Ex Parte Merat

Patent Trial and Appeal Board

Mar 22, 2018

14362639 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/362,639 06/04/2014
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
03/26/2018
FIRST NAMED INVENTOR
Emmanuelle Merat
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.
0503-1240 3014
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANUELLE MERA T 1
Appeal2017-005389
Application 14/362,639
Technology Center 1600
Before ERIC B. GRIMES, DEVON ZASTROW NEWMAN, and
DAVID COTTA, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an oil-
in-water emulsion, which have been rejected as obvious.
We reverse.
STATEMENT OF THE CASE
"Cosmetic compositions presented in the form of oil-in-water
emulsions ... frequently comprise synthetic thickening polymers for
1 Appellant identifies the Real Party in Interest as SOCIETE
D 'EXPLOITATION DE PRODUITS POUR LES INDUSTRIES
CHIMIQUES SEPPIC. (Appeal Br. 2.)
Appeal2017-005389
Application 14/362,639
increasing the[ir] viscosity." Spec. 1:3-5. "However, when oil-in-water
emulsions are prepared using ... synthetic thickening terpolymers in the
absence of emulsifying surfactants, the appearance of lumps [and] clusters is
observed ... during the storage thereof over time." Id. at 4: 15-18.
"The inventors have therefore sought to develop novel oil-in-water
emulsions, free from emulsifying surfactants in the stabilising system
thereof, enriched with salts, retaining a high viscosity and a homogeneous
appearance after a prolonged storage period." Id. at 7: 12-15. The disclosed
compositions comprise, among other things, a galactomannan. Id. at 7: 16 to
8:18. "[G]alactomannans ... are polymers of which the main chain consists
of D-mannose units, interconnected at B-1,4, and whereon D-galactose units
are laterally grafted by a-1,6 bonds. Galactomannans are found in a
plurality of plant species" and differ, based on the plant species of origin, in
their degree of substitution with galactose. Id. at 5: 16-21. For example,
"galactomannans obtained from tara gum present[] a degree of substitution
(DS) of approximately 1/3, signifying lateral grafting of one D-galactose
unit every 3 D-mannose units present on the primary polysaccharide chain."
Id. at 5:29-31.
Claims 1-5, 11, and 14--19 are on appeal. Claim 1 is the only
independent claim and reads as follows:
1. Composition (C1) presented in the form of an oil-in-
water type emulsion, comprising:
- from 5 to 55% by weight of an oil phase (P1)
comprising at least one oil and optionally at least one wax;
- from 0.025% to 3.75% by weight of at least one cross-
linked anionic polyelectrolyte (PA), the PA resulting from
polymerisation of
partially or completely salified 2-methyl 2-[ ( 1-oxo 2-
propenyl) amino] I-propane sulfonic acid with
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Appeal2017-005389
Application 14/362,639
at least one neutral monomer selected from the group
consisting of: acrylamide, (2-hydroxy ethyl) acrylate, N,N-
dialkyl acrylamide, wherein each of the alkyl groups comprises
between one and four carbon atoms, and at least one monomer
of formula (I):
CH,
) -~ ().
H~C ·r
0 (I), wherein R represents a linear or
branched alkyl radical comprising from eight to twenty carbon
atoms and n represents a number greater than or equal to one
and less than or equal to twenty,
in the presence of at least one cross-linking agent;
- from 0.025% to 3.75% by weight of at least one
galactomannan (GM) having a degree of substitution (DS) of
approximately 1/3; and
from 37.5% to 94.95% by weight of a cosmetically
acceptable aqueous phase (P2), said aqueous phase (P2)
comprising from 1 % to 25% by weight of at least one salt (S)
presented in a dissolved form,
wherein for said composition (C 1), the weight ratio
between the at least one galactomannan (GM) and the cross-
linked anionic polyelectrolyte (PA) is greater than or equal to
1/3 and less than or equal to 3/1.
DISCUSSION
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Braun2 and Lucas. 3 Final Action4 3. The
Examiner finds that Braun would have made obvious a composition meeting
all of the limitations of claim 1 except that "Braun et al. do not explicitly
teach a galactomannan having a degree of substitution of 1/3." Id. at 4.
2 US 2012/0172457 Al, published July 5, 2012.
3 US 2006/0182824 Al, published Aug. 17, 2006.
4 Office Action mailed Feb. 1, 2016.
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Appeal2017-005389
Application 14/362,639
The Examiner finds that Lucas teaches that "a galactomannan,
preferably tara gum ... is useful in a cosmetic composition for preventing
and/or treating skin aging." Id. at 5. The Examiner concludes that it would
have been obvious "to select tara gum of Lucas et al. for use in the
compositions of Braun et al. ... as both teachings are drawn to cosmetic
compositions and [one] would have been motivated to obtain the benefits
taught by Lucas et al. of preventing and/or treating skin aging." Id.
Appellant argues that the Specification provides evidence that the
claimed composition provides "superior results that would not have been
expected by a person of ordinary skill in the art in view of the cited
references." Appeal Br. 5. Specifically, Appellant argues that "the
emulsions defined by the present claims have a smooth appearance, devoid
of lumps and clusters after prolonged storage period (3 months at 20°C)."
Id. at 7. The Specification states that the disclosed composition "is stable
over time after a storage period of at least one month at 20°C and retains a
homogeneous appearance, not showing the appearance of lumps or clusters,
after the same storage period under the same experimental conditions."
Spec. 20:8-11.
By comparison, Appellant argues, Braun "exemplifies formulations
that contain crosslinked polyelectrolyte terpolymers and xantha[ n] gum," but
not galactomannans. Id. at 9. Appellant argues that the Specification
provides evidence that "formulations that utilize xanthan gum ... exhibit a
heterogeneous appearance with the presence of lumps and clusters after the
same storage period." Id. at 11.
We agree with Appellant that the evidence of record shows that the
claimed composition exhibits properties that are unexpectedly superior to
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Appeal2017-005389
Application 14/362,639
what would have been expected based on the cited references. Braun
discloses "novel thickeners as well as use thereof in cosmetics and in
pharmacy," specifically a crosslinked anionic polyelectrolyte corresponding
to element PA of claim 1. Braun i-fi-f l, 9.
As relevant to the evidence of unexpected results, Braun states that its
polyelectrolyte is "compatible with thickening and/or gelling polymers such
as hydrocolloids of vegetable origin or biosynthetic, for example xanthan
gum, karaya gum, carrageenates, alginates, galactomannans; such as
silicates; such as cellulose and derivatives thereof; such as starch and
hydrophilic derivatives thereof; such as polyurethanes." Id. i156. Braun
exemplifies compositions comprising xanthan gum. See, e.g., i-fi-184--94
(Example 5). Thus, based on Braun's disclosure, a person of ordinary skill
in the art would have reasonably expected that xanthan gum and
galactomannans would both thicken or gel a composition.
The Specification, however, provides evidence that tara gum (a
galactomannan) provides the claimed compositions with superior storage
stability in that they retain a homogenous and smooth appearance, when
compared to compositions made with xanthan gum. Specifically, the
Specification exemplifies several compositions that meet the limitations of
claim 1. Spec. 27-29 (Table 1 ). All of these compositions are described as
having a "[h ]omogeneous and smooth appearance" after storage for three
months at 20°C. Id. at 32-33 (Table 3).
The Specification also exemplifies two compositions that include
xanthan gum instead of tara gum. Id. at 36 (Table 5). These compositions
are described as having a "[h ]eterogeneous appearance with presence of
lumps and clusters" after storage for three months at 20°C. Id. at 39 (Table
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Appeal2017-005389
Application 14/362,639
7, compositions F 11 and F 12). As Appellant has pointed out, compositions
F 11 and F 12 are identical to inventive compositions El and Es, respectively,
except that El and Es include tara gum and F 11 and F 12 include xanthan gum.
It is reasonable to conclude, therefore, that the improved storage stability of
compositions El and Es, compared to compositions F 11 and F 12, is due to the
presence of tara gum rather than xanthan gum.
Braun suggests that galactomannans, such as tara gum, would
function equivalently to xanthan gum in providing thickening or gelling
properties. Braun i-f 56. Lucas discloses that including tara gum in
compositions for skin care provides beneficial properties for fighting against
skin aging. Lucas i-f 21. However, the Examiner has not pointed to evidence
in either reference showing that tara gum would have been expected to
improve the storage stability of compositions like those of claim 1 on appeal.
We therefore agree with Appellant that the evidence provided by the
Specification outweighs the evidence cited by the Examiner to show that the
claimed composition would have been obvious.
The Examiner responded that
Applicant has not compared the instant invention to that of the
closest prior art. Braun et al. teach galactomannans, as
described supra. A comparison to the closest prior art would be
to a composition comprising a galactomannan having a degree
of substitution other than 1/3 (i.e. carob bean gum or guar gum,
as recited in the Specification). It is unclear if the results are
attributable to the presence[] of the specific galactomannan as
claimed, or any galactomannan.
Ans. 4--5. As discussed above, however, the working examples of Braun
only include xanthan gum, not galactomannans. Thus, the closest prior art
embodiment for comparison is a composition comprising xanthan gum. A
patent applicant is not required to compare a claimed invention to every
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Application 14/362,639
embodiment that is suggested by the prior art, only to the closest
embodiment that is specifically disclosed. See In re Chapman, 357 F.2d
418, 422 (CCPA 1966) ("We do not agree with the board that a high
molecular weight polyethylene of Hoerger should have been substituted for
the polyethylene ofNoeske if comparative data are to be presented for this,
we think, would amount to requiring comparison of the results of the
invention with the results of the invention.").
In summary, we conclude that the Specification provides evidence of
unexpected results that outweighs the evidence cited to show that the
claimed composition would have been obvious. We therefore reverse the
rejection of claims 1-5, 11, and 14--19 under 35 U.S.C. § 103(a) based on
Braun and Lucas.
REVERSED
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