JOHNSON & JOHNSON CONSUMER INC.

Patent Trials and Appeals Board

Jul 14, 2020

14674536 - (D) (P.T.A.B. Jul. 14, 2020)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/674,536 03/31/2015 Susan Daly JCO5139USNP 5994
27777 7590 07/14/2020
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
VANHORN, ABIGAIL LOUISE
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SUSAN DALY,
PRITHWIRAJ MAITRA, and BARRY SETIAWAN
__________

Appeal 2019-006900
Application 14/674,536
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–10, 12, 14–18, 20, and 22–24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The sole rejection before us for review is the rejection of 1–4, 6–10,
12, 14–18, 20, and 22–24 on the ground of nonstatutory double patenting as

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that the real party in interest is “Johnson &
Johnson Consumer Inc., the assignee of record and a subsidiary of Johnson
& Johnson.” Appeal Br. 2.
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being unpatentable over claims 1–25 of Daly2 in view of Satonaka.3 Final
Act. 2–3 (entered June 1, 2018).
Appellant’s claim 1 is representative and reads as follows:
1. A sunscreen composition comprising:
a polymer composition comprising a linear UV-
absorbing polyglycerol comprising a UV-absorbing
chromophore covalently bound thereto; and
a cosmetically-acceptable topical carrier comprising at
least one percent of a non-UV-absorbing polyglycerol, based on
the total weight of said sunscreen composition.
Appeal Br. 7.
DISCUSSION
The Examiner’s Rejection
The Examiner cited claims 1–25 of Daly as reciting a sunscreen
composition differing from Appellant’s claimed composition only in that the
composition of the patented claims did not include a non-UV-absorbing
polyglycerol. Final Act. 3. The Examiner cited Satonaka as evidence that it
would have been obvious to include a non-UV-absorbing polyglycerol in the
sunscreen composition of the claims of the Daly patent. Id.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
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.

2 US 9,248,092 B2 (issued Feb. 2, 2016).
3 US 2011/0117034 A1 (published May 19, 2011).
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The judicially-created doctrine of obviousness-type double patenting
“prohibits the issuance of claims in a second patent that are not patentably
distinct from the claims of the first patent. A later patent claim is not
patentably distinct from an earlier claim if the later claim is obvious over, or
anticipated by, the earlier claim.” In re Hubbell, 709 F.3d 1140, 1145 (Fed.
Cir. 2013) (emphasis added; internal quotations and citations removed).
Having carefully considered the evidence and arguments advanced by
Appellant and the Examiner, Appellant does not persuade us that a
preponderance of the evidence fails to support the Examiner’s conclusion
that the sunscreen composition of Appellant’s representative claim 1 would
have been obvious in view of claims 1–25 of the Daly patent and Satonaka.
Appellant’s representative claim 1 recites a sunscreen composition
“comprising” two ingredients: (1) a linear UV-absorbing polyglycerol that
has a UV-absorbing chromophore covalently bound thereto, and (2) a
cosmetically-acceptable topical carrier that includes at least one percent of a
non-UV-absorbing polyglycerol, based on the total weight of the sunscreen
composition. Appeal Br. 7.
Claim 1 of Daly recites a composition that contains the UV-absorbing
polyglycerol contained in the composition of appealed representative claim
1. See Daly 35:34–38 (claim 1 of Daly reciting a composition that contains
a “polymer composition comprising a linear, ultraviolet radiation absorbing
polyether that comprises a covalently bound UV-chromophore and that
comprises a backbone having glyceryl repeat units”). As seen in claim 16 of
Daly, the patented composition is a sunscreen composition. Daly 36:21–22
(“The composition of claim 1 having an SPF of about 20 or greater.” (Claim
16)).
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The composition recited in the claims of the Daly patent does not
include at least one percent of a non-UV-absorbing polyglycerol, based on
the total weight of the sunscreen composition, as recited in appealed
representative claim 1. As the Examiner found, however, Satonaka discloses
that it was useful to include non-UV-absorbing polyglycerols in sunscreen
compositions. See Satonaka, abstract (disclosing “an ultraviolet absorber
water-dispersed composition, comprising . . . (A) a benzotriazole-type
ultraviolet absorber . . . and (B) polyglycerol monoalkyl ester with a mean
degree of polymerization of glycerol of 5 or more”).
Given Satonaka’s teaching, we are not persuaded by Appellant that
the Examiner erred in concluding that it would have been obvious to include
at least one percent by weight of a non-UV-absorbing polyglycerol in the
composition of claims 1–25 of the Daly patent.
In particular, the fact that the composition of Daly’s claims includes
an emulsifier does not persuade us that the composition of appealed
representative claim 1 would not have been obvious in view of the claims of
the Daly patent in combination with Satonaka. See Appeal Br. 4–5; see also
Daly 35:39-42 (sunscreen composition of Daly’s claim 1 including “an oil-
in-water emulsifier component comprising an anionic oil-in-water emulsifier
in an amount of about 0.5 percent to about 3 percent by weight of said
composition”). That is because representative claim 1 uses the term
“comprising” to define the composition of the appealed claim. Appeal Br. 7.
Because appealed representative claim 1 uses the term “comprising”
to define the composition of the appealed claim, appealed representative
claim 1 does not exclude the additional ingredients in Daly’s claimed
composition from the composition of the appealed claim. See Genentech,
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Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a
term of art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim.”). Appellant does not persuade us, therefore, that the
additional ingredients in the composition of Daly’s patented claims
demonstrate a difference between the composition of the patented claims
and the composition of appealed representative claim 1.
Appellant contends that, because polyglycerol monoalkyl esters are
nonionic compounds, whereas the composition of the claims of the Daly
patent include an anionic emulsifier, a skilled artisan “would not combine
the ’092 patent claims and Satonaka as argued by the Examiner.” Appeal
Br. 5; see also id. (“The only thing the [Daly] patent and Satonaka
compositions have in common is they contain (different) benzotriazole-type
UV absorber compounds. Everything else about the compositions is
different. Applicants submit this is not sufficient to support their
combination.”).
The Examiner responds:
Satonaka suggests and exemplifies emulsions (paragraph
0036 and example 10). These compositions are sunscreen
compositions comprising an oil phase and a water phase. The
compositions comprise a benzotriazole-type ultraviolet absorber
and a polyglycerol monoalkyl ester (reading on the instantly
claimed non-UV-absorbing polyglycerol). Amounts of the
ultraviolet absorber and ratios of the absorber to polyglycerol
compound are taught (paragraphs 0028-0029) overlapping with
the instant claimed amount. Satonaka teaches that the
composition enable the benzotriazole-type ultraviolet absorber
to be stably dispersed and can be blended with cosmetics of
various formulations (paragraph 0017). Since the instant claims
encompass UV-absorbing chromophores which are
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benzotriazole-types (instant claims 15-17) and so does [the
Daly] patent[](claim 21), one skilled in the art would have been
motivated to add the non-polyglycerol of Satonaka for added
stability as suggested by Satonaka.
Ans. 4–5.
We find that the Examiner has the better position. Appellant does not
identify any persuasive evidence supporting its assertion that non-UV-
absorbing polyglycerols would have been considered incompatible with
sunscreen compositions, such as those of the claims of the Daly patent, that
include an anionic emulsifier. Nor does Appellant identify error in the
Examiner’s finding that Satonaka teaches that non-UV-absorbing
polyglycerols were known to be useful in sunscreen compositions, including
emulsions, in concentrations encompassed by appealed representative claim
1.
Accordingly, for the reasons discussed, we are not persuaded that
Appellant has identified error in the Examiner’s conclusion that the
composition of appealed representative claim 1 would have been obvious
over claims 1–25 of the Daly patent in view of Satonaka. We therefore
affirm the Examiner’s rejection of representative claim 1 for obviousness-
type double patenting over claims 1–25 of the Daly patent and Satonaka.
Because they were not argued separately, claims 2–4, 6–10, 12, 14–18, 20,
and 22–24 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 6–10,
12, 14–18,
20, 22–24
Nonstatutory
Double
Patenting
Daly,
Satonaka
1–4, 6–10,
12, 14–18,
20, 22–24

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED