Ex Parte Carnali et alDownload PDFPatent Trial and Appeal BoardJun 8, 201612255377 (P.T.A.B. Jun. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/255,377 10/21/2008 Joseph Oreste Carnali 201 7590 06/10/2016 UNILEVER PATENT GROUP 800 SYLVAN A VENUE AG West S. Wing ENGLEWOOD CLIFFS, NJ 07632-3100 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. J9096(C) 3240 EXAMINER BROWE, DAVID ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 06/10/2016 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): patentgroupus@unilever.com pair_unilever@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH ORES TE CARNAL!, PRA VIN SHAH, QIANG QIU, and ANTHONY JOHN WEIR1 Appeal2014-005731 Application 12/255,377 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to soap based wash formulations which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE The present invention relates to soap-based liquid body and facial wash compositions. Spec. 1. The compositions comprise anti-microbial agents such as silver, zinc or copper particles or mixtures thereof. Id. By 1 Appellants identify the Real Party in Interest as Conopco, Inc., d/b/a Unilever. Appeal Br. 3. Appeal2014-005731 Application 12/255,377 "using high solvent/low water compositions along with incompletely neutralized fatty acids in combination with modified benefit agents (particles and oils), enhanced deposition of the antimicrobial agents is achieved." Id. Claims 1 and 3-9 are on appeal. Claim 1 is illustrative and reads as follows: 1. A liquid soap composition compnsmg: (a) 10-50% by weight of a fatty acid blend consisting essentially of C12-C1s fatty acids; (b) wherein degrees of neutralization of fatty acid blend is between 70% and 90%; ( c) 10-40% by weight of a co-solvent system consisting essentially of dipropylene glycol and glycerin; ( d) less than about 18% by weight water; ( e) 3 to 20% by weight emollient or occlusive oil; (f) 0.01to10% by wt. antimicrobial agents; and (g) wherein ( e) and ( f) are modified by treatment \vith multivalent soap and/or hydrophobic agent selected form the group consisting of hydrophobically modified cationic polymer, hydrophobically modified non-ionic polymer and mixtures thereof; wherein ratio of dipropylene glycol and glycerin of ( c) to water ( d) is from 1.0 to 5. Br. 12 (Claims Appendix). The claims stand rejected as follows: Claims 1 and 3-9 have been rejected under 35. U.S.C. § 103(a) as obvious in view of Stella et al., US 2004/0234565 Al, published Nov. 25, 2004 ("Stella"), combined with Seki, US 6,987,085 B2, issued Jan. 17, 2006 2 Appeal2014-005731 Application 12/255,377 ("Seki"), and Buchholz et al., US 2006/0246149, published Nov. 2, 2006 ("Buchholz"). Issue DISCUSSION In rejecting claims 1 and 3-9, the Examiner finds that Stella et al. disclose a liquid soap composition comprising a) 10-50 wt.% of a fatty acid blend of C12-C1s fatty acids; b) and c) at least 10 wt.% and preferably no more than 60 wt.% fluid consisting of co-solvent and water; d) 3-20 wt.% emollient or occlusive oil; and e) 0.01-10 wt.% pigment or pearling particles; wherein d) and e) are modified by treatment with multivalent soap and/or a hydrophobic agent selected from the group consisting ofhydrophobically modified cationic polymer, hydrophobically modified nonionic polymer, and mixtures thereof (abstract; Pg. 1, secs.0002,0008;Pg.2,secs.0023,0026,0030- 0031; Pg. 3,secs. 0034, 0038-0040; Pg.4,secs. 0045,0050,0057;Pg. 5, secs.0060,0065;Pg. 7, sec. 0100). The co-solvent can be a mixture of glycerin and another polyhydric alcohol, such as dipropylene glycol (Pg. 4, sec. 0050). Final Action 4. The Examiner also finds that Seki discloses a liquid soap composition comprising a) 10-50 wt.% or 20-40 wt.% of a fatty acid blend of C12-C1s fatty acids, wherein the degree of neutralization of the fatty acid blend is between 70-90% or 75-85 wt.%; b) 10-40 wt.% co- solvent; c) water; d) emollient or occlusive oil; and e) pigments and pearling agents (Col. 1, Ins. 65- 67; Col. 2, Ins. 31-34; Col. 3, Ins. 29-58, 65-67; Col. 4, Ins. 1, 4-6, 9; Col. 7, Ins. 4-18, 35-50). The 3 Appeal2014-005731 Application 12/255,377 co-solvent is a mixture of glycerin and dipropylene glycol (Col. 3, Ins. 29-58; Col. 7, Ins. 10-13, 40- 43). Final Action 4--5 The Examiner also finds that Buchholz et al. disclose a liquid soap composition comprising a) a fatty acid blend of C12-C1s fatty acids; b) a co-solvent; c) water; d) emollient or occlusive oil; and e) antimicrobial pigment particles (abstract; Pg. 1, secs. 0001, 0010, 0013- 0014; Pg. 2, secs. 0015-0017; Pg.4, secs. 0032,0038; Pg. 5, sec.0045; Pg. 6, secs. 0048- 0049; Pg. 10,sec. 0064; Pg. 24, sec. 0243; Pg. 25, secs.0247, 0249-0250, 0253, 0263). The co- solvent can be a mixture of glycerin and dipropylene glycol (Pg. 24, sec. 0263). The oil is mineral oil, petrolatum, or another oil selected from the group consisting of hydrocarbon oils, silicone oils, ester oils, and mixtures thereof (Pg. 25, secs. 0249-0250, 0253). The antimicrobial agents are pigment/pearling particles composed of iron oxide, mica, or like optical effect agents, together with an antimicrobial agent selected from the group consisting of silver, zinc, copper, iron, and mixtures thereof; or other agents selected from the group consisting of inorganic and organic antimicrobial particles (abstract; Pg. 1, sec. 0014; Pg. 2, secs. 0015-0017; Pg. 4, sec. 0032). Final Action 5-6. The Examiner goes on to find that Since Seki discloses that a liquid soap composition in which i) the degree of neutralization of the fatty acid blend is between 70-90% or 75-85 wt.%; and ii) the co-solvent of glycerin and dipropylene glycol is preferably about 15-20 wt.%, for combinations of glycerin with 4 Appeal2014-005731 Application 12/255,377 dipropylene glycol; can improve the foamability and aging stability of the composition, as well as reduce a tight skin feeling and impart a moist skin feeling after cleansing Col. 2, Ins. 31-34; Col. 3, Ins. 54-58; Col. 8, Ins. 24-30), one of ordinary kill in the art would be motivated to incorporate specifically a 70-90% or 75-85 wt.% degree of neutralization of the fatty acid blend, and 15-20 wt.% of the co-solvent into the composition of Stella et al., with the reasonable expectation that the resulting composition will successfully exhibit improved foamability and aging stability, as well as reduced tight skin feeling and a moist skin feeling after cleansing. Final Action 7. With respect to Buchholz, the Examiner finds that since Buchholz et al. disclose that pigment/pearling particles can be modified by the addition of silver particles, and that the thus modified particles exhibit antibacterial activity (abstract; Pg. 4, sec. 0032), one of ordinary skill in the art would be motivated to incorporate the thus modified pigment/pearling particles into the method of Stella et al., with the reasonable expectation that the resulting method will enhance the deposition of antibacterial particles onto the skin. Final Action 8. The Examiner also finds that from the cited teachings of the references one skilled in the art would have had a reasonable expectation of success in creating the claimed invention. Final Action 7. Therefore the Examiner concludes that the invention would have been prima facie obvious to one of ordinary skill in the art as shown by the references. Final Action 8. 5 Appeal2014-005731 Application 12/255,377 Appellants contend that minimizing the use of water combined with the specific solvent system and the incomplete fatty acid neutralization are critical to ensuring the extensive liquid/solid crystalline structure of the claimed composition which, in tum, helps storage stability and enhances the deposition of antimicrobial agents. Br. 9. Appellants argue that they have demonstrated the criticality of minimizing water and the use of the specific solvent systems through the examples contained in the present disclosure. Br. 9--10. Appellants go on to argue that none of the references recognize the criticality of these limitations. Br. 10. With respect to Stella, Appellants argue that Stella is not concerned specifically with liquid soap based systems and that Stella does not teach the combination of incomplete fatty acid neutralization, low water and the specific solvent system to enhance stability and the deposition of antimicrobials. Id. Appellants next argue while Seki teaches a soap-based system, the system is a high water composition. Id. Appellants also argue that there is nothing in the references to prompt a person of ordinary skill in the art to combine the teachings of Stella and Seki to minimize water and hydrophobically modify antimicrobial agents. Id. Appellants conclude their arguments by noting the Buchholz is limited to antimicrobial pigments and does not cure the deficiencies of Stella and Seki. Br. 11. The issue with respect to this rejection is whether the Examiner has established by a preponderance of the evidence that the claims are obvious in view of Stella combined with Seki and Buchholz as defined by 35 U.S.C. § 103(a). 6 Appeal2014-005731 Application 12/255,377 Findings of Fact FF 1. Stella discloses a personal care composition which contains particles that are deposited on the skin during a shower or bath. Stella i-f 8. FF2. The personal care composition disclosed in Stella can comprise a cleansing composition that can contain fatty acid soaps. Stella i-fi-1 60 and 65. FF3. The particles in Stella comprise less than about 20 weight percent of the composition to as low as 0.01 weight percent. Stella i-f 34. FF4. The particles in Stella can be hydrophobic or hydrophobically modified particles. Id. FF5. The personal care composition of Stella includes an aqueous phase. Stella. ,-r 50. FF6. The aqueous phase of Stella comprises from 10 to 90 weight percent of the personal care composition. Id. FF7. The aqueous phase contains a fluid which comprises "water, mono- and polyhydric alcohols (glycerin, propylene glycol, ethanol, isopropanol, etc.), or any material which is water miscible." Id. FF8. Stella discloses the use of skin compatible oils including mineral oils and petrolatum. Stella i-fi-130-31. FF9. Seki discloses a liquid soap that exhibits improved storage stability. Seki col. 2, 11. 10-14. FF 10. Seki discloses a skin cleansing composition containing fatty acids with a neutralization degree of from 60 to 100%. Seki col. 2, 11. 32- 34. 7 Appeal2014-005731 Application 12/255,377 FF 11. Seki teaches that The skin cleansing composition of the present invention can further contain glycols or glycol ethers. Specifically, ethylene glycol, propylene glycol, 1,3-butylene glycol, diethylene glycol, dipropylene glycol, isoprene glycol, polyethylene glycol (average molecular weight of not higher than 2,000), polypropylene glycol (average molecular weight of not higher than 1,500), diethylene glycol mono- 35 ethyl ether and the like are included, among which dipropylene glycol and diethylene glycol monoethyl ether are preferable. Seki col. 3, 11. 29--37. FF12. Seki discloses that the glycols are present in an amount ranging from 3 to 30 weight percent of the composition with from 3 to 28 weight percent preferred. Seki col. 3, 11. 52-58. FF13. The liquid soap of Seki contains from about 20-70% by weight water. Seki col. 3, 11. 59---62. FF14. Buchholz teaches the use of antimicrobial pigments in soaps. Buchholz i-f 49. Principles of Law A proper § 103 analysis requires "a searching comparison of the claimed invention-including all its limitations-with the teaching of the prior art." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). "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 8 Appeal2014-005731 Application 12/255,377 claim extends to what is obvious, it is invalid under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). "A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). "The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains." In re Dill, 604 F.2d 1356, 1361(CCPA1979). Analysis Claim 1 is representative of the rejected claims. We agree with the Examiner that claim 1 would have been obvious in light of the teachings of Stella, Seki and Buchholz. Stella teaches a personal care composition which contains particles for deposition on the skin. FF 1. The composition can be a cleansing composition containing fatty acid soaps as required by claim 1. FF 2. The composition contains an aqueous phase that can contain water and glycerin and propylene glycol. FF 6 and 7. The particles in Stella can be hydrophobically modified as required by claim 1. FF 4. As required by claim 1, Stella teaches the use of an emollient or occlusive oil. FF8. Stella's composition differs from the composition of claim 1 in that it does not "explicitly disclose that the fatty acid blend of C12-C1s fatty acids advantageously exhibits a degree of neutralization between 70-90% or 75-85 wt%; that the composition advantageously contains 10-40 wt% of the co- solvent of glycerin and dipropylene glycol; and that the deposition specifically of antimicrobial particles can be enhanced." Final Action 6. 9 Appeal2014-005731 Application 12/255,377 Seki, however, teaches a liquid soap composition which exhibits improved storage stability. FF9. Seki teaches that the liquid soap contains fatty acids with a degree of neutralization of from 60% to 100% which overlaps with the range recited in claim 1. FF 10. Seki contains a mixture of dipropylene glycol and glycerin, the specific co-solvent system recited in claim 1 as well as water. FF 11-13. Seki teaches that the mixture of dipropylene glycol and glycerin can be present in an amount ranging from 3 to 30 weight percent of the composition which overlaps with the range in claim 1. FF 12. Buchholz teaches the inclusion of antimicrobial pigments into soaps as required by claim 1. FF 14. Each of the components of the soap composition of claim 1 are, thus, taught by the references as being useful in liquid soap compositions. We also agree with the Examiner that one skilled in the art would have been motivated to combine those components to create the claimed composition. Ans. 6-7. Because Seki teaches that its fatty acids and glycol solvents are useful components in a liquid soap composition having improved properties, including improved storage stability (FF9-12 ), a person of ordinary skill in the art would have been motivated to use those components to improve the storage stability and performance of the composition described in Stella. Similarly one skilled in the art would have incorporated the teachings of Buchholz to add anti-microbial activity to the composition. FF14. Appellants argue that the minimization of water, use of specific solvent systems and incomplete fatty acid neutralization are critical to ensuring that extensive liquid/solid crystalline phase system which in tum 10 Appeal2014-005731 Application 12/255,377 promotes storage stability and enhance deposition of antimicrobial agents. Br. 9. Appellants go on to argue that the criticality of these factors has been demonstrated in the examples. Br. 9-10. We are unpersuaded. In their argument, Appellants specifically point to the co-solvent systems shown in the Examples 15-19 and 21-27 at page 23 of the specification as demonstrating the importance of the specific co-solvent system recited in the claims. Br. 9. While the example appears to show improved deposition for one sample using glycerin and dipropylene glycol, the example only shows a co-solvent system that comprises 31.8 % of the soap system. Spec. 23. The other examples recited by Appellants (examples 2-4) only teach co-solvent amounts ranging from 31.8 % to 25.6%. Spec. 19. These values are not commensurate with the range of 10 to 40 % by weight recited in the claims. To overcome a finding of obviousness, the showing of criticality or unexpected results must be commensurate with the scope of the claims. In re Dill, 604 F.2d at 1361. Appellants argue that the references do not suggest a low water soap based system with the specific solvent systems of claim 1. Br. 10. We disagree. Both Seki and Stella teach soap-containing compositions. FF2 and 9. Stella discloses a composition with as little as 10% of a fluid which can be water. FF6. This overlaps with Appellants' range of less than 18% water. Stella further teaches that the aqueous phase can contain mono- and polyhydric alcohols such as glycerin and propylene glycol. FF7. Seki teaches the use of glycerin and dipropylene glycol, the same co-solvents required in claim 1. FF 11. One skilled in the art would understand that by following the teachings of Seki and using Seki's glycerin/dipropylene glycol 11 Appeal2014-005731 Application 12/255,377 solvent system in Stella's composition, as the Examiner posits (Final Action 7), one would arrive at a low water system with the claimed solvent system. That Appellants' motivation in combining the claimed ingredients might differ from the reasons identified by the Examiner does not demonstrate that the claimed composition would have been unobvious. See KSR, 550 U.S. at 419 ("[N]either 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."). With respect to Buchholz, Appellants' argument that Buchholz does not cure the deficiencies of Stella and Seki, Br. 11, has been considered but is unpersuasive. Buchholz is only offered for the teaching that certain pigments exhibit antimicrobial activity and that they can be incorporated into soap compositions. FF14. It is the combined teaching of Stella and Seki that would lead one skilled in the art to the claimed low water composition containing the claimed solvent system. Finally, Appellants argue that there is no motivation to combine the references to create the claimed composition. Br. 10-11. We disagree. As the Examiner noted, one skilled in the art would have been motivated to combine the storage stability of Seki into the composition of Stella which has enhanced deposition qualities. Ans. 6. Incorporating particles that exhibit antimicrobial activity would have been a routine goal of those working to develop improved cleansing agents. 12 Appeal2014-005731 Application 12/255,377 Conclusion of Law We find that the Examiner has established by a preponderance of the evidence that claim 1 is obvious in view of Stella combined with Seki and Buchholz as defined by 35 U.S.C. § 103(a). Claims 3-9 have not been argued separately and therefore fall with claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv). SUMMARY We affirm the rejection of claims 1 and 3-9. TIME PERIOD FOR RESPONSE 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 13 Copy with citationCopy as parenthetical citation