Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Feb 27, 2020

15265237 - (D) (P.T.A.B. Feb. 27, 2020)

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.
15/265,237 09/14/2016 Luis Carlos Abel JR. JCO5174USNP 9529
27777 7590 02/27/2020
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS CARLOS ABEL, JR, MARISA DUFORT, LUCAS LOPES,
BRUNA HELENA MIOLLO, MAYCON RIBEIRO, and ALISAR ZAHR

Appeal 2019-005527
Application 15/265,237
Technology Center 1600
Before FRANCISCO C. PRATS, MICHAEL A. VALEK, and JAMIE T.
WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-005527
Application 15/265,237

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The Specification describes “topically-acceptable, sunscreen
compositions containing an oil-in-water emulsion comprising a UV-
absorbing compound, and a combination of propellants substantially
homogeneously distributed there through, which compositions provide a
phase-stable, effervescent foam when dispensed from a pressurized aerosol
container.” Spec. 1. Claim 1, the only independent claim, is illustrative of
the claimed subject matter and is reproduced below:
1. A composition, comprising:
a phase-stable oil-in-water emulsion comprising a
discontinuous oil phase homogenously distributed within
continuous a water phase, wherein said discontinuous oil
phase comprises a UV-absorbing compound; and
from about 20% to about 30% by weight of said
composition of a combination of at least two propellants,
said combination comprising at least two propellants
selected from the group consisting of dimethyl ether, a
hydrocarbon, and 1, 1-difluoroethane, wherein said
composition comprises from about 8% to about 15% by
weight of each of said propellants comprising said
combination, and wherein said composition provides a

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johnson &
Johnson Consumer Inc. Appeal Br. 2.
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phase-stable, effervescent foam when discharged from a
pressurized container.
Appeal Br. 7 (Claims App.).
REJECTIONS
The Examiner rejected claims 1–13 under 35 U.S.C. § 103(a) as being
obvious over Brunckhorst2 in view of Schiemann.3
ISSUES AND ANALYSIS
The Examiner finds that “Brunckhorst teaches UV filters for
strengthening the foams of self-foaming, foam-forming, foamable cosmetic
or dermatological preparations especially those containing a polar oil
component,” and that the formulations may be emulsions. Final Act. 6
(citing Brunckhorst, Abstract, ¶ 27). According to the Examiner,
“Brunckhorst teaches propellants to help discharge the compositions from
aerosol containers.” Id. (citing Brunckhorst ¶ 71).
The Examiner further finds that Brunckhorst teaches propellants
including dimethyl ether and/or linear or branched hydrocarbons (such as
propane, butane, isobutene) which can “be useful alone or in mixture with
one another” and “that these propellants may be used in a total amount of 0.1
to 30% by volume of the total formulation a range including and/or
overlapping the instantly recited range of ‘from about 20% to about 30 by
weight.’” Id. at 6–7, Ans. 3 (citing Brunckhorst ¶¶ 82, 86).

2 Brunckhorst et al., EP 1508326 B1, published Feb. 23, 2005 (as translated)
(“Brunckhorst”).
3 Schiemann, et al., WO 2007/002047 A1, published Jan. 4, 2007
(“Schiemann”).
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The Examiner concedes that Brunckhorst does not specify the recited
“oil-in-water” emulsion or the particular propellant components instantly
claimed but finds that Schiemann cures this deficiency. Id. at 7.
Specifically, the Examiner finds that Schiemann teaches hair and skin
compositions comprising UV filters and formulations that include a
propellant and discloses the use of oil-in-water emulsions. Id. (citing
Schiemann Title, Abstract, p. 14, ll. 18–20, claim 22).
According to the Examiner, both Brunckhorst and Schiemann are
directed to propellant compositions comprising a UV filter active agent and
“[i]t would have been prima facie obvious to one of ordinary skill in the art
at the time the invention was made to substitute the oil-in-water emulsion
type taught by Schiemann for the generally disclosed emulsions of
Brunckhorst, with a reasonable expectation of success.” Id. The Examiner
finds that “[o]ne would have been motivated to do so since Schiemann
teaches o/w and w/o emulsions as equivalent forms of emulsions useful for
propellant and UV-filter containing compositions.”
The Examiner also finds that
it would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to perform routine
optimization procedures as to the precise amount of propellant
(total) and amounts of each propellant in order to achieve the
desired end result. One would have been motivated to do so to
achieve desired formulation stability and foaming effects based
on Brunckhorst’s teaching that the propellant gas selected can
control the feel and foaming characteristics (see [0087] and
[0088] for instance). Combining two or three propellant
components in a 1:1 or 1:1:1 ratio would have resulted in each
propellant presence in an amount within the instantly claimed
range from which one would have further optimized.
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Id. at 8. Lastly, the Examiner finds that one of ordinary skill in the art would
have been motivated to substitute 1,1-difluoroethane, a fluorine
hydrocarbon, for dimethyl ether or a C3-C5 hydrocarbon such as a propane
based on Schiemann’s teaching of these being equivalent and preferred
propellants. Id.; Ans. 4–5 (citing Schiemann p. 4, ll. 20–28).
Appellant argues that “[w]hile Brunckhorst discloses a combination of
two hydrocarbons, i.e., propane/butane, it does not teach or suggest either a
combination of at least two propellants selected from the group consisting of
dimethyl ether, a hydrocarbon and 1, 1-difloroethane, or use of about 8 to
about 15% by weight of each said propellant.” Appeal Br. 4–5. Appellant
also contends that Brunckhorst teaches away from the use of halogenated
propellant gases. Id. at 5 (citing Brunckhorst ¶ 84).
Appellant further asserts that “the claimed composition demonstrates
an unexpectedly superior combination of effervescence and phase stability
over compositions comprising only one propellant (comparative examples
C1-C6 and C8-C10) or two propellants but not about 8 to about 15% by
weight of each propellant (comparative example C7).” Id. at 5 (citing Spec.
p. 3, ll. 17–20).
According to Appellant, Brunckhorst “suggests optimizing the quality
of cosmetic foams by combining 80-97% by volume of an emulsion and 3-
20% by volume of a suitable gas (paragraph [0115]), and states this
combination results in a ‘finely-bubbled, stable and creamy’ foam
(paragraph [0017]).” Id. However, according to Appellant, as shown by the
Specification’s comparative example C6, “a composition comprising only
propane/butane does not exhibit the improved combination of effervescence
and phase stability of the claimed composition.” Id. at 5.
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Appellant also contends that Schiemann does not cure the deficiencies
of Brunckhorst and that Schiemann states that the content of propellant is
15–85 wt%, preferably 25–75 wt%. Id. (citing Schiemann p. 4, ll. 27–28).
In response, the Examiner finds that Brunckhorst teaches that the
disclosed gases can be used individually or in desired mixtures with one
another. Ans. 4 (citing Brunckhorst ¶ 85). According to the Examiner,
“[w]hat Brunckhorst reasonably suggests to one of ordinary skill in the art is
that various propellants such as dimethyl ether (see [0082]) and halogenated
hydrocarbons (which Brunckhorst also teaches as “non-toxic”) are suitable
in principle and function for achieving the desired propellant effects.” Id.
The Examiner also finds that Appellant’s alleged “unexpected results”
were to be expected. Id. at 5. The Examiner explains that Brunckhorst
teaches bubble patterns to be desirable; therefore, teaching the same feature
that Appellant describes as unexpectedly good “effervescence” and
“physical stability.” Id. The Examiner further finds that the data in Tables 1
and 2 of the instant Specification do not support evidence of practical and
statistical significance with a clear control experiment and clear variations
responsible for the effects achieved within but not outside of the claimed
range. Id.
We find that the Examiner has the better position. Brunckhorst
discloses the use of UV filters for strengthening foams of dermatological
formulations including emulsions. Brunckhorst Abstract, ¶ 27. Brunckhorst
also teaches the use of propellants to help discharge the compositions from
aerosol containers and that propellants such as dimethyl ether and/or linear
or branched chain hydrocarbons (such as ethane, propane, butane, isobutene,
or pentane) can be used. Id. ¶¶ 71, 82. Brunckhorst teaches that the
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propellants can be used “individually or in any desired mixtures with one
another” and can be present in a range of 0.1 to 30% by volume of the total
formulation, which encompasses the claimed range. Id. ¶¶ 85–86. It is well
established that a prior art reference which discloses a range encompassing
or overlapping a claimed range is sufficient to establish a prima facie case of
obviousness. See In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003).
Furthermore, Schiemann, which also discloses skin compositions
comprising UV filters, teaches oil-in-water emulsions and the use of
propellants such as C3-C5 hydrocarbons, dimethylethers, or fluorine
hydrocarbons. Schiemann Abstract, 4:20–28, 14:18–20. We agree with the
Examiner that one of ordinary skill in the art would have been motivated to
use an oil-in-water emulsion, as disclosed in Schiemann, with the
compositions disclosed in Brunckhorst because Schiemann describes oil-in-
water emulsions as being suitable for its skin compositions. Id. at 14:18–20.
Furthermore, one of ordinary skill in the art would have been motivated to
use two or more of the propellants disclosed in Brunckhorst (e.g., dimethyl
ether, hydrocarbon) and/or Schiemann (dimethyl ether, hydrocarbon, 1-
difluoroethane) in order to enhance fine-bubbles and develop “rich foams,”
as disclosed in Brunckhorst, with a reasonable expectation of success.
Brunckhorst ¶¶ 73, 82; Schiemann 4:20–28.
Lastly, we agree with the Examiner that one of ordinary skill in the art
would have been motivated to optimize the weight percentage of each
propellant to optimize the phase stability and foaming characteristics of the
composition. Brunckhorst teaches that the use of a propellant can result in
“finely creamy and rich foams.” Brunckhorst ¶ 88. We therefore agree with
the Examiner that it would have been obvious to optimize the propellant
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amounts within the total range of 0.1 to 30% taught by Brunckhorst. See In
re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”)
With regard to Appellant’s argument that Schiemann discloses a range
of 15–85 wt%, preferably 25–75 wt%, for the propellant, we do not find this
argument persuasive because Appellant is arguing the reference individually.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As discussed supra, Brunckhorst
discloses a propellant range of 0.1 to 30% by volume of the total
formulation, which encompasses the claimed range.
Appellant also argues that “the claimed composition demonstrates an
unexpectedly superior combination of effervescence and phase stability”
compared to compositions with only one propellant or two propellants but
not about 8 to about 15% by weight of each propellant. Appeal Br. at 5
(citing Spec. p. 3, ll. 17–20). We are not persuaded by this argument. First,
Appellant does not sufficiently explain which compositions fall within the
scope of the claimed invention. Second, even if we are to assume that
compositions E1–E9 disclosed in Tables 1 and 2 of the Specification are
within the scope of Appellant’s claimed invention, the Specification lacks an
adequate comparison between these compositions and compositions which
only include a single propellant (C1-C6 and C8-C10) or two propellants that
do not fall within the claimed 8–15% range (C7). Compositions E1–E9 and
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C1–C7 contain a large number ingredients other than the propellants and
these ingredients (and their amounts) differ from each other. Spec. 15–21.
Therefore, based on the data presented, it cannot be determined which
ingredient is causing the beneficial properties of effervescence and phase
stability. In other words, Appellant has not shown that there is a “nexus”
between the results in the Specification and the limitations recited in the
present claims. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(“For objective evidence [of nonobviousness] to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention.”).
Furthermore, compositions E1–E9 are not commensurate in scope
with the claims because the claims recite the use of a hydrocarbon as one of
the propellants while compositions E1–E9 only illustrate the use of
butane/propane. “It is well established that the objective evidence of
nonobviousness must be commensurate in scope with the claims.” In re
Lindner, 457 F.2d 506, 508 (CCPA 1972).
Appellant also argues that Brunckhorst teaches away from the use of
halogenated propellant gases. Appeal Br. 5. Other than citing to paragraph
84 of Brunckhorst as support for this contention, Appellant does not explain
how Brunckhorst teaches away from the use of such gases. See id. We are
not persuaded by Appellant’s argument. Although paragraph 84 of
Brunckhorst describes the “unacceptable action” of halogenated
hydrocarbons such as fluorocarbons and chlorofluorocarbons (CFCs) on the
environment, it also refers to these propellants as “non-toxic.” Brunckhorst
¶ 84. Furthermore, claim 1 recites the use of a “hydrocarbon” and is not
limited to halogenated hydrocarbons, to which Brunckhorst allegedly
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teaches away. As discussed supra, Brunckhorst teaches the use of various
linear or branched hydrocarbons such as ethane, propane, butane, isobutene,
and pentane. Id. ¶ 82.
For the reasons described herein and those already of record, we
sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C.
§ 103(a) as being obvious over Brunckhorst in view of Schiemann. Claims
2–13 are not argued separately, and, therefore, fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1–13.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13 103 Brunckhorst,
Schiemann
1–13
Overall
Outcome
1–13

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED