Ex Parte Fassih et al

Patent Trials and Appeals BoardMar 25, 2019

14150038 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/150,038 01/08/2014 27777 7590 03/27/2019 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Ali Fassih 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. JC05087USDIV1 4276 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 03/27/2019 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALI F ASSIH and YING SUN Appeal2018-005912 Application 14/150,038 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 seek review of claims 32- 36, 41--47, and 49. We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons set forth below, we AFFIRM. STATEMENT OF THE CASE The Specification describes powder-to-liquid particles comprising a liquid core that is substantially free of water and comprises a polar liquid that has a percent surface polarity of at least 24%, surrounded by a shell 1 Appellants identify the Real Party in Interest as Johnson & Johnson Consumer Inc. App. Br. 2. Appeal2018-005912 Application 14/150,03 8 comprising hydrophobic particles. Spec. 1. Claim 32 is illustrative and is set forth below: 32. A powder comprising dry core/shell particles having an average particle size of less than 1000 microns, each core/shell particle comprising: 1) a liquid core that is an emulsion substantially free of water, wherein the emulsion includes a continuous phase comprising a polar liquid having a percent surface polarity of at least 24% measured without the dispersed phase or surfactant, a dispersed phase comprising a hydrophobic component and a hydrophobically modified polymeric surfactant selected from the group consisting of inulin lauryl carbamate and sodium hydrolyzed potato starch dodecenylsuccinate, and 2) a shell comprising hydrophobic particles. The Examiner rejected claims 32-36, 41--45, 47, and 49 under 35 U.S.C. Â§ I03(a) as being obvious over Riedemann2 in view ofFriedman3 and Booten4, as evidenced by Beneo. 5 The Examiner rejected claims 32-36, 41--47, and 49 under 35 U.S.C. Â§ I03(a) as being obvious over Riedemann in view of Friedman and Booten, as evidenced by Beneo and Eng. 6 2 Riedemann et al., US 2012/0315312 Al, published Dec. 13, 2012 ("Riedemann"). 3 Friedman, U.S. Patent No. 6,544,530 Bl, issued April 8, 2003 ("Friedman"). 4 Booten et al., Polymeric, carbohydrate-based surfactants and their use in personal care applications, SOFW-JOURNAL, Vol. 130(8), 10-16 (2004) ("Booten"). 5 Practical Guidelines to INUTEC SP 1, Beneo Bio Based Chemicals, 1-13 (2009) ("Beneo"). 6 Eng et al., WO 2011/076518 Al, published June 30, 2011 ("Eng"). 2 Appeal2018-005912 Application 14/150,03 8 ISSUES AND ANALYSIS We affirm the Examiner's obviousness rejections. We address the arguments raised by Appellants below. Obviousness A claimed invention is unpatentable if the differences between it and the prior art are "such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. Â§ 103(a) (pre-AIA). To assess whether the subject matter would have been obvious, the Board follows guidance in Graham v. John Deere Co., 383 U.S. 1 (1966) and KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Under that guidance, the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. Thus, 35 U.S.C. Â§ 103 requires an inquiry into "'whether the improvement is more than the predictable use of prior-art elements according to their established functions."' Monolithic Power Sys., Inc. v. Micro Int'! Ltd, 558 F.3d 1341, 1352 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 417). Applying this standard, we conclude that the Examiner did not err in determining that the claims would have been obvious to an ordinarily-skilled artisan over the cited prior art. The Examiner finds that Riedemann teaches "core-shell particles suitable for cosmetic purposes with a high content of 60 to 100 wt% glycerol (polar liquid) comprising the liquid phase (continuous phase) comprising the core (abstract; paragraphs [0037] and [0046])." Final Act. 4. The Examiner also finds that Riedemann discloses that "[t]he core-shell particles have a particle size of 0.1 to 50 microns, preferably from 1 to 10 microns 3 Appeal2018-005912 Application 14/150,03 8 (paragraph [0010])" and that "[t]he exemplary core-shell particles are in the form of a free-flowing powder (dry) (Table 2)." Id. According to the Examiner, Riedemann also teaches that "[t]he liquid phase comprising the core can either be a solution, an emulsion ( dispersed phase) or a constituent of a dispersion (dispersed phase) (paragraph [0010])" and includes embodiments in which the liquid phase does not comprise any water. Id. at 5 (citing Riedemann ,r 38). The Examiner also finds that Riedemann teaches that the liquid phase may include cosmetic auxiliaries and/or active ingredients that can influence the surface tension of the liquid phase, but that the surface tension of this phase should generally be 55 to 75 mN/m at 25 QC. See id. (citing Riedemann ,r,r 39-40, 42, 43). The Examiner further finds that the glycerol of Riedemann necessarily (inherently) meets the claimed limitation of having a percent surface polarity of at least 24% measured without the dispersed phase or surfactant since, for instance, the instant Specification lists the percent surface polarity of glycerol as 30.56. See id. at 6 (citing Riedemann 42 (example 1 of Table 2)). Appellants do not contest the above-referenced factual findings of the Examiner. The Examiner concedes that Riedemann does not teach a dispersed phase comprising a polymeric surfactant selected from the group consisting of inulin carbamate and sodium hydrolyzed potato starch dodecenylsuccinate but finds that this deficiency is made up for in the teachings of Friedman and Booten. Final Act. 6. Specifically, the Examiner finds that Friedman "teaches a stable oil-in-glycerin (glycerol) emulsion containing about 0.1 to 40 wt% of at least one oil (dispersed phase comprising a hydrophobic component), about 0.1 to 20 wt% of at least one emulsifier and glycerin (continuous phase comprising a polar liquid that is a 4 Appeal2018-005912 Application 14/150,03 8 polyol) (abstract; claims 1, 10 and 12)." Id. The Examiner also finds that Friedman teaches that the emulsifier may be "an ester of fatty acid/s and carbohydrates or poly-carbohydrate saccharides (hydrophobically modified polymeric swfactant)" or "an ether of fatty alcohol/s and carbohydrates or poly-carbohydrate saccharides (hydrophobically modified polymeric surfactant) (column 3, lines 11-20)." Id. at 7. Furthermore, the Examiner finds that Booten teaches: [I]nulin lauryl carbamate INUTECÂ® SPl surfactants are a new class of polymeric, carbohydrate based surfactants suitable for personal care (cosmetic) applications (abstract; Formulation 1 ). Due to the unique configuration of inulin lauryl carbamate on the interface of an oil droplet, only partial coverage of this interface is required to obtain stability against droplet coalescence, allowing for a 10 fold reduction in the amount of inulin-surfactant needed to stabilize a two-phase (emulsion) system in comparison to traditional surfactants (page 12, "Low concentrations/ cost effectiveness"). Id. According to the Examiner, Booten also discloses that this low surfactant concentration results in a positive impact on skin feel. See id. (citing Booten 12). The Examiner also finds that inulin lauryl carbamate is fully compatible with glycerin (glycerol) as evidenced by Beneo. Id. ( citing Beneo 3--4). Based on the evidence above, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the glycerol based emulsion core of the core-shell particles disclosed in Riedemann to include an emulsifier comprising a hydrophobically-modified polymeric surfactant, as taught by Friedman, because Friedman teaches such emulsifiers yield stable oil-in-glycerol emulsions. See id. at 8. The Examiner also finds that it would have been 5 Appeal2018-005912 Application 14/150,03 8 obvious to modify the oil-in-glycerol emulsion in the core of the Riedemann particles, in view of Friedman, to comprise inulin lauryl carbamate as taught by Booten because these surfactants can be used in low concentration, are cost effective, and have a positive impact on skin feel. See id. at 9. Appellants argue that there is no reasonable expectation of success in combining the teachings of the prior art because there is no teaching in Riedemann to use any particular emulsion in the core or any particular emulsifier or polysaccharide in the emulsion and because there is no teaching in Friedman to use their particular emulsion as the core in any core shell particle. App. Br. 4. Appellants also argue that not all non-aqueous emulsions make a stable powder and point to data in the Specification showing that dispersed phases that are below 24% surface polarity do not produce a stable emulsion. See id. at 5 (citing Spec. 44 (Table 3, Examples 31 and 32)). Appellants further argue that "focusing on the surface tension of the liquid core fails to consider the claims in their entirety." Id. at 6. To support their arguments, Appellants submitted two Declarations by Dr. Ali Fassih, one of the named co-inventors of the application. The first Declaration states that Riedemann provides no examples of creating a powder with an emulsion core and speculates as to why that may be the case. First Deel. 2. The second Declaration presents the results of experiments in which two compositions were made with different emulsifiers wherein one resulted in a stable powder while the other produced an unstable paste. Second Deel. 2. The Examiner responds by stating that Appellants' claims are prima facie obvious because the combined teachings of the prior art suggest that any glycerol core, including a glycerol core that is an emulsion comprising 6 Appeal2018-005912 Application 14/150,03 8 glycerol as the external/continuous phase, is suitable in a dry core-shell particle when the surface tension of said core fluid is between 55 and 75 mN/m. Ans. 5 (citing Riedemann ,r 43). The Examiner further states that the prior art suggests that emulsions comprising glycerol as the external/ continuous phase are known and are stabilized using particular types of emulsifiers including carbohydrate-based emulsifiers. Id. ( citing Friedman). Lastly, the Examiner states that the prior art discloses the newer polymeric inulin lauryl carbamate INUTECÂ® SP 1 surfactants, which can be used to stabilize an emulsion, and possess many advantages in comparison to traditional surfactants including polymeric surfactants. Id. (citing Booten). With regard to Appellants' argument regarding surface polarity, the Examiner provides a well-written explanation as to why Appellants' surface polarity parameter is related to surface tension. Ans. 6-7. Specifically, the Examiner shows that surface tension is used in the calculation of surface polarity and concludes that, "[i]n view of Table 2 (pages 41-42) of the instant specification, a surface tension generally above 55 mN/m as taught by Riedemann well correlates with a percent surface polarity of at least 24% as instantly claimed, where it is presumed that Appellant's data are reported at room temperature or close to 25Â° C." Id. at 6. Appellants have not contested the Examiner's reasoning in this regard. The Examiner also finds that the Declarations by Dr. Fassih do not confer patentability for the reasons discussed above and because there is nothing inconsistent between the Declarations and the cited prior art. See id. at 7. Furthermore, the second Declaration does not report the surface 7 Appeal2018-005912 Application 14/150,03 8 tension or percent surface polarity of the exemplary liquid cores so no conclusion can be drawn regarding these experiments. Id. We agree with the Examiner that it would have been obvious to modify the liquid phase of the particles of Riedemann to include an emulsifier with a hydrophobically-modified polymeric surfactant as taught by Friedman because Friedman teaches such emulsifiers yield stable oil-in- glycerol emulsions. Final Act. 8. "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious," the answer depends on "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We also agree that it would have been obvious to modify the emulsifier of the oil-in-glycerol emulsion in the core of the core-shell particles of Riedemann in view of Friedman to include inulin lauryl carbamate because Booten provides strong motivation to use this surfactant due to its "extremely high stabilizing properties." Booten 12. Given the superior emulsification properties of inulin lauryl carbamate, as disclosed in Booten, one of skill in the art would have expected that use of this surfactant would help create a stable powder. See In re Skoner, 517 F .2d 94 7, 950 ( CCP A 197 5) ("Expected beneficial results are evidence of obviousness of a claimed invention. Just as unexpected beneficial results are evidence of unobviousness. "). The Examiner also rejected claims 32-36, 41--47, and 49 under 35 U.S.C. Â§ 103(a) as being obvious over Riedemann, in view of Friedman and Booten, as evidenced by Beneo, and Eng. The Examiner relies on Eng for its teaching of a second powder comprising an active agent as required by claim 46. The Examiner finds that Eng teaches "a composition comprising 8 Appeal2018-005912 Application 14/150,03 8 a) at least one powder comprising core-shell particles comprising water and b) at least one powder comprising carrier (second powder) (abstract)." Final Act. 11. The Examiner further finds that Eng discloses that the second carrier powder comprises the desired additives ( active agents) including, for example, UV light protection filters, antioxidants, and moisturizing substances. Id. (citing Eng 3--4, 13). Appellants argue that the addition of Eng is improper because Eng teaches water containing powders and there would be no expectation of success to combine the teachings of the actives and the additional powders of Eng's water containing powders with those of Riedemann to arrive at the claimed powders which are substantially free of water. App. Br. 7. We do not find this argument persuasive because Appellants are arguing against Eng individually rather than the combination with Riedemann in view of Friedman and Booten as a whole. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references ... . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As presented by the Examiner, Riedemann teaches the glycerol core of the core-shell particles may be in the form of an emulsion. Ans. 5. Moreover, Friedman evidences that oil-in-glycerol emulsions are known in the art and Booten provides strong motivation to use inulin lauryl carbamate polymeric surfactants. Id. Lastly, Eng teaches a second powder with an active agent. Final Act. 11. Because the combination of Riedemann, Friedman, Booten, and Eng teaches every limitation of the claims, we are not persuaded that the Examiner erred. 9 Appeal2018-005912 Application 14/150,03 8 We agree with the Examiner that one skilled in the art would have a reasonable expectation that "combining the cosmetic core-shell powder as taught by Riedemann in view of Friedman and Booten with the cosmetic core-shell powder and carrier particles comprising an additive as taught by Eng would result in a third powder composition also capable [ of] releasing the entrapped liquids in response to shear, as each core-shell particle is individually taught to have this property." Final Act. 13. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose ... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). For the reasons described herein and those already of record, we sustain the Examiner's rejection of independent claim 32 and 43 under 35 U.S.C. Â§ 103(a) as being obvious over Riedemann in view of Friedman and Booten, as evidenced by Beneo and as being obvious over Riedemann, in view of Friedman and Booten, as evidenced by Beneo, and Eng. Other than the discussion of Eng above, claims 33-36, 41--42, 44--47, and 49 are not argued separately, and fall with claims 32 and 43. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). CONCLUSION We affirm the Examiner's obviousness rejections of claims 32-36, 41--47, and 49. 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)(l )(iv). 10 Appeal2018-005912 Application 14/150,03 8 AFFIRMED 11