Ex Parte Andre

Patent Trial and Appeal Board

Jun 2, 2016

12471742 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/471,742 0512612009
123223 7590 06/06/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Valerie Andre
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.
074008-0900-US-286110 6442
EXAMINER
KAROL, JODY LYNN
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALERIE ANDRE
Appeal2014-006692
Application 12/471,742 1
Technology Center 1600
Before LORA M. GREEN, ULRIKE W. JENKS, and
KRISTI L. R. SA WERT Administrative Patent Judges.
SA WERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 12, 14-22, 32, and 33 of U.S. Application No. 12/471,742 ("the '742
application"). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant identifies BASF AG as the real party in interest. Br. 2.
Appeal2014-006692
Application 12/471,742
STATEMENT OF THE CASE
Claims 12, 14--22, 32, and 33 stand rejected under 35 U.S.C. § 103(a)
for obviousness over Heidenfelder.2 We choose independent claims 12 and
32 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 12 provides:
Br. 9.
12. A method of stabilizing color in a composition, the
method comprising:
(a) providing an amino-substituted
hydroxybenzophenone compound corresponding to the general
formula (I):
and
(b) combining the amino-substituted
hydroxybenzophenone compound with a composition to be
stabilized selected from the group consisting of cosmetic
preparations and dermatological preparations,
wherein said composition comprises an organic dye.
2 Thomas Heidenfelder et al., Cosmetic and Dermatological
Preparations in the Form of O/W Emulsions, Comprising an Amino-
Substituted Hydroxybenzophenone, U.S. Publication No. 2003/0161849
(Aug. 28, 2003).
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Application 12/471,742
Claim 32 provides:
32. The method according to claim 12, wherein the
composition to be stabilized comprises less than 2% by weight
of dissolved inorganic salts.
Br. 12.
FINDINGS OF FACT
1. The specification of the '742 application states that the claimed
invention relates to a method for stabilizing the color of cosmetic and
dermatological preparations. Spec. 1 (11. 5---6). The specification
explains that, in the art of cosmetics and dermatological preparations,
it was known that "[ c ]olor and odor of cosmetic preparations can
change if the preparations are subjected to elevated temperatures or
light, for example in window displays." Id. (11. 12-14). In order to
"reduce the changes caused by light," it was known to add "UV filter
substances" to the cosmetic preparations. Id.
2. Those substances, however, were "not always sufficiently effective."
Spec. 1 (11. 39--40). Thus, it was the object of the inventor "to develop
a stabilizer system which stabilizes cosmetic products in transparent
or semitransparent containers against the color and odor changes
caused by light." Id. (11. 37-39).
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Application 12/471,742
3. According to the specification, that object was achieved by combining
the cosmetic or dermatological preparations with the amino-
substituted hydroxybenzophenone compound of formula I:
Spec. 1 (1. 43}-2 (1. 4).
4. The specification explains that the cosmetic and dermatological
preparations "preferably comprise one or more organic dyes." Spec. 2
(11. 6-7). The specification also provides that limited amounts of
dissolved inorganic salts are "advantageous." Id. at 10 (11. 13-15).
5. Heidenfelder also discloses cosmetic and dermatological preparations
comprising an amino-substituted hydroxybenzophenone of the
formula I:
l
(
OH
Heidenfelder (Abstract).
0 CXX>~
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Application 12/471,742
6. Heidenfelder teaches that "compounds which are used as light
protection agents for cosmetic and dermatological light protection
formulations are mostly characterized per se by good light
protection," but that "they have the disadvantage that it is sometimes
difficult to incorporate them into such formulations in a satisfactory
manner." Id. (i-f 37).
7. Heidenfelder surprisingly found that "cosmetic or dermatological
preparations in the form of an O/W emulsion, comprising an amino-
substituted hydroxybenzophenone of the formula I, overcome the
disadvantages of the prior art." Id. (i-f 42). Specifically, Heidenfelder
states that "[i]t was surprising that preparations within the meaning of
the present invention would lead to unexpectedly high light protection
factors and UV-A protection." Id. (i-f 43).
8. Heidenfelder also teaches that "[i]n some instances, it may also be
advantageous for the purposes of the present invention to incorporate
dyes and/or color pigments into the preparations according to the
invention." Id. (i-f 358). Heidenfelder teaches organic dyes, including
indigo-disulfonic acid (indigo tin I) or 1,7-Bis(4-hydroxy-3-
methoxyphenyl)-1,6-heptadiene-3,5-dione ( curcumin). Id. (i-f 359);
see also Ans. 3.
9. Heidenfelder states that "[t]he invention also provides a process for
the preparation of the preparations according to the invention," that
involves combining and mixing steps. Id. (i-f 374). Heidenfelder also
provides several formulation recipes. See id. (Examples 1-13,
i1i1375-79). In Example 6, for example, Heidenfelder teaches a
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cosmetic preparation comprising 3.50% by weight compound of
formula (I) and 0.15% by weight of water- and/or oil-soluble (i.e.,
organic) dye. Id. (i-f 0377).
10. Heidenfelder does not teach the presence of inorganic salts in the
cosmetic and dermatological compositions. Ans. 8. Nor does
Heidenfelder teach any other organic salt component that could
formulate an inorganic salt in situ. Id.
11. Heidenfelder does not teach a method for stabilizing color. Ans. 3.
LEGAL STANDARD
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
John Deere Co., 383 U.S. 1 (1966) andKSRint'l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007). The obviousness "analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418.
DISCUSSION
Representative Claim 12
On appeal, the Board "reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon." Ex parte Frye, 94 USPQ2d 1072, 1075-76
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(BP AI 2010) (Precedential). The issues Appellant raises on appeal with
respect to representative claim 12 are: (1) whether the Examiner sufficiently
showed that the claimed method of color stabilization necessarily occurs in
preparations disclosed by Heidenfelder; and (2) whether, as a matter of law,
a conclusion of obviousness may be based on the concept of inherency. Br.
5-7.
We address the second issue as an initial matter. Appellant argues
that "obviousness cannot be based on inherency," citing a non-precedential
panel decision in Ex Parte Vigano (Appeal No. 2011-006558; Application
No. 12/044,623). Br. 6. We note that Appellant's argument is incorrect as a
matter of law, because the Federal Circuit has recognized a role for
inherency in an obviousness analysis in multiple decisions. See, e.g., PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014)
("We have recognized that inherency may supply a missing claim limitation
in an obviousness analysis."); see Santarus, Inc. v. Par Pharm., Inc., 694
F.3d 1344, 1354 (Fed. Cir. 2012); Alcon Research, Ltd. v. Apotex Inc., 687
F.3d 1362, 1369 (Fed. Cir. 2012); In re Kao, 639 F.3d 1057, 1070 (Fed. Cir.
2011); In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009).
Even so, Appellant's reliance on Vigano is misplaced because it fails
to support a per se rule against using inherency in an obviousness analysis,
especially where, as here, the prior art teaches the method steps currently
claimed. See Br. 9 (claim 12); FF 9. In Vigano, the Examiner rejected
claims to a polymer composition having a certain "shrinkage" property as
obvious over the combined teachings of two references. Vigano, p. 3.
Although the prior art did not teach the claimed "shrinkage" property, the
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Examiner found that property inherent in the prior art. Id. at 5. The Board
held that the Examiner committed legal error, explaining that inherency
could not be used in this obviousness analysis because the claimed polymer
composition was not, in fact, known in the prior art. Id. (citing Rijckaert, 9
F.3d at 1534). Specifically, the claimed polymer composition resulted from
a combination of elements from the two references, and the "shrinkage"
limitation represented a property of the entire composition. Id. In this case,
however, a single reference-Heidenfelder-teaches the same method steps
Appellant now claims: providing an amino-substituted
hydroxybenzophenone of the formula I, and combining it with a cosmetic or
dermatological preparation containing an organic dye. FF 9. Thus, the
Board's holding in Vigano is inapposite to the facts of this case.
Turning to the first issue, the Federal Circuit has explained that
"inherency may supply a missing claim limitation in an obviousness
analysis" so long as "the limitation at issue is the 'natural result' of the
combination of prior art elements." PAR Pharm., Inc. v. TWI Pharm., Inc.,
773 F.3d 1186, 1194-95 (Fed. Cir. 2014). In this case, we agree with the
Examiner that color stabilization is the natural result of the preparation of
Heidenfelder's formulations, and therefore the claimed invention would
have been obvious under§ 103(a). See Ans. 6 (stating that "[a]bsent
evidence to the contrary, the stabilization of color is expected to occur
because the same steps as instantly claimed (i.e., comb[in Jing the amino-
substituted hydroxybenzophenone of formula (I) to the cosmetic or
dermatological preparation containing an organic dye) are obvious over
Heidenfelder").
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At most, Appellant has recognized that combining an amino-
substituted hydroxybenzophenone compound of the formula I with a
cosmetic or dermatological preparation results in the color stabilization of
the cosmetic or dermatological preparation. FF 3. But a mixture of an
amino-substituted hydroxybenzophenone compound of the formula I with a
cosmetic or dermatological preparation for the purpose of light protection
existed in the prior art. FF 5. Specifically, Heidenfelder teaches that
cosmetic and dermatological preparations comprising an amino-substituted
hydroxybenzophenone of the formula I have the properties of "unexpectedly
high light protection factors and UV-A protection." FF 7. Claiming the
known property of light protection in the form of a method for stabilizing
color, as Appellant has done here, does not change the fact that this inherent
property (i.e., color stabilization) already existed in the prior art. See In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1350 (Fed. Cir. 2002) ("It matters
not that those of ordinary skill heretofore may not have recognized these
inherent characteristics of the [prior art]."). Indeed, "[p ]roducts of identical
chemical composition can not have mutually exclusive properties," In re
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). For these reasons, we agree with
the Examiner that representative claim 12 is not patentable over
Heidenfelder. See Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809-10 (Fed. Cir. 2002) (explaining that an inventor may not
obtain a patent on a process having the same steps as a prior art process, in
which the new process merely identifies a new, advantageous property of the
prior art process); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1376 (Fed. Cir. 2001) ("Newly discovered results of known
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processes directed to the same purpose are not patentable because such
results are inherent.").
Appellant argues that the Examiner failed to establish that color
stabilization necessarily occurs in Heidenfelder. Br. 5---6. An Examiner
meets the initial "burden of production by adequately explaining the
shortcomings [he] perceives so that the applicant is properly notified and
able to respond." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(quotation omitted). The burden then shifts to the applicant "to prove that
the subject matter shown to be in the prior art does not possess the
characteristic relied on." In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977).
Here, we find that the Examiner adequately established a prima facie
case of obviousness based on inherency. As noted above, Heidenfelder
teaches a cosmetic preparation comprising 3.50% by weight compound of
formula (I) and 0.15% by weight of water- and/or oil-soluble (i.e., organic)
dye. FF 9; see also Heidenfelder (Example 6, i-f 0377). Heidenfelder also
teaches that the disclosed preparations are made by combining and mixing.
FF 9. Thus, the preparation of Example 6 involves the same method steps
Appellant currently claims. See Br. 9 (claim 12). The only difference
between the claimed subject matter and Heidenfelder is that Heidenfelder
does not teach that the act of combining an amino-substituted
hydroxybenzophenone of the formula I with a cosmetic or dermatological
preparation will stabilize the color of those preparations. FF 11. But again,
that property (i.e., ability to stabilize color) is necessarily present in
Heidenfelder's preparations. Thus, the Examiner-by showing that the
preparations taught by Heidenfelder are the same as those used in the
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claimed invention and made by the same method steps-has adequately
shown that color stabilization necessarily occurs in the prior art preparations.
Appellant failed to provide evidence to the contrary. Thus, the Examiner
was correct in maintaining the rejection. Best, 562 F.2d at 1254--55.
Appellant also asserts that the Examiner's Answer contains
contradictory factual findings. See Br. 6 (arguing that the Examiner's
statement that Heidenfelder "does not exemplify" a formulation with an
organic dye conflicts with the Examiner's statement that Heidenfelder
teaches preparations comprising an organic dye). But we agree with the
Examiner that, although Heidenfelder does not provide a recipe containing
an organic dye specifically listed in the '4 72 application, Heidenfelder
clearly teaches preparations comprising the amino-substituted
hydroxybenzophenone of formula I and a cosmetic or dermatological
preparation comprising an organic dye. FF 8.
Finally, we note that Appellant asserts that the Examiner's
obviousness rejection must be reversed because the claimed invention is
"novel" over Heidenfelder. It is true that "[t]hat which may be inherent is
not necessarily known," and that"[ o ]bviousness cannot be predicated on
what is unknown." In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). But
the proposition that obviousness cannot be based on the unknown does not
extend to factual situations where, as here, the method steps that necessarily
lead to the inherent property are known. See Bristol-Myers Squibb, 246
F.3d at 1376 (holding method claims invalid because "the claimed process
here is not directed to a new use; it is the same use, and it consists of the
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same steps as described by" the prior art). For these reasons, we reject
Appellant's second argument.
Representative claim 32
As noted above, claim 32 recites that the composition to be stabilized
comprises less than 2% by weight of dissolved inorganic salts. Appellant
argues that Heidenfelder does not teach or suggest less than 2% by weight of
dissolved inorganic salts. Br. 7. But we agree with Examiner that, because
Heidenfelder does not teach the presence of inorganic salts in his disclosed
compositions, Heidenfelder's compositions therefore contain "less than 2%
by weight of dissolved inorganic salts" as currently claimed. Ans. 8.
Specifically, the broadest reasonable interpretation of "less than 2%"
includes an amount of zero because the specification in this case does not
describe inorganic salts as a necessary component of the cosmetic and
dermatological preparations. FF 4. See In re Translogic Tech., Inc., 504
F.3d 1249, 1256 (Fed. Cir. 2007) ("During examination proceedings, claims
are given their broadest reasonable interpretation consistent with the
specification." (quotation omitted)). Thus, claim 32 reads on a composition
having no dissolved inorganic salts, and that composition is taught by
Heidenfelder. FF 10.
SUMMARY
We affirm the rejection of claims 12, 14--22, 32, and 33 under
35 U.S.C. § 103(a) on appeal.
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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).
AFFIRMED.
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