Ex Parte Fares et al

Patent Trial and Appeal BoardOct 31, 2018

14110955 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/110,955 10/10/2013 67749 7590 11/02/2018 Ashland LLC WILLIAM J. DA VIS, ESQ. 1005 U.S. 202/206 Bridgewater, NJ 08807 FIRST NAMED INVENTOR Hani M. Fares 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3487USPCT 4140 EXAMINER AHMED, HASAN SYED ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): ntietcheu@ashland.com wdavis@ashland.com schen@ashland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANI M. FARES, DONALD I. PRETTYP AUL, and DIANE M. KENNEDY 1 Appeal2017-009051 Application 14/110,955 Technology Center 1600 Before ULRIKE W. JENKS, CHRISTOPHER G. P AULRAJ, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving the Examiner's obviousness and obviousness-type double patenting rejections of claims to a sun-care product. We have jurisdiction under 35 U.S.C. Â§ 6(b). 2 1 Appellants identify the Real Party in Interest as Ashland, Inc. Appeal Br. 4. 2 We have considered and herein refer to the Specification of Oct. 10, 2013 ("Spec."); Final Office Action of Mar. 16, 2016 ("Final Act."); Appeal Brief of Dec. 15, 2016 ("Appeal Br."); Examiner's Answer of Apr. 7, 2017("Ans."); and Reply Br. of June 7, 2017 ("Reply Br.). Appeal2017-009051 Application 14/110,955 We summarily affirm the obviousness-type double patenting rejections, but reverse the obviousness rejection. STATEMENT OF THE CASE "It is now generally accepted that ultraviolet (UV) radiation can be a serious health hazard." Spec. ,r 2. "One approach to help reduce or prevent UV damage is the use of sun-care products that contain one or more UV actives." Spec. ,r 5. Sun-care products, especially those that apply clear on dry skin, typically run, drip, and/or tum cloudy/white when applied to wet skin. These effects are more than just cosmetic, as they can result in inconsistent, incomplete, or variable protection from UV damage, which is the very reason for product use. Hence, products are needed that substantially resolve these drawbacks. Spec. ,r 6. The Specification describes "sun-care products that do not tum white, or run/drip when applied to wet skin." Spec. ,r 8. Claims 1, 4, 6-12, 14, 15, and 17-20 are on appeal. Claim 1 is illustrative and reads as follows: 1. A substantially anhydrous sun-care product comprising: (A) a cosmetically-acceptable, substantially non- aqueous vehicle comprising at least 10% by weight esters based on the total weight of the non-aqueous vehicle, and (B) a UV active, wherein the non-aqueous vehicle comprises an alcohol selected from the group consisting of ethanol, 1-propanol, 2- propanol, and combinations thereof; and an ester such that the dielectric constant of the non-aqueous vehicle is about 20 or less and the sun-care product is substantially non-whitening upon application to wet skin; wherein the sun-care product comprises no more than 10% (w/w) water and having 50% (w/w) or less of the alcohol. 2 Appeal2017-009051 Application 14/110,955 The claims stand rejected as follows: Claims 1, 4, 6-12, 14, 15, and 17-20 have been rejected under 35 U.S.C. Â§ I03(a) as unpatentable over McCrea3 in view of Polonka4 in further view of Teng. 5 Claims 1, 4, 6-12, 14, 15, and 17-20 have been rejected for non- statutory obviousness-type double patenting over USSN 13/500,540 now US 9,855,448 B2 which issued on Jan. 2, 2018. Claims 1, 4, 6-12, 14, 15, and 17-20 have been rejected for non- statutory obviousness-type double patenting over USSN 13/388,688 now US 9,320,701 B2 which issued on Apr. 26, 2016. OBVIOUSNESS-TYPE DOUBLE PATENTING Appellants have offered no arguments with respect to these rejections. Therefore, we summarily affirm these rejections. 37 C.F.R. Â§ 4I.37(c)(l)(iv); See Manual of Patent Examining ProcedureÂ§ 1205.02 (9th Ed., Rev. 08. 2017, Jan. 2018) ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer."). 3 McCrea et al., US 5,444,096, issued Aug. 22, 1995 ("McCrea"). 4 Polonka et al., US 2009/0324659 Al, published Dec. 31, 2009 ("Polonka"). 5 Teng et al., US 4,193,989, issued Mar. 18, 1980 ("Teng"). 3 Appeal2017-009051 Application 14/110,955 OBVIOUSNESS The Examiner finds that McCrea teaches "an anhydrous composition for topical delivery of a topically-active component." Final Act. 2. The Examiner finds that the composition of McCrea may comprise a non- aqueous vehicle comprising an alcohol and an ester. Id. at 3. The Examiner finds that McCrea also teaches that the topically active component can be a sunscreen agent. Id. The Examiner finds that Polonka teaches a sun-care product comprising a cosmetically acceptable vehicle, alcohol, an ester and composite particles which provide UV protection. Id. at 4. The Examiner finds that while neither McCrea nor Polonka teach the use of the specific alcohols recited in the claims, the use of ethanol in sunscreen compositions was known in the art, as taught by Teng. Turning to the dielectric constant recited in claim 1, the Examiner finds that the claimed composition is the same as that taught by the art and that the burden is on Appellants to show that the claimed composition has different properties than the prior at. Id. at 5. Id. The Examiner concludes It would have been obvious to a person of ordinary skill in the art at the time the invention was made to disclose a substantially anhydrous sun-care composition comprising a substantially non-aqueous vehicle, which in tum comprises ethanol, and a UV active agent, as taught by McCrae in view of Polonka further in view of Teng. One of ordinary skill in the art at the time the invention was made would have been motivated to make such a composition because it is stable and provides UV photo protection (see above). 4 Appeal2017-009051 Application 14/110,955 Appellants contend that the claims as written specifically exclude the hydrophobic alcohols recited in McCrea. Appeal Br. 14. Appellants contend that the Markush group reciting hydrophilic alcohols precludes the inclusion of hydrophobic alcohols. Id. Appellants argue that McCrea and Teng are not combinable in that it is improper to substitute a hydrophilic alcohol for a hydrophobic alcohol. Id. at 16. Appellants also contend that McCrea teaches away from the proposed combination. Id. Finally, Appellants argue that the claimed composition "prevents the undesirable emulsification of the sun-care product on wet skin." Id. Principles of Law In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. "[The Examiner] can satisfy this burden only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references." The patent applicant may then attack the Examiner's prima facie determination as improperly made out, or the applicant may present objective evidence tending to support a conclusion of nonobviousness. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted). Analysis The issue we decide with respect to this rejection is whether a preponderance of the evidence supports the Examiner's conclusion that it would have been obvious to one skilled in the art to use the ethanol of Teng as the volatile liquid carrier in McCrea. Ans. 6-7. We determine that the Examiner does not explain adequately why one skilled in the art would have 5 Appeal2017-009051 Application 14/110,955 been motivated to make such a substitution. Specifically, the Examiner has failed to adequately explain why one skilled in the art would substitute the ethanol disclosed in Teng for the volatile hydrocarbons in McCrea. Thus, based on the record before us, we find that the Examiner has failed to establish a prima facie case of obviousness. McCrea teaches: The volatile liquid carrier included in a composition of the present invention also can be a volatile hydrocarbon, such as a hydrocarbon including from about 10 to about 30 carbon atoms, that has sufficient volatility to slowly volatilize from the skin or hair after application of the topically-effective composition. The volatile hydrocarbons provide essentially the same benefits as the volatile silicones, such as lubrication and a rich feel during application. McCrea col. 10, 11. 7-15 (emphasis added). McCrea also teaches that preferred hydrocarbons have a boiling point of from 100Â°C to 300Â°C. McCrea col. 10, 11. 16-19. The Examiner does not sufficiently explain why one skilled in the art would use ethanol, which has only two carbons, 6 as a substitute for a hydrocarbon having from about 10 to 30 carbons nor has the Examiner pointed to any teaching or suggestion in the references to make such a substitution. Moreover, as shown in the passage quoted above, McCrea teaches that the volatile liquid carrier should slowly volatize from the skin. Ethanol, 6 The chemical formula of ethanol is C2HsOH. Ethyl alcohol, Hawley's Condensed Chemical Dictionary (12th ed. 1993). 6 Appeal2017-009051 Application 14/110,955 with a boiling point of about 78Â°C7 is volatile and would be expected under normal conditions to volatilize quickly when applied to the skin. Again, the Examiner has not adequately explained why, given the different boiling points of ethanol and the preferred hydrocarbons of McCrea, one skilled in the art would use ethanol in the compositions of McCrea. Combinations that change the "basic principles under which the [prior art] was designed to operate," In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art "inoperable for its intended purpose," In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness. Conclusion of Law We conclude that a preponderance of the evidence does not support the Examiner's conclusion that the subject matter of the claims would have been obvious over McCrea combined with Polonka and Teng. SUMMARY We affirm the rejections for non-statutory obviousness-type double patenting. We reverse the rejection under 35 U.S.C. Â§ 103(a). 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. Â§ 1.136(a). AFFIRMED 7