WHITE, Geoffrey et al.

Patent Trials and Appeals Board

Oct 8, 2019

14925125 - (D) (P.T.A.B. Oct. 8, 2019)

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.
14/925,125 10/28/2015 Geoffrey WHITE 458678US99 4937
22850 7590 10/08/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PALENIK, JEFFREY T
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
10/08/2019 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 GEOFFREY WHITE and BRIAN SCOTT BODNAR1
__________

Appeal 2019-000035
Application 14/925,125
Technology Center 1600
__________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
MICHAEL A. VALEK, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to a
sunscreen composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
“‘Oil-free’ compositions are preferred for certain applications in the
cosmetics industry because of their water content.” Spec. 1:16–17. However,

1 Appellant identifies the real party-in-interest as L’Oréal. Appeal Br. 1. We
use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a).
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“despite perceived benefits from water content, such water-based
compositions can be problematic when acrylate-based thickeners are used,
resulting in unstable, tacky and/or pilling compositions.” Id. at 1:20–22.
The Specification discloses a composition comprising, among other
components, a “copolymer comprising at least one monomer comprising a
carboxylic acid containing α,β-unsaturation, at least one monomer
containing an ester of a carboxylic acid containing α,β-unsaturation, and at
least one monomer containing an oxyalkylenated fatty alcohol.” Id. at 7:12–
15. “As an example, Aculyn 22 sold by the company Rohm & Haas, which
is a methacrylic acid/ethyl acrylate/oxyalkylenated stearyl methacrylate
terpolymer (also known as Acrylates/Steareth-20 Methacrylate Copolymer)
is acceptable.” Id. at 8:8–10.
The Specification states that
combining the copolymer with [a] hydrophilic sunscreen agent
comprising a sulfonic acid group resulted in a very thin,
unstable mixture. Combining the copolymer with surfactants
resulted in a very thick, stable composition which pilled upon
application. However, compositions of the present invention
containing copolymer, the required surfactants and the required
sunscreen active agent were thick . . . and stable and did not pill
upon application.
Id. at 21:6–13.
Claims 1–12, 14, 17, and 20–24 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A composition comprising (1) water, (2) at least one
hydrophilic sunscreen active agent comprising a sulfonic acid
group, (3) at least one surfactant selected from the group
consisting of alkoxylated fatty alcohols, sorbitan esters,
alkoxylated silicones, and mixtures thereof, (4) at least one
copolymer comprising at least one monomer comprising a
carboxylic acid containing α,β-unsaturation, at least one
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monomer containing an ester of a carboxylic acid containing
α,β-unsaturation, and at least one monomer containing an
oxyalkylenated fatty alcohol, and (5) at least one coloring
agent, wherein the surfactant(s) and copolymer(s) are present in
a weight ratio between 3:1 and 1:3 and wherein the hydrophilic
sunscreen active agent(s) and copolymer(s) are present in a
weight ratio between 3:1 and 1:3.

Claim 20 is also independent and is directed to a method of preparing
a composition comprising combining the components recited in claim 1.
DISCUSSION
The Examiner has rejected claims 1–12, 14, 17, and 20–24 under 35
U.S.C. § 103 as obvious based on Wang2 and Loeffler.3 Final Action4 4. The
Examiner finds that Wang teaches “personal care compositions which
comprise water and at least one sun care active . . . [,] including
phenylbenzimidazole sulfonic acid.” Id. The Examiner finds that Wang also
“discloses different surfactant compounds including, for example, fatty acids
and their alkoxylates.” Id.
The Examiner finds that Wang “teaches that the composition will
further comprise at least one rheology modifier (thickener) such as Acrylates
Steareth-20 Methacrylate Copolymer.” Id. “The use of colorants or pigments
is taught.” Id. at 5. The Examiner thus finds that Wang discloses all of the
components recited in claim 1.
Regarding the ratio of surfactant to copolymer, the Examiner finds
that “[s]urfactants are taught as being preferably present in the composition

2 Wang et al., US 2014/0202485 A1, published July 24, 2014.
3 Loeffler et al., US 2010/0278763 A1, published November 4, 2010.
4 Office Action mailed Dec. 6, 2017.
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in an amount ranging from 0.1–5 wt% of the composition . . . as are
thickeners,” and concludes that a skilled artisan “would have been adept at
establishing the instantly claimed weight ratio [of] copolymers to surfactant
(e.g., 1:1).” Id. at 4–5.
Regarding the ratio of copolymer to sunscreen, the Examiner finds
that Wang discloses “a preferred weight percent range for methylcellulose
ether which appears to be a preferred active ingredient,” and thus suggests a
preferred amount of 5–40 wt% for actives, including sun care actives. Id. at
5. Alternatively, the Examiner reasons that “the amount of sunscreen active
ingredient would be . . . a result-effective parameter in its ability to convey
protection against the sun” and therefore the optimum or workable range of
sunscreen would be adjusted through routine experimentation. Id. at 5–6.
(The Examiner relies on Loeffler only with regard to the specific surfactants
that are required by claims 9–11. Ans. 6.)
Appellant argues that “the art associated with using and combining the
required ingredients was unpredictable and unexpected. It was not clear how
to use or combine the required ingredients to yield an acceptable product.”
Appeal Br. 8. Specifically, Appellant points to the Specification’s disclosure
that subcombinations of the components of claim 1 were unsatisfactory:
Mere combination of hydrophilic sunscreen agent(s) and the
required copolymer(s) did not work (the composition breaks
down or loses viscosity, and copolymer/pigment compatibility
is not good). Also, mere combination of the required
copolymer(s) and the required surfactant(s) did not work
(pilling occurs). And compositions containing acrylic-based
thickeners were tacky and pilled upon application.
Id. at 7. Thus, Appellant argues, the evidence shows that combining some
but not all of the ingredients required by the claims resulted in undesirable
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products. Id. at 5. Appellant argues that neither Wang nor Loeffler suggests
that combining the specific ingredients required by the claims would
produce an acceptable product. Id. at 8–9.
We agree with Appellant that the rejection on appeal is not supported
by a preponderance of the evidence. Wang discloses personal care
compositions. Wang ¶ 1. Wang states that its compositions comprise “water,
a methylcellulose that gels at 45° C or less,” and a personal care active
agent, which can be a “hair fixative polymer, moisturizer, conditioner,
humectant, cationic conditioning polymer, anti-aging active, or sun care
active.” Id. ¶ 5. The sun care active can be a sunscreen, and suitable
sunscreens include phenylbenzimidazole sulfonic acid and sulisobenzone,
which have a sulfonic acid group. Id. ¶ 36; see also Spec. 11:9–10.
Wang discloses that—in addition to water, methylcellulose, and an
active agent—its compositions can include “one or more rheology modifier
polymers such as, for example, Acrylates Steareth-20 Methacrylate
Copolymer.” Id. ¶ 17. The compositions can also include an emulsifier or
surfactant; “[a]nionic surfactants include soaps or salts of fatty acids . . . or
their alkoxylates.” Id. ¶ 29. “[T]he personal care compositions of the present
invention further comprise at least one additional ingredient. Optional
ingredients include any suitable substance for personal care compositions,
for example, colorants,” etc. Id. ¶ 37.
Thus, based on Wang, it would have been obvious to make a
composition comprising water, methylcellulose, and a sunscreen active
agent comprising a sulfonic acid group, and to include other optional
ingredients for their known functions in personal care compositions,
including a surfactant such as a fatty acid alkoxylate, a rheology modifier
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such as Acrylates Steareth-20 Methacrylate Copolymer, and/or a coloring
agent. Wang’s description of including certain compounds for certain
functions would have provided a reason to combine those components in
order to produce a composition having the combined properties of its
components.
Appellant’s Specification, however, provides evidence that each of the
components recited in claim 1 does not independently provide its known
function to a composition when combined with other components required
by the claims. The Specification states that an acrylate-based thickener, such
as Acrylates Steareth-20 Methacrylate Copolymer, can cause a water-based
cosmetic composition to become tacky and to pill upon application. Spec.
1:16–19.
The Specification also provides a working example in which
“[v]arious combinations of copolymer (Aculyn-22), sunscreen agents, and
surfactants were examined in a base composition (foundation).” Id. at
18:18–19. “It was determined whether the compositions were stable . . . ,
thick . . . , or pilled upon application.” Id. at 18:22–26. The Specification
summarizes the results as follows:
[C]ombining the copolymer with the hydrophilic sunscreen
agent comprising a sulfonic acid group resulted in a very thin,
unstable mixture. Combining the copolymer with surfactants
resulted in a very thick, stable composition which pilled upon
application. However, compositions of the present invention
containing copolymer, the required surfactants and the required
sunscreen active agent were thick (having a viscosity greater
than or equal to 130 cPs) and stable and did not pill upon
application. Further, the invention compositions were stable gel
compositions having a nice and cushiony structure.
Id. at 21:6–13.
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Thus, the evidence of record shows that the results of combining the
components of claim 1 are unpredictable, with different properties resulting
from combining different components. A preponderance of the evidence
does not support a finding that combining the various components disclosed
by Wang would have reasonably been expected to result in a composition
having the combined properties of the individual components.
We therefore conclude that the cited references do not support a prima
facie case of obviousness under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 14, 17,
20–24
103 Wang, Loeffler 1–12, 14, 17,
20–24

REVERSED