Ex Parte Brunckhorst et al

Patent Trial and Appeal Board

Oct 18, 2013

10922644 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MELANIE BRUNCKHORST, ANJA EITRICH,
KERSTIN HOOP, CLAUDIA MUNDT, ILKA OELRICHS,
HEIDI RIEDEL, STEFAN SCHEEDE, and RIXA VON BULOW,
____________

Appeal 2012-003385
Application 10/922,644
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
a method of making a foam incorporating an organic UV filter. The Patent
Examiner has rejected the claims as lacking enablement, for anticipation,
and for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1 Appellants identify Beiersdorf AG of Hamburg, Germany as the Real Party
in Interest (App. Br. 3).
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STATEMENT OF THE CASE
Claims 46-70 are on appeal, and reproduced in the Claims Appendix
(App. Br. 37-42). Claims 46 and 57 are representative of the claims on
appeal, and read as follows (emphasis added):
46. A method of making a self-foaming, foam-like, after-
foaming or foamable cosmetic or dermatological preparation
which affords a boosted foam, wherein the method comprises
incorporating into the preparation one or more organic UV
filter substances in an amount which is effective to boost the
foam provided by the preparation.
57. A self-foaming, foam-like, after-foaming or foamable
dermatological or cosmetic preparation, wherein the
composition comprises one or more UV filter substances
selected from 2,4,6-tris[anilino(p-carbo-2'-ethyl-1'-hexyloxy)]-
1,3,5-triazine, 2-ethylhexyl 4-methoxycinnamate, 4-(tert-butyl)-
4'-methoxydibenzoylmethane, 2,4-bis{[4-(2-ethylhexyloxy)-2-
hydroxy]phenyl}-6-(4-methoxyphenyl)-1,3,5-triazine, and 2-
phenylbenzimidazole-5-sulphonic acid, and salts thereof; and
wherein the preparation comprises the one or more UV filter
substances in an amount which is effective to least one of boost
a foam and reduce a bubble size of a foam provided by the
preparation compared to a foam provided by an otherwise
identical preparation which does not comprise the one or more
UV filter substances.
The Examiner has rejected the claims as follows:
I. claims 46-48, 50-54, and 56 under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement
requirement;
II. claims 46-52, 54-57, 59, 60, 62, 65, 66, and 68 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Allard;2

2 Delphine Allard et al., 5,928,629, issued July 27, 1999.
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III. claims 46, 48, 50, 51, 54, 56, 57, 62, and 65-68 are rejected
under 35 U.S.C. § 102(e) as being anticipated by Harivel;3
IV. claims 53 and 64 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allard in view of Brocks;4
V. claims 57, 58, 62, 63, and 65-70 are rejected under 35 U.S.C.
§ 103(a) as allegedly being unpatentable over Müller;5,6
VI. claims 57, 58, 60-63, and 65-70 are rejected under 35 U.S.C.
§103(a) as allegedly being unpatentable over Chaudhuri.7

I. The Issue: Enablement
The Examiner contends that the Specification “is not enabled for
boosting the foam of a foamable composition using any UV-filter.” (Ans.
5.) The Examiner contends that the “specification does not provide any
mechanism of action or theory as to how UV-filters relate to boosting the
foam of a foamable composition. . . . The instant specification provides one
example utilizing ethylhexyl triazone in boosting the foam of a
composition.” (Ans. 9) (emphasis in original.)
Appellants contend that the Specification need only to teach how to
make and use the invention without undue experimentation, and it is not
necessary to disclose those things that are well known. (App. Br. 7.)
We find that Appellants have the better position. Here, the
Specification, and more importantly the art, discloses organic compounds

3 Anne-Cecile Harivel, 2004/0170582 Al, published Sep. 2, 2004.
4 Werner Brocks et al., 2004/0076651 Al, published Apr. 22, 2004.
5 Anja Müller, 6,838,077 B2, issued Jan. 4, 2005.
6 The Examiner has withdrawn the rejection of claim 60 under 35 U.S.C.
§ 103(a) as allegedly being unpatentable over Müller (Ans. 4).
7 Ratan K. Chaudhuri, 6,602,515 B2, issued Aug. 5, 2003.
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that act as sunscreens. (See Spec. 7-13.) One of ordinary skill in the art can
test the disclosed sunscreen compounds and determine if the compound
boosts the foam by delaying the breakage of the foam, and can test if the
bubbles are smaller than bubbles found in the same preparation without the
compound (Spec. 5, ll. 11-29). The Examiner may be correct in that not all
sunscreen compounds will necessarily boost the foam properties of a
composition; however, the claims may encompass inoperative embodiments
and still be enabled. See Atlas Powder Co. v. E.I. du Pont De Nemours &
Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Moreover, “[working] examples
are not required to satisfy section 112, first paragraph.” In re Strahilevitz,
668 F.2d 1229, 1232 (CCPA 1982). For example, in In re Wright, the
Federal Circuit considered the enablement of claims directed towards “any
and all . . . vaccines . . . which elicit immunoprotective activity in any
animal toward any RNA virus.” In re Wright, 999 F.2d 1557, 1562 (Fed.
Cir. 1993). To enable these claims, Wright advanced one working example.
Id. We find that the Examiner has not met the initial burden of establishing
a reasonable basis to question the enablement with respect to the claimed
invention. Because the Examiner has not met their burden, we reverse this
rejection.

II. The Issue: Anticipation by Allard
The Examiner takes the position that Allard disclosed sunscreen
compositions Uvinul®T150 and Parsol®1789 (Ans. 12) incorporated into a
mixture containing cetyl alcohol and C12/C15 benzoate alcohols (id.). The
Examiner also finds that Allard disclosed a “cream, mouse or foam” of the
mixture (id.). The Examiner concludes that the “ingredients taught in the
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prior art composition and instantly claimed composition are the same and are
in a ‘foamable, foam-like, etc.’ compositions, the method of boosting the
foam will inherently occur after the addition of the UV filter.” (Ans. 13.)
The issue is: Do the Examiner’s findings establish by a
preponderance of the evidence of record that Allard anticipates the claims?

Findings of Fact
FF 1. The Specification provides triazine derivatives as UV-B filter
substances, specifically reciting “2,4,6-tris[anilino(p-carbo-2'-ethyl-1 '-
hexyloxy)]- 1,3,S-triazine (INCI: Octyl Triazone), which is sold by BASF
Aktiengesellschaft under the trade name UVINUL® T 150.” (Spec., 11,
ll. 2-4.)
FF 2. The Specification provides UV-A filter substances such as “4-
(tert-butyl)-4'methoxydibenzoylmethane (CAS No. 70356-09-1), which is
sold by Givaudan 25 under the name Parsol® 1789 and by Merck under the
trade name Eusolex® 9020.” (Spec. 7, ll. 22-26.)
FF 3. Allard disclosed, in Example C, a composition comprising
Uvinul®T150 and Parsol®1789 incorporated into a mixture containing cetyl
alcohol and C12/C15 benzoate alcohols. (Allard col. 11, l. 5 to col. 12, l. 34;
Ans. 12.)
FF 4. Allard disclosed:
the cosmetic compositions of this invention are employed for
the protection of human skin against UV rays or as antisun
compositions, they may be formulated as suspensions or
dispersions in solvents or as fatty substances, in the form of
nonionic vesicular dispersions or in the form of an emulsions,
preferably of the oil-in-water type, such as a cream or a milk, in
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the form of salve, gel, cream, ointment, gel, solid stick, stick,
aerosol mousse or spray.
(Allard col. 10, ll. 25-33; Ans. 12.)

Principle of Law
As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102
[M]ust clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of
the cited reference. Such picking and choosing may be entirely
proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may
arise from the similarity of the subject matter which he claims
to the prior art, but it has no place in the making of a 102,
anticipation rejection.
In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972)

Analysis
Appellants contend that Allard’s emulsion C has little in common
with the example 1 of the instant Specification. “In fact, with the exception
of cetyl alcohol, glycerin and ethylhexyl triazone there appears to be no
overlap in the components of these two compositions. . . . [Furthermore,]
emulsion C may as well be present as a (non-foamable) cream (one of the
forms that the compositions of ALLARD can take; see, e.g., claim 16 of
ALLARD).” (App. Br. 15.)
We find that the Appellants have the better position. The Examiner is
relying on inherency to conclude that Allard anticipates the claimed method
“since the ingredients taught in the prior art composition and instantly
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claimed composition are the same and are in a ‘foamable, foam-like, etc.’
compositions, the method of boosting the foam will inherently occur after
the addition of the UV filter.” (Ans. 13; FFs 1-3.) We agree with the
Appellants, that contrary to the Examiner’s assertion, Allard does not
disclose a composition in the form of a foam to achieve the limitation of
“effective to boost the foam provided by the preparation” as required by the
claims, because there is no indication in Allard that an actual foam using
emulsion C was made (FFs 3, 4). Allard does teach, among a laundry list of
possible compositions, mousse (foam) as a choice of an emulsion containing
the sunscreen (FF 4). However, in order to arrive at a foam or method of
making foam the Examiner needed to pick and choose from two different
parts of Allard (FFs 3, 4). See In re Arkley, 455 F.2d at 587-588. We find
that the Examiner has not established by a preponderance of the evidence of
record that Allard anticipates the claims. Accordingly, we reverse the
rejection of the claims based on Allard.

III. The Issue: Anticipation by Harivel
The Examiner takes the position “that since the ingredients taught in
the prior art composition and instantly claimed composition are the same and
are present in similar amounts in ‘foamable, foam-like, etc.’ compositions,
[the method of boosting the foam and] the boosted foam with a reduced
bubble size will inherently occur after the addition of the UV filter.”
(Ans. 15.)
The issue is: Has the Examiner established by a preponderance of the
evidence of record that Harivel anticipates the claim?

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Findings of Fact
FF 5. The Specification provides UV filter substances such as
“Phenylbenzimidazole Sulphonic Acid (CAS No. 27503-81-7), which is
available under the trade name Eusolex 232 from Merck, or under Neo
Heliopan Hydro from Haarmann & Reimer.” (Spec. 10, ll. 7-10.)
FF 6. The Examiner finds that Harivel disclosed sunscreen
formulations containing “UVA and UVB filters include 1-(4-tert-
butylphenyl)-3-(4-methoxyphenyl)propane-1 ,3-dione (i.e. 4-tert-butyl-4' -
methoxydibenzoylmethane), octyl methoxycinnamate (2-ethylhexyl 4-
methoxycinnamate), isopentyl 4-methoxycinnamate, 2-
phenylbenzimidazole-5-sulfonic acid and 2,4,6-
trianilo-(p-carbo-2'ethylhexyl-1 'oxy)-1,3,5-triazine.” (Ans. 13.)
FF 7. Harivel disclosed that “these organic UV filters are usually
incorporated into cosmetic formulations in an amount of from 0.5 to 20% by
weight, preferably 1-15%.” (Harivel, p.4, ¶ 0067; Ans 14.)
FF 8. Harivel disclosed the production of a sun protective spray
mouse comprising 3% by weight of EusolexTM 232 (Harivel, p. 6, ¶ 0097-
0098; Ans. 14.)

Principle of Law
“[T]he discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art's functioning,
does not render the old composition patentably new to the discoverer. . . .”
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
“An inherent structure, composition or function is not necessarily
known. . . . Insufficient prior understanding of the inherent properties of a
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known composition does not defeat a finding of anticipation.” Id. at 1348-
49.

Analysis
Appellants contend that “the Examiner has not provided any
explanation as to why the addition of 3 % by weight of the organic UV filter
substance phenylbenzimidazole sulfonic acid . . . can reasonably be assumed
to necessarily boost the foam and/or reduce the bubble size of the foam
provided by this composition.” (App. Br. 17-18.)
We are not persuaded. The Examiner finds that Harivel disclosed a
foam that contains a sun protective compound, EusolexTM 232, at a
concentration of 3% by weight (FFs 7, 8). The only positive method step
required by claims 46 and 51 is incorporating the organic UV filter into the
preparation. The Examiner concludes that “since the ingredients taught in
the prior art composition and instantly claimed composition are the same and
are in a ‘foamable, foam-like, etc.’ compositions, the method of boosting the
foam will inherently occur after the addition of the UV filter.” (Ans. 13.)
With regard to claim 57, the Examiner concludes that “since the
ingredients taught in the prior art composition and instantly claimed
composition are the same and are present in similar amounts in ‘foamable,
foam-like, etc.’ compositions, the reduced bubble size will inherently occur
after the addition of the UV filter.” (Ans. 13.)
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product
. . . . Whether the rejection is based on ‘inherency’ under 35
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U.S.C. § 102, on ‘prima facie obviousness' under 35 U.S.C. §
103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, the claims are directed
to composition or a method of making “a self-foaming, foam-like, after-
foaming or foamable cosmetic or dermatological preparation” wherein the
method step is directed to incorporating one or more organic UV filters.
Other than the step of “incorporating” the organic UV filter into a
preparation there are no other methods steps claimed (Ans. 28). Harivel
specifically disclosed that the sun protective mouse is made in a process
where “phase A is dispersed in the Phase C. Then phase B and phase D are
added and neutralized at pH=8” (Harivel, p. 7, ¶ 0098; Ans. 14.) The
method disclosed in Harivel produces the same composition as the instantly
claimed composition (Ans. 13). Here, the Examiner takes the position that
the “the method of boosting the foam will inherently occur after the addition
of the UV filter” (id.). See In re Best, 562 at 1255. Claiming of a new use,
new function or unknown property which is inherently present in the prior
art does not necessarily make the claim patentable. Id. at 1254.
On the record before us, we conclude the Examiner did not err in
rejecting claims 46, 48, 50, 51, 54, 56, 57, 62, and 65-68 under 35 U.S.C.
§ 102(e) as being anticipated by Harivel.

IV. The Issue: Obviousness over Allard in view of Brocks
The Examiner takes the position that Allard teaches
cosmetic/dermatological sunscreen compositions comprising the instant UV
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filters, while Brocks teaches skin-care products in the form of a creamy
permanent foam or in the form of a stable foamy cream which is foamed in a
stable manner with a suitable gas. (Ans. 15-16.) The Examiner concludes
that the “invention as a whole would have been prima facie obvious to one
of ordinary skill in the art at the time the invention was made, as evidenced
by the references, especially in the absence of evidence to the contrary.” (Id.
at 17.)
The issue is: Does the preponderance of the evidence or record
support the Examiner’s position that the combination of Allard and Brocks
renders the claims prima facie obvious?

Findings of Fact
FF 9. Brocks disclosed:
The concepts "stable foamy" and "permanent foam" refer to
product compositions characterized in that in them is
homogeneously distributed a gaseous substance in the form of
small gas bubbles which remain in this homogeneous
distribution over a period of at least one week, preferably at
least one month and particularly at least 6 months if stored at
room temperature (200 C.), namely the degree of foam-up is
still at least 10% and preferably at least 20%. The foamed
product compositions contain gas bubbles that preferably are
from 0.0001 to 10 mm and particularly from 0.01 to 1 mm in
size. The mean diameter of the gas bubbles is preferably from
0.1 to 0.8 mm and especially from 0.2 to 0.4 mm.
(Brocks, 1, ¶ 0009; Ans. 16.)

Principle of Law
“There is nothing inconsistent in concurrent rejections for obviousness
under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re Best,
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562 F.2d 1252, 1255 n.4 (CCPA 1977).

Analysis
Appellants contend that “ALLARD neither teaches nor suggests
making self-foaming, foam-like, after-foaming or foamable compositions
with reduced bubble size and for this reason alone, a combination of
ALLARD and BROCKS is unable to render obvious the subject matter of
claims.”
We are not persuaded. As recognized by the Examiner, Allard
suggested compositions comprising the claimed UV filter (FFs 3) and even
suggested making an emulsion including a mouse (FF 4). Brocks disclosed
making a stable foam comprising air bubbles in the range of 0.01 to 1 mm
(FF 9). As recognized by the Examiner, Brocks also suggests using
sunscreen agents as a suitable active substance in the foam (Brocks , ¶ 0054;
Ans. 16). The test for obviousness is what the combined teachings of the
references as a whole would have suggested to those of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We agree with the Examiner that the combination of references
arrives at a sunscreen containing a cosmetic foam having gas bubbles in a
size range that would overlap with the claimed range (Ans. 16). “In cases
involving overlapping ranges . . . even a slight overlap in range establishes a
prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003).
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Allard and
Brocks renders obvious the method and compositions of claims 53 and 64
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directed at a sunscreen containing foam having an average bubble size from
0.005 mm2 to 0.5 mm2. We therefore affirm the rejection of claims 53 and
64 under 35 U.S.C. § 103(a) as being obvious.

V. The Issue: Obviousness over Müller
The Examiner takes the position that the claims are obvious because
“Muller suggests cosmetic or dermatological compositions [that] can
preferably comprise the instantly claimed UV-filters and emulsifiers in foam
form.” (Ans. 18.) The Examiner takes the position that “since the prior art
reference teaches the addition of one or more UV filters to a cosmetic or
dermatological preparation that does not already contain UV-filters,” the
limitation as recited in claim 57 “‘wherein the preparation shows at least one
of a boosted foam and a reduced bubble size compared to an otherwise
identical preparation which does not comprise the one or more UV-filters’”
is met (Ans. 18). Specifically, the Examiner finds, and Appellants do not
dispute, that Müller disclosed at least “4-tertbutyl-4'-methoxy-
dibenzoylmethane (i.e. (4-tert-butylphenyl)-3-(4- methoxyphenyl)propane-1,
3-dione, octyl methoxycinnamate (2-ethylhexyl 4- methoxycinnamate, 2-
phenylbenzimidazole-5-sulfonic acid” (Ans. 17) as recited in claim 57.
The issue is: Does the preponderance of the evidence of record
support the Examiner conclusion that Müller renders obvious the claimed
sunscreen composition?

Analysis
We begin our analysis with claim interpretation. “[D]uring
examination proceedings, claims are given their broadest reasonable
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interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). In addition to reciting five specific UV filter that are
incorporated into the foam preparation, independent claim 57 recites the
limitation that “the preparation comprises the one or more UV filter
substances in an amount which is effective to least one of boost a foam and
reduce a bubble size of a foam provided by the preparation compared to a
foam provided by an otherwise identical preparation which does not
comprise the one or more UV filter substances” (emphasis added). Here, the
Specification specifically provides that “the preparations advantageously
comprise the UV filter substances in a total amount of, for example, 0.1 %
by weight to 30% by weight, preferably 0.5 to 20% by weight, in particular
1.0 to 15.0% by weight, in each case based on the total weight of the
preparations.” (Spec. 14, ll. 4-8.) Thus, consistent with the Specification, a
foam composition comprising one of the five recited UV filter compounds in
the amount ranging from 1-15% by weight, would meet the claim limitation
“in an amount effective to least one of boost a foam and reduce a bubble size
of a foam provided by the preparation compared to a foam provided by an
otherwise identical preparation which does not comprise the one or more UV
filter substances.”
Appellants contend that Müller “clearly does not focus on foamable
compositions but rather mentions foams only in passing” (App. Br. 21)
Appellants also do not see that Müller teaches or suggest “UV filter
substances should be employed in an amount which is effective to boost the
foam and/or reduce the bubble size of the foam provided by the preparation
compared to the foam provided by an otherwise identical preparation which
does not comprise these UV filter substances.” (App. Br. 21.)
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We are not persuaded by Appellants’ contention. Müller disclosed
that “[c]osmetic and dermatological preparations according to the invention
may be in various forms. First, for example, they may be an O/W emulsion
or O/W micro emulsion, a multiple emulsion (e.g. a W/O/W emulsion), a
sprayable emulsion or else a foam.” (Müller, col. 8, ll. 14-18; Ans. 17.) It is
well settled that “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)); see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the
disclosures in a reference must be evaluated, including nonpreferred
embodiments, and a reference is not limited to the disclosure of specific
working examples.” (Citations omitted).)
We agree with the Examiner that “[t]he amount of UV filter agent
overlaps that instantly claimed. Therefore, . . . Mueller teach[es] the same
claimed UV filter agents. The amount of the UV filter agents taught
overlaps that instantly claimed.” (Ans. 29.) We agree with the Examiner’s
finding that Müller teaches compositions comprising UV filters in “the range
0.1% by weight to 30% by weight, preferably from 0.5 to 20% by weight, in
each case based on the total weight of the preparations.” (Müller, col. 7, ll.
40-42; Ans. 17.) We also agree with the Examiner’s finding that Müller
teaches at least three of the specifically recited UV filter of claim 57 (Ans.
17). A chemical compound and its properties are inseparable. In re Spada,
911 F.2d 705, 708 (1990), citing In re Papesch, 315 F.2d 381, 391 (CCPA
1963).
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With regard to claim 58, Appellants contend that the “Examiner has
not explained what would have prompted one of ordinary skill in the art to
pick and choose from this laundry list (at least) one emulsifier from each of
the three types of emulsifiers recited in claim 58.”
We are not persuaded. We agree with the Examiner’s position that:
All of these emulsifier are compounds known to be utilized for
the same purpose. Since fatty acids are preferred, the use of
them is clearly obvious. Fatty alcohols are also taught as
advantageous. Therefore, two of the three emulsifiers claimed
are those preferred and taught as advantageous. Therefore, it is
only selection of one emulsifier from the list taught by Muller.
Therefore, all of the claimed elements were known in the prior
art and one skilled in the art could have combined the elements
as claimed by known methods with no change in their
respective functions and the combination would have yielded
predictable results to one of ordinary skill in the art at the time
of the invention.
(Ans. 29.)
We agree with the Examiner’s reasons and conclusion, and
accordingly, we affirm the rejection of claims 57, 58, 62, 63, and 65-70
under 35 U.S.C. § 103(a) as being obvious over Müller.

VI. The Issue: Obviousness over Chaudhuri
The Examiner finds that Chaudhuri teaches sun screen compositions
containing the active ingredient in an “amount ranging from 0.1 to 40% by
weight” (Ans. 19). Additionally, as recognized by the Examiner the
composition can also include “4-tert-butyl-4'-methoxy-dibenzoylmethane
(i.e. (4-tert-butylphenyl)-3-(4- methoxyphenyl)propane-1 ,3-dione, octyl
methoxycinnamate (2-ethylhexyl 4- methoxycinnamate, 2-
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phenylbenzimidazole-5-sulfonic acid” (Ans. 19) as specifically recited in
claim 57. The Examiner also finds that the composition can formulated into
a foam (Ans. 19). The Examiner concludes that “it would have been
obvious to one of ordinary skill in the art at the time the claimed invention
was made to make the instantly claimed composition because they are
obvious and known components for use in sunscreen compositions for the
purpose of protecting the skin from the sun.” (Ans. 20.)
The issue is: Does the preponderance of the evidence of record
support the Examiner conclusion that Chaudhuri renders obvious the
composition claims?

Analysis
Appellants contend that Chaudhuri “does not focus on foamable
sunscreen compositions.” (App. Br. 27.) Additionally, Appellants contend
that Chaudhuri “is devoid of any teaching or suggestion that the presence of
any of the UV filter substances mentioned therein has an (any) effect on the
foaming properties of an encompassed composition which is (happens to be)
foamable.” (App. Br. 28.)
We are not persuaded. As discussed above in V, it is consistent with
the Specification, to interpret that a foam composition comprising one of the
five specifically recited UV filter compounds in the amount ranging from 1-
15% by weight, would meet the claim limitation “in an amount effective to
least one of boost a foam and reduce a bubble size of a foam provided by the
preparation compared to a foam provided by an otherwise identical
preparation which does not comprise the one or more UV filter substances.”
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We agree with the Examiner finding that Chaudhuri teaches sun
screen compositions containing the active ingredient in an “amount ranging
from 0.1 to 40% by weight” (Ans. 19; Chaudhuri, col. 3, ll. 38-41). These
sunscreen compositions can include the specifically recited UV filters such
as “4-tert-butyl-4´-methoxy-dibenzoylmethane (i.e., (4-tert-butylphenyl)-3-
(4- methoxyphenyl)propane-1[)], 3-dione, octyl methoxycinnamate (2-
ethylhexyl 4- methoxycinnamate, 2-phenylbenzimidazole-5-sulfonic acid.”
(Ans. 19; Chaudhuri, col. 5, l. 52 to 6, l. 19) In addition, Chaudhuri also
provides foam compositions (Chaudhuri, col. 6, ll. 38-45). A chemical
compound and its properties are inseparable. In re Spada, 911 F.2d 705, 708
(1990), citing In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
With respect to claim 58, Appellants contend that there “the Examiner
has not explained what would have prompted one of ordinary skill in the art
to pick and choose from these lists (at least) one substance from each of the
three types of emulsifiers recited in claim 58.” (App. Br. 30.)
We are not persuaded. The Examiner provided the following reason
for combining the emulsifiers.
[T]he examiner had directed appelants’ attention to example 3.
This example comprises PEG-1 00 stearate which reads on
emulsifier b, and stearic acid which reads on emulsifier a.
However, example 3 utilizes the emulsifier of glycerol stearate.
Glycerol stearate, stearyl alcohol and cetyl alcohol are all taught
as emulsifiers which can be utilized in the instant invention
(column 4, lines 29-35, the section referred to by the examiner).
Therefore, it would have been obvious to utilize stearyl alcohol
or cetyl alcohol (emulsifier c) in the composition of Chaudhuri
because they are obvious and known components for use in
sunscreen compositions.
(Ans, 30.)
Appeal 2012-003385
Application 10/922,644

19
We agree with the Examiner’s reasons and conclusion, and
accordingly, we affirm the rejection of claims 57, 58, 62, 63, and 65-70
under 35 U.S.C. § 103(a) as being obvious over Chaudhuri.

SUMMARY
We reverse the rejection of claims 46-48, 50-54, and 56 under 35
U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement
We reverse the rejection of claims 46-52, 54-57, 59, 60, 62, 65, 66,
and 68 under 35 U.S.C. § 102(b) as being anticipated by Allard;
We affirm the rejection of claims 46, 48, 50, 51, 54, 56, 57, 62 and
65-68 under 35 U.S.C. § 102(e) as being anticipated by Harivel.
We affirm the rejection of claims 53 and 64 under 35 U.S.C. § 103(a)
being unpatentable over Allard in view of Brocks.
We affirm the rejection of claims 57, 58, 62, 63, and 65-70 under 35
U.S.C. § 103(a) as being unpatentable over Müller;
We affirm the rejection of claims 57, 58, 60-63, and 65-70 under 35
U.S.C. §103(a) as being unpatentable over Chaudhuri.

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-IN-PART
lp