Ex Parte Guillou et al

Board of Patent Appeals and Interferences

Jun 11, 2008

10181981 (B.P.A.I. Jun. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VERONIQUE GUILLOU
and ISABELLE CARTON
__________

Appeal 2007-4231
Application 10/181,9811
Technology Center 1700
___________

Decided: 11 June 2008
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CAROL A. SPIEGEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal from the final rejection of claims 1-11, 14-47,
49-51, and 56-69.2 35 U.S.C. § 134. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 Application for patent filed on July 24, 2002.
2 Claims 53 and 70-72 are also pending in the application but have been
withdrawn from consideration. Final Office Action mailed January 18, 2006
("Final"), at 1.
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The Examiner finally rejected claims 1-11, 14-47, 49-51, and 56-69
under 35 U.S.C. § 102(e) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as obvious over Morschhäuser.3 Final 3.
B. ISSUE
The sole issue on appeal is whether the Appellants have shown that
the Examiner erred in rejecting claims 1-11, 14-47, 49-51, and 56-69 under
35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Morschhäuser.4
C. FINDINGS OF FACT
The following findings of fact are believed to be supported by a
preponderance of the evidence. Additional findings of fact as necessary
appear in the Analysis portion of the opinion.
1. Claimed invention
Claim 1 is the only independent claim on appeal, and it reads as
follows:
1. A composition comprising a (1) physiologically
acceptable aqueous medium, (2) at least one surfactant chosen
from the group consisting of alkylpolyglycosides, maltose
esters, glycerolated fatty alcohols, N-alkylglucamine
derivatives, amido ether carboxylates, acetates, alaninates,
aspartates, glycinates, citrates, galacturonates, fatty acid salts
constituting soaps, phosphates, amphoteric surfactants, and
zwitterionic surfactants, and (3) at least one crosslinked
amphiphilic polymer present in an amount sufficient to increase
a volume of foam of the composition, said amphiphilic polymer

3 Patent 6,645,476 B1 issued on November 11, 2003 to Morschhäuser et al.
(“Morschhäuser”).
4 In the Final Office Action, claims 14, 16, and 49 were rejected under
35 U.S.C. § 112, second paragraph. Final 3. The Examiner has not
maintained this rejection in the Answer. Therefore, the rejection is
considered withdrawn. See MPEP § 1207.02 (8th ed., Rev. 6, Sept. 2007).
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comprising polymerized units of at least one ethylenically
unsaturated monomer comprising a sulphonic group in a free
form, a partially neutralized form or a totally neutralized form
and at least one hydrophobic part.

2. Appellants’ Specification
According to the Appellants’ Specification, a preferred ethylenically
unsaturated monomer containing a sulphonic group is 2-acrylamido-2-
methylpropanesulphonic acid (AMPS) and its partially or totally neutralized
forms. Specification 7:22-24.
The Appellants disclose that the preferred polymers of the invention
are chosen from amphiphilic copolymers of AMPS and at least one
ethylenically unsaturated hydrophobic monomer. These copolymers may
also contain one or more ethylenically unsaturated monomers not
comprising a fatty chain, such as (meth)acrylic acids. Specification 8:12-21.
According to the Appellants’ Specification, AMPS or a sodium or
ammonium salt thereof is especially polymerized with a (meth)acrylic acid
ester and, for example,
– a C16-C18 alcohol oxyethylenated with 25 mol of ethylene oxide
(Genapol® T-250 from Hoechst/Clariant).
Specification 14:17-16:6.
The Appellants disclose that preferred amphiphilic polymers may be
obtained according to standard free-radical polymerization processes in the
presence of one or more initiators, including azobisisobutyronitrile (AIBN).
Specification 13:12-16.
The Appellants also disclose that the amphiphilic polymers are
obtained especially by free-radical polymerization in tert-butanol medium in
which they precipitate. Specification 13:24-27.
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3. Morschhäuser
The invention disclosed in Morschhäuser relates to water-soluble
polymers prepared by copolymerization of macromonomers and their use in
cosmetic and pharmaceutical compositions. Morschhäuser 1:7-9.
Morschhäuser discloses that the water-soluble polymers may be
prepared by free-radical copolymerization of:
A) one or more macromonomers chosen from the group of esters of
(meth)acrylic acid with alkyl ethoxylates which include 5 to 80 ethylene
oxide units and/or (C10-C22)-alkyl radicals, and
B) one or more olefinically unsaturated comonomers, such as AMPS.
Morschhäuser 3:23-35.
Suitable macromonomers A) are, in particular, esters of (meth)acrylic
acid with, for example,
– (C16-C18)-fatty alcohol polyglycol ethers with 25 ethylene oxide
units (Genapol® T-250).
Morschhäuser 3:36-64.
Morschhäuser discloses that particular preference is given to
precipitation polymerization in tert-butanol. Morschhäuser 4:63-65.
Further, in a preferred embodiment, Morschhäuser discloses that the
polymers are crosslinked. Morschhäuser 4:16-17.
A general polymerization procedure is provided in Example 3:
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Morschhäuser 12:1-15.
Variant 3 is said to be a halogen derivative of (meth)acrylic acid.
Morschhäuser 10:58.
According to Morschhäuser, the disclosed polymers are suitable as
thickeners, dispersing agents, and bodying agents for aqueous/surface-active
preparations, for example shampoos, shower preparations, shower gels,
foam baths, and the like. Morschhäuser 5:59-63.
Morschhäuser discloses that the compositions can comprise all
customary anionic, cationic, zwitterionic, nonionic, and amphoteric
surfactants. Morschhäuser 6:8-11.
Morschhäuser discloses examples of anionic, cationic, nonionic, and
amphoteric surfactants. Morschhäuser 6:27-7:43.
The total amount of the surfactants used in the disclosed compositions
can, based on the finished composition, be between 5 and 70% by weight,
preferably between 10 and 40% by weight, particularly preferably between
12 and 35% by weight. Morschhäuser 6:23-27.
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D. PRINCIPLES OF LAW
“For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference.” Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677
(Fed. Cir. 1988). These elements must be arranged as in the claim under
review. Lindemann Maschinenfabrik v. American Hoist & Derrick Co., 730
F.2d 1452, 1458 (Fed. Cir. 1984).
E. ANALYSIS
1. Claim 1
There appears to be no dispute that Morschhäuser discloses a
crosslinked polymer within the scope of claim 1. See App. Br. 55 (referring
to column 3, lines 23-64 of Morschhäuser); App. Br. 6 (referring to
Morschhäuser Example 3).
Rather, the Appellants argue that Morschhäuser does not sufficiently
disclose combining such a crosslinked polymer with the specific types of
surfactants recited in the claims. The Appellants argue that the broad
disclosure of Morschhäuser would lead to thousands of possible
combinations. Thus, the Appellants argue that the claimed invention is not
anticipated by Morschhäuser. App. Br. 6.
Claim 1 recites a Markush listing of surfactants that includes
“amphoteric surfactants” and “zwitterionic surfactants.” According to
Morschhäuser, the disclosed compositions can comprise all customary
anionic, cationic, zwitterionic, nonionic, and amphoteric surfactants.
Morschhäuser 6:8-11. Thus, in its broadest terms, Morschhäuser expressly
discloses five groups of surfactants, two of which are expressly recited in

5 Appeal Brief dated February 20, 2007.
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Appellants’ claim 1, i.e., amphoteric and zwitterionic surfactants. See Atlas
Powder Co. v. IRECO Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (a single
prior art species within a claimed genus reads on the generic claim and
anticipates). We find that the amphoteric and zwitterionic surfactants
disclosed in Morschhäuser have the same scope as the “amphoteric
surfactants” and “zwitterionic surfactants” recited in Appellants’ claim 1.
Referring to Examples 46-49, the Appellants also argue that
Morschhäuser does not disclose a specific example of a crosslinked polymer
and a foaming surfactant. App. Br. 6.
This argument is not persuasive. It is clear from the Morschhäuser
disclosure that all customary anionic, cationic, zwitterionic, nonionic and
amphoteric surfactants are intended for use with the disclosed polymers,
including the polymer disclosed in Morschhäuser Example 3. See
Morschhäuser 6:8-11. Thus, we find that one of ordinary skill in the art
would at once envisage the claimed invention from the Morschhäuser
disclosure.
For the reasons set forth above, the Appellants have failed to show
that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) as
anticipated by Morschhäuser.6
2. Dependent claims
With respect to claims 2-5 and 23-26, the Appellants argue that there
is nothing in Morschhäuser establishing that one would have employed an

6 The Appellants rely on declaration evidence to establish that the claimed
composition exhibits unexpected results. However, evidence of secondary
considerations, such as unexpected results, is not relevant to a rejection
based on §102. In re Wiggins, 488 F.2d 538, 543 (CCPA 1973).
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amphiphilic polymer having a hydrophobic part containing from 6-50, 6-22,
6-18, and/or 12-18 carbon atoms. App. Br. 10.
The Examiner found that the amphiphilic polymer disclosed in
Morschhäuser has a hydrocarbon radical containing 12-18 carbon atoms.
Ans. 6; Morschhäuser 2:43-45, 3:25-28, Example 3. The Appellants have
failed to point to any error in this finding. Further, the Appellants have
failed to establish that this range does not fall within the ranges recited in
claims 2-5 and 23-26.
As to claim 6, the Appellants argue that there is nothing in
Morschhäuser establishing that one would have employed an amphiphilic
polymer that is neutralized with a mineral or organic base. App. Br. 10.
The Examiner found that the amphiphilic polymer disclosed in
Morschhäuser is neutralized with a sodium or ammonium base wherein the
degree of neutralization is 70-100 mole percent. Ans. 6-7; Morschhäuser
3:9-22, Example 3. The Appellants have failed to point to any error in this
finding.
As to claims 7-9, the Appellants argue that there is nothing in
Morschhäuser establishing that one would have employed an amphiphilic
polymer having a number-average molecular weight of from 1,000 to
20,000,000 g/mol, 20,000 to 5,000,000 g/mol, and/or 100,000 to 1,500,000
g/mol. App. Br. 10.
The Examiner found that the polymers disclosed in Morschhäuser
have a number-average molecular weight of 100,000 to 1,500,000 g/mol.
Ans. 7; Morschhäuser 4:1-15. The Appellants have failed to point to any
error in this finding. Further, the Appellants have failed to establish that this
range does not fall within the ranges recited in claims 7-9.
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The Appellants also argue that there is nothing in Morschhäuser
establishing that one would have employed an aqueous solution comprising
1% by weight of the polymer wherein the viscosity of the solution is from
20,000 mPa·s to 100,000 mPa·s as recited in claim 10. App. Br. 10.
The Examiner found that Morschhäuser discloses that the viscosity of
a 1% strength aqueous solution of the polymer has a viscosity of 20,000-
100,000 mPa·s. Ans. 7; Morschhäuser 4:51-59. The Appellants have failed
to point to any error in this finding.
Finally, the Appellants argue that there is nothing in Morschhäuser
establishing that one would have employed an amphiphilic polymer and/or
surfactant in the amounts recited in claims 64-66, 68, and 69. App. Br. 11.
The Examiner found that Morschhäuser discloses a composition
containing 0.1-5% by weight of the amphiphilic polymer and 10-40% by
weight of a surfactant. Ans. 7; Morschhäuser 5:52-56, 6:23-27. The
Appellants have failed to point to any error in this finding. Further, the
Appellants have failed to establish that these ranges do not fall within or
overlap the ranges recited in claims 64-66, 68, and 69.
The Appellants have failed to establish that the Examiner erred in
rejecting claims 2-11, 14-47, 49-51, and 56-69 under 35 U.S.C. § 102(e) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Morschhäuser.
E. DECISION
The rejection of claims 1-11, 14-47, 49-51, and 56-69 under 35 U.S.C.
§ 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Morschhäuser is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007).

AFFIRMED

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