Symrise AG

Patent Trials and Appeals Board

Mar 17, 2022

2021001551 (P.T.A.B. Mar. 17, 2022)

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. 15/778,693 05/24/2018 Gerhard SCHMAUS 1507-247 4456 28249 7590 03/17/2022 DILWORTH & BARRESE, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): usptomail@dilworthbarrese.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERHARD SCHMAUS, SABINE LANGE, ANN CHRISTIN WESELOH, and DOMINIK STUHLMANN Appeal 2021-001551 Application 15/778,693 Technology Center 1600 Before DONALD E. ADAMS, TINA E. HULSE, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims to a delivery system including a body comprising a non-woven fibrous material with an active-substance oil in water emulsion preparation printed thereon and a separate wetting liquid including water and at least one active as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Symrise AG. (Appeal Br. 3.) Appeal 2021-001551 Application 15/778,693 2 STATEMENT OF THE CASE Appellant’s Specification notes that “face masks and facial sheet masks are a growing category worldwide as delivery systems for actives to the skin.” (Spec. ¶ 3.) Appellant’s Specification indicates that “the efficacy of the delivery of actives in known release systems are often not satisfying.” (Id. ¶ 4.) Appellant’s invention is directed to a delivery system to provide actives onto the skin. (Id. ¶ 6.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A delivery system, comprising (i) a basic body, (ii) an active-substance preparation, and (iii) a separate wetting liquid, wherein (i) the basic body comprises a non-woven fibrous material, (ii) the active-substance preparation is an o/w emulsion which is printed onto the basic body (i), (iii) the wetting liquid comprises water and at least one active other than water to start liberation of an active agent of the active-substance preparation, and said active agent is selected from (a) whitening or brightening agents and (b) carriers. (Appeal Br. 23.) A requirement for an election of species with respect to the active agent of the active-preparation, among other things, was made by the Examiner during prosecution, and Applicant elected diphenylmethanes. (See Non-Final Office Action dated August 14, 2019 .) A subsequent requirement for election of species was made on January 15, 2020 regarding the “at least one active other than water” in the wetting liquid. (Final Action 2.) Applicant elected menthyl ethylamido oxalate. (Id.) Appeal 2021-001551 Application 15/778,693 3 We limit our discussion and consideration of the Examiner’s rejection to the elected species, and take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). The prior art relied upon by the Examiner is: Name Reference Date Roswell et al. US 4,070,496 Jan. 24, 1978 Pregozen US 5,141,803 Aug. 25, 1992 Surburg et al. US 8,344,025 Jan. 1, 2013 Schmidt et al. US 2007/0224231 A1 Sept. 27, 2007 Baldo US 2007/0248633 A1 Oct. 25, 2007 Hasenoehrl et al. WO 99/21532 May 6, 1999 The following ground of rejection by the Examiner is before us on review: Claims 1, 2, 4-8, 10, and 16-18 under 35 U.S.C. § 103 as unpatentable over Schmidt, Baldo, Pregozen, Hasenoehrl, Roswell, and Surburg. (See Ans. 4, 8.) DISCUSSION The Examiner found that Schmidt teaches a wipe substrate having a cleansing and moisturizing composition for topical application “to cleanse the skin, prevent and/or treat acne and moisturize in a single step.” (Final Action 4-5.) The Examiner further found that the skin care composition comprises salicylic acid as an active agent, is in the form of a thin emulsion, and may be impregnated into the wipe substrate “and dried to form a dry wipe which is required to be wetted, for example with water, before it can be used.” (Id. at 5 (citing Schmidt ¶ 56); id. at 7 (“Schmidt teaches that an Appeal 2021-001551 Application 15/778,693 4 example of a wetting agent is water, thus a skilled artisan would recognize that the wetting agent isn’t limited to water.”).) The Examiner further found that Schmidt teaches that the composition may be applied to the substrate by any suitable method, such as by immersing the substrate into the composition or by coating the substrate with the composition, e.g., by spraying. (Id. at 6 (citing Schmidt ¶ 55).) The Examiner noted that Schmidt does not teach that the active agent is diphenylmethane or that the emulsion is printed onto the substrate. (Final Action 5.) The Examiner determined that those limitations would have been obvious from the teachings of Baldo and Pregozen. (Id. at 6-7.) In particular, the Examiner found that Baldo teaches a composition to apply to the skin that can be used to treat acne where the composition can include at least one hydroxylated diphenylmethane along with at least one ingredient promoting its solubilization, activity and/or stabilization. (Id. at 6.) The Examiner found that it would have been obvious to include the hydroxylated diphenylmethane along with at least one ingredient promoting its solubilization, activity and/or stabilization of Baldo into the composition of Schmidt to have a wipe that would have “enhanced benefits of treating acne lesions.” (Id.) The Examiner found that “[o]ne of skill in the art would have a reasonable expectation of success as both Schmidt and Baldo teaches compositions designed to treat acne.” (Id.) The Examiner found that Pregozen teaches wipes impregnated with an aqueous composition that can be applied in any of a number of “well-known ways, such as spraying, padding, printing and gravity application.” (Final Action 6 (citing Pregozen 5:15-20).) The Examiner found that it would have been obvious to apply the emulsion of Schmidt as modified by Baldo “in any Appeal 2021-001551 Application 15/778,693 5 of the ways well known in the art, such as by printing.” (Id.) The Examiner found that one of skill in the art would have a reasonable expectation of success of using the printing technique mentioned in Pregozen as “it[’]s prima facie obvious to pursue the known options within the technical grasp of the skilled artisan to achieve the predictable result of obtaining a wipe impregnated with a composition.” (Id. at 6-7.) Regarding the claimed separate wetting liquid required to include “water and at least one active other than water to start liberation of an active agent of the active-substance preparation,” the Examiner found that such would have been obvious from the teachings of Hasenoehrl, Roswell, and Surburg. (Final Action 7.) The Examiner found that Hasenoehrl teaches cleansing and conditioning articles for use on the skin or hair where the article “is a dry product that is used by the consumer by wetting the dry article with water.” (Id. (citing Hasenoehrl Abstr.).) The Examiner further found that: Hasenoehrl teaches the wetting agent to be an aqueous solution, for example water, a skilled artisan would recognize that the wetting agent isn’t limited to water, but could be an aqueous solution comprising water and other components. (Id.) The Examiner found Roswell teaches cleansing tissues that include components known to have a physiological cooling effect on the skin and Surburg teaches that menthyl ethylamido oxalate is a known physiological cooling agent. (Final Action 7.) The Examiner stated that it would have been obvious for one of ordinary skill in the art to add a cooling agent, such as menthyl ethylamido oxalate, to Schmidt in light of these teachings in order Appeal 2021-001551 Application 15/778,693 6 to provide the composition with a physiological cooling effect on the skin. (Id.) The Examiner further found that it would have been obvious to include the menthyl ethylamido oxalate cooling agent with the wetting agent rather than the emulsion of Schmidt given the teachings of “Hasenoehrl who teaches that the wetting agent can be an aqueous solution which are known to be able to comprise components other than water” and because the placement in either the emulsion on the wipe of Schmidt or in the wetting agent “is simply a matter of design choice and given the finite number of options.” (Id. at 7-8; Ans. 9.) We do not agree with the Examiner that Hasenoehrl teaches the use of an “aqueous solution” as the wetting agent for use with its claimed cleansing and conditioning articles. (See Appeal Br. 16.) And we do not agree that the applied prior art would have rendered obvious the delivery system having a wetting liquid that comprises water and at least one active other than water that is menthyl ethylamido oxalate that is separate from the non-woven fibrous material containing an active-substance preparation that includes diphenylmethanes. Hasenoehrl mentions an “aqueous solution” with reference to a description of those fragrance-releasing complexes or technologies that are preferred for use in the personal cleansing articles, not the wetting agent to be used with the personal cleansing articles. Hasenoehrl states: Preferred fragrance technologies are those which (i) protect the fragrance from loss, oxidation, and chemical reaction, before use by the consumer and (ii) effectively release the fragrance upon wetting with an aqueous solution, e.g., water. … Appeal 2021-001551 Application 15/778,693 7 Preferred fragrance-releasing complexes are those which (i) protect the fragrance from loss, oxidation, and chemical reaction, before use by the consumer and (ii) effectively release the fragrance upon wetting with an aqueous solution, e.g., water. (Hasenoehrl 27.) On the other hand, regarding using the cleansing article with a wetting liquid, Hasenoehrl states in the abstract: “These articles are used by the consumer by wetting the dry article with water.” This statement is repeated again in the Technical Field of the invention. (Id. at 1.) A stated object of the invention is “to provide personal cleansing and conditioning articles which consistently deliver fragrance wherein the articles are used in combination with water.” (Id. at 3.) Similarly, in a description of the use of the personal cleansing article depicted in a particular figure, it is stated that a disposable cleansing and conditioning “article 20 can be wetted with water to activate the surfactant, and the airflow generated through the apertures 102 during use of the article (e.g., washing or wiping) can help to generate lather.” (Id. 13.) And in the section particularly focused on Methods of using the articles of the invention Hasenoehrl states: The articles of the present invention are substantially dry and are intended to be wetted with water prior to use. The article is wetted by immersion in water or by placing it under a stream of water. (Id. at 70−71.) In view of the constant and consistent description of wetting the personal cleansing and conditioning articles with “water,” we do not agree with the Examiner that Hasenoehrl teaches the wetting liquid to be an “aqueous solution” which might comprise other components. (See Appeal Br. 16.) Appeal 2021-001551 Application 15/778,693 8 Schmidt teaches that the “the wipe substrate may be impregnated with the skincare composition and dried to form a dry wipe which requires to be wetted, for example with water, before it can be used.” (Schmidt ¶ 56.) The Examiner asserts that one of ordinary skill in the art would have understood the use of the phrase “for example with water” to mean the wetting agent is not limited to water. (Final Action 7; Ans. 8.) We agree. It might be that other liquids besides water would be reasonably understood by one of ordinary skill in the art to be useable to wet a wipe substrate containing cleansing and/or moisturizing ingredients to be applied to the skin, e.g., lemon juice or milk or distilled water. However, we determine that the Examiner has not provided sufficient evidence to support a conclusion that one of ordinary skill in the art would have used a water based solution including other active agents as a wetting liquid to wet a dry wipe substrate impregnated with cleansing and moisturizing ingredients to be applied to the skin. As Appellant notes, Schmidt does not teach or suggest a separate wetting agent containing other active agents. (Appeal Br. 14-15.) 2 2 Appellant additionally argues that Schmidt does not teach or suggest water is used to release/deliver the actives from the dry wipe taught by Schmidt. (Appeal Br. 14-15 (“there is no suggestion wetting the basic body would automatically liberate the active preparation printed thereon.”); Reply Br. 2 (“there is nothing in this reference that would teach or suggest using simply water for re-wetting and release of the actives.”).) We agree with the Examiner that this argument is directed to the use of the system claimed and not the structural elements required. (See Ans. 10.) We note that the intended use of a composition forming part of a system does not differentiate that composition from a composition known in the art. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]erms [that] merely set forth the intended use for, or a property inherent in, an otherwise old composition . . . do not differentiate the claimed composition from those known in the prior art.”); see also Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, Appeal 2021-001551 Application 15/778,693 9 Schmidt describes in great detail formulating a skin care composition for application to the skin (see, e.g., Schmidt ¶¶ 7-53) and that the wipe is impregnated with that composition that includes the skin care ingredients (Id. ¶ 56). And, as we noted above, Hasenoehrl teaches water, not an aqueous solution, for wetting a personal cleansing article. Similarly, Roswell teaches including a phosphine oxide providing physiological cooling effect to the skin that is provided on a cleansing tissue or in a preparation that is applied to the skin, such as a cosmetic cream, lotion or a soap. (Roswell Abstr.; see also id. 3:52-55 (the compounds of the invention “find utility” “as additives for consumer products which are prepared for human body use.”).) Roswell teaches that the cooling agent is included in the composition that is placed directly on the skin or is provided as part of a composition that is placed on a substrate which substrate is applied to the skin. (See Appeal Br. 16.) Roswell does not teach or suggest adding a cooling agent to water to wet a substrate that is then to be applied to the skin. Surburg teaches other compounds that are not the phosphine oxides discussed in Roswell that also “can bring about a physiological cooling action on the skin,” namely specific oxalic acid derivatives. (Surburg 1:11- 13.) Thus, Surburg does not provide any reason for one of ordinary skill in the art to add a cooling agent to water to wet a substrate that is then to be applied to the skin. 809 (Fed. Cir. 2002) (“[T]he patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.”). Appeal 2021-001551 Application 15/778,693 10 Baldo is not relied upon by the Examiner for any teaching regarding additional agents being present in a wetting liquid. We find the Examiner’s use of “design choice” “given finite number of options” (Final Action 8) to swap the cooling agent from the composition impregnated in or coated on a tissue or other substrate to be applied to the skin into a wetting liquid in view of the foregoing teachings to be improperly driven by hindsight. The Examiner has not established with evidence that it was known in the art to employ aqueous solutions having active agents therein as a liquid to wet a substrate prior to use, much less substrates that are already coated or impregnated with active agents to treat the skin. And Roswell teaches to include cooling agents in the composition to be directly applied to the skin or in the composition that is included on the substrate to be applied directly to the skin. Consequently, we do not affirm the Examiner’s rejection of claims 1, 2, 4-8, 10, and 16-18 under 35 U.S.C. § 103 as unpatentable over Schmidt, Baldo, Pregozen, Hasenoehrl, Roswell, and Surburg. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-8, 10, 16-18 103 Schmidt, Baldo, Pregozen, Hasenoehrl, Roswell, Surburg 1, 2, 4-8, 10, 16-18 REVERSED