Ex Parte Balcke et al

Patent Trial and Appeal Board

Aug 26, 2016

13606536 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/606,536 09/07/2012
13897 7590 08/30/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Isabel Balcke
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-P50022 4804
EXAMINER
SINGH, RANDEEP
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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 ISABEL BALCKE, RAINER KROEPKE, and SABINE SCHULZ1
Appeal2015-002456
Application 13/606,536
Technology Center 1600
Before DEMETRA J. MILLS, RICHARD J. SMITH, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
aqueous cosmetic or dermatological preparation. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Beiersdorf AG.
(Appeal Br. 3.)
Appeal2015-002456
Application 13/606,536
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-32 are on appeal. (Claims Appendix, Appeal Br. 22-26.)
Claim 1 is illustrative and reads as follows:
1. An aqueous cosmetic or dermatological preparation for
application on wet or moist skin, wherein the preparation is
substantially emulsifier-free and comprises (i) at least two
different polyacrylic acid polymers, (ii) at least two different
C14-22 fatty alcohols, and at least about 13% by weight of (iii)
microcrystalline wax, based on a total weight of the
preparation.
Examiner's Rejection
Claims 1-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Clapp,2 Patel,3 and Wunsch.4 (Final Act. 2.)5
Issue
Whether the preponderance of evidence of record supports the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
Analysis
The issue in this case turns on the weight percent of microcrystalline
wax recited in the claims. Independent claim 1 recites "at least about 13%
by weight" of microcrystalline wax. (Appeal Br. 22.) Independent claim 26
recites "from about 16% to about 30% by weight" of microcrystalline wax.
(Id. at 25-26.) The Examiner states that
2 Clapp et al., US 2006/0239953 Al, published Oct. 26, 2006 ("Clapp").
3 Patel et al., US 2009/0281013 Al, published Nov. 12, 2009.
4 Wunsch et al., US 2008/0220031 Al, published Sept. 11, 2008.
5 Office Action dated Nov. 8, 2013.
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Appeal2015-002456
Application 13/606,536
Regarding the specific limitations of claims 1, 16, 1 7, and 26,
although Clapp [does] not explicitly recite the use of at least 13 %
by weight microcrystalline wax in their compositions, such an
amount is not seen as a critical limitation absent evidence to the
contrary, and it would have been well within the ordinary level
of skill in the art at the time of the invention to achieve the
claimed amount of microcrystalline wax in the compositions of
Clapp [] via routine experimentation and optimization.
(Final Act. 3.)
Appellants argue that "in the only exemplified compositions of
CLAPP that do contain microcrystalline wax (Examples 3 and 7) the wax is
present in concentrations (3 weight percent and 5 weight percent) which are
far below the concentration recited in instant claim 1." (Appeal Br. 10.)
Appellants' Specification also indicates that the microcrystalline wax is
present in a concentration of at least about 13% by weight, and higher
concentrations up to about 40% by weight. (Spec. 14, 11. 23-28.)
We find that Appellants have the better position. As an initial matter,
a particular parameter, such as the weight percent of microcrystalline wax,
must first be recognized as a result-effective variable, i.e., a variable which
achieves a recognized result, before the determination that optimum or
workable ranges of that variable might be characterized by routine
experimentation. In re Antonie, 559 F.2d 618, 620(CCPA1977). In this
case, the Examiner made no showing that the weight percent of
microcrystalline wax in Clapp is a result-effective variable to suggest that
optimization of that variable is appropriate. Moreover, Appellants'
Specification does not suggest a weight percent of microcrystalline wax of
less than about 13%, as the Specification requires "at least about 13%" of
microcrystalline wax. (Spec. 14, 11. 23-28.) The microcrystalline wax
ranges cited by Clapp (3% and 5%) are significantly below the at least about
3
Appeal2015-002456
Application 13/606,536
13% (claim 1) and from about 16% (claim 26). Therefore, Appellants'
Specification would appear to support the criticality of the at least about
13 % microcrystalline wax minimum amount, and the Examiner has not
provided evidence to the contrary.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness and has not done so. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). Accordingly, we reverse the rejection on appeal.
Conclusion of Law
A preponderance of the evidence of record fails to support the
Examiner's conclusion of obviousness under 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejection on appeal.
REVERSED
4