Ex Parte Mohammadi et alDownload PDFPatent Trial and Appeal BoardJan 26, 201712558178 (P.T.A.B. Jan. 26, 2017) Copy Citation 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 2 Appeal 2015-003107 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.) 3 Appeal 2015-003107 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 4 Appeal 2015-003107 Application 12/558,178 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 5 Appeal 2015-003107 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 6 Appeal 2015-003107 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 7 Appeal 2015-003107 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 8 Appeal 2015-003107 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. 9 Appeal 2015-003107 Application 12/558,178 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 10 Copy with citationCopy as parenthetical citation