Ex Parte Bandyopadhyay et alDownload PDFPatent Trial and Appeal BoardMar 29, 201613031423 (P.T.A.B. Mar. 29, 2016) Copy Citation 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). Appeal2013-008368 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.) 2 Appeal2013-008368 Application 13/031,423 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. 3 Appeal2013-008368 Application 13/031,423 (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. 4 Appeal2013-008368 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 5 Appeal2013-008368 Application 13/031,423 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 6 Appeal2013-008368 Application 13/031,423 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 7 Appeal2013-008368 Application 13/031,423 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: 8 Appeal2013-008368 Application 13/031,423 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. 9 Appeal2013-008368 Application 13/031,423 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 10 Copy with citationCopy as parenthetical citation