Ex Parte Beilfuss et al

Board of Patent Appeals and Interferences

Jul 28, 2011

11003280 (B.P.A.I. Jul. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WOLFGANG BEILFUSS, RALF GRADTKE,
PETRA KOLDITZ, and KLAUS WEBER
__________

Appeal 2011-004012
Application 11/003,280
Technology Center 1600
__________

Before DONALD E. ADAMS, MELANIE L. MCCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for stabilizing cosmetic products, binder composition and process
for direct compression of poorly compressible drugs into tablets. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 18-40, 42, 46-49, 55-58 are on appeal.1 Claims 18, 44, and 50
are representative and read as follows:
18. A method which may be used for stabilizing cosmetic products with a
composition, said method comprising:
combining said composition with said cosmetic products,
wherein said composition comprises:
a) at least one 1- or 2- (C1 - to C24-alkyl) glycerol
ether (glycerol monoalkyl ether);
b) a mixture comprising at least a first and a second
component, said first and second components being different
aromatic alcohols and each comprising at least one member
selected from the group consisting of:
1) aryloxyalkanols,
2) arylalkanols, and
3) oligoalkanol aryl ethers, and
said first component and said second component being present in a
weight ratio of about 1:100 to about 100:1 of said first
component to said second component; and
c) vitamin E.

44. The method of claim 18, wherein:
a) said glycerol ether comprises 1-(2-ethylhexyl)
glycerol ether; and
b) said mixture comprises phenoxyethanol and benzyl
alcohol.

50. The method of claim 18, wherein said composition is in the form of a
concentrate, and wherein said concentrate comprises:
a) about 1% to about 30%, by weight, of said glycerol
monoalkyl ether; and
b) about 99% to about 70%, by weight, of said mixture.

1 Claim 41 is pending and not rejected.
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The Examiner rejected claims 18-40, 42, 46-49, 55-58 under
35 U.S.C. § 103(a) as unpatentable over Beilfuss `5102 and Beilfuss `825.3

OBVIOUSNESS
The Issues
The Examiner’s position is that Beilfuss ‘510 taught deodorant
compositions comprising glycerin monoalkyl ethers in combination with
other deodorant ingredients, including phenoxy ethanol and phenethyl
alcohol. (Ans. 5.) The Examiner found that the glycerin monoalkyl ethers
can be used in an aqueous solution in a concentration of 0.01 to 20% with a
preferred range of 0.10-15%. (Id. at 6.) The Examiner also found that,
given the concentration of glycerin monoalkyl ethers, the remaining
components in the composition would necessarily be in an amount up to
80%. (Id.) Additionally, the Examiner found that Beilfuss taught that “these
compositions provide excellent stability (i.e., such compositions can be used
for stabilizing cosmetic products).” (Id. at 5.)
However, the Examiner found that Beilfuss did not teach: (a) the
selection of benzyl alcohol as the arylalkanol (as required by instant claim
44); (b) the instantly recited range, concentration, and weight ratio of the
mixture of aromatic alcohols; (c) the addition of vitamin E to the
composition. (Id.)

2 US Patent No. 5,516,510 issued to Wolfgang Beilfuss et al., May 14, 1996.
3 Patent Application Publication No. WO 01/93825 by Wolfgang Beilfuss et
al., published Dec. 13, 2001.
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The Examiner found that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to substitute
benzyl alcohol (i.e., phenyl methyl alcohol) for the phenyl ethyl alcohol in
Beilfuss’ composition because benzyl alcohol is a structural homologue of
phenyl ethyl alcohol, and, thus, the compounds would have been expected to
function similarly. (Id.)
The Examiner also found that because Beilfuss taught the ratio of
glycerol monoalkyl ether to other co-active deodorizing ingredients (i.e.,
phenoxy ethanol and phenyl ethyl alcohol) a skilled artisan would have
found it obvious to try the same ratio range for phenoxy ethanol and benzyl
alcohol since they are known equivalents. (Ans. 7.) Additionally, the
Examiner found that it would have been obvious to vary the concentration
range of the co-active ingredients because Beilfuss taught the use of an
effective amount of one or more co-active deodorizing ingredients. (Id.)
Further, the Examiner found that it would have also been obvious to add co-
active ingredients in the same amount as each other, i.e., in a ratio of 1:1.
(Id.)
The Examiner found that Beilfuss ‘825 taught storage stable
compositions comprising glycerol monoalkyl ethers. (Id. at 7.)
Additionally, the Examiner found that Beilfuss ‘825 taught that glycerol
monoalkyl ether had been extensively used in cosmetics and pharmaceutical
preparations but peroxide formation can occur upon storing such
compositions. (Id. at 7-8.) The Examiner also found that Beilfuss ‘825
taught that glycerol monoalkyl ether-containing compositions can also lead
to a change in the odor of stored glycerol monoalkyl esters or products
containing such ingredients. (Id. at 8.) According to the Examiner, Beilfuss
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‘825 solved these problems by adding antioxidants, preferably vitamin E, as
a stabilizer. (Id.) The Examiner found that Beilfuss ‘825 taught that
preference is given to antioxidants which already have a physiologically
favorable action independent of glycerol monoalkyl ether or those that act
synergistically with the monoalkyl glycerol ether. (Id.) Additionally, the
Examiner found that Beilfuss ‘825 taught including components having
additive or active functions, including benzyl alcohol and phenylalkanols.
(Id.)
According to the Examiner, a skilled artisan would have found it
obvious to vary the concentration and ranges of glycerol monoalkyl ether
and the concentration of co-active ingredients because Beilfuss taught the
use of effective amounts of co-active ingredients. Additionally, the
Examiner reasoned that it would have been obvious to add vitamin E to the
composition because Beilfuss ‘825 taught adding vitamin E as a stabilizer in
glycerol monoalkyl ether containing compositions and to overcome the
disadvantages of such compositions. (Id.) According to the Examiner, the
artisan would have been motivated to modify Beilfuss in these ways with a
reasonable expectation of providing a composition that is effective in
stabilizing compositions and efficacious in its anti-microbial activities. (Id.
at 8-9.)
Regarding claims 18-40, 42, 46-49, 55-58, Appellants contend that
Beilfuss ‘510 did not suggest that its composition was effective for
stabilizing cosmetic products, i.e., “effective against gram positive and
negative bacteria, molds, fungi that cause odors in cosmetics.” (App. Br. 4.)
Rather, according to Appellants, Beilfuss ‘510 disclosed a method of using
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its composition to provide deodorizing activity against bacteria that can
cause body odor. (Id.)
Additionally, Appellants assert that Beilfuss ‘510 did not suggest a
solution to the problem of limited solubility of monoalkyl glycerol ethers
and aromatic alcohols in water-based products, i.e., by using the claimed
mixture of aromatic alcohols. (Id. at 5.) According to Appellants, Beilfuss
‘510 instead added the monoalkyl glycerol ethers to alcohol mediums such
as alkanols, glycols, and polyglycols to improve solubility of monoalkyl
glycerol ethers. (Id.)
Further, Appellants assert that Beilfuss ‘510 did not teach adding
vitamin E to its composition. (Id.) While Appellants acknowledge that
Beilfuss ‘825 taught the addition of vitamin E as a stabilizer to compositions
comprising monoalkyl glycerol ether, Appellants assert that the combined
prior art does not teach stabilizing a cosmetic product because there is no
recognition for the desired broad activity against gram positive and gram
negative bacteria, molds, and fungi, or the improved solubility of monoalkyl
glycerol ethers in cosmetic products. (Id.)
Regarding claims 44-45, Appellants assert that the combined prior art
did not teach a mixture comprising benzyl alcohol. (Id. at 7.) According to
Appellants, even if benzyl alcohol is substituted for the phenethyl alcohol
disclosed in Beilfuss ‘510, the modification still does not suggest stabilizing
a cosmetic product. (Id.) Further, Appellants assert that the prior art did not
recognize the synergistic effect achieved by combination of benzyl alcohol
and phenoxyethanol, i.e., “a significant increase in the activity of benzyl
alcohol and phenoxyethanol in presence of 1-2-ethylhexyl glycerol ether
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…against gram positive and gram negative bacteria molds and fungi.” (Id.
at 7-8.)
Regarding claims 50-54, Appellants assert that the combined prior art
did “not teach a method utilizing a concentrate.” (Id. at 8.) According to
Appellants Beilfuss ‘510 instead used an aqueous or alcohol-based
composition or the finished working solution. Therefore, Appellants assert
that any modification of Beilfuss ‘510 “would have rendered the intended
use of the deodorizing composition unsatisfactory for its intended purpose of
a working solution.” (Id.)
The issues with respect to these rejections are:
whether the record supports the Examiner’s conclusion that the cited
references would have made the claimed methods prima facie obvious, and
if so,
whether Appellants have provided evidence of unexpected results
such that the totality of evidence weighs in favor of nonobviousness.

Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 5-9.)
2. The Specification describes testing the effectiveness of various
preservatives and states the result as: “Significant increase in the activity of
the combination of benzyl alcohol and phenoxy ethanol in the presence of
10% by weight of Sensiva SC 50, based on the concentrate.” (Spec. p. 19, l.
29- p. 20, l. 14.)

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Principles of Law
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). “[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).
“In cases involving overlapping ranges … even a slight overlap in
range establishes a prima facie case of obviousness.” In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003).

Analysis
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness.
Claims 18-40, 42, 46-49, 55-58
Appellants argue claims 18-40, 42, 46-49, 55-58 as a group, therefore,
this group of claims stands or falls with independent claim 18. See
37 C.F.R. § 41.37(c)(1)(vii). We are not persuaded of nonobviousness by
Appellants’ assertion that Beilfuss ‘510 “does not suggest that its
composition was effective for stabilizing cosmetic products themselves, i.e.,
effective against gram positive and negative bacteria, molds, fungi that cause
odors in cosmetics.” (App. Br. 4, emphasis added.)
The Examiner rejected the claims over a combination of Beilfuss ‘510
and Beilfuss ‘825. (Ans. 5.) Beilfuss ‘510 taught a deodorant composition
comprising glycerin monoalkyl ether in combination with co-active
deodorant ingredients, including phenoxy ethanol (an aryloxyalkanol) and
phenethyl alcohol (an arylalkanol). (Id.) The Examiner relied on Beilfuss
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‘825 in the combination as teaching the addition of vitamin E as a stabilizer
to compositions comprising glycerol monoalkyl ether. (Id. at 7.) Thus, a
skilled artisan at the time of the invention would have found it obvious to
add vitamin E to the composition of Beilfuss ‘510 and would have
understood from the prior art that the combination may be used for
stabilizing cosmetic products.
To the extent that Appellants contend that such stabilization required
demonstrating effectiveness against gram positive and negative bacteria, we
remain unpersuaded. As the Examiner explained, this additional
requirement is not recited in the instant claims. (Ans. 23.) Further,
Appellants have not established that the combined prior art would not have
had effectiveness against gram positive and negative bacteria, as the
combined prior art provides the same composition recited in the method of
claim 18.
Appellants’ assertion (App. Br. 5) that Beilfuss ‘510 did not suggest
solving the problem of limited solubility of monoalkyl glycerol ethers and
aromatic alcohols in water-based products by mixing aromatic alcohols, as
instantly recited, is also unpersuasive. Beilfuss ‘510 taught that its
composition may comprise a mixture of aromatic alcohols, thus satisfying
the limitation of instant claim 18. As the Examiner explained, the prior art
inevitably overcame limited solubility issues in at least the same manner as
the claim invention. (See Ans. 10.)
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Claims 44-45
Appellants argue claims 44 and 45 together, therefore, both of these
claims stand or fall with claim 44. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants acknowledge that Beilfuss ‘510 taught a phenoxyethanol
in combination with 2-ethylhexyl glycerin ether and that phenyl ethyl
alcohol is disclosed as another possible deodorizing agent. (App. Br. 7.)
Additionally, Appellants do not challenge the Examiner’s position that it
would have been obvious to utilize benzyl alcohol for the phenyl ethyl
alcohol disclosed in Beilfuss ‘510. (Id.) However, Appellants assert that
“this proposed modification does not teach or suggest stabilizing a cosmetic
product, or providing a broad activity against gram positive and gram
negative bacteria, molds, and fungi.” (Id.) This argument is not persuasive
for the same reasons just discussed regarding claim 18.
Appellants further assert that “there is no recognition of the
synergistic effect achieved by the combination of benzyl alcohol and
phenoxyethanol,” i.e., “a significant increase in the activity of benzyl
alcohol and phenoxyethanol in the presence of 1-2-ethylhexyl glycerol ether
is achieved against gram positive and gram negative bacteria, molds and
fungi.” (Id. at 7-8, citing Spec. p. 20.)
We have considered the Specification test and result which Appellants
submit to support their assertion that the claimed invention provides a
synergistic effect. (See id.) The Specification states as the test result:
“Significant increase in the activity of the combination of benzyl alcohol and
phenoxy ethanol in the presence of 10% by weight of Sensiva SC 50, based
on the concentrate.” (FF-2.) However, the Specification does not establish
that these results were surprising or unexpected as compared with the closest
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prior art, Beilfuss ‘510, which comprised phenethyl alcohol instead of
benzyl alcohol. See Baxter Travenol Labs., 952 F.2d at 392. Moreover, the
Specification test and result is not commensurate in scope with the claimed
invention as the tested species did not include any other weight percentages
for the components. See Grasselli, 713 F.2d at 743. Consequently,
Appellants have not provided evidence of unexpected results sufficient to
overcome the obviousness of these claims.
Claims 50-54
Appellants challenge the rejection of claims 50-54 by asserting that
the combined prior art did “not teach a method of utilizing a concentrate.”
(App. Br. 8.) According to Appellants, modifying the aqueous or alcohol-
based composition of finished working solution of Beilfuss ‘510 into a
“concentrate” would render the composition unsatisfactory for its intended
purpose as a working solution. (Id.)
This argument is not persuasive because, as the Examiner explained, a
concentrate can be in the form of a solution. (Ans. 26.) Moreover, claim 50
recites that the concentrate comprises: “a) about 1% to about 30%, by
weight, of said glycerol monoalkyl ether; and b) about 99% to about 70%,
by weight, of said mixture,” which ranges overlaps the weight percentages
taught and suggested by Beilfuss ‘510 (See Ans. 6). See Peterson, 315 F.3d
at 1329.
Accordingly, we affirm the Examiner’s obviousness rejection of
claims 18-40, 42, 46-49, 55-58.

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CONCLUSIONS OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the claimed methods prima facie obvious.
Appellants have not provided evidence of unexpected results such that
the totality of evidence weighs in favor of nonobviousness.

SUMMARY
We affirm the rejection of claims 18-40, 42, 46-49, 55-58 under
35 U.S.C. § 103(a) as unpatentable over Beilfuss `510 and Beilfuss `825.
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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