Ex Parte Candau et al

Patent Trials and Appeals Board

Oct 16, 2018

12808839 - (D) (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/808,839 10/18/2010
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
10/18/2018
FIRST NAMED INVENTOR
Didier Candau
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.
085507-536281 5780
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/18/2018 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):
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIDIER CANDAU and KARL BOUTELET
Appeal2017-006451
Application 12/808,839 1
Technology Center 1600
Before ERIC B. GRIMES, TA WEN CHANG, and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
photoprotective composition. The Examiner rejected the claims on appeal
under 35 U.S.C. § l 12(b) as indefinite, under 35 U.S.C. § 103(a) as obvious,
and on the ground non-statutory obviousness-type double patenting.
We affirm.
1 According to Appellants, the real party in interest is L'Oreal. App. Br. 2.
Appeal2017-006451
Application 12/808,839
STATEMENT OF THE CASE
Claims 1-7 and 9-24 are on appeal. Claim 1, the only independent
claim on appeal, is illustrative and reads as follows:
1. A photoprotective compos1t10n containing, m a
cosmetically acceptable medium,
a) as liquid phase, an oil-in-water emulsion,
emulsified with at least one dimeric surfactant comprising two
surfactant units, which may be identical or different, each being
constituted of a hydrophilic head and a hydrophobic tail and
connected to one another, via the hydrophilic heads, by means of
a spacer group,
b) at least one organic UV screen and/ or at least one
mineral UV screen, and
c) at least one crosslinked copolymer of methacrylic
acid and of C1-C4 alkyl acrylate, wherein the methacrylic acid is
present in amounts ranging from 20% to 80% by weight relative
to the total weight of the copolymer, and the alkyl acrylate is
present in amounts ranging from 15% to 80% by weight, relative
to the total weight of the copolymer; the at least one copolymer
of methacrylic acid and of C1-C4 alkyl acrylate is crosslinked
with at least one ethylenically polyunsaturated crosslinking
agent, and wherein particles of the copolymer in a dispersion
have an average size between 10 and 500 nm; and
wherein the composition has a viscosity of less than or
equal to 200mPa·s, measured at 25 QC using a Rheomat RM 180
with a rotor 2 at a shear rate gradient of 200 s-1.
App. Br. 16.
During prosecution, in response to requirement for an election of
species, Appellants elected sodium dicocoylethylenediamine PEG-15 sulfate
as the claimed dimeric surfactant and a copolymer of methacrylic acid and
ethyl acrylate as the claimed cross-linked copolymer. Ans. 5.
The claims stand rejected as follows.
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Application 12/808,839
Claims 1-7 and 9-24 were rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
Claims 1-7 and 9-24 were rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Sanogueira, 2 Carbopol®, 3 Candau, 4 and
Maubru. 5
Claims 1-7 and 9-24 were rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Candau, Librizzi, 6 and McNamara. 7
Claims 1-7 and 9-24 were rejected on the ground of non-statutory
obviousness-type double patenting over claims 1-21 of US Patent No.
7,959,903 in view of Librizzi.
Claims 1-7 and 9-24 were provisionally rejected on the ground of
non-statutory obviousness-type double patenting over claims 1-20 of US
Patent Application No. 13/882,908 (now US Patent No. 9,925,132) in view
of Sanogueira.
Claims 1-7 and 9-24 were provisionally rejected on the ground of
non-statutory obviousness-type double patenting over claims 1-17 of US
Patent Application No. 13/099,225 ("the '225 application") in view of
2 Sanogueira et al., WO 2004/105704 A2, published Dec. 9, 2004
("Sanogueira").
3 Lubrizol Product Specification sheet for Carbopol® Aqua SF-I Polymer,
effective August 1, 2002 ("Carbopol®").
4 Candau et al., US Patent Publication No. 2005/0063925 Al, published
Mar. 24, 2005 ("Candau").
5 Maubru, US Patent No. 7,258,852 B2, issued Aug. 21, 2007 ("Maubru").
6 Librizzi et al., US Patent Publication No. 2005/0070452 Al, published
Mar. 31, 2005 ("Librizzi").
7 McNamara, US Patent Publication No. 2005/0136013 Al, published June
23, 2005 ("McNamara").
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Application 12/808,839
Librizzi. In the Examiner's Answer, the Examiner withdrew this rejection
because the '225 application had been abandoned. Ans. 2. Accordingly,
this rejection is no longer part of this appeal.
INDEFINITENESS
In the Final Office Action, 8 the Examiner rejected claim 1 as
indefinite on the basis that the claim requirement for determining viscosity
"using a Rheomat RM 180 ... " was unclear. Final Act. 3. After
considering Appellants' Appeal Brief, the Examiner withdrew this rationale
for finding claim 1 indefinite. Ans. 2.
The Examiner also rejected claim 1 as indefinite because the claim
term "a dispersion" was unclear. Id. at 4. Appellants did not address this
rationale in their Appeal Brief, raising it only in their Reply Brief. App. Br.
5---6; Reply Br. 1-2. We find that Appellants waived this argument because it
was not included in the principal brief, depriving us of the Examiner's
response. 37 C.F.R. § 41.4l(b)(2); see also, Exparte Borden, 93 USPQ2d
14 73, 14 7 4 (BP AI 2010) (informative) (" [T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal brief
on appeal to rebut the Examiner's rejections, but were not"). Accordingly, we
summarily affirm the Examiner's indefiniteness rejection. See Manual of
Patent Examining Procedure§ 1205.02 ("If a ground of rejection stated by
the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board."). 9
8 Office Action mailed February 10, 2016 ("Final Act.").
9 In their Reply Brief Appellants represent that they will amend claim 12 to
address the Examiner's rejection of that claim as indefinite because the
claim terms "cinnamic" and "salicylic" were unclear. Reply Br. 2. We do
not address whether such an amendment would obviate the Examiner's
rejection because the issue is not properly before us.
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Application 12/808,839
OBVIOUSNESS OVER SANOGUEIRA, CARBO POL®, CANDAU,
ANDMAUBRU
Appellants argue claims 1-7 and 9-24 together. We designate claim 1
as representative.
Sanogueira discloses a stable and flexible emulsion base for use in
formulating cosmetic and dermatological compositions. Sanogueira, 4. The
Examiner found that Sanogueira discloses most of the elements recited in
claim 1. Final Act. 9-10. The Examiner acknowledged that Sanogueira did
not expressly disclose a composition comprising the elected cross-linked
copolymer, but found that Sanogueira taught that its compositions include
"one or more thickeners such as 'acrylates copolymer."' Id. at 11; Ans. 5.
Based on the product specification sheet for Carbopol® Aqua SF-I Polymer,
the Examiner concluded that the "acrylates copolymer" disclosed in
Sanogueira was, in fact, Carbopol® Aqua SF-I Polymer. Id. The Examiner
then relied upon the Specification as evidence that Carbopol® Aqua SF-I
Polymer was the elected cross-linked copolymer. Ans. 5. (citing Spec. 15-
16). The Examiner concluded that it would have been obvious to include
Carbopol® Aqua SF-I, as suggested by Sanogueira, because Sanogueira
taught that it was a suitable thickener. Final Act. 12.
With respect to the requirement of claim 1 that the particles of the
copolymer "have an average size between 10 and 500 nm," the Examiner
found that particles of Carbopol® Aqua SF-I were the same as the claimed
particles and would thus inherently have an average size between 10 and 500
nm. Id. at 11. The Examiner also cited Maubru as evidence that the claimed
particles would inherently meet the claimed particle size limitation. Id.
Maubru discloses a composition comprising a "crosslinked copolymer of
methacrylic acid and of a C1-C4 alkyl acrylate," including, more specifically,
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the elected copolymer of methacrylic acid and ethyl acrylate. Maubru, 2:34--
47. Maubru further discloses that the "number-average size of the
copolymer particles" is "generally, for example, from 10 to 500 nm." Id. at
3:1-8.
With respect to the requirement of claim 1 that the composition "has a
viscosity of less than or equal to 200 mPa·s," the Examiner found that
Candau disclosed "oil-in-water emulsion compositions similar to those of
SANOGUEIRA, and suggest[ s] the viscosity is suitably in the range of less
than 200 mPa*s and preferably between 10 and 180 mPa*s." Final Act. 12.
The Examiner concluded that it would have been obvious to "adjust the
composition to a consumer-acceptable viscosity as suggested by
CANDAU." Id.
We agree with the Examiner that the composition of claim 1 would
have been obvious over the cited references. We address Appellants'
arguments below.
Appellants argue that Sanogueira makes only a "very generic mention
of 'acrylates copolymers' ... along with numerous other different and
diverse possible thickeners." App. Br. 7. Similarly, Appellants argue that
"nothing in Sanogueira suggests selecting the 'acrylates copolymers' out of
the various possibilities and then to further select a copolymer of the type
claimed." Id. at 9. We are not persuaded because the Examiner provided
persuasive evidence that Sanogueira's reference to "acrylates copolymer"
was, in fact, a reference to the elected cross-linked copolymer of methacrylic
acid and ethyl acrylate. Ans. 5. Moreover, the fact that Sanogueira
discloses "acrylates copolymer" as one among numerous thickeners that can
be used does not make its use nonobvious. Sinclair & Carroll Co. v.
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Interchemical Corp., 325 U.S. 327, 335 (1945) ("Reading a list and selecting
a known compound to meet known requirements is no more ingenious than
selecting the last piece to put into the last opening in a jig-saw puzzle."); see
also Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) ("That the '813 patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.").
Appellants argue that there is nothing in the product specification for
Carbopol® Aqua SF-I that "suggests using the polymer therein in a
photoprotective composition" as claimed. App. Br. 8. We are not persuaded
because the Examiner does not rely on the product specification for
Carbopol® Aqua SF-I for the suggestion to use Carbopol® Aqua SF-I.
Rather, the Examiner relies on Sanogueira for this suggestion. See Final
Act. 12 ("It would have been prima facie obvious to one of ordinary skill in
the art at the time the claimed invention was made to include the product
Carbopol® Aqua SF-I (i.e. acrylates copolymer), as suggested by
SANOGUEIRA, and produce the instantly claimed invention") ( emphasis
added).
Appellants argue that Sanogueira's preference for a thickener other
than acrylates copolymer weighs against a determination of obviousness.
App. Br. 9. We are not persuaded because, as the Federal Circuit has
explained, "in a section 103 inquiry, 'the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered."' Merck, 87 4 F .2d
at 807 (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (alteration
in original).
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Appellants argue that Maubru teaches away from the claimed
composition by teaching that acrylic polymers of the Carbopol® type "can
have the drawback of reducing the cosmetic performance of shampoos, for
example, by making the hair more laden and coarser." App. Br. 10. We are
not persuaded because Appellants do not explain how drawbacks associated
with a shampoo apply to a photoprotective composition like that claimed.
Even assuming the drawbacks of "making the hair more laden and coarser"
apply to photoprotective composition, Appellants' argument would not be
persuasive because the Examiner relied upon Maubru only to show the size
of the prior art cross-linked copolymer particles (Final Act. 11 ). Moreover,
Maubru expressly teaches that "[u]se can ... be made of the crosslinked
methacrylic acid/ethyl acrylate copolymer ... manufactured and sold under
the name Carbopol Aqua SF-I by the company Noveon" (Maubru 3: 11-14)
and Sanogueira teaches that "acrylates copolymer" can be used as a
thickener. Sanogueira 7. The drawbacks of using a copolymer of
methacrylic acid and ethyl acrylate in shampoo compositions must be
balanced against these teachings suggesting their beneficial use. See
Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("[A]
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.").
Finally, Appellants argue that Candau - which the Examiner relies
upon as teaching compositions having a viscosity of less than or equal to 200
mPa·s - uses associative polymers and that "the copolymers employed
according to the present invention differ from associative polymers and
provide significantly different results when used in the types of
compositions required by the present invention." App. Br. 9. We are not
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persuaded. As the Examiner points out, the claims do not require stability
and the reference, Candau "teaches a viscosity that is coextensive with that
now claimed, that is, the viscosity is suitably in the range of less than 200
mPa*s and preferably between 10 and 180 mPa*s, as measured at 25°C."
Ans. 9.
Accordingly, we affirm the Examiner's rejection of claim 1. Because
they were not argued separately, claims 2-7 and 9-24 fall with claim 1.
OBVIOUSNESS OVER CANDAU, LIBRIZZI, AND MCNAMARA
Appellants argue claims 1-7 and 9-24 together. We designate claim 1
as representative.
Candau discloses "[ o ]il-in-water photoprotective emulsions
containing gemini surfactants and associative polymers." Candau Abstract.
The Examiner found that Candau discloses most of the elements recited in
claim 1. Final Act. 16-17. The Examiner acknowledged that Candau did
not expressly disclose a composition comprising the elected cross-linked
copolymer, but found that Candau taught that the associative polymer in its
composition "is, for example, a copolymer formed from methacrylic acid
and lower acrylates such as cross-linked terpolymers of methacrylic acid,
ethyl acrylate and polyethylene glycol (10 EO) stearyl alcohol ether." Id. at
17.
The Examiner found that Librizzi disclosed "methods for reducing
irritation in personal care compositions comprising anionic surfactants" by
including "hydrophobically-modified acrylic polymers," including,
specifically, Carbopol® Aqua SF-I. Id. at 18. The Examiner further found
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that McNamara disclosed "stabilized sunscreen compositions including an
acrylate polymer such as Carbopol Aqua SFI ." Id.
Based on the disclosures of Candau and Librizzi, the Examiner
concluded that it would have been obvious to combine "the anionic
associative copolymer product Carbopol Aqua SF- I with a[] skin treating
composition such as the oil-in-water photoprotective emulsions of
CANDAU because the skin irritation of the resulting sunscreen product
would have been decreased, as suggested by LIBRIZZI." Id. In addition,
the Examiner concluded that it would have been obvious to "combine the
acrylate copolymer product Carbopol Aqua SF-I with an oil-in-water
photoprotective emulsions of CANDAU because MCNAMARA teaches this
polymer as suitable [for use in] sunscreen compositions." Id. at 18-19.
We agree with the Examiner that the composition of claim 1 would
have been obvious over the cited references. We address Appellants'
arguments below.
Appellants argue that "nothing in Librizzi suggests using the polymer
therein in a photoprotective composition." App. Br. 10. Appellants concede
that Librizzi "mentions the use of Carbopol® Aqua SF-I Polymer to bind
surfactants in the compositions therein to form reduced irritation
compositions," but contend that "[i]t is not apparent that the compositions of
Candau with the Gemini surfactants are even irritating compositions." Id. at
10-11. We are not persuaded.
As the Examiner explains:
LIBRIZZI teaches that the property of irritation is associated
with personal care products that include anionic surfactants
(abstract, [0004]). CANDAU teaches the Gemini surfactant
species sodium dicocoylethylenediamine PEG-15 sulfate
([0094 ]), and as noted in paragraphs [0092] to [0094] this
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species is an anionic surfactant. Accordingly, the motivation to
use the product Carbopol® Aqua SF-I taught by LIBRIZZI to
reduce the irritation associated with personal care products that
include anionic surfactants flows clearly from the combination
of cited references.
Ans. 11.
Appellants argue that McNamara describes Carbopol® Aqua SF-I "as
a homopolymer instead of copolymer" and that the skilled artisan "would
[ not have] chosen this polymer to solve the problem addressed by the
present invention, since such is described as a homopolymer and is not used
in the examples." App. Br. 11. We are not persuaded.
As an initial matter, we agree with the Examiner that "one of ordinary
skill in the art would have been able to recognize Carbopol® Aqua SF- I as a
copolymer suggested by McNamara with little effort, for example, simply
looking up a product catalogue ofNoveon products." Ans. 12. Moreover,
Appellants have not provided persuasive evidence that the skilled artisan
would have been discouraged from using a homopolymer. See Johnston v.
IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is
no substitute for evidence."); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). Finally, that the motivation to combine the references proffered by
the Examiner - to minimize irritation - may not mirror the motivation of the
inventors does not preclude a finding of obviousness. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) ("In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective reach
of the claim. If the claim extends to what is obvious, it is invalid under
§ 103."); see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
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("[T]he law does not require that the references be combined for the reasons
contemplated by the inventor").
Appellants argue that "[p ]ersons skilled in the art ... would not be led
by Librizzi or McNamara to substitute the polymer therein for the
associative polymers in Candau and expect to obtain the improved results
according to the present invention" and that "replacing the associative
polymers from Candau would be contrary to the objectives therein since the
associative polymers are considered an important aspect of the invention [ of]
Candau." App. Br. 11-12. We are not persuaded.
We agree with the Examiner that Librizzi provides "motivation to use
the product Carbopol® Aqua SF- I to reduce the irritation associated with
personal care products that include anionic surfactants" and McNamara
teaches that Carbopol® Aqua SF- I is "suitable [ for use in] sunscreen
compositions." Ans. 12. Moreover, as the Examiner explains, the claims
are open ended and do not preclude the presence of associative polymers.
Accordingly, the skilled artisan could simply add Carbopol® Aqua SF-I to
Candau's composition rather than substitute it for Candau's associative
polymers. Id.
Appellants argue that McNamara's teaching that "Carbopol 934, 940
and 941 are [the] most preferred carbomers" weighs against a determination
of obviousness. App. Br. 11. We are not persuaded because, as discussed
above, "in a section 103 inquiry, 'the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered."' Merck, 87 4 F .2d
at 807.
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Finally, Appellants argue that it is "imperative that secondary
considerations also be evaluated." App. Br. 14. We do not disagree.
However, Appellants present only attorney argument with respect to
secondary considerations, not persuasive evidence that secondary
considerations demonstrate the non-obviousness of the claimed composition.
See Johnston v. IVAC Corp., 885 F.2d at 1581 ("Attorneys' argument is no
substitute for evidence."). Accordingly, we affirm the Examiner's rejection
of claim 1. Because they were not argued separately, claims 2-7 and 9-24
fall with claim 1.
DOUBLE PATENTING
The Examiner rejected claims 1-7 and 9-24 on the ground of non-
statutory obviousness type double patenting over claims 1-21 of US Patent
No. 7,959,903 in view of Librizzi. Appellants do not present any new
arguments with respect to this rejection, arguing only that this rejection
should be reversed for the reasons discussed in connection with regard to the
obviousness rejection over the combination of Candau, Librizzi, and
McNamara. App. Br. 14. Accordingly, we affirm this rejection for the
reasons discussed above.
The Examiner also rejected claims 1-7 and 9-24 on the ground of
non-statutory obviousness type double patenting over claims 1-20 of US
Patent Application No. 13/882,908 (now US Patent No. 9,925,132) in view
of Sanogueira. Appellants do not present any arguments with respect to this
rejection. Accordingly, we summarily affirm this rejection. See Manual of
Patent Examining Procedure§ 1205.02 ("If a ground of rejection stated by
the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board.").
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SUMMARY
For the set forth herein, and in the Examiner's Answer and Final Office
Action we affirm: the Examiner's rejection of claims 1-7 and 9-24 under
35 U.S.C. § 112(b) as indefinite; the Examiner's rejection of claims 1-7 and
9-24 under 35 U.S.C. § 103(a) as obvious over the combination of
Sanogueira, Carbopol®, Candau, and Maubru; the Examiner's rejection of
claims 1-7 and 9-24 under 35 U.S.C. § 103(a) as obvious over the
combination of Candau, Librizzi, and McNamara; the Examiner's rejection
of claims 1-7 and 9-24 on the ground of non-statutory obviousness type
double patenting over claims 1-21 of US Patent No. 7,959,903 in view of
Librizzi; and the Examiner's rejection of claims 1-7 and 9-24 on the ground
of non-statutory obviousness type double patenting over claims 1-20 of US
Patent Application No. 13/882,908 (now US Patent No. 9,925,132) in view
of Sanogueira.
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).
AFFIRMED
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