David Arthur. Sturgis et al.

Patent Trials and Appeals Board

Nov 26, 2019

14206134 - (D) (P.T.A.B. Nov. 26, 2019)

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.
14/206,134 03/12/2014 David Arthur STURGIS 12784M3 3805
27752 7590 11/26/2019
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ARTHUR STURGIS, ERIC SHANE HENLEY,
RANDALL DUDLEY GRIFFITH, PHI VAN CHU, and
STEVEN MICHAEL WUJEK SR.
Appeal 2019-004192
Application 14/206,134
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. 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(a). Appellant identifies the real party in interest as The Procter &
Gamble Company of Cincinnati, Ohio. Br. 1.
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CLAIM
Claim 1, the only independent claim in this appeal, is reproduced
below (bracketed numbers and indents added for reference and clarity):
1. A method of manufacturing a solid stick
antiperspirant composition, comprising:
[1] combining a first stream and a second stream,
[2] wherein the first stream comprises a structurant and a
non-ionic ethoxylated linear alcohol having a carbon chain
length from about 20 to about 40 and
[3] the second stream comprises an antiperspirant active
comprising a zirconium salt; and
[4] wherein the first stream and the second stream are
combined in a static mixer and the resulting composition is a
single phase.

Appellant did not separately argue dependent claims 2–10. These
claims fall with claims 1. 37 C.F.R. § 41.37(c)(1)(iv).

REJECTION
The Examiner finally rejected claims 1–10 under 35 U.S.C. § 103
(2012) as obvious in view of Walling et al. (US 2008/0063616 A1,
published Mar. 13, 2008) (“Walling”), Banowski et al. (US 6,849,251 B2,
issued Feb. 1, 2005) (“Banowski”), Galante et al. (WO 2007/030139 A1,
published Mar. 15, 2007) (“Galante”), Greczyn (US 5,378,452, issued Jan.
3, 1995) (“Greczyn”), and Swaile et al. (US 2005/0123494 A1, issued Jan. 3,
1995) (“Swaile”), as evidenced by Aston Chemicals (2015) (“Aston”). Ans.
3; Final Act. 3.
The Examiner found that Walling describes combining a first and
second stream in a mixer as recited in steps [1] and [4] of claim 1. Final
Act. 5. The Examiner found that Walling’s first stream, which is also a hot
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stream, comprises a solvent and a “gellant.” Id. The Examiner found that
Walling teaches that a gellant can be a wax or stearyl alcohol (id.), which the
Examiner found meets the limitation of [2] the structurant in the claimed
first stream (id. at 3, 4).
The Examiner found that Walling describes a second stream, a cold
stream, that comprises an antiperspirant comprising a zirconium salt as in [3]
of claim 1. Final Act. 5.
The second stream in Walling can also comprise a “cosmetic active,”
which the Examiner found can be a surfactant, the same genus of
compounds of which the claimed [2] “non-ionic ethoxylated linear alcohol
having a carbon chain length from about 20 to about 40” is a member.

Differences between Walling and claim 1
Claim 1 comprises [2] a first stream comprising a structurant and a
surfactant (the hot stream); and [3] a second stream comprising an
antiperspirant (the cold stream). The difference between Walling and the
method of claim 1 is that Walling describes the surfactant in [3] the second
stream (the cold stream), and not in [2] the first stream (hot stream) as
required by claim 1.
To meet this deficiency, the Examiner cited Greczyn and Swaile. The
Examiner found that Greczyn describes a batch process in which a
surfactant is blended with a structurant, the same two components of the
claimed [2] first stream. Final Act. 5. The claimed process, however, is not
a batch process as it is in Greczyn. The Examiner found that the surfactant
and structurant were combined in Greczyn with “no disclosed negative
effects due to heat.” Id. Thus, the Examiner found one of ordinary skill in
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the art would have known that a structurant and a surfactant could be
combined, as recited in [2] of claim 1, with no adverse effect.
The Examiner found it would have been obvious to modify Walling
by combining the surfactant with the structurant because any order of adding
ingredients is obvious (citing MPEP 2144.04 (IV)C)) and Greczyn does so
without describing negative effects. Final Act. 7.
The Examiner found that Swaile teaches “that foam-stabilizing agents
(i.e. surfactants) are desirable to include[,] but if they are anionic or
cationic[,] it is desired to minimize the interactions with the active
antiperspirant” and thus nonionic surfactants, ethoxylated fatty alcohols, are
preferred. Final Act. 6–7. For this reason, the Examiner concluded that
Swaile implies that there is “stability issue if the two are kept in contact for
too long,” providing a reason to modify Walling by separating the
antiperspirant from the surfactant and placing the surfactant in the hot stream
as in Greczyn and [2] of claim 1. Id. at 7.
The Examiner also cited Banowski for general teachings about
antiperspirants and to address limitations in dependent claims. Final Act. 6,
9. The Examiner found that Galante describes a non-ionic ethoxylated linear
alcohol having a carbon chain length from about 20 to about 40 as in step [2]
of claim 1. Final Act. 6.
DISCUSSION
Appellant contends that Walling teaches away from putting the
surfactant in the hot stream ([2] of claim 1) “by explicitly suggesting ‘any
heat sensitive component’, such as surfactants, should be in the cold process
stream [([3] of claim 1)].” Br. 3.
This argument does not persuade us that the Examiner erred.
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Walling teaches that the “cold process stream may also optionally
comprise any heat sensitive component that could chemically degrade or
deteriorate or react with components of the cosmetic or antiperspirant
composition at elevated temperatures or corrode metal process equipment at
elevated storage temperatures.” Walling ¶ 42. Appellant did not establish
that the claimed surfactant is heat sensitive.
Greczyn teaches adding a surfactant to a hot stream (Greczyn at 6:40–
52, in which a structurant (castor wax) and a surfactant (PEG 600 distearate)
are heated to 176°F). Thus, while Appellant asserts that there is a teaching
away from placing a surfactant in a hot stream, Greczyn contains an express
disclosure of doing so, and in combination with a structurant. Therefore, the
allegation that there is a suggested “teaching away” by Appellant is
inconsistent with the actual factual teaching in Greczyn.
The Examiner also cited evidence, unchallenged by Appellant, that
the elected surfactant species “is known to have high temperature stability”
and “thus heat stability would not be a concern” when using this surfactant.
Ans. 10.
With respect to Swaile, Appellant argues:
There is absolutely nothing in Swaile that suggests that less
time, or a time limit, is needed to allow the benefits of a
surfactant without the drawbacks. Swaile merely states the
drawback of a surfactant – that it may interact with the active –
and suggests that a nonionic surfactant may limit this drawback.
In addition, Swaile is entirely focused on foaming
antiperspirant compositions, which are formulated very
differently from solid stick compositions.
Br. 4.
Because a nonionic surfactant is claimed, we agree with Appellant
that the Examiner’s reasoning with respect to Swaile is not fully persuasive.
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However, the Examiner also reasoned that any order of adding
ingredients would have been obvious to one of ordinary skill in the art and
that Greczyn described such order of addition. Final Act. 7. We conclude
that this is sufficient reason to have modified Walling with Greczyn’s
teachings. Appellant did not identify a deficiency in this reasoning.
Appellant states that Greczyn “teaches a bicarbonate salt deodorant”
which “would defeat the present invention’s goal of more effective active
release.” Br. 4. This reasoning is not persuasive because the Examiner did
not rely on Greczyn’s composition, but rather on its teaching that a
surfactant and structurant can be combined in a hot stream without
deleterious effects.

Unexpected results
“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “To be
particularly probative, evidence of unexpected results must establish that
there is a difference between the results obtained and those of the closest
prior art, and that the difference would not have been expected by one of
ordinary skill in the art at the time of the invention.” Bristol-Myers Squibb
Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014); see also
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”). “The
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evidence presented to rebut a prima facie case of obviousness must be
commensurate in scope with the claims to which it pertains.” In re Dill, 604
F.2d 1356, 1361 (CCPA 1979); see also In re Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011) (“If an applicant demonstrates that an embodiment has an
unexpected result and provides an adequate basis to support the conclusion
that other embodiments falling within the claim will behave in the same
manner, this will generally establish that the evidence is commensurate with
[the] scope of the claims.”).
Appellant argues that Table 3 of the Specification “if properly
understood, demonstrates the benefits of the claimed invention.” Br. 5.
Appellant states the results are “surprising.” Id. Appellants state that, as
explained in the Specification, “the structurants in any solid antiperspirants
(soft solid or solid stick) can interfere with the release of the antiperspirant
active from the composition and thus reduce the efficacy of the
composition.” Id.
For reference, Table 3 of the Specification (Spec. 7) is reproduced
below:

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The “inventive” compositions are the solid antiperspirant stick of
Example 1 and 2. Spec. 7. The composition of Examples 1 and 2 are
described on page 31 of the Specification. The antiperspirant in Example 1
is Aluminum Zirconium Trichlorohydrex Gly and in Example 2 it is
Aluminum Zirconium Tetrachlorohydrex Gly. The solid sticks were
prepared by a dual stream process, in which the structurant (wax) and
surfactant (C20-40 Pareth 10 ethoxylate) were present in a hot stream (first
stream) and the antiperspirant was present in the cold stream (second stream)
in accordance with the claims. Spec. 31:14–32:8. The solid sticks of
Examples 1 and 2 comprise more than ten other ingredients. Spec. 31.
Table 3 on page 7 of the Specification shows the effectiveness of
different antiperspirant formulations based on the amount of sweat produced
(“more sweat” means performance is worse; “less sweat” means
performance is better). Appellant did not identify in the Brief how the sweat
was measured or direct us to a description of the sweat test in the
Specification (Br. 5).
Table 3 shows that Example 1 when compared to the “Currently
Marketed Solid Stick Composition” (“Benchmark”) resulted in the
production of 11.5 mg less sweat and when compared to the “Currently
Marketed Soft Solid” (“Benchmark”) resulted in the production of 22 mg
more sweat. Spec. 7. Example 1 was therefore better than the “Currently
Marketed Solid Stick Composition,” but not the Currently Marketed Soft
Solid.”
Table 3 shows that Example 2 when compared to the “Currently
Marketed Solid Stick Composition” resulted in the production of 62 mg less
sweat and when compared to the “Currently Marketed Soft Solid” resulted in
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the production of 28.5 mg less sweat. Spec. 7. Example 2 was therefore
better than the “Currently Marketed Solid Stick Composition” and the
“Currently Marketed Soft Solid.”
The “Currently Marketed Solid Stick Composition” is made by the
stream process but contains no surfactant. Spec. 7 (Table 3, second column
titled “Surfactant” and reciting “No”). While Examples 1 and 2 are better
than the “Currently Marketed Solid Stick Composition,” it is not the closest
prior art because Walling discloses a two stream process in which a
surfactant is present in the cold stream (Walling ¶¶ 36, 41 (cold stream
contains antiperspirant and active), ¶ 51 (surfactant is an active)), but the
“Currently Marketed Solid Stick Composition” does not contain surfactant.
To establish unexpected results, the comparison must be made to the closest
prior art and such comparison was not made here. Bristol-Myers Squibb
Co. v. Teva Pharms., 752 F.3d at 977; Baxter, 952 F.2d at 392. Thus, while
the presence of surfactant may be the reason for the better results observed
for the Inventive Solid Stick of Examples 1 and 2 compared to a stream
process in which there was no surfactant, it cannot be determined from this
comparison whether there would be similar better results for the Inventive
Solid Stick of Examples 1 and 2 compared to a composition made according
to the Walling prior art stream process that includes a surfactant in the cold
stream rather than the hot stream.
Example 2 is better than the “Currently Marketed Soft Solid.” The
“Currently Marketed Soft Solid” is made by the batch process and also does
not contain surfactant. Spec. 7 (Table 3, second column titled “Surfactant”
and reciting “No”). Thus, it also is not the closest prior art because it is
made by a different process than Walling and lacks the surfactant present in
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Walling. It cannot be determined whether the specifically claimed process is
responsible for the difference, or the presence of a surfactant in Examples 1
and 2.
The only comparative example in Table 3 of an antiperspirant with a
surfactant is of the “Comparative Solid Stick Composition.” Spec. 7. As
compared to the “Currently Marketed Soft Solid” (“Benchmark” in Table 3),
the “Comparative Solid Stick Composition” produced 36 mg more sweat.
Example 1 produced 22 mg more sweat “Currently Marketed Soft Solid”
and Example 2 produced 28.5 less sweat compared to the “Currently
Marketed Soft Solid.” Both Examples 1 and 2 performed better in the sweat
test than the “Comparative Solid Stick Composition” in the comparison
against the “Currently Marketed Soft Solid,” but that is not a significant
comparison to establish non-obviousness of the claimed composition. While
all three contained surfactant, the “Comparative Solid Stick Composition”
was made by a batch process, but Walling is made by the dual stream
process. It cannot be discerned whether the improvement observed in
Examples 1 and 2 is a result of the claimed process of using two streams in
which the surfactant and structurant are in the first hot stream or the
presence of the structurant and surfactant being in the same stream. No
comparison was made to Walling’s process. To be probative, the
comparison must be to the closest prior art. Bristol-Myers Squibb Co. v.
Teva Pharms., 752 F.3d at 977; Baxter, 952 F.2d at 392.
The results reported in Table 3 are also not commensurate in scope
with the claim. Dill, 604 F.2d at 1361; Kao, 639 F.3d at 1068. Examples 1
and 2 contain more than ten different components, and each is limited to a
specific zirconium salt. Spec 31. Claim 1, however, is not limited to a
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specific zirconium salt and does not require the specific ingredients
contained in Examples 1 and 2. Consequently, it cannot be determined
whether the results are due to the specific composition utilized in the sweat
test reported in Table 3 or the claimed two stream process. Example 2,
which performed better than the other compositions, contains Aluminum
Zirconium Tetrachlorohydrex Gly, but claim 1 is not limited to this
zirconium salt. The Specification states that the Tetrachlorohydrex salt is
better than all the examples (Spec. 6:24–7:2), but there are other differences
between Example 2 and the other tested compositions, such as the presence
of surfactant, batch process versus dual stream process, and the other
components present in Example 2.

SUMMARY
For the foregoing reasons, the obviousness rejection of claim 1, and
dependent claims 2–10, is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10 103 Walling,
Banowski,
Galante, Greczyn,
Swaile, Aston
1–10
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED