Ex Parte Cunningham et alDownload PDFPatent Trial and Appeal BoardMar 28, 201612641659 (P.T.A.B. Mar. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/641,659 12/18/2009 23556 7590 03/28/2016 KIMBERLY-CLARK WORLDWIDE, INC, Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 FIRST NAMED INVENTOR Corey Thomas Cunningham 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. 64640372US01 1016 EXAMINER COUGHLIN, DANIEL F ART UNIT PAPER NUMBER 1619 MAILDATE DELIVERY MODE 03/28/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COREY THOMAS CUNNINGHAM, SCOTT W. WENZEL, CHRISTOPHER VINCENT DECKER, and PHILIP EUGENE KIEFFER Appeal2013-010099 Application 12/641,659 1,2 Technology Center 1600 Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and JACQUELINE T. HARLOW, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to a wet wipe that imparts a perceivable aesthetic benefit to the skin. The Examiner has finally rejected the claims as obvious under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 134. The Examiner's rejections are affirmed. STATEMENT OF CASE Claims 1-5, 8-15, and 18-20 stand finally rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious in view of Krzysik et al.,3 "Salt of Fatty 1 "The '659 Specification." 2 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. Br. 1. 3 US 6,440,437 Bl issued Aug. 27, 2002 (hereinafter "Krzysik"). Appeal2013-010099 Application 12/641,659 Acid",4 Borsinger et al., 5 and "Emulsifiers with HLB Values"6 and Appellants' published application. Final Rej. 3. Claims 16 and 17 stand finally rejected under 35 U.S.C. § 103(a) (pre- AIA) as obvious over Krzysik, in view of "Salt of Patty Acid", Borsinger '642, as evidenced by "Emulsifiers with HLB Values" further in view of Fructus et al. 7 Claims 1 and 18 are independent claims. Claims 2-5, 8-15, 19, and 20 depend from them. Claim 1 is representative and reads as follows 1. A wet wipe that imparts a perceivable aesthetic benefit to skin, the wipe comprising: a wipe substrate; and a liquid composition containing: from about 40% by weight of the composition to about 99.9% by weight of the composition of water; from about 0.01 % by \veight of the composition to about 20% by weight of the composition of at least one skin aesthetic agent is a salt derivative of a fatty acid selected from potassium soyate, potassium cocoate, potassium rapeseedate, potassium sunflowerate, potassium olivate, potassium palmate, potassium avocadoate, potassium shea butterate, potassium canoloate, potassium safflowerate, potassium oryzarate, potassium ricinoleate, potassium babassuate, potassium behenate, potassium caprylate, potassium castorate, potassium 4 Salts of Fatty Acids (1988), http://www.fao.org/ag/agn/jecfa- additives/specs/Monograph l/Additive-383.pdf (hereinafter, "SPA"). 5 US 2007/0068642 Al published Mar. 29, 2007 (hereinafter "Borsinger '642"). 6 Emulsifiers with HLB Values (undated), http://www. theherbarie. com/files/resource- center/formulating/Emuisifiers_HLB_ Values. pdf. 7 US 2002/0025303 Al published Feb. 28, 2002 (hereinafter "Fructus"). 2 Appeal2013-010099 Application 12/641,659 caprate, potassium cocoa butterate, potassium dilinoleate, potassium grapeseedate, potassium hempseedate, potassium hydrogenated cocoate, potassium hydrogenated palmate, potassium hydrogenated tallowate, potassium jojobate, potassium lanolate, potassium lardate, potassium laurate, potassium linoleate, potassium macadamiaseedate, potassium mangoseedate, potassium myristate, potassium oleate, potassium palmitate, potassium palm kemelate, potassium passiflora edulis seedate, potassium stearate, potassium sweet almondate, potassium peanutate, potassium tallate, potassium tallowate, potassium tamanuseedate, potassium tsubakiate, potassium undecylenate, sodium soyate, sodium cocoate, sodium rapeseedate, sodium sunflowerate, sodium olivate, sodium palmate, sodium avocadoate, sodium shea butterate, sodium canoloate, sodium safflowerate, sodium oryzarate, sodium ricinoleate, sodium babassuate, sodium behenate, sodium caprylate, sodium castorate, sodium caprate, sodium cocoa butterate, sodium dilinoleate, sodium grapeseedate, sodium hempseedate, sodium hydrogenated. cocoate, sodium hydrogenated palmate, sodium hydrogenated tallowate, sodium jojobate, sodium lanolate, sodium lardate, sodium laurate, sodium linoleate, sodium macadamiaseedate, sodium mangoseedate, sodium myristate, sodium oleate, sodium palmitate, sodium palm kemelate, sodium passiflora edulis seedate, sodium stearate, sodium sweet almondate, sodium peanutate, sodium tallate, sodium tallowate, sodium tamanuseedate, sodium tsubakiate, sodium undecylenate, ammonium soyate, ammonium cocoate, ammonium rapeseedate, ammonium sunflowerate, ammonium olivate, ammonium palmate, ammonium avocadocate, ammonium shea butterate, ammonium canoloate, ammonium safflowerate, ammonium oryzarate, ammonium ricinoleate, ammonium babassuate, ammonium behenate, ammonium caprylate, ammonium castorate, ammonium caprate, ammonium cocoa butterate, ammonium dilinoleate, ammonium grapeseedate, ammonium hempseedate, ammonium hydrogenated cocoate, ammonium hydrogenated palmate, ammonium hydrogenated tallowate, ammonium jojobate, ammonium lanolate, ammonium lardate ammonium laurate, ammonium linoleate, 3 Appeal2013-010099 Application 12/641,659 ammonium macadamiaseedate, ammonium mangoseedate, ammonium myristate, ammonium oleate, ammonium palmitate, ammonium palm kemelate, ammonium passiflora edulis seedate, ammonium stearate, ammonium sweet almondate, ammonium peanutate, ammonium tallate, ammonium tallowate, ammonium tamanuseedate, ammonium tsubakiate, ammonium undecylenate and combinations thereof; an acidifying agent; and from about 0.01 % by weight of the composition to about 10% by weight of the composition of an emulsifying agent. DISCUSSION Rejected claim 1 is directed to a wet wipe that imparts a perceivable aesthetic benefit to the skin. The wet wipe comprises a liquid composition containing water, at least one skin aesthetic agent which is a salt derivative of a fatty acid, an acidifying agent, and an emulsifying agent. The water, skin aesthetic agent, and emulsifying agent are present in specifically recited ranges. The skin aesthetic agent is selected from a list of specifically recited compounds. One of the compounds in the list of skin aesthetic agents is potassium soyate which is soybean oil that has been saponified with potassium hydroxide to make it water-soluble. '659 Spec. 9:21-26. The '659 Specification teaches that the skin aesthetic agent forms an emulsion in the liquid composition. Id. at 5:29 to 6:2. Claim 18 is specifically directed to a wet wipe comprising potassium soyate. Claim 3 further recites that skin aesthetic agent is protonated by the acidifying agent. The Examiner found that Krzysik describes a wet wipe comprising water, an acidifying agent, and an emulsifying agent in ranges which fall 4 Appeal2013-010099 Application 12/641,659 within the ranges recited in rejected claim 1. Final Rej. 5-7. The disclosed components form an emulsion. Id. The Examiner found that Krzysik describes a maleated soybean oil - soybean oil protonated by treatment with maleic acid - but not a salt of the soybean oil as required by the rejected claims. Id. at 5, citing to Krzysik at col. 7, 11. 49-50. To make up for this deficiency, the Examiner cited SF A and Borsinger '642. The Examiner found that SF A "discloses that the potassium soap salts of fatty acids derived from edible fats and oils are obtained by treatment with potassium hydroxide (saponification) and the salts resulting from this process are soluble in water (seep. 1)." Final Rej. 6. Borsinger '642 was cited for a similar teaching in which waxes obtained from hydrogenated oils, such as soybean oil, are saponified by treatment with potassium hydroxide to make them more hydrophilic when forming an emulsion. Id. The Examiner determined that, motivated "by the desirability of optimizing the emulsification process" of Krzysik, one of ordinary skill in the art would have saponified the soybean oil described by Krzysik to form a salt of the soybean oil, namely potassium soyate, to have made the oil more soluble in water when forming the emulsion. Id. at 7. Based on this determination, the Examiner concluded that the rejected claims would have been obvious to one of ordinary skill in the art at the time of the invention. Id. Appellants, on pages 6-7 of the Appeal Brief ("Br."), identify the deficiencies in each of the publications. However, as noted by the Examiner, the rejection is based on 35 U.S.C. § 103, not§ 102. Under § 103: 5 Appeal2013-010099 Application 12/641,659 A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. In this case, the question is whether the differences between Krzysik and the rejected claims would have been obvious to a person having ordinary skill in the art. The mere identification of differences between the claimed subject matter and Krzysik, SPA, and Borsinger '642, does not address obviousness under§ 103. Appellants argue that there is "no teaching, suggestion, or motivation to alter the references of Kr[ z ]ysik and Borsinger to change the maleated or hydrogenated soybean oil into a salt derivative of a fatty acid as claimed." Br. 6-7. However; as discussed above; the Examiner explicitly found that the skilled worker would have done so to make the oil more soluble in water when forming an emulsion as described in Borsinger '642. Appellants have not identified a defect in the Examiner's fact-finding or reasoning. For the foregoing reasons, we affirm the obviousness rejection of claim 1. Appellants make the same unpersuasive argument for claim 18. Br. 7-8. We thus affirm the rejection of claim 18. Appellants do not provide separate patentability arguments for claims 4, 5, 8-15, but simply argue that they are "not obvious by virtue of ... dependency" on claim 1. Id. at 7. We thus affirm the rejection of these claims. Dependent claims 2, 3, 16, 17, 19, and 20 were not argued separately and thus fall with independent claims 1 and 18. 37 C.F.R § 41.37(c)(l)(iv). Therefore, we also affirm the rejection 6 Appeal2013-010099 Application 12/641,659 of Claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over Krzysik, in view of Borsinger, as evidenced by "Emulsifiers with HLB Values" further in view of Fructus. All rejections of all pending claims are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation