Ex Parte HolyfieldDownload PDFPatent Trial and Appeal BoardMay 23, 201714544089 (P.T.A.B. May. 23, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. LH-8 7413 EXAMINER AHMED, HASAN SYED ART UNIT PAPER NUMBER 1615 MAIL DATE DELIVERY MODE 14/544,089 11/24/2014 7590 Gary C. Honeycutt 4728 Ravendale Richardson, TX 75082 05/23/2017 Louise Holyfield 05/23/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOUISE HOLYFIELD Appeal 2016-004330 Application 14/544,089* 1 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to skin care formulations. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification discloses that the chemical “Bemotrizinol (Tinosorb S) is yellow in color. When the chemical has been used in a sunscreen or skin care formulation the product has also been yellow in color.” Spec. 3. 1 Appellant states that Louise Holyfield is the real party in interest. App. Br, 1. The Appeal Brief, Reply Brief, Specification, and Declaration of Frank Rodriguez (signed April 12, 2015; “Rodriguez Declaration”) do not include page numbers. We cite to those documents as if the first page was page 1, and the remaining pages were numbered consecutively. Appeal 2016-004330 Application 14/544,089 The Specification discloses that the use of Bemotrizinol in sunscreens presents certain difficulties, in that “[degradation of the yellow color has continued during the shelf life of any product containing the chemical. The use of Bemotrizinol (Tinosorb S) in a sunscreen or skin care formulation has caused permanent staining to any clothing that it contacted.” Spec. 3. The Specification discloses that, in contrast to the yellow color of Bemotrizinol, “[w]hite is the commercially preferred color for any sunscreen or skin care formulation used on the face and body. White represents purity to the consumer.” Id. To address the issues presented by including Bemotrizinol in sunscreen and skin care compositions, the Specification discloses a “white, color-stable topical antiaging, anti-oxidant sunscreen or skin care formulation” that contains Bemotrizinol, or a derivative thereof, in “an aqueous emulsion formulation that is white in color and remains white in color during the shelf life of the product, and . . . will not cause permanent staining to clothing or other fabrics during the shelf life of the formulation.” Id. at 3^4. The Specification discloses: Due to unexpected results [a] third aspect of the invention provides a white, color stable topical anti-aging, anti oxidant sunscreen or skin care formulation comprising of 1) an amount of Bemotrizinol (Tinosorb S), or a derivative thereof, and 2) an amount of CoQlO, or a derivative thereof, in an aqueous emulsion formulation that is white in color and that will remain white in color during the shelf life of the product formulation, and 3) formulation not cause permanent staining to clothing during the shelf life of the formulation. Due to additional unexpected results [a] fourth aspect of the invention provides a white, color stable topical anti-aging, anti-oxidant sunscreen or skin care formulation comprising of 2 Appeal 2016-004330 Application 14/544,089 1) an amount of Bemotrizinol (Tinosorb S), or a derivative thereof, and 2) an amount of CoQlO, or a derivative thereof, and 3) an amount of Vanillin, or a derivative thereof, in an aqueous emulsion formulation that is white in color and that will remain white in color during the shelf life of the product formulation, and 4) formulation not cause permanent staining to clothing during the shelf life of the formulation. Spec. 4—5. The Specification discloses that, “to preserve whiteness when using Bemotrizinol (Tinosorb S), or a derivative thereof, additional ingredients are added to the above formulation. The preferred additional ingredients are octyl salicylate and octyl methoxycinnamate and titanium dioxide.” Id. at 5. Claims 1 and 7 are representative and read as follows (paragraphing added): 1. A white, color-stable, topical anti-aging anti-oxidant skin care formulation comprising: a white emulsion including water, oil, and at least one emulsifier; an effective amount of bemotrizinol for sunscreen protection; and effective amounts of octyl salicylate, octyl methoxycinnamate and titanium dioxide for preservation of whiteness; and said formulation having stable whiteness for its entire shelf life, and having no ability to cause staining while in contact with clothing and other fabrics. 7. A formulation as in claim 1 further including an effective amount of vanillin as an antioxidant. App. Br. 6. 3 Appeal 2016-004330 Application 14/544,089 The following rejections are before us for review: (1) Claims 1—6, under 35 U.S.C. § 103(a), as unpatentable over Kaur2 (Final Act. 4—6); and (2) Claims 1—7, under 35 U.S.C. § 103(a), as unpatentable over Kaur and Schlessinger3 (Final Act. 6). OBVIOUSNESS—KAUR The Examiner’s Prima Facie Case In rejecting claims 1—6 over Kaur, the Examiner found that Kaur discloses topical compositions having anti-aging benefits, with emulsions being taught as a suitable form of the compositions, and with bemotrizinol, octyl salicylate, octyl methoxycinnamate, and titanium dioxide all being identified as ‘“additional cosmetically active agents.’” Final Action 5 (entered May 20, 2015; quoting Kaur 149). Based on Kaur’s teachings, the Examiner concluded that an ordinary artisan would have considered it obvious to prepare “a white emulsion including water, oil, and at least one emulsifier, bemotrizinol, octyl salicylate, octyl methoxycinnamate, and titanium dioxide, as taught by Kaur.” Id. at 5—6. The Examiner reasoned that the artisan “would have been motivated to make such a composition because it is useful for anti-aging benefits, as explained by Kaur . . . .” Id. at 6. Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability. . . . 2 US 2014/0037563 A1 (published Feb. 6, 2014). 3 US 2012/0100183 A1 (published Apr. 26, 2012). 4 Appeal 2016-004330 Application 14/544,089 After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. Appellant does not argue the claims subject to this ground of rejection separately. We select claim 1 as representative of the rejected claims. 37 C.F.R. § 41(c)(l)(iv). Appellant does not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion that the composition recited in claim 1 would have been obvious to an ordinary artisan in view of Kaur. Kaur discloses topical skin formulations that contain as the primary ingredient either the compound Paulownin or extracts of Paulownia tomentosa wood. Kaur 12. Kaur discloses that its invention relates to the “discovery that the compound Paulownin exhibits significant and unexpected skin lightening, anti-aging benefits and other properties.” Id. 1 6. Thus, as required by Appellant’s claim 1, Kaur describes anti-aging skin care compositions. As also required by claim 1, Kaur discloses that “[sjingle emulsion skin care preparations, such as lotions and creams, of the oil-in-water type and water-in-oil type are well-known in the art and are useful in the subject invention. Multiphase emulsion compositions, such as the water-in-oil-in- water type or the oil-in-water-in-oil type, are also useful in the subject invention.” Id. 145. Kaur discloses that, “[i]n general, such single or multiphase emulsions contain water, emollients, and emulsifiers as essential ingredients.” Id. As to the remaining ingredients recited in the composition of Appellant’s claim 1, Kaur discloses that its compositions “may further 5 Appeal 2016-004330 Application 14/544,089 comprise any of a variety of additional cosmetically active agents.” Kaur 149. Kaur discloses in particular that “[ejxamples of various suitable additional cosmetically acceptable actives include . . . UV filters such as . . . octyl methoxycinnamate (Octinoxate ), octyl salicylate (Octisalate), . . . Bemotrizinol (Tinosorb S), . . . titanium dioxide, . . . and derivatives and mixtures thereof.” Id. Kaur, thus, teaches that Bemotrizinol, octyl salicylate, octyl methoxycinnamate, and titanium dioxide were UV filtering compounds that were suitably combined with each other for use in a topical anti-aging composition. As the Supreme Court has explained, “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273 (1976)). In the present case, because Kaur teaches that its topical anti-aging compositions were suitably formulated as emulsions, and because Kaur also teaches that Bemotrizinol, octyl salicylate, octyl methoxycinnamate, and titanium dioxide were UV filtering compounds suitably combined with each other for use in such anti-aging compositions, Appellant does not persuade us that Kaur failed to provide a reason for combining the particular ingredients required by claim 1. See App. Br. 3 (arguing “[tjhere is no guidance in Kaur to select any specific ingredient, nor any specific combination of optional ingredients from about 300 listed”); id. at 4 (arguing “there is no motivation found in Kaur to combine the exact four 6 Appeal 2016-004330 Application 14/544,089 ingredients combined by Appellant”); Reply Br. 1 (identifying 20 categories of optional ingredients disclosed in Kaur for its compositions). As to claim 1 ’s features of stable whiteness and inability to stain fabrics, we acknowledge, as Appellant argues (App. Br. 3^4; Reply Br. 2 (both citing MPEP § 2112)), that Kaur does not describe a product identical to the product of claim 1, such that Kaur anticipates claim 1. Nonetheless, because Kaur suggests a composition containing all of the ingredients recited in Appellant’s claim 1, and in particular the claimed whiteness-imparting/whiteness-preserving compounds, Appellant does not persuade us that the Examiner lacked a reasonable basis for finding that the suggested composition would have claim 1 ’s features of stable whiteness and inability to stain fabrics. Accordingly, for the reasons discussed, Appellant does not persuade us that the Examiner failed to make out a prima facie case that the composition recited in claim 1 would have been obvious to an ordinary artisan in view of Kaur. For the reasons discussed below, moreover, we are not persuaded that Appellant has advanced sufficient objective evidence of nonobviousness to outweigh the Examiner’s evidence of prima facie obviousness as to claim 1. Appellant advances the Rodriguez Declaration to “provide evidence that stable whiteness and non-staining were in fact achieved. These achievements were disclosed in the original specification. Proof of statements made in the original specification is not normally required, except when the Examiner finds and cites contradictory evidence. There is no such evidence.” App. Br. 4. 7 Appeal 2016-004330 Application 14/544,089 As our reviewing court has pointed out, however, “any superior property must be unexpected to be considered as evidence of non obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). In addition, “[m]ere improvement in properties does not always suffice to show unexpected results. . . . [W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). In the present case, none of the Appeal Brief, Reply Brief, or Rodriguez Declaration asserts specifically that claim 1 ’s features of stable whiteness and inability to stain fabrics would have been unexpected by an ordinary artisan. Rather, the only assertions of record as to unexpected results are the assertions from the Specification, noted above, that compositions containing either (a) CoQlO or a derivative, or (b) CoQlO and vanillin or their derivatives, yield an unexpected result. See Spec. 4—5. We first note that neither of those assertions is specific as to what properties were unexpected. We note also that claim 1 does not require either CoQlO or vanillin in its formulation. Claim 1, therefore, is not commensurate in scope with the sole assertions of record regarding unexpected results. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Evidence of secondary considerations must be reasonably commensurate with the scope of the claims.”). We also note, nonetheless, that the second formulation evaluated in the Rodriguez Declaration (corresponding to Example E from the Specification) contained CoQlO, and the third formulation tested in the 8 Appeal 2016-004330 Application 14/544,089 Rodriguez Declaration (corresponding to Example G from the Specification) contained CoQlO and vanillin. Rodriguez Declaration 2. It is well settled however, that “when 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). We agree with Appellant (see Reply Br. 2) that, in this instance, comparison to a product merely suggested by the prior art is inappropriate. See In re Chapman, 357 F.2d 418, 422 (CCPA 1966) (when evaluating evidence of unexpected results, it is improper to require the applicant to compare the claimed invention to the product suggested by the prior art because doing so “would amount to requiring comparison of the results of the invention with the results of the invention”). Nonetheless, the second and third formulations tested in the Rodriguez Declaration, which contain the ingredients asserted in the Specification as providing unexpected results (see Spec. 4—5), were not compared to any alleged prior art product. Rather, the second and third formulations tested in the Rodriguez Declaration were incubated at 40- C for six weeks as an equivalent to a one-year shelf life, but no alleged prior art composition was subjected to the same treatment and compared to the inventive compositions. See Rodriguez Declaration 3, and second photo cited therein. As noted above, moreover, Mr. Rodriguez does not state that the one-year shelf life was an unexpected result. In sum, the sole assertions on the current record regarding unexpected results do not state specifically what properties were alleged to be unexpected. Those assertions, moreover, were made in relation to products 9 Appeal 2016-004330 Application 14/544,089 having either CoQlO or CoQlO plus vanillin in the formulation, ingredients that are not present in the composition recited in claim 1. In addition, as discussed, the sole compositions for which unexpected results were asserted were not compared to any prior art product, and the declarant made no assertion that the shelf life exhibited by those products was unexpected. Therefore, in relation to the assertions of unexpected results in the Specification, we are not persuaded that Appellant has advanced evidence sufficient to outweigh the evidence of prima facie obviousness presented by the Examiner as to claim 1. The first formulation tested in the Rodriguez Declaration, which corresponds to Example A from the Specification (see Rodriguez Declaration 1—2; see also Spec. 6 (Example A has same formulation)), was tested for shelf life in the same manner as the formulations discussed above. See Rodriguez Declaration 3, and second photo cited therein. As noted above, however, the shelf life evaluation did not involve a comparison to any prior art product. As also discussed above, Appellant does not assert specifically, nor does Appellant identity any specific assertion in the record, nor does Mr. Rodriguez assert, that the one-year shelf life was an unexpected result. Appellant does not persuade us, therefore, that the evidence advanced to show the shelf life of the inventive products is sufficient to outweigh the Examiner’s evidence of prima facie obviousness as to claim 1. As noted above, we agree with Appellant that, in this instance, comparison to a product merely suggested by the prior art is inappropriate. See In re Chapman, 357 F.2d at 422. Nonetheless, even if we assume that Eucerin is a sufficient basis for comparison to the product of claim 1, the Rodriguez Declaration includes no 10 Appeal 2016-004330 Application 14/544,089 assertion that the results of the comparison described therein between Eucerin and the first formulation would have been unexpected to an ordinary artisan. See Rodriguez Declaration 3—4, and photos cited therein. In particular, we acknowledge that Eucerin stained a washcloth, and after being left on the cloth for six days, and then being washed, the stain remained on the washcloth. Id. at 4. We acknowledge also that the formulation corresponding to Example A of the Specification did not stain the washcloth, and no stain was seen after washing. Id. Again, however, neither Appellant nor Mr. Rodriguez assert specifically that the demonstrated differences in properties between Eucerin and the formulation of Example A shown in the comparison would have been unexpected. Absent some evidence that the differences in properties between Eucerin and the formulation of Example A would have been unexpected, the evidence advanced by Appellant is insufficient to outweigh the evidence of prima facie obviousness presented by the Examiner. See Pfizer v. Apotex, 480 F.3d at 1371 (“[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.”). In sum, for the reasons discussed, Appellant does not persuade us that the Examiner failed to make out a prima facie case of obviousness as to claim 1. Because we are not persuaded, for the reasons discussed, that Appellant has advanced objective evidence of nonobviousness sufficient to outweigh the evidence of prima facie obviousness, we affirm the Examiner’s rejection of claim 1 over Kaur. Because they were not argued separately, claims 2—6 fall with claim 1. 37 C.F.R. § 41(c)(l)(iv). 11 Appeal 2016-004330 Application 14/544,089 OBVIOUSNESS— KAUR AND SCHLESSINGER In rejecting claim 7 over Kaur and Schlessinger, the Examiner cited Kaur for the teachings discussed above, and cited Schlessinger as evidence that it would have been obvious to use vanillin as an antioxidant ingredient in a skin care composition. Final Action 6. Appellant argues only that Schlessinger “does nothing to change the deficiencies of Kaur. So the rejection is improper for the reasons stated above.” App. Br. 4. As discussed above, however, we discern no error in the Examiner’s conclusion of obviousness as to claim 1 in view of Kaur. Accordingly, for the reasons discussed above, and because we discern no error in the Examiner’s combination of Kaur and Schlessinger, we affirm this rejection as well. SUMMARY We affirm both of the Examiner’s rejections. TIME PERIOD 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 12 Copy with citationCopy as parenthetical citation