Ex parte Glover

Board of Patent Appeals and Interferences

Jun 30, 1999

08086395 (B.P.A.I. Jun. 30, 1999)

Application for patent filed July 6, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. GLOVER
____________
Appeal No. 95-4250
Application No. 08/086,3951
____________
ON BRIEF
____________
Before WILLIAM SMITH, OWENS, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1, 3-5, 7-9, 12, 14, 15, 17, 18, and 21-24 as
amended subsequent to the final rejection (see the amendment
Appeal No. 95-4250 Page 2
Application No. 08/086,395
dated January 06, 1995, Paper No. 8, entered as per the
communication dated August 28, 1998, Paper No. 12). Claims 1,
3-5, 7-9, 12, 14, 15, 17, 18, and 21- 24 are the only claims
remaining in this application.
BACKGROUND
The appellant's invention relates to a water in volatile
silicone emulsion gel composition, a method of making the gel
composition, and a method of use of the gel composition for
moisturizing skin. The gel composition is made by measuring the
refractive index of a water phase and an oil phase, matching
the refractive indices thereof, adding the water phase to the
oil phase and subjecting the phases to shear mixing. The oil
phase comprises a volatile silicone selected from linear and
cyclopolysiloxanes of specified formulas, a siloxane polyether,
and an emollient. The water phase comprises water and an
oxyethylene functional organosilane of a specified formula and
optionally a water soluble humectant having a refractive index
above 1.35.
According to appellant (specification page 2, line 16
through page 3, line 11 and pages 16 and 17, examples I and
II), crystal clear gels may be made by matching the respective
Appeal No. 95-4250 Page 3
Application No. 08/086,395
Independent claims 1 and 12 are directed to methods of2
making the gel and independent claims 23 and 24 are directed
to methods of using the gel that correspond with composition
claims 21 and 22 and in which the differences in scope between
method claims 1 and 12, and between method claims 23 and 24
also centers on the requirement of a separate humectant in the
water phase in each of claims 1 and 23.
water and oil phase refractive indices with or without using a
separate humectant in addition to the oxyethylene organosilane
(which functions as a humectant) in the water phase. An
understanding of the invention can be derived from a reading of
exemplary composition claims 21 and 22, which differ in that
claim 22 requires a separate humectant in addition to an
oxyethylene organosilane in the water phase that is used in
making the composition. Claims 21 and 22 are reproduced below.2
21. A gel comprising a composition made by (i) forming an
oil phase having a volatile silicone, a siloxane polyether, and
an emollient; (ii)forming a water phase having water, a water
soluble humectant with a refractive index above 1.35, and an
oxyethylene functional organosilane; (iii) measuring the
refractive index of the oil phase and the water phase; (iv)
matching the refractive indices of the oil phase and the water
phase; (v) adding the water phase to the oil phase: and (vi)
subjecting the phases to shear mixing; the volatile silicone
being selected from the group consisting of cyclopolysiloxanes
of the formula [(CH ) SiO] and linear siloxanes of the formula3 2 x
(CH ) SiO[(CH ) SiO] Si(CH ) in which x is three to ten and y is3 3 3 2 y 3 3
zero to four; and the oxyethylene functional organosilane has
the formula RSiR' in which R is the radical - O(CH CH O) R"; R'3 2 2 x
is R or an alkyl radical having one to six carbon atoms; and R"
is selected from the group consisting of hydrogen, an alkyl
Appeal No. 95-4250 Page 4
Application No. 08/086,395
group of one to six carbon atoms, and an aryl group; and x is
six to thirty.
22. A gel comprising a composition made by (i) forming an
oil phase having a volatile silicone, a siloxane polyether, and
an emollient; (ii) forming a water phase having water, and an
oxyethylene functional organosilane; (iii) measuring the
refractive index of the oil phase and the water phase; (iv)
matching the refractive indices of the oil phase and the water
phase; (v) adding the water phase to the oil phase: and (vi)
subjecting the phases to shear mixing; the volatile silicone
being selected from the group consisting of cyclopolysiloxanes
of the formula [(CH ) SiO] and linear siloxanes of the formula3 2 x
(CH ) SiO[(CH ) SiO] Si(CH ) in which x is three to ten and y is3 3 3 2 y 3 3
zero to four; and the oxyethylene functional organosilane has
the formula RSiR' in which R is the radical -O(CH CH O) R"; R'3 2 2 x
is R or an alkyl radical having one to six carbon atoms; and R"
is selected from the group consisting of hydrogen, an alkyl
group of one to six carbon atoms, and an aryl group; and x is
six to thirty.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Yoneyama et al. (Yoneyama) 5,015,469 May 14,
1991
Legrow et al. (Legrow) 5,157,139 Oct. 20,
1992
Shioya et al. (Shioya) 5,306,838 Apr. 26,
1994
Claims 1, 3-5, 7-9, 12, 14, 15, 17, 18, and 21-24 stand
rejected under 35 U.S.C. § 112, second paragraph as being
indefinite for failure to particularly point out and distinctly
claim the subject matter which applicant regards as the
Appeal No. 95-4250 Page 5
Application No. 08/086,395
invention. Claims 1, 3-5, 7-9, 12, 14, 15, 17, 18, and 21-24
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Yoneyama in view of Legrow and Shioya. The above-noted
rejections represent the only issues before us for review.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer for the
examiner's reasoning in support of the rejections, and to the
appellant's brief for the appellant's arguments thereagainst.
OPINION
Having considered the entire record of this application,
including the arguments advanced by both the examiner and
appellant in support of their respective positions, we agree
with appellant that the claimed subject matter is not only
reasonably definite in scope, but also would not have been
obvious over the applied references as combined by the
examiner. Accordingly, we will not sustain any of the
examiner's rejections for reasons as follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
Appeal No. 95-4250 Page 6
Application No. 08/086,395
interpreted by one of ordinary skill in the art in light of
appellant's specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner urges that the term “matching” in appellant's
claims is indefinite (answer, page 4) in that no particular
process steps for adjusting the refractive indices of the water
and oil phases are indicated thereby. However, as indicated
above, the claims are not read in a vacuum.
Appellant describes matching of the refractive indices as
involving a comparison of the refractive index of the water
phase and the refractive index of the oil phase and adjustment
of the water phase composition if the respective indices differ
in that one is higher or lower than the other (specification
page 2, line 20 through page 3, line 11 and page 16, example
I). In other words, the refractive indices are matched by
adjusting the water phase composition as necessary to provide
an oil phase and a water phase with equal refractive indices.
In light of appellant's specification wherein the process
of matching the refractive indices is described, we agree with
Appeal No. 95-4250 Page 7
Application No. 08/086,395
appellant's conclusion that the claims including the phrase
"matching the refractive indices..." are reasonably definite so
as to be in compliance with 35 U.S.C. § 112, second paragraph.
Accordingly, we can not sustain this rejection.
Rejection under 35 U.S.C. § 103 over
Yoneyama in view of Legrow and Shioya
Yoneyama discloses a water-in-oil emulsion composition and
preparation method useful in cosmetic as well as other
applications. The composition of Yoneyama includes an oil phase
including silicone compounds and polyether modified silicone
compounds and a water phase that is added thereto by mixing.
The water phase of Yoneyama may include a polyhydric alcohol
such as glycerine (Example 1-2), one of appellant's disclosed
humectants (appellant's specification, page 13, lines 9-18).
The examiner acknowledges that Yoneyama does not disclose
the use of an oxyethylene organosilane in the water phase and
refractive index matching of the oil and water phases in
preparing the composition as required by the appealed claims
herein (examiner's answer, page 6). According to the examiner,
it would have been obvious to one of ordinary skill in the art
Appeal No. 95-4250 Page 8
Application No. 08/086,395
at the time the invention was made to add an oxyethylene
organosilane to the water phase in forming the composition of
Yoneyama since Legrow teaches such organosilane compounds are
clear and colorless and would be useful in cosmetics and
Yoneyama discloses adding water soluble additives to the
aqueous phase (answer, pages 7-9).
Appellant's basic argument with respect to the § 103
rejection appears to be that the applied references do not
suggest the substitution of an organosilane compound as claimed
herein for any of the constituents of the composition of
Yoneyama such as the silicone compounds thereof.
We note that the examiner bears the initial burden of
presenting a prima facie case of obviousness in rejecting
claims under 35 U.S.C. § 103. See In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). Furthermore,
the conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine,
Appeal No. 95-4250 Page 9
Application No. 08/086,395
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Rejections based on § 103 must rest on a factual basis with
these facts being interpreted without hindsight reconstruction
of the invention from the prior art.
In our view, the examiner has not furnished an adequate
evidentiary foundation from which a conclusion of obviousness
can be reached. In this regard, we do not find that the use of
an organosilane as claimed herein would have been reasonably
suggested for use in the composition of Yoneyama and would have
been rendered obvious within the meaning of 35 U.S.C. § 103 by
the teachings of Yoneyama taken together with Legrow and
Shioya. In particular, the examiner has acknowledged and we
agree that Yoneyama does not disclose organosilanes as being
useful additives for their composition. While Legrow does teach
that organosilanes of the type called for by the appealed
claims herein may be used in cosmetics as well as in other
applications (column 4, lines
1-7), we do not find this general suggestion of utility is
sufficiently specific to teach the use of such organosilanes in
the specific compositions of Yoneyama as a water phase
ingredient. The evidentiary record furnished by the examiner
Appeal No. 95-4250 Page 10
Application No. 08/086,395
We note that the use of an organosilane compound in the3
composition of Yoneyama necessarily involves a substitution
since all of the utilized components of the composition must
total 100% thereof.
does not suggest any advantage or reason to employ
organosilanes as claimed in the water phase of Yoneyama as a
partial or complete substitute for some or all of the other
component(s) thereof. While Shioya (column 11, lines 23-32)3
may suggest that substantially matching the refractive indices
of the water and oil phases used in making a similar
composition may enhance the transparency of the final
composition, Shioya does not cure the deficiency noted above
with respect to a lack of a teaching or suggestion for using
organosilanes of the type claimed herein in the water phase of
Yoneyama for preparing a clear gel composition.
We agree with the examiner (answer, page 14) that a prima
facie case of obviousness under 35 U.S.C. § 103 does not
require a suggestion in or expectation from the prior art that
the use of organosilanes as taught by Legrow would have the
same advantage or similar utility as a humectant or substitute
therefore in the composition as claimed as apparently newly
discovered by appellant herein.
Appeal No. 95-4250 Page 11
Application No. 08/086,395
In our view, however, at least one prior art supported
reason or advantage for using an organosilane as taught by
Legrow in the aqueous phase of Yoneyama is required to support
the proffered rejection under § 103. Here, the most that can
be concluded from the collective teachings of the applied
references is that it might have been obvious for one of
ordinary skill in the art to try an organosilane as a cosmetic
ingredient as generally taught by Legrow. Of course, it is by
now well settled that such is not the proper standard for
determining obviousness under 35 U.S.C. § 103. In this regard,
our court of review has made clear that "obvious to try" is not
the correct standard for determining obviousness under 35
U.S.C. § 103. See In re O’Farrell, 853 F.2d 894, 903-04, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988). In this regard, no
suggestion of using an oxyethylene functional organosilane as
an aqueous phase constituent in a gel composition as disclosed
by Yoneyama is suggested by the combined reference teachings.
Accordingly, we are constrained to reverse the rejection
of the appealed claims under 35 U.S.C. § 103 because the
examiner has simply failed to meet his burden of establishing
Appeal No. 95-4250 Page 12
Application No. 08/086,395
an evidentiary record to establish a prima facie case of
obviousness of the claimed subject matter as a whole within the
meaning of 35 U.S.C. § 103.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3-5, 7-9, 12, 14, 15, 17, 18, and 21-24 under 35
U.S.C. § 112, second paragraph as being indefinite for failure
to particularly point out and distinctly claim the subject
matter which applicant regards as the invention, and to reject
claims 1, 3-5, 7-9, 12, 14, 15, 17, 18, and 21-24 under 35
U.S.C. § 103 as being
Appeal No. 95-4250 Page 13
Application No. 08/086,395
unpatentable over Yoneyama in view of Legrow and Shioya is
reversed.
REVERSED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Appeal No. 95-4250 Page 14
Application No. 08/086,395
PATENT DEPT. - MAIL CO1232
DOW CORNING CORP.
MIDLAND, MI 48686-0994