Ex Parte Noel et al

Board of Patent Appeals and Interferences

Feb 16, 2012

10685505 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTINE NOEL
and ANNE-FRANCE LIVERNETTE
__________

Appeal 2012-000646
Application 10/685,505
Technology Center 1600
__________

Before ERIC GRIMES, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
an oil-in-water emulsion composition comprising a hydrophilic polymer, at
least one elastomeric organopolysiloxane, and a glycine derivative, where
the composition is free of surfactant. The Examiner has rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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STATEMENT OF THE CASE
Claims 1, 6, 8-18 and 20 are on appeal. Claim 1 is the only
independent claim and reads as follows (emphasis added):
1. A stable composition in the form of an oil-in-water emulsion
comprising an oily phase dispersed in an aqueous phase and a
hydrophilic polymer, said composition further comprising:
(1) at least one elastomeric organopolysiloxane dispersed in the
oily phase, wherein the elastomeric organopolysiloxane is present in
an amount ranging from 1 to 20% by weight with respect to the total
weight of the composition and is obtained by addition and
crosslinking reaction, in the presence of a catalyst, of at least:
- a first organopolysiloxane (i) containing two vinyl groups in
α-ω position on the silicone chain per molecule; and
- a second organopolysiloxane (ii) containing at least one
hydrogen atom linked to a silicon atom per molecule, and
(2) a glycine derivative selected from the group consisting of
capryloylglycine, undecylenoylglycine, and mixtures thereof, wherein
the glycine derivative is present in an amount sufficient to stabilize
the composition, wherein the composition is free of surfactant.
The claims stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lorant et al. (EP 1055406 published Nov. 29, 2000 or
U.S. Pat. No. 6,465,402 B1 issued Oct. 15, 2002, the English equivalent) in
view of Fotinos (U.S. Pat. No. 6,346,255 B1 issued Feb. 12, 2002).
Issues
The issues in this case are (1) whether the Examiner has presented a
prima facie case of obviousness based on Lorant in view of Fotinos, and if
so, (2) whether Appellants’ evidence of unexpected results regarding
stability of the composition of claim 1 comprising “a glycine derivative
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selected from the group consisting of capryloylglycine,
undecylenoylglycine, and mixtures thereof” is sufficient to rebut the prima
facie case.
Findings of Fact
1. The Examiner finds that Lorant teaches an oil-in-water emulsion
comprising an organopolysiloxane elastomer in the oily phase and a water-
soluble polymer in the aqueous phase, where the emulsion is stable and does
not contain any surfactant. (Ans. 4-5.)
2. According to the Examiner, Lorant teaches the use of α-ω
dimethylvinylpolydimethylsiloxane, and the elastomer gel is used in an
amount of preferably 1.5-20%. (Ans. 5.)
3. The Examiner concludes that Lorant describes a composition
comprising all elements recited in pending claim 1, except that Lorant “does
not teach the use of the instant lipophilic amino acids.” (Ans. 6.) In other
words, the Examiner finds that the reference does not teach the use of “a
glycine derivative selected from the group consisting of capryloylglycine,
undecylenoylglycine, and mixtures thereof,” as recited in claim 1.
4. Appellants do not dispute this finding of the Examiner (FF 3).
Instead, Appellants assert that the prior art does not disclose the required
glycine deriviative(s) in a composition in a stabilizing effective amount.
(App. Br. 4.)
5. The Examiner finds that Lorant teaches that its compositions may
include active agent in the amount of 0.01 to 30%. (Ans. 5.)
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6. Lorant states that:
The compositions of the invention can preferably include
conventional adjuvants known to those of ordinary skill in this art,
such as hydrophilic or lipophilic active principles. …. Preferably,
these adjuvants are used in the proportions usual in the cosmetics
field, for example, from 0.01 to 30% of the total weight of the
emulsion ….
(Lorant col. 10, ll. 32-40)(emphasis added).
7. Lorant further teaches:
Preferable active principles include, for example, moisturizing
agents …; keratolytic agents …; salicylic acid and its derivatives;
vitamins …; depigmenting agents; slimming agents; screening agents;
and any active principle appropriate for the final purpose of the
composition.
(Id. at col. 10, ll. 52-59) (emphasis added).
8. Fotinos discloses a cosmetic pad comprising a cosmetic formulation.
(Fotinos col. 1, ll. 16-20.)
9. Fontinos discloses examples of cosmetic agents for incorporation into
the formulation include:
antihyperpigmentation agents, anti-blotching agents, anti-aging
agents, eye contour agents, slimming agents, anti-cellulite agents,
soothing agents, sunburn agents, anti-irritating agents, skin firming
agents, anti-elastase agents, anticollagenase substances, free radical
scavengers, seboregulators, hydratives, and AHA (α-hydroxy acid)
agents, vitamins, anti-oxidants, anti-irritants and minerals.
(Id. at col. 2, ll. 50-58) (emphasis added); see also col. 6, ll. 37-46 (including
seboregulators in a long list of types of cosmetic active agents known in the
art).
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10. Fotinos teaches that seboregulators “include lipoamino acids of
natural origin such as capryloyl glycine; oxidative enzyme mixtures; and
mixtures of hydrolyzed yeast proteins and vitamins and related compounds.”
(Id. at col. 7, ll. 56-63) (emphasis added).
11. Fotinos expressly discloses one of the two glycine derivatives recited
in instant claim 1, i.e., capryloylglycine, and describes it as a known
cosmetic active. (FF 9, 10.)
12. Fontinos’ Examples 37-40 describe using a seboregulator in an
amount of 1% w/w on a dry basis in a pad composition, but do not refer to
capryloylglycine in particular. (Fotinos col. 14, l. 63 – col. 15, l. 12.)
13. Appellants rely on two Rule 132 Declarations by inventor Ann-
France Ratel submitted November 1, 2006, and July 24, 2007, respectively
(“Ratel Declarations”). (App. Br. 5.)
14. The Ratel Declarations present comparative data relating to
“Invention Compositions” comprising 0.125% undecylenoylglycine, and
Comparative Examples comprising methionine, glycine or no amino acid in
place of undecylenoylglycine. (Ratel Declaration submitted November 1,
2006, ¶ 3; Ratel Declaration submitted July 24, 2007, ¶ 3.)
15. The Ratel Declarations describe Invention Compositions as stable
creams, and Comparative Examples as unstable dispersions having large oily
globules throughout. (Ratel Declaration submitted November 1, 2006, ¶¶ 7-
9; Ratel Declaration submitted July 24, 2007, ¶¶ 5-7; see also photographs at
Tab A.)
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Principles of Law
The ultimate question of obviousness is one of law, based upon
factual inquiries set forth in the Graham case: (1) the scope and content of
the prior art; (2) the differences between the prior art and the claims at issue;
(3) the level of ordinary skill in the pertinent art; and (4) objective evidence
of non-obviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). Unexpected results may be sufficient to rebut a prima facie case of
obviousness. See, e.g., Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970
(Fed. Cir. 2006); In re De Blauwe, 736 F.2d 699, 706 n. 8 (Fed. Cir. 1984)
(stating that “[a] proper showing of unexpected results will rebut a prima
facie case of obviousness”). Sufficient rebuttal evidence “can consist of a
comparison of test data showing that the claimed compositions possess
unexpectedly improved properties,” but “[e]ach situation must be considered
on its own facts.” Kao, 441 F.3d at 970 (quoting In re Dillon, 919 F.2d 688,
692-93 (Fed. Cir. 1990) (en banc)).
Analysis
The obviousness rejection in this case is based on the primary
reference Lorant, which discloses all elements of the composition of
independent claim 1, except that it does not describe “a glycine derivative
selected from the group consisting of capryloylglycine,
undecylenoylglycine, and mixtures thereof,” as recited in claim 1. (Ans. 4-
6.) The Examiner cites Fotinos as disclosing capryloylglycine as a
seboregulator, which can act as an “active ingredient” at 1% on a w/w dry
basis. (Id. at 6.) The Examiner concludes that it would have been obvious
for one of ordinary skill in the art at the time the invention was made to
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combine the teachings of Lorant and Fotinos, and to use a lipoamino acid,
such as capryloylglycine, as an active agent in Lorant’s composition. (Id. at
6-8.) According to the Examiner, “a skilled artisan would have been
motivated to use capryloylglycine in particular if one desired to provide a
composition that controls sebum, which causes acne.” (Id. at 7.)
We agree with the Examiner that, based on the cited references, it
would have been prima facie obvious to prepare the composition of Lorant
with 1% w/w capryloylglycine, as disclosed in Fotinos. (Ans. 10-11.)
Lorant itself taught to preferably include an active principle that was 0.01 to
30% of the total weight of the emulsion. (FF 6; Lorant, col. 10, ll. 32-40.)
Lorant also taught that active principles included “any active principle
appropriate for the final purpose of the composition.” (FF 7; Lorant, col. 10,
ll. 52-59.)
Fotinos likewise described cosmetic formulations and listed a number
of well-known active principles/agents, such as seboregulators, including
capryloylglycine in particular. Thus, at least in some situations, it would
have been obvious to use capryloylglycine as an active principle, for
example at 1% w/w, in the Lorant composition. Appellants’ own data
indicates that 1% w/w of a recited glycine derivative would be sufficient to
stabilize the composition. See, e.g., Spec., 34-36 (Examples 3 and 4)
(describing 0.1% undecylenoylglycine); see also Ratel Declarations
(describing 0.125% undecylenoylglycine).
Appellants argue, however, that “even assuming that a prima facie
case of obviousness has been set forth… , Appellants have rebutted such a
hypothetical case of obviousness with their showing of unexpected and
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surprising stability of the claimed oil-in-water emulsions.” (App. Br. 6.)
Appellants submit two Rule 132 declarations by inventor Ann-France Ratel
as evidence “that emulsions containing the claimed glycine derivatives are
stable without surfactant, whereas emulsions containing different amino acid
compounds (including glycine itself) are not.” (Id. at 5.) Also according to
Appellants, “such stabilization was surprising an[d] unexpected given the
instability of and presence of large oily globules in extremely similar
compositions.” Id. (citing Ratel Declaration submitted November 1, 2006, ¶
9; Ratel Declaration submitted July 24, 2007, ¶ 7).
We agree with Appellants that the two submitted declarations, as well
as the Specification itself, provide evidence that the formulation of claim 1,
including the recited glycine derivative, has the unexpected property of
being a stable cream, compared to compositions without the glycine
derivative that are unstable dispersions with large oily globules. As
presented in the declarations, invention compositions containing 0.125%
undecylenoylglycine were stable, while comparable compositions, identical
to the invention compositions except that they contained methionine, glycine
or no amino acid instead of undecylenoylglycine, were unstable. See FF 14,
15; see also Spec., 34-36 (Examples 3 and 4) (describing the stability of the
smooth cream formulations comprising 0.1% undecylenoylglycine, as
compared to emulsions without the undecylenoylglycine, which were
granular with large globules).
We agree with Appellants that the cited references would have
provided no reason to expect this stabilizing property, which resulted from
the addition of the recited glycine derivative in the composition. (App. Br.
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5; Spec., ¶¶ 5-6.) Upon consideration of evidence of this unexpected result,
the Examiner states that because Lorant described a stable oil-in-water
emulsion that was stable without surfactants or the glycine derivatives of the
instant claim, “appellant’s argument that the glycine derivatives of the
present claims is necessary to stabilize the same emulsion as disclosed by
the prior art is unpersuasive.” (Ans. 9, 11-12.) In response, Appellants
point out that the present invention is an improvement over Lorant. (Reply.
Br. 1.) In other words, even if Lorant’s compositions “are acceptable on one
level,” the invention compositions provide improved stability as compared
to the Lorant compositions. (Id.)
Based on the facts before us, we conclude that Appellants have
provided evidence of unexpected results sufficient to rebut the prima facie
case of obviousness. See Kao, 441 at 970 (stating that “unexpected results
may be sufficient to rebut a prima facie case of obviousness”). The
Examiner provides no evidence that a skilled artisan would have chosen
either of the two glycine derivatives recited in claim 1 for the purpose of
providing greater stability in emulsion composition. By contrast, while
Fotinos mentions capryloylglycine as a seboregulator, this cosmetic agent is
one of potentially thousands of possible known active ingredients listed in
Fotinos. Nothing in Fotinos or Lorant suggests any unexpected result when
using capryloylglycine, beyond its known “active ingredient” function as a
seboregulator. Based on the evidence before us, one would have had no
reason to think this particular active ingredient would do anything special
regarding stability.
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Conclusions of Law
It would have been prima facie obvious to prepare the composition of
Lorant with 1% w/w capryloylglycine, as disclosed in Fotinos. However,
Appellants have provided evidence of unexpected results that outweighs the
evidence supporting the prima facie case of obviousness.
SUMMARY
We reverse the rejection of claims 1, 6, 8-18 and 20 as obvious based
on Lorant in view of Fotinos.

REVERSED

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