Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Mar 22, 2022

2021003197 (P.T.A.B. Mar. 22, 2022)

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. 16/308,050 12/07/2018 Susan Daly JCO5232USPCT 8238 27777 7590 03/22/2022 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER YU, HONG ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): RA-JJCUS-IPIMManagem@ITS.JNJ.com jnjuspatent@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 and JULIE GRUMELARD Appeal 2021-003197 Application 16/308,050 Technology Center 1600 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JOHN G. NEW, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1-3 and 13-16 under 35 U.S.C. § 103 as obvious and under non-statutory obviousness-type double patenting. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. 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 Johnson & Johnson Consumer Inc., the assignee of record and a subsidiary of Johnson & Johnson. Appeal Br. 2. Appeal 2021-003197 Application 16/308,050 2 STATEMENT OF THE CASE The Examiner rejected claims 1-3 and 13-16 in the Final Office Action as follows: 1. Claims 1-3, 13, and 16 under 35 U.S.C. § 103 as obvious in view of Levins et al. (US 2014/0004061 A1, published Jan. 2, 2014) (“Levins”) and Müller et al. (US 2010/0008873 A1, published Jan. 14, 2010) (“Müller”). Final Act. 3. 2. Claims 14 and 15 under 35 U.S.C. § 103 as obvious in view of Levins, Müller, and Daly ’063 (US 2014/0004063 A1, published Jan. 2, 2014) (“Daly ’063”). Final Act. 5. 3. Claims 1-3 and 13-16 under 35 U.S.C. § 103 as obvious in view of Daly ’063. Final Act. 6. In the Answer, the Examiner made two new grounds of rejection of the instant claims under non-statutory obviousness-type double patenting: 4. Claims 1-3, 13, and 16 on the ground of nonstatutory obviousness- type double patenting as obvious in view of claims 1 and 7 of U.S. Patent No. 9,737,470 B2 (Daly, issued Aug. 22, 2017) (“Daly ’470”) and Müller. Ans. 4. 5. Claims 1-3, 13, and 16 on the ground of nonstatutory obviousness- type double patenting as obvious in view of claims 1 and 7 of U.S. Patent No. 9,737,471 B2 (Daly, issued Aug. 22, 2017) (“Daly ’471”) and Müller. Ans. 6. Claim 1, the only independent on appeal, is reproduced below, along with dependent claims 2 and 3: Appeal 2021-003197 Application 16/308,050 3 1. A sunscreen composition, comprising: a polymer composition comprising a linear, ultraviolet radiation absorbing polyether comprising a covalently bound UV-chromophore; and at least one additional UV screening compound. 2. The composition of claim 1 wherein said additional UV screening compound is avobenzone. 3. The composition of claim 1 wherein said covalently bound UV-chromophore is a benzotriazole. REJECTIONS 1 AND 2 BASED ON LEVINS AND MṺLLER The sunscreen composition of claim 1 comprises (1) an ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore, which can be benzotriazole (claim 3) and (2) a UV screening compound, which can be avobenzone (claim 2). The Examiner found that Levins describes (1) A “linear ultraviolet radiation absorbing polyether that comprises a chemically bound UV- chromophore,” such as benzotriazole. Final Act. 3 (citing Levins ¶¶ 6, 39, claims 1, 15). The Examiner found that the composition does not comprise the claimed (2) UV screening compound. Id. To meet this deficiency, the Examiner further cited Müller for its disclosure that benzotriazole derivatives “enhance the photostability of organic UV absorbers dibenzoylmethane derivatives such as avobenzone” as recited in dependent claim 2. Final Act. 3. The Examiner determined it would have been obvious to one of ordinary skill in the art to modify the UV radiation protecting composition described by Levins (comprising the claimed benzotriazole) by adding the avobenzone of Müller because it is “prima facie obvious to combine Appeal 2021-003197 Application 16/308,050 4 compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose.” Final Act. 3-4. The Examiner stated that the reason to combine them “flows from their having been used individually in the prior art, and from them being recognized in the prior art as useful for the same purpose.” Id. at 4.2 Citing the Specification (page 2, lines 8-9), Appellant states that the “claimed compositions also provide unexpected synergic protection from UV radiation.” Appeal Br. 3. An applicant cannot prove unexpected results without objective evidentiary support. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); 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.”) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). See also CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). While the Specification states that “unexpected synergic protection from ultraviolet radiation” is achieved (Spec. 2: 8-9), Appellant did not guide us to evidence in the Specification that “synergic protection” was actually accomplished. Appellant has simply pointed to a bare statement in the Specification asserting synergy without objective evidence to support it. Appellant argues that neither Levins nor Müller “teach or suggest a combination of linear UV-absorbing polyether with avobenzone resulting in 2 The Examiner expanded on the reasoning on page 8 of the Answer. Appeal 2021-003197 Application 16/308,050 5 a mild sunscreen composition, or a sunscreen composition providing increased UV protection.” Appeal Br. 4. This argument does not demonstrate persuasive error in the Examiner’s rejection. The Examiner did not find that Levins or Müller describes the claimed combination of (1) an ultraviolet radiation absorbing polyether comprising a covalently bound UV-chromophore, which can be benzotriazole (claim 3) and (2) a UV screening compound, which can be avobenzone (claim 2). Instead, the Examiner found that Levins discloses (1) and Müller discloses (2), and reasoned it would have been obvious to combine them. The Examiner’s rationale is from In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980), which held: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose. . . . [T]he idea of combining them flows logically from their having been individually taught in the prior art.” Appellant did not identify a defect in the Examiner’s fact-finding nor reasoning. Each of Levins (¶ 6) and Müller (¶¶ 7, 38) describe compositions to protect against UV radiation. Appellant asserts that its composition provides “increased UV protection” (Appeal Br. 4), but as explained above, Appellant has not provided objective evidence that the claim composition is any better than would be expected from the combination of Levins and Müller. Unexpected results cannot be proved attorney argument and bare statements without objective evidentiary support. See Lindner, 457 F.2d at 508; Geisler, 116 F.3d at 1470 (“[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness”). Appeal 2021-003197 Application 16/308,050 6 For the foregoing reasons, the rejection of claim 1 as obvious in view of Levins and Müller is affirmed. Claims 2, 3, 13, and 16 were not argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claims 14, 15 Claim 14 depends from claim 1, and further comprises “a film- forming polymer selected from natural polymers and synthetic polymers.” Claim 15 further limits the film-forming polymer to “a copolymer of vinylpyrrolidone and a long-chain alpha-olefin.” The Examiner further cited Daly ’063, finding that Daly ’063 describes a sunscreen composition comprising “linear UV-absorbing polyethers including a chemically bound UV-chromophore such as benzotriazoles and . . . a copolymer of vinylpyrrolidone and a long-chain alpha-olefin as a film-forming polymer.” Final Act. 5. The Examiner determined it would have been obvious to one of ordinary skill in the art to incorporate the “copolymer of vinylpyrrolidone and a long-chain alpha- olefin as a film-forming polymer” of Daly ’063 into the combination of Levins and Müller. Id. at 6. The Examiner found the skilled worker would have had reason to use the film-forming polymer because it was “recognized in the prior art as useful as a suitable component for the topical sunscreen compositions” as described in Daly ’063. Id. Appellant contends that neither Levins nor Daly ’063 “suggest the claimed combination of UV absorbers and additives resulting in a mild, aesthetically pleasing sunscreen composition, or that such a composition might have unexpectedly increased UV protection.” Appeal Br. 4. Appeal 2021-003197 Application 16/308,050 7 This argument is not persuasive. First, the rejection is based on Levins, Müller, and Daly ’063. We have already explained why it would have been obvious to one of ordinary skill in the art to combine Levins and Müller. Appellant did not identify any deficiency in Daly ’063. Accordingly, the rejection of claims 14 and 15 is affirmed. REJECTION BASED ON DALY ’063 The sunscreen composition of claim 1 comprises (1) an ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore, which can be benzotriazole (claim 3) and (2) a UV screening compound, which can be avobenzone (claim 2). The Examiner finds that Daly ’063 describes (1) “[a] topically- acceptable sunscreen compositions comprising a linear UV-absorbing polyethers including a chemically bound UV-chromophore such as benzotriazoles.” Final Act. 5. With respect to the second (2) component of the composition, the Examiner found that Daly ’063 discloses that “certain embodiments” are “substantially free of non-polymeric UV-absorbing sunscreen agents such as butyl methoxydibenzoyl methane (avobenzone),” which indicates that azobenzone “may or may not [be present.]” Ans. 9. The Examiner concluded that Daly ’063’s disclosure “of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Final Act. 7. Appellant contends that Daly ’063 “does not suggest the claimed combination of UV absorbers and additives resulting in a mild, aesthetically pleasing sunscreen composition, or that such a composition might have Appeal 2021-003197 Application 16/308,050 8 unexpectedly increased UV protection.” Appeal Br. 5. We have already responded to this same unpersuasive argument in the rejection based on Levins and Müller. Accordingly, the rejection of claim 1 is affirmed for the same reasons. Claims 2, 3, and 13-16 were not argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). OBVIOUSNESS-TYPE DOUBLE PATENTING OVER DALY ’470 The Examiner rejected the claims over claims 1 and 7 of Daly ’470 and Müller. Ans. 4. The Examiner found that claim 1 of Daly ’470 recites a “linear, ultraviolet radiation absorbing polyether that comprises a covalently bound UV-chromophore” and claim 7, which depends from claim 1, recites where the UV-chromophore is “benzotriazole,” which correspond to the claimed ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore of instant claim 1, which can be benzotriazole (instant claim 3). Ans. 4. The Examiner found that the composition recited in the claims of Daly ’470 does not comprise the claimed UV screening compound, the second component of instant claim 1, which can be avobenzone (instant claim 2). Ans. 5. To meet this deficiency, the Examiner further cited Müller for its disclosure that “benzotriazole derivatives enhance the photostability of organic UV absorbers dibenzolymethan [sic] derivatives[,] such as avobenzone.” Ans. 5. The Examiner determined it would have been obvious to one of ordinary skill in the art to modify the UV radiation protecting composition claimed in Daly ’470 by adding the avobenzone of Müller because it is Appeal 2021-003197 Application 16/308,050 9 “prima facie obvious to combine compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose.” Ans. 5. The Examiner stated that the reason to combine them “flows from their having been used individually in the prior art, and from them being recognized in the prior art as useful for the same purpose.” Id. Appellant acknowledges that claim 1 of Daly ’470 describes an ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore of claim 1, but argues that the claims of the patent do not suggest instant claim 1 because the patented claim is an oil-in-water emulsion that comprises an oil-in-water emulsifier in specific amounts, but the instant claim is not an emulsion and does not comprise an emulsifier. Reply Br. 3. This argument is not persuasive at least because the rejected instant claim recites “comprising” and is therefore open to additional components, included an emulsifier and being in the form of an oil-in-water emulsion. Appellant further argues that Müller “does not help” the rejection because there is “no teaching or suggestion in Müller related to polymer- containing benzotriazoles.” Reply Br. 4. This argument is unavailing because the Examiner relied on the claims of Daly ’470 for benzotriazole component of the instant claims. Appellant contends that “[d]ifferent compositions are clearly recited and they are not obvious variants.” Reply Br. 4. This argument does not identifiy an error in the Examiner’s fact-finding or reason to have combined the claims of Daly ’470 with Müller. Appeal 2021-003197 Application 16/308,050 10 For the foregoing reasons, the rejection of claim 1 as obvious in view of claims 1 and 7 of Daly ’470 is affirmed. Claims 2, 3, 13, and 16 were not argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). OBVIOUSNESS-TYPE DOUBLE PATENTING OVER DALY ’471 The Examiner rejected the claims over claims 1 and 7 of Daly ’471 and Müller. Ans. 6. The Examiner found that claim 1 of Daly ’471 recites a “linear, ultraviolet radiation absorbing polyether that comprises a covalently bound UV-chromophore” and dependent claim 7 recites where the UV- chromophore is “benzotriazole,” which corresponds to the claimed ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore, which can be benzotriazole (instant claim 3). Ans. 6. The Examiner found that the composition does not comprise the claimed UV screening compound, the second component of instant claim 1, which can be avobenzone (instant claim 2). Ans. 6. To address this missing element, the Examiner cited the Müller reference for its disclosure that benzotriazole derivatives enhance the photostability of organic UV absorbers dibenzoylmethane derivatives, such as avobenzone. Ans. 6. The Examiner determined it would have been obvious to one of ordinary skill in the art to modify the UV radiation protecting composition claimed in Daly ’471 comprising benzotriazole by adding the avobenzone of Müller because it is “prima facie obvious to combine compounds each of which is taught by the prior art to be useful for the same purpose in order to form a composition that is to be used for an identical purpose.” Ans. 6-7. Appeal 2021-003197 Application 16/308,050 11 The Examiner stated that the reason to combine them “flows from their having been used individually in the prior art, and from them being recognized in the prior art as useful for the same purpose.” Id. at 7. Appellant acknowledges that claim 1 of Daly ’471 recites an ultraviolet radiation absorbing polyether comprising a covalently bound UV- chromophore as required by instant claim 1, but argues that the claims of the patent do not suggest instant claim 1 because the patented claim is an oil-in- water emulsion that contains “an anionic emulsifier and a non-ionic emulsifier having an alcohol functional group, wherein the weight ratio of anionic emulsifier to non-ionic emulsifier is about 12 or less.” Reply Br. 5. This argument is not persuasive at least because the rejected instant claim recites “comprising” and is therefore open to additional components, included an anionic emulsifier and a non-ionic emulsifier, and being in the form of an oil-in-water emulsion. Appellant further argues that Müller “does [not] cure the defects of the ’471 patent for the reasons above.” Reply Br. 6. For the reasons already discussed this argument is unavailing. For the foregoing reasons, the rejection of claim 1 as obvious in view of claims 1 and 7 of Daly ’471 and Müller is affirmed. Claims 2, 3, 13, and 16 were not argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s decision to reject claims 1-3 and 13-16 is affirmed. Appeal 2021-003197 Application 16/308,050 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 13, 16 103 Levins, Müller 1-3, 13, 16 14, 15 103 Levins, Müller, Daly ’063 14, 15 1-3, 13-16 103 Daly ’063 1-3, 13-16 1-3, 13, 16 Nonstatutory Double Patenting Daly ’470, Müller 1-3, 13, 16 1-3, 13, 16 Nonstatutory Double Patenting Daly ’471, Müller 1-3, 13, 16 Overall Outcome 1-3, 13-16 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)(1)(iv). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED