The Procter & Gamble Company

Patent Trials and Appeals Board

Jul 13, 2020

2020000064 (P.T.A.B. Jul. 13, 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.
14/857,035 09/17/2015 Matthew James MCILDOWIE AA979M 2066
27752 7590 07/13/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
WILSON, KAYLEE R
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
07/13/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW JAMES MCILDOWIE and
JEFFREY DAVID EDWARDS
Appeal 2020-000064
Application 14/857,035
Technology Center 3700
BEFORE JAMES P. CALVE, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. 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(a). Appellant identifies the real party in interest as The Procter &
Gamble Company. Appeal Br. 1.
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Application 14/857,035

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CLAIMED SUBJECT MATTER
The claims are directed to a cosmetic skin care product and methods
of making and using the same. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A cosmetic skin care product, comprising:
a. an applicator comprising a substrate with a magnetic array
embedded therein, the magnetic array comprising a first layer of
at least one dipolar pair of alternating magnetic poles with a first
layer pitch of between 1 mm and 3.5 mm and a first layer
magnetic field strength of between 12 mT and 30 mT; and
b. a skin care composition comprising 0.0005% to 10% of a
vitamin B3 compound and a dermatologically acceptable carrier,
wherein the magnetic array enhances penetration of the vitamin
B3 compound into skin.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Smith US 2002/0193831 A1 Dec. 19, 2002
Robinson US 2007/0264210 A1 Nov. 15, 2007
Edwards US 2013/0144109 A1 June 6, 2013
REJECTIONS
Claims 1–11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Edwards and Robinson.
Claims 12–15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Edwards and Smith.
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OPINION
Edwards/Robinson – Claims 1–11
The Examiner finds that Edwards teaches the “applicator” recited in
claim 1, along with all of the recited features associated with the
“applicator.” Final Act. 3. The Examiner additionally finds that Edwards
teaches a “skin care composition comprising an effective amount of an
active agent including vitamins,” but “is silent to the vitamin specifically
being 0.0005% to 10% vitamin B3.” Id. The Examiner finds that Robinson
teaches the “skin care composition” recited in claim 1, as well as use of “an
energy delivery enhancement device.” Id. at 4.
Appellant does not dispute these findings. See Appeal Br. 3–5.
Although Appellant alleges that “Edwards does not teach or suggest the
‘specific arrangement of magnetic elements’ that would be suitable for use
with a vitamin B3 compound,” Appellant does not allege any element from
the “applicator” recited in claim 1 is missing from Edwards. Id. at 3.
Appellant explains that “[t]he present application discloses that even small
departures from the proper configuration of the magnetic array may result in
unsatisfactory penetration of the vitamin B3 compound.” Id. at 4 (citing
Spec. 15:1–7). Appellant contends that “Edwards and Robinson do not
provide the necessary teaching or suggestion to enable a skilled artisan to
overcome the problems of tailoring a magnetic array to specifically enhance
penetration of a vitamin B3 compound.” Id.
One problem with Appellant’s contention is that there is no dispute
that the magnetic array in the applicator of Edwards meets all of the
structure required by claim 1 (i.e., there are no modifications required).
Appellant’s Specification explains that its “applicator includes a magnetic
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array specifically tailored to provide improved penetration of a specific skin
care active, such as a vitamin B3 compound.” Spec. 10:29–30. As in
claim 1, the Specification explains that this is achieved using “magnetic
array(s) . . . formed of one or more dipole pairs of magnetic elements where
magnetic poles of opposite polarity (N and S) are positioned adjacent one
another and the magnetic field extends between adjacent opposing poles.”
Id. at 11:8–10. The Specification further explains that
[a] suitable unidirectional array may have a thickness of between
0.2mm, 0.3mm, 0.4mm or 0.5mm and 0.6mm, 0.7mm, 0.8mm,
0.9mm or 1 mm, a pitch (center to center distance between poles)
of 1mm, 1.5mm or 2mm to 2.5mm, 3mm or 3.5mm between
adjacent poles, leading to an overall magnetic field strength of
between 12mT, 14mT, 15mT, 17.5mT or 20mT to 22.5mT,
25mT, 28mT or 30mT,
which corresponds to the properties of the array recited in claim 1, and
which Appellant does not dispute are present in Edwards. Spec. 15:13–18.
With no dispute regarding the Examiner’s finding that Edwards
teaches the applicator of claim 1, Appellant’s contention that Edwards
“do[es] not provide the necessary teaching or suggestion to enable a skilled
artisan to overcome the problems of tailoring a magnetic array to specifically
enhance penetration of a vitamin B3 compound” is unpersuasive. Appellant
offers no reasoned explanation based on supporting evidence supporting this
contention. Moreover, to the extent the disclosure of Edwards is missing
features required to be enabling, those features are unspecified by Appellant
in this appeal and also appear to be missing from Appellant’s Specification.
See, e.g., In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994).
As for the combination of Edwards’s applicator with Robinson’s
composition, Appellant concludes that “the skilled [artisan] would not be
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prompted to simply combine a magnetic array of Edwards with the
niacinamide-containing composition of Robinson and reasonably expect it to
yield nothing more than predictable results.” Appeal Br. 4–5. Notably
missing from the Appeal Brief is any explanation supporting this conclusion.
Although the Specification explains, for example, that “[s]urprisingly, it has
been discovered that by pairing a specifically tailored magnetic array with a
particular skin care active, penetration of the active into skin can be
enhanced in a controllable way” (Spec. 5:8–10), Appellant offers no
evidence to support such a proposition. To the extent Appellant intends to
assert that the claimed arrangement produces unexpected results, the record
is devoid of any evidence whatsoever in this regard.
Based on the record before us, the Examiner has established with
undisputed evidence that the applicator and composition recited in claim 1
were known in the art. Moreover, Edwards teaches that its arrangement is
configured for enhanced delivery of a wide range of substances to the skin
including vitamins, nutrients, and minerals, as the Examiner correctly finds.
Edwards ¶¶ 1, 119, 147; see Ans. 3. Appellant offers no meaningful to
dispute as to the Examiner’s reasoning for combining the known applicator
and composition. See, e.g., Final Act. 4.
For at least these reasons, we are not apprised of error in the rejection
of claim 1. Appellant does not provide separate argument for the
patentability of claims 2–11, which depend from claim 1.
Edwards/Smith – Claims 12–15
Appellant reasserts the unpersuasive arguments presented for claim 1
for the patentability of claims 12–15. Accordingly, we are also not apprised
of error in the rejection of claims 12–15.
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Moreover, we note that claim 12 is directed to “[a] method of making
a skin care product” and claim 14 is directed to “[a] method of cosmetically
regulating a skin condition.” The Examiner’s rejection of these claims is
based on a different combination of references (Edwards and Smith) than the
rejection of claim 1 (Edwards and Robinson). Appellant does not address
Smith in any meaningful way. See Appeal Br. 5 (only alleging that “the
Office has not shown how Smith overcomes the lack of disclosure of
Edwards discussed above,” and “Edwards and Smith do not teach or suggest
how to tailor a magnetic array to enhance penetration of a vitamin B3
compound,” without further explanation). Nor does Appellant address the
combination of Smith’s teachings with those of Edwards. See id. (simply
alleging that “[a]bsent . . . teaching or suggestion [from Edwards or Smith],
the skilled artisan would not reasonably be expected to successfully
reproduce the methods recited in pending claims 12 and 14”). The rejection
of these claims is effectively unrebutted because there is no dispute that
Edwards teaches the applicator/magnetic arrays recited in the methods of
claims 12 and 14, and the further method steps are not addressed.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 103 Edwards, Robinson 1–11
12–15 103 Edwards, Smith 12–15
Overall
Outcome
1–15
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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