Ex Parte Mohammadi et al

Patent Trial and Appeal Board

Jan 26, 2017

12558178 (P.T.A.B. Jan. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/558,178 09/11/2009 Fatemeh F. Mohammadi 03.14C1 5921
23487 7590 01/26/2017
THF FSTFF T AT TDFR mS TNC EXAMINER
155 PINELAWN ROAD BROWN, COURTNEY A
STE 345 S
MELVILLE, NY 11747 ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
01/26/2017 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 FATEMEH F. MOHAMMADI, JAMES T. HARRISON,
ANNA CZARNOTA, and CARIN LEONARD1
Appeal 2015-003107
Application 12/558,178
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
anhydrous sensory heating mask composition, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as ELC Management Corp.
(Appeal Br. 2.) Appellants’ Appeal Brief does not include page numbers.
That brief as submitted is 10 pages, including the claims appendix. We
consider the first page of Appellants’ Appeal Brief to be page 1, and the
remaining pages as if numbered consecutively.
Appeal 2015-003107
Application 12/558,178
STATEMENT OF THE CASE
“Exfoliation is a technique whereby dead skin cells are removed or
sloughed from the skin surface.” (Spec. 14.) There are physically based
and chemically based exfoliants. Examples of physical exfoliants are quartz
particles or finely ground shells. (Spec. 12.) Examples of chemical
exofoliants are alpha and beta hydroxy acids. (Spec 14.) “Producing a
variety of alternatives for exfoliation is desirable because skin types vary
among consumers, and therefore, making a variety of exfoliants available to
meet various skincare needs of individual consumers is
beneficial.” (Spec. 15.) Appellants’ invention “relates to exfoliating
compositions” having “an encapsulated heating agent and a set of diversely
sized particles.” (Spec. 1 6.)
Claims 1—4 and 13 are on appeal. Claims 1 and 13 are representative
and read as follows:
1. An anhydrous sensory heating mask composition for
exfoliating the skin comprising:
a) a physical exfoliating system comprising at least:
bamboo extract particles having a particle size ranging
from about 300 to about 500 microns,
polyethylene resin particles having a particle size ranging
from about 50 to about 300 microns, and
jade powder particles having a particle size ranging from
about 20 to about 50 microns;
and
b) a heating agent encapsulated in a silicone, wherein
said heating agent is present in an amount of about 10 percent to
about 40 percent by weight of the composition;
dispersed in an anhydrous vehicle formed of a silicone
component, wherein upon application to the skin, said
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Application 12/558,178
composition provides a warm and soothing microdermabrasion
effect while feeling substantially nonabrasive on the skin.
13. The composition of claim 1 wherein the average sizes of
the bamboo, polyethylene and jade particles differ from each
other by at least 50 microns.
(Appeal Br. 9—10.)
The following ground of rejection by the Examiner is before us on
review:
Claims 1—4 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Laden,2 Yasuharu,3 Naoji,4 Shunkan,5 and Hirosuke.6
DISCUSSION
Claims 1—4
The Examiner finds that Laden teaches anhydrous skin cleansers that
include one or more substantially crystalline abrasive material of a size
“sufficiently large to serve as a scrubbing agent against the skin to remove
dirt and cellular debris . . . and yet not so large as to scratch or irritate the
skin,” with a preferred particle size in the range of about 50 to about 1000
microns (Final Action 5.) The Examiner further finds Laden teaches that
incorporating a water soluble abrasive ingredient that has a high exothermic
heat of solution can provides additional benefits such as augmenting and
2 Laden et al., US 2003/0211062 Al, published Nov. 13, 2003.
3 Yasuharu et al., JP 1122833 A, published 1999. (English translation.)
4 Naoji et al., JP 2003081881 A, published Mar. 19, 2003. (English
translation.)
5 Shunkan, JP2001-226247, published Aug. 21, 2001. (English translation.)
6 Hirosuke, JP01-226806, published Sept. 11, 1989. (English abstract only.)
We note that the Examiner in some cases refers to this reference as
Matsuoka, the first name of Hirosuke. (See e.g., Final Action 9.)
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Application 12/558,178
enhancing the cleaning process by the warming. (Final Action 5—6.) The
Examiner recognizes that Laden does not teach encapsulating a heating
agent by a silicone, nor does it expressly teach the use of three different
particles or that the abrasive ingredient is bamboo or jade powder particles.
(Final Action 6—7.)
The Examiner finds that Yasuharu teaches a thermal cosmetic that
contains a heat-generating substance coated with a silicone-based coating
and a polyethylene powder. (Final Action 6.) The Examiner explains that
Yasuharu teaches the heat-generating substance provides “a temperature
change on the skin that is gentle, gives the comfortable sense of heat to the
skin, is excellent in the durability of exothermic temperature, and provides a
blood circulation facilitatory effect.” (Final Action 7—8.)
The Examiner finds that “Hirosuke teaches the use of raw bamboo
sheath ground into fine pieces with about 10 microns diameter” in a
cleansing cream and that “Shunkan teaches the use of nephrite (i.e., jade)
powder in a cosmetic.” (Final Action 7.) The Examiner explains that (a)
Hirosuke teaches the bamboo particles have a “homy-removing effect” and,
thus, the “cleansing cream is capable of making the skin smooth” and (b)
Shunkan teaches nephrite generates “blood circulation stimulation and
metabolism stimulation, thereby showing excellent effects on softness and
moisture-retaining property of the skin, keratinization prevention, ultraviolet
damage prevention and wrinkle prevention.” (Final Action 9.)
The Examiner finds that Naoji teaches an external preparation
ointment that includes solid particulates with a mean particle diameter
between 10 and 3000 microns, which provide a strong skin stimulus, and
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that the use of two or more kinds of particles is preferred because massaging
is improved. (Final Action 6, 9.)
The Examiner concludes that it would have been obvious to use a
heating agent encapsulated by silicone, as well as polyethylene, as taught in
Yasuharu in the Laden composition to achieve the excellent durability of
exothermic temperature to the skin and provide a “blood circulation
facilitatory effect” that Yasuharu teaches is achieved and to do so with a
reasonable expectation of success as both references are concerned with
cosmetic compositions that provide a change of temperature on the skin.
(Final Action 7—8.) The Examiner also concludes that it would have been
obvious to add jade and bamboo particles to that composition in light of the
teachings of Naoji, Shunkan, and Hirosuke with a reasonable expectation of
success. (Final Action 8—9.) In particular, the Examiner notes that each
reference is directed to skin external preparations that include solid
particulates for various skin benefiting purposes (Naoji: massaging,
Shunkan: blood circulation and metabolism, Hirosuke: sloughing, Laden:
scrubbing to remove dirt and cellular debris) and one of ordinary skill in the
art would have selected the addition of jade and bamboo particles to achieve
the advantages Shunkan and Hirosuke teach are achieved by those particles
and to expect that these additional solid particles would improve the
massaging benefits as indicated by Naoji that are achievable by particles
when they are within the range of 10—3000 microns. (Final Action 5, 8—10.)
We agree with the Examiner’s factual findings and conclusion that it
would have been obvious to combine jade and bamboo particles in the size
range claimed to a composition that included polyethylene powder particles
and a silicone coated heating agent particles to achieve an anhydrous sensory
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Application 12/558,178
heating mask composition as claimed. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398,416 (2007).
Appellants do not disagree that the prior art references teach all of the
elements individually other than the specific size ranges of the particles.
(See, e.g., Br. 4—5 (summarizing in tabular format prior art disclosure of
claimed elements).) Appellants do not disagree that the size range of the
polyethylene (PE) and jade particles suggested by the prior art overlaps with
the claimed range. (Id.) Appellants argue, however, that Hirosuke’s
teaching of using bamboo particles of 10 microns is “well below the claimed
range of 300 to 500 [microns]” and a person of ordinary skill in the art
would not have been motivated to modify the particle size as “it would go
against the teaching of Hirosuke.” (Br. 7.) Appellants also contend that
“[b]y suggesting to a person of ordinary skill in the art that virtually any size
PE particle may be used,” Laden and Naoji suggest that “there is nothing
special about the use of PE particles in a more narrowly defined range, in
combination with bamboo and jade.” (Br. 6) Appellants further argue that
the “benefits of the present invention are achieved when limitations are
placed on the absolute and relative sizes of the [claimed bamboo, PE and
jade] particles” (Id.) and that “there is nothing in any of the references that
would motivate a person of ordinary skill in the art to combine bamboo, PE
and jade in a single composition, in the claimed sizes” (Br. 7).
We do not find Appellants’ arguments persuasive. First, we do not
find that Hirosuke teaches away from modifying the particle size of bamboo
to be greater than 10 microns and still achieve a sloughing of homy-layer
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Application 12/558,178
(the stratum comeum, i.e,. the outermost layer of the skin) substances. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Hirosuke
does neither; rather, it simply notes that, in the composition disclosed, the
bamboo particle size was ground to about 10 microns. Naoji teaches that
preferred sizes for solid particulates in a skin rubbing composition for
massaging purposes is between 50 to 750 microns with an even more
preferable range being 100 to 500 microns. Consequently, we agree with the
Examiner that one of ordinary skill in the art would have found it obvious to
“to engage in routine experimentation to determine optimal or workable
ranges for the particle diameter that produce expected results” (Ans. 13),
including modifying the bamboo particle size to be within the range claimed
in Appellants’ claim 1, i.e., 300 to about 500 microns.
Regarding the overlap of ranges, we note that “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003). Indeed, “even a slight overlap in range establishes a
prima facie case of obviousness.” Id. “The normal desire of scientists or
artisans to improve upon what is already generally known provides the
motivation to determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.” Id. at 1330. “The law is replete with
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims. These cases have
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Application 12/558,178
consistently held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.” In re Woodruff,
919 F. 2d 1575, 1578 (Fed. Cir. 1990) (citations omitted, emphasis in
original).
Appellants assert, without evidentiary support, that the “benefits” of
the claimed invention are achieved by the claimed relative sizes. Appellants
have not submitted evidence establishing criticality of the ranges or
comparing representative samples of the claimed compositions with
representative samples of the compositions disclosed in the prior art to
establish unexpected results, nor is there such exemplification in Appellants’
Specification. Moreover, the Examiner has established reasons suggested in
the prior art itself for adding jade and bamboo particles in size ranges that
overlap that which is claimed to a skin cleansing composition that includes a
silicone coated heated agent and polyethylene particles in a size range that
overlaps that claimed. Consequently, we do not find Appellants have
established unexpected results or other criticality of the claimed ranges.
For the foregoing reasons, Appellants do no persuade us that the
Examiner erred in rejecting claim 1 for obviousness over Laden, Yasuharu,
Naoji, Shunkan, and Hirosuke.
Claims 2—\ have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 13
The Examiner finds that Naoji “show[s] that the use of 3 different
particles wherein the average size of the particles present differ from each
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Application 12/558,178
other by at least 50 microns was known at the time the instant application
was filed.” (Final Action 14.) According to the Examiner, it would have
been obvious to one of ordinary skill in the art “to engage in routine
experimentation to determine optimal or workable ranges for the particle
diameter that produce expected results” and thereby arrive at the claimed
particle size difference claimed. (Final Action 14—15.)
Appellants argue that none of the prior art references discuss “relative
average particle sizes within the same composition,” nor do they “suggest
any importance for the relative average sizes of any of the particles.” (Br.
7—8.) Appellants argue that “obviousness cannot be based on optimal
workable ranges when the effect that is to be optimized was unknown.” (Br.
8.)
We agree with Appellants. Contrary to the Examiner’s position, we
do not find that Naoji shows the use of three different solid particles, much
less wherein the average size of the particles present differ from each other
by at least 50 microns. Nor does any reference teach or suggest a
composition where the average particle size of three different particles
differing by any size, much less 50 microns, is a results-effective variable.
Naoji only notes that having more than one type of particle improves
massaging (Naoji 118), not that the relative size of these different particles
makes any difference in results. And Laden simply notes that the size of an
agent used as a scrubbing particle should be large enough “to remove dirt
and cellular debris . . . and yet not so large as to scratch or irritate the skin.”
(Laden 133.) This does not speak to relative size of different particles nor
suggest that different particle types should have different average sizes.
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It has also long been recognized that optimization of a result-effective
variable cannot have been obvious if that variable was not recognized as
being result-effective. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
Accordingly, we reverse the Examiner’s rejection of claim 13 as being
obvious from Laden, Yasuharu, Naoji, Shunkan, and Hirosuke.
SUMMARY
We affirm the rejection of claims 1—4 under 35 U.S.C. § 103(a) as
being unpatentable over Laden, Yasuharu, Naoji, Shunkan, and Hirosuke.
We reverse the rejection of claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Laden, Yasuharu, Naoji, Shunkan, and Hirosuke.
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. § 1.136(a).
AFFIRMED-IN-PART
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