Ex Parte Mohammadi et al

Patent Trial and Appeal Board

Aug 23, 2016

11571312 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111571,312 11120/2007 Fatemeh Mohammadi
23487 7590 08/24/2016
THE ESTEE LAUDER COS, INC
155 PINELA WN ROAD
STE 345 S
MELVILLE, NY 11747
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.
02.37 2466
EXAMINER
VENKAT,JYOTHSNAA
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
08/24/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FATEMEH MOHAMMAD!,
JAMES T. HARRISON, and LAURIE ALUSKEWICZ 1
Appeal2014-001272
Application 11/571,312
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
TINA E. HULSE, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a
composition for topical application to the skin. The Examiner rejected the
claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Appellants state that the "real party in interest is ELC Management LLC.,
successor in title to E-L Management Corp., the assignee of entire
. " B 1 mterest. r. .
Appeal2014-001272
Application 11/571,312
STATEMENT OF THE CASE
Appellants' invention is directed to "cosmetic compositions and
methods for causing a sensory cooling sensation." Spec. 1. The
Specification discloses:
It has been surprisingly found that oil-soluble
hydrophobic ingredients having a heat of fusion that is higher
than 100 JI g with an upper limit within a cosmetically
acceptable range to avoid a negative [ e ]ffect on the human skin,
and a melting point that is substantially similar to human body
temperature, and that remain in their crystalline state in a
formulation, cause a cooling sensation when applied to the skin.
Id. at 3.
The Specification states that a preferred oil soluble hydrophobic
ingredient that provides the aforementioned cooling sensation is
stearyl heptanoate, which in the preferred embodiment "is used
in an amount of 8% to 70%, preferably from 15% to 60% and most
preferably from 30% to 40%." Id.
Claim 1 is representative and reads as follows (Br. 7):
1. A composition for topical application to the skin comprising:
8% to 70% by weight of the composition of at least one
unsolubilized oil-soluble hydrophobic cooling
ingredient having a heat of fusion above 100 Jig
and a melting point substantially at body
temperature;
a polymeric emulsifier in which the cooling ingredient is
not soluble, wherein the amount of the polymeric
emulsifier is 10 to 60% by weight of the
composition; and
a cosmetically acceptable carrier that does not solubilize
the cooling ingredient.
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Application 11/571,312
The sole rejection before us for review is the Examiner's rejection of
claims 1-3, 11, and 12, under 35 U.S.C. § 103(a) for obviousness over
Lavaud, 2 Livoreil, 3 and Kung. 4 Final Action 2-3.
OBVIOUSNESS
Appellants do not argue the rejected claims separately. We select
claim 1 as representative of the rejected claims. 37 C.F.R. § 41.37(c)(iv).
The Examiner cited Lavaud as teaching cosmetic compositions that
include stearyl heptanoate, a cosmetic carrier (water), and emulsifiers. Final
Action 2. The Examiner found that Lavaud's compositions differed from
those recited in claim 1 in that Lavaud did not describe using the claimed
emulsifier, and used stearyl heptanoate at a concentration less than claim l's
concentration range (8% to 70% by weight) for the cooling ingredient. Id. at
2-3.
The Examiner cited Livoreil as evidence that stearyl heptanoate was
known to be useful in the fatty phase of cosmetic compositions at a
concentration of 0.2 to 98.9% by weight, a range overlapping that recited in
claim 1. Id. at 3. The Examiner cited Kung as evidence that the emulsifier
recited in claim 1, at a concentration range overlapping that recited in claim
1, was known in the art to be useful in cosmetic compositions for enhancing
the penetration of hydrophilic and hydrophobic agents. Id.
Based on the references' teachings, the Examiner concluded that an
ordinary artisan would have considered it obvious to modify Lavaud's
compositions by changing the amount of stearyl heptanoate, as "taught by
2 U.S. Patent No. 5,914, 117 (issued June 22, 1999).
3 U.S. Patent Appl. Pub. No. 2003/0091520 Al (published May 15, 2003).
4 EP 0 998 914 Al (published May 10, 2000).
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Application 11/571,312
[Livoreil] and add polymeric emulsifier taught by [Kung] with the
reasonable expectation of success that the polymeric emulsifier will enhance
the penetration of stearyl heptanoate (hydrophobic agent) into the skin and
also provide low irritation to the skin taught by [Kung]." Id.
As stated in Jn re Oetiker, 977F.2d1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
primafacie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Appellants' arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner's prima facie case as to representative
claim 1.
Appellants do not contend that the Examiner mischaracterized the
teachings of the cited references as compared to the limitations of claim 1.
Nor do Appellants contest the Examiner's conclusion that it would have
been obvious to include Kung's emulsifier in Lavaud's composition. See Br.
6 (declining to comment on the Examiner's rationale for including Kung' s
emulsifier in Lavaud's composition). Rather, Appellants contend, because
Livoreil's teachings are limited to solid products, the Examiner applied the
teachings of Livoreil out of context in asserting that an ordinary artisan
would have been motivated by Livoreil to modify the non-solid
compositions described in Lavaud. Br. 4--5.
On the other hand, Appellants contend, an ordinary artisan starting
with the solid compositions of Lavaud would not have modified those
compositions according to the teachings of Livoreil, "because the product is
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Application 11/571,312
already solid. In total, a person of ordinary skill in the art has no reason to
increase the level of stearyl heptanoate beyond the 5% taught in [Lavaud]."
Id. at 5.
We are not persuaded. Lavaud discloses using a combination of
hollow particles and esters of aliphatic acids (Lavaud, 1 :66-2:9) to impart
improved rheology to cosmetic gel and foam compositions (id. at 1 :5-12,
1 :41--49). Lavaud discloses that stearyl heptanoate is among the preferred
esters (id. at 2:30-32), and "is preferably present in weight concentrations
(referred to the whole of the composition) ranging approximately from 0.1 to
5%, and more preferably ranging approximately from 1.5 to 3%" (id. at
4:58---62). As Appellants acknowledge (Br. 4--5), in addition to non-solid
cosmetic creams, gels, and foams (Lavaud, 5 :42--48), Lavaud discloses solid
compositions that contain stearyl heptanoate (id. at 7:56-8:12 (deodorant
stick)).
Livoreil, in tum, discloses using a combination of a "molecular
organo-gelator" and a "weakly polar oil" to impart "a thixotropic character"
to cosmetic compositions. Livoreil, abstract. Livoreil discloses that stearyl
heptanoate is among suitable weakly polar oils (id. at i-f 138) and may be
present in its compositions "at a concentration of from 1 to 80% by weight,
and more preferably from 5 to 60% by weight with respect to the weight of
the fatty phase" (id. at i-f 141 ), with the fatty phase of the composition
constituting "from 0.2 to 98.9% by weight, preferably from 10 to 80% by
weight, and more preferably from 5 to 60% by weight of the total weight of
the composition" (id. at i-f 142). As the Examiner discusses (Ans. 5-6),
Livoreil explains that the combination of organo-gelator and weakly polar
oil imparts improved rheological properties to its compositions, resulting in
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Application 11/571,312
improved cosmetic characteristics when applied to the skin (Livoreil ilil 20-
27).
As Appellants contend (Br. 4--5), Livoreil discloses cosmetic
compositions that may be in solid form (Livoreil i-f 163 (describing a
"personal hygiene composition, especially in the form of a deodorant or
make-up removal product in the form of a stick")). As the Examiner points
out, however (Ans. 4--5, 7-8), Livoreil discloses also that its compositions
may be non-solid formulations, such as a "care cream for the skin" (Livoreil
i-f 163) or a "foundation cream" (id. at i-f 169).
Appellants, therefore, do not persuade us (see Br. 4--5) that an
ordinary artisan would have considered the advantageous rheological
properties, taught by Livoreil as being imparted by its organo-gelator/stearyl
heptanoate combination, to be applicable only to solid formulations. To the
contrary, given Livoreil's teachings that its organo-gelator/stearyl
heptanoate combination imparts desirable rheological properties to cosmetic
compositions which may be either solid or non-solid, we agree with the
Examiner that an ordinary artisan would have had sufficient reason to
include those ingredients in Lavaud's compositions, both solid and non-
solid, at the concentrations taught in Livoreil, thus resulting in a cosmetic
composition containing an amount of stearyl heptanoate undisputedly
encompassed by claim 1.
As the Examiner notes (Ans. 8), claim l's use of the transitional
phrase "comprising" encompasses the inclusion of Livoreil' s organo-gelator
component in addition to claim l's expressly recited oil-soluble hydrophobic
cooling ingredient (i.e., stearyl heptanoate ). Moreover, because the impetus
for modifying Lavaud's composition comes, as discussed, from the
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Application 11/571,312
teachings in the prior art, Appellants do not persuade us (Br. 5-6) that the
Examiner's rejection relies on improper hindsight.
Appellants also do not persuade us that Lavaud "is explicit that stearyl
heptanoate may be used at no more than 5% by weight of the composition
(see column 4, lines 56-62)." Br. 4. Rather than setting absolute limits,
Lavaud provides some leeway in the concentrations of its ester component,
disclosing at its broadest that the ester "is preferably present in weight
concentrations (referred to the whole of the composition) ranging
approximately from 0.1to5%." Lavaud, 4:58---61 (emphasis added). In any
event, this teaching in Lavaud must be viewed alongside the teachings in
Livoreil, discussed above, that much greater amounts of stearyl heptanoate
(undisputedly encompassed by claim 1 ), when included in compositions of
the type described in Lavaud, impart desirable properties to such
compositions. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.").
In sum, for the reasons discussed, Appellants do not persuade us that
the cited references do not support the Examiner's finding that an ordinary
artisan would have been motivated by Livoreil to increase the amount of
stearyl heptanoate in Lavaud's compositions to concentrations encompassed
by claim 1. As also discussed above, Appellants do not contest the
Examiner's conclusion that an ordinary artisan would have been prompted to
include Kung's emulsifier in Lavaud's compositions (Br. 6), and we detect
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Application 11/571,312
no deficiency in the reasoning underlying the Examiner's conclusion in that
regard.
Accordingly, because Appellants' arguments do not persuade us that a
preponderance of the evidence fails to support the Examiner's prima facie
case of obviousness as to representative claim 1, and because Appellants do
not advance secondary evidence of nonobviousness, we affirm the
Examiner's rejection of claim 1 over Lavaud, Livoreil, and Kung under
35 U.S.C. § 103(a). Because they were not argued separately, the remaining
rejected claims fall with claim 1. 37 C.F.R. § 41.37(c)(iv).
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 1-3, 11, and 12, under 35 U.S.C. § 103(a) for obviousness over
Lavaud, Livoreil, and Kung.
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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