Ex Parte Adamy

Patent Trial and Appeal Board

Sep 18, 2012

11138110 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEVEN T. ADAMY
__________

Appeal 2011-011267
Application 11/138,110
Technology Center 1600
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 11-22.
1
We have jurisdiction under 35
U.S.C. § 6(b).

1
Claims 1-10 and 23-32 are also pending, but stand withdrawn from
consideration (App. Br. 2).
Appeal 2011-011267
Application 11/138,110

2
STATEMENT OF THE CASE
Claim 11 is representative of the claims on appeal, and reads as
follows:
11. A single phase depilatory composition, comprising: a thiol-based
depilatory agent, wherein said thiol-based depilatory agent consists
essentially of 2-aminoethanethiol [2AET], said composition further
containing an emulsifying agent, and a thickener; a pH buffer, to provide pH
of at least 11.0, wherein said pH buffer is calcium hydroxide; and wherein
said composition is devoid of biguanide or aminoguanidine sulfate.

The following grounds of rejection are before us for review:
I. Claims 11, 12, 14-17, and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Bauer
2

and Wells
3
(Ans. 3
4
).
II. Claims 11, 13, 18, and 22 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination Bauer, Wells, and
Bressler
5
(Ans. 5).
III. Claims 11-22 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 11-18 of USSN 11/915,552
6
(Ans. 5).
We affirm.

2
Bauer et al., US 5,531,987, issued Jul. 2, 1996.
3
Wells, US 4,618,344, issued Oct. 21, 1986.
4
As the Examiner did not number the pages of the Answer, we designate the
title page as page 1, and number consecutively therefrom.
5
Bressler et al., US 2005/0194409 A1, issued Sep. 8, 2005.
6
As USSN 11/915,552 has been abandoned, this rejection is moot, and we
do not discuss it further.
Appeal 2011-011267
Application 11/138,110

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ANALYSIS
Rejection I
The Examiner rejects claims 11, 12, 14-17, and 19-21 as being
rendered obvious by the combination of Bauer and Wells (Ans. 3-6). As we
agree with the Examiner‟s findings and conclusions, we adopt them as our
own.
Appellant argues that “[n]owhere does Bauer teach or suggest the use
of calcium hydroxide as a pH buffer” (App. Br. 5). Appellant asserts that
Wells does not make up that deficiency of Bauer, as the depilatories of
Wells require aminoguanidine, whereas instant claim 11 specifies that the
composition is devoid of biguanide or amino guanidine sulfate (id. at 5-6).
Appellant argues:
There is simply no indication whatsoever that the
calcium hydroxide disclosed in Wells, in combination with
aminoguanidine and either thioglycolic acid, thioglycerol or
calcium thioglycolate, can be used effectively in a depilatory
composition consisting essentially of 2-aminoethanethiol, as
claimed.

(Id. at 6.)
Appellant also argues that “according to Bauer, over 14 different
thiol-containing compositions are possible” (Reply Br. 2).
Appellant also asserts that “Bauer teaches the use of alkali metal hydroxide
(hydroxide of Na, Li, K, Rb and Cs),” whereas “Well teaches the use of
calcium hydroxide, a hydroxide belonging to the alkaline earth metal class
(Be, Mg, Sr, Ca, Ba, and Ra)” (id.). According to Appellant, “[a]lkaline
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earth metal is not an equivalent of alkali metal, hence not a replacement as a
hydroxide in Bauer” (id.).
We have carefully considered Appellant‟s arguments, but do not find
them convincing. We agree that Bauer does not specifically teach the use of
calcium hydroxide as a buffer. Bauer does teach, however, that the pH of a
composition to be used for hair removal is generally between 9 and 12.5, and
may be obtained using a variety of agents, such as, “for example, aqueous
ammonia, monoethanolamine, diethanolamine, triethanolamine, an alkali
metal or ammonium carbonate or bicarbonate, or an alkali metal hydroxide”
(Bauer, col. 4, ll. 38-42). Thus Bauer teaches that a wide variety of agents
may be used. Wells teaches that the pH of a thiol-based depilatory
composition ranges from 10.5 to 12.5, and may be achieved through the use
of an alkaline material, such as calcium hydroxide (Wells, col. 2, ll. 57-61).
Thus, given the teachings of Bauer, who suggests a wide variety of agents
may be used to obtain the desired pH, and the teachings of Wells, which
teaches that calcium hydroxide may be used to achieve a pH range that is
within the pH range of Bauer, we agree with the Examiner that it would have
been obvious to use calcium hydroxide as taught by Wells as the pH buffer
in the composition of Bauer, which does not require biguanide or
aminoguanidine sulfate. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
While Appellant appears to argue that it would be unpredictable that
one would achieve the claimed composition, as would be understood by the
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ordinary artisan, the calcium hydroxide serves the same purpose as the agent
of Bauer, that is achieving a desired pH. Moreover, all that is required is a
reasonable expectation of success, not absolute predictability of success. In
re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
Finally, as to Appellant‟s argument that Bauer teaches over 14
different thiol-containing compositions, that teaching does not render any
one of the 14 less obvious. Stated differently, a composition containing any
one of the 14 different thiols taught by Bauer would have been obvious.
KSR, 550 U.S. at 419 (“What matters is the objective reach of the claim. If
the claim extends to what is obvious, it is invalid under § 103.”).
Appellant points to Example 15 of the Specification, in which “single-
phase depilatory compositions containing 2-aminoethanethiol (2AET) and/or
thioglycolic acid and biguanide and/or aminoguanidine sulfate were
compared” (App. Br. 6). The example, according to Appellant,
demonstrates that the references relied upon by the Examiner “do not
suggest or teach the results found when calcium hydroxide is added to a
thiol-based depilatory agent „consisting essentially‟ of 2-aminoethanethiol”
(id.). Appellant thus asserts that the argument is not that “calcium hydroxide
is a novel buffer, per se, in depilatory compositions,” but that “the
combination of a depilatory agent consisting essentially of 2 AET and a
calcium hydroxide buffer is novel and yields unexpected properties and
results” (id. at 7-8).
Example 15 of the Specification is a “comparison of the single phase
depilatory agent of the present invention (see composition 4) with other
single phase depilatory agents containing 2-aminoethanethiol (2AET) and/or
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thioglycolic acid [TG] and biguanide and/or aminoguanidine sulfate” (Spec.
19). The following results were obtained:

(Id. at 20.) According to the Specification, the data suggests “the addition of
either biguanide or aminoguanidine sulfate did not help promote depilation,”
and “that use of 2AET only instead of the 2AET/TG mixture improved
depilatory activity when biguanide or aminoguanidine sulfate was present”
(Id.).
The burden of demonstrating unexpected results rests on the party
asserting them, and “it is not enough to show that results are obtained which
differ from those obtained in the prior art; that difference must be shown to
be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). “Mere improvement in properties does not always suffice to show
unexpected results.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Moreover, a
showing of unexpected results must be commensurate in scope with the
breadth of the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)
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Here, there is only a small difference in depilation time. Thus, while
the results obtained with the different composition may differ, there is no
showing that they are unexpected. In addition, as to the compositions that
contain biguanide and aminoguanidine as taught by Wells, we do not
consider Wells to be the closest prior art. Bauer is the closest prior art, and
Bauer does not require biguanide or aminoguanidine sulfate. As to the
“consisting essentially of,” the composition that contained 2AET gave the
same result as the composition that contained 2AET and TG. Thus, the
results presented in Example 15 are not evidence of unexpected results and
are not sufficient to rebut the Examiner‟s strong case of prima facie
obviousness.
Appellant also points to Example 12 of the Specification (App. Br. 8),
asserting that “the combination of calcium hydroxide and 2-
aminoethanethiol yields results (removing hair faster or as fast at lower pH
and with no signs of irritation) not suggested by Bauer alone or in
combination with Wells” (id.).
In Example 12, the following formulations were compared:

(Spec. 16). As taught by the Specification:
Formula 1 resulted in a pH of 12.42, formula 2 had a pH
of 11.7, and formula 3 had a pH of 12.8. In clinical testing,
formula 1 completely removed hair in an average time of 3
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minutes, formula 2 completely removed hair in an average time
of 3 minutes and 45 seconds, and formula 3 completely
removed hair in 4 minutes; indicating that the 2AET formulas
can remove hair faster or as fast at lower pH. Formulas 1 and 3
had similar irritation profiles showing mild and transient
irritation while formula 2 showed no signs of irritation.
In a separate assay on forearms, formulas 2 and 3 were
compared for mildness by applying the product and leaving on
for 10 minutes before removal. Formula 2 resulted in only 1
out of 21 panelist showing mild transient irritation, while
formula 3 showed signs of irritation in 7 out of 21 panelists.

(Id. at 17.)
Both Formula 1 and Formula 2 fall within the scope of claim 1, as
claim 1 uses the transition term “comprising,” and thus does not exclude the
use of additional pH buffers such as sodium hydroxide. Formula 2 and
Formula 3 have very comparable hair removal time, 3 minutes 45 seconds
versus 4 minutes. In addition, Formulas 1 and 3 shared similar irritation
profiles.
Thus, while the results obtained with the different compositions may
differ a small amount, there is no showing that those differences are
unexpected.
Thus, the results presented in Examples 12 and 15 are not evidence of
unexpected results and are not sufficient to rebut the Examiner‟s strong case
of prima facie obviousness.
As to claim 12, Appellant has requested that claim be cancelled (App.
Br. 9), we thus summarily affirm the rejection as to that claim.
As to claims 14, 15, and 16, Appellant argues that neither Bauer or
Wells, alone or in combination “render obvious the claimed depilatory
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composition having a pH less than 12.7, and containing less than 6.5% by
weight of calcium hydroxide as a pH buffer” (App. Br. 9). Appellant asserts
that Wells “consistently discloses about 10.8% of calcium hydroxide in all
of his examples,” and “all disclose the use of aminoguanidine and the use of
either thioglycolic acid, thioglycerol or calcium thioglycolate” (id.).
Appellant also points to Example 15 of the Specification, asserting that
“compositions 2 and 3 (Wells‟ formulation) show depilation times of 4-5
minutes and 5-6 minutes, whereas composition 4 (Appellant's formulation)
shows a depilation time of 3-4 minutes” (id. at 10). Appellant thus asserts
that Examples 12 and 15 demonstrate unexpected results, as “under equal
conditions (all contain less than 6.5% of calcium hydroxide, and having pH
less than 12.7) Wells‟ formulation shows inferior depilation time when
compared to the Appellant‟s formulation” (id.).
Appellant argues further that “Bauer does not render the Appellant‟s
invention obvious, as Bauer does not disclose or exemplify any depilatory
composition and does not suggest combining 2-aminoethanethiol and less
than 6.5% of calcium hydroxide to remove hair, such that hair removal
occurs at a fast rate with less irritation” (id. at 11).
Appellant‟s arguments are again not convincing. Claim 14, another
independent claim, is drawn to “[a] single phase depilatory composition,
comprising: 3% to 10% by weight 2-aminoethanethiol; and a pH buffer, to
provide said composition with a pH of less than 12.7, wherein said pH buffer
is calcium hydroxide, wherein said calcium hydroxide pH buffer comprises
less than 6.5% by weight of the composition.”
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Initially, we note that claim 14 does not exclude the presence of
biguanide or amino guanidine sulfate. As to Appellant‟s argument that the
examples of Wells consistently have 10.8% of calcium hydroxide, we agree
with the Examiner (Ans. 4) that it would have well within the level of skill
in the art to optimize the amount of calcium hydroxide in the composition to
achieve the desired pH, as determining the optimum values of result
effective variables is ordinarily within the skill of the art. See In re Boesch,
617 F.2d 272, 276 (CCPA 1980); see also 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.”).
As to Appellant‟s argument that Examples 12 and 15 demonstrate
unexpected results, we direct Appellant‟s attention to the discussion of those
examples above. Moreover, while Appellant asserts that the compositions of
the invention achieve results better than those achieved by Wells,
Appellant‟s argument is not commensurate in scope with the claim, because,
as already noted, claim 14 does not exclude the presence of biguanide or
amino guanidine sulfate.
As to claim 17, Appellant has requested that claim be cancelled (App.
Br. 11), we thus summarily affirm the rejection as to that claim.
As to claims 19 and 20, Appellant reiterates the arguments as to
claims 11 and 14 (App. Br. 11). Those arguments are not convincing for the
reasons set forth above with respect to claims 11 and 14.
As to claim 21, Appellant has requested that claim be cancelled (App.
Br. 12), we thus summarily affirm the rejection as to that claim.
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Rejection II
The Examiner rejects claims 11, 13, 18, and 22 as being rendered
obvious by the combination Bauer, Wells, and Bressler (Ans. 5). As we
agree with the Examiner‟s findings and conclusions, we adopt the as our
own.
Appellant argues that while it is acknowledged “that flowable
materials can be packaged into pressurized containers, or for that matter,
many different types of fluids can be packaged into many different
containers,” Bressler does not motivate or suggest “to one of ordinary skill
in the art to stabilize depilatory compositions with his container” (App. Br.
12-13).
Appellant points to Example 13 of the Specification, which
demonstrated that “the aluminum can with a bag-on-valve proved „useful for
improving stability during storage‟” (id. at 13). Appellant asserts that “the
use of aluminum can with a bag-on-valve to improve the stability of the
claimed depilatory agent, would not have been obvious in light of Bressler
directed to storing and dispersing „flowable highly viscous or flowable
fibrous dental materials‟” (id.).
Specifically, according to Appellant, the bag-on-valve system
minimizes exposure to oxygen during storage and use, and Bressler does not
suggest the use of the apparatus to stabilize depilatory compositions (id. at
13-14). Appellant asserts that the only reason to combine the references is
impermissible hindsight reasoning (id. at 14).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR 550 U.S. at 416.
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417. In determining whether obviousness is established by combining
the teachings of the prior art, “the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
As noted by Appellant, flowable materials can be packaged into
pressurized containers, and thus the combination is the use of a known
container to package an obvious composition, and is thus a “combination of
familiar elements according to known methods.” We thus agree with the
Examiner that it would have been obvious to package the depilatory
composition taught by the combination of Bauer and Wells in the bag-on-
valve system of Bressler (Ans. 5).
Example 13 of the Specification does not convince us otherwise. In
Example 13 of the Specification, a single phase depilatory was packaged
into two separate containers, the first being an aluminum can with a bag-on-
valve system, and the second being a standard high density polyethylene
bottle (Spec. 18). According the Specification, the polyethylene bottle
provided “a slightly less stable storage device for 2AET” (id. at 19).
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Specifically, the following results were obtained:

Thus, while there were very slight differences, there is no showing that those
differences are unexpected. Moreover, Bressler teaches that the packaging
prevents ambient air from reaching the product (Bressler, p. 1, ¶ 16),
providing further evidence that a slight increase in stability would not be
unexpected as the composition is protected from exposure to ambient air.
Appellant also argues that the Examiner has improperly grouped the
claims in this rejection, as claim 18 is dependent on independent claim 14,
and claim 22 is dependent on independent claim 19, but that the Examiner
does not address either claim 14 or claim 19 in the rejection (Reply Br. 2).
We find the Examiner‟s error to be harmless, as the independent
claims were all addressed above as to the discussion of the combination of
Bauer and Wells, and Bressler was only cited to reach the limitation added
by dependent claims 13, 18, and 22, that the “composition is packaged in a
bag-on-valve aluminum can packaging system.”

SUMMARY
We affirm Rejections I and II.

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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).

AFFIRMED

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