Ex Parte Faryniarz et al

Board of Patent Appeals and Interferences

Sep 25, 2007

10601731 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOSEPH RAYMOND FARYNIARZ,
PHILIP EDWARD MINER, MICHAEL CHARLES CHENEY, and
JOANNA HONG ZHANG
__________

Appeal 2007-0535
Application 10/601,731
Technology Center 1600
__________

Decided: September 25, 2007
__________

Before ERIC GRIMES, LORA M. GREEN, and NANCY J. LINCK,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The Specification describes a cosmetic composition including:
“(i) from about 0.0001 to about 30% by weight of a salt of malonic acid;
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Application 10/601,731

[and] (ii) from about 1 to about 99.9% by weight of a cosmetically
acceptable carrier; wherein the composition exhibits a Flexibility Value
greater than 1 in the Porcine Skin Test” (Specification 4). The Specification
states that malonate salts “impart to the composition a positive Flexibility
Value of at least 1, preferably at least 1.1 relative to water in the Porcine
Skin Test” (id. at 5).
The Specification also states that “[m]alonate salts may either be the
half or fully neutralized malonic acid or combinations thereof as represented
by general formulas (I) and (II):

wherein X is a cationic counterion” (id. at 5-6). “When mixtures are present
the molar ratio of mono-salt I to di-salt II may range from about 1000:1 to
about 1:1000” (id. at 7).
DISCUSSION
1. CLAIMS
Claims 1 and 3-16 are pending and on appeal. The claims have not
been argued separately1 and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). We will focus on claim 1, the broadest claim on appeal,
which reads as follows:

1 In traversing the second rejection discussed below, Appellants include a
sentence relating to claim 6. To the extent that this constitutes a separate
argument, we address this argument below.
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1. A cosmetic composition comprising:
(i) from about 0.0001 to about 30% by weight of a salt of malonic acid
which is present as a half neutralized and fully neutralized acid in a molar
ratio ranging from about 1000:1 to about 1:1000, respectively;
(ii) from about 1 to about 99.9% by weight of a cosmetically acceptable
carrier; wherein the composition exhibits a Flexibility Value greater than 1
in the Porcine Skin Test.

2. PRIOR ART
The Examiner relies on the following references:
Jokura 5,641,495 Jun. 24, 1997
Beerse WO 00/61107 Oct. 19, 2000

3. OBVIOUSNESS OVER JOKURA
Claims 1 and 3-16 stand rejected under 35 U.S.C. § 103 as obvious
over Jokura. The Examiner finds that “Jokura teaches a skin cosmetic . . .
having an excellent moisturizing effect comprising: (A) a ceramide or a
pseudoceramide; (B) a dicarboxylic acid; and (C) a salt of a dicarboxylic
acid,” including malonic acid; that the “dicarboxylic acid salts may be added
in the form of a salt” or “an acid may be added followed by the addition of
an alkali (sodium hydroxide, etc.) to thereby form the aimed salt via
neutralization in the system”; “that the content of components (B) and (C),
falls within a range of from 0.01 to 20% by weight”; “that the molar ratio of
the components (B) to (C) falls within a range of from 1/9 to 9/1”; and that,
“[w]hen water, ethanol and/or water-soluble polyhydric alcohols are
employed as the carrier, the content is preferably from 0.01 to 95% by
weight” (Answer 3-4).
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The Examiner also finds that the “free acid, partially neutralized acid,
and fully neutralized acid, exist in solution in equilibrium with one another,
with the concentration of the different forms being governed by the
individual Ka of each neutralization reaction” (id. at 10). In addition, the
Examiner finds that “the ratio of partially neutralized acid to fully
neutralized acid will be dependent upon the concentration of H+ in solution.
In other words, the ratio of partially neutralized to fully neutralized acid is
governed by the pH of the solution.” (Id. at 11.) Thus, the Examiner
concludes that “solutions having the same pH should have the same or
similar ratios of partially neutralized to fully neutralized salts” (id.).
In addition, the Examiner finds that “Jokura teaches regulating the pH
value of the skin cosmetic . . . to pH 3 to 10, . . . to avoid the irritation
observed at a pH value less than 3 or exceeding 10” (id. at 4). The Examiner
also finds that “the composition [of claim 1] must have a pH that is suitable
for application to the skin” and, therefore, must have a pH in the non-
irritating range taught by Jokura (id. at 12). The Examiner concludes that,
“although [Jokura] does not expressly disclose the manipulation of the
partial to fully neutral[ized] acid salt itself, this step is implicit when the pH
of the composition is adjusted” (id.)
Finally, the Examiner finds that “Jokura’s composition will implicitly
have a Flexibility value of greater than 1 since the instant disclosure on
page 5 states that malonate salts impart the flexibility value to the
composition” (id. at 5). In addition, the Examiner finds that Jokura “teaches
the same malonic acid salt in the same weight percent. Therefore, [Jokura’s]
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composition and the instant composition . . . will exhibit the same property,
i.e. the instant flexibility value.” (Id.)
We agree that the Examiner has set forth a prima facie case that the
composition of claim 1 would have been obvious. Jokura describes a skin
cosmetic comprising a ceramide or pseudoceramide, a dicarboxylic acid, and
a salt of a dicarboxylic acid (Jokura, col. 2, ll. 6-39), and specifically
identifies malonic acid as an example of a dicarboxylic acid (id. at col. 3,
ll. 33-37). Jokura states that preferably “the total content of [the
dicarboxylic acid] and [dicarboxylic acid salt], in terms of the acid, in the
skin cosmetic . . . falls within a range of from 0.01 to 20% by weight” and
“the molar ratio of the [dicarboxylic acid] to [dicarboxylic acid salt] falls
within a range of from 1/9 to 9/1” (id. at col. 3, ll. 51-60). Jokura also
describes including water, ethanol, or water-soluble polyhydric alcohols as a
base and that the preferred content of these components in the skin cosmetic
“ranges from 0.01 to 95% by weight” (id. at col. 4, ll. 16-34).
As discussed above, the Specification states that malonate salts
“impart to the composition a positive Flexibility Value of at least 1,
preferably at least 1.1 relative to water in the Porcine Skin Test”
(Specification 5). Thus, we agree that the Examiner has set forth a prima
facie case that the compositions of Jokura that contain malonic acid salt as
the dicarboxylic acid salt would exhibit a Flexibility Value greater than 1.
Jokura does not state that malonic acid is present as a half neutralized
acid and as a fully neutralized acid in a molar ratio ranging from about
1000:1 to about 1:1000, respectively. However, Jokura describes regulating
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“the pH value of the skin cosmetic . . . to pH 3 to 10, still [more] preferably
to pH 3 to 9” (Jokura, col. 3, ll. 60-65).
The Examiner takes the position that Appellants’ cosmetic
composition, which has the claimed molar ratio, has a pH close to or within
the pH range described in Jokura (Answer 12). This position, which is not
rebutted by Appellants, appears to be reasonable based on the teaching in
Jokura that compositions having “a pH value less than 3 or exceeding 10”
would be irritating to the skin (Jokura, col. 3, ll. 63-65). In addition, the
Examiner has asserted that “the ratio of partially neutralized acid to fully
neutralized acid will be dependent upon the concentration of H+ in solution”
and that therefore “solutions having the same pH should have the same or
similar ratios of partially neutralized to fully neutralized salts” (Answer 11).
The Examiner has supported these assertions with scientific reasoning (id. at
9-11). Thus, we agree that the Examiner has set forth a prima facie case that
the broad molar ratio recited in claim 1 would have been obvious based on
the teachings of Jokura.
Appellants argue that Jokura “discloses the unneutralized acid
(component B) and the partially neutralized acid (component C). The free
acid can only co-exist with a partially neutralized salt because of pKa
considerations. There is thus no disclosure of a fully neutralized malonic
acid.” (Br. 8.) In particular, Appellants argue that “[a]ddition of a
neutralizing agent to the free malonic acid would achieve mixtures of free
and mono-salts (half neutralized). There would be no di-salt (fully
neutralized) malonate present in a system that also included totally non-
neutralized (‘free’) malonic acid.” (Id.) In addition, Appellants argue:
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With the required full presence of dicarboxylic acid form, the
skilled chemist reading this reference would not be motivated to
neutralize to any extent that does not involve the presence of
acid form. . . . Hence there can be no motivation to the skilled
chemist to achieve a mixed mono- and di-salt. This chemist
would know that free acid according to Jokura must be present
and such cannot occur with any di-salt in the formula.
(Id. at 9.)
We are not persuaded by this argument. We find that the Examiner
has set forth adequate scientific reasoning to support the conclusion that
Jokura discloses mixtures of partially and fully neutralized acid.
In particular, the Examiner reasons that the “free acid, partially
neutralized acid, and fully neutralized acid, exist in solution in equilibrium
with one another, with the concentration of the different forms being
governed by the individual Ka of each neutralization reaction” (Answer 10).
In support of this position, the Examiner points to equilibrium equations that
are well known in the art, as evidenced by the attached excerpt from a
chemistry textbook.2 These equations support the Examiner’s conclusion
that malonic acid, at pHs in the range disclosed by Jokura, provides a
solution containing “fully neutralized acid” and “partially neutralized acid”
in equilibrium with one another (“fully neutralized acid”/“partially
neutralized acid” = Ka2/[H+]) and “partially neutralized acid” and “free acid”
in equilibrium with one another (“partially neutralized acid”/“free acid” =
Ka1/[H+]) and therefore provides a solution containing “fully neutralized
acid,” “partially neutralized acid,” and “free acid.”

2 Ronald J. Gillespie et al., Chemistry 516-520, 524-525, & 550-551 (1986)
(copy attached).
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Appellants also argue that “Jokura has but a single reference to
malonic acid” and that this reference is in a list that includes seven other
acids (Br. 7). In addition, Appellants argue that “even here the reference
mishandles the structure” in that the “‘X’ of malonic [acid] is ‘CH2’ instead
of the specified ‘CH3’” (id.). Appellants also argue that “none of the
Examples utilize malonic acid. The only exemplified dicarboxylic acid is
succinic” and that “[e]ven the exemplification of succinic acid does not
disclose the half neutralized acid salt, i.e. sodium or potassium hydrogen
succinate” (id.). Thus, Appellants argue that Jokura’s examples “obscure
and . . . even teach away from the half neutralized salt” (id.).
We are not persuaded by these arguments. First, we agree with the
Examiner that Jokura specifically teaches malonic acid. That Jokura
misidentifies the X group in malonic acid as CH3 rather than CH2 does not
detract from the clear recitation of malonic acid. One of ordinary skill in the
art is well aware of the structure of malonic acid. In addition, that malonic
acid is not included in any of the examples does not detract from the clear
teaching of malonic acid.
In addition, we do not agree that Jokura’s examples “obscure and . . .
even teach away from the half neutralized salt” (Br. 7). Although
Example 1, for instance, describes compositions comprising succinic acid
and either potassium succinate trihydrate or sodium succinate, it is clear that
this refers to what was added to form the compositions. As with malonic
acid, once these components are added to water, the composition would
include both the fully and half neutralized acids, as well as succinic acid, in
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equilibrium. Thus, we do not agree with Appellants that the examples teach
away from the half neutralized acid.
In addition, Appellants argue:
Experiments have been performed via a Porcine Skin Test
described in Example 9. Under Table VIII, it is seen that
malonate salts are much better than glycolate or succinate salts
with respect to improving skin flexibility (softness and
suppleness). These results were surprising. Glycolates which
are alpha-hydroxycarboxylic acids are well known to improve
the flexibility of skin. Non-hydroxycarboxylic acids such as
malonic have not received very much attention and are not
particularly known for having any special skin activity. It was
surprising to observe that the malonate was substantially better
than the glycolate salt. Even more interesting was that
succinate (malonic acid with one extra methylene group) did
not perform well. Anyone skilled in the art would neither have
expected nor selected malonates over succinates in considering
the Jokura reference.
(Br. 7-8.)
We agree with the Examiner that these experiments do not overcome
the Examiner’s prima facie case of obviousness. In particular, we agree with
the Examiner that the experiments in Example 9, which demonstrate the
Flexibility Value exhibited by an unidentified amount of
dimethylethanolammonium malonate, do not provide evidence that is
commensurate with the scope of claim 1. As noted by the Examiner, “[i]t is
unclear if the same flexibility is imparted by the entire genus since the term
salt is extremely broad and amine salts are known to have specific properties
themselves” (Answer 13). As also noted by the Examiner, Example 9
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“compares glycolic acid3 and succinic acid that has been neutralized with
ammonium salt with malonic acid which has been neutralized with
dimethylethanolammonium salt” and does not set forth the concentrations of
the acid salts (id. at 14). We agree with the Examiner that it is not clear
whether the different results can be attributed to the presence of malonic
acid salt as opposed to glycolic or succinic acid salts or can be attributed to
the different counterions or to different salt concentrations.
In addition, Appellants have not presented any evidence that the
results of the experiments presented in Example 9 would have been
unexpected. Instead, Appellants rely on attorney argument to characterize
these results as unexpected. However, attorney argument is not evidence.
“[I]t is well settled that unexpected results must be established by factual
evidence. ‘Mere argument . . . does not suffice.’” In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)).
Appellants also argue:
The skilled chemist in reading Jokura et al. would be led to
utilize or at least test succinate. Malonates would certainly not
be an initial choice. Upon testing the succinate, the skilled
chemist would be dissuaded from trying the malonate upon

3 We additionally note that glycolic acid is not a dicarboxylic acid, as
required by Jokura. Thus, comparing malonic acid salt to glycolic acid salt
does not provide evidence that the composition of claim 1 has unexpected
properties as compared to the teachings of Jokura. “Although it is well
settled that comparative test data showing an unexpected result will rebut a
prima facie case of obviousness, the comparative testing must be between
the claimed invention and the closest prior art.” In re Fenn, 639 F.2d 762,
765 (CCPA 1981).
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finding a relatively poor performance in a skin evaluation such
as the claimed Porcine Skin Test. In certain ways Jokura et al.
could be said to lead the skilled chemist away from using
malonate by highlighting inferior performing dicarboxylic acids
or salts.
(Br. 10.)
We are not persuaded by this argument. Prima facie obviousness does
not require prior art references to recognize or even suggest the problem that
Appellants attempted to solve. In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.
1990 (en banc)). In making his prima facie case of obviousness, the
Examiner is not arguing that it would have been obvious that malonic acid
salts would provide a Flexibility Value greater than 1. Instead, the Examiner
is arguing that Jokura describes including malonic acid salts in a cosmetic
composition to achieve the benefits set forth in Jokura, and that this
composition would inherently have a Flexibility Value greater than 1. Thus,
we do not agree that Jokura teaches away from using a malonic acid salt.
Instead, we agree that the Examiner has set forth a prima facie case that one
of ordinary skill in the art would have been motivated to form a composition
within claim 1 in order to provide the “excellent moisturizing effect”
described in Jokura (Jokura, col. 1, ll. 7-11) and that this composition would
inherently exhibit a Flexibility Value greater than 1.
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious over Jokura, which Appellants have not
rebutted. We therefore affirm the rejection of claim 1 under 35 U.S.C.
§ 103. Claims 3-16 fall with claim 1.
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4. OBVIOUSNESS OVER BEERSE
Claims 1, 3, 4, 6-9, 11-13, and 15 stand rejected under 35 U.S.C.
§ 103 as obvious over Beerse. The Examiner finds that “Beerse discloses an
antimicrobial wipe that is impregnated with an antimicrobial cleansing
composition”; that “example 14 discloses a composition comprising 3.20%
sodium malonate, additional components, and the balance water (84.03% of
the carrier)”; that the “wipe is suitable for application to the human skin to
remove oil and dirt” and “is useful for treatment of acne and improvement of
skin appearance[,] . . . includ[ing] providing a smoother and more even
appearance of the skin and regulating the signs of aging.” (Answer 5-6.)
The Examiner also finds that Beerse teaches including a “proton donating
agent selected from acids such as glycolic, citric, malonic, etc. in an amount
of 0.1-10%”; that “the acid remains at least in a partially undissociated
form”; and that “the pH should be 3-6” (id. at 6).
In addition, the Examiner finds that a composition having the molar
ratio of claim 1 would have been obvious over Beerse for substantially the
same reasons as with Jokura (id. at 6-7 and 15-18). The Examiner also finds
that Beerse’s composition will implicitly have a Flexibility Value greater
than 1 for substantially the same reasons as with Jokura (id. at 7).
We agree that the Examiner has set forth a prima facie case that the
composition of claim 1 would have been obvious. Beerse describes “an
antimicrobial wipe comprising a porous or absorbent sheet impregnated with
an antimicrobial cleansing composition” (Beerse 4). The cleansing
composition comprises an antimicrobial active, an anionic surfactant, a
proton donating agent (from about 0.1 to about 10% by weight), and water
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(from about 3 to about 99.85% by weight) and “is adjusted to a pH of from
about 3.0 to about 6.0” (id.). Beerse states that the composition is “suitable
for application to the human skin for the purpose of removing dirt, oil and
the like” and “can also be useful for treatment of acne” and “for providing
an essentially immediate (i.e., acute) visual improvement in skin appearance
following application of the composition to the skin,” including regulating
“discontinuities associated with skin aging” (id. at 4-5).
Beers defines a “proton donating agent” as “any acid compound or
mixture thereof, which results in undissociated acid on the skin after use”
(id. at 18). As a proton donating agent, Beerse describes organic acids, such
as malonic acid (id. at 19). In Example 14, Beerse describes a composition
comprising 4% malonic acid and 3.2% sodium malonate in water (id. at 36).
We agree that the Examiner has set forth a prima facie case that the broad
molar ratio recited in claim 1 would have been obvious based on the
teachings of Beerse and that the compositions of Beerse that contain malonic
acid as the proton donating agent would exhibit a Flexibility Value greater
than 1 for substantially the same reasons as with Jokura.
Appellants argue that “Beerse does not disclose a half neutralized salt
of malonic acid. There is reference to only one malonate salt mentioned. It
is not known whether the ‘sodium malonate’ is meant to be disodium
malonate (fully neutralized) or sodium hydrogen malonate (half neutralized)
variant.” (Br. 11.)
We are not persuaded by this argument. For the reasons discussed
above (supra, at pp. 6-7), whether “sodium malonate” refers to the fully
neutralized salt or the half neutralized salt, once this component is added to
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water, both the fully neutralized acid and the half neutralized acid would be
present in equilibrium.
Appellants also argue:
Malonic acid is present as a proton donating agent. This means
it is selected simply because it is an acid rather than for any
special aspect of the organic radical. . . . Thus, those skilled in
the art would not be led to utilize malonates for the presently
claimed purpose of controlling signs of aging such as
improving skin softness, suppleness and flexibility. Present
method claim 6 specifically focuses upon controlling the signs
of aging through use of certain malonate salt combinations.
Composition claim 1 inherently recites [the] functionality of
controlling signs of aging through [the] requirement of a
Flexibility Value greater than 1 in the Porcine Skin Test.
(Br. 11.)
We are not persuaded by this argument. Prima facie obviousness does
not require prior art references to recognize or even suggest the problem that
Appellants attempted to solve. In re Dillon, 919 F.2d at 692-93. In making
his prima facie case of obviousness, the Examiner is not arguing that it
would have been obvious that malonic acid salts would provide a Flexibility
Value greater than 1. Instead, the Examiner is arguing that Beerse describes
including malonic acid salts in a composition to achieve the benefits set
forth in Beerse, and that this composition would inherently have a Flexibility
Value greater than 1. We agree with the Examiner that this is sufficient to
provide a prima facie case of obviousness.
Claim 6 is an independent claim directed to a method for controlling
signs of aging comprising applying the same cosmetic composition as
recited in claim 1 to the skin. Beerse describes applying its composition to
the skin (Beerse 4). In fact, Beerse describes applying its composition to
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regulate “discontinuities associated with skin aging” (id. at 4-5). Thus, we
agree that the Examiner has set forth a prima facie case that the method of
claim 6 would have been obvious.
In addition, Appellants argue that Beerse “requires a proton donating
agent which at least in part must have unneutralized acid functionality, e.g.,
malonic acid. A mono-salt (half neutralized) of malonic can coexist with the
di-acid form (unneutralized). What is not possible is that all three species,
free acid, mono-salt (half neutralized) and di-salt (fully neutralized), would
coexist together.” (Br. 11.) We are not persuaded by this argument for the
reasons discussed above with regard to Jokura.
Appellants also argue:
Selection of malonate salt mixtures for purposes of controlling
the signs of aging is an unobvious selection. This is
particularly so in contrast to the next closest homolog, i.e.
succinate salts. Beerse et al. in Example 2 and 5 disclose a
succinic acid/sodium succinate combination. Appellant has
demonstrated in the specification under Example 9 that the
malonate salt mixture gave a substantially better Flexibility
Value in the Porcine Skin Test, compare 1.36 to 0.85 on
Flexibility Value.
(Br. 12.) For the reasons discussed above with regard to Jokura (supra, at
pp. 9-10), we do not agree that Appellants have provided sufficient evidence
of unexpected results to rebut the Examiner’s prima facie case of
obviousness.
We conclude that the Examiner has set forth a prima facie case that
claims 1 and 6 would have been obvious over Beerse, which Appellants
have not rebutted. We therefore affirm the rejection of claims 1 and 6 under
35 U.S.C. § 103. Claims 3, 4, 7-9, 11-13, and 15 fall with claims 1 and 6.
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OTHER ISSUES
In Example 4, Beerse describes a composition having a pH of 3.9 that
comprises 4% malonic acid and 3.2% sodium malonate in water. If
prosecution of this application is continued, the Examiner should consider
whether this composition anticipates any of the claims.
SUMMARY
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 1 and 3-16
under 35 U.S.C. § 103 over Jokura and the rejection of claims 1, 3, 4, 6-9,
11-13, and 15 under 35 U.S.C. § 103 over Beerse.
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

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