Ex Parte ARGEMBEAUX

Patent Trials and Appeals Board

May 13, 2019

14914833 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/914,833 02/26/2016
13897 7590 05/15/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Horst ARGEMBEAUX
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3321-P50272 4272
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST ARGEMBEAUX1
Appeal 2018-008213
Application 14/914,833
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies Beiersdorf AG as the real party-in-interest. App. Br.
3.
Appeal 2018-008213
Application 14/914,833
SUMMARY
Appellant files this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 34, 40-42, 44--50, and 53 as
unpatentable under 35 U.S.C. § 103 as obvious over Schulz et al. (DE
102011085500 Al, May 2, 2013) ("Schulz");2 Stolz et al. (US
2011/0046034 Al, February 24, 2011) ("Stolz"); and Hornung et al. (US
2014/0127147 Al, May 8, 2014) ("Homung"). 3
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to an emulsifier-free cosmetic or
dermatological preparation that contains peeling active ingredients. See
Abstract.
REPRESENTATIVE CLAIM
Claim 45 is representative of the claims on appeal and recites:
45. A cosmetic or dermatological preparation, wherein the
preparation is emulsifier-free and comprises
(i) one or more polyacrylic acid polymers,
(ii) one or more C 14--22 fatty alcohols,
(iii) one or more waxes and/or a hydrocarbon mixture, and
2 We rely on the machine translation made of record by the Examiner in the
Non-Final Office Action of October 21, 2016.
3 Claims 35-39, 43, 51, and 52 are withdrawn. Final Act. 2.
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Application 14/914,833
(iv) one or more peeling active ingredients selected from
hydrogenated castor oil, polylactic acid and hydrated silica.
App. Br. 17.
ISSUES AND ANALYSIS
We agree with, and expressly adopt, the Examiner's findings,
reasoning, and conclusion that the claims are prima facie obvious over the
combined cited prior art. We address below the arguments raised by
Appellant below.
Issue 1
Appellant argues claims 34, 40-42, 44--50, and 53 together. App. Br.
6. Appellant argues that the Examiner erred by finding that Schulz teaches
an emulsifier-free cosmetic preparation containing a peeling agent. App. Br.
7-8.
Analysis
The Examiner finds that Schulz teaches emulsifier-free
dermatological compositions including one or more polyacrylic acid
copolymers, one or more C14-22 fatty alcohols (e.g., myristyl, cetearyl, and
stearyl alcohol), one or waxes ( e.g., microcrystalline wax), and sea salt. See
Ans. 6-7 (citing Schulz ,r 57). The Examiner finds that sea salt is a known
skin humectant and peeling agent, as demonstrated by the prior art and
Appellant's own Specification. See Ans. 7-8 (citing Spec. p. 1, 11. 31-32).
Therefore, the Examiner finds that Schulz teaches all of the claimed
functional elements (i}-(iv). See Ans. 8. The Examiner acknowledges that
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Application 14/914,833
Schultz does not teach hydrogenated castor oil as a peeling active ingredient.
Final Act. 7. Hydrogenated castor oil is recited by claim 45 and is the
species elected by Appellant as the peeling active ingredient in claims 34
and 53. 4
The Examiner finds that Stolz teaches a skin cleanser comprising
hydrogenated castor oil cleaning bodies. Final Act. 6 (see Stolz, Abstract).
The hydrogenated castor oil absorbs stains and dirt and functions as a
refatting agent and emulsifier. Id. (citing Stolz ,r,r 25, 43). The Examiner
finds that a person of ordinary skill in the art would have found it obvious to
replace the sea salt of Schulz with the hydrogenated castor oil taught by
Stolz to provide advantageous cleaning and cosmetic properties. See id. at 8.
The Examiner concludes that: "one of ordinary skill in the art would have
had a reasonable expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to one of
ordinary skill in the art before the effective filing date of the claimed
invention." See id. at 10.
Appellant argues that Schulz is: "completely silent with respect to the
(optional) presence of peeling agents." App. Br. 8 (emphasis in original).
Appellant further argues that a peeling agent would not provide Schulz's
preferred sensory benefits, nor be useful in Schulz's preferred embodiments
of moisturizing or shaving products. Id. (citing Schulz ,r,r 1, 12; claim 15).
We are not persuaded. Appellant argues against Schulz individually,
whereas the Examiner's rejection is based on the combination of Schulz and
4 See Election of Species filed June 16, 2017.
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Application 14/914,833
Stolz. "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Even if
Schulz alone does not teach a peeling active ingredient, the test of
obviousness 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 (C.C.P.A. 1981) (emphasis added).
Issue 2
Appellant argues that the Examiner erred by finding that Schulz
teaches sea salt as a peeling active ingredient. App. Br. 8-12.
Analysis
Appellant argues that Schulz is: "completely silent regarding the
intended function of the sea salt in the preparations disclosed therein." App.
Br. 8 ( emphasis in original). Appellant further argues that the absence of
particle size information and the small amounts of sea salt taught by
Schulz's formulations indicate that sea salt would not: "exert more than a
negligible peeling action." Id. at 8-9 ( emphasis in original). Appellant
argues that one of ordinary skill in the art would have recognized that
Schulz's preparations include sea salt in a dissolved form, where the
dissolved sea salt functions as a humectant rather than a peeling agent
(abrasive). See id. at 8-10. Therefore, Appellant argues: "one of ordinary
skill in the art would not have any reason to replace the (very small amount
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Application 14/914,833
of) sea salt in the compositions of SCHULZ by any known peeling agent."
Id. at 12 (emphasis in original).
We are not persuaded by Appellant's argument. "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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419
(2007). Appellant's Specification expressly discloses sea salt as a peeling
active ingredient. See Spec. p. 1, 11. 31-32; p. 3, 11. 1-2. Appellant's
Specification does not describe any minimum amount, particle size, or
physical state for sea salt to function as a peeling active ingredient. See id.
Moreover, the independent claims do not recite any minimum amount,
concentration, or physical state of peeling active ingredient. See Ans. 10.
As shown by the Examiner, the prior art establishes that sea salt was well
known in the art as an abrasive or peeling agent used in cosmetic
formulations. See id at 9. Therefore, we are not persuaded that the
Examiner erred in finding that Schulz teaches the limitation of a peeling
active ingredient being sea salt.
Issue 3
Appellant argues that the Examiner erred in combining Stolz's
hydrogenated castor oil cleaning bodies with Schulz's cosmetic preparation.
App. Br. 13-14.
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Analysis
Appellant argues that: "the cleaning bodies of STOLZ contain not
only hydrogenated castor oil but also contain inter alia 2 to 30 % by weight
of surfactants." App. Br. 13 ( citing Stolz claim 1) ( emphasis in original).
Therefore, Appellant argues that a person of ordinary skill in the art would
not have combined Stolz's surfactant containing formulation with Schulz's
surfactant-free (emulsifier-free) formulation. See id.
We are not persuaded by Appellant's argument. "A determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012). Stolz teaches a skin cleaning agent containing a
cleaning body containing hydrogenated castor oil; surfactants; thickeners;
water and "optionally further auxiliaries." Stolz ,r,r 16-20. Stolz further
teaches that: "the cleaning body according to the invention contains ... most
preferably at least 90% by weight castor oil" and "may contain further
substances, especially waxes, in addition to the hydrogenated castor oil."
Stolz ,r,r 22, 27. Rather than teach that the cleaning bodies must include
surfactants, Stolz suggests adding hydrogenated castor oil-based cleaning
bodies to conventional skin cleaning agents containing surfactants. See
Stolz ,r,r 29--31, 53. Therefore, Stolz distinguishes between cleaning bodies
containing hydrogenated castor oil and cleaning agents containing
surfactants. As such, we are not persuaded that combining Stolz's
hydrogenated castor oil cleaning bodies with Schulz's emulsifier-free
composition also requires adding surfactants to Schulz's composition.
Appellant further argues that: "one of ordinary skill in the art would
not have replaced [Schulz's sea salt] by the hydrogenated castor oil
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containing cleaning body of STOLZ because according to paragraph [0026]
of STOLZ, '[t]he cleaning bodies according to the invention have no or only
little abrasive effect."' App. Br. 13-14 ( emphasis in original).
We are not persuaded by Appellant's argument, as Stolz expressly
teaches hydrogenated castor oil bodies as a substitute for known abrasive
cleaning materials. See Stolz, ,r 1-15. In particular, Stolz teaches that the
cleaning bodies overcome the drawbacks of prior art abrasives by
mechanically supporting the cleaning action of surfactant-like components
and exhibiting high skin compatibility. See Stolz ,r,r 2, 15. Moreover, Stolz
teaches that: "it is also possible to mix the cleaning bodies ... that are based
on hydrogenated castor oil with abrasives ... and to employ the mixture in
skin cleaning agents." Stolz ,r 51. Therefore, we are not persuaded that the
Examiner erred in finding a reason to modify Schulz with Stolz's
hydrogenated castor oil cleaning bodies.
Issue 4
Appellant argues that Stolz is non-analogous art and would not have
been combined with Schulz. App. Br. 14.
Analysis
Appellant argues "the preparations of SCHULZ are shower
preparations having a moisturizing effect. By contrast, the compositions of
STOLZ are cleansing agents for removing medium to heavy dirt from skin."
App. Br. 14. Because Stolz's Examples teach paste compositions for
removing soot, grease, and lubricating oils, Appellant argues that one of
ordinary skill in the art would not have modified Schulz's composition with
the "non-analogous" compositions of Stolz. See id.
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We are not persuaded by Appellants' argument that Stolz is non-
analogous art that would not have been combined with Schulz by a person of
ordinary skill in the art. "Two separate tests define the scope of analogous
prior art: ( 1) whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved." In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Here, we find that the present invention,
Schulz, and Stolz are both directed to cosmetic dermatological compositions,
specifically, cleaning compositions. See Spec. p. 1, 11. 5-8; see Schulz ,r 12;
see also Stolz ,r 15. We therefore find that both Stolz and Schulz are in the
same field of endeavor as the invention and, therefore that both are
analogous to the invention and each other. See Ans. 10.
With respect to the different applications of Schulz and Stolz, the
Examiner has provided a reason that a person of ordinary skill in the art
would have sought to combine the stain- and dirt-absorbing properties of
Stolz's cleaning bodies with the Schulz's shower formulations and therefore
pertinent to the same problem. Ans. 9-10. Furthermore, Stolz teaches
hydrogenated castor oil functions as a refatting agent and emulsifier, and is
therefore compatible with Schulz's moisturizer. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results," KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). We are consequently not persuaded that the
Examiner erred in concluding the claims are obvious over Schulz and Stolz,
and we affirm the Examiner's rejection of the claims.
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DECISION
The Examiner's rejection of claims 34, 40-42, 44--50, and 53 under
35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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