Ex Parte Dussaud et al

Board of Patent Appeals and Interferences

Jun 20, 2012

11487533 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANNE DUSSAUD and ANTHONY CECE
__________

Appeal 2011-012931
Application 11/487,533
Technology Center 1600
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of a
claim directed to a method of selecting compositions having enhanced
hydration value. The Patent Examiner rejected the claim for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The claim on appeal reads as follows:
1. Method of selecting compositions having enhanced hydration value
comprising:
a) selecting at least one skin site to which a control composition
without tested moisturizing component(s) is applied and one skin site
on the same skin surface to which a composition with tested
moisturizing component(s) applied;
b) prior to performing the wash protocol and applying control and
non-control compositions, establishing a baseline skin hydration value
through measurement of control Cc0 and non-control site Cnc0 or sites;
c) applying said control composition and non-control composition
to skin sites followed by rinsing and drying;
d) recording multiple skin hydration values on the site or sites on
which the control and non-control compositions have been applied for
about 5 to 30 minutes;
e) determining for each site a post-wash hydration value by
subtracting a measured average baseline skin conductivity measured
prior to wash on the same skin site from measured value of skin
conductivity after the wash protocol or (Cct-Cc0) and (Cnct-Cnc0) where
Cct and Cnct are measured conductivities at a given time; and
f) determining a hydration enhancement value by calculating the
mean change from baseline difference between the applied product
and the control averaged across all subjects tested (1 or more) and all
time points between about 5 to 20; and
(g) selecting compositions having enhancement hydration value
>27 after determining hydration value in step (f).

The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Glover,1 Zhang,2 Cochrane,3 and “Mean.”4

1 David A. Glover et al., US 2005/0169879 A1, Aug. 4, 2005.
2 Shuliang L. Zhang et al., Near infrared imaging for measuring and
visualizing skin hydration. A comparison with visual assessment and
electrical methods, 10 J. BIOMEDICAL OPTICS 1-7 (2005).
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ISSUE
The Issue
The Examiner’s position is that Glover taught compositions exhibiting
long lasting moisturizing properties and a testing protocol. (Ans. 5.)
According to the Examiner, Glover’s testing protocol differed from
Appellants’ by not explicitly including rinsing and drying, and by not
selecting compositions by reference to “enhancement hydration value >27.”
(Ans. 6.)
Zhang taught skin hydration measurements, and that “[s]tudy
clinicians performed a single application of liquid cleanser to each test site,
rinsed and pat dry.” (Id.) The Examiner concluded it would have been
obvious to add these rinsing and drying steps to Glover’s. (Id.) The
Examiner found that (i) Glover taught subtracting the initial value from the
final value; (ii) Cochrane evidenced that “subtracting baseline measurement
is well known in order to determine the change from baseline;” and (iii) the
“Mean” article explained the formula and uses for an arithmetic mean. (Id.
at 7.) The Examiner concluded:
It would be obvious to one of ordinary skill in the art at the time
the invention was made to subtract the initial value from the final
value of the tested sample and to subtract the baseline data to which

3 Meta-analysis of continuous data, The Cochrane Collaboration (2002),
downloaded from
www.archive.org/web/20040515005851/http://www.cochrane-
net.org/openlearning/H… on March 15, 2010.
4 Mean, WIKIPEDIA, THE FREE ENCYCLOPEDIA, downloaded from
web.archive.org/web/20040222211824/http://en.wikipedia.org/wi… on
March 21, 2010.
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the tested is being compared based on the teachings of [Glover] and
Cochrane. It would be obvious to one of ordinary skill in the art to
find the average across all subjects tested and all time points as [the
Mean article] teaches summing all observations divided by the
number of observations. Subtracting baseline data and subtracting the
initial test point of the tested sample as well as finding the mean of the
all data (population and time data) are commonly used statistical
measurements to interpret data as is taught by [Glover], Cochrane and
[the Mean article], and therefore would be prima facie obvious to use
on the data collected by [Glover] and Zhang.

(Id.) The Examiner set out further findings correlating the claimed steps to
the prior art steps. (Id. at 7-8.)
Appellants contend:
Glover discloses only a preferred "moisture index” of skin of at least
35%. Knowledge of such index has nothing whatsoever to do with
measurement of hydration value or recognition that, to have skin of
enhanced hydration value, it is necessary to select specifically
compositions of measured value >27. While Glover may be concerned
in a broad, general sense with moisture or hydration, it fails to
disclose the specific method taught by applicants to recognize and
know how to achieve enhanced hydration.
In short, Glover simply does not teach or suggest our specific
method for achieving enhanced hydration. Indeed, Glover could not
possibly disclose our specific method because Glover does not even
recognize that the result of following our method leads to
compositions, when selected, which have enhanced hydration.
Applicants would note that the secondary references do nothing
to remedy the fundamental deficiency of Glover reference.

(App. Br. 9-10.)
The Examiner responds that “as stated in the instant specification, the
enhancement value of greater than 27 is not a critical value (instant
specification, page 10, line 25-30). The art teaches the desirability and
selection for compositions with higher hydration values.” (Ans. 10.)
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Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the prior art. (See Ans. 5-10.)
2. The Specification states:
While applicants have defined on HEV value of greater than about 27
as significant, it should be understood that any value might in theory
be considered significant depending on what is considered “sufficient”
hydration for the defined audience. Thus, hydration values greater
than about 15 (e.g., control with no additive has HEV of 15),
preferably greater than about 20 and more preferably greater than
about 27 might be used.

(Spec. 10, ll. 28-31.)
3. The Specification states:
The hydration value can be measured, for example, using electrical
capacitance and conductance of the skin as indicators of the hydration.
These in turn can be measured using equipment such as Skicon® 200
hygrometers. Other equipment to measure hydration may include
Corneometer® CM420 hydrometer and Servo Med EPI®
evaporimeters. Besides conventional corneometry, additional methods
for measuring hydration may include nuclear magnetic resonance
spectroscopy (NMR-5) and transient thermal transfer (TTT). In any
event, methods for obtaining hydration values are well known and
well understood by those skilled in the art.

(Id. at 11, ll. 13-21.)
4. Glover’s disclosure related to “topical cosmetic compositions that
exhibit long lasting moisturizing properties, as well as to methods of
using these compositions.” (Glover, 1, ¶ 1.)
5. According to Glover, its composition
imparts long-lasting moisturization to the skin as measured by a
moisture index. Several analytical methods and/or devices well known
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to those of ordinary skill in the art may be used to measure the
moisture index. One such device is the Novameter DPM 9003 (Nova
Corporation, Portsmouth, N.H.).

(Id. at 4, ¶ 49.)
6. Glover stated:
The Novameter DPM 9003 is a dermatological laboratory
instrument commonly used in the cosmetics industry. In using the
DPM 9003, a remote, uniform-pressure sensor probe is employed.
Readings are taken by lacing the sensor probe on the surface of the
skin. The device displays DPM values (a moisture index), which
represent relative values of skin characteristics based on the capacitive
reactance of the skin.

(Id. at 4, ¶ 50.)
7. Glover stated:
The values of the DPM 9003 device range between a low of 90
to a high of 999. Lower values generally represent dry skin while
higher values represent hydrated skin. It should be appreciated that the
conversion of Novameter values into percentage increases in
moisturization is well known in the cosmetic industry, and is
calculated based on the readings obtained from the Novameter DPM
9003 according to the following equation: percentage increase=[(final
value-initial value)/initial value ]x100.
(Id. at 4, ¶ 51.)
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8. Glover stated:
In a preferred embodiment, the moisture index of skin treated
with the compositions of the present invention about 10 minutes after
application is at least about 35% higher, more preferably at least about
45% higher, and most preferably at least about 50% higher, relative to
untreated skin. More preferably, the moisture index of skin treated
with the compositions of the present invention about 20 minutes after
application is at least about 30% higher, more preferably at least about
40%, and most preferably at least about 45%, relative to untreated
skin.

(Id. at 4-5, ¶ 52.)

Principles of Law
“[T]he discovery of an optimum value of a variable in a known
process is usually obvious.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters
for prior art result effective variables “flows from the ‘normal desire of
scientists or artisans to improve upon what is already generally known.’” Id.
(quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). “[W]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).

Analysis
We agree with the Examiner that claim 1 defines a testing protocol
differing in ways that would have been obvious from Glover’s and Zhang’s
testing protocols. Appellants disclose that skin hydration values can be
measured using electrical capacitance and conductance of the skin (FF3), but
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the evidence is that Glover used a similar kind of capacitance device for
hydration measurements (FF 6). We therefore reject Appellants’ contention
that Glover’s skin moisture index has nothing whatsoever to do with
measurement of hydration value.
We find the Examiner reasonably concluded, based on Appellants’
disclosure, that an enhancement hydration value greater than 27 has no
critical significance. The Specification explains that “any value might in
theory be considered significant depending on what is considered
“sufficient” hydration for the defined audience.” (FF 2.) Glover’s teachings
evidence that hydration values were known as the kind of result-effective-
variable it would have been obvious to optimize. (See FF 8.) See Pfizer,
480 F.3d at 1368.
Finally, while Appellants express their measurements in different
units than Glover used, Appellants have not established that there is a
material difference between the value recited in claim 1 and the hydration
levels in the prior art. Glover indicated that conversion of electrical
measurements into percentage increases in moisturization was well known in
the art. (FF 7.) The rejection properly shifted the burden to Appellants to
show that the difference in calculating units would not have been obvious,
and the hydration level Appellants’ step f selects for is patentably distinct
from the hydration level selected for in Glover’s testing protocol.

SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Glover, Zhang, Cochrane, and “Mean.”
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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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