The Procter & Gamble Company

Patent Trials and Appeals Board

Jun 2, 2020

2019005728 (P.T.A.B. Jun. 2, 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.
14/445,434 07/29/2014 Joseph HARRY JANSEN 13485 7085
27752 7590 06/02/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSEPH HARRY JANSEN and PAUL ROBERT TANNER
__________

Appeal 2019-005728
Application 14/445,434
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JAMES A. WORTH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
method of improving the look and feel of skin. The Examiner rejected the
claims as failing to comply with the written description requirement and as
obvious. 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
Procter & Gamble Company (see App. Br. 1).
2 We have considered and refer to the Specification of July 29, 2014
(“Spec.”); Final Action of Sept. 11, 2018 (“Final Act.”); Appeal Brief of
Apr. 9, 2019 (“Appeal Br.”); Examiner’s Answer of May 23, 2019 (“Ans.”);
and Reply Brief of July 23, 2019 (“Reply Br.”). We note the Examiner was
affirmed in Appeal 2017-007345, the previous appeal in this application.
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Statement of the Case
Background
Appellant’s application “relates generally to a multi-step method of
improving the appearance and feel of human skin.” Spec. 1:1–2. “More
specifically, the method includes applying a finisher composition that has a
high powder content and a UV agent as an overlying top layer to an
underlying layer of skin care composition, thereby improving the look and
feel of the treated skin.” Id. at 1:2–7.
According to the Specification, particulate materials have the benefit
of acting as an opacifying agent with a masking effect, but high levels of
powder can be difficult to spread on skin, can be noticeably white, and can
flake off skin. Id. at 2:4–14. Humectants have the benefits of reducing
visible texture and can improve skin strength and function but high levels of
glycerin can make skin look shiny and greasy, and glycerin can be thick and
slow to absorb into the skin. Id. at 2: 15–23. UV agents can protect the skin
from sun damage but can have a heavy, oily skin feel. Id. at 3:1–3.
The Specification describes a method of skin care based on the
application of an underlying layer and a finishing layer (powder layer),
where the finishing layer includes an oil-in-water emulsion with a
nonvolatile oil (a UV protectant) and spherical particles. Id. at 3:5–10,
7:24–8:2, 9:26–10:4. In some embodiments, the finishing composition is
free or substantially free of glycerin or other humectants. Id. at 3:5–10. The
Specification explains that powder may offset the undesirable greasiness
associated with oils and may diffuse light. Id. at 11: 13–17. According to
the Specification, it is important that the particles protrude from the dry film
formed by the skin care product in order to create a “rough” film and to
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diffuse light and reduce the surface area of the film contacted by the user's
hand. Id. at 11:28–12:4.
The Claims
Claims 1, 20–24, and 26 are on appeal. Independent claim 1 is
representative and read as follows:
1. A method of improving the look and feel of skin,
comprising:
a. applying an underlying layer of a skin care composition to a
target portion of skin; and
b. applying an overlying layer of a finisher composition on top
of the underlying skin care composition layer, wherein the
finisher composition is an oil-in-water emulsion comprising
i. a continuous aqueous phase that include about 20 to
85% by weight of the finisher composition of water,
ii. a dispersed oil phase comprising a non-volatile oil
comprising a liquid UV agent, wherein the liquid UV
agent is present at an amount of at least 50% by weight
of the dispersed oil phase,
iii. 10 to 25%, by weight of substantially spherical particles
selected from the group consisting of starch particles,
silicone elastomer particles and combinations thereof,
wherein the substantially spherical particles have a
particle size of from about 2 to 40 microns, the
substantially spherical particles being sized to protrude
from the underlying skin care composition layer,
iv. a weight ratio of the non-volatile oil to the substantially
spherical particles of about 1:4 to about 1:1,
v. optionally, about 1 to 20 wt% of a volatile oil, and
vi. wherein the finisher composition is substantially free of
glycerin, and comprises less than 1 wt% of a pigment.
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The Issues
A. The Examiner rejected claim 24 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement (Final Act. 3).
B. The Examiner rejected claims 1, 20–24, and 26 under 35 U.S.C.
§ 103(a) as obvious over Maitra3 and Rosevear4 (Final Act. 4–8).

A. 35 U.S.C. § 112(a)
The Examiner finds “[c]laim 24 specifies that the ‘finisher
composition comprises a chroma of less than about 10 according to the
Chroma Method,’ which finds no support in the disclosure as originally
filed, as the disclosure as originally filed mentions only a chroma value of
the first or powder layer” (Final Act. 3).
Appellant contends5 the Specification “discloses that ‘the chroma
value for the first layer or the powder layer is less than about 10 . . . . ’
Specification, page 25, lines 12 – 14.” (Appeal Br. 3). Appellant also cites
a separate portion of the Specification that “discloses that ‘[t]he second step
is applying a second layer, which is a finisher composition comprising high
levels of particulate material to provide a suitable powder layer.’ Page 7,
lines 25 – 27 of the specification (emphasis added)” (id.).

3 Maitra et al., US 2009/0148393 A1, published June 11, 2009.
4 Rosevear et al., US 7,172,754 B1, issued Feb. 6, 2007.
5 We note that this issue differs from the written description issue in our
earlier decision in Appeal 2017-007345 because the claim is limited to a
chroma “of less than about 10” here rather than “about 20” in the earlier
decision and because Appellant challenges the rejection here and did not
challenge the issue in the earlier appeal.
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Appellant contends that based on these disclosures: “(i) the finisher
composition provides the powder layer; (ii) the powder layer has a chroma
of less than 10; and (iii) a method for measuring chroma called the Chroma
Method, the amendment to claim 24 does not constitute new matter” (id.).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s finding that the Specification
fails to provide descriptive support for the limitation of claim 24 “wherein
the finisher composition further comprises a chroma of less than about 10
according to the Chroma Method?”
Findings of Fact
1. The Specification teaches “[t]he chroma for the individual
layers of the present invention, that is the chroma value for the first layer or
the powder layer is less than about 10, preferably less than about 6, and even
more preferably less than about 3” (Spec. 25:11–14).
2. The Specification teaches regarding the layers that “[t]here is
provided herein a multi-step process where the first step is applying a first
layer, which is a skin care product. The second step is applying a second
layer, which is a finisher composition comprising high levels of particulate
material to provide a suitable powder layer” (Spec. 7:24–27).
Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure . . . or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
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Analysis
In this case, the Specification and claim 1 both teach a method that
involves applying a first skin care product underlayer followed by applying a
second finisher compound layer that provides “a suitable powder layer” (FF
2; claim 1). The Specification also explains that for either the first layer or
the powder layer, the chroma value preferably “is less than about 10” (FF 1).
Because the Specification states the finisher compound layer provides the
powder level, we find that the ordinary artisan would have understood the
Specification to teach that this finisher layer should have a chroma value
“less than about 10” as desired for the powder layer (FF 1). We therefore
agree with Appellant that the Specification demonstrates possession of the
limitation of claim 24.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s finding that the Specification fails to provide descriptive support
for the limitation of claim 24 “wherein the finisher composition further
comprises a chroma of less than about 10 according to the Chroma Method.”

B. 35 U.S.C. § 103(a)
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the
combination of Maitra and Rosevear render claim 1 obvious?
Findings of Fact
3. Maitra teaches, regarding the preamble of claim 1 to improve
the look and feel of skin, “a system of two cosmetic compositions: the first
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composition provided to cover blemishes and the second composition to blur
lines and wrinkles” (Maitra ¶ 9).
4. Maitra teaches, regarding step (a) of claim 1, “a method of first
applying a composition to cover blemishes (basecoat) to a biological
surface” (Maitra ¶ 9).
5. Maitra teaches, regarding step (b) of claim 1, “applying a
composition to blur lines and wrinkles (topcoat) to the basecoat” where
“compositions can be formulated as . . . oil-in-water” emulsions (Maitra
¶¶ 9, 61).
6. Maitra teaches, regarding step (b)(i), that the “aqueous phase
may represent from about 0.5 weight% to about 99.99 weight%, based upon
the total weight of the composition” (Maitra ¶ 63).
7. Maitra teaches, regarding step (b)(ii), that “sunscreen protects
the skin from damaging ultraviolet rays. In an illustrative embodiment of
the invention, the sunscreen would provide both UVA and UVB protection .
. . The sunscreen may be present from about 1 weight% to about 30
weight% of the total weight of the composition” (Maitra ¶ 78).
8. Maitra teaches, regarding step (b)(iii), that “the diffused topcoat
incorporates light diffusing particles made of silica beads having a refractive
index of about 1.46” that “is preferably present from about 0.01 weight% to
about 50 weight% of the total weight of the composition” (Maitra ¶¶ 28, 30).
9. Maitra teaches, regarding step (b)(iii), that “[p]referably, the
total thickness of the topcoat and basecoat combined is less than
approximately 20 microns, more preferably between 2.0 and 20 microns in
thickness” (Maitra ¶ 35).
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10. Maitra teaches, regarding step (b)(v), that the compositions may
“comprise an oil phase containing” “silicone oils such as . . . non-volatile,
linear or cyclic polydimethylsiloxanes” and “[t]hese oils are usually present
in an amount of about 0 weight % to about 90 weight %, preferably from
about 1.0 weight% to about 80 weight% by weight of the oil phase” (Maitra
¶¶ 66, 67).
11. Rosevear teaches, regarding the claim 1 preamble, “a cosmetic
emulsion composition formulated to decrease facial shine known also as
gloss” (Rosevear 1:8–9).
12. Rosevear teaches, regarding step (b)(iii), the use of particles in
the cosmetic where “[m]ost preferred as the silicone elastomer is 9045 which
has a D5 cyclomethicone swelled elastomer particle size (based on volume
and calculated as spherical particles) which averages about 38 micron, and
may range from about 25 to about 55 micron” (Rosevear 6:37–41).
13. Rosevear teaches, regarding steps (b)(i) and b(iii), an oil-in-
water emulsion with 54% water, 20% silicone elastomer spherical particles
with an average size of 38 microns as shown in the table reproduced below:
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The table above shows the base formula for an oil-in-water cosmetic
emulsion (see Rosevear 15:5–26).
14. The Examiner calculates, regarding step (b)(ii), that “the liquid
sunscreen ethylhexylmethoxycinnamate (synonymous with octyl
methoxycinnamate) in concentrations of 6%, and the remainder of the non-
volatile oils in the oil phase comprising 1% silicone fluid, 0.78% glycerol
monostearate, and 0.5% DC5225, rendering the liquid sunscreen agent
greater than 50% of the non-volatile oil phase” (Final Act. 6).
15. The Examiner calculates, regarding the ratio recited in step
(b)(iv) of claim 1, that
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the compositions of Appellants Claims now require, by calculating
the concentration of non-volatile oil which must be present in the
compositions on the basis of limitations "iii" and "iv," between
2.5-25% nonvolatile oil (looking to the limitations of the claims
which requires that spherical particles present in concentrations of
between 10-25% by weight, and non-volatile oil present in weight
ratios of non-volatile oil to spherical particles of about I :4 to about
I: 1). Concentrations of UV agent present in the composition must
therefore fall within the range of at least 1.25 % of the composition
as a whole, to at least 25% of the composition as a whole, a range
which the 6% ethylhexylmethoxycinnamate of Rosevear falls
within and therefore renders obvious.
(Ans. 9).
16. Rosevear teaches: “Humectant may be incorporated into
compositions of the present invention. Humectants are normally polyols.
Representative polyols include glycerin, diglycerin, polyalkylene glycols
and more preferably alkylene polyols” (Rosevear 7:57–60).
17. Rosevear teaches, regarding step (b)(vi), that “examples of
particulate materials include colored and uncolored pigments, interference
pigments . . . Particulate materials may be present from about 0.01 % to
about 20%” (Rosevear 10:62–67).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
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Analysis
Prima facie obviousness
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 4–8; FF 1–17) and agree that claim 1
is rendered obvious by Maitra and Rosevear. We address Appellant’s
arguments below.
Appellant contends “[c]laim 1 recites, inter alia, that the liquid UV
agent is present at an amount of at least 50% of the dispersed oil phase. The
Final Rejection has not shown where this limitation is taught or suggested in
Maitra and/or Rosevear” (Appeal Br. 4). Appellant contends that Example
VI of Rosevear discloses “an oil-in-water emulsion comprising about
29.33% of an oil phase, which contains 6%, by weight of the composition, of
a liquid UV agent . . . the liquid UV agent in Example VI of Rosevear is
present at about 20.5% of the oil phase, which is substantially less than the
at least 50% required by claim 1” (id.). Appellant contends Rosevear
teaches “an oil-in-water emulsion comprising about 29.33% of an oil phase
(i.e., 20% DC9045, 6% Parsol MCX, 1.55% Cetyl Alcohol, I% 50 cSt
Dimethicone and 0.78% GMS)” (Reply Br. 2–3).
We recognize that claim 1 recites the UV agent “is present in an
amount of at least 50% by weight of the dispersed oil phase.” The Examiner
also states that the dispersed oil phase components in the Example at issue
(FF 13) in Rosevear are “ethylhexylmethoxycinnamate (synonymous with
octyl methoxycinnamate) in concentrations of 6%, and the remainder of the
non-volatile oils in the oil phase comprising 1% silicone fluid, 0.78%
glycerol monostearate, and 0.5% DC5225, rendering the liquid sunscreen
agent greater than 50% of the non-volatile oil phase” (FF 14).
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While Appellant suggests that the 20% DC9045 should be included as
a component of the oil phase, we find this argument unpersuasive. As a
matter of claim interpretation, claim 1 differentiates between a “dispersed oil
phase” in step (b)(ii) and the spherical particles in step (b)(iii). Because DC
9045 is relied upon for the spherical particle element of step (b)(iii), and
Rosevear clearly teaches that DC 9045 is a spherical particle (FF 12), we are
not persuaded by Appellant’s attempt to double count DC 9045 as both the
oil phase and the spherical particle. Thus, the Examiner’s calculation
showing that the ethylhexylmethoxycinnamate UV component at 6%
represents more than 50% of the remaining oil phase components including
silicone fluid, glycerol monostearate, and DC5225 is persuasive (see FF 14).
Appellant contends that it
appreciates that disclosure of overlapping ranges of particle sizes
in Maitra and/or Rosevear may result in a finding of prima facie
obviousness with regard to the limitation of a particle size of 2 - 40
microns. But the limitation of substantially spherical particles
being sized to protrude from the underlying skin care composition
layer is a separate element of the claim that must be considered in
view of the prior art.
(Appeal. Br. 6). Appellant contends that “the Office must meet a high
standard to rely on inherency to establish the existence of a claim limitation
in the prior art in an obviousness analysis-the limitation at issue necessarily
must be present” (id.).
We find this argument unpersuasive because Maitra teaches a
preferred total thickness of “between 2.0 and 20 microns” (FF 9) and
Rosevear teaches a most preferred particle of DC 9045 averages about 38
microns and may range from 25 to about 55 microns (FF 12). Inserting a 25
micron particle into a 20 micron thick layer is reasonably understood to
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necessarily result in protrusion of the particle because the particle has a size
larger than that of the layer (FF 9, 12). Having provided evidence that the
preferred particles of Rosevear when used in the preferred thickness of
layers of Maitra would have been expected to protrude, the burden now
shifts to Appellant to demonstrate otherwise with evidence or persuasive
argument. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical. . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products.”). Appellant has provided no such evidence or
argument.
Conclusion of Law
A preponderance of the evidence of record support the Examiner’s
conclusion that the combination of Maitra and Rosevear render claim 1
obvious.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Basis Affirmed Reversed
1, 20–24, 26 103  1, 20–24, 26 1, 20–24, 26
24 112(a),
written
description 
24 24
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Claims
Rejected
35 U.S.C. §  Basis Affirmed Reversed
Overall
Outcome
1, 20–24, 26
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