. Appeal Br. 3. Appellants point out that Morrison is titled "Transfer
Resistant Anhydrous Cosmetic Composition." Id. (citing Morrison at [54]).
Appellants characterize "the entirety of its disclosure [a]s devoted to
anhydrous systems." Id. But this is not accurate.
As pointed out by the Examiner, Morrison explicitly discloses that its
"composition ... may also further comprise at least one suitable additive
commonly used in the field concerned chosen from water optionally
thickened aqueous-phase thickener, water optionally gelled with a gelling
agent, .... " Morrison 6:18-22; see also Final Act. 3 (citing Morrison 6:20-
6 US 6,342,209 Bl, issued Jan. 29, 2002 ("Patil").
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Appeal 2017-011844
Application 13/266,598
22); Ans. 5 (citing Morrison 6:18-27). Even if Morrison prefers anhydrous
compositions to aqueous compositions, it does not teach away from the
latter. See, e.g., Syntex (US.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005) ("A statement that a particular combination is not a
preferred embodiment does not teach away absent clear discouragement of
that combination.").
Appellants alternatively assert that, even if a person of ordinary skill
in the art would have added one of these aqueous additives taught in
Morrison, only that additive would be aqueous; the composition would
remain "otherwise anhydrous." Appeal Br. 3. This argument is not
persuasive. Morrison explicitly discloses that its "composition" may
"comprise[]," among other things, "water optionally thickened aqueous-
phase thickener [or] water optionally gelled with a gelling agent." Morrison
6: 18-22. We find, as the Examiner did, that this is a clear teaching of
incorporation of water into the composition. Ans. 5. We find that such a
composition meets the limitation "wherein said composition is in the form of
an aqueous solution, dispersion, or emulsion."
CONCLUSION
For the reasons discussed, we affirm the Examiner's rejections of
claims 1-2 0.
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Appeal 2017-011844
Application 13/266,598
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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