Ex Parte Douin et al

Board of Patent Appeals and Interferences

Aug 26, 2004

09765675 (B.P.A.I. Aug. 26, 2004)

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for publication and is not binding precedent of the Board.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. 24

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VERONIQUE DOUIN,
BENEDICTE CAZIN, and
SANDRINE DECOSTER
__________

Appeal No. 2004-0378
Application No. 09/765,675
__________

HEARD July 27, 2004
__________

Before SCHEINER, ADAMS, and GRIMES, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1-83, all of the claims in the application. Claims 1, 17, 20, 23, 64,
and 78 are representative and read as follows:
1. An oil-in-water nanoemulsion comprising oil globules with an average size
of less than 150nm comprising at least one oil, at least one amphiphilic
lipid, and at least one cationic polymer comprising at least one
hydrophobic block and at least one hydrophilic block.

17. A nanoemulsion according to claim 1 wherein said at least one amphiphilic
lipid is chosen from nonionic amphiphilic lipids and anionic amphiphilic
lipids.

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20. A nanoemulsion according to claim 17, wherein said anionic amphiphilic
lipids are chosen from:

- alkyl ether citrates,
- alkoxylated alkenyl succinates,
- alkoxylated glucose alkenyl succinates, and
- alkoxylated methylglucose alkenyl succinates.

23. A nanoemulsion according to claim 1[,] further comprising at least one
ionic amphiphilic lipid chosen from cationic amphiphilic lipids and anionic
amphiphilic lipids chosen from:

- alkaline salts of dicetyl phosphate and of dimyristyl phosphate;
- alkaline salts of cholesteryl sulfate;
- alkaline salts of cholesteryl phosphate;
- lipoamino acids and salts thereof;
- sodium salts of phosphatidic acid;
- phospholipids; and
- alkyslulfonic derivatives of formula:

R-CH-CO-O-(CH2-CH2-CO)-CH3
l
SO3M

in which R, which may be identical or different in embodiments wherein
more than one of said alkylsulfonic derivative is used, is chosen from
C16-C22 alkyl groups, and M is chosen from alkali metals and alkaline-earth
metals.

64. A nanoemulsion according to claim 1 further comprising at least one
aminosilicone.

78. An oil-in-water nanoemulsion comprising oil globules with an average size
of less than 150nm comprising at least one oily phase, at least one
amphiphilic lipid, and at least one nonionic polymer comprising at least
one hydrophobic block and at least one hydrophilic block.

The examiner relies on the following references:
Ziegler et al. (Ziegler) 5,135,748 Aug. 4, 1992
Matzik et al. (Matzik) 5,716,418 Feb. 10, 1998

European Patent Applications
Simonnet 0 780 114 Jun. 25, 1997
Restle et al. (Restle) 0 842 652 May 20, 1998
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Japanese Patent Application
Decostelle et al. (Decostelle) 10338899 Dec. 22, 1998

Claims 1-19, 21, 22, 30-62, and 68-83 stand rejected under 35 U.S.C. § 103 as
obvious in view of Restle and Ziegler.
Claims 23-29 and 63 stand rejected under 35 U.S.C. § 103 as obvious in view of
Restle, Ziegler, and Simonnet.
Claim 20 stands rejected under 35 U.S.C. § 103 as obvious in view of Restle,
Ziegler, Simonnet, and Matzik.
Claims 64-67 stand rejected under 35 U.S.C. § 103 as obvious in view of Restle,
Ziegler, Simonnet, Matzik, and Decoster.
We affirm the rejection of claims 1-62, 68-71, and 83 and reverse the rejection of
claims 63-67 and 78-82.
Background
“Oil-in-water emulsions are known in the field of cosmetics and in the field of
dermopharmacy, for example, for the preparation of cosmetic products such as lotions,
tonics, sera and eaux de toilette.” Specification, page 1. “The term ‘nanoemulsion’
means a metastable oil-in-water emulsion . . . whose oil globule size is less than 150
nm, these oil globules being stabilized with a crown of amphiphilic lipids. . . . The
transparency of these emulsions derives from the small size of the oil globules.” Id.
The prior art “disclose[d] nanoemulsions based on fluid nonionic amphiphilic
lipids and on silicone surfactants. However, all these nanoemulsions are fluid. For
certain uses, products are sought which can be measured out and taken up easily by
hand. To do this, these products must have a certain level of consistency or viscosity.”
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Id., page 2. “It is known to use, as thickeners for aqueous media, water-soluble or
water-dispersible polymers . . . such as carbopol, wherein said polymers can have a
long chain length and a high molecular weight. When such polymers are used in
compositions in the form of nanoemulsions, some of such nanoemulsions may tend to
exhibit a decrease in at least one characteristic, such as stability and transparency.” Id.
The specification discloses that “oil-in-water nanoemulsions comprising oil
globules with an average size of less than 150nm comprising at least one oil and at
least one amphiphil[i]c lipid can be thickened with at least one cationic polymer.” Page
3. In a working example, the specification reports that an oil-in-water nanoemulsion
containing a cationic polymer (quaternized (C8-C30)alkylhydroxyethylcellulose, a.k.a.
Quatrisoft LM 200) was stable on storage for two months at room temperature and at
45°C, and had a turbidity of 375 NTU and a viscosity of 650 mPa.s. See page 50. By
contrast, “[i]f the Quatrisoft LM 200 is replaced with the same amount of Carbopol
Ultrez, a composition which is not thickened, not transparent (turbidity > 1000 NTU) and
not stable on storage is obtained.” Page 51.
Discussion
Appellants have grouped the claims subject to each rejection together, with the
exception of claims 78-82, which are argued separately from the other claims rejected
over Restle and Ziegler. See the Appeal Brief, page 6. We will consider claims 1, 20,
23, 64, and 78 as representative of the rejected claims. 37 CFR § 1.192(c)(7).
Claim 1 is directed to an oil-in-water nanoemulsion (i.e., an emulsion in which the
oil globules have an average size of less than 150 nm), comprising an oil, an
amphiphilic lipid, and a “cationic polymer comprising at least one hydrophobic block and
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at least one hydrophilic block.” The specification states that amphiphilic lipids are also
known as surfactants, emulsifiers, or surface agents (page 2) and that a wide variety of
such compounds can be used in the claimed composition (see pages 8-33). The
specification also states that cationic polymers having the recited properties include “the
products Quatrisoft LM 200 . . . sold by the company Amerchol and the products
Crodacel QM, Crodacel QL (C12 alkyl) , and Crodacel QS (C18 alkyl) sold by the
company Croda.” Page 7.
Claim 20 depends on claim 1 via claim 17 and adds the limitation that the
amphiphilic lipid in the claimed composition is either nonionic (see claim 17) or is
chosen from one of several listed anionic lipids.
Claim 23 depends on claim 1 and adds the limitation that the composition
comprises an additional amphiphilic lipid, which is either cationic or one of several listed
anionic lipids.
Claim 64 depends on claim 1 and adds the limitation that the composition also
comprises aminosilicone.
Claim 78 is independent and is similar to claim 1 except that it requires the
polymer in the claimed composition to be nonionic rather than cationic.
The examiner rejected all of the claims as obvious over Restle and Ziegler, by
themselves or combined with additional references.
1. Claims 1-19, 21, 22, 30-62, 68-77, and 83
The examiner rejected claims 1-19, 21, 22, 30-62, 68-77, and 83 (together with
claims 78-82, which are separately considered below) as obvious in view of Restle and
Ziegler. The examiner characterized Restle as teaching a composition meeting all of
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the limitations of claim 1 except for the inclusion of a cationic polymer. See Paper No.
5, mailed August 16, 2001, paragraph bridging pages 2-3. The examiner relied on
Ziegler for this limitation:
Ziegler et al. teach a cosmetic o/w [oil-in-water] composition comprising
quaternary ammonium phosphate esters and 0.10-10% by weight of
cationic polymers. . . . The reference teaches that the composition
provides stability against phase separation during freeze-thaw cycles and
is effective in moisture retention.

Paper No. 5, page 3. The examiner concluded that “[i]t would have been obvious to one
of ordinary skill in the art at the time the invention was made to have modified the
composition of Restle et al. by adding the cationic polymers, as taught by Ziegler et al.,
because of the expectation of successfully producing a cosmetic composition with
enhanced stability and moisture retention.” Id.1
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant.” In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[The examiner]
can satisfy this burden only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that individual
to combine the relevant teachings of the references.” In re Fritch, 972 F.2d 1260, 1265,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).

1 In a subsequent communication, the examiner clarified that the rejection was based on the obviousness
of adding both the cationic polymer and phosphate ester of Ziegler’s composition to the composition
disclosed by Restle. See Paper No. 7, mailed January 30, 2002, page 3. Appellants responded to this
position in the Appeal Brief. See pages 13, 14-16.
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In this case, we agree with the examiner that the cited references would have
suggested a composition within the scope of claim 1 to those of ordinary skill in the art.
Specifically, Restle discloses an oil-in-water nanoemulsion having oil globules with an
average size of less than 150 nm (page 2),2 at least one nonionic amphiphilic lipid (page
4), and at least one cationic amphiphilic lipid (page 4). Restle teaches that preferred
cationic amphiphilic lipids include quaternary ammonium salts (page 7) and that
preferred nonionic amphiphilic lipids include
esters of at least one polyol selected from the group formed by
polyethylene glycol including between 1 and 60 units of ethylene oxide,
sorbitan, glycerol including between 2 and 30 units of ethylene oxide,
polyglycerols including between 2 and 15 units of glycerol, and at least
one fatty acid including at least one C8-C22 alkyl chain, that may be
saturated or unsaturated, linear or branched.

Page 4. Specific examples of nonionic surfactants disclosed by Restle include
polyethylene glycol isostearate with a molecular weight of 400, diglyceryl isostearate,
sorbitan oleate, and sorbitan isostearate. See pages 6-7. Restle discloses that the
resulting nanoemulsion compositions have increased storage stability compared to
other nanoemulsions. See page 3.
Ziegler discloses an emulsion composition (either oil-in-water or water-in-oil, see
column 2, lines 8-9) that comprises two essential components. “A quaternary
ammonium functionalized phosphate ester is a necessary first component of the
compositions.” Column 2, lines 24-26. “A second essential component of the
composition . . . is a cationic polysaccharide.” Column 4, lines 20-21. A “[p]articularly
preferred” cationic polymer is disclosed to be Quatrisoft LM-200. See column 5, lines

2 All citations to Restle refer to the English-language translation; a copy of the translation is enclosed with
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14-29. The combination of these components is disclosed to result in an emulsion with
“excellent freeze-thaw stability . . . [and] moisture retention after water washing which is
significantly better than state-of-the-art products.” Column 2, lines 17-23.
Ziegler also teaches that the emulsion can also contain any of a variety of oils.
See column 6, line 44 to column 7, line 56. Importantly, Ziegler also discloses that
[a]lthough the quaternary ammonium functionalized phosphate esters are
intended to be the primary emulsifier and surfactant . . ., there may also be
present nonionic emulsifiers. Examples of satisfactory nonionic
emulsifiers include fatty alcohols having 10 to 20 carbon atoms . . ., mono
and di-fatty acid esters of ethylene glycol wherein the fatty acid moiety
contains from 10 to 20 carbon atoms, fatty acid monoglyceride wherein
the fatty acid moiety contains from 10 to 20 carbon atoms, diethylene
glycol, polyethylene glycols of molecular weight from 200 to 6000, sorbitol,
sorbitan.

Column 6, lines 12-38.
We agree with the examiner that the teachings of Restle and Ziegler would have
suggested to those skilled in the art a composition within the scope of instant claim 1.
Specifically, a person of ordinary skill in the art would have found it obvious to use
Ziegler’s quaternary ammonium functionalized phosphate ester as the cationic
amphiphilic lipid in Restle’s nanoemulsion, and to add Ziegler’s cationic polymer (e.g.,
Quatrisoft LM-200) as an additional component in Restle’s nanoemulsion. The resulting
composition would be an oil-in-water nanoemulsion with oil globules averaging less than
150 nm and comprising an oil, an amphiphilic lipid, and a cationic polymer having at
least one hydrophobic block and at least one hydrophilic block, as required by claim 1.
The skilled artisan would have been motivated to combine the components of
Ziegler’s and Restle’s composition by the expectation of achieving a composition having

this opinion.
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the beneficial properties of both compositions (specifically, storage stability, freeze-thaw
stability, and moisture retention after water washing). That is, Restle teaches that a
composition having superior storage stability results when a nonionic amphiphilic lipid
and a cationic amphiphilic lipid are included in an oil-in-water nanoemulsion, while
Ziegler teaches that superior freeze-thaw stability results from combining a cationic
polymer with a quaternary ammonium functionalized ester (as the primary surfactant) in
emulsions, including oil-in-water emulsions, that can also contain nonionic surfactant(s).
Thus, those skilled in the art would have expected that combining all three
ingredients in a single composition would result in a composition having all these
properties. The references would have supported a reasonable expectation of
achieving this result, since the components of the emulsions disclosed by Restle and
Ziegler are very similar. Although Restle’s composition is in the form of a nanoemulsion
(with very small oil globules), Restle does not disclose any properties of nanoemulsions
that would have been expected to interfere with an expectation of achieving a
composition with freeze-thaw stability or moisture retention properties.3
Appellants argue that those of skill in the art would not have been motivated to
combine Ziegler’s cationic polymers (with or without a quaternary ammonium phosphate
ester) with Restle’s nanoemulsion composition. Appellants argue that the examiner’s
“statements amount to a conclusion that the addition of cationic surfactants and skin-
conditioning cationic polymers to nanoemulsions is prima facie obvious, even without
any specific motivation to select and combine the particular components merely

3 For example, Restle discloses that prior art oil-in-water nanoemulsions, like other oil-in-water emulsions,
had poor storage stability. See page 3, first paragraph, and page 2, last paragraph.
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because the components are known,” and that “the Office’s rational[e] is so broad that it
would encompass essentially the modification of any composition by adding the two
components of Ziegler for the purposes taught by Ziegler.” Appeal Brief, pages 15 and
16 (emphases in original).
We disagree. For the reasons discussed above, we agree with the examiner that
those skilled in the art would have found it obvious to combine the relevant components
of the compositions disclosed by Restle and Ziegler. Whether or not a skilled artisan
would also have found it obvious to add Ziegler’s components to compositions other
than those taught by Restle is an issue that is irrelevant to the obviousness of the
instant claims.
Appellants also argue that the references support, at best, and obvious-to-try
rationale. Specifically, Appellants argue that
Ziegler does not recognize the differences between different emulsions,
such as microemulsions and nanoemulsions. As shown in the paragraph
bridging pages 1-2 of Appellants’ specification, differences between
nanoemulsions and microemulsions do exist.

Thus, while Ziegler may have made it obvious to try the components
suggested therein to arrive at the claimed invention, such an obvious to try
standard does not support a rejection under Section 103.

Further, the unpredictability of adding polymers to nanoemulsions has
been shown by Appellants. For example, Appellants recite, “[w]hen such
polymers [e.g., optionally crosslinked polymers] are used in compositions
in the form of nanoemulsions, some of such nanoemulsions may tend to
exhibit a decrease in at least one characteristic, such as stability and
transparency.”

Appeal Brief, page 19 (citing the specification, page 3). Appellants also point to the
working example in the specification, which shows that Quatrisoft LM 200 and Carbopol
Ultrez have different effects on nanoemulsions.
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We do not agree that the prior art disclosures support only an obvious-to-try
rationale. “An ‘obvious-to-try’ situation exists when a general disclosure may pique the
scientist’s curiosity, such that further investigation might be done as a result of the
disclosure, but the disclosure itself does not contain a sufficient teaching of how to
obtain the desired result, or that the claimed result would be obtained if certain
directions were pursued.” In re Eli Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741,
1743 (Fed. Cir. 1990).
Here, Appellants have not shown that nanoemulsions were known, to those
skilled in the art, to differ from other emulsions in a way that would have cast doubt on
the expectation of successfully combining Restle’s and Ziegler’s disclosures.
Appellants point to the specification’s discussion of nanoemulsions and microemulsions,
but make no effort to explain how the differences between these emulsions would have
led those skilled in the art to doubt the applicability of Ziegler’s disclosure to Restle’s
nanoemulsions.
Appellants also point to the specification’s discussion of problems that can be
encountered when adding thickeners such as Carbopol to nanoemulsions, and the
different characteristics that result on addition of Quatrisoft LM 200 instead of Carbopol
Ultrez. Again, however, Appellants have not explained why the known problems with
using Carbopol as a thickener would have led those skilled in the art to doubt the
effectiveness of adding Ziegler’s Quatrisoft LM-200 to Restle’s composition. This is
especially true since Ziegler does not suggest adding a cationic polymer as a thickener,
but as a component that contributes to freeze-thaw stability and moisture retention.
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It may be true that Ziegler would not have motivated those skilled in the art to
add Quatrisoft to Restle’s composition for the same reason that Appellants add
Quatrisoft LM-200 to their composition, but the prior art need not suggest combining
elements for the same reason Appellants combined them in order to support a prima
facie case under § 103. See In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990).
Appellants also seem to argue that the claimed composition has been shown to
be unexpectedly superior to prior art products. This argument is not well-developed in
the Appeal Brief, but Appellants do allude to their
demonstrat[ion] that the thickening, the transparency, and the stability of a
nanoemulsion comprising at least [one] cationic polymer comprising at
least one hydrophobic block and at least one hydrophilic block (Quatrisoft
LM 200), at least one oil, and at least one amphiphilic lipid is greater than
that of a nanoemulsion in which the at least [one] cationic polymer
comprising at least one hydrophobic block and at least one hydrophilic
block is replaced with the same amount of Carbopol Ultrez, a crosslinked
acrylic acid homopolymer.

Appeal Brief, page 5. The specification states that “[t]he inventors have discovered,
unexpectedly, that oil-in-water nanoemulsions . . . can be thickened with at least one
cationic polymer, for example, at least one cationic polymer chosen from water-soluble
and water-dispersible cationic polymers comprising at least one hydrophobic block and
at least one hydrophilic block.” Pages 3-4.
To the extent that Appellants intend to rely on the specification’s working
example as evidence of unexpected results, however, we find the evidence to be
inadequate to overcome the prima facie case. It is true that “the PTO must consider
comparative data in the specification in determining whether the claimed invention
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provides unexpected results.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed. Cir. 1995).
However, “[t]he 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, 202 USPQ 805, 808 (CCPA 1979). “Commensurate in scope” means
that the evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner as the
tested embodiment(s). See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358
(CCPA 1972) (“Here, only one mixture of ingredients was tested. . . . The claims,
however, are much broader in scope, . . . and we have to agree with the Patent Office
that there is no ‘adequate basis for reasonably concluding that the great number and
variety of compositions included by the claims would behave in the same manner as the
[single] tested composition.’”) (bracketed material in original).
In this case, Appellants have provided no evidentiary basis on which to conclude
that the data shown in the specification’s single example is representative of the full
scope of claim 1. The specification appears to show that a composition comprising,
among other things, 10% oil, 2.4% nonionic surfactants (PEG-400 isostearate and
Tween 20), 1.9% cationic surfactant (behenyltrimethylammonium chloride), and 0.95%
cationic polymer (Quatrisoft LM 200), when mixed together under specific conditions,
has superior properties compared to a similar composition comprising a crosslinked
acrylate polymer (Carbopol Ultrez). See pages 48-51.
Claim 1, however, encompasses oil-in-water nanoemulsions comprising any
amount of oil(s), any number and amount of surfactants (anionic, cationic, or nonionic),
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and any cationic polymer, in any amount, that has at least one hydrophobic block and at
least one hydrophilic block. Appellants have provided no evidence to show that those
skilled in the art would have expected the specification’s exemplary composition to be
representative of the properties of the full scope of compositions encompassed by claim
1. Even if the properties of the specification’s exemplary composition were
unexpectedly superior, therefore, Appellants have not presented evidence of
unexpected results commensurate with the scope of the claims, as would be necessary
to overcome the prima facie case of obviousness.
We therefore affirm the rejection of claim 1 as obvious in view of Restle and
Ziegler. Claims 2-19, 21, 22, 30-62, 68-77, and 83 fall with claim 1.
2. Claims 78-82
The examiner included claims 78-82 in the rejection based on Restle and Ziegler.
Each of these claims is directed to a nanoemulsion composition like that of claim 1, but
including a nonionic polymer rather than a cationic polymer. The examiner’s rejection
did not specifically address this limitation of the claims.
Appellants argue that “[n]either Restle nor Ziegler teaches or suggests at least
one nonionic polymer comprising at least one hydrophobic block and at least one
hydrophilic block as presently claimed. . . . Accordingly, the Examiner has not and
could not have demonstrated a prima facie case of obviousness over claims 78-82.”
Appeal Brief, page 10.
We agree with Appellants that the examiner has not shown that claims 78-82
would have been obvious in view of the cited reference. In response to Appellants’
argument with respect to these claims, the examiner argued that “[t]he nonionic lipids
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disclosed in the Restle reference in fact include polymers such as polysiloxane.”
Examiner’s Answer, page 4. This argument is not a sufficient rebuttal: even assuming
that the references would have suggested including “polymers such as polysiloxane” in
a nanoemulsion composition, the examiner has made no effort to show that such
polymers claim 78’s limitation of “comprising at least one hydrophobic block and at least
one hydrophilic block.” Since the examiner has not shown that the references would
have suggested a composition within the scope of the claims, the rejection of claims 78-
82 is reversed.
3. Claims 23-29 and 63
The examiner rejected claims 23-29 and 63 as obvious in view of Restle, Ziegler,
and Simonnet. We agree that the composition of claim 23 would have been obvious to
those skilled in the art, although not for the reason advanced by the examiner. Rather,
we conclude that claim 23 would have been obvious in view of Restle and Ziegler, for
the same reason discussed above with respect to claim 1.
Claim 23 is directed to the composition of claim 1, further comprising an
additional amphiphilic lipid, which is either a cationic lipid or one of several listed anionic
lipids. That is, claim 23 is directed to the nanoemulsion composition of claim 1,
comprising an oil, an amphiphilic lipid (anionic, cationic, or nonionic), and an appropriate
cationic polymer, and additionally comprising a cationic amphiphilic lipid. Thus, claim
23 reads on the composition made obvious by Restle and Ziegler, because that
composition comprises an oil, a nonionic amphiphilic lipid, an appropriate cationic
polymer, and a cationic amphiphilic lipid (specifically, a quaternary ammonium
functionalized phosphate ester). Since the prior art would have made obvious at least
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one composition within the scope of claim 23, the claimed composition is unpatentable
under 35 U.S.C. § 103.
This reasoning also compels affirmance of the rejection with respect to claims
24-27, which further limit the anionic lipids enumerated in claim 23, but do not further
limit the claim with respect to cationic lipids. Further, the compositions of claims 28 and
29 would have been obvious in view of Restle and Ziegler, since Ziegler teaches that
the quaternary ammonium functionalized phosphate ester (i.e., the cationic amphiphilic
lipid) should be present in an amount ranging from 0.1 to 30%. Column 2, lines 3-7.
Since the range disclosed in the prior art overlaps the range recited in claims 28 and 29,
the claimed compositions would have been prima facie obvious. See In re Woodruff,
919 F. 2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is replete with
cases in which the difference between the claimed invention and the prior art is some
range or other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the prior art
range.”) (citations omitted, emphasis in original).
However, we will reverse the rejection as applied to claim 63, which requires a
composition having a turbidity within a specific range. The specification discloses that
the recited turbidity is characteristic of a composition “hav[ing] a transparent to blueish
[sic] appearance.” Page 44. Restle and Ziegler do not discuss the transparency or
turbidity of the disclosed compositions and therefore would not have led those skilled in
the art to expect that the composition resulting from their combination would have the
recited property.
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Although Simonnet discloses transparent nanoemulsion compositions, we do not
agree with the examiner that Simonnet can properly be combined with Restle and
Ziegler. Rather, we find ourselves in agreement with Appellants’ argument that
Simonnet merely discloses ionic amphiphilic lipids as being one of
numerous optional ingredients. Further, Simonnet does not attribute any
properties to these lipids. . . . Accordingly, Simonnet fails to provide the
requisite motivation to make the proposed modification.

Appeal Brief, page 22. That is, Simonnet discloses that a transparent nanoemulsion
can be produced if a “siliconized surfactant” is used (pages 3-4), but does not provide a
basis for those skilled in the art to expect that a transparent composition would result
from the combination of Restle and Ziegler (with or without the additional ionic
amphiphilic lipid discussed by Simonnet). We therefore reverse the rejection of claim
63.
We recognize that our rationale for affirming the rejection as applied to claims 23-
29 differs from that of the examiner. We therefore designate our affirmance with
respect to this rejection as a new ground of rejection under 37 CFR § 1.196(b).
4. Claim 20
The examiner rejected claim 20 as obvious in view of the combined disclosures
of Restle, Ziegler, Simonnet, and Matzik. With this rejection as well, we conclude that
the claimed composition would have been obvious in view of Restle and Ziegler alone
and therefore affirm the rejection but designate our affirmance a new ground of
rejection.
Claim 20 is directed to the composition of claim 1, wherein the amphiphilic lipid
recited in claim 1 is either a nonionic amphiphilic lipid (see claim 17) or is an anionic
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amphiphilic lipid selected from several enumerated types. Thus, claim 20 reads on the
composition made obvious by Restle and Ziegler, because that composition comprises
an oil, a nonionic amphiphilic lipid (see Ziegler at column 6, lines 15-40; Restle, page 4,
second paragraph), an appropriate cationic polymer, and a cationic amphiphilic lipid
(specifically, a quaternary ammonium functionalized phosphate ester). Since the prior
art would have made obvious at least one composition within the scope of claim 20, the
claimed composition is unpatentable under 35 U.S.C. § 103.
Again, since our rationale for affirming the rejection of claim 20 differs from that
of the examiner, we designate our affirmance with respect to this rejection as a new
ground of rejection under 37 CFR § 1.196(b).
5. Claims 64-67
The examiner rejected claim 64-67 as obvious in view of the combined teachings
of Restle, Ziegler, Simonnet, Matzik, and Decoster. Claim 64 is directed to the
nanoemulsion composition of claim 1, further comprising an aminosilicone.4
The examiner acknowledge that none of Restle, Ziegler, Simonnet, or Matzik
suggest adding aminosilicone to an oil-in-water nanoemulsion. The examiner
characterized Decoster as “teach[ing a] cosmetic detergent composition comprising 0.5-
5 weight % of aminosilicone along with anionic surfactant, amphoteric surfactants and
cationic polymers.” Paper No. 5, mailed August 16, 2001, page 5. The examiner
concluded that “[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to have modified the composition of the combined references

4 According to the specification, “the term at least one ‘aminosilicone’ means any silicone comprising at
least one amine chosen from primary, secondary, and tertiary amines or at least one quaternary
ammonium group.” Page 36. In addition, the terms “‘silicone’ and ‘polysiloxane’ are synonymous.” Id.
Appeal No. 2004-0378
Application No. 09/765,675

by adding the aminosilicone, as taught by Decoster et al., because of the expectation of
successfully producing a cosmetic detergent composition.” Id.
We agree with Appellants that this rationale does not support a prima facie case
of obviousness with respect to claims 64-67. The examiner has not provided sufficient
evidence or sound scientific reasoning to show that those skilled in the art would have
been motivated to select the aminosilicone disclosed by Decoster as useful in a
cosmetic detergent composition, and to add that aminosilicone to the oil-in-water
nanoemulsion suggested by Restle and Ziegler. Therefore, the examiner has not made
out a prima facie case of obviousness with respect to claims 64-67. The rejection of
these claims is reversed.
Summary
We reverse the rejection of claims 63-67 and 78-82 and affirm the rejection of
claims 1-62, 68-71, and 83. However, we designate our affirmance with respect to
claims 20 and 23-29 as a new ground of rejection under 37 CFR § 1.196(b), in order to
give Appellants a fair opportunity to respond. See In re Kronig, 539 F.2d 1300, 1302-
03, 190 USPQ 425, 426-27 (CCPA 1976).
Time Period for Response
In addition to affirming the examiner’s rejection of one or more claims, this
decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b)
provides, “A new ground of rejection shall not be considered final for purposes of judicial
review.”
Appeal No. 2004-0378
Application No. 09/765,675

Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:

(b) Appellant may file a single request for rehearing within two months
from the date of the original decision . . . .

37 CFR § 1.196(b) also provides that appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner. . . .

(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .

Should appellants elect to prosecute further before the Primary Examiner
pursuant to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under 35
U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner unless, as
a mere incident to the limited prosecution, the affirmed rejection is overcome.
If appellants elect prosecution before the examiner and this does not result in
allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the
affirmed rejection, including any timely request for rehearing thereof.
Appeal No. 2004-0378
Application No. 09/765,675

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART, 37 CFR § 1.196(b)

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

EG/jlb
Appeal No. 2004-0378
Application No. 09/765,675

Finnegan, Henderson, Farabow,
Garrett & Dunner LLP
1300 I Street, NW
Washington, DC 20005