Ex Parte Hakozaki et al

Patent Trial and Appeal Board

Aug 2, 2016

13299051 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/299,051 11/17/2011
27752 7590 08/04/2016
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.
11944 8944
EXAMINER
BREDEFELD, RACHAEL EV A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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
Appeal2014-001118
Application 13/299 ,051
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.
1 Appellants identify the Real Party in Interest as "The Procter & Gamble
Company" (App. Br. 1 ).
2 This Appeal is related to Appeal 2014-001117 (Application 13/299,042),
decision affirming the obviousness rejection of record entered (August 2,
2016).
Appeal 2014-001118
Application 13/299,051
STATEMENT OF THE CASE
Appellants disclose "methods for improving the appearance of facial
pores" (Spec. 1: 9--10).
Claim 14 is representative and reproduced below:
14. A method of improving the appearance of facial
pores, the method comprising the steps of:
a. identifying a region of facial pores on a facial skin
surface in need of improvement; and
b. applying a composition comprising an effective
amount of hexyldecanol to the facial pores 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 pores.
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 Evelyne 3 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?
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).
2
Appeal 2014-001118
Application 13/299,051
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. 4: 14--15).
FF 2. Appellants define "[t]he term 'facial pores' when used in reference
to human facial skin [as] refer[ing] generally to facial pores visible to the
naked eye, although the term facial pores may also include pores that are not
visible to the naked eye" (Spec. 4: 16-18).
FF 3. Evelyne "relates to a cosmetic method for reducing the appearance
and I or the visibility of pores of the skin, comprising topically applying to
the skin a composition comprising at least one C-glycoside derivative"
(Evelyne 1; id. at 20; see Final Rej. 5).
FF 4. 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: 24--25 ("[t]he term 'facial skin'
... refers to one or more of forehead, periorbital, cheek, perioral, chin, and
nose skin surfaces")).
FF 5. 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 the
composition ... include[, inter alia,] 2-hexyl decanol" (Evelyne 8-9; see
Final Rej. 5; cf Spec. 5: 10-12 (Appellants' "composition may comprise
from 1 % to 10% ... hexyldecanol by weight of the total composition")).
FF 6. Evelyne discloses the topical application of [Evelyne's] composition
"2 times a day for 6 months" (Evelyne 21; Final Rej. 5; cf Spec. 12: 9-12
(Appellants disclose the topical administration of their composition to skin
3
Appeal 2014-001118
Application 13/299,051
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
pores at least once a day during a treatment period of at least about 4 weeks
or at least about 8 weeks")).
FF 7. 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).
FF 8. 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 9. Examiner finds that the combination of Evelyne alone or in
combination with Baldo fails to suggest the application of "hexyldecanol to
[] facial pores region at a level of 1 to about 50 uL/cm2" (Final Rej. 9).
FF 10. 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).
4
Appeal 2014-001118
Application 13/299,051
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 facial pores for a period
of time sufficient for the hexyldecanol to improve the appearance of the
facial pores" (App. Br. 3; cf FF 3---6). Appellants' claimed invention does
not exclude a C-glycoside derivative (see Appellants' claim 14; see Reply
Br. 3). 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 Appellants' claimed method for improving the
appearance of facial pores" (App. Br. 4).
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 3-8). Further, to the extent that Appellants may
5
Appeal 2014-001118
Application 13/299,051
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 facial pores")). 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 the a person of
ordinary skill in this art would not have achieved an improvement in the
appearance of facial pores through the application of a composition,
suggested by Evelyne alone or in combination with Baldo, to facial skin
(App. Br. 5; see Reply Br. 2).
Appellants' Specification discloses an amount of hexyldecanol, which
is effective in the composition required by their claimed method (see FF 5).
Evelyne' s composition comprises an amount of hexyldecanol that overlaps
Appellants' effective amount ofhexyldecanol (FF 5). 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
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 ofhexyldecanol is,
and therefore cannot reasonably be expected to successfully provide a
composition comprising an effective amount of hexyldecanol"); see Reply
Br. 3; cf FF 5).
6
Appeal 2014-001118
Application 13/299,051
On this record, Examiner established that Evelyne suggests a method
that falls within the scope of Appellants' claimed method (FF 3---6). Baldo
also suggests a method falling within the scope of Appellants' claimed
invention (FF 7-8). Baldo further suggests that compounds, such as
hexyldecanol, are routinely used in cosmetic compositions, such as those
suggested by Evelyne (FF 8). 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. 5---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. ("there is no specific guidance as to why
hexyldecanol would be preferred over the other, presumably equivalent, 2-
alkylalkanols [disclosed in Evelyne and Baldo] or why these known
conventional uses would prompt one skilled in the art to include
hexyldecanol in a composition at an effective amount"); see Reply Br. 3--4).
In addition, 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.").
7
Appeal 2014-001118
Application 13/299,051
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. 3; cf FF 6).
For the foregoing reasons, and notwithstanding Appellants' contention
to the contrary, we find that Examiner established 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 equally applicable to claim 30" (App. Br. 8). 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, as set forth in Appellants' claim 30 (see App. Br. 8).
See In 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
8
Appeal 2014-001118
Application 13/299,051
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; see FF 10). 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.
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.
9
Appeal 2014-001118
Application 13/299,051
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)(l )(iv).
AFFIRMED
10