Ex Parte Fares et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201512112375 (P.T.A.B. Feb. 12, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte HANI FARES, JOHN D. STRICKLAND, RITAMARIE GUERRERO, and ISABELLE HANSENNE __________ Appeal 2012-008011 Application 12/112,375 Technology Center 1600 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and ROBERT A. POLLOCK, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a skin care composition. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as L’Oréal S. A. (see App. Br. 1). Appeal 2012-008011 Application 12/112,375 2 Statement of the Case Background “There are many types of lotions, creams or gels available on the market which provide a benefit to the skin of the user” (Spec. 1 ¶ 3). “Silicone emulsions are more difficult to stabilize than conventional emulsions, but they provide a luxurious feel” (Spec. 1 ¶ 3). The Claims Claims 1–4 and 6–14 are on appeal. Claims 1 and 4 are representative and read as follows: 1. A skin care composition comprising: a) at least one high internal phase emollient-in-water emulsion; b) at least one thickening agent present in an amount of from about 0.01% to about 5% by weight, based on the total weight of the composition; c) at least one primary emulsifier chosen from a water-in-silicone emulsifier; d) at least one non-emulsifying silicone elastomer; e) at least one active agent; and f) water; and wherein the composition is a silicone-in-water emulsion. 4. The composition of claim 1, wherein (a) is present in an amount of from about 40% to about 60% by weight, based on the total weight of the composition. The Issue The Examiner rejected claims 1–4 and 6–14 under 35 U.S.C. § 103(a) as obvious over Pate,2 Charbit,3 Midha,4 and Sunkel5 (Ans. 4–8). 2 Pate et al., US 6,783,766 B2, issued Aug. 31, 2004. Appeal 2012-008011 Application 12/112,375 3 The Examiner finds that Pate teaches “cosmetic formulations comprising a high internal phase ratio (HIPR) emollient-in-water emulsion combined with a partial cosmetic formulation” (Ans. 4). The Examiner finds that Pate teaches “the HIPR emulsion is combined with water, a thickener, and a fragrance (active agent) for cosmetic application (see components (a), (b), (e), and (f) of pending claim 1)” (Ans. 4). The Examiner finds that Pate “specifically suggests including a thickener in the finished cosmetic products” (Ans. 6). The Examiner acknowledges that Pate differs in the amount of thickener used (see Ans. 6), “does not specifically include an emulsifier which is a water-in-silicone emulsifier” (Ans. 6) and does not necessarily include a non-emulsifying silicone elastomer (see Ans. 7). The Examiner finds that “Charbit teaches topically applicable emulsion formulations for applications such as minimizing wrinkles on the skin . . . Charbit teaches Example 1 having 0.3% by weight of Hostacerin AMPS thickener” (Ans. 5–6). The Examiner finds that Midha teaches “PEG/PPG-18/18 Dimethicone among the silicone emulsifiers desirable for their low HLB properties” (Ans. 6). The Examiner finds that Sunkel teaches “cosmetic compositions comprising non-emulsifying and emulsifying crosslinked siloxane elastomers” (Ans. 7). The Examiner finds it obvious to “employ a quantity of 0.3% by weight thickener in the total formulation [of Pate] based on the Example 1 of 3 Charbit, Y., US 2005/0186169 A1, published Aug. 25, 2005. 4 Midha et al., US 2006/0078524 A1, published Apr. 13, 2006. 5 Sunkel et al., US 6,524,598 B2, issued Feb. 25, 2003. Appeal 2012-008011 Application 12/112,375 4 Charbit” and “since Charbit teaches that including a thickener desirably enhances the stability of the emulsion compositions” (Ans. 6). The Examiner finds it obvious to “implement polyoxyethylene modified polydimethylsiloxane as suggested by Midha into the formulations of Pate . . . since Midha teaches the desirable conditioning benefits and since Midha teaches polydimethylsiloxane as an especially preferred silicone” (Ans. 7). The Examiner finds it obvious to “implement the nonemulsifying crosslinked silicone elastomers as taught by Sunkel into the formulations of Pate . . . since Sunkel et al. teaches that the combination of emollient types facilitate desirable balance between oil and water phases to an extent sufficient to ensure long-term storage stability” (Ans. 8). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Pate, Charbit, Midha, and Sunkel render the claims obvious? Findings of Fact 1. Pate teaches “a high internal phase ratio (HIPR) emollient-in- water emulsion is contacted with a partial cosmetic formulation to produce an advanced cosmetic product” (Pate, col. 1, ll. 57–60). 2. The Specification teaches that “[s]uitable inorganic water thickeners for use in the composition of the present invention include, but are not limited to . . . clays . . . Carbomers . . . . Polyacrylamides” (Spec. 3–4 ¶ 20). 3. The Specification teaches that “[s]uitable polymeric thickeners for use in the composition of the present invention include natural and modified natural polymers such as xanthan gum . . . Preferred thickening Appeal 2012-008011 Application 12/112,375 5 agents include acrylate copolymers , such as . . . Aristoflex HMS” (Spec 4–5 ¶¶ 22–23). 4. Pate teaches that: Minor amounts, preferably not greater than 5%, more preferably not greater than 1%, and most preferably not greater than 0.5% by weight, of water-compatible substances, that is, substances which, by themselves are incapable of forming aqueous HIPR emulsions, can be added to the emollient prior to emulsification of the emollient. Examples of such water-compatible substances include rheology modifiers such as carbomers, acrylic copolymers, polyacrylamides, polysaccharides, natural gums, and clays (Pate, col. 5, ll. 5–14). 5. The Specification teaches that “[s]uitable water-in-silicone emulsifiers for use in the present invention include, but are not limited to . . . ethoxylated/propoxylated silicones such as PEG/PPG-18/18 Dimethicone . . . and Cetyl PEG/PPG-10/1 Dimethicone . . . ethoxylated silicones such as PEG-10 Dimethicone” (Spec. 5 ¶ 27). 6. Pate teaches that the “HIPR sunscreen-in-water emulsion advantageously includes a stabilizing amount of an additive to . . . prevent diffusion of the sunscreen active disperse phase from small droplets of the disperse phase to larger ones. The additive is . . . for example . . . a silicone such as silicone oil or dimethicone” (Pate, col. 3, ll. 28–37). 7. The Specification teaches that “[s]uitable non-emulsifying silicone elastomers for use in the composition of the present invention include, but are not limited to, those sold under the names ‘DC 9040’ [Dow Corning 9040]” (Spec. 6 ¶ 33). Appeal 2012-008011 Application 12/112,375 6 8. Pate teaches, in Example 1, that an “HIPR emulsion containing Dow Corning 9040 Silicone Elastomer Blend is prepared . . . First, Dow Corning 345 fluid (19.5%) and TERGITOLTM 15-s-12 . . . are added to the Dow Corning 9040 Elastomer Blend (78.1%). The ingredients are mixed until uniform” (Pate, col. 6, ll. 4–10). 9. Pate teaches that the mixture, or “disperse phase is merged at the mixer with a separate deionized water stream phase containing a DOWICIL™ 200 antimicrobial” ((Pate, col. 6, ll. 14–16). 10. The Specification teaches that “[s]uitable other active agents include, but are not limited to, abrasives; absorbents; antimicrobial and antifungal actives; aesthetic components such as fragrances” (Spec. 12 ¶ 59). 11. Pate teaches that “an HIPR emulsion of mineral oil and a separately prepared HIPR emulsion of petrolatum can be combined with a partial cosmetic formulation containing water, thickener, fragrance, and color to form a body lotion” (Pate, col. 5, ll. 49–52). 12. Charbit teaches that “acrylic tetrapolymers . . . not only make it possible to tighten the skin effectively and so to mask wrinkles and fine lines and signs of tiredness etc., but also have self-emulsification properties” (Charbit 1 ¶ 12). 13. Charbit teaches that “in order to enhance the stablllty of such compositions . . . it may be useful to combine it with at least one thickener, which for example may be . . . Aristoflex HMS” (Charbit 3 ¶ 44). 14. Charbit, in Example 1, shows the use of 0.3% Aristoflex HMS (see Charbit 3–4 ¶ 48). Appeal 2012-008011 Application 12/112,375 7 15. Midha teaches “multi-phase personal care compositions suitable for use on mammalian skin and hair. These compositions comprise a conditioning phase and an oil continous benefit phase” (Midha 1 ¶ 2). 16. Midha teaches that “silicone emulsifiers suitable for use herein include . . . PEG/PPG-18/18 Dimethicone” (Midha 6 ¶ 56). 17. Sunkel teaches “cosmetic compositions comprising a combination of non-emulsifying and emulsifying crosslinked siloxane elastomers” (Sunkel, col. 1, ll. 10–12). 18. Sunkel teaches that “[p]referred organopolysiloxane compositions are dimethicone/vinyl dimethicone crosspolymers. Such dimethicone/vinyl dimethicone crosspolymers are supplied by a variety of suppliers including Dow Corning (DC 9040 and DC 9041)” (Sunkel, col. 5, ll. 33–37). 19. The Specification teaches that the “HIP emulsions are generally present in the composition of the present invention in an amount ranging from about 10% to about 80% by weight; such as from about 35% to about 65% by weight; such as from about 40% to about 60% by weight, based on the total weight of the composition” (Spec. 3 ¶ 17). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Appeal 2012-008011 Application 12/112,375 8 Analysis We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (Ans. 4–8; FF 1–18) and agree that claims 1 and 4 are rendered obvious by Pate, Charbit, Midha, and Sunkel. In particular, we note that Pate teaches a cosmetic composition which may include ingredients including: (a) high internal phase emollient-in-water emulsion (FF 1); (b) rheology agents (i.e. thickening agents in the parlance of the Specification (FF 2–3)) including carbomers, clays, and polyacrylamides in amounts up to 5% (FF 4); (c) an emulsifier (i.e. a compound which stabilizes an emulsion) including dimethicone or silicon oil (FF 6); (d) a non-emulsifying silicone elastomer (cf. “DC 9040” in the Specification (FF 7)) such as Dow Corning 9040 Silicone Elastomer Blend (i.e. DC 9040) (FF 8–9); (e) an active agent such as a fragrance or antimicrobial agent (FF 11) (cf. fragrances or antimicrobial actives in the Specification (FF 10); and water (FF 9). Charbit teaches that acrylic tetrapolymers such as aristoflex HMS have self-emulsification properties, help mask wrinkles, and are used in amounts including 0.3% (FF 12–14). Midha teaches cosmetic compositions using silicone emulsifiers including PEG/PPG-18/18 Dimethicone (FF 15– 16). Sunkel also teaches the use of DC 9040 in cosmetic compositions (FF 17–18). Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary creativity would have had reason to use less than 5% amount thickeners because Pate prefers to use “[m]inor amounts, preferably not greater than 5%” of rheology modifiers such as clay, Appeal 2012-008011 Application 12/112,375 9 carbomers and polyacrylamides (FF 5) and Charbit exemplifies the use of 0.3% thickener (FF 14). We further agree with the Examiner that the use of Midha’s silicone emulsifier PEG/PPG-18/18 Dimethicone (FF 16) in Pate’s cosmetic composition would have been an obvious substitution for the generic dimethicone taught by Pate (FF 6). We also agree that the use of DC 9040 would have been obvious since both Pate and Sunkel teach the use of DC 9040 in cosmetic compositions (FF 8, 18). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. We address Appellants’ arguments below. Claim 1 Appellants contend that “[s]urprisingly, Appellant has found that the claimed composition yields a stable composition with superior texture and silkiness over other products devised by the prior art” (App. Br. 3–4). We are not persuaded. Currently, Appellants only have attorney argument and general statements in the Specification supporting this idea, not evidence. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . [do] not suffice.”) Further, Appellants do not identify any comparison with the closest prior art, here the composition of Pate. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Appeal 2012-008011 Application 12/112,375 10 Appellants contend that Pate in its Examples 4 and 5, teaches the use of the thickener Carbopol® 980 in amounts of 25% and 23.4%, respectively. In view of this clear teaching regarding the amount of thickener employed by Pate, there clearly exists no motivation on the part of the routineer to wish to, instead, use the amount of thickener disclosed in Charbit’s Example 1. (App. Br. 5). We are not persuaded. Appellants’ calculation is not correct. Pate Example 4 incorporates 177.15 g of water, 15 g of glycerin, 0.3 g of trisodium EDTA, 0.3 g of DOWICIL, 30 g of tricglyceride emulsion, 1.5 g of triethanol amine, 0.75 g of fragrance along with 75 g of a 2% aqueous dispersion of Carbopol 980 carbomer. A 2% aqueous dispersion of the carbomer means that only 2% of the 75 g or 1.5 g is the carbopol thickener, with water making up the remaining 73.5 g of the dispersion. Because the total amount of ingredients in the entire composition is 300 g, and the amount of carbomer is 1.5 g, the actual amount of thickener in Pate Example 4 is 0.5%. We note that this 0.5 % amount of carbomer is exactly in line with Pate’s teaching that “preferably not greater than 0.5% by weight, of . . . modifiers such as carbomers” should be used in the composition (FF 4). Appellants also argue that “Pate teaches away from using Appellant's claimed amount. Clearly, 23.4% and 25% by weight of thickener, is far outside of Appellant’s claimed maximum amount of about 5%” (App. Br. 5). We are not persuaded in light of the above calculation and because Pate specifically teaches that “preferably not greater than 0.5% by weight, of Appeal 2012-008011 Application 12/112,375 11 . . . modifiers such as carbomers” should be incorporated into the cosmetic composition. Thus, rather than teaching away, Pate teaches towards the amount of thickener recited in claim 1. Like our appellate reviewing court, “[w]e will not read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants contend that “Charbit clearly teaches that a tetrapolymer be employed in its composition. However, it is only when a tetrapolymer is used that Charbit provides for the possibility that a thickener may be employed” (App. Br. 6). We find this argument unpersuasive for several reasons. First, the claims do not exclude the use of tetrapolymers as argued by the Examiner (Final Rej. 9). See Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term “comprising” is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.”) Second, Charbit is simply relied upon to confirm amounts of thickeners that may be used in cosmetic compositions such as those of Pate, demonstrating that the ordinary artisan is aware than amounts as low as 0.3% may be employed (FF 14), while Pate discusses amounts preferably not greater than 0.5% (FF 4). Claim 4 Appellants contend, regarding the amounts of high internal phase emollient-in-water emulsion recited in claim 4, that “[u]nder no rational/logical line of reasoning would one of ordinary skill in the art, or a Appeal 2012-008011 Application 12/112,375 12 lay person for that matter, believe that about 40% includes 17 %” (App. Br. 7). We are not persuaded. While Pate does not exemplify amounts of HIPR which are “about 40%” or higher, Pate generally teaches that “a high internal phase ratio (HIPR) emollient-in-water emulsion is contacted with a partial cosmetic formulation to produce an advanced cosmetic product” (Pate, col. 1, ll. 57–60; FF 1). Examples of finished cosmetic products described in Pate are hand lotions, body lotions, body washes, conditioners, shampoos, and facial creams. (Col. 5, ll. 52-54.) The ordinary artisan would reasonably understand that the amount of HIPR used in the cosmetic formulations is an optimizable variable depending upon the desired emollient properties of the specific finished cosmetic product. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants have provided no evidence that the selection of “about 40% to about 60%” of HIPR yields an unexpected result, rather than simply represents routine optimization of the HIPR amounts in cosmetic compositions. Indeed, Appellants’ own Specification teaches that the HIPR amounts may range from 10% to about 80% (see Spec. 3 ¶ 17; FF 19), further supporting the position that the selected sub range simply represents routine optimization. Appeal 2012-008011 Application 12/112,375 13 Conclusion of Law The evidence of record supports the Examiner’s conclusion that Pate, Charbit, Midha, and Sunkel render the claims obvious. SUMMARY In summary, we affirm the rejection of claims 1 and 4, 11, and 13–16 under 35 U.S.C. § 103(a) over Pate, Charbit, Midha, and Sunkel. Pursuant to 37 C.F.R. § 41.37(c), claims 2, 3, and 6–14 fall with claim 1, as these claims were not argued separately. 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 lp Copy with citationCopy as parenthetical citation