JOHNSON & JOHNSON CONSUMER INC.Download PDFPatent Trials and Appeals BoardDec 15, 20202020001952 (P.T.A.B. Dec. 15, 2020) 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. 14/858,181 09/18/2015 Susan Daly JCO5188USNP 1052 27777 7590 12/15/2020 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER LAZARO, DOMINIC ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 12/15/2020 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pair_jnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUSAN DALY, PRITHWIRAJ MAITRA, and BARRY SETIAWAN Appeal 2020-0019521 Application 14/858,181 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and CYNTHIA M. HARDMAN, Administrative Patent Judges. HARDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims related to a sunscreen composition. The Examiner rejected the claims as obvious under 35 U.S.C. § 103, and for nonstatutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johnson & Johnson Consumer Inc. Appeal Br. 2. Appeal 2020-001952 Application 14/858,181 2 CLAIMED SUBJECT MATTER Claims 1–4, 10, 11, 13–15, 19, 20, and 27 are on appeal. Final Act. 2. Claim 1, reproduced below, is illustrative: 1. A sunscreen composition, comprising a phase-stable, oil-in-water emulsion, comprising, a continuous water phase comprising a superhydrophilic amphiphilic copolymer and a suspension of styrene/acrylate copolymer particles in a mixture of water and glycol; and a discontinuous oil phase homogeneously dispersed in the continuous water phase, the discontinuous oil phase comprising a UV absorbing compound, wherein the sunscreen composition is essentially free of monomeric surfactant and has a viscosity of about 2000 cps or less. Appeal Br. 8 (Claims Appendix). REFERENCES The Examiner relied upon the following prior art references: Name Reference Date Takakura US 2013/0004553 A1 Jan. 3, 2013 Fevola US 2011/0082105 A1 Apr. 7, 2011 Terrisse WO 2013/076691 A1 May 30, 2013 Xu WO 2012/129722 A1 Oct. 4, 2012 SUNSPHERES™ Hollow Sphere Technology An SPF Booster for More Aesthetically Pleasing Formulations, February 2006, pp. 1–14 (on 02/02/2017 IDS) (“Sunspheres”) REJECTIONS Claims 1–4, 10, 11, 13–15, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Sunspheres and Fevola. Final Act. 3. Claims 20 and 27 are rejected under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, Terrisse, and Xu. Id. at 13. Appeal 2020-001952 Application 14/858,181 3 Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and Takakura. Id. at 18. Claims 1–4, 10, 11, 13–15, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting over claims 1–6, 13–15, 17–23, 28, 31, 33, and 34 of co-pending Application No. 14/858,164 (“’164 Application”).2 Id. at 19. OPINION Obviousness Rejections The same issues are relevant to each of the three obviousness rejections; thus, we address them together. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Sunspheres discloses a composition that meets all limitations of independent claim 1, except the requirements for glycol and a superhydrophilic amphiphilic copolymer (“SAC”). See generally Final Act. 1–10. In particular, the Examiner finds that Sunspheres teaches hollow spheres (“SUNSPHERES powder”) made of a styrene/acrylates copolymer, which meets claim 1’s requirement of “styrene/acrylate copolymer particles.”3 Id. at 4. The Examiner further finds that Sunspheres discloses oil-in-water emulsions, including the following exemplary sunscreen formulation: 2 Although the Examiner’s statement of this rejection included claim 5, we understand that claim 5 has been cancelled and is not on appeal. See Final Act. 2; see also Appeal Br. 2 (listing appealed claims). 3 The spheres are designed to boost the efficacy of UVA/UVB filters in sunscreens, thereby allowing use of less active ingredient, which leads to reduced potential irritation and more aesthetically pleasing products. Sunspheres 1. Appeal 2020-001952 Application 14/858,181 4 Id. at 4–5 (citing Sunspheres 4). The Examiner finds that phase A of this formulation meets claim 1’s requirement of “a continuous water phase,” and phase B meets the requirement of a “discontinuous oil phase comprising a UV absorbing compound.” Id. The Examiner also finds that Sunspheres teaches that phase C (a surfactant phase) can be excluded, thus meeting the claim requirement of “wherein the sunscreen composition is essentially free of monomeric surfactant.” Id. at 5–6 (citing Sunspheres 10). The Examiner additionally finds that Sunspheres teaches emulsions of less than 1,000 cps, thus meeting claim 1’s requirement of “a viscosity of about 2000 cps or less.” Id. at 9 (citing Sunspheres 12 (item 6)). As noted above, the Examiner finds that Sunspheres does not teach inclusion of glycol or a SAC. Id. at 6. The Examiner finds that Fevola teaches compositions, including sunscreens, comprising a SAC and propylene glycol. Id. at 6–7 (citing, e.g., Fevola ¶¶ 11–32, 213, 228). The Examiner finds that a skilled artisan would have been motivated to include in Sunsphere’s exemplary sunscreen formulation: (i) SAC copolymers “to Appeal 2020-001952 Application 14/858,181 5 obtain the advantage of ‘SACs [that] are suitable for use in producing compositions having relatively low irritation and relatively high amounts of foam associated therewith;’” and (ii) a humectant such as propylene glycol, to obtain moisturization and conditioning properties. Id. at 8 (quoting Fevola ¶ 27 and citing Fevola ¶ 213). The Examiner finds that adding a SAC to a sunscreen composition “is well within the skill of the ordinary artisan,” and “amounts to no more than combining prior art elements according to known methods to yield predictable results.” Id. at 7–8. We adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art (id. at 3–19; Ans. 3–12), and agree that the claims would have been obvious over the identified prior art for the reasons the Examiner articulated. We address Appellant’s arguments below. Appellant argues that Sunspheres’ exemplary formulation does not teach or suggest “a suspension of styrene/acrylate copolymer particles in a mixture of water and glycol,” as recited in claim 1. Appeal Br. 5. Specifically, Appellant asserts that Sunspheres’ exemplary formulation contains “SUNSPHERES Powder,” which is a “different raw material[]” than “SUNSPHERES PGL.”4 Id. (citing Dow brochure entitled “SUNSPHERES SPF Boosters, Highly Effective SPF Boosters with Excellent Product Feel for Sunscreens” (August 2007) (filed Oct. 15, 2018)). We are not persuaded by this argument. The Examiner finds that it would have been obvious to incorporate humectants such as propylene glycol (disclosed in Fevola) into the 4 According to the Specification, SUNSPHERES PGL is an emulsion or suspension of styrene/acrylates copolymer in a solvent system. Spec. 34:14– 17. Appeal 2020-001952 Application 14/858,181 6 exemplary composition disclosed in Sunspheres. Final Act. 8. The Examiner further finds that the propylene glycol would be present in the water-containing phase A of such a composition, and that phase would also contain SUNSPHERES powder. Id. We agree with the Examiner that phase A would thus comprise “a suspension of styrene/acrylate copolymer particles in a mixture of water and glycol” in a “continuous water phase,” as recited in claim 1. Id. To the extent Appellant is arguing that the claims exclude SUNSPHERES powder and cover only SUNSPHERES PGL, we are not persuaded. Spec. 34:14–17. Appellant has not shown any error in the Examiner’s findings that adding propylene glycol (as taught in Fevola) to the exemplary composition disclosed in Sunspheres would result in phase A comprising a “suspension of styrene/acrylate copolymer particles in a mixture of water and glycol,” as claimed. Appellant also argues unexpected results. Specifically, Appellant asserts that Example 2 in the Specification “directly compares SUNSPHERES Powder and SUNSPHERES PGL,” and “[u]nexpectedly, applicants have found use of the suspension rather than the dry powder in the claimed sunscreen composition provides better phase stability and homogeneity.” Appeal Br. 5. We are not persuaded. First, unexpected 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). Here, Appellant compares formulations comprising SUNSPHERES powder with formulations comprising SUNSPHERES PGL. Spec. 44–45. However, as noted above, Appellant has not persuasively established that the present claims exclude SUNSPHERES powder, and thus there is no basis to conclude that Appellant is comparing claimed embodiments to an Appeal 2020-001952 Application 14/858,181 7 embodiment outside of the claim, let alone to the closest prior art. Second, unexpected results must be established by factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Appellant has not identified any location in the Specification, or any other evidence of record, that characterizes the purportedly better phase stability and homogeneity exhibited by the SUNSPHERES PGL formulations as unexpected. It is only Appellant’s Brief that describes these results as unexpected, but attorney argument in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Finally, Appellant argues that the Examiner has not provided a sufficient motivation to combine Sunspheres and Fevola, because the Examiner’s reasons are instead a conclusion, and the Examiner has not explained how the references are directed to “related problems.” Appeal Br. 6. We are not persuaded. The Examiner finds that both Sunspheres and Fevola are concerned with suitable ingredients for oil-in-water compositions that contain sunscreens, and “it is well within the skill of the ordinary artisan to select suitable ingredients in formulating a sunscreen composition.” Final Act. 7–8. Here, the cited prior art combination demonstrates that the claimed combination is no more than “the predictable use of prior art elements according to their established functions,” and as discussed above, Appellant has not established that the claimed combination leads to unexpected results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements with each performing the same Appeal 2020-001952 Application 14/858,181 8 function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”). With respect to the rejection of claims 20 and 27, Appellant additionally argues that Example 4 in the Specification shows that “compositions containing a combination of glycerin, polyglyceryl-10 laurate, bis-PEG-18 methyl ether dimethyl silane, and a suspension of styrene/acrylate copolymer particles in a mixture of water and glycol provided unexpectedly improved phase stability compared to compositions containing none of these ingredients.” Appeal Br. 6–7. We are not persuaded. To the extent the compositions show improved phase stability, on this record Appellant has not established by factual evidence that such results are unexpected. See Geisler, 116 F.3d at 1469–71. Additionally, Appellant has not disputed the Examiner’s finding that any improved separation of phases by incorporation of polyglyceryl-10 laurate and bis- PEG-18 methyl ether dimethyl silane “would reasonably be expected from the prior art disclosing both as emulsifiers.” Ans. 11; see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[B]y definition, any superior property must be unexpected to be considered as evidence of non- obviousness.”). Obviousness-Type Double Patenting On appeal, Appellant does not address the merits of the provisional nonstatutory obviousness-type double patenting rejection. Appeal Br. 7. Arguments not presented in a brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2020-001952 Application 14/858,181 9 Appellant also has not filed an appropriate terminal disclaimer to obviate the rejection. Accordingly, in view of Appellant’s lack of substantive response, we summarily affirm the uncontested provisional nonstatutory obviousness- type double patenting rejection. CONCLUSION We affirm the rejection of claims 1–4, 10, 11, 13–15, and 19 under 35 U.S.C. § 103 as unpatentable over Sunspheres and Fevola. We affirm the rejection of claims 20 and 27 under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, Terrisse, and Xu. We affirm the rejection of claim 10 under 35 U.S.C. § 103 as unpatentable over Sunspheres, Fevola, and Takakura. We affirm the provisional rejection of claims 1–4, 10, 11, 13–15, 19, and 20 on the ground of nonstatutory double patenting over claims 1–6, 13– 15, 17–23, 28, 31, 33, and 34 of the ’164 Application. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 10, 11, 13–15, 19 103 Sunspheres, Fevola 1–4, 10, 11, 13–15, 19 20, 27 103 Sunspheres, Fevola, Terrisse, Xu 20, 27 10 103 Sunspheres, Fevola, Takakura 10 Appeal 2020-001952 Application 14/858,181 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 10, 11, 13–15, 19, 20 Provisional obviousness-type double patenting over claims 1–6, 13–15, 17– 23, 28, 31, 33, and 34 of the ’164 Application 1–4, 10, 11, 13–15, 19, 20 Overall Outcome: 1–4, 10, 11, 13–15, 19, 20, 27 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation