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Patent Trial and Appeal Board

Mar 14, 2018

13781896 (P.T.A.B. Mar. 14, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/781,896 03/01/2013 Paul Robert TANNER 12370 8180
27752 7590 03/16/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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 PAUL ROBERT TANNER
Appeal 2017-004614
Application 13/781,896
Technology Center 1600
Before DEBORAH KATZ, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Silicone elastomers are well known for providing a unique,
consumer desirable feel profile. ... A problem with
conventional silicone elastomer is that silicone elastomers are
either synthesized and/or swollen in solvents that may be
1 Appellant is the Applicant, The Procter & Gamble Company, Cincinnati,
OH, which, according to the Brief, is the real party in interest. Appeal Br. 1.
Appeal 2017-004614
Application 13/781,896
incompatible with UV actives. . . . Even if the solvent and
sunscreen agent do not pose a compatibility issue, the solvent is
often a material that provides little to no efficacy for keratinous
tissue.
Spec. 1:23-31.
Claims 1—12 and 24—30 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 1 is representative of the claims on
appeal, and reads as follows:
1. A sunscreen composition in the form of an emulsion
comprising:
a. from about 2% to about 40%, by weight, of a UV
composite comprising from about 7% to about 50%, by weight
of the UV composites, of a silicone elastomer swollen in a
liquid UV active such that the ratio of liquid UV active to
silicone elastomer is from 1:1 to 8:1;
b. from about 3% to about 50%, by weight, of an oil
phase, wherein the oil phase comprises at least about 60%, by
weight, of the_liquid UV active; and
c. from about 40% to about 90%, by weight, of an
aqueous phase.
Appeal Br. 5 (Claims Appendix) (emphasis added).
Appellant requests review claims 1—12 and 24—302 under 35 U.S.C.
§ 103(a) as unpatentable over Omura.3
2 In response to the Election/Restriction requirement mailed November 29,
2013, Appellant elected Group I. See Response filed Dec. 23, 2013.
Group I is directed to an emulsion comprising: (a) UV composite
comprising a silicone elastomer and a liquid UV active agent; (b) an oil
phase; (c) an aqueous phase; and further comprises: (d) an emulsifier.
Appellant additionally elected “alkyl dimethicone/polyglycerin
crosspolymer as the single silicone elsatomer; and, 2-ethylhexyl-p-
methoxycinnamate as the single liquid UV active.” Id. at 2.
3 Omura et al., US 2009/0081142 Al, published Mar. 26, 2009 (“Omura”).
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Application 13/781,896
The issue is: Does the preponderance of evidence of record support
the Examiner’s conclusion that Omura suggests “a silicone elastomer
swollen in a liquid UV active” as claimed?
Findings of Fact
FF1. Omura teaches a sunscreen cosmetic comprising:
(a) 2-ethylhexyl 2-ethylhexanoate and/or
isononyl 2-ethylhexanoate, [in an amount of 1 to 60
mass %,]
(b) an ultraviolet absorber, [in an amount of 3 to 20 mass %,]
(c) an ultraviolet scattered, in an amount of 0.5 to 50 mass %
and the ingredient] and
(d) a silicone oil[, in an amount of 1 to 70 mass %, in the total
mass of the cosmetic composition.]
See Omura H 22, 27.
FF2. Omura teaches that the composition may optionally contain “(e), one
or more ingredients selected from silicone based surfactants, glycerin
or polyglyceryl fatty acid esters from the viewpoint of the
improvement in the useability and stability.” Omura 1167; see id.
28—29; see Ans. 4. Omura teaches using “ingredient (e) in an
amount of 0.01 to 20 mass % in the total mass of the cosmetic.” Id. 1
30; see Ans. 4. Omura teaches “silicone surfactants such as a cross-
linked type polyglycerin modified silicone-containing an alkyl group,”
for example “a mineral oil-(lauryl dimethicone/polyglycerin 3) cross
polymer (‘KSG-810’; made by Shin-Etsu Chemical Co. Ftd.)” among
others. Omura 1180; see id. H 176—179; see Ans. 4 (“silicone
elastomer”).
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Application 13/781,896
FF3. Omura teaches that ultraviolet absorbers include “octyl-p-methoxy-
cinnamate (2-ethylhexyl-p-methoxycinnamate).” Omura 1114; see
also id. 1142; see Ans. 3 (“UV active”).
FF4. Omura teaches a suitable silicone oils include for example “methyl
polysiloxane, octamethyl siloxane, decamethyl tetrasiloxane, methyl
hydrogen polysiloxane, methylphenyl polysiloxane, hexamethyl
cyclotrisiloxane, octamethyl cyclotetrasiloxane, decamethyl
cyclopentasiloxane and the like may be illustrated.” Omura 1165; see
Ans. 4.
FF5. Omura’s teaches oil-in-water emulsions. See Omura 282—283
(Table II), see also id. 1112 (“the aqueous phase (i.e., outer phase) is
preferably 50.0 to 90.0 mass % based upon the total mass of the
cosmetic composition”); see Ans. 4.
FF6. The Specification teaches alkyl-containing polyglycerin-modified
silicone elastomers that include “lauryl dimethicone/polyglycerin-3
crosspolymer (KSG-810, KSG-820, KSG-830, & KSG-840 from
Shin-Etsu Chemical Co., Ltd.).” Spec. 7.
Principle of Law
“If the claim extends to what is obvious, it is invalid under § 103.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
The Examiner finds that Omura teaches an oil-in-water emulsion
comprising a UV active such as ethylhexyl salicylate and ethylhexyl
methoxycinnamate (see Ans. 3; FF1, FF3); a silicone oil (see Ans. 3; FF1,
FF4); a silicone elastomer (see Ans. 4; FF2); and water (see Ans. 4; FF5).
The Examiner finds that the Omura teaches using the silicone elastomer in
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Application 13/781,896
the composition in an amount from 0.01 to 20 mass % and that the UV
active can be present in an amount form 3—20 mass %. Ans. 5. Because the
silicone elastomer and UV active can both be present in the same amount
Omura’s teaching meets the claimed 1:1 ratio limitation. See id. (“if the UV
active present in 3 % or 20 % by mass and the cross-linked type
polyglycerin modified silicone containing an alkyl group present in 3 % or
20 % by mass, the ratio is 1:1”). The Examiner recognizes that Omura is
silent with respect to the shape of the silicone elastomer, but finds that this
structure would necessarily be present because “a chemical compound and
its properties are inseparable.” Ans. 5 (citing In re Spada, 911 F.2d 705, 709
(Fed. Cir. 1990)); compare FF2 and FF6. The Examiner concludes:
One of ordinary skill in the art would have been
motivated to combine the UV active (i.e. ethylhexyl
methoxycinnamate), the silicone elastomer (i.e. lauryl
dimethicone/polyglycerin-3 cross-polymer), the silicone oil and
the aqueous material (i.e. water) to produce a sunscreen
composition because the prior art Omura teach that the
combination of these ingredients can be made into a sunscreen
composition that has superior skin effects, i.e. very good SPF
sun protection, very good dispersibility immediately after
production, good stability and useability (i.e. slip/comfort in
application, roughness, residue, stickiness and moisture).
Ans. 6.
Appellant contends that “Omura does not teach silicone elastomers
swollen with UV oils.” Appeal Br. 3.
We are not persuaded. The contention lies with the interpretation of
the phrase “a silicone elastomer swollen in a liquid UV active” as claimed.
One reasonable interpretation of this limitation, and the one embraced by the
Examiner, is that the term “swollen” merely describes the state of silicone
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Application 13/781,896
elastomer, i.e. that it is in an expanded state as opposed to any other state.
See Ans. 8.
Since the UV-absorber (component b) and the silicone
surfactant (component e) are both present in the same
composition and are contacting . . . each other, the silicone
surfactant would necessar[il]y be swollen or further swollen in
the similar manner as claimed when contact [ed] with the same
UV active. . . . [T]he claims ... do not require the instant
composition to be made by a specific process (product-by­
process claim)
Id. (emphasis removed). We agree with the Examiner’s interpretation that
an expanded silicone elastomer surrounded by liquid UV active reasonably
meets the “silicone elastomer swollen in a liquid UV active” claim
limitation.
Given this reasonable interpretation, we agree with the Examiner’s
conclusion that the teaching of Omura renders the claimed sunscreen
composition obvious. Omura teaches the use of the same ingredients
including the same silicone elastomers, in overlapping ranges to achieve the
same purpose, in this instance to function as an emulsion-like sunscreen
cosmetic. See FF1—FF6.
Another interpretation of “a silicone elastomer swollen in a liquid UV
active,” urged by Appellant, is that the elastomer is swollen with a UV oil.
See Appeal Br. 3; see Spec. 18:13—30 (“The [commercially available]
silicone elastomers are supplied in a non-UV solvent. The solvent was
extracted and the silicone elastomer deswollen by solvent extraction
techniques described . . . prior to re-swelling with the liquid UV active”).
The Specification acknowledges that commercially available sunscreens
arrive in a swollen state albeit in a solvent that is not a UV oil. See Spec.
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Application 13/781,896
18:13—30. The Specification describes a process for exchanging the
shipping solvent of the silicone elastomer for a UV oil solvent. Id.
“[DJuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). “[WJhile it is true that claims are to be
interpreted in light of the specification and with a view to ascertaining the
invention, it does not follow that limitations from the specification may be
read into the claims.” Sjolund v. Musland, 847 F.2d 1573, 1581 (Fed. Cir.
1988). Appellants do not direct us to, and we do not find, a definition of
“swollen” in the Specification that expressly limits the claims. Because it is
not appropriate to import limitations from embodiments described in the
Specification into the claims we are not persuaded by Appellant’s contention
that the limitation of “a silicone elastomer swollen in a liquid UV active”
requires that the silicone elastomer is re-swollen in the UV oil, in other
words, that the shipping solvent is exchanged for a UV oil solvent.
Even if we were to interpret the limitation of “a silicone elastomer
swollen in a liquid UV active” as a process limitation, as urged by
Appellant, the claim would still be obvious because it is directed to a
composition. “The patentability of a product does not depend on its method
of production. ... If the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.” In re Thorpe,
111 F.2d 695, 697 (Fed. Cir. 1985). Omura teaches an oil-in-water
sunscreen compositions that includes a silicone elastomer, liquid UV active,
silicone oil, and water each in ranges that overlap the presently claimed
composition. See FF1—FF5. The preponderance of the evidence of record
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supports the Examiner’s conclusion that the claims are obvious based on the
teaching of Omura.
In the Reply Brief, Appellant contends that Omura does not teach or
suggest “a composition wherein the oil phase comprises at least about 60%,
by weight, of the liquid UV active.” Reply Br. 2. Appellant also contends
that the claims provide an unexpected benefit. Id. Appellant presents these
argument for the first time in the Reply Brief. Appellant does not explain
what good cause there might be to consider the new arguments. Appellant’s
new arguments are, thus, untimely and accordingly, have not been
considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010)
(informative).
SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) over
Omura. Claims 2—12 and 24—30 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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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