Ex Parte Lindemann et al

Patent Trial and Appeal Board

Nov 15, 2017

11079855 (P.T.A.B. Nov. 15, 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.
11/079,855 03/14/2005 Wiebke Lindemann 3321-P30888 8273
13897 7590 ]
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WIEBKE LINDEMANN, ANETTE BURGER,
and STEFAN SCHEEDE1
Appeal 2015-007913
Application 11/079,855
Technology Center 1600
Before TONI R. SCHEINER, SUSAN L.C. MITCHELL, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the final rejection of
claims 54—84, directed to a cosmetic or dermatological preparation. The
claims have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Beiersdorf AG of
Hamburg, Germany. Appeal Br. 3.
Appeal 2015-007913
Application 11/079,855
BACKGROUND
According to the Specification, “[t]he skin is subjected to a large
number of physical, chemical and biological stresses” which can “lead[] to a
temporary or long-term reddening of the skin,” e.g., rosacea. Spec. 1:17—19,
25. “Skin reddening in general and rosacea in particular are a considerable
physical and psychological worry for those affected” and are “perceived by
observers in most cases as being less visually attractive.” Id. at 2:17—19.
The Specification discloses “decorative (concealing)” cosmetic or
dermatological preparations “which significantly improve the visual
appearance of reddened areas of skin, in particular facial skin” {id. at 2:1—2,
3:10, 23—24), such that “the red areas of skin are no longer perceived as such
but instead have a healthy natural appearance” {id. at 2:26—28). According
to the Specification, this is “achieved through the use of a cosmetic or
dermatological preparation comprising a) one or more green pigments, b)
one or more white pigments, and c) one or more UV photoprotective filters.”
Id. at 3:1—6. In addition, the preparation “preferably comprises
licochalcone A.” Id. at 8:7—8.
STATEMENT OF THE CASE
Claims 54—84 are on appeal. Claims 54 and 77 are independent.
Claims 54 and 56 are representative and read as follows:
54. A cosmetic or dermatological preparation, wherein the
preparation comprises (a) one or more green pigments; (b) one
or more white pigments; and (c) one or more UV
photoprotective filters which are different from (b); and
wherein the preparation improves a visual appearance of
reddened skin when applied to reddened skin.
56. The preparation of claim 54, wherein the preparation
conceals reddened skin.
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Application 11/079,855
Claims 54—84 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Dieck,2 Ishiwatari,3 Elfenthal,4 and Elliot.5
DISCUSSION
Dieck
Dieck discloses soothing, licochalcone A-containing “cosmetic or
dermatological formulations that care for the skin—e.g., after sun-bathing—
in a targeted manner and reduce the after reactions of the skin to the action
of UV radiation,” including “reddening of the skin.” Dieck H 4, 18, 34, 41,
82. The formulations “can be used in particular to treat and care for the skin
. . . after sunbathing and as a make-up product in decorative cosmetics.” Id.
1 84. Accordingly, Dieck’s “cosmetic and dermatological formulations . . .
can contain cosmetic auxiliary agents as are normally used in such
preparations, e.g., preservatives, bactericides, perfumes, substances to
prevent foaming, dyes, [and] pigments that have a coloring effect.” Id.
1103.
Although “the main purpose of [the cosmetic and dermatological
formulations] is not protection from sunlight,” Dieck discloses that “usually
UV A or UV B filter substances are incorporated, e.g., in day creams or
makeup products.” Id. 1130. “[T]he total amount of [UV] filter substances
2 Tom Dieck et al., US Patent Application Publication 2005/0037042 Al,
published February 17, 2005 (asserted to be the English language equivalent
of WO 03/101414 Al, published December 11, 2003) (the Examiner and
Appellants refer to this reference as “Dieck,” we will follow suit for
consistency).
3 Ishiwatari et al., U.S. Patent No. 6,074,652, issued June 13, 2000.
4 Elfenthal et al., U.S. Patent No. 5,451,252, issued September 19, 1995.
5 Elliot et al., U.S. Patent No. 5,283,062, issued February 1, 1994.
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is, e.g., 0.1% by weight to 30% by weight, preferably 0.5 to 20% by weight,
in particular 1.0 to 15.0% by weight, based on the total weight of the
preparations.” Id. 1138. Dieck discloses many suitable water-soluble UV
filter substances, including 3-benzylidenecamphor derivatives, and oil-
soluble UV filter substances, including (2-ethyl-hexyl) 4-methoxycinnamate.
Id. 170—179. In addition, “the formulations can optionally also contain
one or more organic or inorganic pigments as UV filter substances” (id.
1131), and “[preferred inorganic pigments are metal oxides . . . , in
particular oxides of titanium (TiCk), [and] zinc (ZnO)” (id. 1132).
Elfenthal
Elfenthal teaches that pigmentary and subpigmentary forms of
titanium dioxide were known in the art, and subpigmentary (or transparent)
titanium dioxide is used as a UV filter in varying compositions, including
cosmetics:
The term “subpigmentary titanium dioxide” refers to
titanium dioxide having a particle size in the range from about
10 to about 100 nm. Titanium dioxide subpigmentary particles
have little or no light scattering properties because of their size,
and are made by processes very different from those used to
manufacture pigmentary titanium dioxide. Subpigmentary
titanium dioxide ... is used as a transparent UV absorber, e.g.,
in paints, glazes, plastics and cosmetics.
Id. at 1:20-29.
On the other hand, “[tjitanium dioxide pigments, having a physical
minimum size greater than 100 nm, can be characterized by their scattering
power for visible light” and “[i]t has been long known to use titanium
dioxide as a white pigment.” Id. at 1:38-41.
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Ishiwatari
Ishiwatari discloses semi-transparent, water-resistant oil-in-water
emulsified compositions which can be formulated as creams, “[s]unscreen
cosmetics,” or “sunscreen foundations,” containing UV protective agents.
Ishiwatari 22:46—64. Ishiwatari further discloses that its cosmetic
compositions can contain inorganic pigments of various colors, including
red, brown, yellow, black, violet, green, and blue. Id. at 30:49—63.
Inorganic green pigments include chromium oxide and chromium hydroxide.
Id. at 30:60-61.
Elliott
Elliott discloses powdered color cosmetic compositions containing
various pigments, including titanium dioxide, chromium oxide green, and
ultramarine blue, which “can range from 1 to 30% depending upon the
shade.” Elliott 5:11—25.
Discussion
The Examiner finds that Dieck discloses cosmetic or dermatological
preparations for combating the after reactions of the skin to the action of UV
radiation, including reddening, where the compositions comprise, among
other ingredients: combinations of UV filters, including titanium dioxide
pigment and 2-ethyl hexyl 4-methoxycinnamate, in a range of percentages;
an aqueous extract of Radix Glycyrrhizae in a range of percentages;
licochalcone A in a range of percentages; and pigments for a coloring effect.
Ans. 2-3 (citing Dieck 4—19, 41, 74, 81, 82, 103, 130-132, 138, 175).
The Examiner cites Elfenthal as evidence that titanium dioxide having a
particle size greater than 100 nm is used as a white pigment in many
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products, while titanium dioxide having a size range from 10—100 nm is
used as a transparent UV filter in cosmetics. Ans. 3.
The Examiner acknowledges that Dieck does not teach “a green
pigment or percentages thereof.” Ans. 3. However, the Examiner notes that
Dieck discloses that its formulations can be decorative cosmetics and, as
such, can contain conventional cosmetic ingredients, including “pigments
that have a coloring effect.” Id.; Dieck 1103. The Examiner cites
Ishiwatari and Elliot as evidence that green pigments like chromium oxide
and chromium hydroxide are commonly used in decorative cosmetics in the
ranges required by the claims. Ans. 5.
The Examiner concludes that “it would have been obvious to utilize
the chromium pigments of Ishiwatari et al. and the specific chromium
pigments and percentages thereof of Elliott et al., in the formulations of
Dieck et al.,” because all three of the references are directed to cosmetic
formulations, and “Dieck et al. teach the incorporation of color pigments,
and Ishiwatari et al. teach that cosmetics may include green pigments
including chromium oxide and chromium hydroxide and Elliott et al. teach
that pigments including chromium oxide (C177289) and chromium
hydroxide (C177288) may be present in cosmetic formulations from 1-30%.”
Ans. 5.
Appellants contend that all of the independent claims on appeal
“recite that the cosmetic or dermatological preparation set forth therein
improves the visual appearance of reddened skin when applied to reddened
skin” (Appeal Br. 7), and the Specification “makes it entirely clear to one of
ordinary skill in the art that the presence of pigments in the claimed
preparation plays an important role in the improvement in the visual
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appearance of reddened skin to which a corresponding composition is
applied (e.g., does not merely serve the purpose of imparting a green color to
a corresponding product).” Reply Br. 2. Appellants contend that Dieck is
directed to preparations for inflamed, sensitive skin, and there is nothing in
Dieck “that teaches or suggests that the preparations disclosed therein should
contain anything that improves the visual appearance of skin and in
particular, of reddened skin, let alone a combination of green and white
pigments.” Reply Br. 2—3. Appellants contend “[t]he (at best) marginal
importance of the ‘pigments that have a coloring effect’ for the compositions
of DIECK is reflected by the fact that none of the altogether 20 compositions
which are exemplified in DIECK (all of them W/O or O/W creams or O/W
emulsions) appears to contain any coloring pigment, let alone a green
pigment.” Id. at 3.
Appellants further contend that Ishiwatari “lists hundreds of examples
of corresponding optional ingredients of more than thirty different types”
{id. at 4), and “all of [Ishiwatari’s] exemplified emulsions containing a
coloring pigment... are intended for use in decorative cosmetics
[foundation or mascara)... in which the presence of colored pigments is not
unusual” {id. at 5). Thus, Appellants argue, “the Examiner has not
established that Ishiwatari would have given one of ordinary skill in the art a
reason to add a white pigment and a green pigment to Dieck’s composition,
“let alone in an amount that is sufficient to improve the visual appearance of
reddened skin.” Id. at 4. Similarly, Appellants contend Elliot “is directed to
an eve shadow, i.e., a product for purely decorative purposes which clearly
has nothing in common with the compositions of DIECK and . . . would not
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be considered by one of ordinary skill in the art wishing to improve or at
least modify the composition of DIECK.” Id. at 5.
Having considered the respective positions of Appellants and the
Examiner, we agree with the Examiner that it would have been obvious for
one of ordinary skill in the art to formulate a cosmetic preparation
“comprising” a white pigment, a green pigment, and a UV protective filter
as claimed. As noted above, Dieck’s formulations can contain water-soluble
UV filters (Dieck || 170-179), as well as “one or more organic or inorganic
pigments as UV filter substances” (Dieck 1131). Dieck teaches that
“[preferred inorganic pigments are . . . oxides of titanium (TiCE), [and] zinc
(ZnO)” (id. 1132), and Elfenthal provides evidence that pigmentary titanium
dioxide is white (Elfenthal 1:40-41). Moreover, Dieck teaches that its
soothing, UV-protective formulations can be used as “a make-up product in
decorative cosmetics” (Dieck | 84), and as such, “can contain cosmetic
auxiliary agents as are normally used” in cosmetics, including “pigments
that have a coloring effect” (Dieck 1103).
The only ingredient missing from Dieck’s suggested cosmetic
formulations vis-a-vis the claimed “cosmetic or dermatological preparation”
is a “green pigment” as the conventional “pigment that [has] a coloring
effect” in the decorative cosmetic. We find the Examiner has established
that pigments, including the green pigments taught by Ishiwatari and Elliot,
are conventional coloring ingredients in decorative cosmetics. We agree
with the Examiner that in light of these disclosures, it would have been
obvious for one of ordinary skill in the art to include a green pigment in
Dieck’s decorative cosmetic that also includes a UV protective filter and a
pigmentary titanium dioxide, to provide a coloring effect. “As long as some
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[reason,] motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992).
Finally, whether the resultant decorative cosmetic formulations
improve the appearance of reddened skin as required by the claims is a
subjective determination, and we conclude that Ishiwatari suggests that
including a green pigment in a cosmetic composition would be a
subjectively desirable color, whatever the underlying skin color. Thus,
inclusion of a green pigment would inherently “improve” the appearance of
the skin even where reddened, to those who subjectively desire a green
tinted decorative cosmetic composition.
With respect to dependent claims 56, 69, and 79, which recite that the
preparation “conceals reddened skin,” we agree with Appellants that “it can
be determined completely objectively whether or not reddened skin has been
concealed.” However, as noted by the Examiner, the “references teach[] up
to 30% pigments present which is above the claimed percentage for
concealment.” Ans. 15. Accordingly, we are not persuaded that claims 56,
69, and 79 are nonobvious over the art either.
SUMMARY
The Examiner has established that the claimed invention would have
been obvious over the prior art relied on.
Accordingly, the rejection of claims 54—84 under 35 U.S.C. § 103(a)
as unpatentable over Dieck, Ishiwatari, Elfenthal, and Elliot is affirmed.
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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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