Ex Parte Ge

Patent Trial and Appeal Board

Sep 16, 2016

12857232 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/857,232 08/16/2010 Haiyan Ge
49641 7590 09/20/2016
THE DIAL CORPORATION
7201 E. Henkel Way
SCOTTSDALE, AZ 85255
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.
7466 3625
EXAMINER
WEBB, WALTERE
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
US-STZ-P A TENTS-UK-UW@us.henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAIY AN GE 1
Appeal2014-004038
Application 12/857,232
Technology Center 1600
Before ERIC B. GRIMES, JACQUELINE T. HARLOW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
antiperspirant composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
The Specification discloses that surface treating an active
antiperspirant compound with a hydrophobizing agent "delays hydrolyzation
of the particles, thus permitting the particles to diffuse deeper into the sweat
1 Appellant identifies the Real Party in Interest as The Dial Corporation.
(Br. 3.)
Appeal2014-004038
Application 12/857,232
glands before forming plugs, and more effectively preventing perspiration."
(Spec. i-f 8.) "In a preferred embodiment, the hydrophobizing agent
comprises isopropyl titanium triisostearate (ITT)." (Id.)
Claims 1-10 and 1 7-20 are on appeal. Claims 1 and 17 are the only
independent claims and read as follows:
1. An antiperspirant product comprising:
an active antiperspirant compound with a coating of a hydrophobizing
agent comprising isopropyl titanium triisostearate; and
a hydrophobic carrier.
17. An antiperspirant product comprising:
an active antiperspirant compound surface treated with a
hydrophobizing agent comprising isopropyl titanium triisostearate;
a hydrophobic carrier;
stearyl alcohol;
hydrogenated castor oil; and
a suspending agent.
DISCUSSION
The Examiner has rejected claims 1-10 and 17-20 under 35 U.S.C.
§ 103(a) as obvious based on Katsoulis2 and Comte. 3 (Ans. 2.) The
Examiner finds that Katsoulis teaches an antiperspirant composition
comprising an encapsulated antiperspirant active and an anhydrous carrier
liquid. (Id.) The Examiner finds that Katsoulis also teaches "encapsulating
agents include oct[ a ]methylcyclotetrasiloxane (hydrophobizing agent;
methicone)." (Id.)
2 Katsoulis et al., US 5,232,689, issued Aug. 3, 1993.
3 Comte et al., US 2005/0196360 Al, published Sept. 8, 2005.
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Appeal2014-004038
Application 12/857,232
The Examiner finds that Comte teaches "ingredients suitable for use
in antiperspirants, including particles having hydrophobic surface property
provided by isopropyl titanium triisostearate." (Id. at 3.) The Examiner
states that ITT "is included in a list of suitable hydrophobic agents, which
includes hydrophobic agents taught in Katsoulis, such as polysiloxanes,
stearyl alcohol and methicone." (Id.)
The Examiner concludes that, because "it is obvious to replace one
component for another equivalent component if it is recognized in the art
that two components are equivalent ... it would have been obvious to use
isopropyl titanium triisosterate [sic] in the compositions of Katsoulis, based
on it suitability for its intended use." (Id.)
Appellant argues that, although Comte discloses compositions that
can include antiperspirant (AP) actives and ITT (Br. 4), "ITT is in no way
mentioned with regard to AP actives, treatment of AP actives, or reducing or
impeding reactivity of AP actives." (Id. at 5.) Rather, Appellant argues,
"Comte only discloses ITT as a compound that may be used as a dispersing
agent for titanium dioxide ... but makes no mention that AP actives might
suffer from poor dispersion in such formulations, or that surface treating
them with anything at all would be beneficial." (Id.) Appellant concludes
that "nothing in the prior art discloses any reason or relevance that would
lead such a person to replace silicone compounds of Katsioulis [sic] with
ITT to encapsulate an AP active." (Id. at 5---6.)
We agree with Appellant that the Examiner has not shown that a
skilled worker would have found in the cited references a reason to include
ITT in Katsoulis' composition. Katsoulis discloses translucent
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Appeal2014-004038
Application 12/857,232
antiperspirant compositions comprising an encapsulated antiperspirant
active. (Katsoulis 2:50-53.) The antiperspirant active is encapsulated to
prevent it from converting the metal stearate gellant to stearic acid, which
causes the gel to break down. (See id. at 1 : 13-18.)
The composition also comprises "an anhydrous carrier liquid selected
from volatile silicones, low viscosity silicones, anhydrous monoalcohols,
polyalcohols, fatty alcohols, and alcohol soluble emollients and mixtures
thereof." (Id. at 3:4--8.) Katsoulis provides examples of each of these types
of carrier liquids. (Id. at 3:9 to 4:60.)
Katsoulis states that "[t]he encapsulated antiperspirant actives useful
in the instant invention are produced by (A) combining together, with
agitation, an aqueous aluminum salt or an aqueous aluminum-zirconium salt,
a non-water miscible hydrophobic liquid ... , and a carboxylate ... and (B)
heating the mixture ... to remove substantially all of the free water." (Id. at
5: 19-30.) "Non-water miscible hydrophobic liquids useful in producing the
encapsulated antiperspirant active may be selected from low viscosity
silicone fluids, paraffin oils such as mineral oil, and mixtures thereof." (Id.
at 6:37--40.) Specific low viscosity silicones disclosed by Katsoulis include
octamethylcyclotetrasiloxane. (Id. at 6 :49-51.)
Comte discloses "use of mixtures of micronised inorganic and organic
UV filters in protecting human and animal skin and hair against the
damaging effect of UV radiation and ... their use in cosmetic and
pharmaceutical formulations." (Comte i-f 1.) Comte's mixture includes
"water dispersible and/or oil-dispersible coated titanium dioxide." (Id. i-f 8.)
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Application 12/857,232
Comte states that "organic treatments (surface coating) are frequently
used to improve the dispersibility of the micro-fine particles of Ti02[.]
Examples for organic substances are fatty acids and its derivatives (metal
soaps) or silicones like methicone, dimethicone or triethoxy caprylyl silane."
(Id. i-f 12.) Oil-dispersible Ti02 particles are coated with, e.g., a metal soaps
like isopropyl titanium triisostearate (ITT) to give them a hydrophobic
surface. (Id. i-f 14.) Comte's compositions can also include antiperspirant
active agents. (Id. i-f 83.)
We do not agree with the Examiner's conclusion that Katsoulis and
Comte support a prima facie case of obviousness. Katsoulis relates to
encapsulating an antiperspirant active using hydrophobic liquids such as a
low viscosity silicone fluid like octamethylcyclotetrasiloxane. Comte
discloses that ITT can be used to coat micro-fine particles of Ti02 in order to
improve their dispersion in oil. The Examiner has not adequately supported
his position that, based on the disclosures of Katsoulis and Comte, a person
of ordinary skill in the art would recognize ITT as a functional equivalent of
the octamethylcyclotetrasiloxane disclosed as an encapsulating agent in
Katsoulis.
The Examiner reasons that ITT is disclosed in Comte "in a list of
suitable hydrophobic agents, which includes hydrophobic agents taught in
Katsoulis, such as polysiloxanes, stearyl alcohol and methicone." (Ans. 3.)
"For example, the low viscosity silicones include polysiloxanes (see col. 4,
lines 12-15)." (Id. at 5.) The cited passage, however, relates to suitable
"anhydrous carrier liquid[s]" (Katsoulis 3:4--5), which is a different
component from the "non-water miscible hydrophobic liquid" used to
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Appeal2014-004038
Application 12/857,232
encapsulate the antiperspirant active agent. (See id. at 2:50-55 (listing the
carrier liquid and encapsulated active as separate components of the final
composition); 5 :23-25 (encapsulation mixture includes non-water miscible
hydrophobic liquid).) Katsoulis lists stearyl alcohol in the same discussion
of carrier liquids. (Id. at 4:34.) Katsoulis also mentions cyclomethicone, but
again it was used in preparing the gel base for the final composition, not to
encapsulate the active agent. (Id. at 12:7, 20-27 (gel base mixed with
encapsulated antiperspirant active to form antiperspirant stick).)
In short, the Examiner has not shown that Comte's disclosure of ITT
as an agent for coating Ti02 particles would have made obvious its use as an
encapsulating agent in Katsoulis' antiperspirant compositions. The evidence
therefore does not support a prima facie case of obviousness.
SUMMARY
We reverse the rejection of claims 1-10 and 17-20 under 35 U.S.C.
§ 103(a).
REVERSED
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