Ex Parte Candau et al

Patent Trial and Appeal Board

Jun 14, 2016

11987212 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111987,212 11128/2007
21839 7590 06/16/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Didier Candau
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.
1016800-000892 4494
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIDIER CANDAU and HERVE RICHARD
Appeal2013-010826
Application 11/987 ,212
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
sunscreen composition. The Examiner rejected the claims as obvious and on
the ground of obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as L'Oreal (see App. Br. 2).
Appeal2013-010826
Application 11/987 ,212
Statement of the Case
Background
"[O]ne particularly advantageous family of UV-A screening agents
currently consists of dibenzoylmethane derivatives, and in particular 4-tert-
butyl-4' -methoxydibenzoylmethane" (Spec. i-f 5). "1,3 ,5-Triazine
derivatives are particularly desired in anti-sun/sunscreen cosmetics due to
the fact that they are highly active in the UV-B range" (Spec. i-f 6).
"However, it has been found that certain of these 1,3,5-triazine derivatives
are photosensitive when they are in the presence of 4-tert-butyl-4'-
methoxydibenzoylmethane" (Spec. i-f 7).
"It has now surprisingly been determined that the introduction of a
siliceous s-triazine ... makes it possible, quite remarkably, to improve the
photostability of this 1,3,5-triazine derivative in such compositions" (Spec.
,-r 8).
The Claims
Claims 34---66 are on appeal. Claim 34 is representative and
reads as follows:
34. A topically applicable, UV-A/UV-B photoprotective and
photostabilized cosmetic/dermatological sunscreen composition
compnsmg:
(a) an effective amount of at least one dibenzoylmethane
UV-A screening agent;
(b) an effective amount of at least one 1,3,5-triazine
compound UV-B screening agent that is otherwise
photosensitive in the presence of such amount of said
dibenzoylmethane compound; and
( c) an amount of at least one siliceous s-triazine
compound substituted with two aminobenzoate or
aminobenzamide groups that is effective to photostabilize such
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Application 11/987 ,212
effective amount of said at least one 1,3,5-triazine compound
UV-B screening agent in the presence of such effective amount
of said at least one dibenzoylmethane UV-A screening agent,
said at least one siliceous s-triazine compound having the
formula (I) below, or tautomeric form thereof:
! D }- (SJ.).········"····· 0 ., ~· ,,. f\l'J ... . \ i ( ... "'l---i;:i)'..t:
!
(Rt ."
the radicals R, which may be identical or different, are
each a linear or branched and optionally halogenated or
unsaturated C1--C30 alkyl radical, a C6--C12 aryl radical, a C1--C10
alkoxy radical or a trimethylsilyloxy group;
a= 0 to 3· - '
the group D is an s-triazine compound of formula (II)
below:
in which:
Xis -0- or -NR3-, wherein R3 is hydrogen or a C1--Cs
alkyl radical,
Riis a linear or branched and optionally unsaturated C1-
C20 alkyl radical optionally containing a silicon atom, a Cs--C20
cycloalkyl radical optionally substituted with 1 to 3 linear or
branched C1--C4 alkyl radicals, the group--(CH2CHR4-0)mRs or
the group --( CH2-CH( 0 H)-CH2-0-R6,
R4 is hydrogen or methyl; the group (C=O)XR1, which
may be in an ortho, meta or para position relative to the amino
group,
Rs is hydrogen or a C1--Cs alkyl radical,
R6 is hydrogen or a C4--Cs alkyl radical,
mis an integer ranging from 2 to 20,
n = 0 to 2,
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Application 11/987 ,212
the radicals R2, which may be identical or different, are
each a hydroxyl radical, a linear or branched C1---Cs alkyl
radical or a C1---Cs alkoxy radical, two adjacent radicals R2 on
the same aromatic nucleus together optionally forming an
alkylidenedioxy group in which the alkylidene group contains 1
or 2 carbon atoms,
A is a divalent radical selected from among methylene, -
[CHSi(CH3)3]-, ethylene and a group corresponding to one of
the formulae (III), (IV) and (V) below:
--(7\-C>-J~·CH --- (HI)
,.( ...... f .t' i
v .. l
-(2)--CH=CH- (IV)
in which:
Z is a linear or branched, saturated or unsaturated C 1---C 1 o
alkylene diradical optionally substituted with a hydroxyl radical
or oxygen and optionally containing an amino group, and
W is a hydrogen atom, a hydroxyl radical or a linear or
branched, saturated or unsaturated C1---Cs alkyl radical,
formulated into ( e) a topically applicable,
cosmetically/dermatologically acceptable support therefor.
The Issues
A. The Examiner rejected claims 34--66 under 35 U.S.C. § 103(a) as
obvious over Richard '742,2 Lorant,3 Candau,4 and Richard '3265 (Final Act.
5-11).
2 Richard et al., US 6,517,742 Bl, issued Feb. 11, 2003.
3 Lorant et al., US 6,846,479 B2, issued Jan. 25, 2005.
4 Candau, US 6,627,180 B2, issued Sept. 30, 2003.
5 Richard et al., US 6,429,326 Bl, issued Aug. 6, 2002.
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Application 11/987 ,212
B. The Examiner rejected claims 34---66 on the ground of nonstatutory
obviousness type-double patenting over claims 1, 6, and 9-13 of Richard
'742 in view of Lorant, Candau, and Richard '326 (Id. at 14).
C. The Examiner rejected claims 34---66 on the ground of nonstatutory
obviousness type-double patenting over claims 1-35 of US 11/987,2136 in
view of Richard '326 (Id. at 15).
A. 35 U.S.C. § 103(a) over Richard '742, Lorant, Candau, and
Richard '326
The Examiner issued a Restriction requiring election of species for
claim 1 and Appellants responded:
1. For the at least one dibenzoylmethane compound,
Applicants hereby elect 4-(tert-butyl)-4' -
methoxydibenzoylmethane (as recited in claim 11 ) ....
2. For the at least one 1,3,5 triazine compound, Applicants
hereby elect 2,4,6-tris[p-(2' -ethylhexyl-1 '-oxycarbonyl)anilino]
-1,3,5-triazine ...
3. For the at least one siliceous s-triazine compound, Applicants
hereby elect 2,4-bis(n-butyl 4' -diylaminobenzoate )-6-
{ [ 1,3,3,3-tetramethyl-1-[ (trimethylsilyl)oxy ]disiloxanyl]propyl-
3-ylamino }-s-triazine
(Resp. to Election of Species 4/19/2010 1-3). Accordingly, we limit our
consideration of this record to Appellants' elected species, and we take no
position respecting the patentability of Appellants' claimed composition as it
may relate to the remaining, non-elected species. Cf Ex parte Ohsaka, 2
USPQ2d 1460 (BPAI 1987).
6 Now issued as Candau et al., US 8,999,299 B2, Apr. 7, 2015.
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Application 11/987 ,212
The Examiner finds that Richard '742 teaches "sunscreen agents and
photo protective cosmetic compositions" that comprise the elected siliceous
triazine compound and that may comprise dibenzoylmethane compounds
and triazine derivatives (Final Act. 6-7). The Examiner acknowledges that
Richard '742 does not teach the elected triazine derivative, additional
organic UV sunscreen agents (Id. at 9) nor "the use of the siliceous s-triazine
for increasing the stability of 1,3,5-triazine" (Id. at 10).
The Examiner finds that Lorant teaches the elected triazine derivative
in sunscreen compositions (Final Act. 9), that Candau teaches "preferred
organic UV screening agents" include the elected triazine derivative (Id.)
and that Richard '326 teaches dibenzoylmethane derivatives including 4-tert
-butyl-4'-methoxydibenzoylmethane (Id. at 10). The Examiner finds that
Richard '326 teaches that "silane or organosilane compounds comprising
benzylidenecamphor functional groups are effective to photostabilize
dibenzoylmethane UV-screening compound" (Id. at 10).
The Examiner finds it obvious to "incorporate the s-triazine in order
to improve the stability of the UV screening compounds and to ensure the
effectiveness of the UV screening composition and would have had a
reasonable expectation of success since Richard ['326] already teaches the
combination of siliceous s-triazines with triazine derivatives" (Final Act.
11).
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that Richard '742, Lorant, Candau, and Richard '326 render claim 1
obvious?
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Application 11/987 ,212
(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Richard '7 42 teaches compounds that are "particularly suitable
for use as sunscreen agents in, or for the preparation of, cosmetic
compositions intended for the protection of the skin and/or hair against
ultraviolet radiation" (Richard '742, col. 2, 11. 50-61).
2. Richard '7 42 teaches "[p ]reparation of 2,4-bis( diisobutyl
4 'ylaminobenzalmalonate )-6-{[ 1, 1, 1,3-tetramethyl-1-[(trimethylsilyl)oxy]
disiloxanyl]propyl-3-ylamino}s-triazine" (Id. at col. 13, 11. 5-10).
3. Richard '742 teaches that the composition can "contain one or
more additional hydrophilic or lipophilic sunscreen agents which are active
in the UV-A and/ or UV-B (absorbers) . . . These additional screening agents
can in particular be selected from ... triazine derivatives, benzophenone
derivatives, dibenzoylmethane derivatives" (Id. at col. 8, 1. 61 to col. 9, 1. 2).
4. Lorant teaches that "the composition ... may comprise any
UV A and UVB screening agents that may be used in cosmetics. Examples
ofUVB-screening agents that may be mentioned include ... 2,4,6-tris[p-(2'-
ethylhexyl-1 '-oxycarbonyl)anilino ]-1,3,5-triazine sold by BASF under the
name Uvinul TISO" (Lorant, col. 6, 1. 58 to col. 7, 1. 11).
5. Richard '326 teaches "improving the photostability of at least
one dibenzoylmethane sunscreen compound with respect to UV radiation, by
intimately admixing therewith an effective photostabilizing amount of a
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Application 11/987 ,212
silane or organosiloxane compound bearing a benzylidenecamphor
substituent" (Richard '326, col. 1, 11. 22-27).
6. Richard '326 teaches that "[a]mong the dibenzoylmethane
derivatives suitable for formulation according to the present invention,
particularly exemplary are: ... 4-tert-butyl-4' -methoxydibenzoylmethane"
(Id. at col. col. 3, 11. 28--41).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSRint'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 5-11; FF 1---6) and agree that
claim 34 is rendered obvious by Richard '742, Lorant, Candau, and Richard
'326. We address Appellants' arguments below.
Prima Facie case
Appellants "submit that a prima facie case of obviousness against
Claims 34-66 due to Richard '742, Lorant, Candau, and Richard '326 has
not been made" (App. Br. 9).
We are not persuaded. Richard '742 teaches s-triazine compounds
including the elected compound for protection of skin against ultraviolet
radiation (FF 1-2) and teaches that the sunscreen composition may further
comprise triazine derivatives and dibenzoylmethane derivatives (FF 3).
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Lorant teaches triazine derivatives for protection from ultraviolet radiation
including the elected triazine compound, Uvinul Tl 50 (FF 4). Richard '326
teaches the dibenzoylmethane derivatives for sunscreens including the
elected dibenzoylmethane derivative (FF 6). Richard '326 provides a reason
to combine s-triazine compounds with the dibenzoylmethane derivatives
because the combination improves the photostability of dibenzoylmethane
derivatives (FF 5).
Combining these components in a single formula to improve
sunscreen efficacy is consistent with Wrigley, where the Federal Circuit
found a "strong case of obviousness based on the prior art references of
record. [The claim] recites a combination of elements that were all known
in the prior art, and all that was required to obtain that combination was to
substitute one well-known ... agent for another." Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). We agree
with the Examiner that because Richard '742 "teaches s-triazine derivatives
may be used in combination with dibenzoylmethane and triazine derivatives
... it is obvious to combine s-triazines, dibenzoylmethane and triazine
derivatives" (Ans. 11) for reasons including "provid[ing] an additional
photoprotective effect by physical blocking of ultraviolet radiation, or
[incorporating] any other ingredient commonly used in cosmetics, in
particular for the manufacture of anti-sun compositions" (Ans. 4).
Appellants contend that "one of ordinary skill in the art would take
from Richard '326 the teaching that it is the dibenzoylmethane derivatives
that are to be stabilized, and not the 1,3,5-trazine compound UV-B screening
agent, as presently claimed" (App. Br. 12).
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While we agree with Appellants that Richard '326 teaches improving
the photostability of dibenzoylmethane derivatives with compounds such as
s-triazines (FF 5), this teaching still provides a reason to combine these
components, even if that reason is different than the reason given by
Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.").
Appellants contend that "the Examiner has fallen into the tempting but
forbidden zone of hindsight" (App. Br. 12; cf Reply Br. 3).
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the "if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill," KSR, 550 U.S. at 417.
That is precisely the rejection at issue here, where Richard '742
teaches sunscreens comprising the elected s-triazine compound (FF 2) and
suggests that the composition may comprise "additional hydrophilic or
lipophilic sunscreen agents which are active in the UV-A and/or UV-B
(absorbers) . . . These additional screening agents can in particular be
selected from ... triazine derivatives ... dibenzoylmethane derivatives" (FF
3). Lorant teaches specific triazine derivatives useful in sunscreens
including the elected species (FF 4) and Richard '326 teaches specific
dibenzoylmethane derivatives useful in sunscreens including the elected
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Application 11/987 ,212
species (FF 6) and further that s-triazine compounds stabilize the
dibenzoylmethane derivatives (FF 5). Rather, the use of this combination of
ingredients for sunscreens is nothing "more than the predictable use of prior
art elements according to their established functions." KSR, 550 U.S. at 417.
Cf In re Gee, 614 F. App'x 495, 498 (Fed. Cir. 2015).
Secondary Considerations
Appellants contend that the "introduction of a siliceous s-triazine
substituted with two aminobenzoate or aminobenzamide groups of particular
formula (I) in a composition containing a dibenzoylmethane derivative ...
makes it possible to improve the photostability of the 1,3,5-trazine derivative
and thus increase the overall efficacy of these compositions" (App. Br. 10).
Appellants contend that "[a]dditional demonstration of this surprising and
unexpected result was provided in declaration form" (App. Br. 10-11).
We have reviewed the Chansavath 7 Declaration but do not find the
evidence persuasive of any unexpected results. Because we have limited our
consideration to the elected species, as discussed above, we do find that the
specific composition tested by the Chansavath Declaration is commensurate
in scope with the elected species, even though it is clearly not commensurate
in scope with the entire genus of compositions recited in claim 34.
However, we agree with the Examiner that the evidence in the
Chansavath Declaration for a single 5% concentration of the s-triazine
compound (i.e., compound (b )) is not commensurate in scope with the
claims, where claim 34 is open to any amount of the compound and claim 42
expressly teaches a range of "0.01 % to 20% by weight." Unexpected
7 Declaration ofKhonesavanh Chansavath, dated June 20, 2012.
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results must be "commensurate in scope with the degree of protection sought
by the claimed subject matter." In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005). In other words, the showing of unexpected results must be reviewed
to see if the results occur over the entire claimed range. In re Clemens, 622
F.2d 1029, 1036 (CCPA 1980). The Chansavath Declaration lacks any
evidence that the improved photostability result occurs over the entire range
recited in claim 42, much less the broader range encompassed by claim 34.
We recognize, but find unpersuasive, Appellants' contention that the
"data submitted in the Declaration for a single member at a single
concentration of the claimed siliceous s-triazine derivatives is sufficient for
one skilled in the art to ascertain a trend in the data" (Reply Br. 4 (emphasis
omitted)). A single point provides no evidence of a trend regarding the
concentrations necessary to ensure photostability of the triazine compounds,
nor does a single species of s-triazine provide evidence that the full scope of
the millions of s-triazine compounds of claim 34 will share the capacity to
photostabilize triazine derivatives.
We recognize, but find unpersuasive, Appellants' contention that they
"are not required to submit data at different concentrations because the
submitted data contained a concentration of photo-stabilizer that is 'an
effective amount,' as recited in the claims" (Reply Br. 4). The phrase
"effective amount" is not a talismanic statement that permits data from a
single point to be converted to an unexpected result for an undefined or
significantly broader range. See In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (concluding that evidence of secondary considerations was not
commensurate with the scope of the claims where that evidence related to a
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single compound and there was no adequate basis to conclude that other
compounds included within the scope of the claims would exhibit the same
behavior).
Appellants contend that
the Examiner has no factual basis whatsoever to determine what
is (or what is not) "a moderate improvement in the photo-
stability of the 1,3,5-tr[i]azine." By extension, the Examiner has
no factual basis whatsoever to assert that the results contained
in the Declaration with respect to an increase from 80% to 90%
of the percentage of residual 1,3,5-triazine (using 5% of an
aminobenzoate substituted siliceous s-triazine) is "not a
difference of kind."
(Reply Br. 4--5).
We are not persuaded. The Chansavath Declaration shows that the
addition of 5% of the elected s-triazine compound to a composition with
triazine and dibenzoylmethane results in an increase of 80% to 90% stability
for the triazine compound (Chansavath Deel. i-f 10). Harris found that a
"32--43% increase in stress-rupture life, however, does not represent a
'difference in kind' that is required to show unexpected results." In re
Harris, 409 F.3d at 1344. Here, where there is only a 10% increase in
triazine stability, demonstrated for a single concentration of s-triazine, we
agree with the Examiner that the evidence is not sufficient to demonstrate "a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art." In re Huang, 100 F.3d 135, 139
(Fed. Cir. 1996) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
In the instant case, the Richard '742 provides express reasons to
combine all three of the required ingredients (FF 1-3) and Richards '326
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teaches that the combination may result in improved photostability,
admittedly focused on stability of the dibenzoylmethane compound not the
triazine compound, but suggestive of improved photostability by
incorporating s-triazine. We therefore conclude that even if there is a slight
unexpected result that provides a secondary consideration, the showing is
insufficient to overcome the strong showing of obviousness in this case. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("[W]e
hold that even if Pfizer showed that amlodipine besylate exhibits
unexpectedly superior results, this secondary consideration does not
overcome the strong showing of obviousness in this case. Although
secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion.").
B. Obviousness-type Double Patenting
Appellants do not provide separate, substantive arguments for the
double patenting rejections that rely upon the same prior art references. To
the extent that Appellants rely upon arguments raised in the obviousness
rejection, we remain unpersuaded for the reasons given above. We therefore
affirm the obviousness-type double patenting rejections for the reasons given
above regarding the obviousness rejection.
SUMMARY
In summary, we affirm the rejection of claim 34 under 35 U.S.C.
§ 103(a) as obvious over Richard '742, Lorant, Candau, and Richard '326.
Claims 35---66 fall with claim 34.
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We affirm the rejection of claims 34--66 on the ground of nonstatutory
obviousness type-double patenting over claims 1, 6, and 9-13 of Richard
'742 in view of Lorant, Candau, and Richard '326.
We affirm the rejection of claims 34--66 on the ground of nonstatutory
obviousness type-double patenting over claims 1-35 of US 11/987,213 in
view of Richard '326.
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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