Ex Parte Tanaka et al

Patent Trial and Appeal Board

Aug 21, 2018

12624236 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/624,236 11/23/2009
27752 7590 08/23/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Shuhei Tanaka
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.
AA767M 7928
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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 SHUHEI TANAKA and NAOHISA YOSHIMI 1
Appeal2017-006272
Application 12/624,236
Technology Center 1600
Before RICHARD J. SMITH, TA WEN CHANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is The Procter & Gamble
Company. (Appeal Br. 1.)
Appeal2017-006272
Application 12/624,236
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-13 and 15-18 are on appeal. ( Claims Appendix, Appeal Br.
10-12.) Independent claims 1 and 18 are illustrative and read as follows
( emphases added):
1. A cosmetic composition comprising:
a) from about O .1 % to about 15% of an emulsifying crosslinked
siloxane elastomer;
b) from about 0.1 % to about 10% of a noncrosslinked silicone
emulsifier having a polyglycerin unit;
c) from about 1 % to about 50% of a solvent for the emulsifying
crosslinked siloxane elastomer;
d) from about 0.05% to about 10% of an amphiphilic active
selected from the group consisting of cetylpyridinium chloride, a
glycyrrhizate salt, sodium PEG-7 olive oil carboxylate and
mixtures thereof; and
e) water, wherein the composition is a water-in-oil emulsion that
does not exhibit phase separation at 25 °C for more than two
days after the composition is formulated.
18. A water-in-oil emulsion cosmetic composition comprising:
a) from about O .1 % to about 15% of an emulsifying crosslinked
siloxane elastomer;
b) from about 0.1 % to about 10% of a noncrosslinked silicone
emulsifier having a polyglycerin unit;
c) from about 1 % to about 50% of a solvent for the emulsifying
crosslinked siloxane elastomer;
d) from about 0.05% to about 10% of undecylenoyl
phenylalanine incorporated into an aqueous phase of the water-
in-oil emulsion; and
e) water, wherein the composition does not exhibit phase
separation at 25 °Cfor more than two days after the composition
is formulated.
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Application 12/624,236
Examiner's Rejection
Claims 1-13 and 15-18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Yoshimi2 and Osborne. 3 (Final Act. 3-8.)4
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may also be found in this Decision, the Final
Action, and the Examiner's Answer.
FF 1. Yoshimi teaches water-in-oil emulsion compositions comprising
siloxane elastomers. (Y oshimi, Abstract.)
FF 2. The Examiner finds that Y oshimi teaches a composition comprising
2.3% emulsifying crosslinked siloxane elastomer, 0.5% noncrosslinked
silicone emulsifier, 4% solvent for the emulsifying crosslinked siloxane
elastomer, and water. (Final Act. 4, citing Yoshimi Example 9 (i-f 207).)
FF 3. The Examiner finds that Y oshimi teaches that its compositions may
contain about 0.1 % to about 10% of a whitening agent, and that the
whitening agents may include cetylpyridinium chloride and undecylenoyl
phenylalanine. (Final Act. 4, citing Y oshimi ,r,r 94, 95, and 104.)
FF 4. The Examiner finds that the compositions of Y oshimi are stable.
(Final Act. 4, citing Yoshimi ,r,r 23, 29, and 72.)
FF 5. The Examiner finds that
Y oshimi [] already teach[ es] an emulsifying crosslinked siloxane
elastomer; a noncrosslinked silicone emulsifier having a
2 Yoshimi et al., US 2007/0128137 Al, published June 7, 2007 ("Yoshimi").
3 Osborne et al., US 2007/0196296 Al, published Aug. 23, 2007
("Osborne").
4 Final Office Action dated Feb. 29, 2016 ("Final Act.").
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Application 12/624,236
polyglycerin unit; a solvent for the emulsifying crosslinked
siloxane elastomer; and water in the recited amounts. In this
respect, there is no difference between the instantly claimed
invention and the prior art reference of Y oshimi.
(Ans. 3.)
FF 6. The Examiner finds that
Y oshimi [] also teaches undecylenoyl phenylalanine and
cetylpyridinium chloride. Because Y oshimi [] already has the
emulsifying crosslinked siloxane elastomer; noncrosslinked
silicone emulsifier having a polyglycerin unit; solvent for the
emulsifying crosslinked siloxane elastomer; and water, the
emulsion will necessarily have the same stability when the
amphiphilic actives undecylenoyl phenylalanine and
cetylpyridinium chloride are selected.
(Id. at 3--4.)
FF 7. The Examiner finds that undecylenoyl phenylalanine is recognized in
the art as soluble in water. (Ans. 5, citing Robinson, US 2007/0264210 Al,
published Nov. 15, 2007.)
DISCUSSION
We adopt the Examiner's findings, analysis, and conclusions,
including with regard to the scope and content of, and motivation to modify
or combine, the prior art, as set forth in the Final Action and Answer. We
discern no error in the rejection of the claims on appeal as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under 35 U.S.C. § I03(a).
Principles of Law
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
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Application 12/624,236
or inherently possess the characteristics of his claimed product. .
. . Whether the rejection is based on "inherency" under 35 U.S.C.
§ 102, on "prima facie obviousness" under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO' s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
We limit our consideration to claims 1 and 18 because the remaining
dependent claims were not argued separately. Furthermore, because
Osborne was applied with respect to dependent claims that were not
separately argued, we do not rely on Osborne. 5 See In re Bush, 296 F.2d
491,496 (CCPA 1961).
Examiner's Position
Based on the Examiner's findings, the Examiner concludes that claims
1 and 18 are prima facie obvious, "especially in the absence of evidence to
the contrary." (Final Act. 8.)
Appellants 'Arguments
1. Appellants argue that the Examiner has "not properly shown
that each and every element recited in claims 1 and 18 was known prior to
[the] present invention," and particularly that the Examiner has not shown
any teaching or suggestion in the art "of providing a composition comprising
the materials recited in claims 1 and 18 of the present application that does
5 Contrary to Appellants' contention (Appeal Br. 3), the rejection of claim 1
does not require a teaching of all of the listed amphiphilic actives; rather, the
claim recites "an amphiphilic active selected from the group consisting of'
followed by a list of alternative compounds and mixtures thereof, any one of
which satisfies the limitation of the claim. See Appeal Br. 10.
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Application 12/624,236
not exhibit phase separation at 25 °C for more than two days after the
composition is formulated." (Appeal Br. 2--4.) In addition, Appellants
contest the Examiner's position that the recited stability is inherent in
Y oshimi, and further argue that there must be some teaching or suggestion in
the art to prompt the skilled artisan to address "the stability problem
identified in the present application." (Id. at 4--5.)
We are not persuaded. In an obviousness analysis, inherency may
supply a missing claim limitation. PAR Pharm., Inc. v. TWi Pharm., Inc.,
773 F.3d 1186 (Fed. Cir. 2014) ("PAR Pharmaceutical"); In re Kao, 639
F.3d 1057, 1070 (Fed. Cir. 2011). Furthermore, the Examiner has shown
sound basis for believing that the claimed compositions are identical or
substantially identical to compositions taught by Yoshimi. (See FF 2---6.) As
such, Appellants have the burden of proving the claimed property of not
exhibiting "phase separation at 25 °C for more than two days after the
composition is formulated" ( claims 1 and 18) is not inherent or necessarily
present in the identical or substantially identical compositions of Y oshimi.
See Best, 562 F.2d 1254--55; see also In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) ("[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.").
On this record, Appellants have not met their burden of rebutting the
Examiner's reasonable assertion of inherency or prima facie obviousness.
See id. Moreover, "[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419
(2007). Thus, contrary to Appellants' contention, the obviousness analysis
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is not contingent upon a teaching or suggestion in the art to prompt a skilled
artisan to address "the stability problem identified in the present
application."
2. Appellants argue that even if the Examiner's "use of inherency
as a substitute for an element of the primafacie case was proper," the
Examiner has not shown a composition that "would inherently possess the
stability recited in claims 1 and 18." (Appeal Br. 5.) Appellants refer to
PAR Pharmaceutical6 to argue that there is not enough evidence in the
record to meet the high standard required to establish a presumption of
inherency. (Id. at 6.)
We are not persuaded. As discussed above and identified by the
Examiner, Yoshimi teaches compositions that are identical or substantially
identical to the compositions of claims 1 and 18. (See FF 1-7.) Moreover,
Appellants have not met their burden of rebutting the Examiner's reasonable
assertion of inherency or prima facie obviousness. (See Final Act. 8
( establishing prima facie obviousness, "especially in the absence of evidence
to the contrary").) In this case, we find there is enough evidence in the
record to shift that burden to Appellants. (See Ans. 3--4; FF 1-7.)
Appellants argue in the Reply Brief that there is not enough evidence
in the record to support the Examiner's position that the presence of
amphiphilic actives ( claim 1) and undecylenoyl phenylalanine ( claim 18)
will not affect stability. (Reply Br. 1-2.) However, the Examiner has shown
that the compositions of Y oshimi ( that include cetylpyridinium chloride or
6 PAR Pharmaceutical was an appeal from a district court involving an
issued patent, and not decided in the context of ex parte examination before
the Patent and Trademark Office as reflected in Best.
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Application 12/624,236
undecylenoyl phenylalanine) are identical or substantially identical to the
compositions of claims 1 and 18 (FF 2-7), thereby establishing a reasonable
basis for finding that the compositions of Y oshimi would have the same
stability as claimed. And again, it is Appellants' burden to rebut that
finding. See Spada, 911 F.2d at 708.
3. Appellants argue that the Examiner "has not properly shown
that it would be prima facie obvious to incorporate undecylenoyl
phenylalanine into the aqueous phase of a water-in-oil emulsion as recited in
claim 18." (See Appeal Br. 6-8.) Furthermore, Appellants argue that
"Y oshimi does not teach or suggest incorporating undecylenoyl
phenylalanine into the aqueous phase of the composition." (Id. at 7.)
Appellants point to Examples 2 and 14 of Osborne as purportedly showing
"undecylenoyl phenylalanine being added to the oil phase of an oil-in-water
emulsion." (Id.) Appellants also rely on the Yoshimi Declaration,7 which
states that "[p ]rior to the present invention, undecylenoyl phenylalanine was
typically added to the oil phase of a water-in-oil or oil-in-water cosmetic
composition emulsion rather than the aqueous phase to avoid stability issues
like those solved by the present compositions." (Deel. ,r 3.)
We are not persuaded. As explained by the Examiner, undecylenoyl
phenylalanine is soluble in water (FF 7)8 and "[ o ]ne would reasonably
incorporate the active into the phase in which it is soluble." (Ans. 5.) The
Examiner also notes Appellants' acknowledgment that amphiphilic actives
7 Declaration under 37 C.F.R. § 1.132 ofNaohisa Yoshimi, dated June 23,
2015 ("Yoshimi Declaration" or "Deel.").
8 Appellants challenge the Examiner's reliance on Robinson (Reply Br. 3),
but nevertheless acknowledge that "Robinson ... indicates that
undecylenoyl phenylalanine is water soluble" (id.).
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may have some degree of solubility in both the aqueous and oil phases (see
Appeal Br. 7-8), and the Examiner thus finds that "the amphiphilic active
may be added in either phase." (Ans. 5.) Moreover, "[t]hat undecylenoyl
phenylalanine could also be soluble in and incorporated in the oil phase does
not negate that water-soluble amphiphilic actives, including undecylenoyl
phenylalanine, may be incorporated into the aqueous phase." (Id.) Thus,
even if two examples in Osborne show undecylenoyl phenylalanine added to
the oil phase, that does not negate the fact that it may also be incorporated
into the aqueous phase.
We have considered the Y oshimi Declaration and do not find it
persuasive. Appellants argue that the Y oshimi Declaration is evidence
"which shows that including undecylenoyl phenylalanine in a composition
can affect stability." (Reply Br. 2.) However, the statement "undecylenoyl
phenylalanine was typically added to the oil phase" (Deel. ,r 3) suggests a
process step that was only typical, not uniform. Moreover, that statement
does not provide any evidence of who "typically added" undecylenoyl
phenylalanine to the oil phase, such as evidence that it was known in the art
to do so. Furthermore, claims 1 and 18 recite a composition, not a process;
thus, when or how the undecylenoyl phenylalanine is added does not impart
patentability to the claims. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) ("The patentability of a product does not depend on its method of
production.").
Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claims 1 and 18. Claims 2-13 and 15-17 fall with
claim 1 because they were not argued separately.
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Conclusion of Law
A preponderance of evidence of record supports the Examiner's
rejection of claims 1-13 and 15-18 under 35 U.S.C. § 103(a).
SUMMARY
We affirm the rejection of all claims on appeal.
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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