Ex Parte Shah et al

Patent Trial and Appeal Board

May 23, 2017

13622636 (P.T.A.B. May. 23, 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.
13/622,636 09/19/2012 Pravin Shah J9191US1 2282
201 7590 05/25/2017
UNILEVER PATENT GROUP
800 SYLVAN AVENUE
ENGLEWOOD CLIFFS, NJ 07632-3100
EXAMINER
WAX, ROBERT A
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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):
patentgroupus @ unilever. com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAVIN SHAH and ANJING LOU1
Appeal 2015-001198
Application 13/622,636
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to certain
emulsions, which have been rejected as non-enabled and obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
According to the Specification, make-up formulas high in colorants
mimic a person’s skin tones and achieve a covering purpose, but “can . . .
undesirably[] rub[]off on . . . fabrics” and may also have disadvantages in
sensory attributes and active deposition. (Spec. 1.) Likewise, other
1 Appellants identify the Real Party in Interest as Conopco, Inc. (Br. 3.)
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Application 13/622,636
formulas incorporate metal oxides such as titanium dioxide to whiten skin
and hide blemishes, but “are easy to rub[]off after application and usually
result in an undesirable ashen appearance.” {Id. at 1—2.) Further according
to the Specification, there is therefore an increasing interest to develop “[low
rub-off] compositions that are suitable to effectively deposit active on skin”
and that do not have “the separation and peeling characteristics often
associated with compositions classified as low rub-off.” {Id. at 2.)
Claims 1—4, 6—8, and 10-14 are on appeal. Claim 1 is illustrative and
reproduced below:
1. A composition, the composition being an emulsion
comprising:
(c) in an oil phase, a particle comprising hydrophobic
material and a water soluble active;
(d) in an aqueous phase, an aqueous based film
forming resin, and
(c) wherein the water soluble active is selected from
the group consisting of water soluble,
dihydroxyacetone, vitamin(s), substituted urea(s),
cationic ammonium compounds, panthenol,
resorcinol(s), alpha and beta hydroxyl acids and
blends thereof; and
wherein weight of hydrophobic material in the particle
and active in the particle/weight of film forming resin in
the composition (m+a/r) is greater than or equal to 0.05.
(Br. 12 (Claims App’x).)
The Examiner rejects claims 1—4, 6—8, and 10-14 under 35 U.S.C.
§ 112(b)or35U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite. (Final Act. 3.)
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Application 13/622,636
The Examiner rejects claims 1—4, 6, 8, 10, and 12—14 under 35 U.S.C.
§ 103(a) as being unpatentable over Restrepo.2 (Id. at 4.)
The Examiner rejects claims 1—4, 6, 8, 10, and 12—14 under 35 U.S.C.
§ 103(a) as being unpatentable over Restrepo and Aijima.3 (Id. at 7.)
The Examiner rejects claims 1—4, 6, 7, and 10-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Susak,4 Alberius,5 and Aijima. (Id. at
8.)
The Examiner rejects claims 1—4, 6—8, and 10-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Susak, Alberius, Aijima, and Bui.6 (Id.
at 12.)
The Examiner rejects claims 1—4, 6—8, and 10-14 under 35 U.S.C.
§ 103(a) as being unpatentable over Restrepo, Aijima, and Bui. (Id. at 13.)
I.
Issue
The Examiner has rejected claims 1—4, 6—8, and 10-14 under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite. (Final Act. 3.)
The Examiner finds that
[t]he “water soluble active” as instant claimed is confusing and
indefinite since it claims such an active “is selected from the
group consisting of water soluble, dihydroxyac[et]one,
vitamin(s), substituted urea(s), cationic ammonium compounds,
panthenol, resorcinol(s), alpha and beta hydroxyl acids and
blends thereof’. In fact within the group above are water
2 Restrepo et al., US 2010/0035783 Al, published Feb. 11, 2010.
3 Aijima et al., JP 01281140 A, published Nov. 13, 1989.
4 Susak et al., US 2012/0189676 Al, published July 26, 2012.
5 Alberius et al., US 2009/0280147 Al, published Nov. 12, 2009.
6 Bui et al., US 2011/0150802 Al, published June 23, 2011.
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Application 13/622,636
insoluble compounds for example ‘vitamins’ as claimed include
according to the instant specification Vitamin A or retinals,
Vitamin E, beta hydroxyl acids such as salicylic acid, etc.
which are all water insoluble .... The claim needs to be
appropriately clear and define what is meant by ‘vitamins’,
‘beta hydroxy acid’, etc. so that it is not reading on and
claiming the disclosed Vitamin A, E, salicylic acid, etc.
(Id.)
Appellants contend that the claims are not indefinite because a skilled
artisan would understand that each member recited in the Markush group of
claim 1 is modified by the adjective “water soluble.” (Br. 6—7.) Appellants
thus contend that a skilled artisan would understand that, to the extent the
recited vitamins may also exist in water insoluble forms, such forms are not
encompassed by the term “water soluble active.” (Id.)
The issue with respect to this rejection is whether the evidence of
record supports the Examiner’s conclusion that the term “water soluble
active” is indefinite in the context of the claims.
Analysis
We find Appellants to have the better argument. “The test for
definiteness is whether one skilled in the art would understand the bounds of
the claim when read in light of the specification.” Miles Labs., Inc. v.
Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). We agree with
Appellants that a skilled artisan reading the claim in light of the
Specification would understand that the rejected claims encompass only
compositions comprising water soluble “dihydroxyacetone, vitamin(s),
substituted urea(s), cationic ammonium compounds, panthenol,
resorcinol(s), alpha and beta hydroxyl acids and blends thereof,” even if the
recited categories of actives, such as vitamins, may also include water
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Application 13/622,636
insoluble compounds. Furthermore, while the Specification describes both
water soluble and oil soluble actives (Spec. 7), Appellants are entitled to
narrow the claims so as to only include water soluble actives. For instance,
the Specification describes an optional embodiment wherein “water soluble
active is present within the particle comprising hydrophobic material and in
the oil phase of the emulsion when slow release of the active is desired
and/or when isolation from other actives in the water phase of the emulsion
is desired.” (Id. at 8.)
Accordingly, we reverse the Examiner’s rejection of claims 1—4, 6—8,
and 10-14 as indefinite under 35U.S.C. § 112.
II.
Issue
The Examiner has rejected claims 1—4, 6, 8, 10, and 12—14 under 35
U.S.C. § 103(a) as obvious over Restrepo. (Final Act. 4.)
The Examiner finds that Restrepo is drawn to “a multiphase
petrolatum[-]containing cleansing composition comprising 1—16%
petrolatum droplets” and “an aqueous continuous phase comprising a
polymeric stabilizing agent such as HPC, NaCMC, HPMC, polyacrylates,
etc.” (Final Act. 4.) The Examiner finds that Restrepo teaches “the ratios of
petrolatum to acrylate copolymer (Carbopol Aqua SF-1) to be 2:1.8, 4:1.8,
6:1.8, etc. (i.e. 1.1, 2.2, 3.3, etc. respectively).” (Id.) The Examiner finds
that Restrepo “teaches actives in the petrolatum phase such as vitamins,
dihydroxyacetone, etc. in amounts of 0.1—10%, preferably 0.1—5%” and
further teaches that “components may be blended with the petrolatum pre­
blend prior to adding it to the aqueous phase.” (Id. at 5.)
The Examiner concludes that
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[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to rearrange the disclosed
actives soluble in the petrolatum phase and combine as taught
with the petrolatum in the preblend said actives of vitamins,
color, etc. and obtain a particulate oil phase of petrolatum and
an active soluble therein and then form the O/W emulsions of
the Examples 1—2 with predictable results.
(Id. at 6.)
Appellants contend that Restrepo teaches an isotropic composition
with large petrolatum particles and not an emulsion. (Br. 7, 10.) Appellants
also generally contend that Restrepo does not disclose or suggest elements
(a) and (c) of claim 1 and does not “set forth a proper prima facie case for
claim 1.” (Id.) However, Appellants adduce no additional specific
arguments in support of this contention. Finally, Appellants contend
generally that the claims are not obvious because the subject matter of the
claims exhibit unexpected results and because, absent improper hindsight, a
skilled artisan would not have a reason or reasonable expectation of success
in arriving at the claimed formulation. (Id. at 10—11.)
Appellants do not separately argue the claims, and we select claim 1
as representative. 37 C.F.R. § 41.37(c)(l)(iv). The issues with respect to
this rejection are (1) whether the evidence of record supports the Examiner’s
conclusion that claim 1 is obvious over Restrepo, and (2) if so, whether
Appellants have provided evidence of unexpected results that, when
weighed with the evidence supporting the Examiner’s obviousness rejection,
suffices to support a conclusion that the claims are non-obvious.
Findings of Fact
1. The Specification states that
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[pjarticles comprising hydrophobic materials, as used [in the
Specification], is meant to mean a particle (or bead) that has a
diameter from about 75 to about 525 microns where diameter is
meant to mean the longest measurable (cross-sectional) distance
in the event the particle is not a perfect sphere. Such a particle
is, overall, hydrophobic.
(Spec. 4.) The Specification further states that
[t]he only limitation with respect to the particle comprising
hydrophobic material and optional active used in this invention
is that the same can be used in a topical composition and has a
diameter from about 75 to about 525 microns, and preferably,
from about 100 to about 450 microns, and most preferably,
from about 150 to about 300 microns ....
(Id. at 5.)
2. The Specification states that “[ejmulsion means oil-in-water
emulsion and may be interchanged with composition of this invention,
where the composition of this invention is often one that is employed to
evenly deposit active which is a colorant.” (Id. at 4—5.)
3. The Specification states that “[ajctive is meant to be embedded
within the particle comprising hydrophobic material (like petrolatum) to
form the preferred particle, and preferably, homogeneously mixed therein.”
(Id. at 4.) The Specification further states that “[ajctives suitable for use in
this invention are meant to include but not be limited to opacifiers, colorants,
skin lightening agents, moisturizers, sunscreens, plant extracts, anti­
inflammatories, surfactants, wrinkle reducing agents, mixtures thereof or the
like.” (Id. at 8.)
4. Restrepo relates to
liquid cleansing compositions suitable for topical application
for cleansing the human body, such as the skin and hair. In
particular, it relates to a stable, multiphase isotropic or gel type
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(hereinafter “isotropic”) personal cleansing composition with
low reflectance that contains a petrolatum with a specific
melting point range as the primary hydrophobic emollient.
(Restrepo 12.)
5. Restrepo teaches that, “[i]n a preferred embodiment the
inventive cleansing composition contains only an aqueous and an oil phase.”
(Id. 136.)
6. Restrepo teaches that its composition comprises “about 1 to
16% by wt. of Petrolatum based on the total composition wherein the
Petrolatum has a melting point between 35 and 80 C. and a minimum
viscosity of 10 Kps at 32 C.” (Id. 114.) Petrolatum is defined in Restrepo
as “a mixture of liquid hydrocarbons derived from petroleum having a
melting point between 35 and 80 C.” (Id. 1136.)
7. Restrepo teaches that its composition comprises an aqueous
phase including a surfactant and containing “about 0.5 to 10% by wt. of total
polymeric dispersion stabilizing agent(s) based on the total composition.”
(Id. 1115-16.)
8. Restrepo teaches that
[sjuitable polymeric dispersion agents also include acrylate
containing homo and copolymers such as the crosslinked poly
acrylates available under the CARBOPOL trade name, the
hydrophobically modified cross linked polyacrylates available
under the AQUA trade name, and the PEMULEN trade name
(all sold by Lubrizol Company, Wickliffe, Ohio) and the alkali
swellable acrylic latex polymers sold by Rohm and Haas.
(Id. 1156.)
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9. Restrepo teaches exemplary compositions comprising 1.8% by
weight of acrylate copolymer and 2%, 4%, 6%, or 8% of Petrolatum. (Id.
1156 (Example 1, Table 3).)
10. Restrepo teaches that “[t]he Petrolatum may be optionally
blended with other components to form a Petrolatum preblend prior to
feeding the Petrolatum into the aqueous preblend.” (Id. 141.)
11. Restrepo teaches that
[t]he inventive composition is prepared in a preferred
embodiment by injection of Petrolatum or an optional non-
aqueous preblend thereof into an isotropic aqueous preblend . . .
. The Petrolatum preblend consists of Petrolatum and
optionally active agents (as defined below) or other optional
ingredients which may include particles such as polyethylene or
microthene or other particles or blends thereof that can be
stably dissolved or suspended in a Petrolatum matrix and which
are either not specifically excluded from the invention nor
increase the product reflectance beyond 50, 60, 70 or 80
percent. The Petrolatum or Petrolatum preblend, when added to
the aqueous preblend via injection under specified flow and
temperature conditions, creates a Petrolatum particle size
distribution and product skin deposition properties not easily or
reproducibly attainable via batch processing. . . .
In another embodiment of the invention, a modified batch
process may be used to prepare the isotropic aqueous phase,
followed by Petrolatum or a Petrolatum preblend injection with
controlled mixing within the batch tank.
(/