Katja Berg et al.

Patent Trials and Appeals Board

Feb 24, 2020

14639043 - (D) (P.T.A.B. Feb. 24, 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.
14/639,043 03/04/2015 Katja BERG BHD-4804-60 5742
23117 7590 02/24/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KATJA BERG, THOMAS RUDOLPH,
VOLKER SCHEHLMANN, CHRISTINA KAISER, and
HORST WESTENFELDER
____________

Appeal 2018-007913
Application 14/639,043
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–9 and 14.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as DSM IP
Assets B.V. (See Br. 2.)
2 We consider the Final Office Action issued September 7, 2017 (“Final
Act.”), the Appeal Brief filed February 7, 2018 (“Br.”), and the Examiner’s
Answer issued on May 17, 2018 (“Ans.”).
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INTRODUCTION
Appellant’s Specification provides light-protecting compositions
containing at least one polysiloxane-based UV filter (polysilicone-15
(PARSOL® SLX)) and at least one UV filter which contains bulky
substituents. (Specification dated March 4, 2015 (“Spec.”) 3.) The
Specification asserts that prior art compositions containing polysiloxane-
based UV filters required combination with compounds that did not include
bulky or stearically demanding substituents. (Id. at 2.) For example,
polysiloxane-based UV filters were combined with triazine compounds,
dibenzoyl methane derivatives, or 2-phenylbenzimidazole-sulphonic acid.
(Id.) The Specification asserts “on the basis of the prior art documents it
must be assumed that only UV-absorbing organic compounds which do not
have bulky or sterically demanding substituents are suitable for mixing with
chromophore-bearing polysiloxanes or cyclosiloxanes.” (Id.) In contrast,
the Specification asserts the invention involves the “unexpected finding” that
a sunscreen composition including a polysiloxane-based UV filter and at
least one additional UV filter containing a sterically demanding substituent
can increase the ratio of sun-protecting factor to the total amount of UV
filters. (Id. at 3.)
Appellant’s claim 1 recites:
A light protecting composition comprising:

a) polysilicone-15 (Parsol SLX),

b) at least one additional UV filter containing a sterically
demanding substituent which is selected from the group
consisting of 2-(4-diethylamino-2-hydroxy-benzoyl)-
benzoic acid hexylester, 4-methyl benzylidene camphor,
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and methylene bis-benzotriazol bis-
benzotriazotetramethylbutylphenol, and

c) a carrier for the components a) and b),

with the proviso that compounds selected from the group
consisting of:

4,4ʹ,4ʺ-(1,3,5-triazine-2,4,6-triyltriimino)-tris-benzoic-
acid-tris(2-ethylhexylester);
2,4-bis-{[4-(2-Ethyl-hexyloxy)-2-hydroxy]-phenyl}-6-(
4-methoxyphenyl)-1,3,5-triazine,
2,4-bis-{[4-(3-sulfonato)-2-hydroxy-propyloxy)-2-
hydroxy]-phenyl}-6-(4-methoxyphenyl)-1,3,5-
triazine sodium salt,
2,4-bis-{[4-(3-(2-propyloxy)-2-hydroxy-propyloxy)-2-
hydroxy]-phenyl}-6-(4-methoxyphenyl)-1,3,5-
triazine,
2,4-bis-{[4-(2-ethyl-hexyloxy)-2-hydroxy]-phenyl}-6-[4-
(2-methoxyethylcarboxyl)-phenylamino]-1,3,5-
triazine,
2,4-bis-{[4-(3-(2-propyloxy)-2-hydroxy-propyloxy)-2-
hydroxy]-phenyl}-6-[4-(2-ethyl-carboxyl)-
phenylamino]-1,3,5-triazine,
2,4-bis-{[4-(2-ethyl-hexyloxy)-2-hydroxy]-phenyl}-6-(1-
methyl-pyrrol-2-yl)-1,3,5-triazine,
2,4-bis-{[4-tris(trimethylsiloxy-silylpropyloxy)-2-
hydroxy]-phenyl}-6-(4-methoxy-phenyl)-1,3,5-
triazine,
2,4-bis-{[4-(2ʺ-methylpropenyloxy)-2-hydroxy]-phenyl}-
6-(4-methoxyphenyl)-1,3,5-triazine, and
2,4-bis-{[4-(1ʹ,1ʹ,1ʹ,3ʹ,5ʹ,5ʹ,5ʹ-heptamethylsiloxy-2ʺ-
methyl-propyloxy)-2-hydroxy]-phenyl}-6-(4-
methoxyphenyl)-1,3,5,-triazine,
are not present in the composition.

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(Br. 16–17 (emphasis added).) Thus, claim 1 includes two UV filters and a
carrier, but excludes certain triazine compounds.
Independent claims 8 and 9 recite similar compositions including
additional optional UV filters. (See Br. 18–21.)
The Examiner rejects the claims as follows:
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Final Office
Action
1–9, 14 103 Berg-Schultz3 3–6
1–9, 14 103 Quintini4 6–9

ANALYSIS
Claims 1–9, 14 obvious over Berg-Schultz
The Examiner finds Berg-Schultz teaches sunscreen compositions that
may include polysilicone-15 (PARSOL® SLX), 4-methylbenzlidene
camphor (PARSOL® 5000), and a carrier. (Final Act. 3–4.) The Examiner
finds that Berg-Schultz does not require triazine compounds in the
compositions. (Id. at 10.) Therefore, the Examiner determines that no
express rationale is required to exclude triazines from Berg-Schultz’s
compositions. (Id.) The Examiner concludes the claimed compositions are
obvious combinations of known components used for their known properties
to make a known product. (Id. at 5.)
Appellant argues that it would not have been obvious to exclude
triazine compounds from Berg-Schultz’s compositions. (Br. 11–12.)
Appellant argues that Berg-Schultz’s compositions exemplify the art-

3 Berg-Schultz, WO 03/068183 A1, published August 21, 2003.
4 Quintini, US 2003/0103915 A1, published June 5, 2003.
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recognized requirement of combining polysilicone-15 ((PARSOL® SLX)
with a triazine compound. (Id.) Appellant argues that U.S. Patent Number
5,882,6325 provides evidence that “triazine derivatives should be used in
order to increase the efficacy of the light protecting compositions.” (Id. at
12 (citing Allard 2:14–36).)
Appellant submits Dr. Rudolph’s Declaration6 as evidence of the level
of knowledge of one skilled in the art. (Id. at 13.) Dr. Rudolph attests to the
“art-recognized knowledge that [] triazine absorbers . . . should in fact be
combined with polysilicone-15 ((PARSOL® SLX)).” (Rudolph Decl. ¶ 2.)
Dr. Rudolph relies on product information for BASF UV Filters. (Id. ¶ 3.)
The product information states that UV filters may be used to provide UV-A
photostability in cosmetics, in addition to their known use in sun
preparations. (Id. ¶ 3(i).) Dr. Rudolph highlights UNIVUL® T150 and
TINOSORB® S as typical triazine UV-B absorbers that are commonly used
in cosmetic preparations, but are excluded from the claims. (Id.) The
product information states UNIVUL® T150 has “exceptionally high
absorptivity . . . at 314 nm,” and TINOSORB® S “is an outstanding stabilizer
for instable UV filters.” (Id. ¶ 3(ii).) Appellant argues that the state of the
art taught incorporating triazine UV filters excluded by claim 1, e.g.,
UNIVUL® T150 and TINOSORB® S; and, Berg-Schultz does not teach
excluding these UV filters. (Br. 14.)

5 Allard et al., US 5,882,632, issued March 16, 1999 (of record).
6 Declaration of Thomas Rudolph, Ph.D. dated July 25, 2017 (“Rudolph
Decl.”) (of record).
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We are not persuaded by Appellant’s arguments or evidence. We
begin with the prior art. Berg-Schultz teaches compositions that may
include UV-A and UV-B screening agents. (Berg-Schultz 5:10–22.)
Examples of UV-B screening agents include organosiloxane compounds
containing benzamalonate groups (e.g., polysilicone-15 ((PARSOL® SLX)),
camphor derivatives (e.g., 4-methyl benzylidene camphor (PARSOL®
5000)), and triazine derivatives such as octyl triazone (UVINUL® T-150))
and bis-ethoxyphenol methoxyphenyl triazine (TINOSORB® S). (Id. at
5:24–6:26.) Examples of UV-A screening agents include dibenzoylmethane
derivatives (e.g., PARSOL® 1789) and benzotriazole derivatives (e.g.,
TINOSORB® M). (Id. at 6:29–7:11.) Berg-Schultz teaches stabilizing
“limited-photostability” dibenzoylmethane derivatives (e.g., PARSOL®
1789) with organosiloxane-benzamalonate compounds (e.g., polysilicone-15
((PARSOL® SLX)). (Id. at 7:12–19.)
We agree with Appellant that Berg-Schultz’s examples teach
combinations of polysilicone-15 (PARSOL® SLX) and 4-methyl
benzylidene camphor with the excluded triazines, e.g., UVINUL® T-150.
(See Berg-Schultz 19–20 (Example 12), 21–22 (Example 14).) However,
even if we consider Berg-Schultz’s examples as preferred embodiments, “all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). As noted by
the Examiner, Berg-Schultz teaches combining polysilicone-15 (PARSOL®
SLX) with an additional UV-screening agent, e.g., 4-methyl benzylidene
camphor (PARSOL® 5000) or methylene bis-benzotriazol tetramethyl
butylphenol (TINOSORB® M). (See Berg-Schultz 5:10–7:11.) Considering
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the disclosure of Berg-Schultz as a whole, we do not find a teaching that
requires combining polysilicone-15 ((PARSOL® SLX) with a triazine
compound. (See id. generally.)
We next review Appellant’s submitted evidence. We find the
submitted evidence supports rather than contradicts the Examiner’s position.
Appellant cites Allard to teach that polysilicone-15 (PARSOL® SLX) must
be combined with a triazine compound. We do not agree with Appellant’s
interpretation of Allard. Allard teaches that triazine UV filters undergo
considerable chemical degradation when combined with dibenzoylmethane
derivatives (e.g., PARSOL® 1789). (Allard 2:14–21.) Allard teaches that
introducing an organosiloxane-benzamalonate compound (e.g., polysilicone-
15 (PARSOL® SLX)) in combination with a dibenzoylmethane derivative
and a triazine derivative provides for “photostability of [the] 1,3,5,-triazine
derivative in the composition.” (Id. at 2:27–2:35.) Thus, Allard confirms
Berg-Schultz’s teaching that organosiloxane-benzamalonate compounds are
used to stabilize other UV filters, and does not teach that organosiloxane-
benzamalonate compounds themselves must be combined with triazines.
Also, we are not persuaded by Dr. Rudolph’s Declaration. Dr.
Rudolph attests that triazine absorbers should be combined with
polysilicone-15 (PARSOL® SLX). (Rudolph Decl. ¶¶ 2, 4.) This statement
agrees with Allard’s teaching that triazine UV filters should be combined
with a stabilizing organosiloxane-benzamalonate compound (e.g.,
polysilicone-15 (PARSOL® SLX)). (See above.) This statement does not
provide any evidence that polysilicone-15 (PARSOL® SLX) could not be
used without a triazine compound.
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Dr. Rudolph’s Declaration further describes product information for
two triazine compounds. (Rudolph Decl. ¶ 3.) The product information
does not include any discussion of polysilicone-15 (PARSOL® SLX). (See
id.) In the absence of any information with respect to polysilicone-15
(PARSOL® SLX), the Declaration offers only opinion evidence which has
little value without factual support. See In re Beattie, 974 F.2d 1309, 1313
(Fed. Cir. 1992).
Accordingly, we agree with the Examiner’s conclusion that the
claimed compositions recite an obvious combination of familiar elements
according to known methods. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Appellant has not provided persuasive evidence that the
combination is more than the predictable use of prior art elements according
to their established functions. (See id. at 417.) Consequently, we sustain the
Examiner’s rejection of the claims as obvious over Berg-Schultz.

Claims 1–9, 14 obvious over Quintini
The Examiner finds Quintini teaches sunscreen compositions
containing one of components I or II, component II being polysilicone-15
(PARSOL® SLX), and one of components III–VI, component V being
methylene bis-benzotriazol tetramethylbutylphenol (TINOSORB® M), and a
carrier. (Final Act. 6–7.) The Examiner finds Quintini does not require any
of the excluded triazine compounds. (Id. at 10.) The Examiner determines
it would have been obvious for one of ordinary skill in the art to select each
the compounds disclosed in Quintini and formulate the claimed composition.
(Id. at 7–8.) Therefore, the Examiner concludes the claimed compositions
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would have been obvious as “a combination of known components used for
their known properties to make a known product.” (Id. at 8.)
Appellant argues the same rationale used to distinguish Berg-Schultz
“can likewise be applied to [Quintini].” (Br. 15.)
We are not persuaded by Appellant’s arguments and evidence for the
reasons set forth above. Accordingly, we sustain the Examiner’s rejection of
the claims as obvious over Quintini.

CONCLUSION
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
In summary:
Claims
Rejected
35 U.S.C. §  Basis Affirmed Reversed
1–9, 14 103 Berg-Schultz 1–9, 14
1–9, 14 103 Quintini 1–9, 14
Overall
Outcome
1–9, 14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED