Philbin, Michael Timothy.

Patent Trials and Appeals Board

Dec 9, 2019

14650423 - (D) (P.T.A.B. Dec. 9, 2019)

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.
14/650,423 06/08/2015 Michael Timothy Philbin SPG11406-US-P1 1025
152163 7590 12/09/2019
Nouryon Chemicals LLC
525 W. Van Buren
Suite 1600
Chicago, IL 60607
EXAMINER
PHAN, DOAN THI-THUC
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
12/09/2019 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):
nouryon@lkglobal.com
sc-ipani@nouryon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL TIMOTHY PHILBIN
Appeal 2019-004412
Application 14/650,423
Technology Center 1600
Before RACHEL H. TOWNSEND, DAVID COTTA, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, 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, 3–5, 9, 10, 12, and 13. See Final
Act. 2. 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 the assignee, Akzo
Nobel Chemicals International B.V. Revised Brief on Appeal, filed Jan. 16,
2019, at 2.
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CLAIMED SUBJECT MATTER
The claims are directed to skin care formulations. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A skin care formulation comprising:
a polymer derived from
at least one acid-containing monomer that is
methacrylic acid,
at least one N-alkyl (meth)acrylamide monomer
selected from the group consisting of N-n-butyl acrylamide, N-
n-octylacrylamide, N-t-butyl acrylamide, N-t-octylacrylamide
and mixtures thereof, and
optionally at least one alkyl (meth)acrylate monomer
selected from the group consisting of n-butyl acrylate, isobutyl
acrylate, n-butyl methacrylate, isobutyl methacrylate, and n-
octyl methacrylate,
wherein the methacrylic acid is present from about 12
to about 23 weight percent of the total monomer content in the
polymer and wherein the N-alkyl (meth)acrylamide monomer is
present from 27 to 88 weight percent of the total weight of the
monomer content in the polymer, with the proviso that when the
methacrylic acid is present at greater than 16.0 weight percent of
the total monomer content then the N-alkyl (meth)acrylamide
monomer is present at greater than 60.0 weight percent of the
total monomer content of the polymer; and
at least one sunscreen active agent,
wherein said skin care formulation is a non-emulsion,
volatile solvent-based formulation.
Appeal Br.2 10 (Claims Appendix).

2 As used herein, “Appeal Brief” and “Appeal Br.” refer to the Revised Brief
on Appeal, filed Jan. 16, 2019.
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REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Martino US 5,288,493 Feb. 22, 1994
REJECTION
Claims 1, 3–5, 9, 10, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Martino. Final Act. 3.
OPINION
Appellant argued the claims as a group. See, e.g., Appeal Br. 3–9.
We select claim 1 as representative, and the remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Martino teaches “skin care compositions
with improved rub-off resistance comprising a copolymer comprising a) 10-
75% by wt. of a C1 to C18 alkyl acrylate/methacrylate, b) 10-70% by wt. of
C1 to C18 N-substituted alkyl acrylamide, and c) 5-40% by wt. of
unsaturated carboxylic acid having 3 to 5 carbon atoms.” Final Act. 3–4
(citing Martino Abstract, 1:40–55, 2:12–23, Example 1, claims 1 and 9–11).
The Examiner further found that Martino’s copolymer can consist essentially
of the monomers isobutyl methacrylate, t-octylacrylamide, and methacrylic
acid. Final Act. 4 (citing Martino claims 1 and 9–11). The Examiner found
that the amounts of monomers in Martino’s copolymer overlap with the
claimed amounts of monomers, and that a person of ordinary skill in the art
would have “routinely optimize[d] the wt% amount of alkyl
acrylate/methacrylate, N-substituted alkyl acrylamide and methacrylic acid
in the copolymer of Martino and achieve[d] the claimed invention.” Final
Act. 4; see also Ans. 4–5.
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The Examiner further found that Martino teaches the skin care
composition can comprise UV-light inhibitors, and a solvent system that
includes ethanol. Final Act. 4 (citing Martino 1:51–56, 3:41, 4:19–51,
claims 1, 2). The Examiner stated:
[A]t least claims 1, 2 and 6 from Martino particularly teach[] all
the structural elements of the skin care formulation that is non-
emulsion, volatile solvent-based containing the polymer derived
from methacrylic acid, N-alkyl (meth)acrylamide monomer and
alkyl (meth)acrylate monomer and the sunscreen active of the
claimed invention, and with monomers content in the polymer
within or overlapping the ranges of the claimed invention.
Final Act. 12.
We agree with the Examiner’s factual findings and conclusion that the
claimed invention would have been obvious to one of ordinary skill in the art
over Martino. We also agree with the Examiner that on this record,
Appellant has not demonstrated unexpected results sufficient to support a
conclusion of nonobviousness. We address Appellant’s arguments below.
Appellant argues that Martino would have led a person of ordinary
skill in the art “away from the non-emulsion, volatile solvent-based
formulations to which claim 1 is limited,” because Martino’s preferred
vehicle is an emulsion, and because Martino exemplifies a volatile solvent
system only in an antifungal topical spray, not in a sunscreen. Appeal Br. 5
(citing Martino 2:57); Reply Br. 2 (citing Martino Example IV).
We are not persuaded that Martino teaches away from non-emulsion,
volatile solvent-based formulations. “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”
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Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013).
“A reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed.” Id. (citation
omitted). Here, although Martino teaches a preference for emulsions, it
additionally teaches that the vehicle can comprise a solvent such as ethanol.
See Martino 2:54–56, 4:19–51. Appellant has not demonstrated that Martino
criticizes, discredits, or otherwise discourages use of a non-emulsion,
volatile solvent-based formulation. Accordingly, we are not persuaded that
Martino teaches away.
Appellant additionally argues that Martino differs from the present
claims with respect to the amount of monomer. According to Appellant,
Martino teaches that the acrylamide is preferably present in a range of 20–40
wt%, and more preferably 25–35 wt%, whereas in Appellant’s claim 1, “the
acrylamide is present at 27 to 88 wt%, which extends far beyond the
preferred range of Martino.” Appeal Br. 5–6 (citing Martino 2:27–29).
Appellant additionally argues that according to claim 1, “when the
methacrylic acid is present at greater than 16.0 wt% then the N-alkyl
(meth)acrylamide monomer is present at greater than 60.0 wt%, which is
outside the preferred range of Martino.” Appeal Br. 5–6 (citing Martino
2:27–29).
We are not persuaded by Appellant’s argument. Appellant narrowly
focuses on the preferred ranges in Martino, while ignoring Martino’s broader
teaching that the acrylamide is present in a range of 10–70%. See, e.g.,
Martino 1:51–52, 2:19–20, claim 1; Ans. 10. Accordingly, the claimed
range does not extend as far beyond Martino’s disclosed ranges as Appellant
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suggests. More importantly, both Martino’s preferred ranges (20–40 wt%,
25–35 wt%) and broader range (10–70 wt%) of acrylamide overlap with the
claimed range (27–88 wt%). As noted by the Examiner, a “prima facie case
of obviousness exist[s] when the claimed ranges overlap or lie inside ranges
disclosed by the prior art.” Ans. 20 (citations and internal quotations
omitted). Given the overlap between the monomer ranges disclosed in
Martino and those claimed by Appellant, we agree with the Examiner that
Appellant’s claims are prima facie obvious over Martino.
In the Reply Brief, Appellant for the first time argues that a person of
ordinary skill in the art would have “select[ed] copolymers with only lower
levels of acrylamide, not the broader upper ranges as presently claimed,”
based on their comparatively better rub-off resistance. Reply Br. 2 (citing
Martino 6:57–67). Appellant did not raise this argument in its Appeal Brief,
and has not demonstrated any specific Examiner findings presented for the
first time in the Answer necessitating this specific new argument in rebuttal
in the Reply Brief. Thus this argument is waived. See 37 C.F.R. §
41.37(c)(1)(iv) (2015); see also Ex Parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”).
Appellant also argues that Martino would have provided “no guidance
to the skilled artisan trying to solve the problem of tackiness, or trying to
provide an SPF boost to a sun care formulation,” because Martino does not
recognize the problem of tackiness or the possibility that the choice of
monomers and their proportions can affect SPF and tack values. Appeal
Br. 6. We are not persuaded by this argument, because to render an
invention obvious, the prior art does not have to address the same problem
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addressed by a patent applicant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007) (“In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. What matters is the objective reach of the claim. If
the claim extends to what is obvious, it is invalid under § 103.”). As stated
above, the Examiner has set forth a sufficient prima facie case of
obviousness based on Martino. Martino’s lack of recognition of a
relationship between monomers and their proportions and SPF and tack
values does not undermine the prima facie case of obviousness.
Appellant additionally argues that varying the proportions of
monomers “is not a matter of routine optimization,” because “one skilled in
the art would first have had to understand that varying the proportions of the
monomers in the film-forming polymer would have an effect on the SPF of
the formulation.” Appeal Br. 8; see also Reply Br. 6. We are not persuaded
by this argument. It is well-settled that absent unexpected results, “[w]here
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation,” where the optimized variable is a result-effective variable.
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955)). “A recognition in the prior art
that a property is affected by the variable is sufficient to find the variable
result-effective.” Applied Materials, Inc., 692 F.3d at 1297.
Here, Martino teaches that “improved rub-off resistance is attained by
including an effective amount of a copolymer comprising”
acrylates/methacrylates, N-substituted acrylamides, and an unsaturated
carboxylic acid in certain ranges. Martino 1:40–63. In other words, Martino
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teaches that optimizing the proportions of the disclosed monomers within
the disclosed ranges affects rub-off resistance. Accordingly, contrary to
Appellant’s suggestion (Appeal Br. 8), the Examiner has adequately
identified why it would have been routine optimization to adjust the amount
of monomers to arrive at the claimed invention through routine optimization,
as required by In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017).
Appellant additionally argues that “patentability is predicated on the
unexpected results of reduced tack and SPF boost achieved with the claimed
skin care formulations.” Appeal Br. 3. Appellant presents data from a
number of sunscreen formulations comprising polymers having different
proportions of monomers. Appeal Br. 3–4. According to Appellant, the
formulations in Examples 2–5, 12, 14, and 16 fall within the scope of
claim 1. See Reply Br. 5. Appellant asserts that “while all the polymers of
Examples 1–21 showed some increase in SPF relative to the prior art
Dermacryl® 79, Examples 2–5, 12, 14, and 16 . . . showed a surprisingly
large increase in SPF.” Appeal Br. 4.
“[T]he burden of showing unexpected results rests on [the party] who
asserts them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Purported
unexpected results “must be shown to be unexpected compared with the
closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (citation omitted). “A comparison of the claimed invention with the
disclosure of each cited reference to determine the number of claim
limitations in common with each reference, bearing in mind the relative
importance of particular limitations, will usually yield the closest single
prior art reference.” In re Merchant, 575 F.2d 865, 868 (CCPA 1978).
Appellant may show improved results over prior art that is even closer to the
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claimed subject matter than the prior art cited by the Examiner. See Ex parte
Humber, 217 USPQ 265 (BPAI 1981); MPEP § 716.02(e).
The Examiner identified Martino as the closest prior art.3 See Final
Act. 14; Ans. 18; see also Advisory Action, July 30, 2018, 4. As discussed
above, Martino discloses polymers containing the same monomers recited in
Appellant’s claims, in amounts that encompass or overlap with the amounts
recited in Appellant’s claims. As also discussed above, Martino discloses
that the polymers can be included in formulations that contain UV-light
inhibitors and a solvent system that includes ethanol.
Appellant did not present a comparison of a claimed formulation
against a formulation containing a polymer from Martino. Rather, Appellant
compared claimed formulations to a formulation containing Dermacryl® 79,
an “Acrylates Octylacrylamide Copolymer,” which polymer Appellant
characterized as the “industry standard.” Spec. 35; Reply Br. 6. On this
record, Appellant has neither explained how Dermacryl® 79 compares to the
claimed polymers, nor established that it is closer to the claimed polymers
than those disclosed in Martino. Accordingly, on this record, we determine
that Appellant has not carried its burden of showing unexpected results that
when considered together with the evidence of obviousness relied on by the
Examiner would support a conclusion of non-obviousness.

3 In the Reply Brief, Appellant for the first time questions the Examiner’s
finding that Martino constitutes the closest prior art. Reply Br. 6. Appellant
did not raise this argument in its Appeal Brief, and has not demonstrated any
specific Examiner findings presented for the first time in the Answer
necessitating this specific new argument in rebuttal in the Reply Brief. Thus
this argument is waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2015); see also Ex
Parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).
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Appellant argues that the “unexpected SPF boost and reduction in tack
of the claimed formulations differ in kind from the rub-off resistance of the
Martino formulations, thereby supporting a conclusion of non-obviousness.”
Appeal Br. 9. We are not persuaded by this argument, because as discussed
above, the purported “unexpected SPF boost and reduction in tack of the
claimed formulations” has not been established in comparison to the closest
prior art, and thus is not persuasive evidence of unexpected results.
Appellant also argues that “the Office discounts [the] demonstration
of unexpected results by refusing to accord patentable weight to the
limitation that defines the unexpected results.” Appeal Br. 8; Reply Br. 6.
According to Appellant, the proviso clause4 “limits the claimed formulations
to include those which give unexpected results in terms of SPF boost and
reduced tack, while excluding those which do not provide the same level of
SPF improvement and tack improvement.” Appeal Br. 7. We are not
persuaded.
The Examiner appropriately explained that the proviso limitation does
not limit the claim to those formulations that demonstrate the purported
unexpected results. See, e.g., Ans. 14–17. Indeed, the proviso limitation is
conditional, and Appellant itself asserts that formulations that do not meet
the proviso limitation but still fall within claim 1 demonstrate unexpected
results. See Reply Br. 5 (arguing that Examples 2, 3, and 14 (among others)
fall within claim 1 but outside the proviso); Appeal Br. 4 (arguing that

4 The “proviso clause” is the limitation to claim 1 that provides: “with the
proviso that when the methacrylic acid is present at greater than 16.0 weight
percent of the total monomer content then the N-alkyl (meth)acrylamide
monomer is present at greater than 60.0 weight percent of the total monomer
content of the polymer.”
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Examples 2, 3, and 14 (among others) “showed a surprisingly large increase
in SPF”).
Further, as noted above, the Examiner appropriately rejected the
unexpected results because they were not based on a comparison to the
closest prior art. See, e.g., Final Act. 14 (“Applicant is reminded that the
evidence of nonobviousness shown in the Declaration dated 03/23/2017 . . .
was drawn to comparing the claimed formulation to a commercially
available product of Dermacryl®79 (acrylates/octylacrylamide copolymer),
which contain[s] a polymer that is different from Martino’s polymer.”); Ans.
18 (“The Dermacryl®79 (acrylates/octylacrylamide copolymer) contains a
polymer that is different from Martino’s polymer and thereby, is an
insufficient comparison for showing nonobviousness.”).
CONCLUSION
We affirm the rejection of claims 1, 3–5, 9, 10, 12, and 13 under 35
U.S.C. § 103(a) as being unpatentable over Martino.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 9,
10, 12, 13
103 Martino 1, 3–5, 9,
10, 12, 13

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