Ex Parte Roudot et al

Patent Trial and Appeal BoardFeb 6, 2019

14376687 (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/376,687 08/05/2014 30678 7590 POLSINELLI PC (DC OFFICE) 1000 Louisiana Street Suite 6400 HOUSTON, TX 77002 02/08/2019 FIRST NAMED INVENTOR Angelina Roudot 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. 085507-536429 1047 EXAMINER SULLIVAN, DANIELLE D ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 02/08/2019 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): patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANGELINA ROUDOT, ANNE F ALIP, and FLORENCE L'ALLORET 1 Appeal2018-000826 Application 14/376,687 Technology Center 1600 Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify L'OREAL as the real party-in-interest. App. Br. 2. Appeal 2018-000826 Application 14/376,687 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ I34(a) from the Examiner's Final Rejection of claims 1-20. Specifically, claims 1-20 stand rejected as unpatentable under 35 U.S.C. Â§ I03(a) as obvious over Ehlis et al. (US 2009/0196894 Al, Aug. 6, 2009) ("Ehlis"). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE and enter a NEW GROUND OF REJECTION. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to an anti-sun composition comprising hydrophobic silica aerogel particles and an oil phase containing at least one polar oil and at least one lipophilic organic UV-screening agent. See Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A non-pulverulent antisun composition consisting essentially of, in a cosmetically acceptable medium: c) at least one oil phase containing: (iii) at least one non-volatile polar hydrocarbon-based oil (iv) at least one lipophilic organic UV-screening agent 2 The Examiner also rejected claims 1-12 and 15-20 under the nonstatutory doctrine of obviousness-type double patenting over claims 1-10 of co- pending application 14/355,446. Final Act. 3. The Examiner withdrew this rejection. Ans. 5. 2 Appeal 2018-000826 Application 14/376,687 d) at least hydrophobic silica aerogel particles the said [sic] composition comprising less than 5% by weight of non-volatile non-cyclic silicone oil relative to the total weight of the composition. App. Br. 13. ISSUES AND ANALYSIS We decline to adopt the Examiner's findings of fact, reasoning, and conclusion that the appealed claims are prima facie obvious over the cited prior art, and we enter a new ground of rejection. We address the arguments raised by Appellants below. Issue 1 Appellants argue that the Examiner erred by finding that Ehlis teaches antisun oil compositions including hydrophobic silica aerogels. App. Br. 8. Analysis The Examiner finds that Ehlis teaches "sunscreen oil compositions comprising 10-15% octyldodecyl neopentanoate ( component a), 1-10% sunscreens selected from bisethylhexyoxyphenol methoxyphenyl triazine and ethylhexyl methoxycinnamate (component b), [and] 1-3% silica silylate (component c)." Final Act. 5 (citing Ehlis ,r 128, Example 4). The Examiner finds that "[ t ]he hydrophobic silica compounds include Aerosil and Cab-0-Sil products obtained by surface modification with trimethylsilyl groups." Id. (citing Ehlis ,r,r 42, 43). Ehlis teaches specific silica silylate 3 Appeal 2018-000826 Application 14/376,687 materials including "Aerosil R812Â® by the company Degussa and Cab-0-Sil TS-530Â® by the company Cabot." (Ehlis ,r 43). The Examiner finds that, although the Ehlis' s examples contain more than 5% non-volatile non-cyclic silicon oil, e.g., phenyl trimethicone, "Ehlis teaches that at least one non-volatile oil is present in the formulation in amounts of 1---60% of the composition." Final Act. 5-6 (citing Ehlis ,r 24). Therefore, the Examiner determines "[ o ]ne would have been motivated at the time of the invention to adjust the amount of the non-volatile oils to include less than 5% phenyl trimethicone and 1---60% non-volatile hydrocarbon oil because only one non-volatile oil is necessary in the formulation." Final Act. 6. We agree with the Examiner that Ehlis teaches a sunscreen oil composition with at least one oil phase containing at least one non-volatile polar hydrocarbon-based oil, e.g., octyldodecyl neopentanoate, and at least one lipophilic organic UV-screen agent, e.g., ethylhexyl cinnamate. We further agree with the Examiner's determination that it would have been prima facie obvious to adjust the amount of non-volatile non-cyclic silicone oil to less than 5% relative to the total weight of the composition. Appellants argue that: "Ehlis suggests silica aerosils, but not silica aerogels." App. Br. 8 (citing Ehlis ,r,r 42, 43). Appellants distinguish between compositions containing hydrophobic silica dimethyl silylate, e.g., AerosilÂ® R 972, and hydrophobic silica silylate aerogel, e.g., Dow Coming VM-2270. See Reply Br. 2-3 (citing Spec. 49-50). We agree with Appellants that Ehlis does not teach the use of hydrophobic silica aerogels. Although the Examiner correctly identifies that both the hydrophobic silicas taught by Ehlis and the claimed hydrophobic 4 Appeal 2018-000826 Application 14/376,687 silica aerogel are silica silylate compounds, the two materials are characterized by different physical properties and manufacturing methods. See Spec. 5-9. For example, silica aerogels may be manufactured by a sol- gel process and later treated with silylating agents to form a hydrophobic silica aerogel. See Spec. 5---6. Because we find that Ehlis does not disclose the claimed elements, the prior art rejections of the remaining dependent claims on appeal that incorporate Ehlis fall with the rejection of the independent claim. NEW GROUND OF REJECTION We here enter a new ground of rejection. Independent claim 1 is rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over Ehlis and Zhao (WO 2009/120602 Al, Oct. 1, 2009) ("Zhao"). As we have explained supra, we agree with the Examiner that Ehlis teaches or suggests the limitations of claim 1 except for "hydrophobic silica aero gel particles." Zhao teaches topical skin compositions including sebum absorption ingredients, particularly silica silylate. See Zhao ,r,r 5, 6. Zhao teaches [ s ]ilica silylate is a hydrophobic silica derivative where some of the hydroxyl groups on the surface of the fumed silica have been replaced by trimethylsiloxyl groups. This ingredient can be purchased under the Tradenames VM-2270 (Dow Coming, United States), Aerosil R 812 (Degussa AG, Germany), Aerosil RX 300 (Degussa AG, Germany), Sipemat D 17 (Degussa AG, Germany), CAB-0-SIL TS-530 (Cabot, United States), Wacker HDK H2000 (Wacker-Chemie AG, Germany). Zhao ,r 29. Zhao further teaches that compositions containing a silica silylate "can be sunscreens having a sun protection factor (SPF) of 1, 5, 10, 5 Appeal 2018-000826 Application 14/376,687 15, 20, 25, 30 ... or more." Zhao ,r 7. Therefore, we find Zhao teaches combining silica silylate with a sunscreen compound, wherein the silica silylate may include hydrophobic fumed silica, e.g., Aerosil R812 and Cab- 0-Sil TS-530, or interchangeably, hydrophobic silica aerogel, e.g., VM- 2270. We conclude that it would have been obvious for a person of ordinary skill in the art to modify the formulations of Ehlis with the hydrophobic silica aerogel particles of Zhao. In particular, Zhao teaches hydrophobic silica aerogels as known alternatives to hydrophobic silica silylate, both combinable with sunscreens. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). The person of ordinary skill in the art would have had a reasonable expectation of success given Zhao's teaching that the compounds are interchangeable. Therefore, we find that the combination of Ehlis and Zhao teaches a non-pulverulent anti-sun composition including at least one oil phase containing at least one non-volatile polar hydrocarbon-based oil and at least one lipophilic organic UV-screening agent, at least hydrophobic silica aerogel particles, and less than 5% of a non-volatile non-cyclic silicone oil. Having established that the prior art combination teaches the claimed elements and limitations, we address Appellants' remaining arguments against the Examiner's rejection. 6 Appeal 2018-000826 Application 14/376,687 Issue 2 Appellants argue that the Examiner erred for failing to consider evidence of nonobviousness presented in the Specification. App. Br. 8. Analysis Appellants argue "[a] comparison of compositions 1 and 4 according to the present invention that contain the silica aerogel exhibits a higher level of screening efficiency as compared to compositions 2 and 6 which contain Aerosil particles (e.g. Aerosil R 972)." App. Br. 8. (citing Spec. 49--50). Appellants further argue that "the prior art fails to teach or suggest the improved stabilizing effect achieved by the present invention." App. Br. 10. We agree with the Examiner's finding that the comparative test results are not persuasive evidence of nonobviousness where the test compares formulations containing a silica (trimethyl) silylate aerogel against a formulation containing a silica dimethyl silylate. Ans. 5. We find formulations containing silica dimethyl silylate are not the closest prior art as compared to formulations containing silica silylate. "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991). Therefore, we are not persuaded that the Examiner erred in considering Appellants' comparative testing. As to the "improved stabilizing effect," Appellants do not present any evidence in their Brief or the Specification. "[I]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In the absence of any 7 Appeal 2018-000826 Application 14/376,687 evidence, we are not persuaded that the Examiner erred with respect to this lSSUe. Issue 3 Appellants argue that the Examiner erred for failing to consider the transitional phrase "consisting essentially of' excludes solid tanning particles from the formulation. App. Br. 8. Analysis Appellants argue that the claimed transition "consisting essentially of ... excludes components that would defeat the purposes of the claimed antisun compositions." App. Br. 8. In particular, Appellants seek to exclude Ehlis' solid tanning particles, where "including the solid tanning particles in the compositions of the invention would be contrary to and counterintuitive to the desired effects according to the present invention and are excluded in the use of the term 'consisting essentially of."' App. Br. 8-9. We do not find this argument persuasive because Appellants have not provided any evidence that the addition of tanning particles would materially affect the basic and novel characteristics of the claimed antisun composition. See In re Herz, 537 F.2d 549, 551-52 (CCPA 1976). Contrary to Appellants argument, Ehlis teaches compositions "for enhancing the natural sun protection factor of the skin, for the protection of the skin against electromagnetic radiation in the range of visible light (wavelength>400 nm) or near UV light (UV-Al, especially wavelengths>360 nm)." Ehlis ,r 7. Moreover, Ehlis teaches "substances which produce brown dyes upon contact with the skin as a result of a chemical reaction with the keratin 8 Appeal 2018-000826 Application 14/376,687 without the action of natural or artificial light." Ehlis ,r 2 ( emphasis added). As noted by the Examiner, Ehlis teaches the composition preferably comprises further components including UV absorbers. Ans. 6. ( citing Ehlis ,r 94). Moreover, Ehlis' Example 4, cited by the Examiner, includes UV absorbing agents in addition to tanning particles. See Ehlis ,r 128, Example 4. Therefore, we are not persuaded that the Examiner erred in considering the transitional phrase. Issue 4 Appellants argue that the Examiner erred for failing to consider "non- pulverulent antisun composition" limiting on the scope of the claims. App. Br. 9. Analysis Appellants argue that the recited preamble "a non-pulverulent antisun composition" gives life and meaning the claims and thus limits the scope of the claims. App. Br. 9. Appellants also argue, "it would have not been obvious to exclude the solid tanning particles from the compositions of Ehlis. To do so would render Ehlis unsatisfactory or inoperative for its intended purposes and therefore is non-obvious." Id. We examine the preamble to determine if either limitation distinguishes the prior art. The Specification states, "the term 'non- pulverulent composition' means any composition that is not in the form of a loose or compact powder." Spec. 5. The claimed composition itself contains "aerogel particles." Therefore, broadest reasonable interpretation 9 Appeal 2018-000826 Application 14/376,687 of "non-pulverulent composition" means a non-powder composition that may include particles. Like the claimed non-pulverulent composition, Ehlis teaches an oil composition containing particles. Therefore, the term "non- pulverulent" does not distinguish from the prior art. The other term claimed in the preamble is "antisun." Incorporating "antisun" as a limitation repeats the previous argument that tanning particles are incompatible with an antisun composition. As discussed above, we find Ehlis teaches tanning particles are compatible with antisun compositions, particularly tanning agents that color the skin without exposure to light. See Ehlis if 2, 7. Consequently, we are not persuaded by Appellants' arguments with respect to this issue. Issue 5 Appellants argue that it would not have been obvious to modify Ehlis to decrease the amount of non-volatile non-cyclic silicone oil to less than 5% by weight. App. Br. 10. Analysis Appellants argue "Ehlis does not suggest that the amount of non- volatile non-cyclic silicone is a result-effective parameter." App. Br. 10. The Examiner finds that Ehlis teaches a range of 1---60% non-volatile oil, including non-volatile silicone oils, which overlaps the claimed range of less than 5% by weight. Ans. 6 (citing Ehlis ,r 24). "Aprimafacie 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, 10 Appeal 2018-000826 Application 14/376,687 1329 (Fed. Cir. 2003). Because Appellants have not provided any evidence that the range of less than 5% by weight non-volatile non-cyclic silicon oil is critical, Appellants have not overcome the Examiner's showing of prima facie obviousness as to the claimed range. See In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir. 1990). We consequently conclude that the combination of Ehlis and Zhao teaches all of the elements and limitations of independent claim 1. Therefore, we reject independent claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over Ehlis and Zhao. We have entered a new ground for only the independent claim and leave it to the Examiner to evaluate the patentability of the other claims in view this combination with other newly found or previously cited references. DECISION The Examiner's rejection of claims 1-20 as obvious under 35 U.S.C. Â§ 103(a) is reversed. We have also entered a new ground of rejection for independent claim 1 pursuant to 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so 11 Appeal 2018-000826 Application 14/376,687 rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record. REVERSED 37 C.F.R. Â§ 4I.50(b) 12