Johnson & Johnson Consumer Inc.

Patent Trials and Appeals Board

Feb 8, 2022

2021002639 (P.T.A.B. Feb. 8, 2022)

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. 16/291,297 03/04/2019 David Scott Byren JCO5271USDIV1 4342 27777 7590 02/08/2022 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER ARNOLD, ERNST V ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): RA-JJCUS-IPIMManagem@ITS.JNJ.com jnjuspatent@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 DAVID SCOTT BYREN, MICHAEL J. FEVOLA, JESSICA LEIGH LEDINGHAM, JEFFREY DANIEL MARTIN, and BASHAR OUSSAMA SALAH Appeal 2021-002639 Application 16/291,297 Technology Center 1600 Before ULRIKE W. JENKS, JOHN G. NEW, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11-18. 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 Johnson & Johnson Consumer Inc. as the real party-in-interest. Appeal Br. 2. Appeal 2021-002639 Application 16/291,297 2 CLAIMED SUBJECT MATTER The Specification describes the use of metal oxides in sunscreen compositions and the difficulty of formulating such metal oxides into sprayable compositions. Spec. 1, lines 8-13. According to the Specification, the inventors “discovered that a composition comprising high levels of metal oxides that is both sprayable and stable may be prepared using a combination of a branched hydrophobically modified ethoxylated urethane copolymer (‘HEUR’) and a hydrophobically modified alkali swellable (‘HASE’) emulsion copolymer.” Id. at lines 18-21. Independent claim 11, the only independent claim, is illustrative of the claimed subject matter and is reproduced below: 11. A composition comprising at least about 10 weight percent of a metal oxide, the composition having a viscosity less than 50,000 cP within a shear rate range of 0.01 to 0.1 s-1, and a loss tangent greater than 2.5 in an angular frequency range of 0.1 to 1 rad/s, wherein the composition is a sunscreen composition and comprises a cosmetically-acceptable topical carrier. Appeal Br. 8 (Claims App.). REJECTIONS The Examiner rejected claims 11-18 under 35 U.S.C. § 112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. The Examiner rejected claims 11-14, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Tapley.2 2 Tapley et al., US Pat. No. 5,914,101, issued June 22, 1999 (“Tapley”). Appeal 2021-002639 Application 16/291,297 3 The Examiner rejected claims 11, 12, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Abucafy.3 The Examiner rejected claims 11-18 under 35 U.S.C. § 103(a) as being unpatentable over Nair.4 ISSUES AND ANALYSIS Rejection of claims 11-18 under 35 U.S.C. § 112(b) as being incomplete for omitting essential elements, such omission amounting to a gap between the elements The Examiner finds that claims 11-18 are incomplete for omitting essential elements, such omission amount to a gap between the elements. Final Act. 2-3 (citing MPEP § 2172.01). According to the Examiner, while claim 11 only requires the inclusion of a metal oxide, omitted elements that achieve the claimed parameters are recited in Table 1 of the Specification. Id. The Examiner further specifies that the compositions in Table 2 that pass the claimed functional limitations require specific amounts of HEUR and HASE polymers. Ans. 4-5. The Examiner also points to the Specification which states that the invention relies upon: the combination of branched hydrophobically modified urethane copolymer and hydrophobically modified alkali swellable emulsion copolymer creates a composite network of amphiphilic polymers. The polymers assemble through an associative mechanism. In particular, hydrophobes on the HASE copolymer can associate with urethane copolymer hydrophobes, leading to 3 Marina Paiva Abucafy et al., Gel Based Sunscreen Containing Surface Modified TiO2 Obtained by Sol-Gel Process: Proposal for a Transparent UV Inorganic Filter, 2016 Journal of Nanomaterials, March 2016 (“Abucafy”). 4 Nair et al., US Pat. No. 8,158,714 B2, issued Apr. 17, 2012 (“Nair”). Appeal 2021-002639 Application 16/291,297 4 intermolecular bridging associations between both polymers in aqueous solution. The bridging results in entanglement of the polymers and creation of the transient three-dimensional composite network, which allows for both stable suspension of the inorganic sunscreen in the composition, and good sprayability of composition. Final Act. 3-4 (citing Spec. 22, lines 9-18). Appellant argues that the ingredients in Table 1 are just one working example of the claimed invention and “the data in Table 2 shows the effect of the presence or absence of HEUR and HASE polymers only, the remaining ingredients simply functioning as a fixed ‘cosmetically-acceptable topical carrier.’” Appeal Br. 3. Appellant contends that claim 11 recites a “cosmetically acceptable topical carrier” and claims 15 and 16 recite the presence of HEUR and HASE, respectively, such that none of these elements are “missing” from the claims. Id. at 3-4. Appellant further asserts that the passage cited by the Examiner is only a theory and not the claimed invention itself. Id. at 4. According to Appellant, the Specification clearly defines the viscosity and loss tangent, sets forth details on how to measure these properties, and includes a large amount of data in Table 2 showing how they vary. Id. Appellant concludes that one of skill in the art would readily understand the subject matter of claim 11. Id. We find that the Examiner’s position is supported by a preponderance of the evidence. MPEP § 2172.01 states that “essential matter may include missing elements . . . described by applicant(s) as necessary to practice the invention . . . [and] a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected” under 35 U.S.C. § 112, second paragraph, as indefinite. MPEP § 2172.01 Appeal 2021-002639 Application 16/291,297 5 (emphasis added). The Specification discloses that “[m]etal oxides . . . are difficult to formulate into sprayable compositions” but that: It has now been discovered that a composition comprising high levels of metal oxides that is both sprayable and stable may be prepared using a combination of a branched hydrophobically modified ethoxylated urethane copolymer (“HEUR”) and a hydrophobically modified alkali swellable (“HASE”) emulsion copolymer. Spec. 1, lines 12-13, 18-21. The Specification also states that: The present invention provides a composition comprising: (a) at least about 10 weight percent of a metal oxide; (b) about 0.1 to about 5 weight percent of branched hydrophobically modified ethoxylated urethane copolymer; and (c) about 0.1 to about 5.5 weight percent of a hydrophobically modified alkali swellable emulsion copolymer comprising an ethoxylated associative comonomer and one or more acrylate monomers. Id. at 1, line 26 to 2, line 3. The Specification states repeatedly that the HEUR and HASE copolymers are present in the composition, in contrast to other components, which are described as different “embodiments” of the invention. Compare Spec. 13, lines 5-8; 14, lines 1-7 with Spec. 7, lines 10, 17-18; 13, lines 1- 2. Further, as acknowledged by Appellant, “Table 2 shows the effect of the presence or absence of HEUR and HASE polymers only,” showing the essential nature of these polymers in achieving the claimed rheological characteristics of viscosity and loss tangent. Appeal Br. 3; Spec., Table 2. Appellant’s argument that claim 11 recites a “cosmetically acceptable topical carrier” and, therefore, fails to omit essential elements, is unavailing because the only required component of this “cosmetically acceptable topical carrier” recited in claim 11 is a metal oxide. See Appeal Br. 3-4. As Appeal 2021-002639 Application 16/291,297 6 discussed above, a composition with the only required ingredient being a metal oxide omits essential elements of the claim that are necessary to have the claimed viscosity and loss tangent properties. Thus, a preponderance of the evidence supports the Examiner’s finding that inclusion of the HEUR and HASE polymers are components that are described in the Specification as essential for achieving the claimed rheology characteristics. Appellant’s arguments do not apprise us of error in the Examiner’s finding. Accordingly, on the record before us, we sustain the Examiner’s rejection of claim 11 as being indefinite under 35 U.S.C. § 112(b) for omitting essential elements. Claims 12-14 and 17-18 are not argued separately apart from the independent claim, and, therefore, fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that claims 15 and 16 recite the presence of HEUR and HASE, respectively, such that none of these elements are “missing” from the claims. Appeal Br. 3-4. We are not persuaded by this argument because neither claim recites the presence of both HEUR and HASE polymers, as deemed essential by the Specification, nor do the claims require any specific amounts. Thus, for the reasons described herein and those already of record, we also sustain the Examiner’s rejection of claims 15 and 16 under 35 U.S.C. § 112(b) for omitting essential elements. Rejection of claims 11-14, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Tapley The Examiner finds that Tapley discloses aqueous dispersions of coated zinc oxide in an amount of not more than 75% zinc oxide by weight which reads on “at least about 10% by weight metal oxide.” Final Act. 6 Appeal 2021-002639 Application 16/291,297 7 (citing Tapley claims 1, 4). The Examiner also finds that water is a cosmetically acceptable topical carrier and that Example 5 of Tapley discloses 20% of a dispersion of zinc oxide having 58.7% ZnO by weight in a sunscreen formulation. Id. (citing Tapley, 7:10-46). According to the Examiner, since all that is required for the composition is to have at least about 10 wt% of a metal oxide, then the disclosure of Tapley anticipates the claims. Id. The Examiner notes that Tapley does not disclose the claimed viscosity within a shear range or loss of tangent within a certain angular frequency range functional parameters; however, the Examiner also notes that a rejection under § 102(b), or in the alternative, under § 103 is appropriate “[w]hen the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).” Id. (citing MPEP § 2112- 2112.02). The Examiner concludes that either the features are inherent in the composition of Tapley or are simply optimized by the artisan and the burden is shifted to Appellant to prove otherwise. Id. at 7. Appellant contends that Tapley discloses the use of dispersions to make sunscreen lotions, but not sprays. Appeal Br. 4-5 (citing Tapley, Examples 3-6). Appellant also contends that Tapley does not anticipate the claimed invention because it does not disclose the claimed viscosity or loss tangent and that such limitations are properties of the claimed composition, rather than uses. Id. at 5. Appeal 2021-002639 Application 16/291,297 8 Appellant further contends that Tapley does not present a prima facie case of obviousness because it relates to a lotion as opposed to a spray; therefore, one of skill in the art would not expect Tapley’s compositions to have similar rheological properties to the claimed composition. Id. We find that the Examiner’s position is supported by a preponderance of the evidence. As found by the Examiner, Tapley discloses sunscreen lotions containing at least 10 wt % of zinc oxide with water as the cosmetically-acceptable carrier. Tapley 7:10-46, claims 1, 4. Thus, we find that the Examiner has established a prima facie case of anticipation and/or obviousness and the burden shifts to Appellant to prove the prior art does not necessarily or inherently possess the characteristics of the claimed product. Where, as here, the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . [The] fairness [of the burden-shifting] is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant argues that one of skill in the art would not expect Tapley’s compositions to have similar rheological properties to the claimed composition because the compositions of Tapley are lotions rather than sprays. However, the claims do not require sprayable compositions and Appellant has not presented any persuasive evidence that the compositions of Tapley would not have the claimed properties. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appeal 2021-002639 Application 16/291,297 9 For the reasons described herein and those already of record, we sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over, Tapley. Claims 12-14 and 17 are not argued separately, and, therefore, fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 18 is also not argued separately but we note that the Examiner’s rejection of this claim appears to be based only on § 103 because Tapley does not disclose an embodiment comprising an organic UV filter. See Final Act. 7-8. Thus, to the extent that claim 18 is rejected under § 102(b), we do not sustain that rejection but we do sustain the rejection of claim 18 under § 103 based on Tapley because it would have been obvious to add an organic UV filter to the sunscreen formulation of Tapley, which is not contested by Appellant. See id. Rejection of claims 11, 12, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Abucafy The Examiner finds that Abucafy discloses sunscreen compositions comprising 10, 15, 20, and 25% TiO2 in the cosmetically acceptable carrier of water, wherein the composition with 15% TiO2 appears to have a viscosity of less than 50000cP and the trend would have the composition with 10% TiO2 at an even lower viscosity. Final Act. 10 (citing Abucafy Table 1, Fig. 5). According to the Examiner, since all that is required for the composition is to have at least about 10 wt% of a metal oxide, then the disclosure of Abucafy anticipates the claims. Id. The Examiner notes that Abucafy does not disclose the claimed viscosity within a shear range or loss of tangent within a certain angular frequency range functional parameters; however, as with the rejection over Appeal 2021-002639 Application 16/291,297 10 Tapley, the Examiner concludes that either the features are inherent in the composition of Abucafy or are simply optimized by the artisan and the burden is shifted to Appellant to prove otherwise. Id. at 10-11 (citing In re Fitzgerald, 619 F.2d at 205; MPEP § 2112-2112.02). Appellant contends that Abucafy relates to transparent gel formulations containing surface modified TiO2 nanoparticles for use in sunscreens. Appeal Br. 5. Appellant also contends that Abucafy does not anticipate the claimed invention because it does not disclose the claimed viscosity or loss tangent. Id. at 5. Appellant further asserts that Abucafy does not present a prima facie case of obviousness because one of skill in the art would not expect Abucafy’s compositions to have similar rheological properties to the claimed composition. Id. at 6. We find that the Examiner’s position is supported by a preponderance of the evidence. As found by the Examiner, Abucafy discloses sunscreen compositions containing at least 10 wt % of zinc oxide with water as the cosmetically-acceptable carrier. Abucafy Table 1, Fig. 5. Abucafy also discloses that a sunscreen composition with 15% TiO2 has a viscosity of less than 50000cP. Id. We therefore find that the Examiner has established a prima facie case of anticipation and/or obviousness and the burden shifts to Appellant to prove the prior art does not necessarily or inherently possess the characteristics of the claimed product. In re Best, F.2d 1252 at 1255. Appellant argues that one of skill in the art would not expect Abucafy’s transparent gel formulations to have similar rheological properties to the claimed composition. However, Appellant has not presented any persuasive evidence that the compositions of Abucafy would not have the claimed Appeal 2021-002639 Application 16/291,297 11 properties. “Attorneys’ argument is no substitute for evidence.” Johnston, 885 F.2d at 1581. For the reasons described herein and those already of record, we sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over, Abucafy. Claims 12 and 17 are not argued separately, and, therefore, fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 18 is also not argued separately but we note that the Examiner’s rejection of this claim appears to be based only on § 103 because Abucafy does not disclose an embodiment comprising an organic UV filter. See Final Act. 11. Thus, to the extent that claim 18 is rejected under § 102(b), we do not sustain that rejection but we do sustain the rejection of claim 18 under § 103 based on Abucafy because it would have been obvious to add an organic UV filter to the sunscreen formulation of Abucafy, which is not contested by Appellant. See id. Rejection of claims 11-18 under 35 U.S.C. § 103(a) as being unpatentable over Nair The Examiner finds that Nair teaches coating compositions that scatter, reflect, or absorb light to prevent the light from reaching the substrate and comprise metal oxides such as zinc oxide or titanium oxide in an amount up to about 90% wt% and also teaches that the liquid medium can be water, which is cosmetically acceptable. Final Act. 14 (citing Nair 2:35- 37, 6:11-15, 6:19-22, 6:40-62, 8:7-10). With regard to claims 15 and 16, the Examiner also finds that Nair teaches the addition of HEUR and HASE polymers and combinations thereof in an amount of about 2-30 wt%. Id. (citing Nair 7:28-63, claim 18). The Examiner further finds that Nair teaches a coating composition comprising 20 wt% titanium dioxide and 5 Appeal 2021-002639 Application 16/291,297 12 wt% HEUR/HASE thickening agent and that no organic UV filters are added. Id. (citing Nair Tables 1, 4, and 5). The Examiner notes that Nair does not expressly teach the properties and functional limitations of claim 11. Id. However, according to the Examiner, it would have been obvious to one of ordinary skill in the art at the time of the invention to make the composition of Nair with the claimed viscosity and functional parameters because Nair teaches the same components in the same amounts such that the instantly claimed parameters are either inherent in the disclosure of Nair or would have been optimized by the artisan. Id. at 16-17. The Examiner, therefore, finds that the artisan would have had a reasonable expectation of success in measuring the viscosity and loss of tangent under the claimed conditions. Id. at 17. Appellant argues that “Nair relates to scrub and stain-resistant coating compositions for use in plastic articles and films” and that “[t]hese are not personal care items or even cosmetics” such that “one skilled in the art of cosmetic sunscreen sprays would not look to Nair in the first place.” Appeal Br. 6. Appellant contends that claim 11 explicitly requires a cosmetically- acceptable topical carrier which, by definition, cannot be found in Nair. Id. According to Appellant, “[t]he compositions of Nair and the claimed invention, along with their intended uses, are entirely different” and “Nair cannot suggest the claimed invention.” Id. at 7. We agree with Appellant that Nair is non-analogous art with respect to the field of cosmetic sunscreen compositions and one of skill in the art would not have looked to Nair in formulating such compositions. As asserted by Appellant, Nair is directed to scrub and stain-resistant coating compositions for plastic articles and films. Nair 1:15-20. There is no Appeal 2021-002639 Application 16/291,297 13 suggestion in Nair of using such compositions as cosmetic sunscreen compositions and we find that the Examiner has not shown that one of skill in the art would look to the scrub and stain-resistant coatings of Nair in formulating cosmetic sunscreen formulations. Thus, we do not sustain the Examiner’s rejection of claims 11-18 under 35 U.S.C. § 103(a) as being unpatentable over Nair. CONCLUSION For the reasons described herein and those already of record, we affirm the Examiner’s rejection of claims 11-18. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 11-18 112(b) Indefiniteness 11-18 11-14, 17, 18 102 Tapley 11-14, 17 18 11-14, 17, 18 103 Tapley 11-14, 17, 18 11, 12, 17, 18 102 Abucafy 11, 12, 17, 18 11, 12, 17, 18 103 Abucafy 11, 12, 17, 18 11-18 103 Nair 11-18 Overall Outcome 11-18 Appeal 2021-002639 Application 16/291,297 14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED