Ex Parte Burgo

Board of Patent Appeals and Interferences

Aug 15, 2011

11895759 (B.P.A.I. Aug. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROCCO BURGO
__________

Appeal 2011-003300
Application 11/895,759
Technology Center 1600
__________

Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for preparing a personal care composition. The Examiner rejected the
claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

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Statement of the Case
Background
“The invention provides personal care compositions containing,
liquid, light viscosity, non-irritating, non-penetrating polyol polyesters esters
having high refractive indices, preferably greater than about 1.5 at 25° C.
These personal care compositions, depending on their underlying
formulation, exhibit improved shine, gloss, and/or clarity in comparison to
prior art formulations” (Spec. 3, ll. 2-5).
The Claims
Claims 1-9 and 33 are on appeal. Claims 1 and 6 are representative
and read as follows:
1. A method of preparing a highly refractive personal
care composition, the method comprising:
(a) reacting an aliphatic polyol having two to three
carbons atoms, which does not contain an ether group,
and benzoic acid, to obtain a polyol polyester having a
refractive index at 25° C. of greater than about 1.5; and
(b) incorporating the polyol polyester into a
personal care composition, wherein the personal care
composition is selected from the group consisting of a
soap, a cleanser, a shampoo, a skin conditioner, a hair
conditioner, a hair spray, a hair gel, a hair tonic, a hair
mousse, a hair pomade, a hair lacquer, a skin lotion, a
skin cream, a skin mousse, a skin ointment, a lipstick, a
mascara, a foundation, an eye shadow, or a color-
imparting cosmetic,
wherein the personal care composition has shine
and gloss properties based on the refractive index of the
polyol polyester, wherein the polyol polyester has a
viscosity of about 30 to about 200 centistokes at 25° C

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6. A method of preparing a highly refractive personal
care composition comprising incorporating a polyol
polyester into the personal care composition, wherein the
polyol polyester is represented by the formula (I):

wherein R is an aliphatic alkyl group that does not
contain an ether group and has a refractive index of
greater than about 1.5 at 25° C and wherein the personal
care composition is selected from the group consisting of
a soap, a cleanser, a shampoo, a skin conditioner, a hair
conditioner, a hair spray, a hair gel, a hair tonic, a hair
mousse, a hair pomade, a hair lacquer, a skin lotion, a
skin cream, a skin mousse, a skin ointment, a lipstick, a
mascara, a foundation, an eye shadow, or a color-
imparting cosmetic, wherein the personal care
composition has shine and gloss properties based on the
refractive index of the polyol polyester, wherein the
polyol polyester has a viscosity of about 30 to about 200
centistokes at 25° C.

The issues
A. The Examiner rejected claims 6, 7, 9, and 33 under 35 U.S.C. §
102(b) as anticipated over Carson
1
as evidenced by Yeeyoung
2
and
Chemspider
3
(Ans. 4).

1
Carson et al., US 2003/0003069 A1, published Jan. 2, 2003.
2
Dipropylene Glycol Dibenzoate, http://www.yeeyoung.co.la/
spec/dpgdb.htm, hereinafter referred to as “Yeeyoung” for
consistency with the prosecution.
3
http://www.chemspider.comlInChIKey=CGLQOIMEUPORRI-
UHFFFAOYAP, hereinafter referred to as “Chemspider” for
consistency with the prosecution.
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B. The Examiner rejected claims 1-5 and 8 under 35 U.S.C. § 103(a) as
obvious over Carson and Opgrande
4
(Ans. 5-6).

A. 35 U.S.C. § 102(b) over Carson, Yeeyoung, and Chemspider
The Examiner finds that Carson “teaches a composition comprising
20.0% sodium lauryl sarcosinate, 20.0% cocamidopropyl betaine, 7.5%
dipropyleneglycol dibenzoate, 7.5% mineral oil, 45.0% deionized water, and
fragrance, color, and preservative” (Ans. 4). The Examiner finds that
“Dipropylene glycol dibenzoate has the inherent properties of 150 Cst
viscosity at 25°C (See yeeyoung.co.kr) and 1.542 index of refraction (See
chemspider)” (Ans. 4). The Examiner finds that “the limitations that the
personal care composition is „highly refractive‟ and has an adjusted
refractive index of „1.4 at 25°C‟ are inherent properties of the composition
since the composition taught in the prior art is not distinguishable from that
of the instant claims” (Ans. 4).
Appellant contends “that the Examiner has not established that claims
6, 7, 9 and 33 are anticipated by Carson, as evidenced by Yeeyoung and
Chemspider” (App. Br. 4). Appellant contends that in “the example
provided at paragraph 54 of Carson, the resultant product consists of three
specific compositions: a surfactant composition and two emollient layer
compositions. One of the emollient layer compositions contains dipropylene
glycol dibenzoate” (App. Br. 5).

4
Opgrande et al., Benzoic Acid, KIRK-OTHMER ENCYCLOPEDIA OF
CHEMICAL TECHNOLOGY 625-637 (2003).
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Appellant contends that
The Examiner appears to argue that since a single
component of one of the phases described in Carson,
dipropylene glycol dibenzoate, has a reported viscosity at
125 degrees C of 150 Cst, the end products of Carson must
as well. This argument is flawed; a person of skill in
the art would appreciate that many factors contribute to the
viscosity and/or refractive index of a final composition,
including the mixture of components that is used and the
proportion in which they are present. Accordingly, the
recited refractive indices and/or viscosities of the claim
personal care composition do not necessarily flow from the
mere disclosure that such values are present in a component
of the compositions.

(App. Br. 6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Carson as evidenced by Yeeyoung
and Chemspider anticipates claim 6?
Findings of Fact
1. The Specification teaches that “[p]referred polyol polyesters for
use in the methods of the invention include ethylene glycol dibenzoate,
propylene glycol dibenzoate, and 1,3-propanediol dibenzoate” (Spec. 5 ¶
0023).
2. Carson teaches “a surfactant solution intended for personal
cleansing, having the added benefit of the emolliency/conditioning
characteristics of the additional, separate phases. As such, it must be
formulated of high foaming, mild detergents at sufficient percentages in the
product to effect cosmetically acceptable cleansing and foaming” (Carson 3
¶ 0031).
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3. Example 1 of Carson is reproduced below:

4. Carson teaches that:
It has been found that aromatic esters ("high density
aromatic esters") such as, for example, propylene glycol
benzoate, dipropylene glycol benzoate, dipropylene glycol
dibenzoate, propylene glycol dibenzoate, octyl
methoxycinnamate, menthyl anthranilate, octyl salicylate,
octyl cinnamate, and octocrylene, among others, do not
reduce either the volume or stability of foams produced by
surfactants. This is an unexpected result.

(Carson 2 ¶ 0018).
5. Carson teaches that the “invention allows one of ordinary skill
to readily produce unique personal cleansing compositions that are
composed of two, three or four separate phases which may be separately and
individually colored to produce visually impactful products” (Carson 5 ¶
0046).
6. Carson teaches that the composition may be “formulated as a
hair shampoo, a body cleanser or a hand cleanser” (Carson 8, col. 2, claim
29).
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7. Yeeyoung teaches that dipropylene glycol dibenzoate has a
viscosity of 150 Cst at 25°C (see Yeeyoung).
8. Chemspider teaches that dipropylene glycol dibenzoate has an
index of refraction of 1.542 (see Chemspider 2).
Principles of Law
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1349
(Fed. Cir. 2002). See, e.g., MEHL/Biophile Int’l Corp. v. Milgraum, 192
F.3d 1362, 1365 (Fed.Cir.1999) (“Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.”)
Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”). See also In re Spada,
911 F.2d 705, 708-09 (Fed. Cir. 1990).
Analysis
Carson teaches producing visually impactful personal cleansing
compositions (FF 5) by incorporating dipropylene dibenzoate into the
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cleansing solution (FF 3). Carson teaches that the composition may be a
hair shampoo, body cleanser or hand cleanser (FF 6).
Yeeyoung teaches that the dipropylene glycol dibenzoate of Carson
inherently has a viscosity of 150 Cst at 25°C (see Yeeyoung; FF 7).
Chemspider teaches that the dipropylene glycol dibenzoate of Carson
inherently has an index of refraction of 1.542 (see Chemspider 2).
We conclude that the Examiner has reasonably established a prima
facie case of anticipation, consistent with Best, since Carson teaches
preparing shampoos with dipropylene dibenzoate, which is a polyol
polyester of formula (I) which has a refractive index greater than about 1.5
and a viscosity of 150 Cst (FF 2-7), reasonably satisifying the requirements
of claim 6.
Appellant contends “that the Examiner has not established that claims
6, 7, 9 and 33 are anticipated by Carson, as evidenced by Yeeyoung and
Chemspider” (App. Br. 4). Appellant contends that in “the example
provided at paragraph 54 of Carson, the resultant product consists of three
specific compositions: a surfactant composition and two emollient layer
compositions. One of the emollient layer compositions contains dipropylene
glycol dibenzoate” (App. Br. 5).
We are not persuaded. Appellants claim 6 does not require that the
personal care composition be composed of a single layer, but rather simply
requires the incorporation of a polyol polyester with particular features into
the personal care composition. Carson teaches incorporation of dipropylene
glycol dibenzoate, a polyol polyester which satisfies the required features,
into a personal care composition (FF 2-7). “[L]imitations are not to be read
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into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d at 321).
Appellant contends that
The Examiner appears to argue that since a single
component of one of the phases described in Carson,
dipropylene glycol dibenzoate, has a reported viscosity at 25
degrees C of 150 Cst, the end products of Carson must as
well. This argument is flawed; a person of skill in
the art would appreciate that many factors contribute to the
viscosity and/or refractive index of a final composition,
including the mixture of components that is used and the
proportion in which they are present. Accordingly, the
recited refractive indices and/or viscosities of the claim
personal care composition do not necessarily flow from the
mere disclosure that such values are present in a component
of the compositions.

(App. Br. 6).
We are not persuaded. Appellants are misinterpreting claim 6. Claim
6 does not require that the final composition has a viscosity of 150 Cst at
25°C, but rather states that “the polyol polyester has a viscosity of about 30
to about 200 centistokes at 25°C” (Claim 6). Thus Carson, in light of
Yeeyoung, which evidences that the polyol polyester dipropylene glycol
dibenzoate has a viscosity of 150 Cst at 25°C, satisfies the actual
requirement of claim 6, which is that the polyol polyester have the particular
viscosity, not the composition.
The same argument applies to the refractive index, where claim 6
requires that the polyol polyester “has a refractive index greater than about
1.5 at 25°C” (Claim 6). Claim 6 imposes no requirement for a refractive
index on the final composition, but rather on the polyol polyester. The
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Examiner reasonably relies upon Chemspider to demonstrate that the
dipropylene glycol dibenzoate satisfies this requirement.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Carson as evidenced by Yeeyoung and Chemspider anticipates claim 6.

B. 35 U.S.C. § 103(a) over Carson and Opgrande
The Examiner finds that Carson “lacks a[n] instant teaching of
personal care composition comprising a polyol polyester having a viscosity
of about 50 to about 70 centis[t]okes. However Carson et al. makes such a
composition obvious. Carson is also silent as to how the polyol polymer is
formed” (Ans. 6). The Examiner finds that Opgrande teaches “that benzoic
acid and diethylene and dipropylene glycol are starting raw materials for the
formation of dipropylene glycol dibenzoate and diethylene glycol
dibenzoate” (Ans. 6).
The Examiner finds it obvious that if the ordinary artisan wished “to
obtain dipropylene glycol benzoate taught by Carson et al. one would look to
Opgrande et al. in order to do so” (Ans. 6). The Examiner finds it obvious
“that if the one wanted the composition taught by Carson et al. [t]o have a
lower viscosity one would use propylene glycol dibenzoate instead of
dipropylene glycol dibenzoate” (Ans. 6).
Appellant contends that “[a]lthough the disclosure of Opgrande may
teach generally that dipropylene glycol dibenzoate may be prepared using
benzoic acid as a starting material, it does not specifically disclose
preparation by reacting an aliphatic polyol having two to three carbon atoms
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and which does not contain an ether group” (App. Br. 8). Appellant
contends that “the combination of Carson and Opgrande does not teach . . .
incorporation of the polyol polyester into a composition that contains at least
a surfactant” (App. Br. 8). Appellant contends that “[n]one of Carson or
Opgrande discloses the significance or desirability of preparing a highly
refractive composition that has high gloss and shine in a personal care
composition” (App. Br. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Carson and Opgrande render claim 1
obvious?
Findings of Fact
8. Opgrande teaches that “[b]enzoic acid, its salts, and esters are
very useful and find application in medicinals, food and industrial
preservatives, cosmetics” (Opgrande 625).
9. Opgrande teaches that the “largest use for benzoic acid is as a
chemical raw material in the production of . . . glycol dibenzoate esters”
(Opgrande 631).
10. Opgrande teaches that the “benzoate esters of several glycols
are another large use for benzoic acid” (Opgrande 631).
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).

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“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
We are constrained because neither the prior art of Carson, nor the
prior art of Opgrande teaches the step of “reacting an aliphatic polyol having
two or three carbon atoms, which does not contain an ether group, and
benzoic acid, to obtain a polyol polyester” as required by claim 1. While
Opgrande teaches that benzoic acid is a raw material in the formation of
glycol dibenzoate esters, Opgrande does not teach that aliphatic polyols
lacking ether groups are another component (FF 8-10).
The Examiner does not identify any art, or any scientific reasoning,
which would require that the dipropylene glycol dibenzoate of Carson would
necessarily require an aliphatic polyol without an ether as a precursor along
with the benzoic acid. Without evidence regarding the aliphatic polyol
precursor required by claim 1, we are constrained to conclude that the
rejection does not establish a prima facie case of obviousness.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that Carson and Opgrande render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 6 under 35 U.S.C. §
102(b) as anticipated over Carson as evidenced by Yeeyoung and
Chemspider. Pursuant to 37 C.F.R. § 41.37(c)(1), we also affirm the
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rejection of claims 7, 9, and 33, as these claims were not argued separately.
We reverse the rejection of claims 1-5 and 8 under 35 U.S.C. § 103(a)
as obvious over Carson and Opgrande.

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-IN-PART

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