Ex Parte Raschke et al

Patent Trial and Appeal BoardNov 19, 2013

10569381 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS RASCHKE, FRANK HETZEL, and VOLKER KALLMAYER ____________ Appeal 2012-004828 Application 10/569,381 Technology Center 1600 ____________ Before TONI R. SCHEINER, JOHN A. EVANS, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims directed to dermatological preparations comprising shaped water-in-oil emulsions. The Examiner has rejected the claims as obvious and on the grounds of non- statutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Beiersdorf AG of Hamburg, Germany as the Real Party in Interest (App. Br. 3). Appeal 2012-004828 Application 10/569,381 2 STATEMENT OF THE CASE Claims 19, 20, 22, 23, and 25-36 are on appeal, and can be found in the Claims Appendix (App. Br. 33-35). Claim 19 is representative of the claims on appeal, and reads as follows: 19. A cosmetic or dermatological preparation, wherein the preparation comprises a plurality of shaped bodies which consist of a W/O emulsion, are at least one of solid, semisolid and dimensionally stable up to a temperature of at least 35°C and comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer. The Examiner has rejected the claims as follows: I. claims 19, 20, 22, 23, 26, 28, 34, and 35 under 35 U.S.C. § 102(b) as being anticipated by Biatry2; II. claims 19, 20, 22, 23, 26, and 28-35 under 35 U.S.C. § 102(b) as anticipated by Le Joliff3; III. claims 19, 20, 22, 23, and 25-36 under 35 U.S.C. § 103(a) as unpatentable over Le Joliff; and IV. claims 19, 20, 22, 23, and 25-36 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as allegedly being unpatentable over claims 83-127 of copending Application No. 10/569,382 in view of Le Joliff. We reverse the anticipation and obviousness rejections, and affirm the obviousness-type double patenting rejection. 2 Biatry et al., US 2002/0022038 A1, issued Feb. 21, 2002. 3 Le Joliff et al., WO 01/03538 A1, published Jan. 18, 2001 (English translation of record). Appeal 2012-004828 Application 10/569,381 3 I. The Issue: Anticipation over Biatry The Examiner takes the position that: Biatry teaches microcapsules with an aqueous core containing at least one water-soluble cosmetic or dermatological active principle . . . . Said water-in-oil emulsion is stabilized creating microcapsules which have a polymeric and/or waxy envelope consisting of at least one polymer and/or at least one wax . . . . Biatry teaches that the waxes utilized are solid (i.e. shape stable) at 25°C, and undergo reversible solid/liquid reversible change of state at about 40°C. (Ans. 4-5.) Appellants contend that “the claimed preparation comprises a plurality of shaped bodies which consist of a W/O emulsion. This language clearly excludes shaped bodies which merely comprise a W/O emulsion, i.e., consist of a W/O emulsion and one or more other components and/or constituents.” (App. Br. 9.) Appellants contend that the microcapsules of Biatry “would not consist of a W/O emulsion because they additionally comprise a polymeric and/or waxy envelope” (id.). The issue is: Does the evidence of record support the Examiner’s finding that Biatry anticipates claim 19? Analysis The Examiner finds that “the claims are not limited to only the W/O emulsion.” (Ans. 16.) Specifically, the claims directly recite that the shaped bodies which ‘consist of’ a W/O emulsion “comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer” (see claim 19, emphasis added). Therefore, while Appellant appears to believe that the phrase “a plurality of shaped bodies which consist of” closes the language of the “shaped bodies”, in view of the phrase “and comprises at least Appeal 2012-004828 Application 10/569,381 4 one ...” the language is not deemed as being closed, but rather as open. (Id. at 15.) Appellants contend that the Examiner’s interpretation of the claim is in error, as the claim “language clearly excludes shaped bodies which merely comprise a W/O emulsion, i.e., consist of a W/O emulsion and one or more other components and/or constituents.” (App. Br. 9.) Claim interpretation is at the heart of patent examination because before a claim is properly interpreted, its scope cannot be compared to the prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). In this case, Appellants challenge the Examiner’s interpretation of the phrase “comprises a plurality of shaped bodies which consist of a W/O emulsion” as recited in claim 19, arguing that the “the water-in-oil primary emulsion produced in step (b) of the process of BIATRY is not identical with the microcapsules or the (aqueous) core of the microcapsules taught therein but merely is an intermediate of the (preferred) process of BIATRY for the production of the microcapsules.” (App. Br. 11.) During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we first turn to the Specification to determine whether the meaning of the phrase “comprises a plurality of shaped bodies which consist of a W/O emulsion, are at least one of solid, semisolid and dimensionally stable up to a temperature of at least 35°C and comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer” can be discerned. (Claim 19.) Appeal 2012-004828 Application 10/569,381 5 The Specification points to lip care sticks as an example of compositions that are “made of W/O emulsions which are solid at room temperature . . . [acknowledging that they] do not become liquid upon distribution or rubbing on the skin, the emulsion is merely rubbed off onto the area of application, particularly the lips.” (Spec. 5, ll. 9-13.) The Specification further teaches that “the preparation consists of a dimensionally stable lipid/emulsifier mixture which comprises dispersed water with a droplet size below 50 micrometers.” (Spec. 9, ll. 27-28 (emphasis added).) For water to be dispersed4 in the solid means “[t]o distribute (particles) evenly throughout a medium.” “The entire sphere can thus make an active, caring contribution in the cosmetic and dermatological preparation.” (Spec. 6, ll. 25-28.) Claim 19 recites “a plurality of shaped bodies which consist of a W/O emulsion, are at least one of a solid, semisolid and dimensionally stable up to a temperature of at least 35ºC” the grammatical reading of this phrase is that the shaped bodies are made of only the W/O emulsion and that the consistency of the body is solid or semisolid. This interpretation is consistent with the Specification that teaches the shaped body will have the same consistency throughout, because the lipid/emulsifier mixture comprises dispersed water droplets (see Spec. 9, ll. 27-28), in other words the water droplets are evenly distributed throughout the medium. The use of the term emulsion in the Specification is also consistent with the ordinary meaning of an emulsion5 which is “[a] suspension of small globules of one liquid in a 4 The Free Dictionary, http://www.thefreedictionary.com/dispersed, last accessed Nov. 19, 2013. 5 The Free Dictionary, http://www.thefreedictionary.com/emulsion, last Appeal 2012-004828 Application 10/569,381 6 second liquid with which the first will not mix.” Here the closed language “consist of” is in reference to the shaped body that in this case is made up of the W/O emulsion. Thus, from the claim language we know that the shaped body is solid or semisolid at temperatures below 35ºC and is made up of a W/O emulsion. The claim also provides that the W/O emulsion can “comprise at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer.” We do not agree with the Examiner’s position that the language “comprise at least one of a wax . . .” opens the entire claim to include compositions that comprise W/O emulsions. Here, the open language is in reference to the W/O mixture and the components of the mixture. Thus, consistent with the Specification, we interpret the claim to consist of solid or semisolid W/O emulsion that can hold its shape up to a temperature of 35ºC, however, the W/O emulsion itself is made up of at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer in addition to other components. We agree with the Appellants’ position that Biatry does not disclose the solid or semisolid W/O emulsions as claimed. In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Biatry is directed to producing “microcapsules with an aqueous core” (Biatry Abstract). Biatry produces microcapsules with an aqueous core by mixing accessed Nov. 19, 2013. Appeal 2012-004828 Application 10/569,381 7 the active agent in the aqueous phase, emulsifying the aqueous phase with the lipid phase to form water-in-oil emulsion, followed by evaporating the organic solvent leaving the microcapsules in an aqueous suspension (Biatry ¶¶ 62-67). We agree with the Appellants’ position that once the solvent is evaporated and the shaped bodies of Biatry are formed, the emulsion will have separated into the solid lipid phase and the aqueous phase (see App. Br. 10-11). Accordingly, Biatry does not disclose a shaped body made up of a W/O emulsion. The preponderance of evidence on this record fails to support Examiner’s finding that Biatry teaches Appellants’ claimed invention. The rejection of claims 19, 20, 22, 23, 26, 28, 34, and 35 under 35 U.S.C. § 102(b) as being anticipated by Biatry is reversed. II. The Issue: Anticipation over Le Joliff The Examiner takes the position that “Le Joliff teaches an article comprised of capsules containing topical compositions. Said topical composition, which is within said capsules, can be semipasty (semi-solid) or in freezing (solid) form . . . . Said composition is taught as being a topical make-up composition, which is an encapsulation which comprises beeswax” (Ans. 6). The Examiner concludes that Le Joliff meets the limitations of claim 19. Appellants contend that the shaped bodies of claim 19, excludes other components such as an envelope (see App. Br. 19). We agree with Appellants’ position. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520 (CCPA 1931). When the phrase “consists Appeal 2012-004828 Application 10/569,381 8 of” appears in a clause of the body of a claim, rather than immediately following the preamble, it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole. Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986). As discussed above, we interpret claim 19 to consist of solid or semisolid W/O emulsion that can hold its shape up to a temperature of 35ºC, the W/O emulsion itself is made up of at least one of a wax, a lipid, an emulsifier, a natural polymer and a synthetic polymer in addition to other components. Here, the claim uses the closed “consist of” claim language to describe that the shaped bodies are made up of only a W/O emulsion. Le Joliff discloses that “[t]he topical composition present usually in liquid, pasty, semi-pasty form or of freezing.” (Le Joliff p. 2.) Le Joliff furthermore discloses that capsules containing the topical compositing contain an envelope, wherein the preferred envelope is made of gelatin (see id.). We find no evidence in Le Joliff, and the Examiner has not directed us to such a teaching, that discloses capsules made of pasty or semi-pasty material that do not contain an envelope. Accordingly, we reverse the rejections of claims 19, 20, 22, 23, 26, and 28-35 as being anticipated by Le Joliff, because the reference does not disclose the “shaped body which consists of W/O emulsion” as required by claim 19. Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d at 1571. III. The Issue: Obviousness over Le Joliff The Examiner takes the position that “Le Joliff teaches an article comprised of capsules containing topical compositions” (Ans. 8). The Examiner acknowledges that Le Joliff fails to provide the “exact instant Appeal 2012-004828 Application 10/569,381 9 amount of the capsule size. Le Joliff further fails to directly teach that the capsules have a volume of from 0.1ml to 20ml. Le Joliff further fails to directly teach that the composition comprises an additional shaped body which is different from the first.” (Id. at 9.) The Examiner, nevertheless, concludes that it would have been obvious for the ordinary artisan to arrive at the size and volume of the capsules (see id.). Appellants contend that the shaped bodies of claim 19, excludes other components such as an envelope (see App. Br. 29). For the reasons discussed above II, we agree with Appellants’ position that Le Joliff does not render obvious the composition of claim 19. What is missing from the Examiner’s analysis is evidence that an artisan would have a reason to remove the envelope from the capsule in order to arrive at the composition of claim 19, which is made up of only W/O shaped bodies. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (obviousness rejections require “some articulated reasoning with some rational underpinning”). Accordingly, we reverse the rejection of claims 19, 20, 22, 23, and 25- 36 as being obvious over Le Joliff. IV. The Issue: Non-Statutory Obviousness Type Double Patenting Appellants do not request review of the non-statutory obviousness type double patenting rejection over the copending Application 10/569,382 in view of Le Joliff. (See Final Rej. 14-16; App. Br. 5.) We therefore summarily affirm this rejection. See MANUAL OF PATENT EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be Appeal 2012-004828 Application 10/569,381 10 summarily sustained by the Board.”). The failure to appeal is a waiver under Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection”). SUMMARY We reverse the rejection of claims 19, 20, 22, 23, 26, 28, 34, and 35 under 35 U.S.C. § 102(b) as anticipated by Biatry. We reverse the rejection of claims 19, 20, 22, 23, 26, and 28-35 under 35 U.S.C. § 102(b) as anticipated by Le Joliff. We reverse the rejection of claims 19, 20, 22, 23, and 25-36 under 35 U.S.C. § 103(a) as unpatentable over Le Joliff. We affirm the rejection of claims 19, 20, 22, 23, and 25-36 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 83-127 of copending Application No. 10/569,382 in view of Le Joliff. 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 cdc Notice of References Cited Application/Control No. 10/569,381 Applicant(s)/Patent Under Reexamination Thomas Raschke et al. Examiner Trevor Love Art Unit 1600 Page 1 of 1 U.S. PATENT DOCUMENTS * DOCUMENT NO. DATE NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER A B C D E F G H I J K L M FOREIGN PATENT DOCUMENTS * DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER N O P Q R S T NON-PATENT DOCUMENTS * DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages) DOCUMENT SOURCE ** APS OTHER U The Free Dictionary, http://www.thefreedictionary.com/dispersed, last accessed Nov. 19, 2013. V The Free Dictionary, http://www.thefreedictionary.com/emulsion, last accessed Nov. 19, 2013. W X *A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).) **APS encompasses any electronic search i.e. text, image, and Commercial Databases. U.S. Patent and Trademark Office PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16 dispersed - definition of dispersed by the Free Online Dictionary, Thesaurus and Encyclopedia. file:///S|/...of%20dispersed%20by%20the%20Free%20Online%20Dictionary,%20Thesaurus%20and%20Encyclopedia_.htm[11/19/2013 5:15:17 PM] thefreedictionary.com dis·perse (d -spûrs ) v.dis·persed, dis·pers·ing, dis·pers·es v.tr. 1. a. To drive off or scatter in different directions: The police dispersed the crowd. b. To strew or distribute widely: The airplane dispersed the leaflets over the city. 2. To cause to vanish or disappear. See Synonyms at scatter. 3. To disseminate (knowledge, for example). 4. To separate (light) into spectral rays. 5. To distribute (particles) evenly throughout a medium. v.intr. 1. To separate and move in different directions; scatter: The crowd dispersed once the concert ended. 2. To break up and vanish; dissipate: The storm clouds had dispersed by noon. [Middle English dispersen, from Old French disperser, from Latin dispergere, dispers-, to disperse : dis-, apart; see dis- + spargere, to scatter.] dis·pers ed·ly (-spûr s d-l ) adv. dis·pers er n. dis·pers i·ble adj. The American Heritage® Dictionary of the English Language, Fourth Edition copyright ©2000 by Houghton Mifflin Company. Updated in 2009. Published by Houghton Mifflin Company. All rights reserved. Thesaurus Legend: Synonyms Related Words Antonyms Adj. 1. dispersed - distributed or spread over a considerable extent; "has ties with many widely dispersed friends"; "eleven million Jews are spread throughout Europe" spread distributed - spread out or scattered about or divided up Based on WordNet 3.0, Farlex clipart collection. © 2003-2012 Princeton University, Farlex Inc. dispersed adjective spread-out, extensive, scattered, sprawling, expansive, fanned out his widely dispersed business Collins Thesaurus of the English Language – Complete and Unabridged 2nd Edition. 2002 © HarperCollins Publishers 1995, 2002 Translations Select a language: ----------------------- dispersed [dɪˈspɜːrst] adj (= scattered) [population, community] → dispersé(e); [groups] → épars(e) Collins English/French Electronic Resource. © HarperCollins Publishers 2005 emulsion - definition of emulsion by the Free Online Dictionary, Thesaurus and Encyclopedia. file:///S|/...0of%20emulsion%20by%20the%20Free%20Online%20Dictionary,%20Thesaurus%20and%20Encyclopedia_.htm[11/19/2013 5:16:01 PM] thefreedictionary.com e·mul·sion ( -m l sh n) n. 1. A suspension of small globules of one liquid in a second liquid with which the first will not mix: an emulsion of oil in vinegar. 2. A photosensitive coating, usually of silver halide grains in a thin gelatin layer, on photographic film, paper, or glass. [New Latin mulsi , mulsi n-, from Latin mulsus, past participle of mulg re, to milk out : -, ex-, ex- + mulg re, to milk; see melg- in Indo-European roots.] e·mul sive adj. The American Heritage® Dictionary of the English Language, Fourth Edition copyright ©2000 by Houghton Mifflin Company. Updated in 2009. Published by Houghton Mifflin Company. All rights reserved. emulsion [ɪˈmʌlʃən] n 1. (Miscellaneous Technologies / Photography) Photog a light-sensitive coating on a base, such as paper or film, consisting of fine grains of silver bromide suspended in gelatine 2. (Chemistry) Chem a colloid in which both phases are liquids an oil-in-water emulsion 3. (Chemistry) Also called emulsion paint a type of paint in which the pigment is suspended in a vehicle, usually a synthetic resin, that is dispersed in water as an emulsion. It usually gives a mat finish 4. (Medicine / Pharmacology) Pharmacol a mixture in which an oily medicine is dispersed in another liquid 5. any liquid resembling milk [from New Latin ēmulsiō, from Latin ēmulsus milked out, from ēmulgēre to milk out, drain out, from mulgēre to milk] emulsive adj Collins English Dictionary – Complete and Unabridged © HarperCollins Publishers 1991, 1994, 1998, 2000, 2003 e•mul•sion (ɪˈmʌl ʃən) n. 1. any colloidal suspension of a liquid in another liquid. 2. any liquid mixture containing medicine suspended in minute globules. 3. a photosensitive layer of silver halide suspended in gelatin, thinly applied to one surface of a photographic film. [1605–15; < Latin ēmuls(us), past participle of ēmulgēre to draw off (milk) (ē- e- + mulgēre to milk) + -ion] e•mul′sive, adj. Random House Kernerman Webster's College Dictionary, © 2010 K Dictionaries Ltd. Copyright 2005, 1997, 1991 by Random House, Inc. All rights reserved. emulsion ( -m l sh n) A suspension of tiny droplets of one liquid in a second liquid. By making an emulsion, one can mix two liquids that ordinarily do not mix well, such as oil and water. Compare aerosolfoam emulsify verb The American Heritage® Science Dictionary Copyright © 2005 by Houghton Mifflin Company. Published by Houghton Mifflin Company. All rights reserved.