JOHNSON & JOHNSON CONSUMER INC.

Patent Trials and Appeals Board

Dec 15, 2020

2020001952 (P.T.A.B. Dec. 15, 2020)

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.
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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.
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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.
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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
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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.
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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
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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
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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.”).
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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
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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