Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Apr 30, 2021

2020005098 (P.T.A.B. Apr. 30, 2021)

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.
16/012,988 06/20/2018 Tatiana Blachechen JCO5169USDIV1 3818
27777 7590 04/30/2021
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
SOROUSH, ALI
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TATIANA BLACHECHEN,
PAULA S. O. DANTAS, DANIELLE LORENZETTI,
LUCIANO M. NOGUEIRA, and CINTHIA ZANATTA
____________

Appeal 2020-005098
Application 16/012,988
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 11–15 (Br. 2). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Johnson &
Johnson Consumer Inc., . . . which is a subsidiary of Johnson & Johnson”
(Appellant’s February 10, 2020, Appeal Brief (Br.) 2).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to sunscreen composition comprising
UV-absorbing agents and visible light absorbing agents” (Spec. 1:10–11).
Appellant’s independent claims 11 and 15 are reproduced below:
11. A method of protecting skin against visible light radiation,
which comprises topically applying to skin a sunscreen
composition, comprising:
about 1.0% or more of disodium phenyldibenzimidazole
tetrasulfonate; and
about 0.5 to 2% of a visible light absorbing agent
comprising titanium dioxide, wherein said visible light
absorbing agent comprises a silica-containing film,
wherein said silica-containing film is essentially free of
alumina, and said composition protects the skin against
ultraviolet and visible light radiation without tinting the skin.
(Br. 6.)
15. A method of protecting skin against visible light radiation,
which comprises topically applying to skin a sunscreen
composition, comprising:
about 1.5% of disodium phenyldibenzimidazole
tetrasulfonate;
about 1% of titanium dioxide comprising a silica-
containing film wherein said silica-containing film is essentially
free of alumina;
about 2.5% of phenylbenzimidazole sulfonic acid;
about 1.5% of bis-ethylhexyloxyphenol methoxyphenyl
triazine;
about 1.5% of butyl methoxydibenzoylmethane;
about 2% of octocrylene;
about 1.5% of methylene bis-benzotriazolyl
betramethylbutylphenol;
about 1.5% of ethylhexyl triazone; and
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about 1.5% of homosalate,
wherein said composition protects the skin against ultraviolet
and visible light radiation without tinting the skin.
(Id. at 6–7.)
Claims 11–15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Schulz2 and Siddiquey.3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Schulz “relates to cosmetic and/or dermatological photoprotective
preparations comprising hydroxybenzophenones besides triazine derivatives
and/or benzotriazole derivatives” (Schulz ¶ 3; see generally Final Act.4 3–4).
FF 2. Examiner finds that Schulz discloses a “sunscreen emulsion
comprising 2.5% disodium phenyldibenzimidazole tetrasulfonate, 1.00%
titanium dioxide, 2.00% bisethylhexyloxyphenol methoxymethane, 2%
methylene bis-benzotriazoyl tetramethylbutylphenol, 4.00% ethylhexyl
triazone and 0.5% phenylbenzimidazole sulfonic acid” (Final Act. 3 (citing
Schulz ¶ 148: Example 1)).
FF 3. Schulz discloses that its inorganic pigment, TiO2, may “be surface-
treated (‘coated’)” with
aluminum oxide (Al2O3), aluminum hydroxide Al(OH)3, or
aluminum oxide hydrate (also: Alumina, CAS No.: 1333-84-2),

2 Schulz et al., US 2005/0008587 A1, published Jan. 13, 2005.
3 Siddiquey et al., Control of the photocatalytic activity of TiO2
nanoparticles by silica coating with polydiethoxysiloxane, 76 Dyes and
Pigments 754–759 (2008).
4 Examiner’s September 13, 2019, Final Office Action.
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sodium hexametaphosphate (NaPO3)6, sodium metaphosphate
(NaPO3)n, silicon dioxide (SiO2) (also: Silica, CAS No.: 7631-
86-9), or iron oxide (Fe2O3). These inorganic surface coatings
may be present on their own, in combination and/or in
combination with organic coating materials.
(Schulz ¶¶ 115–116; see Final Act. 4.)
FF 4. Examiner finds that Schulz discloses that its sunscreen emulsion may
contain additional “ingredients such as 2.5% bis-ethylhexyloxyphenol
methoxyphenyl triazine, 7.5% octocrylene, and 5.00% ethylhexyl salicylate
(Final Act. 3–4 (citing Schulz ¶ 148: Examples 1 and 7)).
FF 5. Examiner finds that “[e]thylhexyl salicylate can be substituted with
homosalate” (Final Act. 4 (citing Schulz ¶ 112)).
FF 6. Examiner finds that Schulz fails to disclose “a preferred embodiment
wherein titanium dioxide is coated with silica” and “a preferred embodiment
comprising all the constituents of” Appellant’s claimed invention in the
“claimed amounts” (Final Act. 4).
FF 7. Siddiquey discloses a “novel, simple and fast coating method that is
based on microwave (MW) irradiation and which uses polydiethoxysiloxane
(PDES) has been developed for TiO2 nanoparticles with the aim of reducing
their photocatalytic activity” and found that “[t]he silica coated TiO2
nanoparticles obtained using the MW irradiation method showed higher
inhibition of photocatalytic activity and superior UV-shielding
characteristics than particles coated using the conventional solution method”
(Siddiquey, Abstr.; see id. § 1 (Siddiquey discloses that “[t]o minimize their
photocatalytic activity, TiO2 particles need to be surface coated with an inert
material, such as silica (SiO2)); id. § 2.1 (Siddiquey discloses that its
“[s]ilica coating was carried out on commercial rutile TiO2 (MT-150W)
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purchased from Tayca Corporation, Japan,” which does not contain
alumina); see also Final Act. 4).
FF 8. Siddiquey discloses that “the use of a conventional solution method
to silica coat TiO2 nanoparticles which had been pre-coated with alumina”
results in TiO2 nanoparticles containing a “large silica content,” which
“tends to lower the UV-shielding ability of the coated material” (Siddiquey
§ 1).
FF 9. Appellant discloses:
The concentration of silica-coated visible light-absorbing
inorganic pigment particle contained in sunscreen compositions
of the present invention must be present at levels effective to
provide effective absorbance of visible light, yet not at levels
commonly used to provide “tinting” of a composition, e.g., as
in a tinted cream or paint. Therefore, the concentration may be
about 5% or less.
(Spec. 5:11–16.)
ANALYSIS
Although Schulz does not exemplify a composition comprising silica
coated TiO2 that is essentially free of alumina (see FF 6), Schulz discloses
that TiO2 may be coated with silicon dioxide (SiO2) alone (FF 3). Siddiquey
discloses that “the use of a conventional solution method to silica coat TiO2
nanoparticles which had been pre-coated with alumina” results in TiO2
nanoparticles containing a “large silica content,” which “tends to lower the
UV-shielding ability of the coated material” (FF 8). Siddiquey further
discloses a microwave irradiation based method of silica coating TiO2 that
“showed higher inhibition of photocatalytic activity and superior UV-
shielding characteristics than particles coated using the conventional
solution method” (FF 7). Thus, based on the combination of Schulz and
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Siddiquey, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious “to provide the titanium
dioxide of Schultz . . . with a silica coating layer” as disclosed by Siddiquey
(Final Act. 4). Those of ordinary skill in this art would recognize that the
silica coated TiO2 made obvious by the combination of Schulz and
Siddiquey would be substantially free from alumina.
Examiner further finds that it would have been prima facie obvious, at
the time of Appellant’s claimed invention, “to add bis-ethylhexyloxyphenol
methoxyphenyl triazine, octocrylene, and homosalate to” the composition
exemplified in Schulz’s Example 1, because Schulz discloses that “all of
these compounds are sunscreen agents and therefore would have an additive
effect in providing sunscreening properties” (Final Act. 4). In this regard,
Examiner concludes that, at the time of Appellant’s claimed invention, it
would have been prima facie obvious to a person of ordinary skill in this art
to determine, by routine optimization, the appropriate concentration for the
ingredients in a composition made obvious by the combination of Schulz
and Siddiquey (see Final Act. 4–5). See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”).
We find no error in Examiner’s prima facie case of obviousness.

Claims 11 and 15:
Appellant contends that “the present invention advantageously
provides protection against visible light without tinting by using low levels
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of a particular kind of titanium dioxide” (Br. 4). In this regard, Appellant
contends:
As described in [Appellant’s] Examples beginning on
page 11 of the specification, compositions E1 and E2 according
to the invention surprisingly absorbed significantly more visible
light than comparative compositions not containing a
combination of disodium phenyldibenzimidazole tetrasulfonate
and titanium dioxide comprising a silica-containing film
essentially free of alumina.
(Br. 4.) We are not persuaded. As Examiner explains, the closest prior art
on this record, Schulz, discloses “a composition comprising 1.00%
phenyldibenzimidazol tetrasulfonate and 1.00% titanium dioxide applied to
the skin” (Ans. 5). Thus, the amount of inorganic pigment, TiO2, in Schulz
is within the range disclosed in Appellant’s Specification that avoids tinting
(see FF 9). Further, although Schulz does not exemplify a composition
comprising silica coated TiO2 that is essentially free of alumina, Schulz
discloses, as discussed above, that its composition may comprise TiO2 that is
coated solely with slica (see FF 1–3). Thus, Appellant’s comparison of their
claimed invention against a composition not containing a combination of
disodium phenyldibenzimidazol tetrasulfonate and TiO2 comprising a silica-
containing film essentially free of alumina, is not a comparison against the
closest prior art on this record, Schulz.
Appellant further directs attention to Table 3 of its Specification,
which compares a composition within the scope of Appellant’s claimed
invention against a “tinted [comparative] composition C2” (Br. 4–5). Based
on Table 3, Appellant contends:
Surprisingly, composition E1 provided similar protection
against visible light radiation even though it was non-tinted,
containing only 1% titanium dioxide coated with silica. On the
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other hand, comparative composition C2 contained more than
20% of pigments (12% active).
(Id.) As Appellant’s Table 3 makes clear, Appellant’s comparative
composition C2 does not contain disodium phenyldibenzimidazole
tetrasulfonate (see Spec. 16: Table 3). Thus, Appellant’s Table 3 does not
provide a comparison of Appellant’s claimed invention against the closest
prior art on this record, Schulz.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its “data shows the advantageous and surprising results of the
claimed method” (Br. 5).
In sum, Appellant failed to establish that its claimed invention
produces a result that would have been unexpected over the disclosure of the
closest prior art. Thus, we are not persuaded by Appellant’s contention that
“the use of disodium phenyldibenzimidazole tetrasulfonate in combination
with titanium dioxide comprising a silica-containing film that is essentially
free of alumina for protecting the skin against both ultraviolet and visible
light radiation without tinting the skin is not obvious over Schultz in view of
Siddiquey” (Br. 5).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 11 and 15 under 35
U.S.C. § 103(a) as unpatentable over the combination of Schulz and
Siddiquey is affirmed. Claims 12–14 are not separately argued and fall with
claim 11.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–15 103 Schulz, Siddiquey 11–15
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