Ex Parte SCHERER et al

Patent Trials and Appeals Board

Apr 19, 2019

15165092 - (D) (P.T.A.B. Apr. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/165,092 05/26/2016
13897 7590 04/23/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Jonatan SCHERER
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.
3321-P50290 3258
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
04/23/2019 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 JONATAN SCHERER, DAVID WINTERSTEIN, and HEIKE
MIERTSCH
Appeal2018-007713
Application 15/165,092
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
WISZ, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek review of claims 1-
19 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm-in-part.
STATEMENT OF THE CASE
The Specification describes a sprayable cosmetic or dermatological
formulation comprising a lipid-containing preparation and one or more
1 Appellants identify the Real Party in Interest as Beiersdorf AG. App. Br.
3.
Appeal2018-007713
Application 15/165,092
propellant gases. Spec. 1. Claim 1, the only independent claim, is set forth
below:
1. A topical formulation for application to skin, wherein
the formulation comprises
and
an anhydrous lipid-containing preparation,
propellant gas consisting essentially of one or more
substances selected from hydrofluorocarbons, n-butane,
isobutane and propane,
the lipid-containing preparation being in direct contact with
the propellant gas and comprising ethanol, methanol,
isopropanol, petroleum spirit and surfactants in
concentrations of in each case from O % to less than 0.1 % by
weight and a concentration of silicone compounds of from
0% to less than 40% by weight, based on a total mass of the
preparation, and
a concentration of the lipid-containing preparation being not
more than 61 % by weight, based on a total mass of the
formulation.
The Examiner rejected claim 4 as being indefinite.
The Examiner rejected claims 1-19 and 21 under 35 U.S.C. § 103 as
being obvious over Tamar kin 2 in view of Menon. 3
ISSUES AND ANALYSIS
We affirm the Examiner's indefiniteness rejection of claim 4 and
affirm the obviousness rejection of claims 1-10, 12-19, and 21. We reverse
2 Tamarkin et al., US 2008/0260655 Al, published Oct. 23, 2008
("Tamarkin").
3 Menon et al., US 2015/0020915 Al, published Jan. 22, 2015 ("Menon").
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Application 15/165,092
the obviousness rejection of claim 11. We address the arguments raised by
Appellants below.
Indefiniteness
Claim 4 recites: "The formulation of claim 1, wherein the lipid-
containing preparation has a consistency of 50 to 70 units, measured using a
consistometer K0-82 at 25°C." App. Br. 18. The Examiner finds that claim
4 is indefinite due to its recitation of a consistency of "50 to 70 units,"
measured using a consistometer. Final Act. 2. The Examiner asserts that:
[t]here are different methods of measuring consistency, and
different scales that can be used. The method and scale (i.e.
units of measure) can vary, and are not standard to a single
consistometer ( such as the instantly claimed K0-82
consistometer). The outcome can be selected by the user,
even with the same consistometer ( as stated in the instant
specification - see page 8, lines 28-30), so that the method
does not appear to be tied to a specific piece of equipment.
And scale can vary too.
Ans. 4. The Examiner concludes that "the claim does not make either the
manner of measurement or scale used clear" so the metes and bounds of the
claim are indefinite. Id.
Appellants argue that page 8 of the specification "provides sufficient
information to enable one of ordinary skill in the art to ascertain whether or
not a tested formulation has a consistency of 50 to 70 units when measured
with a consistometer K0-82 at 25QC." App. Br. 6-7.
On review of the record, we determine that the preponderance of the
evidence supports the Examiner's position that the claim is indefinite. As
the Examiner points out, the term "unit" has not been established in the
specification as a standard or known measurement of consistency. Ans. 4.
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Application 15/165,092
Therefore, it is unclear what constraints are placed upon the term "unit" and
Appellants have not explained this ambiguity or provided additional
information that would assist in understanding the term. See In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014) ("We conclude that, when the USPTO
has initially issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of§ 112(b).")
A "patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014). Therefore, we sustain the Examiner's rejection of claim 4 as
being indefinite.
Obviousness
1. Claims 1-10 and 13-19
A claimed invention is unpatentable if the differences between it and
the prior art are "such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art." 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject
matter would have been obvious, the Board follows guidance in Graham v.
John Deere Co., 383 U.S. 1 (1966) and KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398 (2007). Under that guidance, the "combination of familiar
elements according to known methods is likely to be obvious when it does
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Application 15/165,092
no more than yield predictable results." KSR, 550 U.S. at 416. Thus, 35
U.S.C. § 103 requires an inquiry into "'whether the improvement is more
than the predictable use of prior-art elements according to their established
functions."' Monolithic Power Sys., Inc. v. Micro Int'! Ltd., 558 F.3d 1341,
1352 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 417).
Applying this standard, we conclude that the Examiner did not err in
determining that claims 1-10 and 13-19 would have been obvious to an
ordinarily-skilled artisan over the cited prior art.
The Examiner finds that Tamarkin discloses:
[S]ubstantially non-aqueous, non-alcoholic, non-silicone,
foamable carrier compositions comprising petrolatum and a
propellant (abstract). One example of such a formulation has
two petrolatum compounds present in 60 wt%, the foam
adjuvant oleyl alcohol resent in 10 wt%, aluminum starch
octenyl succinate in 15 wt%, zinc oxide in 15 wt%, and n-
butane as a propellant in 20 wt% (based on the formulation
for the other ingredients being 100 wt%) ( example A9, Part
A).
Final Act. 3--4.
The Examiner concedes that the amount of the lipid-based preparation
(i.e., the portion that is not propellant) disclosed in Tamarkin, is higher than
the amount recited in claim 1 (i.e., 61 wt%). Final Act. 4. However, the
Examiner asserts that Menon, which discloses compositions mixed with
propellants, provides this disclosure. Id. ( citing Menon abstract).
Specifically, the Examiner finds that Menon discloses that "higher
propellant concentrations can contain larger amounts of active composition
in larger spray devices" and can "enhance the fresh feeling on the skin at the
time of application." Id. ( citing Menon ,r 10). The Examiner further finds
that the propellant concentrations disclosed in Menon range from about 30%
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Application 15/165,092
wt% to about 90 wt%, which overlap with the instantly recited range. Id.
( citing Menon ,r 7 5). The Examiner concludes that it would have been
prima facie obvious to one of ordinary skill in the art at the time of filing to
have used higher amounts of propellant in the formulation taught by
Tamarkin since doing so would allow for a fresh feeling upon application to
the skin and would also allow for larger amounts of actives to be delivered.
Id.
Appellants assert that Tamarkin discloses that the concentration of
propellant in the foamable compositions disclosed therein are at most up to
35 wt%. App. Br. 8 ( citing Tamarkin ,r 412). Appellants also assert that
Menon does not cure this deficiency because the compositions of Tamarkin
and Menon have "virtually nothing in common" and "there is no overlap
between the required components of the compositions." Id. at 9-10.
Appellants also argue that the properties and the applications of the
compositions of Tamarkin and Menon are completely different. Id. at 12.
Specifically, Appellants argue that the compositions disclosed by Tamarkin
must be foamable and there is no indication that the compositions disclosed
in Menon are foamable. Id. ( citing Tamarkin title). Appellants also argue
that Tamarkin discloses that cooling effects are undesirable while Menon is
directed to antiperspirant compositions, which provide such a sensation. Id.
at 15 ( citing Tamarkin ,r 4, Menon ,r 3). Given these differences, Appellants
assert that one of ordinary skill in the art would not combine the disclosures
of these documents to increase the propellant concentration in the
compositions of Tamarkin greater than 35 wt%. Id.
The Examiner responds by explaining that Menon, and not Tamarkin,
is relied on for disclosing the amount of propellant and for the motivation
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and reasoning to provide such an amount. Ans. 5. The Examiner also
disagrees that there is no commonality between the teachings of the two
references as both disclose compositions applied to the skin using a
propellant. Id. at 6. The Examiner also asserts that there is nothing in
Menon to suggest that the compositions therein cannot be foamable. See id.
at 7. As for the cooling effect, the Examiner asserts that the section cited by
Appellants is within the background section of Tamarkin and the problems
being solved by Tamarkin are not related to the cooling effect. Id.
We are not persuaded by Appellants' arguments. With respect to
Appellants' argument that Tamarkin discloses a concentration of propellant
that is at most up to 35 wt%, Appellants are arguing against Tamarkin
individually rather than in combination with Menon as a whole. "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 re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Because the combination of
Tamarkin and Menon teaches every limitation of the claims, we are not
persuaded that the Examiner erred.
With regard to the Appellants' arguments that the properties and
applications of the compositions of Tamarkin and Menon are completely
different, we do not find this non-analogous art argument persuasive. The
test for non-analogous art is first whether the art is within the field of the
inventor's endeavor and, if not, whether it is "reasonably pertinent to the
particular problem with which the inventor was involved." In re Wood, 599
F.2d 1032, 1036 (CCPA 1979). "A reference is reasonably pertinent if, even
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though it may be in a different field" of endeavor, it logically would have
commended itself to an inventor's attention in considering his problem
"because of the matter with which it deals." In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). Here, Menon's teaching appears to satisfy both prongs of
the analogous art test, as related to the same field of endeavor of propellant-
containing compositions (including antiperspirants) applied to the skin,
and pertinent to the amount of propellant to be used in such compositions.
We note that the "scope of the field of endeavor is a factual
determination based on the scope of the application's written description and
claims." In re Singha!, 602 Fed. Appx. 826, 830 (Fed. Cir. 2015). Here, the
specification specifically identifies the field of endeavor as a "sprayable
cosmetic or dermatologic formulation" wherein the "formulation permits the
application of a cosmetic preparation to the skin by spraying an otherwise
non-sprayable preparation." Spec. 1. Both Tamarkin and Menon are
reasonably addressed to sprayable cosmetic or dermatologic formulations
and, therefore, fall within the field of endeavor identified by Appellants'
own specification. Appellants argue that "apart from being used in
combination with a propellant, there is no overlap between the compositions
of Tamarkin and Menon" and that, while Menon relates to antiperspirant
compositions, "Tamarkin is not at all concerned with antiperspirants."
Reply 2, 6. However, we find that Tamarkin does state that the
compositions disclosed therein can include additional components such as
antiperspirants. Tamarkin ,r 417. This disclosure provides further evidence
that Tamarkin and Menon are in the same field of endeavor.
Even if we were to accept Appellants' arguments that Tamarkin and
Menon are not in the same field of endeavor, Menon is still pertinent to
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Tamarkin, which discloses compositions that include a propellant that "can
hold substantial amounts of active agents ..... " Tamarkin ,r 4 7. A person
of skill in the art would have looked to the disclosure of Menon to determine
how much propellant could be used in the compositions disclosed in
Tamarkin to allow for the delivery of larger amounts of active agents.
For the reasons described herein and those already of record, we
sustain the Examiner's rejection of independent claim 1 as being obvious
over Tamarkin in view of Menon. Claims 2-10 and 13-19 are not argued
separately, and fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
2. Claim 11
Appellants argue that Tamarkin in view of Menon does not render
obvious the subject matter of claim 11, which recites the formulation of
claim 1 free from foam formers. App. Br. 15-16. Appellants assert that
Tamarkin is directed to foamable compositions and the composition of
Example A9, Part A of Tamarkin, which is relied upon by the Examiner,
contains 10 wt% of the foam adjuvant oleyl alcohol. Id. at 15. The
Examiner responds by asserting that the instant specification states that foam
formers are surfactants and that oleyl alcohol is not a surfactant, but rather a
solvent. Ans. 8 ( citing Tamarkin ,r 280).
We find that Appellants have a better position. We do not agree with
the Examiner that "foam formers" are limited to surfactants simply because
surfactants are listed as examples of foam formers in the specification. See
e.g., Spec. 5. In additional, oleyl alcohol does appear to be labeled as a foam
adjuvant in Example A9, Part A of Tamarkin. Tamarkin ,r 630; see also,
Tamarkin claim 14. Therefore, we reverse the obviousness rejection of
claim 11 over Tamarkin in view of Menon.
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3. Claim 12
Appellants argue that claim 12, which recites the formulation of claim
1 free from silicone compounds, is not rendered obvious by Tamarkin in
view of Menon because the compositions of Menon "must contain 'non-
volatile silicone fluid.'" App. Br. 16. The Examiner responds by arguing
that Tamarkin teaches "non-silicone" compositions and Menon is not relied
on for this limitation. Ans. 8.
We find the Appellants' arguments unpersuasive because they admit
that Tamarkin discloses "non-silicone" compositions. App. Br. 16. As
explained above, "[n]on-obviousness cannot be established by attacking
references individually ..... " In re Merck & Co., 800 F.2d at 1097.
Therefore, we sustain the Examiner's rejection of claim 12 as being obvious
over Tamarkin in view of Menon.
4. Claim 21
Appellants argue that claim 21, which recites a weight ratio of lipid-
containing preparation to propellant gas of from 55:45 to 45:55, is not
rendered obvious by Tamarkin in view of Menon. Appellants argue that a
maximum of 55% of the lipid-containing preparation "is even further from
the minimum concentration of foamable carrier ( about 65 wt.%) in the
foamable compositions of Tamarkin." App. Br. 16-17.
We do not find this argument persuasive. We agree with the
Examiner that the modification of Tamarkin with the higher propellant
amounts suggested by Menon renders this limitation prima facie obvious as
discussed above with respect to claim 1 and Appellants have not presented
additional arguments with respect to this claim. Therefore, we sustain the
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Examiner's rejection of claim 21 as being obvious over Tamarkin in view of
Menon.
CONCLUSION
We affirm the Examiner's indefiniteness rejection of claim 4 and the
obviousness rejection of claims 1-10, 12-19, and 21. We reverse the
obviousness rejection of claim 11.
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-IN-PART
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