Ex Parte Gatto et al

Patent Trial and Appeal Board

Oct 27, 2017

10992383 (P.T.A.B. Oct. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/992,383 11/18/2004 Joseph Anthony Gatto 8725R2RR 8133
27752 7590 10/31/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
AKHOON, KAUSER M
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ANTHONY GATTO, ANTONELLA PESCE, and
RAPHAEL WARREN
Appeal 2015-0011671
Application 10/992,383
Technology Center 1600
Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods for preparing a lotion
comprising a chitosan material. The Examiner rejected the claims under 35
U.S.C. § 103 as obvious. We have jurisdiction under 35 U.S.C. § 6(b). The
Examiner is affirmed.
1 The Appeal Brief (“Br.”) identifies The Procter & Gamble Company as the
real-party-in-interest. Br. 1.
Appeal 2015-001167
Application 10/992,383
STATEMENT OF THE CASE
Claims 1—24 are pending and stand rejected by the Examiner as
follows:
1. Claims 1, 3-8, 10-13, 15-17, and 19-24 under 35 U.S.C. § 103(a)
as unpatentable and obvious in view of US Patent No. 6,793,930 B2, iss.
Sep. 21, 2004 (“Gatto”). Ans. 4.
2. Claims 1, 2, 9, 14, and 18 under 35 U.S.C. § 103 (a) as
unpatentable and obvious in view of Gross, US Patent No. 4,134,412, iss.
Jan. 16, 1979 (“Gross”), Schipper et al., Pharm. Res., 1996, 13, 1686—1692
(“Schipper”). Ans. 11-12.
Claim 1 is representative and reads as follows:
1. A method for preparing a lotion for reliable high speed
processing onto a substrate, the method comprising the steps of:
(a) providing a carrier system;
(b) providing a premix solution of chitosan material and a
solvent;
(c) mixing the premix solution into the carrier system at a
temperature of at least 35 degrees C; and
(d) milling the premix solution into the carrier system at
a temperature of at least 35 degrees C to disperse the premix
solution until an average droplet diameter of the dispersed
premix solution is less than 100 microns.
1. REJECTION BASED ON GATTO
The Examiner found that all the steps of the claimed method are
carried out by Gatto. Final Act. 4—5. The Examiner found that Gatto
exemplifies a premix of zinc oxide and not of chitosan as required by the
claim. Id., 6 (step (b) of claim 1). However, the Examiner found that Gatto
discloses chitosan as a skin active agent, making it an obvious choice to use
in a premix. Id.
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Application 10/992,383
The Examiner also found that Gatto does not expressly describe at
temperature range of “at least 35 degrees C” as claimed, but found that Gatto
describes an overlapping range of range of 40°C to about 100°C (see Gatto,
column 31, lines 58—61). Final Ans. 6. The Examiner determined that the
claimed range would have been obvious because it is routine to determine
optimal or workable temperatures. Id.
Temperature and milling
Appellants contend that Gatto does not disclose mixing the premix
solution into the carrier system at a temperature of at least about 35 degrees
C, or subsequently milling the premix solution into a carrier system as
required by the claims. Br. 4.
We are not persuaded by this argument. Gatto has the following
pertinent teachings:
FF1.
It is found that the components may be thoroughly mixed to form
a substantially uniform composition at temperatures which range
from about 40° C. to about 100° C. Agitation is generally
required. And it is found that viscous heat generated from
agitation may be sufficient to raise the temperature of the mixture
or composition so that a substantially uniform dispersion of
components therein can be achieved.
Gatto, col. 31,11. 58—65.
FF2.
Where predispersions are used, the particulate materials and the
predispersant are pre-mixed in a separate step before being added
to the composition. However, predispersion of zinc oxide or
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Application 10/992,383
other skin care ingredients are not required. These ingredients
can be mixed with the carrier directly under sufficient agitation.
Id., col. 32,11. 2-8.
The temperature of “about 40° C. to about 100° C” (FF1) meets the
recited temperature limitation because it is “at least 35 degrees C” as
required by claim 1. Gatto also expressly teaches using a “predispersion” of
the “skin care ingredient” (FF2) which meets the claimed requirement of a
(b) “premix solution.” The predispersion is then added to the composition or
carrier (FF2), corresponding to the requirement of step (c) of claim 1 of
“mixing the premix solution into the carrier system.” Consequently, a
preponderance of the evidence supports the Examiner’s finding that steps (b)
and (c) of claim 1 are met by Gatto.
While Appellants dispute that Gatto reaches “subsequently milling the
premix solution into a carrier system” (Br. 4) as required by the claims,
Appellants quoted directly from Gatto where this step is described (Br. 5):
FF3.
It is generally known that solid particles in neat form tend to form
clumps or agglomerates, bound by static charges, interactions
between functional groups, etc. It is often necessary to break up
the clumps in order to disperse the particles, to reduce the settling
effect, and to deliver skin benefits effectively. The break-up and
dispersion can be accomplished by grinding or milling, by
incorporation into a composition with agitation, by predispersing
in a dispersant mixture, by predissolving in a carrier or by other
methods known to persons skilled in the art.
Gatto, col. 11,11. 41—50 (emphasis added).
Gatto also teach:
FF4.
The composition is prepared by first mixing the petrolatum with
stearyl alcohol in the melt. The rheological agent, i.e., fumed
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Application 10/992,383
silica, is added to the melt mixture under a propeller agitation
until substantially uniform and wetted. Zinc oxide predispersion
is added to the melt mixture under high shear agitation until the
mixture is substantially uniform, for example, at a temperature
of about 77° C. (i.e., about 170° F.) for 30 minutes. High shear
mixers such as a rotor-stator, homogenizer, a Gaulin® mill or
colloid mill are suitable for the present invention.
Id., col. 37,11. 40-49.
These disclosures in Gatto clearly establish that a predispersion is
made (“premix” in the claims) which is added to carrier (e.g., petrolatum
with stearyl alcohol) and then mixed, e.g., milling (FF3) and using a mill
(FF4), meeting all the requirements of steps (b), (c), and (d) of the claim.
Appellants have not provided persuasive arguments or rebuttal evidence to
the contrary.
Particle size
Appellants contend that “Gatto [does not] teach or suggest an
appropriate particle size distribution for chitosan in a lotion to prevent
clogging of equipment.” Br. 5.
This argument is unavailing. As established by the Examiner, Gatto
describes particle sizes of “less than 100 microns” as in claim 1. The
following teaching in Gatto supports this finding:
FF5.
The particles should be substantially free of excessively large
agglomerates, i.e., there is negligible amount of particles larger
than 1000 microns. The average particle size of the skin care
ingredients should preferably be less than about 1000 microns,
more preferably less than about 100 microns, and most
preferably less than about 50 microns.
Gatto, col. 11,11. 35—40.
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While Gatto may not disclose that such preferred particle sizes
prevent clogging, because Gatto describes the same particles sizes as recited
in the claims, it is logical that they would have the same properties as those
which are claimed, including preventing clogging of equipment. Appellants
have not explained why Gatto’s particles of the same size as claimed would
behave any differently.
With respect to the requirement in claims 13 and 23 that “less than
about 1% of the particles have a diameter of greater than about 250
microns,” Gatto’s teaching that the particles are “substantially free of
excessively large agglomerates” and preferably less than 100 microns (FF5)
would reasonably be understood to satisfy the less than about 1% limitation.
Appellants do not provide evidence or arguments to the contrary, other than
to deny the limitation is met. Br. 5.
Chitosan
Appellants contend that one skilled in the art, at the time of the
invention, would not have been “motivated to process chitosan in the same
form as zinc oxide” because although “zinc oxide and chitosan are both
known skin care actives, they are structurally different compounds and, thus,
have different chemical properties.” Br. 6. Appellants also argue that
because of these differences “one skilled in the art would also not expect that
the same method could be employed to formulate a lotion containing
chitosan as the method used to formulate a lotion containing zinc oxide.” Id.
This argument does not persuade us that the Examiner erred. As
found by the Examiner, Gatto expressly lists chitosan as a skin care
ingredient in the same list comprising zinc oxide:
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FF6.
The skin care ingredients in the present invention should
preferably include at least one of the following: zinc oxide, talc,
starch, allantoin, hexamidine and its salts and derivatives,
hexamidine diisethionate, and its salts, triacetin, phytic acid,
ethylenediamine tetraacetic acid (EDTA), and 4-(2-aminoethyl)-
benzenesulfonylfluoride hydrochloride, chitosan, and mixtures
thereof.
Gatto, col. 11,11. 11—17 (emphasis added).
Appellants assert that chitosan would not be expected to behave in the
same way as zinc oxide with respect to the claimed steps, but have not
provided adequate evidence to support this argument. An argument made by
counsel in a brief does not substitute for evidence lacking in the record.
Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). In
contrast, while Gatto exemplifies zinc oxides, Gatto’s disclosure more
generally refers to utilizing “components” (FF1), “particles” (FF3, FF5), and
“skin care ingredients” (FF2, FF5), providing evidence that Gatto considered
the skin care ingredients to be interchangeable when formulated in a
predispersion and milled. Consistently, the term “skin care ingredient” is
used throughout Gatto when characterizing its invention that includes
forming a predispersion and milling it (see, e.g., Abstract). Thus, one of
ordinary skill in the art would have understood that the other mentioned skin
care ingredients, including chitosan, could be used in the same way as zinc
oxide.
Predispersion
Appellants contend that Gatto teaches the predispersions are not
required, contradicting the claimed method. Br. 7. This is unpersuasive.
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Gatto expressly teaches predispersions (i.e., the “premix” of claims 1 and
13) and exemplifies them. FF2, FF3, FF4.
Summary
For the foregoing reason, we affirm the obviousness rejection of
claims and 1 and 13. Claims 3—8, 10-12, 15—17 and 19-24 were not argued
separately and fall with claims 1 and 13.
2. REJECTION BASED ON GATTO, GROSS, AND SCHIPPER
Dependent claims 2 and 14 further recite that the chitosan material is
chitosan lactate. The Examiner found that Gross teaches chitosan lactate
and determined it would have been obvious to use it in Gatto’s composition
in place of the chitosan for its water solubility as taught by Gross. Final Act.
12. The Examiner further cited Schipper for the specific molecular weight
of chitosan, meeting the limitations of claims 9 and 18. Id.
Appellants contend that “the Office has not shown why one of
ordinary skill in the art using a preferably hydrophobic carrier [in Gatto] . . .
would look to [a] composition using an aqueous solution.” Br. 8.
This argument does not persuade us that the Examiner erred.
Gatto expressly discloses that its composition can contain water and
teaches “water-based skin compositions.” Gatto, col. 24,11. 56 & 65. Thus,
the Examiner’s reasoning that it would be advantageous to utilize a water
soluble chitosan as described by Gross in Gatto’s composition is supported
by the evidence because Gatto teaches water-based skin compositions.
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Application 10/992,383
With respect to Schipper, Appellants contend that it does make up for
the deficiencies of Gatto. Id. However, Schipper was not relied upon by the
Examiner for this reason. The argument is therefore unavailing.
Accordingly, we affirm the obviousness rejection of claims 2, 9, 14,
and 18.
SUMMARY
The rejection of claims 1, 3—8, 10-13, 15—17 and 19—2 4 as obvious in
view of Gatto is affirmed.
The rejection of claims 1, 2, 9, 14 and 18 as obvious in view of Gatto,
Gross, and Schipper is 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
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