JOHNSON & JOHNSON CONSUMER INC.

Patent Trials and Appeals Board

Mar 19, 2021

2020003877 (P.T.A.B. Mar. 19, 2021)

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.
14/858,164 09/18/2015 Susan Daly JCO5187USNP 4357
27777 7590 03/19/2021
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
MATTISON, LORI K
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/19/2021 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSAN DALY, PRITHWIRAJ MAITRA, and
BARRY SETIAWAN
Appeal 2020-0038771
Application 14/858,164
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
foaming sunscreen composition. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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.
Appeal 2020-003877
Application 14/858,164

2
CLAIMED SUBJECT MATTER
Claims 1–5, 7–17, 19–23, and 25–35 are on appeal. Final Act. 2.
Claim 1, reproduced below, is illustrative:
1. A foaming sunscreen composition, comprising:
an oil-in-water emulsion, comprising
a continuous water phase comprising from about 0.75%
to about 6% by weight of a superhydrophilic amphiphilic
copolymer, based on the total weight of the foaming
sunscreen composition; and
a discontinuous oil phase dispersed in the water phase,
wherein the discontinuous oil phase comprises a UV
absorbing compound and is substantially free of oil soluble
polymers, and wherein the foaming sunscreen composition
is essentially free of monomeric surfactant.
Appeal Br. 8 (Claims Appendix).
REFERENCES
The Examiner relied upon the following prior art references:
Name Reference Date
Fevola US 2011/0082105 A1 Apr. 7, 2011
Xu WO 2012/129722 A1 Oct. 4, 2012
Terrisse WO 2013/076691 A1 May 30, 2013
SUNSPHERES™ Hollow Sphere Technology An SPF Booster for More
Aesthetically Pleasing Formulations, February 2006, pp. 1–14 (on
02/02/2017 IDS) (“Sunspheres”)
Drugs.com entry for “Eucerin (topical emollients) (captured Feb. 2,
2012), https://www.drugs.com/mtm/eucerin.html (“Emollients”)

Appeal 2020-003877
Application 14/858,164

3
REJECTIONS2
Claims 1–5, 7–17, 19–22, 25–29, and 33–35 stand rejected under 35
U.S.C. § 103 as unpatentable over Sunspheres and Fevola. Final Act. 4.
Claims 1, 3–5, 7–17, 19–22, 25–29, 30, and 32–35 stand rejected
under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and
Emollients. Id. at 11.
Claims 1, 3–5, 7–17, 19–22, 25–29, 31, and 33–35 stand rejected
under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and Xu.
Id. at 12.
Claims 1, 3–5, 7–17, 19–23, 25–29, and 33–35 stand rejected under
35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and Terrisse. Id.
at 14.
OPINION
Because the same issues are dispositive of each of the four
obviousness rejections, we address the rejections together. See, e.g., Appeal
Br. 5–6 (for obviousness rejections over Sunspheres, Fevola, and the
additional references, Appellant relies only on arguments made for the
obviousness rejection over Sunspheres and Fevola); Ans. 6–8. Additionally,
Appellant did not argue the claims separately. See generally Appeal Br.
Thus, we select claim 1 as representative, and the remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

2 The Final Action included a provisional rejection for nonstatutory
obviousness-type double patenting over claims of then-copending
Application No. 14/858,181. Final Act. 16. This application is now
abandoned. See Application No. 14/858,181, Notice of Abandonment (dated
Feb. 25, 2021). Accordingly, the rejection is moot, and we do not discuss it
further.
Appeal 2020-003877
Application 14/858,164

4
The Examiner finds that Sunspheres discloses a composition that
meets all limitations of independent claim 1, except the limitation reciting
“from about 0.75% to about 6% by weight of a superhydrophilic amphiphilic
copolymer, based on total weight of the foaming sunscreen composition.”
See generally Final Act. 4–7. In particular, the Examiner finds that
Sunspheres discloses sunscreen formulations that are oil-in-water emulsions
(e.g., exemplary formulation B), which (1) are free of monomeric
surfactants; (2) include UV-absorbing compounds in the oil phase; and
(3) are free of oil soluble polymers in the oil phase. Id. at 5–6 (citing
Sunspheres 4, 5, 11).
As noted above, the Examiner finds that Sunspheres does not teach
inclusion of a superhydrophilic amphiphilic copolymer (“SAC”) in the
recited amount. Id. at 7. The Examiner finds that Fevola teaches
compositions, including sunscreens, comprising a SAC, and teaches
including SACs in an amount of 2–10% by weight (which overlaps with the
claimed amount). Id. (citing, e.g., Fevola ¶¶ 98, 220, 228). The Examiner
finds that a person of ordinary skill in the art would have been motivated to
modify Sunspheres’ sunscreen composition “by adding Fevola’s SACs in
[an] amount of 2.0% of the composition because FEVOLA teaches his SACs
for use in emulsions and sunscreens,” and because Fevola “teaches the SACs
of his invention provide excellent foaming” with reduced irritation. Id. at 8;
see also id. at 7 (citing, e.g., Fevola ¶¶ 2, 3, 6, 8).
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (id. at 4–8, 11–15), and agree that the
claims would have been obvious over the identified prior art for the reasons
the Examiner articulated. We address Appellant’s arguments below.
Appeal 2020-003877
Application 14/858,164

5
Appellant argues that the Examiner has not provided a sufficient
motivation to combine Sunspheres and Fevola. Appeal Br. 5. Appellant
focuses on the Examiner’s rationale that both references are directed to
creating more aesthetically pleasing formulations. Id. (citing Final Act. 8).
Appellant argues that Sunspheres is directed to “[b]oosting SPF,” “which is
not a matter of aesthetics,” but rather is “a matter of effectiveness.” Id.
Thus, Appellant argues, the Examiner inappropriately characterizes the
claims as a combination of two compositions each of which is taught to be
useful for the same purpose, in order to form a third composition used for
the very same purpose. Id. (citing In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980)).
We are not persuaded that the Examiner has failed to provide a
sufficient motivation to combine Sunspheres and Fevola. Sunspheres
discloses oil-in-water sunscreen formulations that create more aesthetically
pleasing products, and Fevola teaches inclusion of SACs in the claimed
amounts in oil-and-water formulations, including sunscreens, to obtain the
benefits of low irritation and high foam, which enhance the aesthetic appeal
of the composition. Ans. 4–5 (citing Sunspheres 1; Fevola ¶ 99). Thus, both
references “express a desire to create aesthetically appealing formulations.”
Id. at 5. Moreover, the claimed combination is no more than “the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). As the
Examiner found (and Appellant did not dispute), “[t]he function of
SUNSPHERES’ sunspheres has not changed; . . . [and the] function of
FEVOLA’s superhydrophilic amphiphilic copolymers (SACs) has not
changed.” Ans. 4. “[W]hen a patent ‘simply arranges old elements with
Appeal 2020-003877
Application 14/858,164

6
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976).
Appellant argues that there are “unexpected advantages” to using the
claimed amount of SAC. Appeal Br. 5. Specifically, Appellant argues that
as shown in Table 2 of the Specification, formulations E5 to E8, which
contain the claimed amount of SAC, “exhibit better foaming” compared to
formulation C3, which contains 0.375% SAC, and “which exhibited much
weaker foaming.” Id. (citing Spec. 44 (Example II, Table 2)). Appellant
also argues that “formulations containing no oil soluble polymers (E8 and
E12) exhibit better foam quality compared to formulations containing oil
soluble polymers (C7 to C10). Addition of a polymeric oil soluble wax, film
former or emulsifier reduced or killed the foam.” Id. (citing Spec. 47
(Example IV, Table 4)).
We are not persuaded that Appellant has demonstrated unexpected
results. First, we agree with the Examiner that Appellant’s cited examples
are not commensurate in scope with the claims. Final Act. 10; Ans. 5; In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (Unexpected results must be
“commensurate in scope with the degree of protection sought by the claimed
subject matter.”). The claims are directed to a genus of SACs, but the
experiments in the Specification are limited to a single species of SAC,
namely sodium hydrolyzed potato starch dodecenylsuccinate. See Spec. 44
(Example II, Table 2), 47 (Example IV, Table 4). Second, unexpected
results must be established by factual evidence. See In re Geisler, 116 F.3d
1465, 1470–71 (Fed. Cir. 1997). Appellant has not identified any location in
the Specification, or any other evidence of record, that characterizes the
Appeal 2020-003877
Application 14/858,164

7
purportedly better foaming based on more SAC (Example II) or on lack of
oil soluble polymers (Example IV) as unexpected. It is only Appellant’s
Brief that describes these results as unexpected, but attorney argument in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
CONCLUSION
We affirm the rejection of claims 1–5, 7–17, 19–22, 25–29, and 33–35
under 35 U.S.C. § 103 as unpatentable over Sunspheres and Fevola.
We affirm the rejection of claims 1, 3–5, 7–17, 19–22, 25–29, 30, and
32–35 under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and
Emollients.
We affirm the rejection of claims 1, 3–5, 7–17, 19–22, 25–29, 31, and
33–35 under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and
Xu.
We affirm the rejection of claims 1, 3–5, 7–17, 19–23, 25–29, and 33–
35 under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and
Terrisse.

Appeal 2020-003877
Application 14/858,164

8
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–17,
19–22, 25–
29, 33–35
103 Sunspheres, Fevola 1–5, 7–17,
19–22, 25–
29, 33–35

1, 3–5, 7–
17, 19–22,
25–29, 30,
32–35
103 Sunspheres, Fevola,
Emollients
1, 3–5, 7–
17, 19–22,
25–29, 30,
32–35

1, 3–5, 7–
17, 19–22,
25–29, 31,
33–35
103 Sunspheres, Fevola, Xu 1, 3–5, 7–
17, 19–22,
25–29, 31,
33–35

1, 3–5, 7–
17, 19–23,
25–29, 33–
35
103 Sunspheres, Fevola,
Terrisse
1, 3–5, 7–
17, 19–23,
25–29, 33–
35

Overall
Outcome:
1–5, 7–17,
19–23, 25–
35

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

Appeal 2020-003877
Application 14/858,164
1
UNITED STATES PATENT AND TRADEMARK
OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte
SUSAN DALY, PRITHWIRAJ MAITRA, and
BARRY SETIAWAN
Appeal 2020-003877
Application 14/858,164
Technology Center 1600
Before
ERIC B. GRIMES, JEFFREY N. FREDMAN, and
CYNTHIA M. HARDMAN,
Administrative Patent Judges.
HARDMAN,
Appeal 2020-003877
Application 14/858,164
2
Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
foaming sunscreen composition. The Examiner rejected the claims
as obvious under 35 U.S.C. § 103. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1–5, 7–17, 19–23, and 25–35 are on appeal. Final Act.
2. Claim 1, reproduced below, is illustrative:
1. A foaming sunscreen composition, comprising:
an oil-in-water emulsion, comprising
a continuous water phase comprising from about
0.75% to about 6% by weight of a superhydrophilic
amphiphilic copolymer, based on the total weight of the
foaming sunscreen composition; and
a discontinuous oil phase dispersed in the water
phase,
wherein the discontinuous oil phase comprises a UV
absorbing compound and is substantially free of oil
soluble polymers, and wherein the foaming sunscreen
composition is essentially free of monomeric
surfactant.
Appeal Br. 8 (Claims Appendix).
REFERENCES
The Examiner relied upon the following prior art references:
Name Reference Date
Fevola US 2011/0082105
A1
Apr. 7, 2011
Appeal 2020-003877
Application 14/858,164
3
Xu WO 2012/129722
A1
Oct. 4, 2012
Terrisse WO 2013/076691
A1
May 30, 2013
SUNSPHERES™ Hollow Sphere Technology An SPF Booster for
More Aesthetically Pleasing Formulations, February 2006, pp.
1–14 (on 02/02/2017 IDS) (“Sunspheres”)
Drugs.com entry for “Eucerin (topical emollients) (captured Feb. 2,
2012), https://www.drugs.com/mtm/eucerin.html (“Emollients”)
Appeal 2020-003877
Application 14/858,164
4
REJECTIONS
Claims 1–5, 7–17, 19–22, 25–29, and 33–35 stand rejected
under 35 U.S.C. § 103 as unpatentable over Sunspheres and Fevola.
Final Act. 4.
Claims 1, 3–5, 7–17, 19–22, 25–29, 30, and 32–35 stand
rejected under 35 U.S.C. § 103 as unpatentable over Sunspheres,
Fevola, and Emollients. Id. at 11.
Claims 1, 3–5, 7–17, 19–22, 25–29, 31, and 33–35 stand
rejected under 35 U.S.C. § 103 as unpatentable over Sunspheres,
Fevola, and Xu. Id. at 12.
Claims 1, 3–5, 7–17, 19–23, 25–29, and 33–35 stand rejected
under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola,
and Terrisse. Id. at 14.
OPINION
Because the same issues are dispositive of each of the four
obviousness rejections, we address the rejections together. See,
e.g., Appeal Br. 5–6 (for obviousness rejections over Sunspheres,
Fevola, and the additional references, Appellant relies only on
arguments made for the obviousness rejection over Sunspheres and
Fevola); Ans. 6–8. Additionally, Appellant did not argue the claims
separately. See generally Appeal Br. Thus, we select claim 1 as
representative, and the remaining claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Sunspheres discloses a composition
that meets all limitations of independent claim 1, except the limitation
reciting “from about 0.75% to about 6% by weight of a
superhydrophilic amphiphilic copolymer, based on total weight of the
foaming sunscreen composition.” See generally Final Act. 4–7. In
particular, the Examiner finds that Sunspheres discloses sunscreen
Appeal 2020-003877
Application 14/858,164
5
formulations that are oil-in-water emulsions (e.g., exemplary
formulation B), which (1) are free of monomeric surfactants; (2)
include UV-absorbing compounds in the oil phase; and (3) are free of
oil soluble polymers in the oil phase. Id. at 5–6 (citing Sunspheres 4,
5, 11).
As noted above, the Examiner finds that Sunspheres does not
teach inclusion of a superhydrophilic amphiphilic copolymer (“SAC”)
in the recited amount. Id. at 7. The Examiner finds that Fevola
teaches compositions, including sunscreens, comprising a SAC, and
teaches including SACs in an amount of 2–10% by weight (which
overlaps with the claimed amount). Id. (citing, e.g., Fevola ¶¶ 98,
220, 228). The Examiner finds that a person of ordinary skill in the
art would have been motivated to modify Sunspheres’ sunscreen
composition “by adding Fevola’s SACs in [an] amount of 2.0% of the
composition because FEVOLA teaches his SACs for use in
emulsions and sunscreens,” and because Fevola “teaches the SACs
of his invention provide excellent foaming” with reduced irritation. Id.
at 8; see also id. at 7 (citing, e.g., Fevola ¶¶ 2, 3, 6, 8).
We adopt the Examiner’s findings of fact and reasoning
regarding the scope and content of the prior art (id. at 4–8, 11–15),
and agree that the claims would have been obvious over the
identified prior art for the reasons the Examiner articulated. We
address Appellant’s arguments below.
Appellant argues that the Examiner has not provided a
sufficient motivation to combine Sunspheres and Fevola. Appeal Br.
5. Appellant focuses on the Examiner’s rationale that both references
are directed to creating more aesthetically pleasing formulations. Id.
(citing Final Act. 8). Appellant argues that Sunspheres is directed to
“[b]oosting SPF,” “which is not a matter of aesthetics,” but rather is “a
matter of effectiveness.” Id. Thus, Appellant argues, the Examiner
Appeal 2020-003877
Application 14/858,164
6
inappropriately characterizes the claims as a combination of two
compositions each of which is taught to be useful for the same
purpose, in order to form a third composition used for the very same
purpose. Id. (citing In re Kerkhoven, 626 F.2d 846, 850 (CCPA
1980)).
We are not persuaded that the Examiner has failed to provide a
sufficient motivation to combine Sunspheres and Fevola.
Sunspheres discloses oil-in-water sunscreen formulations that create
more aesthetically pleasing products, and Fevola teaches inclusion of
SACs in the claimed amounts in oil-and-water formulations, including
sunscreens, to obtain the benefits of low irritation and high foam,
which enhance the aesthetic appeal of the composition. Ans. 4–5
(citing Sunspheres 1; Fevola ¶ 99). Thus, both references “express a
desire to create aesthetically appealing formulations.” Id. at 5.
Moreover, the claimed combination is no more than “the predictable
use of prior art elements according to their established functions.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). As the
Examiner found (and Appellant did not dispute), “[t]he function of
SUNSPHERES’ sunspheres has not changed; . . . [and the] function
of FEVOLA’s superhydrophilic amphiphilic copolymers (SACs) has
not changed.” Ans. 4. “[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known
to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976).
Appellant argues that there are “unexpected advantages” to
using the claimed amount of SAC. Appeal Br. 5. Specifically,
Appellant argues that as shown in Table 2 of the Specification,
formulations E5 to E8, which contain the claimed amount of SAC,
“exhibit better foaming” compared to formulation C3, which contains
Appeal 2020-003877
Application 14/858,164
7
0.375% SAC, and “which exhibited much weaker foaming.” Id. (citing
Spec. 44 (Example II, Table 2)). Appellant also argues that
“formulations containing no oil soluble polymers (E8 and E12) exhibit
better foam quality compared to formulations containing oil soluble
polymers (C7 to C10). Addition of a polymeric oil soluble wax, film
former or emulsifier reduced or killed the foam.” Id. (citing Spec. 47
(Example IV, Table 4)).
We are not persuaded that Appellant has demonstrated
unexpected results. First, we agree with the Examiner that
Appellant’s cited examples are not commensurate in scope with the
claims. Final Act. 10; Ans. 5; In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) (Unexpected results must be “commensurate in scope with
the degree of protection sought by the claimed subject matter.”). The
claims are directed to a genus of SACs, but the experiments in the
Specification are limited to a single species of SAC, namely sodium
hydrolyzed potato starch dodecenylsuccinate. See Spec. 44
(Example II, Table 2), 47 (Example IV, Table 4). Second, unexpected
results must be established by factual evidence. See In re Geisler,
116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Appellant has not
identified any location in the Specification, or any other evidence of
record, that characterizes the purportedly better foaming based on
more SAC (Example II) or on lack of oil soluble polymers (Example
IV) as unexpected. It is only Appellant’s Brief that describes these
results as unexpected, but attorney argument in a brief cannot take
the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
CONCLUSION
We affirm the rejection of claims 1–5, 7–17, 19–22, 25–29, and
33–35 under 35 U.S.C. § 103 as unpatentable over Sunspheres and
Fevola.
Appeal 2020-003877
Application 14/858,164
8
We affirm the rejection of claims 1, 3–5, 7–17, 19–22, 25–29,
30, and 32–35 under 35 U.S.C. § 103 as unpatentable over
Sunspheres, Fevola, and Emollients.
We affirm the rejection of claims 1, 3–5, 7–17, 19–22, 25–29,
31, and 33–35 under 35 U.S.C. § 103 as unpatentable over
Sunspheres, Fevola, and Xu.
We affirm the rejection of claims 1, 3–5, 7–17, 19–23, 25–29,
and 33–35 under 35 U.S.C. § 103 as unpatentable over Sunspheres,
Fevola, and Terrisse.
Appeal 2020-003877
Application 14/858,164
9
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5,
7–17,
19–22,
25–29,
33–35
103 Sunspheres, Fevola 1–5,
7–17,
19–22,
25–29,
33–35
1, 3–5,
7–17,
19–22,
25–29,
30, 32–35
103 Sunspheres, Fevola,
Emollients
1, 3–5,
7–17,
19–22,
25–29,
30, 32–35
1, 3–5,
7–17,
19–22,
25–29,
31, 33–35
103 Sunspheres, Fevola,
Xu
1, 3–5,
7–17,
19–22,
25–29,
31, 33–35
1, 3–5,
7–17,
19–23,
25–29,
33–35
103 Sunspheres, Fevola,
Terrisse
1, 3–5,
7–17,
19–23,
25–29,
33–35
Overall
Outcome
:
1–5,
7–17,
19–23,
25–35
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