Part II:Is Patenting Food Ingredients in Cosmetics Obvious?

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by Louis Paul and Paul Thau

Aearated Sucrose Ester Compositions: An Example of Obviousness

U.S. Patent Application Serial No. 10/111,447 (assigned to Shiseido) is another recent example of aerated compositions containing sucrose esters. The Shiseido application illustrates and explores how a claim, to what may be old, is evaluated under the patent law to determine whether it is novel and non-obvious. This publicly available patent application can provide chemists and marketing professionals with a better understanding of patent concepts that have a direct and practical impact on product development. 

In April 2002, Shiseido filed U.S. Application Serial No. 10/111,447. This application, later published as U.S. Patent Application 2003/0072779, claimed a whipped O/W emulsion cosmetic comprised of a “gel-forming amount" of a polymer in the aqueous phase of the emulsion. 

The polymer—which is identified as gelatin, sodium alginate, carrageenan, gellan gum, glucomannan or curdlan—is claimed to be present in an amount sufficient to stably preserve bubbles at or below 37 C, and to produce a gel having no fluidity. The “gel-forming amount" of the polymer is later specified as being used at a concentration from 0.1 percent to 13 percent wt/wt and the polymer, itself, is described as having a melting point of 40 C or higher. It is not until the 10th claim that an O/W emulsion containing nonionic emulsifiers, and therefore sucrose esters, is recited.

After almost three years of back-and-forth arguments with the Patent Examiner, the claims of Shiseido’s U.S. Application were finally rejected. Shiseido appealed the Examiner’s decision to the Board of Patent Appeals and Interferences (BPAI). In November 2007, the BPAI upheld the Examiner’s rejection, and, in February 2008, the Shiseido application was deemed abandoned.

The February 2008 BPAI decision is important because it follows a far-reaching, precedential U.S. Supreme Court decision—KSR vs. Teleflex. As discussed below, the BPAI applied the KSR decision and concluded the invention claimed by Shiseido was not patentable as obvious.

KSR and the Law of Obviousness

Under U.S. patent law (and the patent law of most countries), a patent cannot be awarded unless the invention is found to be both novel and not obvious. In Europe, “obviousness" is called “lack of inventive step." 

Obviousness has a specific legal definition under U.S. law. Section 103 of Title 35 of the U.S. Code provides that a patent cannot be awarded where the features of the claimed invention are taught or suggested by the combined disclosures of two or more prior art references. This teaching, suggestion or motivation (i.e., to combine two or more references), must provide a person having ordinary skill in the art with a reasonable expectation of successfully creating the claimed invention without “undue experimentation".  

Prior to the U.S. Supreme Court’s decision in KSR vs. Teleflex, the U.S. Patent and Trademark Office (and courts enforcing patents) had been criticized for being overly rigid in applying the obviousness standard.  Because Patent Examiners and judges were requiring the teaching to combine references, some felt patents were being granted improvidently and incorrectly enforced. In KSR, the Supreme Court sent a clear message that the suggestion or motivation to combine need not be express. The Supreme Court was also careful to remind Patent Examiners and lower court judges that “obvious to try" is not sufficient.

In explaining the obviousness standard, the Supreme Court noted any need or problem known in the pertinent field(s) at the time of the claimed invention could be viewed as providing a motivation to combine two or more references: “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claim"

For example, where there is a need or market pressure to solve a problem, and there are a finite number of identified, predictable solutions, a person having ordinary skill in the art would have good reason to pursue the known options within his or her technical grasp. If this leads to the claimed invention, it is “likely not the product of innovation, but of ordinary skill and, perhaps, common sense."  Thus, market needs can render an invention obvious.

“A Piece of Cake"—Obviousness Upheld

Several aspects of the BPAI decision finding Shiseido’s U.S. Application 10/111,447 to be obvious, and, therefore, unpatentable are instructive and illustrate the law of obviousness. Shiseido’s claimed invention was amended during prosecution. On appeal, the broadest claim was directed to an aerated O/W emulsion having stably preserved bubbles at or below 37 C containing a gel-forming amount of a polymer (at a concentration of 0.1 percent to 13 percent wt/wt) in the aqueous phase of the emulsion and a long-chain acid soap (specifically, a sodium or potassium salt of fatty acid having more than 10 carbon atoms). Narrower, dependent claims further defined the claimed invention. For example, the emulsion is claimed to contain non-ionic surfactants.

Shiseido’s main argument was the combination of prior art references cited by the Patent Examiner did not teach each of the elements of the claimed whipped O/W emulsion cosmetic. Particular focus was placed on the limitation that the Shiseido whipped O/W emulsion contained 0.1 percent to 13 percent wt/wt of one of several specifically claimed gel-forming polymers, and that the bubbles within the emulsion were stably preserved at or below 37 C. In finding Shiseido’s claimed invention to be obvious, the Board relied on several prior art references, including, principally, U.S. Patent No. 6,323,246 (“Nakama").  Nakama teaches O/W cosmetic emulsions containing high molecular weight “viscosity regulators" (including polyvinyl alcohol, carboxyvinyl polymer and carboxymethyl-cellulose) and alkali metal salts of fatty acids, which can act as surfactants. 

The Nakama patent also taught the use of natural gums such as gelatin and traganth gum in O/W emulsions. The Board agreed with the Examiner that gelatin and carboxyvinyl polymers are functionally equivalent and a person having ordinary skill in the art (e.g., a cosmetic chemist) would have known to use gelatin as a substitute for xanthan gum or carboxyvinyl polymers.

Moreover, the Board found gelatin is both a “viscosity regulator" and a “gel-forming polymer".  In support of this conclusion, the Board relied on a prior art article relating to food chemistry. A prior art reference, a book by Susan Purdy entitled “A Piece of Cake," was cited for the teaching that it is well known that gelatin provides stability whipping cream.               

Nakama, however, did not expressly teach a whipped or bubble-containing emulsion. Thus, the question before the Board was whether a cosmetic chemist would have been motivated to include 0.1 percent to 13 percent wt/wt of gelatin in an O/W emulsion as taught by Nakama and, by whipping the emulsion, would have obtained bubbles that are stably preserved at or below 37 C. The answer was yes. 

To support a conclusion of obviousness, the Patent Examiner (and later the BPAI) needed to combine the teachings of Nakama with other prior art references.  Among these are U.S. Patent No. 5,518,752 (“Ito") and a published Japanese Patent Application, JP 56-79613 (“Tsutsumi"), both of which teach whipped O/W emulsions.

Importantly, the Board rejected Shiseido’s argument that Ito was not analogous art because it described bubbles in food. The Board found whipping of food emulsions to produce air bubbles (as described in Ito) is pertinent art and would have been considered by a cosmetic chemist. Ultimately, the Board reached the following conclusions:

  • Whipping of an O/W type emulsion creates bubbles that are held within the composition; thus, bubbles would be inherent in whipped, emulsified cosmetics.
  • A person having skill in the art would have been motivated to whip cosmetic emulsions of the type taught by Nakama, including those containing gelatin, in view of Tsutsumi’s teachings.
  • There would have had to be a reasonable likelihood of success in stabilizing the emulsions of Nakama by whipping them, as suggested by Tsutsumi, and thereby obtaining “stably preserved bubbles."

The food literature has been recognized as pertinent prior art, not only by the Patent Office, but also by applicants. For example, U.S. Patent Application 12/075,576 filed by Unilever in March 2008 claims aeratable sucrose ester emulsions.

More particularly, this Unilever application claims aeratable products comprising water, at least one oil (that is liquid at 25 C/1 ATM), at least one salt, and at least one sucrose ester (at a concentration of less than 5 percent wt/wt of the composition). An information disclosure statement submitted by Unilever included a published international patent application from a frozen food manufacturer.  PCT/US98/01025 discloses O/W whipped emulsions containing as the emulsifier sucrose esters of fatty acids.

Other recent patents directed to aerated topical compositions include U.S. Patent Nos. 6,251,954 and its continuation 6,605,290, both of which are assigned to L’Oréal. These two patents claim aerated O/W emulsions having a relative density from 0.2 to 0.8 and are comprised of (i) at least one amphiphilic polymer, (ii) at least one anionic surfactant and (iii) at least 30 percent by volume of air or an inert gas based on the total volume of the emulsion. Among the amphiphilic polymers taught to be suitable for use in these whipped products are radical polymers, as well as modified polymers of natural origin, including cellulose ethers with hydrophobic substituents. The Shiseido application discussed above likewise teaches the use of cationated hydroxycellulose in whipped O/W emulsion systems.

“Beauty food" is not simply the recognition that if a product is good enough to put in your body, it could and should also be good enough to put on your skin. Nor is it merely about emulating the luxurious textures of foods to create even more elegant tactile aesthetics for cosmetic products. Beauty food is powerful motivation under the Supreme Court’s decision in KSR versus Teleflex to learn from and apply the teachings and technologies of food chemistry in assessing the patentability of cosmetic and personal care inventions.

Louis C. Paul, Esq., is the founder of Louis C. Paul & Associates, PLLC—a Manhattan intellectual property law firm specializing in product development law for cosmetic, topical pharmaceutical and nutraceutical products.

Paul Thau is an independent cosmetics professional and president of PaCar Tech. 


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