Ex Parte Hoop et al

Patent Trial and Appeal Board

Nov 2, 2016

11039377 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111039,377 01119/2005
13897 7590 11/04/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Kerstin Hoop
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.
3321-P30872 1092
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KERSTIN HOOP, HEIKE LERG,
ANJA SABINE MUELLER, BENTE NISSEN,
MELANIE STEINFORTH, and MARTIN SUGAR
Appeal2014-003876
Application 11/039,377
Technology Center 1600
Before JEFFREYN. FREDMAN, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving a composition.
The Examiner rejected the claims as failing to comply with the written
description requirement and as obvious. We have jurisdiction under 3 5
U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"The present invention relates to cosmetic and dermatological light
protection preparations, in particular it relates to cosmetic and
1 Appellants identify the Real Party in Interest as Beiersdorf AG
(see Br. 3).
Appeal2014-003876
Application 11/039,377
dermatological formulations with increased UV-A protection performance"
(Spec. 1:9-11).
The Claims
Claims 46-65 are on appeal. Claim 46 is representative and reads as
follows:
46. A composition in the form of a water-in-oil emulsion,
wherein the composition comprises:
(a) at least 1 % by weight of PEG-30 dipolyhydroxystearate,
(b) at least one ester of cinnamic acid,
( c) at least one dibenzoylmethane derivative, and
( d) at least 1. 5 % by weight of titanium dioxide particles,
and wherein the composition further comprises at least 3 5 %
by weight of an oil phase, each based on a total weight of the
composition.
The Issues2
A. The Examiner rejected claim 46 under 35 U.S.C. § 112, first
paragraph (Final 1A .. ct. 3).
B. The Examiner rejected claims 46-65 under 35 U.S.C. § 103(a) as
obvious over Heidenfelder3 (Final Act. 4---6).
A. 3 5 U.S. C. § 112, first paragraph
The Examiner finds " [ c] laim 46 recites 'at least 1 % PEG-3 0', said
percentage range is not described in either the specification or the claims as
originally filed." (Final Act. 3).
2 The Examiner withdrew rejections of claims 49, 51, 57, 58, 62,
64, and 65 under 35 U.S.C. § 112, first paragraph (see Ans. 5).
3 Heidenfelder et al., US 2003/0152598 Al, published Aug. 14,
2003 ("Heidenfelder").
2
Appeal2014-003876
Application 11/039,377
Appellants contend that:
original claim 1 does not recite any percentage range for PEG-
30 dipolyhydroxystearate, thereby indicating that the lower
value of the percentage range recited in claim 17 ( 1 % by
weight) is a preferred lower value for the concentration of PEG-
30 dipolyhydroxystearate (as also reflected by the fact that all
of the eleven W /0 emulsions exemplified in the instant
application contain at least 1 % by weight of PEG-30
dipolyhydroxystearate ), and that the upper value of the
percentage range recited in claim 1 7 ( 5 % by weight) is a
preferred upper value of the concentration of PEG-30
dipolyhydroxystearate.
(Br. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the limitation "at least 1 % by
weight of PEG-30 dipolyhydroxystearate" in claim 46 lacks descriptive
support in the Specification?
Findings of Fact
1. Original claim 17 of the Specification is reproduced below:
17. A cosmetic or dermatogical composition
compnsmg:
1 to 5% by weight PEG-30 dipolyhydroxystearate
based on the total weight of the preparation; and
a UV filter substance consisting essentially of
at least one ester of cinnamic acid;
at least one dibenzoylmethane derivative; and
at least 1. 5% by weight of titanium dioxide
particles based on the total weight of the preparation, said
titanium dioxide particles having a coating thereon.
(Spec. 34:5-13).
3
Appeal2014-003876
Application 11/039,377
2. The Specification provides examples using 1 to 5 percent PEG-
30 dipolyhydroxystearate (see Spec. 26: 15, 29:4).
Principles of Law
Claim 1 recites a solids content range of "at least 35%," which
reads literally on embodiments employing solids contents
outside the 25-60% range described in the Swiss application ...
we are of the opinion that the PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims. By pointing to the fact that
claim 1 reads on embodiments outside the scope of the
description, the PTO has satisfied its burden. Appellants thus
have the burden of showing that the upper limit of solids
content described, i. e., 60%, is inherent in "at least 35%," as
that limitation appears in claim 1. Appellants have adduced no
evidence to carry this burden[.]
In re Wertheim, 541F.2d257, 263-264 (CCPA 1976).
Analysis
As in Wertheim, the Examiner finds that the original disclosure of a 1
to 5% range for amounts of PEG-30 dipolyhydroxystearate in original claim
17 does not provide descriptive support for the range in claim 46 to "at least
1 %" PEG-30 dipolyhydroxystearate because "Appellant has no support for
any percentage outside of the disclosed 1-5% range especially an open-
ended range such as 'at least 1 %'"(Ans. 5; see FF 1-2).
Wertheim places the burden on Appellants to show that the upper limit
of 5% is inherent in the "at least 1 %" limitation. Wertheim, 541 F .2d at 264.
Just as in Wertheim, Appellants have provided no evidence to show that the
upper limit of 5% is inherent in the "at least 1 %" limitation of claim 1, or
otherwise rebutted the Examiner's position.
4
Appeal2014-003876
Application 11/039,377
Conclusion of Law
The evidence of record support the Examiner's conclusion that the
limitation "at least 1 % by weight of PEG-30 dipolyhydroxystearate" in
claim 46 lacks descriptive support in the Specification.
B. 35 U.S.C. § 103(a) over Heidenfelder
The Examiner finds Heidenfelder does "not explicitly disclose an
example wherein the claimed components at the claimed percentages are
combined into a single composition. However, Heidenfelder ... [does] teach
that all of the claimed components within the claimed percentage ranges
may be combined in a single formulation" (Final Act. 5).
The Examiner finds it obvious "to select each component and
combine them as instantly claimed because Heidenfelder et al. suggests that
the instant components can be combined or mixed together" (Final Act. 6).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Heidenfelder renders claims
46, 50, 57, and 64 obvious?
Findings of Fact
3. Heidenfelder teaches the "person skilled in the art is naturally
familiar with a large number of options of formulating stable W /0
preparations for cosmetic or dermatological use, for example in the form of
creams and ointments" (Heidenfelder i-f 14 ).
4. Heidenfelder teaches "[i]f desired, W/O emulsions
corresponding to the present invention further comprise one or more
emulsifiers" where the emulsifiers include "PEG-30 dipolyhydroxystearate"
(Heidenfelder i-fi-198-99).
5
Appeal2014-003876
Application 11/039,377
5. Heidenfelder teaches the "total amount of emulsifiers used
according to the invention in the cosmetic or dermatological preparations
according to the invention is advantageously chosen from the range from
0.1-10.0% by weight, preferably 0.5-5.0% by weight" (Heidenfelder i-f 108).
6. Heidenfelder teaches that it is "advantageous for the purposes
of the present invention to create cosmetic and dermatological preparations
whose main purpose is not protection against sunlight, but which
nevertheless have a content of UV protection substances. Thus, for example,
UV-A and/or UV-B filter substances are usually incorporated into day
creams" (Heidenfelder i-f 116).
7. Heidenfelder teaches "[p ]articularly advantageous UV filter
substances which are liquid at room temperature for the purposes of the
present invention are ... esters of cinnamic acid, preferably 2-ethylhexyl
4-methoxycinnamate and isopentyl 4-methoxycinnamate" (Heidenfelder
,-r 173).
8. Heidenfelder teaches that "[a]dvantageous dibenzoylmethane
derivatives for the purposes of the present invention are, in particular, 4-
(tert-butyl)-4'-methoxydibenzoylmethane (CAS No. 70356-09-1 ), which is
sold by BASF under the name Uvinul® BMBM" (Heidenfelder i-f 181).
9. Heidenfelder teaches "[ c ]osmetic and dermatological
preparations according to the invention also advantageously, but not
obligatorily, comprise inorganic pigments based on metal oxides and/or
other metal compounds which are insoluble or virtually insoluble in water,
in particular the oxides of titanium (Ti02)" (Heidenfelder i-f 192).
6
Appeal2014-003876
Application 11/039,377
10. Heidenfelder teaches the "total amount of one or more X-ray
amorphous oxide pigments optionally used in the finished cosmetic or
dermatological preparations is ... particularly preferably from 1 to 5% by
weight" (Heidenfelder i-f 197).
11. Heidenfelder teaches the "total amount of one or more UV filter
substances liquid at room temperature optionally used in the finished
cosmetic or dermatological preparations is advantageously chosen from the
range 0.1 % by weight to 30% by weight, preferably from 0.5 to 20% by
weight, in each case based on the total weight of the preparations"
(Heidenfelder i-f 180).
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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
"A prima facie case of obviousness typically exists when the ranges of
a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 4---6; FF 3-11) and agree that
the claims are rendered obvious by Heidenfelder. We address Appellants'
arguments below.
Claim 46
Appellants contend that
HEIDENFELDER discloses an unusually high number of
optional components of various types which can be present in
7
Appeal2014-003876
Application 11/039,377
the W /0 emulsions disclosed therein, giving rise to thousands,
if not millions, of possible combinations of components.
Further, the components recited in the instant claims are
mentioned in HEIDENFELDER in laundry lists of considerable
lengths.
(Br. 8-9). Appellants contend "the laundry lists provided by
HEIDENFELDER give rise to, for example, more than 50,000 different
combinations of one emulsifier, two organic UV filter substances (or classes
of UV filter substances) and one inorganic pigment. Clearly,
HEIDENFELDER provides no apparent reason for providing and testing
each of these combinations" (Br. 10).
We do not find this argument persuasive because our obviousness
result is consistent with Wrigley, where the Federal Circuit found a "strong
case of obviousness based on the prior art references of record. [The claim]
recites a combination of elements that were all known in the prior art, and all
that was required to obtain that combination was to substitute one well-
known ... agent for another." Wm. Wrigley Jr. Co. v. Cadbury Adams USA
LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). The instant case is factually
better for obviousness than Wrigley because a single reference,
Heidenfelder, suggests all of the claimed elements (FF 3-11). In Wrigley
there was one reference that taught a number of different cooling agent
combinations as well as additional prior art references teaching that the
specific combination of cooling agents was also known. Id. at 1361, 1364.
We note that Appellants do not identify or establish any unexpected
results or secondary considerations that would support a finding that the
claimed combination was unpredictable. See In re Arkley, 455 F.2d 586,
8
Appeal2014-003876
Application 11/039,377
587 (CCP A 1972) ("Such picking and choosing may be entirely proper in
the making of a 103, obviousness rejection, where the applicant must be
afforded an opportunity to rebut with objective evidence any inference of
obviousness.")
Appellants cite the Specification as teaching a composition
"characterized by very good light protection effectiveness, an exceptionally
high broadband protection performance and by excellent skin compatibility
coupled with excellent skin care data" (Br. 12, citing Spec. 5:24--26).
Appellants contend that
It is not seen that HEIDENFELDER teaches or suggests that
the favorable results set forth above can be achieved by
including in the compositions disclosed therein not just any UV
filter substances in addition the required amino-substituted
hydroxybenzophenones of formula I but a combination of three
specific (classes of) UV filter substances
We are not persuaded because Appellants provide no evidence, as
opposed to argument, of unexpected results or other secondary
consideration. 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.")
In addition, Appellants do not identify any comparison between the
Specification and the closest prior art of Heidenfelder, or otherwise point to
evidence that demonstrates any improvements experimentally. 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."). Our
9
Appeal2014-003876
Application 11/039,377
review of the Examples in the Specification does not find a comparison with
any prior art compounds for any property whatsoever (see Spec. 26: 11 to
31:6).
Appellants contend that "it is only with hindsight that one of ordinary
skill in the art would arrive at the conclusion that the compositions of
HEIDENFELDER will benefit in any respect from the presence of a
combination of additional UV filter substances and in particular, the
combination recited in the instant claims" (Br. 14; underlining omitted).
We are not persuaded. While we are fully aware that hindsight bias
may plague determinations of obviousness, Graham v. John Deere Co., 383
U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly
stated that the "combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR, 550 U.S. at 416. In the instant case, each of the elements in
the claim were taught as optional components by Heidenfelder (FF 3-10),
and Appellants provide no evidence establishing unpredictability in
combining these known components into a cosmetic composition.
Claims 50, 57, and 64
Appellants contend that "HEIDENFELDER neither teaches nor
suggests that the presence of a combination of components (b) to ( d) as
recited in the instant independent claims would be of benefit in the
compositions disclosed therein, let alone in a total concentration of at least 8
% by weight" (Br. 15).
We find this argument unpersuasive because the Examiner notes that
"Example 3 contains claimed component (a) PEG-30 dipolyhydroxystearate,
10
Appeal2014-003876
Application 11/039,377
component (b) ethylhexylmethoxycinnamate, and component ( d) micronized
titanium dioxide. Further, the recited percentages either meet or are within
10% of the claimed percentage limitations, including titanium dioxide
present at the highest weigh fraction of components (b ), ( c ), and ( d)" (Ans.
6-7).
Moreover, the ranges in Heidenfelder overlap those of claims 50, 57,
and 64 (see FF 10-11 ), and Appellants provide no evidence establishing that
the specific amounts chosen were unobvious. See In re Peterson, 315 F .3d
1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.") Moreover,
Heidenfelder teaches the use of different amounts (FF 1011) and "where 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, 457 (CCPA 1955).
Conclusions of Law
The evidence of record supports the Examiner's conclusion that
Heidenfelder renders claims 46, 50, 57, and 64 obvious.
SUMMARY
In summary, we affirm the rejection of claim 46 under 35 U.S.C.
§ 112, first paragraph.
We affirm the rejection of claims 46, 50, 57, and 64 under 35 U.S.C.
§ 103(a) as obvious over Heidenfelder. Claims 47--49, 51-56, 58-63 and 65
fall with claims 46, 50, 57, and 64.
11
Appeal2014-003876
Application 11/039,377
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