Ex Parte Bleckmann et al

Patent Trial and Appeal Board

Oct 13, 2016

11585246 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111585,246 10/24/2006
13897 7590 10/17/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Andreas Bleckmann
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.
3321-P31012 6292
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS BLECKMANN, SVEA BEHRENS, ANDREAS
CLAUSEN, UTA MEIRING, and JENS NIELSEN 1
Appeal2014-001885
Application 11/585,246
Technology Center 1600
Before DEMETRA J. MILLS, JOHN G. NEW, and RY ANH. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a cosmetic preparation. Claims 61-80 are on appeal as
rejected under 35 U.S.C. §§ 103(a) and 112, first paragraph, and for
obviousness type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The Real Party in Interest is Beiersdorf AG. App. Br. 3.
Appeal2014-001885
Application 11/585,246
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 61, 7 4, and 80 are independent claims. Claims 61 and
74 are representative and read as follows:
61. A cosmetic preparation comprising one or more light
protection filters, wherein the preparation is present as an oil-in-
water emulsion and comprises, based on a total weight of the
preparation,
from about 0 .3 % to about 3 % by weight of (a) one or more 1,2-
alkanediols having 3, 4, 6, 7, 8, or 10 carbon atoms and,
as the only UV light-protection filters, from about 0.3 % to about
3 % by weight of (b 1) one or more UV light-protection filters
selected from 2,4-bis { [ 4-(2-ethylhexyloxy )-2-hydroxy ]phenyl}-
6-( 4-methoxyphenyl)-1,3,5-triazine, dioctylbutylamidotriazone,
2,4-bis-[ 5-1( dimethylpropyl)benzoxazol-2-yl-( 4-phenyl)-
imino ]-6-(2-ethylhexyl)-imino-1,3 ,5-triazine, tris(2-ethylhexyl)
4,4' ,4" -(1,3 ,5-triazine-2,4,6-triyltriimino )-trisbenzoate, and
2;4;6-tribiphenyl-4-yl-1 ;3 ;5-triazine;
optionally in combination with from 0.01 % to 30 % by weight
of (b2) one or more light protection filters selected from the
group consisting of phenylene-l,4-bis(2-benzimidazyl)-3,3'-5,5'-
tetrasulfonic acid salts, 2-phenylbenzimidazole-5-sulfonic acid
salts, 1,4-di(2-oxo-1 O-sulfo-3-bomylidenemethyl)benzene and
salts thereof, 4-(2-oxo-3-bomylidenemethyl )benzenesulfonic
acid salts, 2-methyl-5-(2-oxo-3-bomylidenemethyl)sulfonic acid
salts, 2,2'-methylenebis[ 6-(2Hbenzotriazol-2-yl)-4-(1, 1,3,3-
tetramethylbutyl)phenol], 2-(2H-benzotriazol-2-yl)-4-methyl-6-
[2-methyl-3-[ 1,3 ,3 ,3-tetramethyl-1-[ ( trimethylsilyl)oxy ]-
disiloxanyl ]propyl]phenol, 3-benzylidene camphor, (2-
ethylhexyl) 4-( dimethylamino )benzoate, amyl 4-
( dimethylamino )benzoate, di(2-ethylhexyl) 4-methoxybenzal-
malonate, (2-ethylhexyl) 4-methoxycinnamate, isopentyl 4-
methoxycinnamate, 2-hydroxy-4-methoxybenzophenone, 2-
hydroxy-4-methoxy-4 '-methylbenzophenone, 2,2'-di-hydroxy-4-
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Application 11/585,246
methoxybenzophenone, hexyl 2-( 4'-diethylamino-2'-
hydroxybenzoyl)-benzoate, homomenthyl salicylate, 2-
ethylhexyl-2-hydroxybenzoate, 2-ethylhexyl-2-cyano-3,3-
diphenyl-acrylate, 3-( 4-(2,2-bis-ethoxycarbonyl vinyl)-
phenoxy)propenyl)-methoxysiloxane/dimethylsiloxane-
copolymer, titanium dioxide, and zinc oxide, and
wherein the preparation is free from sodium dihydroxycetyl
phosphate and does not contain antiperspirant active ingredients.
App. Br. 22-23 (Claims App'x) (paragraph returns added for clarity). Claim
74 reads as follows:
74. A cosmetic preparation, wherein the preparation comprises
from about 0.3 % to about 3 % by weight, based on a total weight
of the preparation, of (a) 1,2-hexanediol as the only 1,2-
alkanediol that is present in the preparation, and
(b) one or more UV light-protection filters selected from 2,4-
bis {[ 4-(2-ethylhexyloxy)-2-hydroxy ]phenyl }-6-( 4-
methoxyphenyl)-1,3,5-triazine, dioctylbutylamidotriazone, 2,4-
bis-[ 5-1( dimethylpropyl)benzoxazol-2-yl-( 4-phenyl)-imino ]-6-
(2-ethylhexyl)-imino-1,3,5-triazine, tris(2-ethylhexyl)
(l,3,5-triazine-2,4,6-triyltriimino )-trisbenzoate, and
tribiphenyl-4-yl-1,3,5-triazine,
a ratio (a) : (b) being from about 2 : 1 to about 1 : 2, and
4 4' 4"-
' '
2,4,6-
wherein the preparation does not contain antiperspirant active
ingredients.
Id. 24--25 (paragraph returns added for clarity).
The following rejections are on appeal:
Claims 61-80 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Action 2.
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Application 11/585,246
Claims 61---67, 69, 72-75, 78, and 80 stand rejected under 35 U.S.C.
§ 103(a) over Dueva.2 Final Action 9.
Claims 61---68, 70, 72-74, 76, and 80 stand rejected under 35 U.S.C.
§ 103(a) over Kobayashi3 and Gers. 4 Final Action 13.
Claims 61---68, 71-74, 77, and 79-80 stand rejected under 35 U.S.C.
§ 103(a) over Kobayashi and Ehlis. 5 Final Action 16.
Claims 61-80 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 51-55 and 59 of copending
Application No. 11/467,4046 and Dueva or Ehlis or Gers. Final Action 22-
23.
DISCUSSION
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. Any findings of fact set forth below are provided only to highlight
certain determinations by the Examiner.
2 U.S. Patent Application Pub. No. US 2005/0013781 Al (published Jan. 20,
2005) (hereinafter "Dueva").
3 European Patent Application Pub. No. EP 1 426 029 Al (published June 9,
2004) (hereinafter "Kobayashi").
4 U.S. Patent No. US 6,372,199 Bl (issued to Gers-Barlag et al. on Apr. 16,
2002) (hereinafter "Gers").
5 U.S. Patent Application Pub. No. US 2004/0191191 Al (published Sept.
30, 2004) (hereinafter "Ehlis").
6 Issued to Kropke et al. on July 15, 2014 as U.S. Patent No. US 8,779,007
B2 (assigned to Beiersdorf AG) (hereinafter "Kropke").
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Application 11/585,246
The rejection under 35 U.S. C. § 112, first paragraph.
FINDINGS OF FACT:
FF 1. During prosecution, the claims were amended on
October 19, 2009, to add new claims reciting, "the preparation is
free from ... antiperspirant active ingredients." See Appellants'
Amendment Under 37 C.F.R. 1.116 dated Oct. 19, 2009. Prior
to this amendment, no claim recited this subject matter. This
limitation has remained in each claim since this amendment.
FF2. "Antiperspirant" and/or "antiperspirant active
ingredient" is not mentioned in the Specification. See generally,
Spec.; see also Final Action 2-3 and Ans. 22-24 (discussing this
claim element and the Specification).
FF3. The Specification does not discuss any advantage
or disadvantage of respectively omitting or including
antiperspirants or an antiperspirant active ingredient, and does
not otherwise express any reason to exclude an antiperspirant
active ingredient from the cosmetic preparation(s) otherwise
disclosed. See generally, Spec.; see also Final Action 2-3 and
Ans. 22-24 (discussing this claim element and the
Specification).
ANALYSIS:
The Examiner has established a prima facie case that the claims, most
specifically the limitation of each reciting "the preparation ... does not
contain antiperspirant active ingredients," are not supported by a written
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Application 11/585,246
description as required under 35 U.S.C. § 112, first paragraph. We address
Appellants' arguments below.
Appellants contend that because the Specification "does not mention
antiperspirants," in disclosing cosmetics preparations, while "mention[ing] a
number of optional components of most diverse [sic] types which may be
present in the claimed preparation," one of ordinary skill would know that
the cosmetic compositions of the disclosed invention "do not usually
comprise antiperspirant active ingredients." App. Br. 8-9 (underlining
original). This is not persuasive.
The mere absence of a positive recitation of a claim element in the
Specification is not basis for its express exclusion in the claims. MPEP
§ 2173.05(i). Any claim containing a negative limitation which does not
have basis in the original disclosure is correctly rejected under 35 U.S.C.
§ 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. Id. "Negative claim limitations
are adequately supported when the specification describes a reason to
exclude the relevant limitation," describing disadvantages of the excluded
part will suffice. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir.
2015) (quoting Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344,
1351 (Fed. Cir. 2012)); see also MPEP § 2173.05(i) ("If alternative elements
are positively recited in the specification, they may be explicitly excluded in
the claims."). The Specification fails under these requirements. See FF2-
FF3.
In particular, the term "antiperspirant" and/or "antiperspirant active
ingredient" is not mentioned in the Specification. See generally, Spec.; see
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also Final Action 2-3 and Ans. 22-24 (discussing this claim element and the
Specification). Moreover, the Specification does not discuss any advantage
or disadvantage of respectively omitting or including antiperspirants or an
antiperspirant active ingredient, and does not otherwise express any reason
to exclude an antiperspirant active ingredient from the cosmetic
preparation(s) otherwise disclosed. See generally, Spec.; see also Final
Action 2-3 and Ans. 22-24 (discussing this claim element and the
Specification).
For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination that the claims are not adequately
supported by a written description under 35 U.S.C. § 112, first paragraph.
We affirm the rejection.
The rejection under 35 U.S.C. § 103(a) over Dueva.
FINDINGS OF FACT:
FF4. Dueva disclosed:
a composition comprising one or more photoactive compounds
and one or more optimization agents. Surprisingly, the
composition requires a small amount of optimization agent to
efficiently optimize the polarity, critical wavelength, SPF, PFA,
Star Rating, photostability, or any combinations thereof, of the
composition. Subsequently, an efficient sunscreen composition
is achieved.
Dueva Abstract, i-fi-f 10, 35, 36; see also Final Action 7-9 (discussing Dueva).
FF5. Dueva disclosed UV filters, including triazone
derivatives, including "ethylhexyl triazone (5.5 or less)." Dueva
i-fi-1 39-34; see also Final Action 7-9 (discussing Dueva).
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Ethylhexyl triazone is also known as Uvinul TISO and tris(2-
ethylhexyl) 4,4',4"-(l,3,5-triazine-2,4,6-
triyltriimino )trisbenzoate ). See Final Action 8.
FF6. Dueva disclosed, "the inclusion of one or more
optimization agents according to the present invention in a
sunscreen composition results in a stable, efficient composition"
and that "[t]he one or more optimization agents may be present
in a photoprotective composition ... from about 0.1 wt. % to
about 40 wt. %." Dueva i-fi-1 46-47; see also Final Action 7-9
(discussing Dueva).
FF7. Dueva disclosed that the optimization agents are
"[ m Jost preferably ... 1,2-dioles," for example 1,2-pentanediol,
1,2-octanediole, and 1,2-hexanediole. Dueva i-fi-1 49-50, claims
1---6; see also Final Action 7-9 (discussing Dueva).
ANALYSIS:
The Examiner, on this record, has established a prima facie case that
the claims would have been obvious over Dueva. We address Appellants'
arguments below.
Appellants argue the Examiner's rejection relies on improper
hindsight reasoning. App. Br. 12. This is not persuasive. Within its four-
comers, Dueva teaches and suggests the combination recited by the claims.
See FF4--FF6. Appellants have provided no persuasive evidence that the
Examiner relied upon knowledge that would have been outside the
knowledge of a person of ordinary skill or could only have been gleaned
from Appellants' Specification. See In re McLaughlin, 443 F.2d 1392, 1395
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(CCP A 1971 ). No hindsight was required in making the rejection to modify,
or, more specifically, select embodiments disclosed by Dueva to be
combined with one another as Dueva also suggests. See, e.g., Ans. 25
(discussing Dueva's rationale for the modification).
Appellants argue Dueva fails to show an example of (i.e.,
"exemplify," to use Appellants' words) a composition with a 1,2-diole and a
triazine UV protectant and, therefore, the rejection could only rely on
improper hindsight in modifying Dueva. App. Br. 11. The test of
obviousness is "whether the teachings of the prior art, taken as a whole,
would have made obvious the claimed invention." In re Gorman, 933 F.2d
982, 986 (Fed. Cir. 1991). Dueva's lack of a specific example combining
the triazine UV protectant and a 1,2-diole optimizer does not diminish its
clear teaching that such components should be combined. See FF 4-FF7.
Appellants point to prior art reference, Vollhardt (U.S. Patent No.
6,274,124 Bl, issued Aug. 14, 2001) as evidence that the skilled artisan
would not have used 1,2-hexanediole as the only 1,2 diol (e.g., as recited in
claims 74 and 80). App. Br. 13-14. Appellants argue that Vollhardt
discusses that, when seeking to improve water resistance in cosmetics, 1,2-
pentanediole is better than 1,2-hexandiole, because the latter decreased the
water resistance of the cosmetic, and, so, the reference teaches away from (is
a disincentive) to use the claimed, 1,2-hexanediole in the composition of
Dueva. Id. This is also not persuasive.
Water resistance is not a limitation of the appealed claims. Nor is it a
focus of Dueva (it is disclosed as possible, but not as critical or even
important in Dueva's compositions). Therefore, the skilled artisan would
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Application 11/585,246
not consider the disclosure of Vollhardt and its requirements for water
resistance important in determining which optimizer( s) to combine with UV
protectants when considering Dueva' s teachings.
For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination that the claims would have been
obvious over Dueva. We affirm the rejection.
The rejection under 35 U.S.C. § 103(a) over Kobayashi and Gers.
FINDINGS OF FACT:
FF8. Kobayashi disclosed an emulsion composition
with a 1,2-alkanediol (e.g., 1,2-pentanediol, 1,2-octanediol, 1,2-
hexanediol) at 0.01-10.0 wt%, combined with an "UV
absorbent" material at an "adequate dose." Kobayashi i-fi-f 18, 21-
22, example 1, example 16; see also Final Action 9-12
(discussing Kobayashi).
FF9. Gers disclosed "[u]se of one or more
unsymmetrically substituted s-triazine derivatives in cosmetic or
dermatological preparations," also "the present invention relates
to preparations for protecting the skin against UV radiation," and
specifically, "dioctylbutylamidotriazone, m the finished
cosmetic or dermatological preparations is advantageously
chosen from the range 0.1-15.0% by weight, preferably 0.5-8.0%
by weight, based on the total weight of the preparations." Gers
Abstract, 1:7-11, 7:36-9:4; see also Final Action 10-12
(discussing Gers).
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FFlO. Gers also disclosed "[i]f appropriate, the aqueous
phase of the preparations according to the invention
advantageously comprises ... alcohols of low C number, for
example ethanol, isopropanol, 1,2-propanediol and glycerol
.... " Gers 11:64--12:6, example 3; see also Final Action 10-12
(discussing Gers).
ANALYSIS:
Appellants, again, argue improper hindsight as the only possible
rationale for the cited combination, and also argue a lack of motivation for
making the cited combination. App. Br. 15. As to the later, Appellants
argue Kobayashi "has nothing to do with compositions (emulsions) which
contain UV filter substances." Id. These arguments are not persuasive.
Each cited reference suggests combining it with the other because
Kobayashi discloses that an UV absorber, at an adequate dose, is needed in
its composition and a skilled artisan would look to Gers, which is focused on
compositions for UV protection, for examples of such a material and dose.
FF8-FF10; see also Ans. 26 (discussing the combination). Gers, likewise,
discloses that its composition may include 1,2-diols, similar to those
disclosed in the Specification and disclosed by Kobayashi. See, e.g., Spec.
i-f 36; FF8. No improper hindsight was necessary to make the cited
combination; as the Examiner determined, there was ample motivation to do
so within the references themselves. Final Action 11.
Appellants' contention that including an UV filter is not a priority of
Kobayashi is incorrect. The examples provided in Kobayashi require such a
material at an effective dose, so this argument is not persuasive. FF8.
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Finally, Appellants argue, with respect to claims 63---65, 74, and 76,
that the ratios of 1,2-alkanediole to triazone UV filter disclosed in references
are potentially several orders of magnitude larger than the claimed 2: 1 to 1 :2
ratios and, for this reason, the claimed ratios are not obvious. This argument
is also not persuasive.
The Examiner determined that the references' disclosed amounts of
the recited 1,2-alkanediole and triazone substances overlapped with the
amounts of the appealed claims and that, in any event, such elements were
result-effective variables that were optimizable by the skilled artisan. Final
Action 11-12; Ans. 26-27. We agree. For example, ifthe skilled artisan
merely chose the maximum disclosed amounts (wt.%) of these materials the
respective ratio would be 1: 1.5 (1,2-alkanediole-to-triazone-derivative ),
which is within the claimed ranges. See FF8 and FF9.
"' [I]it is not inventive to discover the optimum or workable ranges by
routine experimentation.' In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Only if the 'results of optimizing a variable' are 'unexpectedly good' can a
patent be obtained for the claimed critical range. In re Antonie, 559 F.2d
618, 620 (CCPA 1977)." In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997) (internal cites to USPQ omitted).
In general, an applicant may overcome a prima facie case of
obviousness by establishing 'that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected
results relative to the prior art range.' That same standard applies
when, as here, the applicant seeks to optimize certain variables
by selecting narrow ranges from broader ranges disclosed in the
prior art. Moreover, the applicant's showing of unexpected
results must be commensurate in scope with the claimed range.
In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
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Here, Appellants have provided no evidence that the optimized
amounts/ratios of components are critical, nor have they provided any
evidence of unexpected results.
For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination that the claims would have been
obvious over Kobayashi and Gers. We affirm the rejection.
The rejection under 35 U.S.C. § 103(a) over Kobayashi and Ehlis.
FINDINGS OF FACT:
See FF8, supra.
FF 11. Ehlis disclosed "[ c ]osmetic or pharmaceutical
preparations contain from 0.05-40% by weight, based on the total
weight of the composition, of one UV absorber or UV absorber
mixtures," and that one exemplary UV absorber was 2,4,6-
tribipheny 1-4-yl-1,3 ,5-triazine, also called "tris(biphenyl )-1,3, 5-
triazin (formula 101)." Ehlis i-fi-1 53, 334--340; see also Final
Action 13-15 (discussing Ehlis ).
ANALYSIS:
Appellants present (App. Br. 18-19) the same arguments over
Kobayashi as for the preceding rejection. Moreover, Appellants present (id.
19-20) the same arguments concerning the recited ratios of components with
respect to claims 63---65, 74, 77, and 79 as for the preceding rejection. These
are unpersuasive for the reasons set forth above. See supra.
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For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination that the claims would have been
obvious over Kobayashi and Ehlis. We affirm the rejection.
The non-statutory obviousness type double patenting rejection over
claims 51-55 and 59 of Kropke and Dueva or Ehlis or Gers.
Because Appellants present no arguments pertaining to the
Examiner's double patenting rejections (App. Br. 20-21 ), we summarily
sustain those rejections. See MPEP § 1205.02, 9th ed., Rev. 7, Nov. 2015
("If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, that ground of rejection will be summarily sustained by the
Board.").
SUMMARY
The rejection of claims 61-80 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description is affirmed.
The rejection of claims 61---67, 69, 72-75, 78, and 80 under 35 U.S.C.
§ 103(a) over Dueva is affirmed.
The rejection of claims 61---68, 70, 72-74, 76, and 80 under 35 U.S.C.
§ 103(a) over Kobayashi and Gers is affirmed.
The rejection of claims 61---68, 71-74, 77, and 79-80 under 35 U.S.C.
§ 103(a) over Kobayashi and Ehlis is affirmed.
The rejection of claims 61-80 on the ground of nonstatutory
obviousness-type double patenting over claims 51-55 and 59 ofKropke and
Dueva or Ehlis or Gers is affirmed.
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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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