Ex Parte Jones et al

Patent Trial and Appeal Board

Oct 19, 2016

12455920 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/455,920 0610912009 Charles Elwood Jones
21898 7590 10/21/2016
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
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.
A01999 1486
EXAMINER
AL-AWADI,DANAHJ
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES EL WOOD JONES and
MORRIS CHRISTOPHER WILLS
Appeal2015-004082
Application 12/455,920
Technology Center 1600
Before FRANCISCO C. PRATS, JEFFREYN. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
r-T"I .. • • .. 1 .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • •, • ims 1s an appear unaer j) u.~.L. s U4 mvo1vmg a composmon
comprising a particle having an average diameter from 80 to 500 nm. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Encapsulation of a variety of active ingredients in polymeric
materials is known .... However, methods for encapsulating ultraviolet
1 Appellants identify the Real Party in Interest as the ROHM AND HAAS
COMPANY (see Br. 4).
Appeal2015-004082
Application 12/455,920
absorbing compounds in small particles are not known. The problem
addressed by this invention is to provide a small, stable particle containing
an ultraviolet absorbing compound." (Spec. 1:8-14).
The Claims
Claims 1 and 4--7 are on appeal. Claim 1 is representative and reads
as follows:
1. A particle having an average diameter from 80 to 500 nm
and comprising:
(a) a core comprising 20-100 wt%, based on the total
weight of the core, of at least one compound having a Amax in
the range from 250 to 400 nm; and
(b) a shell comprising a polymer comprising 50-100 wt
% monomer residues of at least one multiethylenically
unsaturated compound and 0-50 wt% monomer residues of at
least one monoethylenically unsaturated compound,
wherein the core is from 25 to 90 wt% of the particle, and
the shell is from 10 to 7 5 wt% of the particle.
The Issues
A. The Examiner rejected claims 1 and 4--7 under 35 U.S.C. § 103(a) as
obvious over Eteve, 2 Auguste, 3 Ludwig, 4 and Poschalko5 (Final Act. 3-9).
B. The Examiner rejected claims 1 and 4--7 under 35 U.S.C. § 103(a) as
obvious over Chang6 (Final Act. 9-10).
2 Eteve et al., US 5,643,557, issued July 1, 1997; hereinafter
"Eteve".
3 Auguste et al., US 2004/0265347 Al, published Dec. 30, 2004;
hereinafter "Auguste".
4 Ludwig et al., US 6,312,807 Bl, issued Nov. 6, 2001; hereinafter
"Ludwig".
5 Poschalko et al., US 2008/0199526 Al, published Aug. 21, 2008;
hereinafter "Poschalko".
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Application 12/455,920
C. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as obvious
over Chang, Ludwig, and Traynor7 (Final Act. 11-12).
Because the same issues regarding unexpected results are dispositive
for all three of these rejections, we will consider these rejections together.
The issues with respect to this rejection are:
(i) Does the evidence of record support the Examiner's conclusion
that either Eteve, Auguste, Ludwig, and Poschalko or Chang render the
composition of claim 1 obvious?
(ii) If so, have Appellants presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness?
Findings of Fact
1. Eteve teaches "a screening cosmetic composition comprising,
[i]n a mixture, 0.5 to 10% by weight of metal oxide nanopigments chosen
from titanium, zinc, cerium or zirconium oxide or mixtures thereof, with a
mean diameter of less than 100 nm" (Eteve, abstract).
2. Eteve teaches "broad-band screening agents which absorb
ultraviolet rays with wavelengths of between 280 and 400 nm, and with
absorption maxima of between 320 and 400 nm" (Eteve 1: 18-20).
3. Auguste teaches "a cosmetic composition comprising at least
one sebum-absorbing powder having a sebum uptake ... The composition
may make it possible to obtain a skin makeup with good cosmetic properties
6 Chang et al., US 6,384,104 Bl, issued May 7, 2002; hereinafter
"Chang".
7 Traynor et al., US 2006/0188458 Al, published Aug. 24, 2006;
hereinafter "Traynor".
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Appeal2015-004082
Application 12/455,920
over time, such as a good rub resistance, transfer-free properties" (Auguste,
abstract).
4. Auguste teaches that the "sebum-absorbing powder may be a
powder chosen from ... polyallyl methacrylate/ethylene glycol
dimethacrylate powder (Auguste i-f 19).
5. Auguste teaches the "sebum-absorbing powder may be present
in the composition disclosed herein in a content ranging from 1 % to 98% by
weight, such as ... ranging from 1 % to 35% by weight, or ranging from 1
% to 15% by weight" (Auguste i-f 35).
6. Auguste teaches the "composition may comprise at least one
other common cosmetic ingredient, which may be chosen, for example, from
... sunscreens" (Auguste i-f 107).
7. Auguste teaches
a composition may be obtained by using at least one sebum-
absorbing po\'l1der combined \'l1ith at least one second po\'l1der
having a specified critical surface energy. This powder with a
specified critical surface energy may not become impregnated
with sebum when the makeup is deposited on the skin, and thus
may prevent sebum excreted over time from modifying the
cosmetic properties of the makeup.
(Auguste i-f 9).
8. Poschalko teaches the "term 'encapsulated sunscreen agent'
refers to a sunscreen agent which is coated by a suitable capsule wall
material to form microcapsules of a core shell or a matrix type, preferably of
a core-shell type" (Poschalko i-f 23).
9. Ludwig teaches "UV A can preferably be soluble in a core
polymer, and can be chosen to have desired UV-absorption properties for a
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Appeal2015-004082
Application 12/455,920
given application of the core/shell particles. Examples of UV As include
benzophenones, benzotriazoles, triazines, cinnamates, cyanoacrylates,
dicyano ethylenes, and paraaminobenzoates" (Ludwig 3 :20-25).
10. Ludwig teaches "[l]oss of the UVA leaves the composition and
its substrate less protected from ultraviolet radiation, allowing UV radiation
to degrade the composition" (Ludwig 1 :39--41 ).
11. Chang teaches:
A method for improving the storage stability of personal care
formulations containing ultraviolet (UV) radiation-absorbing
agents (sunscreen agents) is disclosed. Latex polymer particles
containing a void, having a particle size from 50 to 1000
nanometers, and having at least 4% polymerized crosslinker
monomer units in the shell portion of the particle are especially
effective in maintaining storage stability and effectiveness of
sunscreen formulations[.]
(Chang, Abstract).
12. Chang teaches the "UV radiation-absorbing agent may be added
to the formulated composition at a level of generally from 1 to 50% ...
Suitable UV radiation-absorbing agents include, for example ...
avobenzone" (Chang 10:40-65).
13. Chang teaches the "shell portion of the latex polymer particles
comprises, as polymerized units, from 5 to 95%, more preferably from 10 to
80% and most preferably from 20 to 70%, based on total weight of the shell
portion, of ... methyl methacrylate" (Chang 6:10-15).
14. Example 2 of the Specification provides the polymer
composition of eight tested materials, identified with the letters A-H, and the
table showing the compositions is reproduced below:
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Appeal2015-004082
Application 12/455,920
ID
A C I l ...on :ro •
.B 0'% xl
c 50%> xl
D Control
E 2~,fj xl
F .20~'il xl
G i)(Yl-f xl
FL 100~,f. xl
pqJxn~m: __ f.:9_m1w.~it1nn_,_%_____________________ % .. SJ:mU
'l"MP'l'l\·iA AL1WA lVlM/\ MAA
No polymer p1·1::s·eni:
00 OJ) ~1G .. O 4.0 2fi~}{~
0.i) f:i.0.0 4fLO 4.0 25-~{j
No polym~;r PYHS!i~nt-
CLO 2.0 HU.O 2.0 50%
0.0 20.0 78J) 2.0 f:i!Ji~,-(i
Ml.O (l,0 48J) 2.0 5!)<%
0,0 10(L0 0.0 00 25i.}..·~
"The core in particles B, C and E-G contained avobenzone and homosalate
in a 31 :69 weight ratio, and the core in particle Hin a 33:67 weight ratio.
(Spec. 7: 16-28).
15. Example 3 of the Specification discloses data for in vitro SPF
measurements in the table reproduced below:
r·--------------------;;;·;;·r;;r--------------1
~ uu::asu:r-r:~rn:~1.nt ~
! aft.c:D:' ~toncg0 at ! .1
i .cJh"C. om~ \\.'~Wk ~
' Control 100 , 1(}() j j
' ------------:-::-~---;:-...................... .._._._._._._._._._•_t-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·-·~~-·-·-·-··-····-··········-~----··········---~
[~~~~ l·····---~--l--------------------~-~~--~-------l-~------------------~:~--------------------1
2•:rti~~~ =l : ~ii~ ==t:~~
\ particle C l 401 t 27D i 50.0 ~
i ____________ :~~;~i-i:~=---:~: ___________ j::::::::::----------:3(~(~~:_:_·_~::::_-_:_:_:_:_-____ j __________ =-----=-----~~'.'_~_i_-_-_-_-_-_-_-_-_-_-_-_-_-_-_-_-_-_:_-_j_-_-_-_-_-_-_-_:_-_-_-_:_:_-_:_:_~_:_:_'.~~,:~~:.:.:.::.::::j
"These measurements demonstrate that highly crosslinked particles provide
better retention of uv-absorption properties after storage at elevated
temperature" (see Spec. 11 to 12:3).
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Appeal2015-004082
Application 12/455,920
16. The Specification teaches that:
Monomers useful in this invention include monoethylenically
unsaturated compounds and multiethylenically unsaturated
monomers, i.e., crosslinkers, including, e.g., divinylaromatic
compounds, di- and tri-(meth)acrylate esters, di- and tri-vinyl
ether compounds, allyl meth)acrylate. Monoethylenically
unsaturated monomers include, e.g., (meth)acrylic acids and
their esters, amides and nitriles; styrene, chloro- and/or methyl-
substituted styrenes, vinylpyridines, and vinyl esters, ethers and
ketones.
(Spec. 2:4--10).
17. The Specification teaches that, "[p ]referred ultraviolet
absorbing compounds include, e.g., aminobenzoic acid, avobenzone,
cinoxate, dioxybenzone, homosalate, menthyl anthranilate, octocrylene,
octyl methoxycinnamate, octyl salicylate, oxybenzone, Padimate 0,
phenylbenzimidazole sulfonic acid, sulisobenzone and trolamine salicylate"
Principles of Law
"[O]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support"). In re
Tiffin, 448 F.2d 791, 792(CCPA1971).
Analysis
Appellants do not dispute the Examiner established a prima facie case
of obviousness, and solely argue that a "finding of obviousness may be
rebutted by demonstrating unexpected results" (Br. 7). We therefore adopt
the Examiner's findings of fact and reasoning regarding the scope and
content of the prior art (Final Act. 3-11; FF 1-13) and agree that the claims
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Appeal2015-004082
Application 12/455,920
are prima facie obvious over either Eteve, Auguste, Ludwig, and Poschalko
or Chang
Appellants contend "the Declaration of Dr. Charles E. Jones ...
attests to the fact that the enhanced %SPF and %UVA observed for the
claimed particles would not have been expected by one skilled in the art, and
to the fact that the data are commensurate in scope with the claims" (Br. 7).
Appellants specifically contend that:
Dr. Jones stated in his declaration that the effect of high
crosslinker levels "is so pronounced that one would recognize
this as the critical parameter" and that "[a]ny particle having
from 50 to 100% crosslinker in the shell would be expected to
produce similar results" (paragraph 5). In asserting that these
data are not commensurate in scope with the claims, the Office
gives more weight to its own evaluation of the data than to that
of Dr. Jones.
(Br. 8). Appellants contend the
analysis presented in the Advisory Action misses the point
made by Dr. Jones in his declaration that "only the particles
having 50 or 100% crosslinking in the polymer shell (particles
"C" and "H" respectively) provide superior results for both
%SPF boost and %UVA boost, in measurements made both
initially and after storage" (para. 4, emphasis added). In view
of this finding, any discussion of individual points either before
or after storage is irrelevant.
(Br. 7-8).
We have reviewed the data in the Specification and the Jones
Declaration, 8 but do not find the evidence of unexpected results sufficient,
8 Declaration of Dr. Charles E. Jones, dated Dec. 12, 2013.
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Appeal2015-004082
Application 12/455,920
when weighted against the prima facie case of obviousness, to establish the
claims to be unobvious.
Claim 1 is broadly drawn to particles comprising any core compound
with a Amax between 250 and 400 nm and any shell with 50 to 100 wt%
multiethylenically unsaturated compound and optionally monoethylenically
unsaturated compound.
The Specification provides a very extensive list of polymer
components that fall within the broad scope of claim 1 (FF 16), but the
unexpected results in Example 3 are limited to the use of allyl methacrylate
(ALMA) as the crosslinker combined with methyl methacrylate (MMA) and
methacrylic acid (MAA) as the polymer components (FF 14--15).
Unexpected results must be "commensurate in scope with the degree of
protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). Here, Appellants provide no persuasive
evidence establishing that these results would be expected with the full
scope of crosslinker and other multiethylenically unsaturated compound and
optional monoethylenically unsaturated compounds listed in the
Specification (FF 16). At best, the Jones Declaration concludes that "[a]ny
particle having from 50 to 100% crosslinker in the shell would be expected
to produce similar results" (Jones Deel. i-f 5), but provides no supporting
evidence for this position. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroborations warrants
discounting the opinions expressed in the declarations.").
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Appeal2015-004082
Application 12/455,920
Similarly, the Specification lists a variety of core compounds (FF 17),
but the evidence of unexpected results was limited to avobenzone and
homosalate in a 31 :69 weight ratio (FF 14), not the full claim-scope of all
core compounds. Again, Appellants provide no persuasive evidence that the
asserted unexpected results would be obtained with any core compound, and
the Jones Declaration does not even specifically state that there would be an
expectation of similar results using other core compounds.
Conclusion of Law
(i) The evidence of record supports the Examiner's conclusion that
either Eteve, Auguste, Ludwig, and Poschalko or Chang render the
composition of claim 1 obvious.
(ii) Appellants have not presented evidence of secondary
considerations, that when weighed with the evidence of obviousness, is
sufficient to support a conclusion of non-obviousness.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Eteve, Auguste, Ludwig, and Poschalko. Claims
4--7 fall with claim 1.
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious over Chang. Claims 4--7 fall with claim 1.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Chang, Ludwig, and Traynor.
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Application 12/455,920
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
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