Ex Parte Albrecht et al

Patent Trial and Appeal Board

Oct 25, 2013

11004650 (P.T.A.B. Oct. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HARALD ALBRECHT, SVENJA CERV,
ALBRECHT DOERSCHNER, LUDGER KOLBE, JORG KUETHER,
CHRISTOPHER MUMMERT, STEPHAN RUPPERT and
MAREN WILKEN
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Appeal 2012-004558
Application 11/004,650
Technology Center 1600
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Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration of the Decision on Appeal entered
September 30, 2013. We have considered the arguments presented, but deny
the requested relief.

BACKGROUND
Appellants’ claims are directed to cosmetic cleansing compositions
comprising an extract of Radix Glycyrrhiza inflata and one or more
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surfactants, wherein the one or more surfactants comprises at least one
anionic surfactant. (See Claim 70.) The Examiner rejected the claims as
anticipated and obvious. We affirmed the anticipation rejection of claims
70, 71 and 84, reversed the anticipation rejection of claim 77, affirmed the
obviousness rejection of claims 70, 71, 73-85, and 87-99, and reversed the
obviousness rejection of claims 72 and 86. (Decision 3-14.)
Appellants request rehearing, alleging first that
while Appellants do not dispute that the terms “wetting agent”
and “surfactant” can be synonyms, Appellants do dispute that
each and every substance that can be employed as a “wetting
agent” necessarily is a “surfactant” and in particular, do dispute
that the use of sodium hyaluronate as a “wetting agent” for dry
eyes necessarily means that sodium hyaluronate is a
“surfactant” (as apparently assumed by the PTAB).

(Req. Reh’g 3-4.)
Second, Appellants allege the Decision describes Appellants’
argument that “there is no indication in the instant specification that sodium
hyaluronate is to be considered to be an (anionic) surfactant,” but does not
explain why the argument was not given any weight. (Id. at 4-5.)

ANALYSIS
We have carefully reviewed Appellants’ arguments presented in the
Request for Rehearing, but do not find them convincing. Regarding the first
allegation, the Decision squarely addresses Appellants’ argument that
evidence describing sodium hyaluronate as a wetting agent does not
necessarily mean that the substance is a surfactant. (See Decision 5-6.) In
particular, the Decision states that “Appellants have not rebutted the
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Examiner’s finding that sodium hyaluronate may be considered an anionic
surfactant.” (Decision 6.) Further, the Decision explains:
Appellants’ assertion that neither Oto nor the Examiner’s
reference Ul used sodium hyaluronate as a surfactant misses the
point. The claimed invention recites a composition “comprising
at least one anionic surfactant.” (App. Br. 26, Claims App'x.)
To read on this composition claim limitation, the prior art need
only disclose a composition comprising a component that is an
anionic surfactant. The prior art does not, itself, need to identify
or describe using the component as such a substance to be
anticipated. See Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987)(“A claim is
anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a
single prior art reference.”).

(Decision 6.) The same principle applies to reference W1. Just because
reference W1 “mention[s] surfactants and sodium hyaluronate separately”
(Req. Reh’g 3) does not establish that sodium hyaluronate may not act as a
surfactant, as other wetting agents do.
Regarding Appellants’ second allegation that the Decision did not
explain why the fact that the Specification did not identify sodium
hyaluronate as an “(anionic) surfactant,” we do so here. As acknowledged,
the Specification describes hyaluronic acid as a thickener. (Decision
4)(citing App. Br. 13). However, contrary to Appellants’ assertion, we do
not find that this disclosure provides “a clear indication that hyaluronic acid
is not intended to be encompassed by the term ‘surfactant(s)’ recited in the
instant claims.” (App. Br. 13.) The Specification does not teach that the
thickeners cannot be used as surfactants. Nor does the Specification teach
that surfactants exclude thickeners. The Specification description of
hyaluronic acid by one of its functions does not provide evidence that
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hyaluronic acid does not have, or may not be used for its, other functions.
Thus, the Specification description of hyaluronic acid as thickener does not
limit the broad claim term “anionic surfactant” so as to exclude hyaluronic
acid. “During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989).

CONCLUSION OF LAW
We have considered Appellants’ request, but find no point of law or
fact which we overlooked or misapprehended in arriving at our decision.

SUMMARY
We deny the requested relief.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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