Ex Parte Holyfield

Patent Trials and Appeals BoardJun 21, 2019

14998566 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/998,566 01/19/2016 7590 Gary C. Honeycutt 4728 Ravendale Richardson, TX 75082 06/21/2019 FIRST NAMED INVENTOR Louise Holyfield 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. LH-10 6701 EXAMINER HAGHIGHATIAN, MINA ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 06/21/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOUISE HOL YFIELD 1 Appeal2018-008690 Application 14/998,566 Technology Center 1600 Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and ELIZABETH A. LA VIER, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to a topical skin care formulation for self-tanning. The Examiner rejected the claims under 35 U.S.C. Â§ 112 as indefinite, 35 U.S.C. Â§ 103 as obvious, and for obviousness-type double- patenting. Pursuant to 35 U.S.C. Â§ 134, Appellant appeals the Examiner's determination that the claims are unpatentable. We have jurisdiction for the appeal under 35 U.S.C. Â§ 6(b). The Examiner's decision is affirmed. 1 The Appeal Brief ("Br." entered Oct. 27,, 2017) lists Louise Holyfield as the Real Party in Interest. Appeal Br. 1 (pages are unnumbered; numbered consecutively herein, beginning from first page). Appeal2018-008690 Application 14/998,566 STATEMENT OF THE CASE The claims stand rejected by the Examiner as follows: 1. Claims 5-15 under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112, second paragraph (pre-AIA), as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor. Final Act. 3. 2. Claims 5-15 under 35 U.S.C. Â§ 103 as obvious in view of Schreier et al. (U.S. Pat. Appl. Publ. 2002/0031482 Al, published Mar. 14, 2002) ("Schreier") and Holyfield (U.S. Pat. Appl. Publ. 2014/0065085 Al, published Mar. 6, 2014) ("Holyfield") or Carden (U.S. Pat. 4,714,609, published Dec. 22, 1987). Final Act. 4. 3. Claims 5-15 under 35 U.S.C. Â§ 103 as obvious in view of Shantha et al. (U.S. Pat. Appl. Publ. 2011/0020252 Al, publ. Jan. 27, 2011) ("Shantha") and Holyfield or Carden. Final Act. 6. 4. Claims 5-15 on the ground of obviousness-type double-patenting as unpatentable over claim 6 of U.S. Pat. No. 9,060,946 B2 (issued Jun. 23, 2015). Final Act. 9. 2 Appeal2018-008690 Application 14/998,566 Claim 5, the only independent claim on appeal, is reproduced below: 5. A topical skin care formulation for self-tanning consisting essentially of an aqueous gel, an effective amount of dihydroxyacetone for tanning the skin, an effective amount of erythrulose for tanning the skin, and an effective amount of vanillin for tanning the skin, wherein the percentage of each ingredient is selected to provide the desired shade of tan, as follows: for a light tan, 1 to 3 wt% dihydroxyacetone, 0.5 to 1.0 wt% erythrulose, and 1 to 2 wt% vanillin; for a medium tan, 6 to 9 wt% dihydroxyacetone, 0.5 to 1.0 wt% erythrulose, and 3 to 4 wt% vanillin; for a dark tan, 12 to 15 wt% dihydroxyacetone, 1.0 to 2.0 wt% erythrulose, and 4 to 6 wt% vanillin. SECTION 112 REJECTION The Examiner rejected claims 5---6 and 9-14 as vague and indefinite because they include concentration ranges in percentages without indicating upon what the percentages are based. Final Act. 3. The Examiner rejected claims 11 and 13 as indefinite for reciting a percentage of erythrulose which is outside the range recited in the claim upon which they depend. Final Act. 3. The Examiner rejected claim 15 as having insufficient antecedent basis because it recites the limitation "A method as in claim 6," but claim 6 is a formulation claim and not a method claim. Final Act. 3. Appellant acknowledged the errors, but asserted that they were corrected in an amendment after final that was not entered by the Examiner. Br. 1. Appellant also urges the Examiner to correct the errors. Br. 1. The amendment was not entered because the Examiner said it would raise new rejections underÂ§ 112, second paragraph. Advisory Action 3 Appeal2018-008690 Application 14/998,566 entered July 12, 2017. We therefore affirm theÂ§ 112 rejection for the reasons set forth by the Examiner. REJECTION BASED ON SCHREIER Claim 5 is directed to a topical skin formulation for self-tanning consisting essentially of four recited components: 1) an aqueous gel; 2) dihydroxyacetone ("DHA"); 3) erythrulose; and 4) vanillin. The claim recites that "the percentage of each ingredient is selected to provide the desired shade of tan" and recites specific amounts for each of 2) dihydroxyacetone, 3) erythrulose, and 4) vanillin. The Examiner found that Schreier describes a gel for self-tanning comprising a mixture of DHA and erythrulose. Final Act. 4. The Examiner found that Schreier does not describe vanillin as required by the claims, but found that this deficiency is met by Holyfield and Carden, each which teach a tanning agent comprising vanillin. Id. at 5. The Examiner determined it would have been obvious to one of ordinary skill in the art to have used vanillin in Schreier's self-tanning composition in aqueous form because vanillin is a "well-known and effective tanning agent" as established by Holyfield and Carden, providing a reason to combine them. Id. at 5-6. "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 which is 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). Appellant states that "[i]n the absence of new and unexpected results, it may have been obvious to combine the references. But the Examiner has 4 Appeal2018-008690 Application 14/998,566 ignored Appellant's new and unexpected results, as documented by the Declaration of Frank Rodriguez." Br. 2. The Examiner did not ignore Mr. Rodriquez's declaration ("Rodriquez Deel."; pages are unnumbered, but have been numbered consecutively from the first page herein for reference, beginning with the number 1 ). The Examiner fully considered the declaration in the Final Action, but did not find it to be persuasive evidence. Final Act. 13-14. The declaration is discussed below. Mr. Rodriquez states in his declaration that he compared the "Holyfield formulation Examples to existing formulations in the commercial marketplace and find Holyfield formulations to be superior." Rodriquez Deel. 1. Mr. Rodriquez also states that he "tested all Holyfield formulation Examples and found that each formulation gave unexpected results on skin tested regardless of melanin type" and that the formulations "have been successfully tested on several ethnic groups including American Indians, Hispanic, Caucasians, and an ethnic mix thereof. All group results were over and above expectations." Rodriquez Deel. 2. Mr. Rodriquez states that "Holyfield formulation tan color results are the most beautiful and natural tan color shades I have seen from the use of a self/sunless tanning product." Id. We agree with the Examiner that these results do not persuasively demonstrate the non-obviousness of the rejected claims in view of the cited prior art publications. As discussed by the Examiner, Mr. Rodriquez did not establish that the comparison was to the closest prior art. See In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as 5 Appeal2018-008690 Application 14/998,566 evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art."); see also In re Dill, 604 F.2d 1356, 13 61 ( CCP A 1979) ("The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains."). Specifically, Mr. Rodriquez did not identify the ingredients present in the commercial formulations, namely, which of dihydroxyacetone, erythrulose, and/or vanillin is present, and at what amounts. Thus, it is not evidence on this record to what the "Holyfield formulations" are being compared. Accordingly, it cannot be determined whether the comparison was made to the closest prior art cited in the Final Office Action. Mr. Rodriquez states the Holyfield formulations resulted in longer lasting tan, were tested on different ethnic groups, and produced beautiful shades, but Mr. Rodriquez does not state whether these tests were also performed using the commercial products. Rodriquez Deel. 2. It is therefore not evident on what basis the results could be said to be "unexpected" if they were not compared to a prior art product to establish what would have been expected by one of ordinary skill in the art. Mr. Rodriquez also does not disclose the data on which his opinion is based. As stated by the Examiner, the "Declaration is mostly a subjective opinion of Mr. Rodriquez, rather than based on facts and data showing the superiority." Final Act. 14. "It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements ... [do] not suffice." In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The Examiner also found that the prior art formulations possessed the same properties described by Mr. Rodriquez as imparted by the Holyfield formulations. Final Act. 10-11. The Examiner therefore 6 Appeal2018-008690 Application 14/998,566 concluded that "the results Applicants claim as superior and unexpected would have been expected from the disclosure of the prior art as all of the said benefits/advantages were perceived and achieved by the prior art." Final Act. 11. The Examiner's argument is reasonable and fact-based. Appellant did not adequately address this objection by the Examiner in the Appeal Brief. For the reasons set forth by the Examiner and as discussed above, the obviousness rejection of claims 5-15 based on Schreier, Holyfield, and Carden is affirmed. REJECTION BASED ON SHANTHA The Examiner found that Shantha describes a skin tanning composition comprising DHA and erythrulose that can be in the form of a gel, the same two ingredients which are claimed. Final Act. 6. The Examiner also found that Shantha suggests adding vanillin as required by the claims. Id. The Examiner stated that Shantha does not describe the claimed amounts of each ingredient, but found that Schreier and Holyfield do. Id. at 7. The Examiner determined that one of ordinary skill in the art would have been motivated to have looked at Schreier and Holyfield "for guidance on the suitable amounts in order to prepare and effective formulation for tanning the skin as desired." Id. With respect to claim 15, which is directed to having a massage at the same time at which the self-tanning formulation is applied to the skin, the Examiner found "applying the formulation in the form of a gel or lotion to the skin necessarily is via massaging it to the skin." Id. at 7-8. 7 Appeal2018-008690 Application 14/998,566 Appellant acknowledges that cited publications suggest using one or more of the claimed topical tanning agents, but contends the rejection is flawed because they are used in combination with Rifampin, which is an "essential ingredient of the Shantha invention." Br. 2. This argument is not persuasive. As discussed by the Examiner, Shantha teaches that rifampin is administered orally while the tanning agents ofDHA, erythrulose, and vanillin are applied topically. Final Act. 11; Shantha ,r 123 ("Rifampin is taken orally with water, one to two hours before going to the tanning booth, spas or before exposing to natural sun tan on decks, swimming pools and beeches [sic, beaches]."); ,r 127 ("If one desires immediate tanning the same day, use the combination of oral Rifampin and sunless tanning agents which contain DHA and Erythrulose."). As found by the Examiner, the claims are directed to a topical formulation and do not exclude oral administration of rifampin. Appellant's argument is therefore unpersuasive because it is based on a limitation that does not appear in the claim. For the foregoing reasons and those of the Examiner, the obviousness rejection of claims 5-15 based on Shantha, Schreier, and Holyfield is affirmed. OBVIOUSNESS TYPE DOUBLE PATENTING The Examiner made an obviousness-type double-patenting rejection based on claim 6 of U.S. Patent No. 9,060,946. Claim 6 of the' 946 patent is directed to a method of sunless tanning comprising applying a formulation consisting of, inter alia, vanillin, DHA, and erythrulose. The Examiner found that Schreier, Holyfield, and Carden suggest the use ofDHA, 8 Appeal2018-008690 Application 14/998,566 erythrulose, and vanillin in formulations for sunless tanning of the skin and provide guidance on the amounts of each ingredient. Final Act. 10. The Examiner determined that one of ordinary skill in the art would have been motivated to have looked in the [ cited prior] art for suitable amounts of each of the ingredients disclosed by the reference claims to prepare an effective formulation." Id. Appellant states that the obviousness-type double-patenting rejection "is moot, because of Appellant's Terminal Disclaimer filed with the Amendment of April 3, 2017." Br. 2. The Terminal Disclaimer was not entered by the Examiner for the reasons stated by the Examiner in the Advisory Action. We therefore affirm the obviousness-type double-patenting rejection for the reasons set forth by the Examiner. TIME PERIOD 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). AFFIRMED 9