Ex Parte Flösser-Müller

Patent Trial and Appeal Board

Jul 20, 2018

13402522 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/402,522 02/22/2012
123223 7590 07/24/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Heike Flosser-Mtiller
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.
074008-1343-US (286230) 7854
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
07/24/2018 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKE FL013ER-MULLER1
Appeal2017-007527
Application 13/402,522
Technology Center 1600
Before JEFFREY N. FREDMAN, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method of increasing the sun protection factor (SPF) by at least 1.3 SPF
units of a cosmetic and/or dermatological preparation. Claims 7, 12, 22, 23,
28, 30, 32, 33, and 36-48 are on appeal as rejected under 35 U.S.C. § 112,
second and fourth paragraphs, and§ 103. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Real Party in Interest as "BASF SE." Br. 2. We
note that there are conflicting spellings of the inventor's name in the record;
herein we use the spelling as set forth by the inventor in her§ 1.132
declarations, cited infra.
Appeal2017-007527
Application 13/402,522
STATEMENT OF THE CASE
The Specification states "[ t ]he present invention relates to a method of
increasing the sun protection factor of a cosmetic and/or dermatological
preparation, to the use of UV-A filters for increasing the sun protection
factor of such a preparation and to specific photoprotective cosmetic and/or
dermatological preparations." Spec. 1 :6-9.
Independent claim 7 is representative and is reproduced below:
7. A method of increasing the sun protection factor (SPF) by
at least 1.3 SPF units of a cosmetic and/or dermatological
preparation which comprises at least one UV-B selected from the
group cons1stmg of ethylhexyl triazone and
diethylhexylbutamido triazone and/or broadband filter selected
from the group consisting ofbisresorcinyltriazine derivatives and
benzotriazole derivatives comprising[:]
adding one UV-A filter during the production of said
cosmetic and/or dermatological preparation,
wherein the ratio of the sum of the mass of said UV-A
filter to the sum of the mass of said at least one UV-B filter and/ or
broadband filters in said cosmetic and/or dermatological
preparation is 1 to 6;
wherein the value of the ratio of the sum of the mass of the
UV-A filters to the sum of the mass of the UV-B filters and
broadband filters in the preparation is at least 1;
wherein said UV-A filter is 2-(4-diethylamino-2-hydroxy-
benzoyl) benzoic acid hexyl ester.
Br. 38 (Claims App'x) (paragraphing added for clarity).
The following rejections are appealed:
Claims 7, 12, 22, 23, 28, 30, 32, 33, and 36-48 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite. Final Action 2.
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Application 13/402,522
Claims 46 and 47 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being in improper dependent form. Id. at 5.
Claims 7, 12, 22, 23, 28, 30, 32, 33, and 36-48 stand rejected under
35 U.S.C. § I03(a) over Schulz. 2 Id. at 7.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Indefiniteness
For claims under examination, "a claim is indefinite when it contains
words or phrases whose meaning is unclear," i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir.
2014); see also MPEP § 2I 73.02(I) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate "after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear"). Moreover, "if a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite." Ex parte Miyazaki, 89 USPQ2d 1207,
2008 WL 5105055, at *5 (BPAI 2008) (precedential).
2 US 2005/0008587 Al (pub. Jan. 13, 2005) ("Schulz").
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Application 13/402,522
As an initial matter, we note that the claims all recite "at least one
UV-B" as a component of the claimed cosmetic and/or dermatological
preparation. This language does not, on its face, invoke any specific
component because, as described in the Specification, UV-B is a type of
radiation, not a component; a cosmetic preparation does not comprise UV-B
light. See Spec. 1: 19--20. In the context of the claimed method, in view of
the description in the Specification, here, for the purposes of this decision,
we interpret this claim language to mean UV-B filter. See, e.g., id. at 5: 1-7.
Beginning with the rejected independent claims 7 and 12, they each
recite, in relevant part:
at least one UV-B ljilter] ... and/or broadband filter ...
adding one UV-A filter ... ,
wherein the ratio of the sum of the mass of said UV-A filter to
the sum of the mass of said at least one UV-B filter and/or
broadband filters in said cosmetic and/or dermatological
preparation is 1 to 6;
wherein the value of the ratio of the sum of the mass of the UV-A
filters to the sum of the mass of the UV-B filters and broadband
filters in the preparation is at least 1 ....
Br. 3 8 ( Claims App 'x) ( emphasis added). 3 The Examiner determined that
this language rendered the claims indefinite because "it's not clear if both
the broadband filters and U[V-B] filters are ... required." Final Action 3.
For the purpose of further examination, the Examiner went on to interpret
the claims as follows:
3 We also note that the second wherein clause recites "the UV-A filters,"
plural, for which there is no antecedent basis because the claim previously
required "one UV-A filter." For the purposes of this decision we interpret
this term in the singular.
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Application 13/402,522
Id.
claims 7 and 12 do not require both UVB and broadband filters,
so long as one of them is present. If the composition is
interpreted to comprise both components, the claims will be
interpreted as requiring a ratio of UV A to UVB+broadband of
1-6 and a ratio of UV A to UVB of at least 1. If the composition
comprises only a broadband fil[t]er, the composition must have
a ratio of UV A to broadband of "1-6" or "at least l", if the
composition only comprises UVB, the composition must have a
ratio of UV A to UVB of "at least l" or "1-6", either will satisfy
the claimed limitations.
Regarding claim 42, which is dependent from claim 7, the Examiner
determined that the claim is indefinite for "reciting two distinct ratios for
UV A filter compared to UVB filters," i.e., "1 to 6" and "at least 1." Final
Action 3.
Regarding claims 46 and 4 7, which are respectively indirectly
dependent from claim 7 via claim 22 and claim 12 via claim 23, the
Examiner determined that because claims 22 and 23 recite that no broadband
filter is provided and claims 46 and 4 7 recite that "the bisresorcinyltriazine
derivatives and benzotriazole derivatives are selected from the group
consisting of 2,4-bis { [ 4-(2-ethylhexyloxy )-2-hydroxy ]phenyl }-6-( 4-
methoxyphenyl)-1,3 ,5-triazine and 2,2'-methylenebis( 6-(2H-benzotriazol-2-
yl)-4-(1, 1,3,3-tetramethylbutyl)phenol," which refer to the at least one
broadband filter of the independent claims, "it's not clear if the composition
is now required to contain these bisresorcinyltriazine derivatives and
benzotriazole derivatives as this contradicts the claims from which they
depend." Final Action 2. We understand the contradiction (or
contradictions) to which the Examiner refers to be that the independent
claims require a ratio UV-A filter to UV-B and broadband filters, but no
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Application 13/402,522
broadband filters are present as required by claims 22 and 23, and also that
the bisresorcinyltriazine derivatives and benzotriazole derivatives further
specified in claims 46 and 47 are broadband filters per claims 7 and 12.
Regarding claims 7 and 12, Appellant argues the claim language
clearly invokes three options where (1) only the UV-B filter is provided; (2)
only the broadband filter is provided; and (3) both the UV-Band broadband
filter are provided. Br. 9. Regarding the ratios recited by these claims,
Appellant argues it is clear that when the claim recites a UV-B filter and a
broadband filter, this means that the masses of both respective components
are considered and compared to that of the UV-A filter, whether or not both
the UV-B and broadband filters are provided; the ratio for
UV-A:UV-B(+ broadband if present) is at least 1. Id. at 9--10.
Regarding the language of claims 7 and 12, "wherein the ratio of the
sum of the mass of said UV-A filter to the sum of the mass of said at least
one UV-B filter and/ or broadband filters in said cosmetic and/ or
dermatological preparation is 1 to 6," Appellant concedes that it is indefinite
and proposes amending the claims to remove this language. Br. 10-11.
Regarding the language of claims 46 and 4 7, Appellant concedes that
it is improper under§ 112, fourth paragraph, as discussed infra. Id. at 11. It
is, therefore, also indefinite.
Appellant's arguments, other than the concessions that claims 7, 12,
46, and 47 are indefinite (which are correct), are not persuasive.
Independent claims 7 and 42 are indisputably unclear, at least for the reasons
identified by the Examiner. These claims are generally unclear, but
specifically, the claims at once identify that the composition prepared can
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have a broadband filter or not, but that the mass of such a broadband filter
must be taken into consideration when determining if the limitations
requiring ratios of 1 to 6, or at least 1, are met. Further, two different ranges
of ratios of the same components are simultaneously claimed, one in a range
of 1 to 6 and one that is at least 1 (and infinitely higher). Requiring a limited
range and an essentially unlimited range of the same components
simultaneously is indefinite.
For the reasons above, we affirm the indefiniteness rejection.
Improper Dependent Form
35 U.S.C. § 112, fourth paragraph, states, inter alia, "a claim in
dependent form shall contain a reference to a claim previously set forth and
then specify a further limitation of the subject matter claimed." A claim that
does not comply with 35 U.S.C. § 112, fourth paragraph, is invalid. Pfizer,
Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006).
Claims 46 and 47 are discussed above regarding the Examiner's
indefiniteness rejection. The Examiner also determined that these claims fail
to further limit the invention defined by the claims from which they depend,
i.e., 22 and 23, respectfully. To reiterate, claims 46 and 47 specify types of
broadband filter materials, but claims 22 and 23 from which they depend
require that there not be any broadband filter provided. Besides being
indefinite as unclear, this claim structure does not further limit the dependent
claims.
Appellant concedes that this rejection is correct and we affirm the
rejection.
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Application 13/402,522
Obviousness
"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). "In determining
whether the subject matter of a patent claim is obvious, ... [ w ]hat matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
The Examiner determined that the appealed claims would have been
obvious over Schulz. 4 Final Action 7-13 and Answer 7-16 ( collectively
citing Schulz Abstract, ,r,r 10, 29, 61, 64, 70, 120-136, claims 11, 37, 38);
see also Schulz ,r,r 4 7, 14 7-151 ( disclosing sunscreen compositions
including the UV-A filter aminobenzophenone, also called hexyl 2-(4'-
(diethylamino)-2'-hydroxybenzoyl)benzoate, and UV-B filter
ethylhexyltriazone and/or UV-B filter diethylhexylbutamidotriazone where
the UV-A filter and UV-B filter components are provided in ratios including
1.375:1; 1.5:1; 2.5:1; 3.5:1; 5:1, for example). Although the claims are
indefinite, the Examiner has interpreted the claims as not requiring a
broadband filter. Final Action 2. We adopt this interpretation of the claims.
Claim 12 recites the same elements as claim 7, but uses "consist[ ing]
essentially of' transitional language. "By using the term 'consisting
essentially of,' the [claim] drafter signals that the invention necessarily
4 The person of ordinary skill in the art would have at least a bachelor's
degree in chemistry and at least 2 years of experience in the cosmetic
preparation field (not contested by Examiner). See Fl613er-Miiller
Declaration (dated July 30, 2015) ,r 7 ("Fl613er-Miiller Deel. 1"); Fl613er-
Miiller Declaration (dated August 4, 2015) ,r 7("Fl613er-Miiller Deel. 2").
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Application 13/402,522
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention." PPG
Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
However, the Examiner determined that it was unclear what the basic and
novel characteristics of the invention were in view of the Specification;
therefore, the Examiner construed this term as equivalent to "comprising."
Final Action 7. Appellant has the burden of showing that the introduction of
additional steps or components would materially change the characteristics
of the claimed invention. See In re De Lajarte, 337 F.2d 870 (CCPA 1964).
We discern no error in the Examiner's determinations. We agree with
and adopt the Examiner's findings of fact and rationale in support of the
obviousness rejection as set forth in the Final Office Action and Answer.
Final Action 7-13; Answer 7-16. We address Appellant's arguments below.
Pointing to the claims' preamble, Appellant argues Schulz is silent on
increasing SPF by at least 1.3. Br. 15-16.
This argument is not persuasive. An expression of an intended result
or purpose in a preamble is not a claim limitation where it does not result in
a manipulative difference in the steps of the claim. Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). Here,
the 1.3 SPF units increase in SPF is an expression of intended result that
would manifest upon performance of the combining UV-Band UV-A filter
components, as claimed (and as disclosed in the prior art). The preamble,
thus, does not distinguish over the cited prior art.
Appellant argues Schulz does not teach a UV-B filter selected from
ethylhexyl triazone and diethylhexylbutamido triazone and does not teach a
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broadband filter selected from bisresorcinyltriazine derivatives and
benzotriazole derivatives, as claimed. Br. 16.
This is not persuasive. As discussed above, the claims do not require
a broadband filter. Further, Schulz expressly teaches embodiments
combining UV-A filter aminobenzophenone (i.e., hexyl 2-(4'-
( diethylamino )-2 '-hydroxybenzoyl)benzoate) and UV-B filter
ethylhexyltriazone and/or diethylhexylbutamidotriazone, as claimed, with or
without broadband filter methylenebisbenzotriazolyltetramethylbutylphenol.
Schulz Abstract, ,r,r 47, 70, 147-151. Furthermore, Schulz teaches these
UV-A and UV-B components are provided in ratios ranging from, e.g., 1 :2
to 5: 1, as claimed. Id. ,r,r 14 8-151.
Appellant argues "they have established unexpected results with [the
claimed] combination," and that this is evidence of non-obviousness. Br. 16.
In support of this argument, Appellant cites two § 1.13 2 Declarations:
Fl613er-Miiller Declaration 1 and Fl613er-Miiller Declaration 2. See Br. 17.
Appellant also points to the examples disclosed in the Specification as
evidence of unexpected results. Id. at 19 (citing Spec. 19).
Fl613er-Miiller Declaration 1 states "a person of ordinary skill in the
art would not expect that the addition of high quantities of UV-A 1 filters
[ would] account for a significant increase of SPF." Fl613er-Miiller Deel. 1
,r 9. The Declaration concludes that the SPF boost achieved using the
invention is disproportionately high compared to a sunscreen simulator
because, compared to the sunscreen simulator, the invention's results are
non-linear and improved regarding SPF. Id. ,r,r 9-15.
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It is unclear what Appellant's declarant means by a high quantity of
UV-A filter and a significant increase in SPF. Furthermore, a sunscreen
simulator, which is the basis for comparison with the invention in the
declaration, is not the closest prior art. The Fl613er-Miiller Declaration 1
does not compare the invention's results to the closest prior art, which is
disclosed in Schulz, particularly the embodiments disclosed and also
claimed by Schulz that include the UV-Band UV-A filter components in the
ratios of Appellant's claims. Schulz discloses the components of the
invention and in the ratios of the claimed invention; there is a total overlap.
See Schulz Abstract, ,r,r 10, 29, 47, 61, 64, 70, 120-136, 147-151, claims 11,
3 7, 3 8 (particularly Examples 6 and 7 at ,r 148, which are especially close
prior art).
The Fl613er-Miiller Declaration 2 compares the claimed invention to
an embodiment of Schulz where the UV-A filter buytlmethoxy-
dibenzoylmethane, also known as 4-(tert-butyl)-4'-
methoxydibenzoylmethane, also known as "BMDBM," rather than to the
Schulz embodiments where the UV-A filter is aminobenzophenone, also
called hexyl 2-(4'-(diethylamino )-2'-hydroxybenzoyl)benzoate, and called
"DHHB" or "Uvinul® A Plus" by Appellant, which is the claimed UV-A
filter. Fl613er-Miiller Deel. 2 ,r,r 8-12; see also, e.g., Spec. 7:20-31
( discussing claimed UV-A filter); Schulz ,r 148 (Examples 6 and 7). The
Fl613er-Miiller Declaration 2, as does Appellant in general, ignores Schulz's
disclosure of the claimed invention's UV-Band UV-A components,
provided in ratios as also claimed. This declaration does not compare the
invention with the closest prior art, does not identify how the invention
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differs from the closest prior art, and does not indicate what the skilled
artisan would have expected in SPF improvements using the composition of
the closest prior art.
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
And, even were it persuasively established, "[ s ]ynergism, in and of itself, is
not conclusive of unobviousness in that synergism might be expected." In re
Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979). The Appellant's evidence does
not meet the requirements to be persuasive on non-obviousness.
Appellant provides separate sections of the brief addressing claims 22
and 23, claim 32, claim 33, claims 36 and 38, claims 37 and 39, claim 40,
claim 41, claim 42, claim 43, claim 44, and claim 45, respectively. Br. 30-
3 7. Each of these sections respectively sets out the language of the claim, or
claims, and indicates that the declaration evidence, discussed above,
supports reversing the rejection as to the respective claim or claims.
Statements in a brief that "merely mention [a] claim ... and lack any type of
separate, substantive argument concerning the claim" are not sufficient to
constitute separate argument regarding that claim under 37 C.F.R.
§ 4I.37(c)(l)(iv). See In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011).
Furthermore, the deficiencies of Appellant's declaration evidence are
discussed above and also apply to these claims; no other separate arguments
are respectively made. Therefore, these claims fall with claim 7.
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For the reasons above, we affirm the obviousness rejection.
SUMMARY
The rejection of the claims under 35 U.S.C. § 112, second paragraph,
as indefinite is affirmed.
The rejection of the claims under 35 U.S.C. § 112, fourth paragraph,
is affirmed.
The obviousness rejection under 35 U.S.C. § 103 is affirmed.
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)(l )(iv).
AFFIRMED
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