Ex Parte Sugiyama et al

Patent Trial and Appeal Board

Nov 30, 2018

13321245 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/321,245 11/18/2011
7609 7590 11/30/2018
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
FIRST NAMED INVENTOR
Yuki Sugiyama
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.
IWI-35216 4600
EXAMINER
MATOS NEGRON, TAINA DELMAR
ART UNIT PAPER NUMBER
1621
MAIL DATE DELIVERY MODE
11/30/2018 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 YUKI SUGIYAMA, KEI WATANABE, and
YOSHIHITO NISHIJIMA 1
Appeal2017-000815
Application 13/3 21,245
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Shiseido Company, Ltd. as the real party-in-interest.
App. Br. 3.
Appeal2017-000815
Application 13/321,245
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 8, 9, 11-15, and 19, which stand
rejected as unpatentable under 35 U.S.C. § I03(a) as being obvious over the
combination of Murase et al. (US 2008/0182771 Al, July 31, 2008)
("Murase"), D.J. Mitchell et al., Phase Behaviour of Polyoxyethylene
Surfactants with Water, 79 J. CHEM. Soc. FARADAY TRANS. 1 975-1000
(1983) ("Mitchell"), and Oxiteno Technical Bulletin, Akonat® L Laury!
Alcohol Ethoxylates ("Oxiteno").
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a cosmetic composition
comprising an alkyl ethylene oxide surfactant, an oil component, and water,
wherein the composition is a discontinuous-micellar cubic liquid-crystal
phase, and an outer phase comprising an oil component, that is different
from the oil component captured in the discontinuous-micellar cubic liquid-
crystal phase. Abstract.
REPRESENTATIVE CLAIM
Claim 8 is representative of the claims on appeal and recites:
Claim 8: A cosmetic compos1t10n, wherein a
discontinuous-micellar cubic liquid-crystal phase comprising:
(A) a polyoxyethylene alkyl ether surfactant having an
HLB of 8 to 13,
(B 1) an oil component, and
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(C) water
is the outer phase and
wherein the mass ratio of the component (A) and the
component (C) is (A):(C) = 20:80 to 70:30 and,
wherein (B2) is an oil phase comprising an oil component
that is different from the oil component (B 1) captured in said
discontinuous-micellar cubic liquid-crystal phase is contained as
the inner phase.
App. Br. 20.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusion that Appellants' claims are prima facie obvious
over the combined cited prior art. We address the arguments raised by
Appellants below.
Issue 1
Appellants argue that the Examiner erred by failing to explicitly and
clearly articulate the analysis supporting the obviousness rejection, and
instead bases the rejection on a conclusory statement. App. Br. 12.
Analysis
The Examiner finds that Murase teaches a transparent liquid cleansing
composition containing: (A) 10-35% by weight of a nonionic surfactant
having an HLB value of 8 or more; (B) 10 to 40% by weight of oil; (C) 20 to
60 % by weight of a water-soluble surfactant and (D) 5-50% by weight of
water. Final Act. 7 ( citing Murase Abstr. ). The Examiner finds that the
composition taught by Murase can be used for removal of makeup and
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waterproof mascara. Id. (citing Murase ,r,r 15-16). The Examiner finds that
Murase teaches that one or more components of (A) can be included in the
composition in an amount of 5 to 50% resulting in a cleansing composition
that is compatible with make-up, that can raise dirt, that is not sticky and that
can be cleanly washed off without an oily feeling. Id. ( citing Murase ,r 23).
The Examiner finds that Murase teaches examples of non-ionic surfactants,
including polyethylene glycol alkyl esters, such as polyethylene glycol, and
octyldodecyl ether, and water-soluble surfactants such as sorbitol,
dipropylene glycol and 1, 3-butylene glycol. Id. ( citing Murase ,r,r 21, 35).
The Examiner points to Table 2 of Murase, which the Examiner finds
exemplifies a composition in which the polyoxyethylene alkyl ether (A) to
water (C) ratio is 15:84 and, in Table 4, 64:35. Final Act. 3. The Examiner
additionally finds that Table 2 of Murase demonstrates that the cleansing
composition can comprise of two distinct oils. Id. The Examiner finds that
Murase teaches that the oil component is present in the composition in an
amount ranging from between 10% to 40% by weight in the total
composition. Id. ( citing Murase ,r 32).
The Examiner further finds that Murase teaches that one or more
components of (C) can be used and are contained in amounts of preferably
20% to 60% by weight, which results in sufficient cleaning power and
stability. Final Act. 3 (citing Murase ,r 36). The Examiner finds that water-
soluble solvents (C1 and C2) can be used in amount of 10% to 50% by
weight and that these concentrations exhibit stability in a wide range of
temperatures and possess clean washing-off properties, without leaving a
feeling of residue. Id. (citing Murase ,r 43).
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However, the Examiner finds Murase does not expressly teach that the
ratio of component A to component C can range from 20:80 to 70:30, or that
the composition is a discontinuous-micellar cubic liquid crystal phase. Final
Act. 3.
The Examiner finds that Mitchell teaches phase diagrams of a C12E08
(i.e., polyoxyethylene surfactants) in an aqueous system. Final Act. 3 (citing
Mitchell Fig. 8). The Examiner finds that the closely-packed spherical
micelle cubic phase (I1) phase exists at concentrations of C12EOs of between
35 to 53 weight percent in water. Id. ( citing Mitchell 987).
The Examiner concludes that a person of ordinary skill in the art at the
time of the invention would have found it prima facie obvious to prepare a
cosmetic composition comprising a polyoxyethylene alkyl ether, oil and
water, because Murase teaches a cleansing composition comprising non-
ionic surfactant (i.e., polyoxyethylene alkyl ether), oil and water. Final Act.
4. The Examiner further concludes that an artisan of ordinary skill would
have been motivated to use the cosmetic composition for makeup removal,
because Murase teaches that its disclosed compositions comprising the same
elements recited in Appellants' claims can be used for removing makeup.
Id. Furthermore, concludes the Examiner, a skilled artisan would have been
motivated to include a polyhydric alcohol and/or a saccharide, because
Murase teaches that polyhydric alcohols (i.e., 1, 3-butylene glycol) and
saccharides can be advantageously incorporated into the composition. Id.
Appellants argue that the Examiner fails to cite any support for the
conclusion that the combination of components from Murase and Mitchell
would "ultimately" have a phase that is a discontinuous micellar cubic liquid
crystal phase as recited in claim 8. App. Br. 12. Appellants interpret the
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Examiner's conclusion as being based on a theory of inherency, i.e., that the
modified composition would necessarily have a discontinuous micellar cubic
liquid crystal phase I1 simply because the C12EOs surfactant of Mitchell is
used. Id. However, Appellants assert, the teachings of Murase contradict
such a conclusion. Id.
Appellants argue that Murase teaches a nonionic surfactant having an
HLB value of 8 or more, and that the resultant composition has a
bicontinuous structure in which both oil and water are continuous. App. Br.
13. Appellants contend that Murase further teaches the use of a surfactant,
such as that taught by Mitchell, and assert that the combined composition
would therefore still have the bicontinuous structure taught by Murase,
rather than the claimed discontinuous-micellar cubic liquid-crystal phase I1.
Id. According to Appellants, the C12EOs surfactant of Mitchel has an HLB
of 12.9, which is greater than an HLB of 8, as required by the claims, and
that therefore the C12E08 surfactant of Mitchell would not substantially alter
the composition of Murase. Id. Accordingly, Appellants argue, it would
follow that the modified composition of Murase would retain its
bicontinuous structure, in which both oil and water are in a continuous
phases, rather than having a discontinuous micellar cubic liquid-crystal
phase. Id.
Therefore, Appellants argue, the teachings of Murase are contrary to
the Examiner's conclusion that the modified composition will ultimately
result in a discontinuous micellar cubic liquid crystal phase, as recited in
claim 8. App. Br. 13. Rather, Appellants assert, a person of ordinary skill in
the art would expect that the modified composition would result in a
bicontinuous structure. Id. Appellants contend that there is no rational basis
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to believe the Examiner's conclusion that the modified composition of
Murase would ultimately, or necessarily, have an I1 phase, simply by
including Mitchell's surfactant. Id.
Appellants argue further that the Examiner failed to cite any teaching
by the references to support the further conclusion that the suggested
combination would meet all of the structural and physical limitations of the
discontinuous-micellar cubic liquid-crystal phase recited in claim 8. App.
Br. 13. Specifically, Appellants assert that even if, arguendo, the suggested
combination would ultimately result in an I1 phase, the Examiner has failed
to show how the modified composition would have an oil phase (B2)
comprising an oil component that is different from the oil component (B 1),
and in which (B2) is captured as the inner phase in the discontinuous-
micellar cubic liquid-crystal outer phase. Id. at 13-14. Appellants repeat
their assertion that Murase teaches a bicontinuous structure in which both oil
and water are continuous phases, and in which no micelles are formed. Id. at
14. Appellants argue that Murase teaches that the "cleansing composition
was obtained by placing all the components (A) to (D) in a container, and
stirring and uniformly mixing all the components." Id. ( quoting Murase ,r
61).
Appellants further argue that Mitchell and Oxiteno neither teach nor
suggest an oil component. App. Br. 14. Therefore, Appellants contend,
even if the C12E08 surfactant of Mitchell were incorporated into the
composition of Murase, the one or more oils of Murase would not
necessarily be captured as the inner phase as claimed, but would instead be
included as a bicontinuous phase, as taught by Murase. Id.
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We are not persuaded by Appellants' arguments. Claim 8 is directed
to: "a discontinuous-micellar cubic liquid-crystal phase." Figure 1 of
Appellants' Specification, reproduced below, illustrates an embodiment of
their claimed composition:
\
OU eonrponent. (lh) 0/h phw:i(: Oil eompim~mt. (B1)
Figure 1 of Appellants' Specification depicts a structure of the
oil-in-micellar cubic liquid-crystal phase (O/I1)-type emulsion
composition.
Figure 1 illustrates that the micelles are packed into a cubic lattice
structure, but not so densely packed that the micelles are in contact with
each other, i.e., they are in a "discontinuous-micellar cubic liquid-crystal
phase."
Murase is directed to:
A transparent liquid cleansing composition containing the
following components (A), (B), (C) and (D):
(A) 10 to 3 5% by weight of a nonionic surfactant having an
HLB value of 8 or more,
(B) 10 to 40% by weight of oil having a viscosity of 15 mPa· s
or less at 30° C.,
(C) 20 to 60% by weight of a water-soluble solvent, and
(D) 5 to 50% by weight of water.
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Murase Abstr. Murase further teaches that:
The cleansing composition of the present invention
preferably has an isotropic liquid phase of a bicontinuous
structure formed from the components (A), (B), (C) and (D).
The isotropic liquid phase of a bicontinuous structure is an
optically isotropic transparent or semitransparent solution having
a low viscosity in which both water and oil are continuous.
Specifically, the isotropic liquid phase of a bicontinuous
structure indicates a bi continuous microemulsion phase ( or 11E
phase), a middle phase ( or D phase) or a sponge phase ( or L3
phase).
The cleansing composition of the present invention can
exhibit a cleaning function, which has never been sufficiently
achieved, by preferably having an isotropic liquid phase of a
bicontinuous structure. The structure is one in which both water
and oil are continuous, and is excellent in cleaning for cosmetics,
especially water-resistant mascara and the like.... However, a
cleansing composition has characteristics that not only affinity
for a cosmetic or mascara is excellent, but a wash-off process is
greatly facilitated because the composition is very compatible
with water even in a wash-off process using water due to an
isotropic liquid phase of a bicontinuous structure.
Murase ,r,r 4 7--48 ( emphases added). Murase thus teaches that its
composition preferably has a bicontinuous structure, but does not
necessarily have one, although it also teaches that the bicontinuous structure
has certain advantages. We must therefore also consider all other possible
phase structures in our obviousness analysis. See Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that all
disclosures of the prior art, including unpreferred embodiments, must be
considered").
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Mitchell teaches testing a model phase diagram showing phase
structure as a function of surfactant volume fraction and micelle curvature,
using various concentrations of polyoxyethylene surfactants. Mitchell
Abstr. Mitchell teaches that: "The mesophases observed were cubic-
spherical-micelles (h) [i.e., discontinuous-micellar cubic], hexagonal (H1),
normal-cubic-bicontinuous (V 1), lamellar (La) and reversed-cubic-
bicontinuous (V2). Large head groups and low temperatures favour I1 and
H1 phases, while La and reversed phases occur for small head groups and
higher temperatures." Id. (emphasis added).
We agree with the Examiner that a person of ordinary skill in the art
would have known from the teachings of the art that the phase-related
structure of a lyotropic liquid crystal can be discontinuous or bicontinuous as
a function of, inter alia, the relative concentration of the amphiphilic
molecules and the surfactant, and that by altering the relative concentrations,
a discontinuous cubic micellar can form. 2 See generally Mitchell; for
further review, see, e.g., Y. Huang et al., Factors Affecting the Structure of
L yotropic Liquid Crystals and the Correlation Between Structure And Drug
Diffusion, 8 ROY. Soc. CHEM. ADV. 6978, 6979-82 (2018). Therefore,
although Murase teaches its compositions preferably having a bicontinuous
liquid crystal structure, we find that it does not require that they possess this
structure, and its teachings otherwise encompass Appellants' claims.
Appellants do not identify a teaching in Murase that criticizes, discredits, or
2 We note that, relevantly, Appellants' claims do not recite a concentration,
or a range of concentrations, for oil component B, but merely a ratio of B 1
to B2 (see dependent claim 9).
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otherwise discourages the use of other known prior art phases as evidenced
by Mitchell.
Appellants also argue that Murase does not teach a second oil
component B2, "that is different from the oil component (B 1) captured in
said discontinuous-micellar cubic liquid-crystal phase is contained as the
inner phase." See App. Br. 13-14. However, Murase, in Tables 2, 3, and 4
cites multiple examples (see Examples, 3, 13, and 17-22) in which a second
oil component is included that is different from the first oil and would be
necessarily captured as an inner phase in a discontinuous-micellar cubic
liquid-crystal phase. See, e.g., Spec. Fig. 1. We consequently conclude that
the Examiner has sufficiently articulated reasoning as to why the combined
references teach or suggest the limitations of claim 8.
Issue 2
Appellants argue that the Examiner erred because the proposed
modification changes the principles of operation ofMurase. App. Br. 14.
Analysis
Appellants argue that Murase teaches that the bicontinuous structure
is important in order to make the cleansing composition "capable of being
cleanly washed off without providing an oily feeling during use," and "due
to an isotropic liquid phase of a bicontinuous structure," the composition
"can exhibit a cleaning function, which has never been sufficiently
achieved" and "is excellent in cleaning for cosmetics, especially water-
resistant mascara and the like." Id. (quoting Murase ,r 48).
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Appellants therefore argue that if the proposed modification were
made to Murase, and if the modification resulted in an I1 phase of a
discontinuous micellar cubic liquid crystal phase, such a modification would
not have been prima facie obvious, because it would change the principles of
operation of the composition of Murase. Id.
We are not persuaded by Appellants' arguments. As we have
explained supra, the bicontinuous I1 structure is a preferred embodiment of
Murase, but we consider unpreferred embodiments in our obviousness
analysis. See Biocraft, 874 F.2d at 807. Although we acknowledge that
Murase teaches that the bicontinuous structure of the I1 matrix confers
substantial advantages, we do not read the teachings of Murase to be limited
to such bicontinuous structures; rather, they represent only a preferred
embodiment of the compositions taught by the reference. This is reinforced
by Mitchell's teaching that a discontinuous cubic micellar can be obtained
with polyoxyethylene surfactants, as claimed. As we have also explained
supra, Murase teaches or suggests all of the remaining structural limitations
of Appellants' claimed composition. We are consequently not persuaded by
Appellants' arguments.
Issue 3
Appellants argue the Examiner erred because the references cited by
the Examiner fail to enable one of ordinary skill in the art to make the
claimed subject matter, without undue experimentation. App. Br. 15.
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Analysis
Appellants argue that Murase fails to disclose a discontinuous-
micellar cubic liquid-crystal outer phase (I1) or how to produce it. App. Br.
15. Rather, Appellants contend, Murase discloses an isotropic liquid phase
of a bicontinuous structure, in which both oil and water are continuous, and
which is made by placing all the components (A) to (D) in a container, and
stirring and uniformly mixing all the components. Id. ( citing Murase ,r 61 ).
According to Appellants, all of the cited references fail to teach or suggest
the O/I1 emulsion composition, or how to produce it, in which an inner oil
phase is captured in the discontinuous-micellar cubic liquid-crystal outer
phase (I1), and includes an oil component (B2) that is different from the oil
component (B 1).
We disagree. As we have explained, Appellants focus on a preferred
embodiment, but we agree with the Examiner that embodiments other than a
bicontinuous structure are contemplated within the scope of Murase.
Furthermore, and as we have also noted supra, Murase also teaches the use
of a second oil B2 that is different from oil B1 that would be incorporated as
an inner oil phase (B2) in the discontinuous-micellar cubic liquid crystal
outer phase (B1).
More importantly, Appellants adduce no evidence of record, that a
person of ordinary skill in the art would not have been able to synthesize
their claimed composition, and, in particular, a discontinuous micellar cubic
liquid crystal phase, from the teachings of Murase, including unpreferred
embodiments, and knowledge well known in the art at the time of invention,
without undue experimentation. Absent any such evidence, or argument
based thereon, we consider Appellants' contentions in this respect to be
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mere attorney argument, to which we accord little probative value. See In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
We consequently affirm the Examiner's rejection of the claims.
DECISION
The Examiner's rejection of claims 8, 9, 11-15, and 19 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2010).
AFFIRMED
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