Ex Parte Hakozaki et al

Patent Trial and Appeal Board

Jul 29, 2016

13299042 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/299,042 11/17/2011
27752 7590 08/02/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Tomohiro HAKOZAKI
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.
11943 9142
EXAMINER
BREDEFELD, RACHAEL EV A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMOHIRO HAKOZAKI and LEO TIMOTHY LAUGHLIN II
Appeal2014-001117
Application 13/299,042
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
TINA E. HULSE, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal2 under 35 U.S.C. § 134(a) involves claims 2-16 and 18-
32 (Final Rej. 2). Examiner entered rejections under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants disclose "methods for improving the appearance of facial
texture" (Spec. 1: 9-10).
1 Appellants identify the Real Party in Interest as "The Procter & Gamble
Company" (App. Br. 1 ).
2 This Appeal is related to Appeal 2014-001118 (Application 13/299,051).
Appeal2014-001117
Application 13/299,042
Claim 14 is representative and reproduced below:
14. A method of improving the appearance of facial
texture, the method comprising the steps of:
a. identifying a region of textured facial skin on a facial
skin surface in need of improvement; and
b. applying a composition comprising an effective
amount of hexyldecanol to the textured facial skin on the facial
skin surface, wherein the composition is applied for a period of
time sufficient for hexyldecanol to improve the appearance of
the facial texture.
Claims 2-12, 14--16, 18-28, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Evelyne3 alone or in
combination with Baldo.4
Claims 2-16 and 18-32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Evelyne and Loden, 5 with or without
Baldo.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellants define "[t]he term 'effective amount' as ... an amount of
a compound or composition sufficient to significantly induce a positive
benefit" (Spec. 3: 17-18).
3 Evelyne et al., FR 2913598, published Sept. 19, 2008 (English Language
Translation relied upon by Examiner).
4 Baldo et al., US 6,486,147 B2, issued Nov. 26, 2002.
5 DRY SKIN and MOISTURIZERS, Chemistry and Function, 223-224
(Marie Loden and Howard I. Maibach eds., CRC Press) (2000).
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Application 13/299,042
FF 2. Appellants define "[t]he term 'texture' or 'surface texture' [as] ...
includ[ing] both macro-texture and micro-texture" (Spec. 3: 19-20).
Appellants define "[t]he term 'macro-texture' [as] facial skin surface
features (e.g., depressions) typically referred to as fine lines and wrinkles
that can be viewed with the naked human eye" (id. at 4: 1-2). Appellants
define "[t]he term 'micro-texture' [as] small, irregular facial features (e.g.,
depressions) that are smaller in size than macro-texture as used herein" (id.
at 11. 5---6). Appellants' disclosure makes clear that the terms "macro-
texture" and "micro-texture" "generally excludes pores and other generally
circular shapes" (id. at 11. 4 and 6-8).
FF 3. Evelyne recognizes that "[f]acial skin can be marked by the presence
of[, inter alia,] wrinkles and fine lines" (Evelyne 1 ).
FF 4. Evelyne's "invention[] relates to a cosmetic process for treating the
skin for reducing the appearance and I or the visibility of pores [and] to
improve the texture of the skin, particularly tighten and I or refine the grain
of the skin, comprising [topically] applying to the facial skin[] a
composition comprising at least one C-glycoside derivative" (Evelyne 1 and
20; see Final Rej. 5).
FF 5. Evelyne discloses that "the composition is applied to the facial area,
especially the T-zone (forehead, nose, cheeks, chin), especially cheeks and
nose" (Evelyne 20; Final Rej. 6; cf Spec. 4: 19-20 ("[t]he term 'facial skin'
... refers to one or more of forehead, periorbital, cheek, perioral, chin, and
nose skin surfaces")).
FF 6. Evelyne discloses a "water-in-oil" or "oil-in water" composition,
wherein the "oily phase of the emulsion may range from 5 to 80% by weight
... relative to the total weight of the composition," and the "[ o ]ils used in
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Application 13/299,042
the composition ... include[, inter alia,] 2-hexyl decanol" (Evelyne 8-9; see
Final Rej. 5; cf Spec. 5: 4--5 (Appellants' "composition may comprise from
1 % to 10% ... hexyldecanol by weight of the total composition")).
FF 7. Evelyne discloses the topical application of [Evelyne' s] composition
"2 times a day for 6 months" (Evelyne 21; Final Rej. 5---6; cf Spec. 11: 32 -
12: 5 (Appellants disclose the topical administration of their composition to
skin for a period that "extend[s] over multiple months (i.e., 3-12 months) or
multiple years. In one embodiment the composition is applied to the facial
texture at least once a day during a treatment period of at least about 4 weeks
or at least about 8 weeks")).
FF 8. Baldo discloses a method "for treating wrinkles and fine lines ...
comprising applying [Baldo's] composition ... to skin" (Baldo 2: 37--45).
FF 9. Baldo discloses a composition comprising "(A) at least one steroid
selected from the group consisting of DHEA, a biological precursor of
DHEA, a chemical derivative of DHEA, and a metabolic derivative of
DHEA and (B) at least one 2-alkylalkanol comprising," such as
dodecylhexadecanol (Baldo 2: 26-33 and 5: 1--4; Final Rej. 7-8).
FF 10. Baldo discloses that "2-alkylalkanols[, such as dodecylhexadecanol,]
are not very irritating or volatile[,] have good lubricating properties," "have
very good stability with respect to high temperature oxidation," and "are
used in a great many applications and more specifically as emollients and
conditioning agents in highly varied cosmetic compositions" (Final Rej. 8;
Baldo 2: 2-12).
FF 11. Examiner finds that the combination of Evelyne alone or in
combination with Baldo fails to suggest the application of "hexyldecanol to
the facial skin region at a level of 1 to about 50 uL/cm2" (Final Rej. 9).
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Application 13/299,042
FF 12. Examiner finds that Loden discloses the application of "body lotions
and creams to the skin with 25% and 40% glycerin twice daily in an amount
of 2-3 uL/cm2" (Final Rej. 9, citing Loden 223).
ANALYSIS
The rejection over Evelyne alone or in combination with Baldo:
Claim 14:
Based on Evelyne alone, Examiner concludes that, at the time
Appellants' invention was made, it would have been prima facie obvious to
"incorporate 2-hexyldecanol in [Evelyne' s] cosmetic composition" (Final
Rej. 6). In the alternative, Examiner concludes that, at the time Appellants'
invention was made, it would have been prima facie obvious to combine
Evelyne with Baldo, "which provides further motivation for using
hexyldecanol in the cosmetic compositions of [Evelyne]" (Final Rej. 7; see
also id at 8).
We recognize, but are not persuaded by, Appellants' contention that
Evelyne "does not teach or suggest applying a topical composition
comprising an effective amount of hexyldecanol to textured facial skin for a
period of time sufficient for the hexyldecanol to improve the appearance of
the facial texture" (App. Br. 4; cf FF 3-7). Appellants' claimed invention
does not exclude a C-glycoside derivative (see Appellants' claim 14; see
Reply Br. 2). Therefore, we are not persuaded by Appellants' contention
that Evelyne "discloses the use of a [composition comprising a] C-glycoside
derivative to reduce the visibility of pores" (App. Br. 4). For the foregoing
reasons we are not persuaded by Appellants' contention that Evelyne "does
not rise to the level needed to teach or suggest ... how to reproduce
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Application 13/299,042
Appellants' claimed method for improving the appearance of textured facial
skin" (id.).
We recognize, but are not persuaded by, Appellants' contention that
Evelyne "does not ... teach[] or suggest[] [] every known use of
hexyldecanol" (id.). Notwithstanding Appellants' contention to the contrary,
Evelyne alone, or in combination with Baldo, suggests the method of
Appellants' claim 14 (FF 3-10). Further, to the extent that Appellants may
have discovered a new benefit of an old process, e.g., the topical application
of a composition comprising hexyldecanol to facial skin for a period of time
as suggested by Evelyne alone or in combination with Baldo (see id.); such a
discovery cannot render the old process patentable (see App. Br. 4 ("the
present application discloses the previously unknown benefit of an
improvement in the appearance of textured facial skin")). See In re Huai-
Hung Kao, 639 F.3d 1057, 1071 (Fed. Cir. 2011); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990). For the foregoing reasons, we are not
persuaded by Appellants' assertion of an "unexpected benefit" or that a
person of ordinary skill in this art would not have achieved an improvement
in the appearance of textured facial skin through the application of a
composition, suggested by Evelyne alone or in combination with Baldo, to
facial skin (App. Br. 5; Reply Br. 2).
Appellants' Specification discloses an amount of hexyldecanol, which
is effective in the composition required by their claimed method (see FF 6).
Evelyne's composition comprising an amount of hexyldecanol overlaps
Appellants' effective amount of hexyldecanol (FF 6). Overlapping ranges
support a prima facie case of obviousness. See In re Geisler, 116 F.3d 1465,
1468 (Fed. Cir. 1997). For the foregoing reasons, we are not persuaded by
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Appellants' contention that the properties of Appellants' claimed invention
differ "in kind" from the properties of the composition suggested by Evelyne
with or without Baldo (App. Br. 5; see also id. at 7; id. at 8 ("the skilled
artisan would not recognize what an effective amount of hexyldecanol is,
and therefore cannot reasonably be expected to successfully provide a
composition comprising an effective amount of hexyldecanol"); see Reply
Br. 4; cf FF 6).
On this record, Examiner established that Evelyne suggests a method
that falls within the scope of Appellants' claimed method (FF 3-7). Baldo
also suggests a method falling within the scope of Appellants' claimed
invention (FF 8-10). Baldo further suggests that compounds, such as
hexyldecanol, are routinely used in cosmetic compositions, such as those
suggested by Evelyne (FF 10). Therefore, absent evidence to the contrary,
we are not persuaded by Appellants' contention that the evidence of record
is not sufficient to establish that Evelyne alone, or in combination with
Baldo, does not "necessarily" make obvious Appellants' claimed invention
(see App. Br. 6). In this regard, we find no persuasive evidence or argument
that any composition falling within the scope of the prior art would not
exhibit the same effect as is required by Appellants' claimed method (see
App. Br. 7 ("there is no guidance in [Evelyne] that would prompt one of
ordinary skill in the art to select hexyldecanol from the multitude of oils/fats
listed in [Evelyne] and include it at an effective amount, as recited in
[Appellants'] claim 14"); id. at 7-8 ("there is no specific guidance as to why
hexyldecanol would be preferred over the other, presumably equivalent, 2-
alkylalkanols [disclosed in Baldo] or why these known conventional uses
would prompt one skilled in the art to include hexyldecanol in a composition
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Application 13/299,042
at an effective amount"); see Reply Br. 3). Nevertheless, we find that the
"[ d]isclos[ ure of] a multitude of effective combinations does not render any
particular formulation less obvious." Merck & Co. Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence.").
Appellants failed to provide persuasive evidence or argument to
establish that the period of time the composition is applied to facial skin, as
set forth in Appellants' claim 14, differs from the period of time suggested
by Evelyne alone, or in combination with Baldo (see Reply Br. 2-3; cf FF
7).
For the foregoing reasons, and notwithstanding Appellants' contention
to the contrary, we find that Examiner establish a prima facie case of
obviousness, which Appellants failed to rebut on this record (see generally
Reply Br. 4 ).
Claim 30:
Appellants contend that their arguments with regard to Appellants'
claim 14 "are also applicable to claim 30" (App. Br. 6). For the foregoing
reasons, we are not persuaded by Appellants' contentions as they relate to
claim 30. Appellants fail to provide persuasive evidence or argument to
support a conclusion that the method suggested by Evelyne alone or in
combination with Baldo fails to suggest a method that comprising the
application of a composition comprising an effective amount of a material
that regulates Hyaluronic Acid production to a region of textured facial skin,
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Application 13/299,042
as set forth in Appellants' claim 30 (see App. Br. 6). See Jn re Huai-Hung
Kao, 639 F.3d at 1071; In re Woodruff, 919 F.2d at 1578.
The rejection over the combination of Evelyne and Loden, with or without
Baldo:
Based on the combination of Evelyne, Baldo, and Loden, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to apply hexyldecanol in the composition
suggested by the combination of Evelyne and Baldo "at a level of 1 to about
50 uL/cm2," because Loden suggests the application of an "emollient or
moisturizer" to skin in an "amount [that falls] within [Appellants' claimed]
range" (Final Rej. 9). For the reasons set forth above, we are not persuaded
by Appellants' contentions regarding Evelyne alone or in combination with
Baldo. Therefore, having found no deficiency in Evelyne alone or in
combination with Baldo, we are not persuaded by Appellants' contention
that "assuming, for the sake of argument, [] Loden [sic] contains the
disclosure for which it is cited, the Office still has not shown how Loden
[sic] overcomes the failings of [Evelyne] and Baldo" (App. Br. 9).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 14 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Evelyne alone or in combination with Baldo is affirmed.
Claims 2-12, 15, and 16 are not separately argued and fall with claim 14.
Claims 18-28, 31, and 32 are not separately argued and fall with claim 30
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The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Evelyne and Loden, with or without Baldo is
affirmed. Claims 3-16 and 18-32 are not separately argued and fall with
claim 2.
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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