Ex Parte Day

Board of Patent Appeals and Interferences

Jul 29, 2004

09703279 (B.P.A.I. Jul. 29, 2004)

1References to the Brief are to the Supplemental Brief filed on June 2, 2003.
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RUPERT P. DAY
____________
Appeal No. 2004-0383
Application No. 09/703,279
____________
ON BRIEF
____________
Before WILLIAM F. SMITH, TIMM, and ADAMS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
Claims 1-3, 5-16, and 18-23 are pending in the application and all of the pending claims
are rejected by the Examiner as unpatentable. As Appellant states that claims 1-3, 5-10, 14-16,
and 18-23 are the subject of the appeal (Brief, p. 2), we will limit our review to those claims.1
Accordingly, the rejection of claims 13-15 will not be reviewed. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 134.
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2We rely upon and cite to the English translations of record for each of the references.
INTRODUCTION
The claims are directed to a powder composition and a process for treating skin by
contacting the skin with the powder composition. The powder composition, at a minimum,
contains two basic components: a solid particulate component and chitosan in particulate form.
Claims 1 and 14 are illustrative on the invention on appeal:
1. A powder composition comprising a solid particulate component and from about 0.01
to about 10% by weight, based on the weight of the composition, of chitosan having a particle
size of from about 0.1 to about 50 microns.
14. A process for treating skin comprising contacting the skin with a powder
composition containing a solid particulate component and from about 0.01 to about 10% by
weight, based on the weight of the composition, of chitosan having a particle size of less than
400 microns.
As evidence of unpatentability, the Examiner relies upon the following prior art
references:2
Yoshihide Kawamura et al. (Yoshihide) JP 63-027,501 Feb. 5, 1988
Toshiya et al. (Toshiya) JP 11-124,324 May 11, 1999
Claims 1-3, 5-16, and 18-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshihide in view of Toshiya. For the reasons expressed by Appellant in the
Brief and the following reasons we reverse with respect to the claims on appeal, claims 1-3, 5-
10, 14-16, and 18-23.
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OPINION
The Examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). All of the claims
are directed to a powder composition containing the combination of a solid particulate
component and chitosan particles. All of the claims require that chitosan be present in the
powder composition at a concentration of about 0.01 to about 10% by weight. The rejection
does not provide the required evidentiary basis supporting a prima facie case of obviousness for
such a powder composition.
First, our review indicates that the Examiner has not adequately supported the finding
that “Yoshihide’s patent provides for various amounts of chitosan in the formulation as
demonstrated in the examples (2 to 20%).” (Answer, p. 4). Turning to the examples (Yoshihide,
pp. 8-15), we do not find the percentage concentrations referred to in the rejection. Where, as
here, the amounts are not directly stated, the Examiner must provide more specific details as to
how the disclosure supports the finding. It appears that the Examiner may have been referring to
a range of chitosan discussed at page 5 of the reference. Here a range of 2 to 20% is discussed,
but it refers to the concentration of dissolved chitosan in an acid solution subsequently
coagulated and washed to form granulated chitosan, not the range of concentration of particulate
chitosan in a powder composition containing a solid particulate. Yoshihide, in other portions of
the reference, indicates a higher level of chitosan is used in the powder composition. Yoshihide
disperses an amount of 0.01 to 1 part by weight titanium oxide powder per 1 part by weight
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chitosan microparticles (Yoshhide, p. 7, ll. 16-18). Therefore, at a minimum, the powder
composition contains 50% chitosan particles. The level of chitosan in the powder composition
of Yoshihide is, therefore, much higher than the about 0.01 to about 10% by weight level of the
powder composition of the claims.
Second, the Examiner finds that Toshiya teaches a skin makeup composition containing
chitosan in an amount of 0.1-10%, but has ignored the fact that the compositions of Toshiya are
not described as powder compositions. The “skin makeup” compositions of Toshiya are solid
soaps, liquid soaps, ointments and creams (Toshiya, p. 1, ¶ 0002, ll. 1-2). Moreover, Toshiya
blends chitosan with a charge of skin makeup in the state of a solution (Toshiya, p. 2, ¶ 0008, ll.
1-2). Toshiya provides no teaching with respect to powder compositions. The disclosure in
Toshiya of a concentration of chitosan in a non-powder formulation does not provide sufficient
evidence of a reason, suggestion, or motivation to modify the level of chitosan in the powder
composition of Yoshihide.
We agree with Appellant that the combined teachings of Yoshihide and Toshiya, as
applied by the Examiner, fail to teach or suggest a powdered composition having the required
level of chitosan particulate concentration (Brief, p. 3). Nor has the Examiner established the
obviousness of the process of treating skin with such a powder composition. We conclude that
the Examiner has not established a prima facie case of obviousness with respect to the subject
matter of claims 1-3, 5-10, 14-16, and 18-23, the claims on appeal.
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CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-3, 5-10, 14-16, and 18-23
under 35 U.S.C. § 103(a) is reversed. The rejection of claims 11-13 was not subject to our
review.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
DONALD E. ADAMS )
Administrative Patent Judge )
CT/jrg
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COGNIS CORPORATION
PATENT DEPARTMENT
300 BROOKSIDE AVENUE
AMBLER, PA 19002
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