Von Der Fecht, Stephanie et al.

Patent Trials and Appeals Board

Oct 1, 2019

14376977 - (D) (P.T.A.B. Oct. 1, 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.
14/376,977 08/06/2014 Stephanie Von Der Fecht 3321-P50148 6789
13897 7590 10/01/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHANIE VON DER FECHT,
SVENJA LENA MOELLGAARD, PETRA KOCH, and ISABEL BALCKE
____________

Appeal 2019-003580
Application 14/376,977
Technology Center 1600
____________

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

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/376,977

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Introduction
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 40–59 (Appeal Brief filed October 19,
2018 (“App. Br.”) 6, 10.)
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Introduction
Appellant’s Specification provides a water-in-oil (W/O) emulsion
comprising at least two W/O emulsifiers and at least one oil with a
spreadability value greater than 600 mm2/10 min. (Specification dated
August 6, 2014 (“Spec.”) 1:3–5.) The Specification discloses that
polyethylene glycol (“PEG”) based emulsifiers are known for stabilizing
W/O emulsions and are commonly used in cosmetic products. (See Spec.
2:5–11.) However, consumers desire products that are free of PEG-based
emulsifiers, due PEG’s lack of photo-stability and concerns about increased
skin permeability to harmful substances. (See Spec. 2:13–23.) The
Specification discloses that “[s]uprisingly, by using two W/O emulsifiers
according to the invention in combination with the readily spreadable oils, it
has been possible to” provide readily distributable lotions without using
PEG emulsifiers. (Spec. 6:24–7:3.)
Appellant’s claim 40 recites:
A cosmetic and/or dermatological preparation,

wherein the preparation is flowable at room temperature
and is a water-in-oil emulsion comprising

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 Beiersdorf
AG. (See App. Br. 3.)
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(i) at least two W /0 emulsifiers

and from 5 % to 30 % by weight, based on a total
weight of the preparation, of (ii) two or more oils having
a spreadability value greater than 600 mm2/10 min.
and/or at least one oil having a spreadability value greater
than 1000 mm2/10 min.

(App. Br. 15.) Appellant’s independent claim 57 is substantially similar to
claim 40, and includes the limitations that the W/O emulsifiers differ in their
HLB value by at most 0.5, at least one oil having a spreadability value
greater than 1000 mm2/10 min., and from 10% to 15% by weight glycerol.
(App. Br. 17–18.) Appellant separately argues dependent claims 46, 52, and
59, which we address below. (App. Br. 9, 11.)
The Examiner rejects the claims2 under 35 U.S.C. § 103(a)(pre-AIA)
as follows (Final Office Action mailed March 22, 2018 (“Final Act.”) 5, 8):

2 The Examiner withdrew a rejection under 35 U.S.C. § 112, fourth
paragraph, in view of the After-Final Amendment dated May 21, 2018.
(Advisory Action mailed June 5, 2018.)
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Claims References Final Office Action
Citation
40, 42–45, and 47–55 Bleckmann3 5–8
41, 46, and 56–59 Bleckmann, Suzuki,4
and Degussa5
8–10

Analysis
Claims 40, 42–45, and 47–55
The Examiner finds that Bleckmann teaches water-in-silicone
emulsions used for flowable lotions, comprising two emulsifiers and a lipid
phase. (Final Act. 5–6, citing Bleckmann ¶¶ 17, 18, 64–66.) The Examiner
finds Bleckmann teaches the lipid phase includes a silicone oil, e.g.,
cyclomethicone, and additional oils, e.g., isopropyl palmitate, isopropyl
myristate, dicaprylyl carbonate, isopropyl stearate, isohexadecane, and
dicaprylyl ether, and mixtures thereof. (Id., citing Bleckmann ¶¶ 21–34, 66.)
The Examiner finds that Appellant’s Specification discloses that the oils
taught by Bleckmann have spreadability of greater than 600 mm2/10 min., or
greater than 1000 mm2/10 min. (Id. at 6, citing Spec. 10, Table 1.) For
example, cyclomethicone has a spreadability of 804–845 mm2/10 min.,

3 Bleckmann et al., US 2005/0002888 A1, published January 6, 2005.
4 David Suzuki Foundation, The Dirty Dozen: PEG Compounds and their
Contaminants (2018), available at: https://davidsuzuki.org/queen-of-
green/dirty-dozen-peg-compounds-contaminants/ (accessed September 20,
2019).
5 Degussa, ISOLAN GPS Technical Datasheet (2003), also available at:
http://glenncorp.com/wp-content/uploads/2013/11/DS_ISOLAN_GPS_e.pdf
(accessed September 20, 2019).
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isopropyl palmitate has a spreadability of 625 mm2/10 min., and dicaprylyl
ether has a spreadability of 1020 mm2/10 min. (Spec. 10, Table 1.)
The Examiner finds Bleckmann teaches the oils are present at 20% to
35% based on the total emulsion, which overlaps the claimed range of 5% to
30%. (Final Act. 6, citing Bleckmann ¶ 47.) As to claim 52, which recites
that the two or more oils comprise isopropyl palmitate and C13–16 isoparaffin,
the Examiner finds isohexadecane is an adjacent homolog of C13–16
isoparaffin. (Id. at 7.) The Examiner finds that one of ordinary skill in the
art would have expected the two oils to have similar emulsion properties,
and therefore the use of C13–16 isoparaffin would have been prima facie
obvious. (Id.)
Appellant argues that Bleckmann’s emulsions are water-in-silicone
(“W/S”) emulsions and not ordinary W/O emulsions. (App. Br. 7.)
Appellant argues that the Bleckmann’s emulsifiers are suitable for W/S
emulsions only. (See id.) Appellant argues further that Bleckmann’s W/S
emulsions require at least 50% by weight silicone in the lipid phase and
Bleckmann does not teach combinations of silicone with other oils having
the claimed spreadability values. (See id. at 7–8.) Appellant generally
argues that the exemplified compositions of Bleckmann do not teach a
second oil in the lipid phase, or a combination of two emulsifiers. (See id. at
7–8.)
We are not persuaded by Appellant’s arguments. First, we begin with
the alleged distinction between the claimed W/O emulsion and Bleckmann’s
W/S emulsion. Appellant’s Specification discloses cyclomethicone, a
silicon oil, as an oil having a spreadability value greater than 600 mm2/10
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min. Therefore, the broadest reasonable interpretation of the claims, in view
of the Specification, encompasses a W/O emulsion containing a silicon oil in
the lipid phase, i.e., a W/S emulsion. Additionally, prior art references may
be indicative of what those skilled in the art generally believe a certain term
means and can often help to demonstrate how a disputed term is used by
those skilled in the art. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999) (internal citations omitted). Degussa refers to “W/O emulsions having
high contents of silicon oils (e.g., cyclopentasiloxane).” Degussa 2.
Therefore, the prior art supports that a person of ordinary skill in the art
would have considered Bleckmann’s W/S emulsions to be a species of a
W/O emulsion. “It is well settled that a generic claim cannot be allowed to
an applicant if the prior art discloses a species falling within the claimed
genus.” In re Slayter, 276 F.2d 408, 411 (CCPA 1960).
Second, we address Appellant’s arguments that Bleckmann’s
exemplified compositions do not include a second oil in the lipid phase, or a
combination of two emulsifiers. In other words, Appellant seeks to limit
Bleckmann’s teachings to the preferred embodiments. However, a reference
must be considered for everything that it teaches, not simply the described
invention or a preferred embodiment. In re Applied Materials, Inc., 692
F.3d 1289, 1298 (Fed. Cir. 2012). Bleckmann teaches the silicon oil content
of the lipid phase can be 50 to 100% by weight. (Bleckmann ¶ 34.)
Accordingly, up to 50% of the lipid phase may include other oils, including
those having a spreadability value greater than 600 mm2/10 min. and greater
than 1000 mm2/10 min. The additional oils taught by Bleckmann include
those encompassed by the claims. Although Bleckmann discloses numerous
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potential combinations for preparing flowable cosmetic lotions, “disclos[ing]
a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose taught by the prior art.” Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Likewise,
Bleckmann expressly teaches any desired mixtures of two emulsifiers for the
compositions, and is not limited to only one emulsifier as disclosed in some
of the exemplified compositions. (Bleckmann ¶ 17.) Accordingly, we are
not persuaded that the Examiner erred.
Appellant argues further that the Examiner has not provided a
motivation to select the specific oils of claim 52, isopropyl palmitate and
C13–16 isoparaffin, from the “virtually infinite number of combinations”
taught by Bleckmann. (App. Br. 9.) As discussed above, Bleckmann
teaches compositions for preparing flowable cosmetic lotions, i.e., the
identical purpose of the claimed invention. Therefore, disclosing a
multitude of effective combinations does not render any particular
formulation taught by Bleckmann less obvious. Merck, 874 F.2d at 804.
Moreover, 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). The
Examiner has shown that Bleckmann would have motivated one of ordinary
skill in the art prepare flowable cosmetic lotions by combining familiar
elements according to known methods. Therefore, we are not persuaded that
the Examiner erred.

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Claims 41, 46, and 56–59
Independent claim 57 includes the limitations that: 1) the emulsifiers
differ in their HLB value by at most 0.5; 2) at least one of the oils has a
spreadability value greater than 1000 mm2/min.; and 3) that the preparation
includes from 10% to 15% by weight glycerol. (App. Br. 17–18.) Claims
46 and 59 recite a combination of diisostearoyl polyglyceryl-3 dimer
dilinoleate and polyglyceryl-4 diisostearate polyhydroxystearate sebecate as
W/O emulsifiers. (App. Br. 16, 18.)
The Examiner finds that Bleckmann teaches compositions including
moisturizers, e.g., glyercol at 5% to 25% (Final Act. 8, citing Bleckmann
¶¶ 44–46, 66.) The Examiner finds Bleckmann teaches oils having
spreadability greater than 1000 mm2/10 min., e.g., dicaprylyl ether. (See
above.) The Examiner finds Bleckmann does not teach that the emulsifiers
differ in their HLB by at most 0.5. (Final Act. 8.)
The Examiner finds that Suzuki teaches PEG containing compounds
may act as penetration enhancers allowing for absorption of harmful
ingredients, and may be contaminated with carcinogens. (Id. at 9, citing
Suzuki 1.) The Examiner finds Degussa teaches that polyglyceryl-4
diisostearate/ polyhydroxystearate/sebecate (“ISOLAN GPS”) is a PEG-free
W/O emulsifier. (Id. at 9, citing Degussa 1.) Degussa teaches ISOLAN
GPS can be used for the formulation of light W/O emulsions having high
contents of silicone oils. (Examiner’s Ans. mailed February 4, 2019
(“Ans.”) 7, citing Degussa 1.) The Examiner finds that Degussa teaches
ISOLAN GPS may be combined with distearoyl polyglyceryl-3 dimer
dilinoleate (“ISOLAN PDI”) to obtain W/O emulsions with lower viscosity,
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and that the HLB values of both of these emulsifiers is about 5. (Final Act.
9, citing Degussa 1.) The Examiner determines it would have been obvious
to use the PEG-free emulsifiers in Bleckmann’s W/O emulsions to avoid the
disadvantages of PEG emulsifiers taught by Suzuki. (Id.)
Appellant argues that the two ISOLAN emulsifiers having an HLB of
about 5, i.e., polyglyceryl-4 diisostearate/polyhydroxystearate/sebecate and
distearoyl polyglyceryl-3 dimer dilinoleate, are structurally completely
different from the silicon-containing emulsifiers taught by Bleckmann.
(App. Br. 11.) Appellant argues that because the ISOLAN emulsifiers do
not contain silicon, there is no reasonable expectation of success in
combining the emulsifiers with Bleckmann’s W/S emulsions. (App. Br. 12.)
Appellant argues further that none of the “exemplified formulations of
ISOLAN [Degussa] contain any silicone” and that “only one of the five
exemplified compositions of Bleckmann contains more than one emulsifier.”
(Id.) Finally, Appellant argues that Bleckmann’s W/S emulsifiers are
already PEG-free and therefore, there is no reason for one of ordinary skill
in the art to replace these emulsifiers with other PEG-free emulsifiers.
(Reply Brief filed April 3, 2019 (“Reply Br.”) 5.)
We are not persuaded by Appellant’s arguments. Degussa expressly
teaches using ISOLAN GPS to formulate W/O emulsions having high
contents of silicone oils, as well as lotions with an oil phase contents of 18%
to 30%. (Degussa 2.) Bleckmann teaches lotion formulations having high
contents of silicone oils and oil phase contents of 20% to 35%. Therefore,
Degussa provides express motivation to combine the emulsifiers with
Bleckmann’s formulations, wherein a person of ordinary skill in the art
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would have had a reasonable expectation of success. That both references
are directed to formulating PEG-free lotions confirms the Examiner’s
obviousness determination. “If a person of ordinary skill can implement a
predictable variation [of a known work], § 103 likely bars its patentability.”
KSR, 550 U.S. at 417. Accordingly, we sustain the Examiner rejection of
claims 40–59 as obvious over the prior art.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
40, 42–45, and
47–55
Bleckmann 40, 42–45, and
47–55

41, 46, and 56–59 Bleckmann, Suzuki,
and Degussa
41, 46, and
56–59

Overall Outcome 40–59

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

AFFIRMED