Ex Parte Davies et al

Patent Trial and Appeal Board

Sep 25, 2017

12878219 (P.T.A.B. Sep. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/878,219 09/09/2010 Michael B. Davies 057349/492044 4603
826 7590 09/27/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
GREENE, IVAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL B. DAVIES, NORMAN L. KENNEDY,
and KERRY L. THOMPSON
Appeal 2017-0035631
Application 12/878,219
Technology Center 1600
Before RICHARD M. LEBOVITZ, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves a claim to a personal care composition consisting
of an aqueous emulsion. The Examiner rejected the claim under 35 U.S.C.
§ 103 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). The § 103
rejections are affirmed.
1 The Appeal Brief (“Br. 3”) (June 17, 2016) lists Pinova Inc. of Brunswick,
GA as the real-party-in-interest.
Appeal 2017-003563
Application 12/878,219
STATEMENT OF THE CASE
Claims 1, 5—7, 9, and 10 are pending and stand rejected by the
Examiner as follows:
1. Claim 1,5, and 9 under 35 U.S.C. § 103(a) as obvious in view of
US 4,810,490, iss. Mar. 7, 1989 (“Dixon et al.”), US 5,733,531, iss. Mar. 31,
1998 (“Mitchnick et al.”), and USP 2008/0300322 Al, publ. Dec. 4, 2008
(“Shukla et al.”). Final. Act. 2-3.
2. Claims 6, 7, and 10 under 35 U.S.C. § 103(a) as obvious in view of
Dixon, Mitchnick, Shukla, and USP 2007/0014745 Al, publ. Jan. 18 2007
(“Amaud et al.”). Final Act. 7.
Appellants did not argue the rejections nor the claims separately.
Appellants relied upon the same argument for Rejection 1 as for Rejection 2.
Br. 7. Accordingly, we select claim 1 as representative for the purposes of
deciding this appeal. Claims 5—7, 9, and 10 fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). Claim 1 is reproduced below (formatting altered for
clarity):
1. A personal care composition consisting of an aqueous
emulsion, the aqueous emulsion consisting of:
about 0.1 % to about 10.0% by weight of a
hydrogenated rosin ester;
a sunscreen agent;
water; and
optionally an effective amount of one selected
from the group consisting of emollients, opacifiers,
fragrances, surfactants, preservatives, and combinations
thereof,
wherein the personal care composition adheres to
skin to form a substantially continuous hydrophobic film.
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Application 12/878,219
REJECTIONS
The Examiner found that Dixon describes a water-proof sunscreen
comprising a hydrogenated resin, in the same amounts that are recited in
claim 1, and an ultraviolet sunscreen agent, also as required by the claims.
Final Act. 3. The difference between the claimed personal care aqueous
emulsion and Dixon’s composition is that Dixon’s is not an aqueous
emulsion comprising water as required by claim 1. Id. 4. However, the
Examiner found that Mitchnick describes forming an aqueous emulsion
comprising a sunscreen agent and a matrix material, where the matrix
material can be a resin. Id. 5. The Examiner found that Mitchnick teaches
that water-based sunscreens are ‘“preferred over oil-based sunscreens by
virtue of their lower cost and certain aesthetic considerations, e.g., less
greasiness. Encapsulation of a sunscreen agent in an inert wax capsule
converts an oil-soluble sunscreen agent into a water-dispersible agent.’” Id.
(quoting from Mitchnick, col. 18, lines 40-45). Based on this teaching, the
Examiner determined it would have been obvious to produce an aqueous
emulsion, as claimed, utilizing Dixon’s hydrogenated rosin ester because of
the preference for water-based sunscreens as taught by Mitchnick. Id. 6.
Amaud was further cited by the Examiner to meet the limitation of
clam 10 which requires a polyterpene resin. Id. 7—8.
Appellants contend that the claims exclude the presence of organic
solvents because of the term “consisting of.” Br. 5. We agree with
Appellants’ interpretation.
[I]n patent lexicography . . . [it] is equally well understood . . .
that “consisting of’ is closed-ended and conveys limitation and
exclusion. SeeNorian Corp. v. Stryker Corp., 363 F.3d 1321
(Fed. Cir. 2004) (“‘consisting of is a term of patent convention
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Application 12/878,219
meaning that the claimed invention contains only what is
expressly set forth in the claim ... [however] it does not limit
aspects unrelated to the invention”); In re Gray, 19 C.C.P.A.
745, 53 F.2d 520 (CCPA 1931) (the use of the claim term
“consists” is limited to the claim's enumerated alloy metals
without other elements, unlike the term “comprising” which
permits the inclusion of other metals than those claimed”).
CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007).
Appellants’ further contend that Mitchnick’s composition includes
organic solvent, and thus, in combination with Dixon, would not result in
the claimed aqueous emulsion. Br. 5. To support this argument, Appellants
cite disclosure from Mitchnick. This disclosure is reproduced below, along
with the complete passage in which it appears. Underlining indicates the
specific disclosure relied upon by Appellants.
The sunscreen component also is distinguishable over
prior art sunscreen components in that it is prepared according
to a manufacture process that does not require the use of an
intermediate organic solvent, and thus both the manufacture
process and the sunscreen product are completely free of such
solvents. That is, a water-dispersible sunscreen component is
provided according to the invention without such highly toxic
and thus undesirable chemicals. The level of organic solvents
present in the water-dispersible sunscreen components
described herein are substantially lower than those found in the
prior art sunscreen components that are made using solvent-
extraction methods of manufacture, where toxicity is a concern.
Applicants’ encapsulated sunscreen components have
exceedingly low, i.e„ undetectable levels, of organic solvents
and are therefore referred to in the present specification as
“solvent-free”.
Thus, an important ad vantage of the encapsulated
sunscreen components of the invention is found in their safety
and ease of manufacture. The sunscreen components achieved
via solvent-free methods of manufacture are also less toxic than
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Application 12/878,219
solvent-synthesized components, an important consideration for
agents applied to the skin. This solvent-free material is thus
suitable for application to human skin since the solvent content
is present at undetectable levels and thus is not likely to cause
dangerous effects in humans.
Mitchnick, col. 4,1. 47—col. 5,1. 5.
We are not persuaded by Appellants’ argument. As shown by the
passage cited above, Mitchnick teaches avoiding organic solvents because
they are “highly toxic and thus undesirable chemicals,” and accomplishes
this by not requiring “the use of an intermediate organic solvents.” Id.
While it is true that the passage cited by Appellants discloses “substantially
lower” and “exceedingly lower” amounts of solvent, Mitchnick at the same
time refers to “undetectable levels” of the organic solvent in its
compositions. One ordinarily skill in the art would understand that
manufacturing methods utilized to make compositions for applying to the
skin have technical limitations that could make it impractical to eliminate
every single organic solvent molecule that is present. Thus, because of these
technical limitations, a composition might contain a molecule of solvent, and
thus not technically be completely free of it, yet such amounts are so
miniscule that they are “undetectable.” Moreover, such acknowledgement
by Mitchnick that exceedingly low but undetectable levels of solvent may be
present does not mean that its sunblock compositions contain solvent, even
in miniscule undetectable amountsl it is simply a recognition that they
might.
The complete passage above
of Mitchnick’s goal of producing sunscreen agents that lack organic
solvents. Specifically, Mitchnick discloses in the passage cited by
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Appellants that “[t]he sunscreen component also is distinguishable over prior
art sunscreen components in that it is prepared according to a manufacture
process that does not require the use of an intermediate organic solvent, and
thus both the manufacture process and the sunscreen product are completely
free of such solvents.” Mitchnick, col, 4,11. 47—52, Mitchnick also teaches
that the “sunscreen components [are] achieved via solvent-free methods of
manufacture.” Id. col. 4, 65—66. If the process of manufacturing the
component does not use a solvent, then the product would logically not
contain such solvent, even in the prophetic miniscule undetectable amounts.
Thus, when Mitchnick’s disclosure is read in its entirety, it is evident that
Mitchnick’s sunscreens are manufactured by processes that do not utilize
organic solvents, and that Mitchnick actively avoids such solvents. There is
no teaching in Mitchnick to include an organic sol vent. Accordingly, the
requirement of claim 1 of a composition that consists of the sunscreen agent,
resin, and water — and which exclude organic solvents — is met. We affirm
the rejection of obviousness.
Summary
For the foregoing reasons, the obviousness rejections 1 and 2 of claim
1 and dependent claims 5—7, 9, and 10 are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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