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Patent Trial and Appeal Board

May 23, 2013

11472737 (P.T.A.B. May. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAUL ROBERT TANNER
__________

Appeal 2012-000627
Application 11/472,737
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
personal care composition. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “a patterned, non-emulsified composition
having at least one non-aqueous phase and an aqueous phase,” in which the
non-aqueous phase comprises a sunscreen (Spec. 2:9-12).
Appeal 2012-000627
Application 11/472,737

2
Claims 1-27 are on appeal.
1
Claim 1 is representative:
1. A stable personal care composition comprising a discrete
transparent aqueous phase and a discrete non-aqueous phase, wherein:
a) the aqueous phase comprises from about 0.05% to about 5% of a
polymeric thickener, and from about 50% to about 99.5% water, both by
weight of the aqueous phase;
b) the non-aqueous phase comprises from about 20% to about 90% of
a sunscreen selected from the group consisting of oil-soluble sunscreens, oil-
insoluble sunscreens, and combinations thereof; and from about 5% to about
40% of an oil thickener, all by weight of the non-aqueous phase; and
wherein the ratio of the weight of the aqueous phase to the weight of
the non-aqueous phase is from about 1:1 to about 9:1; and wherein the
aqueous phase and the non-aqueous phase are visually distinct and form a
stable pattern.

Issue
The Examiner has rejected claims 1-27 under 35 U.S.C. § 103(a)
2
as
obvious in view of Focht,
3
Barker,
4
Thibiant
5
and Lapidot.
6
The Examiner
finds that Focht discloses multiphase compositions comprising an aqueous
phase and a non-aqueous phase containing up to 20% sunscreen and 0.1-
30% silica, which is an oil thickener (Answer 5). The Examiner finds that
Focht does not teach that the aqueous phase comprises a polymeric

1
Claim 28 is also pending, but stands withdrawn from consideration (App.
Br. 1; see also Ans. 3).
2
The Final Rejection (mailed Aug. 17, 2010) also included a rejection of
claims 4 and 7 under 35 U.S.C. § 112, second paragraph. In the Answer, the
Examiner did not repeat the rejection but did not expressly withdraw it.
Assuming that the rejection was intended to be maintained, we reverse it for
the reasons set out in the Appeal Brief (pages 3-4).
3
Focht et al., US 2004/0057920 A1, issued Mar. 25, 2004.
4
Barker et al., US 4,335,103, issued June 15, 1982.
5
Thibiant et al., US 6,245,344 B1, issued June 12, 2001.
6
Lapidot et al., US 6,238,650 B1, issued May 29, 2001.
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Application 11/472,737

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thickener, or the ratios of aqueous to non-aqueous phases required by
claim 1 (id. at 6).
The Examiner finds that Barker discloses “multiphase cosmetic
compositions comprising an aqueous phase containing 80-95% water and
0.5-4% thickener” (id.) “comprising stable patterns such as swirled and
marbled” (id. at 7). The Examiner finds that Thibiant discloses “multiphase
cosmetic compositions comprising phase ratios of 1:10 to 10:1” (id. at 6) in
which the “phases may be clear” (id. at 8). The Examiner concludes that “it
would have been obvious to utilize the aqueous phase of Barker et al … and
the phase ratio of Thibiant et al., in the formulations of Focht et al. in order
to produce a multiphase cosmetic composition with known components and
percentages within each phase” (id.) and that “it would have been obvious to
utilize any pattern, including those taught by Barker … in order to create a
composition with an aesthetically pleasing appearance” (id.).
Appellant contends that the cited references do not provide a
reasonable expectation of success in obtaining a transparent aqueous phase
or the required concentration of sunscreen (Appeal Br. 5, 8-9). Appellant
also argues that the Examiner’s conclusion that Focht would have made
obvious a non-aqueous phase that comprises particulate silica and sunscreen
agents is based on hindsight (id. at 7).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the cited references would have made obvious
the stable personal care composition of claim 1?
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Application 11/472,737

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Findings of Fact
1. Focht discloses “striped liquid personal cleansing compositions
comprising a cleansing phase and a separate benefit phase” which remain
stable when packaged in physical contact (Focht 1, ¶ 0002).
2. Focht discloses that cleansing phase can comprise “thickening
agents (e.g., polyol alkoxy ester …)” (id. at 5, ¶ 0056).
3. Focht discloses that the benefit phase “is preferably anhydrous”
(id. at 6, ¶ 0076).
4. Focht discloses that the benefit phase may comprise sunscreen
actives (id. at 8-9, ¶¶ 0100, 0125).
5. Focht discloses that the “concentration of the sunscreen active …
preferably ranges from about 0.1% to about 20% … by weight of the
composition” (id. at 9, ¶ 0127).
6. Focht discloses that the benefit phase may comprise solid
particulates (id. at 10, ¶¶ 0129-0130) such as “moisture, sweat or sebum
absorbing powders, non-limiting examples of which include silica” (id. at
10, ¶ 0132).
7. Focht discloses that solid particles are included “at concentrations
ranging from about 0.1% to about 30% … by weight of the personal
cleansing composition” (id. at 10, ¶ 0134).
8. Focht discloses that “the weight ratio between the cleansing phase
and the benefit phase is from about 1:9 to about 99:1” (id. at 1, ¶ 0014).
9. The Specification discloses that oil thickeners include silica (Spec.
10:18).
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10. Barker discloses “a duophase cosmetic cleansing cream
composition” (Barker, abstract) that includes an oil-containing cream phase
(id.) and a gel phase comprising “water or water soluble material making up
about 80-95% by weight … and a thickening agent making up
approximately 0.50-4.00% by weight” (id.).
11. Barker discloses that the cream and gel phases are “combined in
preferably a swirl or marble like type configuration … wherein each
respective phase remains generally separate, stable and visually distinct”
(id.).
12. Barker discloses an embodiment in which Carbomer 934 and 941
are used as thickening agents in both the cream and gel phases (id. at col. 5,
ll. 37-38).
13. “Carbomer 934 and 941 are polymers” (id. at col. 5, ll. 46-48).
14. Thibiant discloses a dual phase product comprising “a first phase
colored with … a coloring agent to contrast with at least a second phase, in a
ratio of from about 10:1 to about 1:10,” whereby the phases “form a visually
attractive pattern” (Thibiant, col. 6, ll. 56-61).
15. Thibiant discloses that the product may comprise a clear gel
aqueous phase (id. at col. 9, ll. 4-5) that is preferably “based on carbomer,
lubragel, polymer, and different humectant chemistry to give … product
stability” (id. at col. 9, ll. 1-29).
16. Thibiant discloses that the “gel system will always maintain a
clear appearance” (id. at col. 9, ll. 15-16).
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Analysis
Claim 1 is directed to a personal care composition comprising two
visually distinct phases that form a stable pattern: (a) a transparent aqueous
phase comprising a polymeric thickener (0.05% to 5%
7
) and water (50% to
99.5%), and (b) a non-aqueous phase comprising sunscreen (20% to 90%)
and oil thickener (5% to 40%). Claim 1 also requires that the weight ratio of
the aqueous phase to the non-aqueous phase is about 1:1 to about 9:1.
Focht discloses striped personal cleansing compositions comprising
two stable phases: an aqueous cleansing phase and a non-aqueous benefit
phase. Focht discloses that the aqueous cleansing phase can comprise a
thickening agent. Focht discloses that non-aqueous benefit phase can
comprise up to 20% sunscreen and 0.1% to 30% solid particulates, including
a moisture-absorbing powder such as silica. Silica is an oil thickener. Focht
discloses that the weight ratio of cleansing phase to benefit phase can vary
from 1:9 to 99:1.
Barker discloses a dual phase cosmetic composition comprising a
cleansing cream phase and an aqueous gel phase, where the gel phase
comprises 80-95% water or water-soluble material and 0.50-4.00%
thickening agent, such as a Carbomer polymeric thickening agent. Thibiant
discloses a dual phase product in which the two phases form a visually
attractive pattern and which may comprise a clear gel aqueous phase.
In view of these disclosures, it would have been obvious to one of
ordinary skill in the art to modify the dual phase composition of Focht to
include a polymeric thickener in the aqueous phase at 0.5% to 4%, as

7
All percentages are by weight.
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disclosed in Barker, because Barker discloses that its gel phase can form a
stable pattern in combination with an oil-based cream phase. It also would
have been obvious to make Focht’s aqueous phase transparent because
Lapidot discloses that a transparent aqueous phase, combined with a second
phase at a ratio of 10:1 to 1:10, provides a visually attractive pattern.
Appellant argues that the Examiner “has provided no explanation for
how the aqueous phase of Focht with the required surfactant loading may be
made transparent” (Appeal Br. 5).
This argument is not persuasive. Focht discloses that its cleansing
phase contains 1-50% by weight of a surfactant (Focht 1, ¶ 0011). Thibiant
discloses a product that includes a clear gel aqueous phase and, in one
example, a gel with 0.1% to 1.0% surfactants (Thibiant, col. 11, ll. 20-35).
Thus, Thibiant provides a reasonable basis for expecting that Focht’s
cleansing phase could be made transparent, at least at the low end of the
range of surfactants suggested by Focht. Obviousness does not require an
absolute predictability of success, only a reasonable expectation of success.
In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
Appellant argues that one of skilled in the art would not have
modified the Focht’s aqueous phase to comprise Barker’s polymeric
thickener because Barker discloses that the same thickener should be used in
both phases to enhance stability (Appeal Br. 6). Appellant argues that one of
skill in the art “would recognize carbomers as aqueous thickeners, which
would not effectively thicken a non-aqueous phase” (id.). Similarly,
Appellant argues that “[a]ltering the thickener type or amount can affect the
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density and rheology of the cleansing phase of Focht” and may lead to
intermingling of the two phases (id. at 6-7).
These arguments are not persuasive. Focht itself discloses including
different thickeners in its aqueous and non-aqueous phases. Specifically,
Focht discloses that its aqueous phase can include a polyol alkoxy ester
thickener, while its benefit phase comprises silica (an oil thickener). Thus, it
would have been reasonable for one of skill in the art to expect that another
thickener, such as the carbomer thickeners of Barker, could also be used in
the Focht aqueous phase without compromising stability.
Appellant argues that Focht discloses numerous ingredients as
optional components of the benefit phase and also discloses numerous types
of solid particulates (Appeal Br. 7). Appellant argues that the Examiner’s
“selection of these particular optional ingredients suggests improper
hindsight bias” (id.).
This argument is not persuasive. Focht expressly discloses that its
compositions may contain additional ingredients such as sunscreen agents
and absorbent particulates such as silica. It would have been obvious to
choose these optional ingredients for their known or disclosed functions:
preventing sun damage and absorbing sweat, respectively. Whether it also
would have been obvious to include other optional ingredients in Focht’s
composition is immaterial, since claim 1 is open to the inclusion of other,
unspecified components.
Appellant argues that Focht provides no examples with a sunscreen
active in the benefit phase (Appeal Br. 8). Appellant argues that Focht
“provides no guidance on how to incorporate sunscreens generally or, more
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specifically, a high percentage of sunscreens (from about 20% to about 90%
of the nonaqueous phase) into the benefit (non-aqueous phase)” (id.).
Appellant also argues that “[e]ven if a skilled artisan were to include the
optional sunscreen actives at the threshold amount of about 20%, it is
asserted that the inclusion of sunscreen actives would either be insoluble in
the benefit phase or would destroy the rheology of the benefit phase” (id. at
9).
These arguments are not persuasive. “[A] prior art printed publication
cited by an examiner is presumptively enabling barring any showing to the
contrary by a patent applicant.” In re Antor Media Corp., 689 F.3d 1282,
1288 (Fed. Cir. 2012). Focht’s disclosure of a non-aqueous phase that
includes 20% sunscreen is presumed to be enabled. Although Appellant
speculates that 20% sunscreen might not be soluble in Focht’s benefit phase
or might affect its rheology, he has not provided any scientific reasoning or
evidence to support these assertions, and therefore has not adequately shown
that Focht does not enable what it discloses.
Appellant separately argues claim 16, which depends from claim 1
and further requires that the oil thickener is selected from a group that
includes silica (Appeal Br. 13 (Claims Appendix)). Appellant argues that
the Examiner erred in finding that Lapidot discloses silica as an oil phase
thickener (Appeal Br. 9-10). This argument is not persuasive because, as
discussed above, the combination of Focht, Barker and Thibiant would have
made obvious the composition of claim 1 with silica in the non-aqueous
phase, and silica is described in the Specification as an example of an oil
thickener.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have made obvious the stable personal care
compositions of claims 1 and 16. Claims 2-15 and 17-27 have not been
argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
SUMMARY
We affirm the rejection of claims 1-27 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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