Ex Parte Tanaka et alDownload PDFPatent Trial and Appeal BoardDec 28, 201612701084 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 12/701,084 02/05/2010 Kojo Tanaka AA771 9276 27752 7590 12/30/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER ROSENTHAL, ANDREW S ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): centraldocket. im @ pg. com pair_pg @ firsttofile. com mayer.jk @ pg. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KOJO TANAKA and TAKASHI SAKO1 Appeal 2015-006401 Application 12/701,084 Technology Center 1600 Before DONALD E. ADAMS, TIMOTHY G. MAJORS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to collapsible water-containing capsules that have been rejected as obvious and for provisional obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ “invention relates to a collapsible water-containing capsule which is stable under normal storage conditions as well as normal 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company. (App. Br. 2.) Appeal 2015-006401 Application 12/701,084 mixing processes, however, collapses upon application on the personal surface.” (Spec. 1:8—10.) According to the Specification, “[t]he present capsule is particularly useful as personal care compositions [e.g., make-up, hair treatment] for delivering water, the powders, and other components to personal surface [e.g., skin, hair].” (Id. at 5:19-25.) Claims 1—14 and 21 are on appeal. Claims 1 and 21 are illustrative: 1. A collapsible water-containing capsule comprising by weight: (a) from about 40% to about 95 % of a water phase comprising at least 50% water by weight of the water phase; and (b) from about 5% to about 20% of a spindle-shaped metal oxide powder which is hydrophobically surface-treated and has an average long axis particle size of from about 25nm to about 150nm, an average short axis particle size of from about 4 nm to about 50nm, and an aspect ratio of greater than about 3. (App. Br. 10 (Claims App’x).) Claim 21 mirrors claim 1, and adds the limitation “wherein said spindle-shaped metal oxide is hydrophobically surface-treated with triethoxycaprylylsilane.” (Id. at 12.) The claims stand rejected as follows: Claims 1—14 and 21 under 35 U.S.C. § 103(a) over Hamer,2 Ogawa,3 Kashihara,4 and Kobo.5 2 Hamer et al., US 6,413,548 Bl, issued July 2, 2002. 3 Ogawa et al., EP 0 801 941 Al, published Oct. 22, 1997. 4 Kashihara et al., WO 02/092047 Al, published Nov. 21, 2002. 5 Kobo Products, Inc., Triethoxy Caprylylsilane treatment, published Oct. 20, 2008. 2 Appeal 2015-006401 Application 12/701,084 Claims 1—14 and 21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 1—12 of copending U.S. Application No. 12/701,103. OBVIOUSNESS Issue Has the Examiner established by a preponderance of the evidence that claims 1—14 and 21 would have been obvious over Hamer, Ogawa, Kashihara, and Kobo? Findings of Fact FF 1. The Examiner’s findings of fact and statement of the rejection may be found at pages 2—10 of the Examiner’s Answer. We adopt those findings and provide the following for emphasis. FF 2. Hamer teaches an encapsulation system is advantageously constructed as a core of aqueous liquid having at least 5% by weight water therein, and an encapsulant surrounding the core to form a stable encapsulated particle, the encapsulant comprising at least one layer of hydrophobic particles in contact with and surrounding the core. (Hamer Abstract.) Hamer further teaches “[t]he confining particle “shell” can be easily disrupted by pressure and abrasion, yet the capsulate can be easily transported and poured without releasing the entrapped liquid.” {Id. at 3:34-47.) Hamer teaches a “water content [of the core] of from 10—98%, 10-95%, 10-90%, or 30-90% average percentage by weight of the encapsulation system.” {Id. at 5:27—31.) 3 Appeal 2015-006401 Application 12/701,084 FF 3. Hamer teaches “three types of particles ... in the practice of the present invention, 1) the encapsulating or entrapping particles, 2) the encapsulated or product particles, and 3) the additive or supplemental particles.” {Id. at 3:62—66.) Hamer teaches “once the encapsulated system . . . has been manufactured, other [supplemental or additive] particles may be combined therewith for addition to the composition or blended into a different supporting composition.” {Id. at 8:26—29.) To that end, Hamer teaches calcium carbonate particles, titania particles or zinc oxide particles can be provided . . . with merely exemplary size ranges of [the particles] from 0.01 micrometers to 1000 micrometers as spheres, flakes, shaped particles, agglomerates, bubbles, and the like, with or without any hydrophilic or hydrophobic fill or coating. {Id. at 8:31—45 (emphasis added).) Hamer teaches “functional ingredients” may be added to the encapsulation system, including “vitamins, fragrances, colorants (dyes and pigments), solvents, reactants, moisturizers, . . . [and] radiation (e.g., particularly UV) absorbing materials.” (Id. at 8:49-57.) FF 4. Hamer teaches “[t]he composition . . . may contain 5—50% . . . more preferably 10-40%, by weight of the total composition, of dry particulate matter having a particle size of 0.02 to 200, preferably 0.5 to 100, microns.” {Id. at 17:18—22.) Hamer discloses “[s]uitable powders include . . . silica, talc, mica, titanium dioxide, zinc laurate ... or mixtures thereof.” {Id. at 17:24—38 (emphasis added).) Hamer teaches the “powders may be surface treated with lecithin,. . . silicone oil or various other agents either alone or in combination, which coat the powder surface and render particles more lipophilic in nature.” {Id. at 17:38-42.) 4 Appeal 2015-006401 Application 12/701,084 FF 5. Ogawa teaches [cjosmetics containing conventional particulates [of] titanium dioxide cannot exhibit sufficient UV prevention effect and involve the problems that they are uncomfortable to the touch. . . . The cosmetics of the invention contain spindle- shaped fine titanium dioxide particles having a mean minor axis of 0.03 to 0.06 pm, a mean major axis of 0.08 to 0.12 pm and an aspect ratio (major axis/minor axis) of 2 to 4. (Ogawa Abstract (emphasis added); see also id. at 3:28—34 and 3:47-48 (disclosing particles in preferred concentration of 2.0-40.0% by weight).) Ogawa further teaches that the cosmetic composition with spindle shaped particles of titanium dioxide “has a protective effect in a broad UV region of UVB and UVA” and also “a smooth feel [of the cosmetic] is obtained.” (Id. at 13:35-39.) FF 6. Ogawa teaches it is possible to apply any sort of surface treatment performed in the past on the spindle shaped fine particles of titanium dioxide. . . . [I]t is preferable to apply the surface treatment thereto with silicone, aluminum stearate, aluminum oxide, [etc.] ... so as to ensure greater dispersion and stable presence in the cosmetic composition. (Id. at 3:41—46; see also id. at 12:41 (example of silicone treated spindle- shaped particles of titanium dioxide at 10% by weight).) FF 7. Kobo teaches surface-treating metal oxides with triethoxycaprylylsilane to provide very stable hydrophobic coatings that are easily dispersed in esters, oils, and silicone fluids. (Kobo 1 (comparing relative to silicone-treated pigments).) Kobo discloses example formulations of triethoxycaprylylsilane-treated titanium dioxide. (Kobo 2.) 5 Appeal 2015-006401 Application 12/701,084 Analysis Claim 1 Appellants argue the patentability of claims 1—14 as a group. We select claim 1 as representative. In general, claim 1 is drawn to a collapsible water-containing capsule comprising (a) a recited amount of water and (b) a recited amount of spindle-shaped metal oxide powder with a hydrophobic surface treatment (e.g., coating) and certain size characteristics. The Examiner finds that Hamer teaches a collapsible water-containing capsule with the amount of water recited in claim 1. (Ans. 5.) According to the Examiner, Hamer further teaches the capsule may comprise 5—50% titanium dioxide particles that have been surface treated to make them more lipophilic (i.e., hydrophobic). (Id. at 5—6.) The Examiner finds, however, that Hamer does not expressly teach spindle-shaped titanium dioxide particles with the dimensions of claim 1, and so turns to Ogawa. (Id. at 6.) The Examiner finds Ogawa teaches use of 2 40% by weight of spindle-shaped fine titanium dioxide particles in cosmetic compositions as a means to improve UV protection and the cosmetic’s feel and finish. (Id.) The Examiner further finds that Ogawa teaches preferred dimensions of these particles that overlap with, or are encompassed by, the ranges recited in claim 1. (Id.) According to the Examiner, Ogawa also teaches the spindle-shaped titanium dioxide particles may be hydrophobically surface treated (e.g., with silicone) and the particles may further be advantageously used in cosmetics with other surface-treated metal oxides (e.g., titanium dioxide) included as pigments. (Id. at 7.) 6 Appeal 2015-006401 Application 12/701,084 The Examiner concludes it would have been obvious to combine the teachings of Hamer and Ogawa and produce the capsule of claim 1. {Id. at 8.) The Examiner reasons [t]he skilled artisan would have combined the invention of Ogawa with Hamer because Hamer teaches using titanium particles as one of three types of particles . . . [and] Hamer teaches that said particle can be selected to provide additional or supplemental properties to the composition and can be a UV absorbing material. {Id.) Due to “marked improvement over commonly used spherical or needle-shaped particles regarding UV blocking effects,” the Examiner reasons the skilled artisan would have predictably used the spindle-shaped particles to obtain the expected benefits of those particles as taught in Ogawa. {Id. at 8—9.) We agree with the Examiner’s fact finding, reasoning, and conclusion that claim 1 would have been obvious based on the cited references. We address Appellants’ arguments below. Appellants contend “it appears . . . [the Examiner] is relying on an obvious-to-try argument,” which Appellants argue is impermissible because “the number of combinations disclosed in Hamer is exorbitantly numerous.” (App. Br. 3^4.) We are not persuaded. The Examiner’s rejection is not based on “obvious-to-try” reasoning. As the Examiner noted, Hamer clearly identifies metal oxides, and names titanium dioxide, as suitable particles for their invention. Ogawa discloses that cosmetics using conventional titanium dioxide cannot exhibit sufficient UV protection and involve other touch and finish problems. . . . [And] Ogawa has identified a solution 7 Appeal 2015-006401 Application 12/701,084 to these problems in replacing the conventional titanium dioxide with spindle-shaped particles. (Ans. 13.) Accordingly, we agree with the Examiner that the motivation for combining Hamer’s and Ogawa’s teachings “is based on the natural desire to improve what already exists,” not an obvious-to-try rationale. (Id.; FF 3—5.) We also disagree that the number of combinations of particles in Hamer is so numerous that it demonstrates error in the Examiner’s prima facie case. In an obviousness inquiry, the prior art must be considered for all that it reasonably teaches and suggests to the skilled person. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). And here, Hamer makes multiple references to including coated titania or titanium dioxide particles, which are known UV-protecting agents and pigments, in its capsules. (FF 3—4.) Further, in expressly teaching use of UV-protecting agents, moisturizers, etc. in forming its collapsible capsules, Hamer suggests use of the capsules in personal-care applications — the same as Appellants’ invention. (FF 3; see also Hamer 8:63—9:3 (“These encapsulated systems may be stored for months or years . . . and then when rubbed, release the liquid . . . [and] leav[e] average size particles that are not easily sensed (e.g., felt or seen) by the user.”).) Thus, although many combinations are possible, we are persuaded the skilled artisan would have reasonably understood Hamer as teaching capsules comprising titanium dioxide particles (e.g., as a UV-protecting agent) for use in personal-care applications, such as cosmetics. Merck, 874 F.2d at 807 (“[D]isclos[ing] a multitude of effective combinations does not render any particular 8 Appeal 2015-006401 Application 12/701,084 formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.”) Against this backdrop, it was then reasonable for the Examiner to turn to Ogawa’s teaching of improved spindle-shaped titanium dioxide particles, which provide better UV-protection and feel in cosmetic compositions compared to conventional titanium dioxide particles. (FF 5—6; Ans. 13—14.) Appellants argue the Examiner has not established that the skilled person would have had a reasonable expectation of success in combining Hamer and Ogawa. (App. Br. 4.) More specifically, Appellants contend the Examiner “has not even shown that the art cited provides a list of options that are most promising to try for the Appellants’ purpose . . . [or] something more that would suggest that the particles of Ogawa may be able to provide shock stability if used as in Hamer.” (Id.) This argument is unpersuasive. The expectation of success corresponds to the scope of the claims. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (“The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”) Claim 1 recites a collapsible capsule with ingredients (a) regarding the amount of water and (b) regarding the spindle-shaped metal oxide particles, but it is otherwise open-ended. The Examiner, thus, must establish that the skilled person would have had a reasonable expectation of success in designing a collapsible capsule including these ingredients. The Examiner has done so and provided sufficient reasoning with rational underpinning explaining why the skilled artisan would have predictably 9 Appeal 2015-006401 Application 12/701,084 modified Hamer’s capsule to include spindle-shaped titanium dioxide particles in the amount/ratio claimed. (FF 1.) It is not necessary to show an expectation of success related to unclaimed subject matter. Claim 1 does not, for example, recite any level of “shock stability.” In any event, like the capsules described in Appellants’ Specification, Hamer teaches that its capsules are “relatively stable” but “readily rupturable” when desired. (See Hamer 1:6—9 and 8:63—9:3; FF 2.) Appellants provide insufficient persuasive evidence or argument that the skilled person would have believed that Hamer’s capsules would become unstable or unsuitable if modified, or that the skilled person would have been otherwise led away from the Examiner’s proposed modification. There is also no requirement, as Appellants suggest, that the art identify “options that are most promising to try for the Appellants’ purpose.” (App. Br. 4.) To the contrary, the skilled artisan may combine teachings in the art for different reasons than those that prompted Appellants’ invention. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.”) Nor must the Examiner limit rejections under Section 103 to only the most-promising options disclosed in the prior art. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Appellants argue, supposing the Examiner established a prima facie case, the evidence of obviousness is overcome based on “unexpected findings that embodiments within Appellants’ invention displayed acceptable shock stability and sensory benefits.” (App. Br. 4.) In support, 10 Appeal 2015-006401 Application 12/701,084 Appellants point to testing against comparable examples provided in the Specification. {Id. at 5 (citing Spec. 27—28).) According to Appellants, Comparable Example 1, having no spindle-shaped metal oxide powder, did not form a capsule; Comparable Example 2, using silica dimethyl silyate and no spindle-shaped metal oxide, did not provide acceptable sensory benefits; and Comparable Example 3, having less than the claimed amount of spindle- shaped metal oxide powder, did not provide acceptable stability.6 In contrast, Appellants contend the testing showed capsules of Examples 1—5 (alleged inventive embodiments) have acceptable stability and “good feel” to the skin. (Id.) We have considered the cited data from the Specification but, like the Examiner, we are not persuaded that it shows claim 1 is nonobvious. (Ans. 15—17.) Because Comparable Example 1 did not form a capsule, it is not an appropriate comparison and does not reflect the closest prior art, which discloses that capsules are formed. (FF 2-4.) Comparable Example 2 apparently showed acceptable shock stability according to Appellants’ definition, but provided little or no “cooling sensation.” (Spec. 25—28.) The problem with this data, however, is that the “inventive” examples: (i) include numerous unclaimed ingredients, thus failing to show unexpected results commensurate in scope with claim 1; and (ii) include a number of different ingredients (or amounts of ingredients) from the comparable examples, preventing a like-to-like comparison specific to the ingredients recited in 6 According to Appellants, compositions enduring 8 minutes of shaking are considered as having acceptable stability. (App. Br. 5 (quoting Spec. 27:29— 30).) 11 Appeal 2015-006401 Application 12/701,084 claim l.7 For instance, Example 2 includes 5% by weight of titanium dioxide (non-spindle-shaped) coated with triethoxycaprylylsilane (ingredient *4) and 2% by weight of zinc oxide coated with triethoxycaprylylsilane (ingredient *5), whereas Comparable Example 2 includes only 1% of *4 and none of *5. (Spec. 23—25 (compare Tables 1 and 2).) Example 2 further includes other ingredients not found in Comparable Example 2, such as ascorbic acid and galactomyces ferment filtrate, as well as more water. (Id.) Example 3 contrasted to Comparable Example 3 provides a better comparison as most of the ingredients and amounts are the same. The difference between the examples is Example 3 uses 13% by weight of spindle-shaped titanium dioxide coated with triethoxycaprylylsilane and Comparative Example 3 uses only 3% by weight of that ingredient and 10% by weight of a reference compound (trimethylsilyl vinyl dimethicone/methicone silesquioxane crosspolymer). (Spec. 25.) In other words, Comparable Example 3 uses less than the “about 5% to about 20% of a spindle-shaped metal oxide powder” as provided in claim 1. The data remains, however, unpersuasive to show that claim 1 is nonobvious. Example 3 and Comparative Example 3 gave the same “cooling” effect, suggesting that the claimed amount of surface-treated spindle-shaped metal oxide is not critical for that unclaimed property. (Spec. 24—25.) Further, at a concentration of 13% of the spindle-shaped 7 Each of Appellants’ “inventive” examples use spindle-shaped titanium dioxide coated with triethoxycaprylylsilane, which is broader than the surface-treatment encompassed by claim 1 and, instead, reflects the surface- treatment of claim 21. 12 Appeal 2015-006401 Application 12/701,084 metal oxide, Example 3 showed better “shock stability” at 8 minutes but that is the lowest stability Appellants consider “acceptable.” (Id.) At 3% — a concentration much closer to the lower bound of the range recited in claim 1 of “about 5% — Comparative Example 3 provided alleged unacceptable shock stability with a measurement of 2 minutes. (Id.) The data does not show the claimed capsules provide unexpectedly improved stability over the range that is claimed and, here too, Appellants’ data is not commensurate in scope with the claims.”8 In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). (“[T]he applicant’s showing of unexpected results must be commensurate in scope with the claimed range. . . . Although those data [showing results for 1% and 2% rhenium] show that alloy strength improved with the addition of rhenium, they do not evidence unexpected results for the entire claimed range of about 1—3% rhenium.”) In the Reply Brief, Appellants take issue with the Examiner’s determination that certain properties would be inherent in capsules modified according to the teachings of Hamer and Ogawa. (Reply Br. 2.) According to Appellants, inherency is inapplicable when the rejection is obviousness. Id. We disagree. As discussed above, claim 1 does not recite the properties Appellants cite as inventive (capsule strength, shock stability, improved sensory benefit). (Id. at 1—5.) Moreover, the Patent Office may rely on inherency during prosecution — even in the context of an obviousness 8 Example 2 and Example 5 use 9.5% and 9% of the surface-treated spindle- shaped titanium dioxide. (Spec. 23.) But again, these examples include numerous unclaimed ingredients, and Appellants have not demonstrated those ingredients are immaterial to the results. (Id. at 23—24.) 13 Appeal 2015-006401 Application 12/701,084 rejection. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (the “statement that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.”) For the above reasons, we conclude the preponderance of the evidence supports the Examiner’s determination that claim 1 would have been obvious over the cited art. Claims 2—14 have not been argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claim 21 We agree with the Examiner’s fact finding, reasoning, and conclusion that claim 21 would have been obvious based on the cited references. Appellants reprise their prior arguments, but those arguments are unpersuasive as discussed above. (App. Br. 7.) Appellants also argue the Examiner’s “attempt to combine the disclosures of Hamer, Ogawa, and Kobo amount to nothing more than improper hindsight.” (Id.) We are unpersuaded. Kobo teaches triethoxycaprylylsilane-coated titanium dioxide, and the benefits of these particles. (FF 7; Ans. 9—10.) As the Examiner noted, “Kobo discloses a particular treatment. . . that works particularly well with metal oxide and provides the required boost in lipophilicity.” (Ans. 10.) Due to the suggestion in the prior art to coat titanium dioxide particles and make them more lipophilic (FF 3—4), the skilled person would have predictably applied Kobo’s coating (FF 7), producing a capsule as in claim 21. 14 Appeal 2015-006401 Application 12/701,084 Appellants argue Hamer does not teach the metal oxide is spindle- shaped, and thus “the combination of Hamer and Kobo cannot suggest a lipophilic-treated spindle-shaped metal oxide powder.” (App. Br. 7.) This argument attacks the teachings of Ogawa and Kobo, but neglects the teachings of Ogawa. See, e.g., In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references [].”) As such, it is unpersuasive. Appellants argue the Examiner “takes a leap of logic and alleges that Ogawa teaches the metal oxide particles can be surface-treated so as to improve lipophilicity.” (App. Br. 7—8.) Appellants further contend Ogawa “discloses a broad list of materials for surface treating . . . [and some] would not be considered] as being hydrophobic.” (Id. at 8.) We disagree. Ogawa teaches working examples that coat the spindle-shaped titanium dioxide particles with hydrophobic materials. (FF 6.) Moreover, Appellants’ argument attacks Ogawa individually, yet the particular hydrophobic coating is taught based on the combination with Hamer and Kobo. For the above reasons, we conclude the Examiner established by a preponderance of the evidence that claim 21 would have been obvious. OBVIOUSNESS-TYPE DOUBLE PATENTING The Examiner provisionally rejected claims 1—14 and 21 on the ground of nonstatutory obviousness-type double patenting over claims 1—12 of U.agS. Application No. 12/701,103. (Ans. 10-11.) 15 Appeal 2015-006401 Application 12/701,084 Appellants did not separately argue this rejection. (App. Br. 8—9.) The rejection is, thus, summarily affirmed. 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, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.”). SUMMARY We affirm the rejection of claims 1—14 and 21 under 35 U.S.C. § 103(a) over Hamer, Ogawa, Kashihara, and Kobo. We affirm the provisional obviousness-type double patenting rejection of claims 1—14 and 21 over claims 1—12 of Application No. 12/701,103. 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 16 Copy with citationCopy as parenthetical citation