Ex Parte Chevalier et al

Patent Trial and Appeal Board

Feb 19, 2019

14218055 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/218,055 03/18/2014
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Suite 6400
HOUSTON, TX 77002
02/21/2019
FIRST NAMED INVENTOR
Cyril Chevalier
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.
085507-536335 9136
EXAMINER
FISHER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
02/21/2019 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYRIL CHEV ALIER, VANESSA DUFFET, and
CAROLE GUIRAMAND 1
Appeal2018-002157
Application 14/218,055
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims to compositions for protecting skin or hair from
ultraviolet radiation which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellant identifies the Real Party in Interest as L 'Oreal. Appeal Br. 2.
2 We have considered and herein refer to the Specification of Mar. 18, 2014
("Spec."); Final Office Action of Oct. 20, 2016 ("Final Act."); Appeal Brief
of June 15, 2017 ("Br."); Examiner's Answer of Oct. 27, 2017 ("Ans."); and
Reply Brief of Dec. 19, 2017 ("Reply Br.").
Appeal2018-002157
Application 14/218,055
We AFFIRM.
STATEMENT OF THE CASE
It is desirable to screen out both UV-A and UV-B radiation to prevent
damage to the skin. Spec. 1. While many photoprotective compositions
have been developed, some compositions, especially those which
incorporate large amounts of organic UV-screening agents, exhibit "a tacky
effect, a greasy effect, a shiny effect and/or the presence of a residual film
which are unpleasant for the comfort of the user." Spec. 3. The
Specification describes
anti-sun products that combine good performances as regards
the SPF and PPD indices, good physicochemical stability over
time and with respect to temperature and also good cosmetic
properties after application without a tacky effect, without a
greasy effect, without a shiny effect and without the presence of
a residual film ("bare skin" effect) .
Spec. 3.
Claims 1, 2, 4, 6, 8-10, 12-19, and 21 are on appeal. 3 Claim 1 is the
sole independent claim and reads as follows:
1. A composition for protecting the skin and/or hair
against ultraviolet radiation comprising, in a cosmetically
acceptable support containing at least one aqueous phase, at
least:
(a) a photoprotective system capable of screening out UV
radiation:
(b) 0.1 to 10% unmodified maize starch by weight
relative to the total weight of the final composition; and
( c) 0.1 to 10% polyamide particles by weight relative to
the total weight of the final composition.
3 Claims 11, 20, and 22 are also pending in the application, but have been
withdrawn from consideration. Final Act. 2.
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Application 14/218,055
The claims stand rejected by the Examiner as follows:
Claims 1, 2, 4, 6, 9, 10, and 12-14 under 35 U.S.C. § 103(a) as
unpatentable over Martino4 in view ofYamada5 as evidenced by Kobo. 6
Claims 1, 2, 4, 6, 8-10, 12-19, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Martino in view of Yamada as evidenced by Kobo in
further view of Nicoll. 7
Claims 1, 2, 4, 6, 8-10, 12-19, and 21 have been rejected under 35
U.S.C. § 103(a) as unpatentable over Koopmann8 in view of Martino.
DISCUSSION
Martino Combined with Yamada
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Martino combined with Yamada.
The Examiner finds that Martino teaches an aqueous sunscreen
composition which comprises uncooked, granular starch. Final Act. 4. The
Examiner finds that Martino teaches that the sunscreen composition can also
contain UV scattering or absorbing materials. Id. The Examiner goes on to
finds that the starch used in Martino can be unmodified. Id.
4 Martino et al., US 5,256,404, issued Oct. 26, 1993 ("Martino").
5 Yamada et al., US 2003/0064037 Al, published Apr. 3, 2003
("Yamada").
6 Kobo Products Inc., Product Specifications SP-500 (March 2013)
("Kobo").
7 Nicoll et al., US 5,188,831, issued Feb. 23, 1993 ("Nicoll").
8 Koopmann et al., WO 2004/045570 Al, published June 3, 2004
("Koopmann"). Citations are to the English translation of record.
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Application 14/218,055
The Examiner finds that Yamada teaches a water-in-oil emulsified
sunscreen which contains polyamide powders which act as oil absorbing
agents. Final Act. 4--5. The Examiner concludes
it would have been obvious to a person of ordinary skill in the
art at the time that the invention was made to add 0.1 % to
about 70% by weight of polyamide resin powders (polyamide
particles), such as nylon powder SP500 taught by Yamada et al.
to the composition of Martino et al. One would be motivated to
do so with a reasonable expectation of success to add oil
absorbing properties to the composition as well as to provide a
composition that provides effective UV protection, while also
providing a fresh, cool, non-greasy feeling to the skin as taught
by Yamada et al. Nylon powder SP500 is Nylon-12
(polyamide-12 or PA-12) as evidenced by Koba [sic]. Martino
et al. teaches that the composition includes from 0.5 to 30% by
weight of starch (see column 2, lines 47-51). Further, MPEP
2144.05 states that "[i]n the case where the claimed ranges
'overlap or lie inside ranges disclosed by the prior art' a prima
facie case of obviousness exists" quoting In re Wertheim, 541
F.2d 257, 191 USPQ 90 (CCPA 1976).
Final Act. 5.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Final Act. 4--5. The following findings are included for emphasis and
reference purposes.
FPL Martino teaches the preparation of "A sunscreen composition
comprising a natural based uncooked, granular starch material as the
sunscreen agent incorporated in a pharmaceutically acceptable aqueous
based starch carrier." Martino Abstract.
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Application 14/218,055
FF2. Martino teaches "The starch sunscreen agents of this invention
may be any uncooked, granular starch either native or modified. Such
starches include those derived from any plant source including com, potato,
rice, wheat, tapioca, waxy maize and high amylose com. The starch may be
modified or unmodified." Martino col. 2, 11. 22-27.
FF3. Martino teaches
The sunscreen compositions of this invention contains a
pharmaceutically acceptable starch sunscreen carrier. The term
"pharmaceutically acceptable starch sunscreen carrier" is
intended to include any vehicle or medium capable of
incorporating the starch sunscreen agent in a manner permitting
uniform topical application and also is dermatologically
innocuous and cosmetically acceptable. The carrier used in this
invention will be water-based and may include oils, fats, waxes,
synthetic polymers, and emulsifiers. Preferably the carrier will
be an aqueous emulsion, i.e., either water-in-oil or oil-in-water.
Martino col. 2, 11. 52-63
FF4. Martino teaches
Additional materials which may be used in this
composition include UV scattering powders or absorbing
materials, e.g., titanium dioxide, oxybenzone, sulisobenzone,
menthyl anthranilate, aminobenzoic acid, 2- ethoxy p-methoxy
cinnamate, digalloyl trioleate, 2- ethylhexyl salicylate, glyceryl
aninobenzoate and antioxidants such as BHT, BHA, propyl
gallate, ascorbic and citric acid, as well as chelators such as
disodium EDT A.
Martino col. 4, 11. 32--40.
FF5. Martino teaches "The amount of starch used will be an effective
Uv [sic] absorbing amount, more particularly the sunscreen compositions
contain from about 0.5 to 30%, preferably from about 2 to 15% by weight of
starch, based on the weight of the composition." Martino col. 2, 11. 47-51,
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Application 14/218,055
FF6. Example 2 of Martino lists a sunscreen formulation comprising
10% by weight unmodified com starch. Martino col. 5, 11. 44---60.
FF7. Martino teaches that the sunscreen formulations in Example 2,
which includes both modified and unmodified starches, "gave significant
skin protection over the control formulation which contained no sunscreen
agent." Martino col. 5, 11. 63---66.
FF8. Yamada teaches the preparation of a sunscreen composition
comprising a water-in-oil emulsion and a non-thickening oil absorbing
powder. Yamada ,r,r 9-15.
FF9. Yamada teaches that the water-in-oil emulsions "satisfy the
need for a sunscreen composition which provides effective UV protection
benefit, while leaving a fresh, cool, non-greasy feeling to the skin, even for
consumers having oily skin." Yamada ,r 16.
FFlO. Yamada teaches that a preferred non-thickening oil absorbing
powder is nylon powder. Yamada ,r 39.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
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Application 14/218,055
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Under the proper legal standard, a reference will teach away
when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the
applicant's invention. A statement that a particular
combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
( citations omitted).
"The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains." In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979).
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Martino combined with Yamada. Appellants
have not produced evidence showing, or persuasively argued, that the
Examiner's determinations on obviousness are incorrect. Only those
arguments made by Appellants in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015). We have identified claim 1 as representative;
therefore, all claims fall with claim 1. We address Appellants' arguments
below.
Appellants contend that the Examiner engaged in impermissible use
of hindsight in making the rejection. Appeal Br. 8. Appellants argue that
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Application 14/218,055
the Examiner improperly used Appellants' disclosure as a blueprint to
reconstruct the claims in a piecemeal fashion form the prior art. Id.
We have considered Appellants' argument and are unpersuaded. As
the Examiner points out, the rejection is based on the specific teachings of
the references. Ans. 9-10. We agree with the Examiner that the rejection
"takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made, and does not include
knowledge gleaned only from the Appellant's disclosure" and is therefore
proper. In re McLaughlin, 443 F.2d at 1395.
Appellants next argue that one skilled in the art would not have been
motivated to use unmodified starch and a polyamide powder together as the
references teach that these elements are not preferred. Appeal Br. 8-9.
Appellants contend that Martino encourages the use of starches other than
unmodified maze starch noting that in the examples, sunscreens containing
modified starch exhibited a higher SPF than ones using unmodified starch.
Appeal Br. 8. With respect to Yamada, Appellants argue that Yamada only
exemplifies the use of silicone treated silica and boron nitrile and refers to
these materials as highly preferred. Appeal Br. 9. Appellants contend that
these teachings in the references would lead one skilled in the art away from
using unmodified starch and polyamide powder. Id. Appellants' argument
are unpersuasive.
Martino specifically teaches that the starch can be either modified or
unmodified. FF2. While we agree with Appellants that the data in Example
2 shows that sunscreens with modified starch exhibited a higher SPF than
sunscreens containing unmodified starch, that teachings does not rise to a
teaching away that would have deterred one skilled in the art from using
unmodified starch in a sunscreen. Example 2 of Martino demonstrates that
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Application 14/218,055
compositions containing unmodified starch still performed better than
compositions without any starch. FF7. Thus, sunscreens with unmodified
starch described by Martino produce the objective of the applicant's
invention and do not teach away from the invention. Syntex (U.S.A.), 407
F.3d at 1380.
With respect to Yamada, while the examples only use silicone treated
silica and boron nitrile, in the same paragraph that teaches a preference for
these compounds, Yamada also lists nylon powder, a polyamide powder, as
a highly preferred non-thickening oil absorbing powder. FFlO. We do not
agree with Appellants that the teaching of Yamada would lead one skilled in
the art away from using nylon powder.
Appellants contend that there is evidence of record showing
unexpected results sufficient to overcome the Examiner's prima facie case of
obviousness. Appeal Br. 10. Appellants argue that the Declaration of Mr.
Chevalier9 and the experiment reported therein demonstrate that the claimed
invention produce surprisingly superior results than the prior art. Appeal Br.
10-13, Deel. ,r,r 3-10. In the experiment reported in the Declaration,
Appellants compared a sunscreen comprising 2% unmodified starch and
2.5% nylon 12 powder with a prior art composition comprising 2% modified
starch and 2.5% nylon 12 powder.
We have considered Appellants' arguments as well as Mr. Chevalier's
Declaration and are unpersuaded. The evidence advanced by Appellants is
9 Second Declaration of William Feuer Pursuant to 37 C.F.R. 1.132, filed
Jan. 19, 2017 ("Deel."). While the title of the Declaration states that it was
made by William Feuer, the body of the document and the signature reveal
that it was made by Cyril Chevalier. Deel. 1 and 6.
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Application 14/218,055
not commensurate with the scope of the claims. 10 In re Dill, 604 F.2d at
13 61. Claim 1 recited above recites a range of starch of from O .1 to 10% by
weight and a range of polyamide particles of from 0.1 to 10% by weight.
The experiment reported in the Declaration only reports results for one
specific percentage of starch and polyamide. When unexpected results are
proffered by an appellant to rebut a prima facie case of obviousness, the
appellant must "provide[] an adequate basis to support the conclusion that
other embodiments falling within the claim will behave in the same manner"
in order to "establish that the evidence is commensurate with [the] scope of
the claims." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). One data
point is insufficient to "to ascertain a trend in the exemplified data which
would allow [ one having ordinary skill in the art] to reasonably extend the
probative value thereof." In re Kollman, 595 F.2d 48, 56 (CCP A 1979).
Appellants have not shown that similar results would be achieved for other
percentages of starch and polyamide falling with the ranges recited in the
claims.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Martino combined with Yamada.
Claims 2, 4, 6, 9, 19, and 12-14 have not been argued separately and
therefore fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Martino Combined with Yamada and Nicoll
10 We need not address the issue of whether the experiment compares the
invention with the closest prior art.
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Application 14/218,055
While Appellants have argued this rejection separately, Appellants'
only argument is that Nicoll does not remedy the deficiencies of Martino,
Yamada, and Kobo. Appeal Br. 14.
As discussed above, we do not find the teachings of Martino, Yamada,
and Kobo to be deficient. Therefore, we affirm this rejection.
Koopmann Combined with Martino
Appellants' sole argument with respect to this rejection is that
Koopmann does not moot the teachings of Martino regarding a preference
for modified starches. Appeal Br. 14. This argument is unpersuasive. As
discussed above, even if Martino were to teach a preference for modified
starches, Martino teaches that unmodified starches can be used in the
practice of the invention disclosed in Martino. We have found that the
Martino does not teach away from using unmodified starch. That
Koopmann does not moot the teaching of Martino is immaterial and does not
support patentability. Therefore, we affirm this rejection.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
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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