Ex Parte Bandyopadhyay et al

Patent Trial and Appeal Board

Mar 29, 2016

13031423 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/031,423 02/21/2011 Prasun Bandyopadhyay
201 7590 03/31/2016
UNILEVER PATENT GROUP
800 SYLVAN A VENUE
AG West S. Wing
ENGLEWOOD CLIFFS, NJ 07632-3100
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
J2124US1 4901
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASUN BANDYOPADHYA Y and GAURA V KUMAR1
Appeal2013-008368
Application 13/031,423
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for stabilizing sunscreens in a cosmetic composition and to a cosmetic
composition comprising the stabilized sunscreens. The Examiner has
rejected the claims as indefinite and obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 14--39 are pending and on appeal (Br. 3). The claims subject
to each rejection have not been argued separately and, therefore, stand or fall
1 Appellants identify the real party in interest as Conopco, Inc., d/b/a
Unilever (Br. 3).
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Application 13/031,423
together. 37 C.F.R. § 41.37(c)(l)(iv). Claims 35 and 36 are representative
and read as follows:
35. A method for stabilizing sunscreens in a cosmetic composition
comprising UV-A and UV-B sunscreens, the method comprising the steps
of:
(a) contacting 0.1%to10 % by weight dibenzoylmethane or a
derivative thereof and 0.1 % to 10 % by weight p- methoxycinnamic acid or
a derivative thereof with 0.5 % to 8 % by weight of C8-C22 fatty alcohol
ethoxylate comprising 9 to 50 oxyethylenated groups and 0.5 % to 8 % by
weight polyalkyleneglycol; and
(b) stabilizing sunscreen.
36. The method according to claim 35 wherein the fatty alcohol
ethoxylate is the addition product of ethylene oxide and behenyl alcohol.
Claims 14--39 stand rejected under 35 U.S.C. § 112, second
paragraph, for being indefinite (Ans. 2).
Claims 14--39 stand rejected under 35 U.S.C. § 103(a) as obvious over
Poret (US 2002/0034524 Al, Mar. 21, 2002) (Ans. 2).
Claims 14--35 and 37-39 stand rejected under 35 U.S.C. § 103(a) as
obvious over Muller et al. (US 2010/0008873 Al, Jan. 14, 2010) (Ans. 5).
Claim 36 stands rejected under 35 U.S.C. § 103(a) as obvious over
Muller in view of Poret (Ans. 8).
I
In rejecting the claims as indefinite, the Examiner finds: "Claims 14
and 3 5 recite a method of stabilizing sunscreens, wherein a first step is to
mix recited components and a second step is 'stabilizing sunscreen'. It is
unclear as to what action the ... second step requires." (Ans. 2.)
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Appellants argue:
Analysis
Firstly, the language in the specification is clear in that at the very
least debenzoylmethane [sic] and its derivatives are
photochemically unstable especially in the presence of UV-B
sunscreens. Secondly, the current Appellants have surprisingly
stabilized and prevented the rapid decomposition of
dibenzoylmethane and its derivatives with the use of certain fatty
alcohol ethoxylates and polyalkylene glycols.
(Br. 7.) However, this does not address the Examiner's concern. Instead,
the Examiner's concern is that "it is unclear if there is a second step ... , as
step a) (contacting) meets the requirement of stabilization as recited in the
specification" (Ans. 10). We agree with the Examiner that it is not clear
what step (b) requires.
Conclusion
The evidence supports the Examiner's conclusion that claim 35 is
indefinite. We, therefore, affirm the indefiniteness rejection of claim 35.
Claims 14--34 and 36-39 fall with claim 35.
II
In rejecting the claims for obviousness, the Examiner relies on Poret
for teaching
topical cosmetic compositions for treating hair and skin ... , in
the form oflotions or creams ... , comprising 1-8% polyethylene
glycols, which reads on polyalkylene glycols, 0.1-10%
surfactants selected from fatty alcohol ethoxylates comprising
from 1-100 ethylene oxide units, including laureth and beheneth
. . . , 0.1-10% sunscreen agent including ethylhexyl
p-methoxycinnamate ... [and] butyl methoxy dibenzoylmethane
... , and PEG-8.
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(Ans. 3.) The Examiner finds that "Poret does not explicitly disclose an
example wherein the claimed components, at the claimed percentages are
combined into a single composition" (id.). However, the Examiner
concludes that it would have been obvious "to select each component and
combine them as instantly claimed" (id. at 3--4).
Analysis
Poret discloses a cosmetic composition comprising sunscreens, such
as dibenzoylmethane and p-methoxycinnamate derivatives, and that
"[ s Jui table ranges of sunscreen are 0.01-20%, preferably 0.05-15%, more
preferably 0.1-10% by weight of the total composition" (Poret i-fi-1 40, 126, &
223). Poret also discloses including humectants, such as polyethylene
glycol, and that "[ s ]uggested ranges of humectant include 0.1-15%,
preferably 0.5-10%, more preferably 1-8% by weight of the total
composition" (id. i-f l 07). In addition, Poret discloses including nonionic
surfactants, such as "[ c ]ondensation products of aliphatic alcohols having 8
to 18 carbon atoms with ethylene oxide," and that "[p ]referred condensates
are formed by the reaction of fatty alcohols and ethylene oxide and include
laureth, steareth, beheneth, and the like, having repeating ethylene oxide
units ranging from 1 to 100" (id. i-fi-f 111, 116, & 124). In view of these
disclosures, we agree with the Examiner that Poret suggests the method of
representative claim 35.
Appellants argue that "nowhere is there described in [Poret] UV A and
UVB sunscreens in a composition with C8-C18 fatty alcohol ethoxylate or
Cs-C22 fatty alcohol ethoxylate as specifically claimed in this invention"
(Br. 13). We are not persuaded.
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Application 13/031,423
First, we agree with the Examiner that the general disclosures of
Poret, as discussed above, suggest including both sunscreens and the
claimed Cs-C1s fatty alcohol ethoxylate in the same composition (Ans. 3). In
addition, Poret specifically discloses an example containing butyl methoxy
dibenzoylmethane, octyl methoxycinnamate, and laureth-7 (Poret i-f 223),
which is undisputed to "read[] on the claimed fatty alcohol ethoxylate"
(Ans. 11 ). In addition, even if laureth-7 does not read on the claimed fatty
alcohol ethoxylate, which has 9 to 50 oxyethylenated groups, we conclude
that it would have been prima facie obvious to replace laureth-7 with, for
example, laureth-9, which the Specification identifies as being within the
claimed invention (Spec. 5: 6-8), based on the disclosure in Poret of fatty
alcohol condensation products "having repeating ethylene oxide units
ranging from 1to100" (Poret i-f 124).
Appellants also argue that "nowhere is there described in [Poret] the
stabilization of sunscreen as claimed in this invention" (Br. 13). However,
we agree with the Examiner that, "where the claimed and prior art products
are identical or substantially identical in structure or composition, ... a
prima facie case of either anticipation or obviousness has been established"
(Ans. 4). Although we recognize that claim 35 is directed to a method, we
agree with the Examiner that "the compositions of Poret are inherently
mixed together and said components inherently contact each other, which
read on the claimed method step" (id. at 5).
In addition, "Appellants respectfully direct the Examiner's attention to
the data provided in the present application, the same demonstrating the
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superior and unexpected findings as a result of this invention" (Br. 13). We
are not persuaded.
"[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). As
noted by the Examiner (Ans. 11), Poret's Example 1 includes 0.25 w/w %
butyl methoxy dibenzoylmethane, 0.75 w/w % octyl methoxycinnamate,
laureth-7, and PEG-8 (Poret i-f 223). Appellants do not adequately explain
how the evidence in the Specification indicates that the claimed invention is
unexpectedly superior as compared to Poret' s Example 1.
Conclusion
The evidence supports the Examiner's conclusion that Poret suggests
the method of claim 35. We, therefore, affirm the obviousness rejection of
claim 35 over Poret. Claims 14--34 and 36-39 fall with claim 35.
III
The Examiner relies on Muller for teaching "cosmetic sunscreen
compositions comprising 0.1-10% cinnamic acid derivatives, 0.1-5%
dibenzoylmethane derivatives, cosmetically acceptable carriers, and mixing
said components" (Ans. 5). The Examiner finds that Muller "further
teach[ es] ... 4-20% emulsifiers ... , said emulsifiers as fatty alcohols
having 8-22 carbon atoms and 2-30 mol. of ethylene oxide ... , including
laureths ... , and polyols including polyethylene" (id. at 5---6). However, the
Examiner finds that Muller does "not explicitly disclose an example wherein
the claimed components, at the claimed percentages are combined into a
single composition" (id. at 6). The Examiner concludes that it would have
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been obvious "to select each component and combine them as instantly
claimed" (id.).
Analysis
Appellants argue that "[ n ]owhere in [Muller] is there even remotely,
described a specific method as claimed in this invention where UV A and
UVB sunscreens are present, where sunscreen stabilization is obtained and
where specific fatty alcohol ethoxylate and polyalkylene glycol are used at
specific amounts to achieve such sunscreen stabilization" (Br. 17-18). We
are not persuaded.
Muller discloses "a cosmetic or dermatological composition ...
comprising ... 0.1 to 5% b.w. of a dibenzoylmethane derivative [and] ...
0.1 to 10% b.w. of a cinnamic acid derivative" (Muller i1i129-31 ). Muller
also discloses:
the preparations contain, for example, ... from 0 to 30% by
\veight, especially from l to 30% by \veight and preferably from
4 to 20% by weight, based on the total weight of the composition,
of at least one emulsifier ... and from 0 to 88.9% by weight,
especially from 1 to 50% by weight, of further cosmetically
acceptable adjuvants.
(Id. i-f 183.) As emulsifiers, it is undisputed that Muller teaches the claimed
fatty acid ethoxylates and polyethylene glycol (Ans. 5---6 & 14, citing Muller
i-fi-f 195-196). Muller also discloses that "it is ... possible to employ
hydrotropic agents, for example ... pol yo ls ... [such as] polyethylene
glycols" (Muller i1 211 ). In addition, Muller discloses that the "cosmetic or
pharmaceutical preparations can be prepared by physically mixing the UV
absorbers with the adjuvant using customary methods, for example by
simply stirring together the individual components" (id. i136). With regard
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to obtaining sunscreen stabilization, we conclude that the evidence supports
the Examiner's position that this would have been an inherent effect
(Ans. 7).
Appellants also argue that "[ w ]hat is described in [Muller] clearly
teaches away from the presently claimed invention since the use of such
complicated triazole derivatives are required" (Br. 17). We are not
persuaded.
We recognize that Muller "relates to the use of specific benzotriazole
derivatives for enhancing the photostability of sunscreen compositions"
(Muller ,-r 1 ). However, we do not agree with Appellants that this teaches
away from contacting the sunscreens with the claimed fatty alcohol
ethoxylate or polyalkyleneglycol.
In addition, Appellants argue that the "unexpected and superior results
obtained in this invention cannot be ignored" (Br. 18). We are not
persuaded.
In traversing the rejection over Poret, Appellants "direct the
Examiner's attention to the data provided in the present application" (id. at
13). We assume that Appellants are referring to the same "data" to traverse
the rejection over Muller. However, Appellants, who have the burden on
this issue, have provided no explanation of how the Specification
demonstrates that the present invention provides unexpectedly superior
results.
We note that Appellants have provided data indicating that both
Brij-35, which is a lauryl alcohol ethoxylate, and PEG 200 individually
improve dibenzoylmethane activity after sunlight exposure (Spec. 10-13:
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Example 1, in particular, Table 2). However, the "[ m ]ere recognition of
latent properties in the prior art does not render nonobvious an otherwise
known invention." Baxter Travenol Labs., 952 F.2d at 392. In this regard,
we note that Muller teaches including Steareth-21, which the Specification
identifies as being within the claimed fatty alcohol ethoxylates (Spec. 5: 15-
17), in combination with the two sunscreen derivatives (Muller, pp. 14--15
(Table entitled O/W systems)) and including a polyol humectant, which
includes polyethylene glycol, in combination with the two sunscreen
derivatives (id. at p. 15 (Table entitled W/Silicone systems) & i-f 211).
In addition, Appellants' data indicates that further improvement is
achieved when both Brij-35 (4 wt%) and PEG 200 (4 wt%) are included
(Spec. 10-13: Example 1, in particular, Table 2). However, it is not clear
from this data whether the improvement is due to the combination of Brij-35
and PEG 200 or merely the additive effect of two agents that improve
dibenzoylmethane activity after sunlight exposure. In addition, Appellants
have not demonstrated that this effect can be achieved with as little as
0.5 wt% of each of Brij-35 and PEG 200, as encompassed by representative
claim 3 5. Thus, we agree with the Examiner that the data is not
commensurate with the scope of representative claim 35 (Ans. 13).
Conclusion
The evidence supports the Examiner's conclusion that Muller suggests
the method of claim 35. We, therefore, affirm the obviousness rejection of
claim 35 over Muller. Claims 14--34 and 37-39 fall with claim 35.
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IV
In rejecting claim 36, the Examiner relies on Muller as discussed
above (Ans. 8). However, the Examiner finds that Muller does "not teach
behenyl alcohol/ethylene oxide addition products" (id.). Thus, the Examiner
relies on Poret to overcome this deficiency (id.).
With regard to the prima facie case, we are not persuaded by
Appellants' arguments for the reasons discussed above. In addition,
Appellants have not pointed to any evidence that behenyl alcohol ethoxylate,
in particular, provides unexpectedly superior results. We, therefore, affirm
the obviousness rejection of claim 36 over Muller and Poret.
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
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