Raluca Lorant et al.Download PDFPatent Trials and Appeals BoardMay 21, 20202019000459 (P.T.A.B. May. 21, 2020) 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. 12/813,564 06/11/2010 Raluca LORANT 361014US0/jot 7245 22850 7590 05/21/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER YU, HONG ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 05/21/2020 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 following e-mail address(es): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RALUCA LORANT, LAURE FAGEON, and KARL BOUTELET Appeal 2019-000459 Application 12/813,564 Technology Center 1600 ____________ Before ULRIKE W. JENKS, JOHN G. NEW, and MICHAEL A. VALEK, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 files this appeal from Examiner’s decision to reject claims directed to an emulsion containing a superabsorbent polymer as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as L’Oréal of Paris, France. Appeal Br. 2. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2019-000459 Application 12/813,564 2 STATEMENT OF THE CASE Claims 1, 4, 10–12, 16, 17, 20–22, 24, and 252 are on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1, is representative of the claims on appeal, and reads as follows: 1. A composition in the form of an emulsion comprising an aqueous phase in an amount of 0.1 to 99% by weight of the composition, a fatty phase in an amount of 1 to 80% by weight of the composition, a superabsorbent polymer, an organic UV screening agent in an amount of 0.5 to 30% by weight of the composition, and one or more cosmetically acceptable ingredients selected from the group consisting of a hydrophilic gelling agent, a lipophilic gelling agent, a hydrophilic thickening agent, a hydrophobic thickening agent, a moisturizing agent, an emollient, a hydrophilic active principle, a hydrophobic active principle, a sequestering agent, a preservative, and a fragrance, wherein the superabsorbent polymer is present in an amount of 0.03 to 15% by weight of the composition, is a cross- linked sodium polyacrylate, and is in the form of spherical particles, and wherein the composition does not include fibers and the composition does not include a fungal extract. Appeal Br. 18 (Claims Appendix). REFERENCE(S) The prior art relied upon by Examiner is: Name Reference Date Collette et al. (“Collette”) US 5,807,916 Sep. 15, 1998 Deckner et al. (“Deckner”) US 5,700,452 Dec. 23, 1997 Petersen WO 2008/058755 A1 May 22, 2008 Sanwet IM – Law citations.com, 2 Claims 13 and 15 are withdrawn. Appeal Br. 2. Appeal 2019-000459 Application 12/813,564 3 http://www.lawcitations.com/case/n/sanwet-im (last accessed January 14, 2016) (“Sanwet”) REJECTIONS The claims stand rejected as follows: I. Claims 1, 4, 10–12, 16, 22, 24 and 25 are rejected under pre-AIA 35 U.S.C. §103(a) over Deckner as evidenced by Sanwet in view of Collette. II. Claim 17 is rejected under pre-AIA 35 U.S.C. §103(a) over Deckner, Sanwet, and Collette and further in view of Petersen. III. Claims 20 and 21 are rejected under pre-AIA 35 U.S.C. § 103(a) over Deckner as evidenced by Sanwet and Collette. I. Obviousness over Deckner, Sanwet, and Collette The issues are: Does the preponderance of evidence of record support Examiner’s conclusion that Deckner’s disclosure of the superabsorbent polymer Sanwet (RTM) IM-1000 renders the claims prima facie obvious? If so, has Appellant presented evidence of secondary considerations, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non-obviousness? A. Findings of Fact (FF) FF1 Deckner teaches an oil-in-water emulsion comprising: (a) from about 0.1 % to about 20% dihydroxyacetone; (b) from about 0.1 % to about 30% of a sunscreen agent; (c) from about 0.1 % to about 10.0% of a crosslinked cationic polymer . . . ; (d) from about 0.1 % to about 10% of a cationic emulsifier; and Appeal 2019-000459 Application 12/813,564 4 (e) from about 30% to about 99.6% water; wherein said composition has a pH from about 2.5 to about 7. Deckner 3:1–15. FF2 Deckner teaches numerous sunscreen agents for incorporation into the oil-and-water emulsion including 4,4'-methoxy-t-buyl- methoxydibenzoylmethane. Id. at 7:55–56; see generally at 6:41–7:58. FF3 Deckner teaches optional components in the oil-in-water emulsion include fatty alcohols, humectants, emollients, as well as additional ingredients such as fragrances and essential oils among others. See generally at 9:61–11:37. FF4 Deckner teaches that fatty alcohols can comprise from about 0.1% to about 10% of the composition. Id. at 10:2–3. Examples of suitable fatty alcohols include stearyl alcohol, oleyl alcohol, and linoleyl alcohol among others. Id. at 10:13–14. FF5 Deckner teaches that humectants can comprise from about 0.1% to about 20% of the composition. Id. at 10:22. Deckner teaches numerous suitable humectants for incorporation into the oil-in- water emulsion including “starch-grafted sodium polyacrylates such as Sanwet (RTM) IM-1000, IM-1500, and IM-2500.” Id. at 10: 27–39, see generally 10:20−54. FF6 Deckner teaches that the emollients can comprise from about 0.5% to about 50% of the composition. Id. at 10:66–67. Suitable emollients include for example silicone oils. Id. at 59; see generally id. at 10:55–11:2. Appeal 2019-000459 Application 12/813,564 5 FF7 Sanwet teaches that superabsorbers, such as Sanwet IM 1000, a cross linked polymer “can absorb as much as 1000 times their weight in deionized water.” Sanwet. “Sanwet IM 1000 [is] composed of cross linked starch grafted polyacrylates made from starch and acrylic acid.” Id. FF8 Collette teaches that acrylic superabsorbent resins, have traditionally been produced essentially by two different methods of polymerization: polymerization in solution, which yields polymer masses which must subsequently be ground again and classified to obtain a powder of particles of suitable particle size, and polymerization in inverse suspension, the direct result of which is a powder whose components are more or less spherical polymer particles. Collette 1: 35–47. Collette describes that one of the problems with producing particles by inverse suspension, in the absence of agglomeration, results in powders that are excessively fine. See id. at 1:48–52. Collette teaches that the disadvantage of the two-step inverse suspension preparation process is the high energy consumption. See id. at 2:27–42. Collette describes a process for producing superabsorbent polymer that produces spherical particles without the noted problems of producing fine powders or the high energy consumption. See id. at 2:44–53. B. Analysis Examiner finds that Deckner teaches an oil-in-water emulsion containing water, fatty alcohol, emollient, emulsifier, and sunscreen. Final Act. 4; see FF1–FF6. Examiner relies on Sanwet to establish that Sanwet IM-1000, one of the emulsifiers listed in Deckner, is a superabsorbent Appeal 2019-000459 Application 12/813,564 6 polymer. Final Act. 4 (“an emulsifier, from about 1 % to about 5% of starch- grafted sodium polyacrylates such as Sanwet IM-1000”); FF7. Neither Deckner nor Sanwet disclose the physical shape of the particles of superabsorbent polymer Sanwet IM-1000. Examiner relies on Collette to establish that spherical superabsorbent polymers are known. Final Act. 4; FF8. Based on these disclosures, Examiner concludes: It would have been prima facie obvious at the time of the invention to a person of ordinary skill in the art to combine the teachings in Deckner et al. and Collette et al. to specify the superabsorbent particles in the composition taught by Deckner et al. being spherical. Superabsorbent particles being spherical was well known to a person of ordinary skill in the art at the time of the invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose. Absent some demonstration of unexpected result it would have been obvious to one of ordinary skill in the art to specify the superabsorbent particles in the composition taught by Deckner et al. being spherical with predictable results to one of ordinary skill in the art at the time of the invention. Final Act. 5 (emphasis removed). Appellant contends: (1) that the genus of optional ingredients in Deckner is vast (Appeal Br. 8 (“Deckner lists about 100 different alternative optional ingredients . . . which amounts to about 9 x 10157 different possible combinations”) and without guidance with respect to the criticality of the ingredients (see id.); (2) that Examiner has not articulated a sufficient rationale for making the combination (see id. at 6, 9); (3) that Examiner is relying on hindsight to arrive at the present invention (Appeal Br. 6; Reply Br. 2); and (4) that their unexpected results have not been given sufficient weight (id. at 11–16). Appeal 2019-000459 Application 12/813,564 7 We have reviewed Appellant’s contentions in light of Examiner’s cited art and find that the preponderance of the evidence supports Examiner’s conclusion that the claims are obvious. We address Appellant’s contentions below: 1. Size of genus We are not persuaded by Appellant’s contention that Examiner failed consider the size of the genus of materials listed as optional components in Deckner. See Appeal Br. 8–9 (citing Proctor & Gamble Co. v. Teva Phann. USA, Inc., 566 F.3d 989, 996-97 (Fed. Cir. 2009)). Here, the issue is not the selection of a lead compound that is then further modified. Deckner discloses a product that is an oil-in-water emulsion containing dihydroxyacetone, sunscreen agent, cross-linked cationic polymer, and water. FF1. It is to this base composition that the Deckner suggests adding additional optional ingredients from a list. See FF2–FF6. We are not persuaded that selecting a known compound from a prior art list is not obvious, because Perricone rejected “the notion that [a compound] cannot anticipate because it appears without special emphasis in a longer list.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005). The size of genus (i.e., a “laundry list”) argument is also unpersuasive because the instant rejection is for obviousness and Arkley notes that “picking and choosing may be entirely proper in the making of a 103, obviousness rejection.” Arkley, 455 F.2d 586, 587 (CCPA 1972). Additionally, the disclosure of “a multitude of effective combinations does not render any particular formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Appeal 2019-000459 Application 12/813,564 8 We do not find Deckner’s list of optional humectants excessively large. See Deckner 10:20–54; FF5; see Final Act. 4 (Examiner identifies Sanwet IM-1000 as an emulsifier). Deckner discloses starch-grafted sodium polyacrylates generally as a type of humectant and then recites specific examples of Sanwet (RTM) IM-1000, IM-1500, and IM-2500. Here, Examiner is not relying on the generic disclosure of starch-grafted sodium polyacrylates, but instead is relying on the specifically recited Sanwet polymers as meeting the super absorbent polymer limitation of the claims. Consequently, in the absence of evidence of secondary considerations, we agree with Examiner’s finding that selection of known elements specifically recited in Deckner’s list obvious. Accordingly, we are not persuaded by Appellant’s size of the genus argument. 2. Articulated rationale We are not persuaded by Appellant’s contention that Examiner has not set out an articulated rationale to arrive at the conclusion that the combination of references renders the claims obvious. Appeal Br. 6, see id. at 9. The flexible analysis set out by the Supreme Court in KSR recognizes the obviousness of pursuing known options within the technical grasp of the skilled artisan, e.g., known equivalents. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see In re Omeprazole Patent Litig., 483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . . error in [the] conclusion that it would have been obvious to one skilled in the art to substitute one ARC [alkaline reactive compound] for another.”). In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on Appeal 2019-000459 Application 12/813,564 9 applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. In re Ruff, 256 F.2d 590 (CCPA 1958). However, an express suggestion to substitute one equivalent component for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297 (CCPA 1982). Here, Examiner relies on Deckner for teaching all the elements of an emulsion, including using an emulsifier such as the Sanwet material. Final Act. 4–5; FF1–FF6. Examiner establishes that Sanwet is a superabsorbent material. See Final Act. 4; FF7. Neither Deckner nor Sanwet provide any information with respect to the shape of the this superabsorbent material. FF5, FF7. Examiner relies on Collette to specify that superabsorbent spherical particles were known and that based on their superabsorbent quality they would be exchangeable with other superabsorbent polymers because regardless of their particle shape they are “recognized in the prior art as useful for the same purpose.” Final Act. 5. We agree with Examiner that Collette reasonably establishes that there are two traditional forms of superabsorbent polymers. Collette teaches that the polymerization method determines the shape of the polymer product. FF8. In one production method, after polymerization the superabsorbent material must first be ground down and then classified by size. FF8. In the other method, using inverse suspension, Collette describes that the particles produced have a spherical shape. FF8. Collette’s entire disclosure is directed to improving the production of spherically shaped superabsorbent polymers. FF8. More importantly, however, Collette establishes that using the traditional production methods there are limited shapes with respect to superabsorbent polymers. Appeal 2019-000459 Application 12/813,564 10 Here, Examiner established that the Sanwet material disclosed in Deckner is a superabsorbent polymer but the shape of that particular polymer is not known based on the disclosed references. See FF5, FF7. Collette establishes that following traditionally production methods a superabsorbent polymer would either have a spherical shape or a random non-spherical shape. Examiner’s rationale is that “[t]he motivation for specifying [i.e. substituting one shape of superabsorbent polymer form another] flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.” Final Act. 5. The preponderance of the evidence of record establishes that the different shaped superabsorbent polymers are known equivalents and, therefore, we agree with Examiner that substituting one for the other would be obvious. See KSR, 550 U.S. at 421. Accordingly, we are not persuaded by Appellant’s contention that Examiner has not articulated a sufficient motivation for arriving at the claimed invention. 3. Alleged hindsight We are not persuaded by Appellant’s contention that Examiner relies on hindsight to arrive at the conclusion that the claims are rendered obvious based on the cited art. Appeal Br. 6; Reply Br. 2. While we are fully aware that hindsight bias often plagues determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it Appeal 2019-000459 Application 12/813,564 11 takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971). Appellant has not directed us to any information relied on by Examiner that could have only been gleaned from Appellant’s Specification and was not available in the references cited by Examiner. Here, Examiner relies on the disclosure of Deckner to teach and emulsion containing dihydroxyacetone, a sunscreen agent, a cross-linked cationic polymer, a cationic emulsifier, and water in addition to other optional ingredients such as fatty alcohols, humectants, emollients. FF1–FF7. We recognize that picking and choosing among various disclosures is inappropriate in an anticipatory rejection, however, [s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art. In re Arkley, 455 F.2d at 587–88. Here, the list of optional fatty acids, humectants, and emollients is not excessively long. Conceivably, while unlikely, nothing would prevent the skilled artisan from including several or all of them in a single composition. Appellant has not explained why picking and choosing in the context of the current obviousness rejection is not appropriate, and we agree with Examiner’s rationale for selecting and combining the teachings as set forth in the Final Action and Answer. 4. Unexpected results Appellant contends that “the combination of [spherical] superabsorbent polymer and organic uv screening agent was particularly Appeal 2019-000459 Application 12/813,564 12 beneficial is clear when considering that other polymeric materials did not nor could not achieve these considerable improvements.” Appeal Br. 12; see also Lorant3 Dec. ¶ 11 (“the examples in the above-identified application show quite clearly that a certain type of grafted sodium polyacrylate, i.e., those in spherical form, yield these improvements discussed in the application text whereas otherwise similar material, i.e., crosslinked sodium polyacrylate not in spherical form, did not yield these considerable improvements.”), ¶ 12 (“this comparison shows the importance of the spherical nature of the material within the general class of crosslinked polyacrylates as a group of materials.”). Examiner’s position is that the disclosure in the Specification is not sufficient to establish that the improved skin feel is due to the shape of the polymer as opposed to the superabsorbent quality of the spherical polymer. [T]he difference between the polymers in example 1 and example 2 and 3 appears not to be the shape, rather that the polymer in example 1 (inventive) is superabsorbent while examples 2 and 3 (comparative) are non-superabsorbent; i.e., the instant specification might at best (purely arguendo) demonstrate a purported improvement being the result of superabsorbent polymer over non-superabsorbent polymer, not a difference of the shape. Ans. 4 (emphasis removed). Accordingly, Examiner’s position is that Appellant’s argument, as supported by the Lorant Declaration, is not persuasive because it does not establish that the non-tachy effect of the composition is based on the shape of the superabsorbent polymer. See Ans. 5. We agree with Examiner that Appellant has not provided evidence in this 3 Declaration under 37 C.F.R. § 1.132 by Raluca Lorent signed September 22, 2017. Appeal 2019-000459 Application 12/813,564 13 record to support the position that it is the shape and not the superabsorbent character that provides the beneficial skin feel effect. We find no evidence that Examiner dismissed or otherwise did not consider Appellant’s evidence of unexpected results. See Appeal. Br. 11. Specifically, Appellant contends that the comparison in the examples in the Specification are between two cross-linked sodium polyacrylates. Appeal Br. 12; see Lorant Dec. ¶ 11. The point is not that Examiner finds that Appellant did not make a comparison between polyacrylates, the problem is that the cross-linked sodium polyacrylate (Cosmedia SP from Cognis) is acknowledged in the Specification to not be a superabsorbent polymer. See Spec. 30: 4–9 (“A composition according to the invention (Example l) comprising a lipophilic screening agent and a superabsorbent polymer and two comparative compositions (Examples 2 and 3) comprising a lipophilic sunscreen and acrylic polymers which are not superabsorbent.” (emphasis added)). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Thus, the comparison presented by Appellant, and the Lorant Declaration, is between a superabsorbent polymer and a polymer that is not a superabsorbent material. The fact that these two polymers may also have different shapes does not persuade us that it is the shape rather than the superabsorbent characteristic of the polymer that provides the improved skin feel of the sunscreen active. The comparison, therefore, is not to the closest prior art – in this case Deckner’s Sanwet material – which Examiner established is a superabsorbent polymer. Accordingly, we agree with Appeal 2019-000459 Application 12/813,564 14 Examiner that the evidence presented is not sufficient to overcome the rejection. C. Conclusion We conclude, considering the totality of the cited evidence and arguments, that the preponderance of the evidence supports Examiner’s conclusion of obviousness with respect to claim 1, and Appellant has not provided sufficient rebuttal evidence that outweighs the evidence supporting Examiner’s conclusion. As Appellant does not argue the claims separately, claims 4, 10–12, 16, 22, 24, 25 fall with claim 17. 37 C.F.R. § 41.37 (c)(1)(iv). II. Obviousness over Deckner, Sanwet, Collette, and Petersen Appellant contends that Deckner teaches the use of a cationic emulsifier, but Examiner has not established that inulin lauryl carbamate is such a cationic emulsifier. Appeal Br. 11. Deckner describes the use of cationic emulsifiers in the oil-in-water emulsion. FF1. Petersen describes Inutec SP1 (inulin lauryl carbamate, Orafti) as being a surfactant as well as an emulsion stabilizer. Petersen 38 (claim 7), id. at 41 (claim 23). Based on these disclosures, Examiner concludes that “a person of ordinary skill in the art can readily envisage replacing the cationic emulsifier taught of the prior art with, or adding an additional inulin lauryl carbamate stabilizer thereto.” Ans. 6 (emphasis added); see also Final Act. 6 (“Emulsion containing an emulsifier and inulin lauryl carbamate as emulsifier were well known. . . . The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.”). Thus, Appeal 2019-000459 Application 12/813,564 15 Examiner provides two alternative theories of obviousness, substitution of one emulsifier with another emulsifier, or adding an additional emulsifier into Deckner’s composition. Here, Deckner’s disclosure lists a cationic emulsifier as a necessary ingredient. FF1. Therefore, we agree with Appellant, that without knowledge whether inulin lauryl carbamate is a cationic emulsifier there is no reasonable expectation of success of substituting inulin lauryl carbamate for Deckner’s cationic emulsifier. Examiner’s alternative theory, however, based on adding additional emulsifier to Deckner’s composition does not require knowledge beyond identifying that inulin lauryl carbamate is an emulsifier. See Petersen 38 (claim 7), id. at 41 (claim 23); Final Act. 6. Deckner’s composition does prohibit adding additional ingredients. See FF1–FF6. Accordingly, we find no error with Examiner’s conclusion that it would be obvious based on the combination of references to include an additional emulsion stabilizer such as inulin lauryl carbamate into Deckner’s oil-in-water emulsion. III. Obviousness over Deckner, Sanwet, and Collette Appellant does not request review of the obviousness rejection of claims 20 and 21. We therefore summarily affirm this rejection for the reasons set out by Examiner in the Final Office Action and Answer. See MPEP § 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, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Appeal 2019-000459 Application 12/813,564 16 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 10–12, 16, 22, 24, 25 103(a) Deckner, Sanwet, Collette 1, 4, 10–12, 16, 22, 24, 25 17 103(a) Deckner, Sanwet, Collette, Petersen 17 20, 21 103(a) Deckner, Sanwet, Collette 20, 21 Overall Outcome 1, 4, 10–12, 16, 17, 20−22, 24, 25 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 Copy with citationCopy as parenthetical citation