Ex Parte Hilliard et al

Patent Trial and Appeal Board

Feb 26, 2016

12532178 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/532, 178 09/21/2009
23909 7590 03/01/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Peter R. Hilliard JR.
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.
8148-00-PC 5962
EXAMINER
BREDEFELD, RACHAEL EV A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER R. HILLIARD JR., MAHMOUD HASSAN,
STACEY KAPLAN, and NADIA SOLIMAN1
Appeal2013-006171
Application 12/532, 178
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and
RICHARD J. SMITH, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
personal care composition comprising a structured aqueous gel having two
visually distinct areas. The Examiner rejects the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Colgate-Palmolive
Company. (Br. 2.)
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Application 12/532, 178
STATEMENT OF THE CASE
Claims 1, 10-12, 14--16, 34--37, 40-44, 46, and 51-54 are on appeal,
and can be found in the Claims Appendix of the Appeal Brief (Br. 6-10).
Claim 1, the only independent claim, is representative of the claims on
appeal, and reads as follows:
1. A personal care composition comprising:
a. a structured aqueous gel component formed from
about 0.01 to about 5% of a clay comprising a
synthetic layered silicate;
about 0.1 to about 10% of a crosslinked
polycarboxylate thickener; and
about 0.01 to about 5% of quaternary polymer,
each wt% being based on the weight of the
composition; and
b. about 0.1 to about 25%, based on the weight of the
composition, of an emollient component, the
emollient component being dispersed in the gel
component
wherein the gel component comprises at least a first visually
distinct area and a second visually distinct area, and the
emollient component is dispersed in both of the first and second
gel components,
wherein the composition further comprises a surfactant, the
surfactant being dispersed throughout the at least first visually
distinct area and the second visually distinct area, whereby the
at least first visually distinct area and the second visually
distinct area commonly deliver both a cleaning benefit and a
moisturizing benefit.
(Br. 6, Claims Appendix (formatting added).)
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Application 12/532, 178
Appellants request review of the Examiner's rejection of claims 1,
10-12, 14--16, 34--37, 40-44, 46, and 51-54 under 35 U.S.C. § 103(a) as
obvious over Clapp2 and Wei. 3
Because the claims are not separately argued, we focus our discussion
on representative claim 1.
The Examiner finds that Clapp discloses a multi-phase composition
that contains clay, thickener, emollient, and surfactant. (See Final Act. 5.)
The Examiner acknowledges that Clapp does "not teach 0.01-5 wt.% of
quaternary polymer in its compositions" and looks to Wei for supplying the
missing element. (Id.) The Examiner concludes that it would have been
obvious to include "cationic deposition polymers in multi-phase personal
care compositions like Clapp ... [to] improve the deposition of benefit
materials to [the] skin." (Id. at 6.)
Appellants contend that Wei "does not disclose or suggest the
inclusion of an emollient in the non-lathering structured phase, which has
the water structurant." (Br. 3.) Additionally, Appellants contend that there
is no reason to combine the references because Wei "does not disclose or
suggest that synthetic layered silicate is to be put in combination with an
emollient or quaternary polymer." (Id. at 4.)
The issue is: Does the preponderance of evidence of record support
the Examiner's conclusion that the combination of references teaches the
structured aqueous gel component, emollient component, and surfactant into
two visually distinct phases as recited in claim 1?
2 Clapp et al., US 2006/0210505 Al, published Sept. 21, 2006.
3 Wei et al., US 2005/0143269 Al, published June 30, 2005.
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Application 12/532, 178
Findings ofFact
FF 1. Clapp teaches multi-phase personal care products with "the first and
second phases form[ing] a visually distinct pattern." (Clapp, Abstract,
see also i-fi-16, 75; see Final Act. 4.) Clapp teaches the use of a
colorant to visually distinguish the phases. (See Clapp i175; see also
Final Act. 5.)
FF2. Clapp teaches "[i]norganic structuring agents ... consisting of
hydrophobically modified silica, hydrophobically modified clay, and
mixtures thereof." (Clapp i133; Final Act. 4.) The structuring agent is
"incorporated in a phase ... at a level of less than ... 50%, by weight
of the phase." (Clapp i131; Final Act. 4.)
FF3. Clapp teaches adding thickening agent to the product at
concentrations of at least about 0.1 % and preferably no more than
10%. (See Clapp i150; Final Act. 5.) "It can often be useful to blend
different thickening agents together to generate an optimal stability
and rheology profile." (Clapp i150; Final Act. 5.) Thickening agents
include CARBOPOL®. (Clapp i151.)
FF4. Clapp teaches incorporating an oil/emollient benefit agent into the
product. The "oil/emollient benefit agent ... include vegetable oils
such as ... soybean, canola, sunflower, ... [and] castor" as well as
synthetic triglycerides. (Clapp i120; Final Act. 4.) Additional
oil/emollient benefit agents include liquid polyester (Clapp i121; Final
Act. 4) and petrolatum (Clapp i122; Final Act. 4.) The oil/emollient
benefit agent is present at a level of "at least about 0.1 % ... and even
more preferably at least about 18%, by weight of the phase of the
multi-phase personal care composition." (Clapp i-f 18; Final Act. 4.)
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Application 12/532, 178
FF5. Clapp teaches the incorporation of surfactants into the multi-phase
care compositions. (Clapp i-fi-158-59; Final Act. 4.)
FF6. Wei teaches "multi-phase personal cleansing compositions containing
a lathering cleansing phase and a separate non-lathering structured
aqueous phase." (Wei Abstract, see also i122.)
FF7. Wei teaches that "[t]he non-lathering structured aqueous phase ...
comprises from about 0.1 % to about 30% ... of a water structurant."
(Wei i143; see Final Act. 5.) "[I]norganic water structurants ...
include silicas, clays such as a synthetic silicates (Laponite XLG and
Laponite XLS from Southern Clay), or mixtures thereof." (Wei i145;
see Final Act. 5.)
FF8. Wei teaches the inclusion of glycerin in both the lathering cleansing
phase and the non-lathering structured aqueous phase. (Wei i189.)
FF9. Wei teaches the inclusion of cationic deposition polymers, such as
Polyquatemium 10, into both the lathering cleansing phase and the
non-lathering structured aqueous phase. (Wei i-fi-1 91-93.)
FFlO. Wei teaches that complex coacervates produced by cationic deposition
polymers "are believed to more readily deposit on the skin, which
results in improved deposition of the benefit materials." (Wei i-f 100;
see Final Act. 6.)
Principle of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Application 12/532, 178
Analysis
Clapp teaches a multi-phase personal care composition (FF 1) that
contains clay (FF2), thickener (FF3), emollient (FF4) and surfactant (FF5) at
concentrations that encompass or overlap the claimed ranges. Wei also
teaches a multi-phase personal care composition (FF6). The non-lathering
phase of Wei's composition includes clay as a water structurant (FF7). Wei
also teaches that both the lathering and non-lathering component can contain
additional ingredients including cationic deposition polymers (FF9) and
humectants (FF8).
Based on the combined teachings, the Examiner concludes that the
claimed multi-phase personal care product having visually distinct phases is
obvious because one of ordinary skill in the art would have been motivated
to include a quaternary polymer in the composition of Clapp in order to
facilitate coacervate formation for improved deposition of the benefit
material to the skin (see FFlO; see also Final Act. 5-6).
Appellants contend that Clapp "does not disclose or suggest the
selection of materials to be different in each of the phases beyond color."
(Br. 3.)
We are not persuaded by Appellants' contention that claim 1 requires
two different phases having different components. Claim 1 recites (a) a
structured aqueous gel component and (b) an emollient component. The
claim also requires that the emollient component is dispersed in the gel
component. There is only one gel component recited in the claim, the
structured aqueous gel. Therefore, the claim is reasonably interpreted to
contain the emollient in the structured aqueous gel as long as there are
visually different areas in the gel.
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We recognize that the claim uses the transitional term comprising in
the preamble. "'Comprising' is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim." Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus, the claim
may include additional gels but there is no requirement in the claim that
other gels are present. More importantly as written, there is no requirement
in the claim that the emollient is in a phase that differs from the structured
aqueous phase. According to the claim, the surfactant can also be present in
both phases. Therefore, there is nothing in claim 1 that requires that the
phases contain different materials. Indeed, other than having a different
visual appearance, the two phases can contain the same components.
The Examiner finds that Clapp provides colorant to distinguish the
two different phases. (See Final Act. 5.) Because a colorant is a material
that is added to at least one of the phases in Clapp (FF 1 ), the reference
teaches that the phases are materially different due to the addition of the
colorant. Accordingly, we are not persuaded by Appellants' contention that
the phases need to contain different materials, but even assuming they did,
the Clapp reference would meet this limitation because at least one of the
phases contains a colorant that is a different material.
Appellants contend that the references lack direction for the
combination as proposed by the Examiner and indeed would teach away
from the claimed composition. (Br. 3.) Appellants contend that Wei "at no
time contemplates combining an emollient ... with the water structurant."
(Id. at 4.)
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We do not find Appellants' arguments persuasive. As an initial
matter, we note that Appellants' arguments attacking the Wei and Clapp
references individually (see, e.g., Br. 3), where the rejection is based on their
combination, is improper. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Furthermore, because both Clapp and Wei are directed to "multi-phase
personal care compositions and both suggest clays as structurants, it would
have been obvious to an artisan of ordinary skill at the time the invention
was made to include Wei's specific clay (synthetic layered silicates) for the
same purpose in Clapp's composition." (Ans. 5.) "[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR, 550 U.S. at 416 (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)).
Appellants contend that Wei "at no time contemplates combining ...
a quaternary polymer with the water structurant." (Br. 4.)
Wei discloses a multi-phase personal care composition that contains a
lathering cleansing phase and a non-lathering structured phase. Wei
additionally discloses other components can be added to either of those
phases. (FF8 & FF9.) Specifically, Wei teaches the inclusion of the
quaternary polymer into both the lathering and non-lathering phase. (FF9.)
The Examiner finds that Wei teaches the inclusion of the quaternary polymer
into the product to achieve the formation of coacervates. (See Final Act. 5-
6.) Wei explains that "[c]omplex coacervates are believed to more readily
deposit on the skin, which results in improved deposition of the benefit
materials," a coacervate can be formed in either the product or upon dilution
of the product when applied to the skin. (FFlO.) Accordingly, we are not
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persuaded by Appellants' contention that Wei does not disclose the
combination of quaternary polymer with the water structurant. (See FF9.)
We conclude that the evidence cited by the Examiner supports a prima
facie case of obviousness with respect to claim 1, and Appellants have not
provided sufficient rebuttal or evidence of secondary considerations that
outweighs the evidence supporting the prima facie case. As Appellants do
not argue the claims separately, claims 10-12, 14--16, 34--37, 40-44, 46, and
51-54 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
obvious over Clapp and Wei. Claims 10-12, 14--16, 34--37, 40-44, 46, and
51-54 fall with claim 1.
TIME PERIOD FOR RESPONSE
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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