Ex Parte Joffre

Patent Trial and Appeal Board

Sep 28, 2012

11885092 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ERIC JUDE JOFFRE
__________

Appeal 2011-010461
Application 11/885,092
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a silicone
emulsion. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-010461
Application 11/885,092

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STATEMENT OF THE CASE
Claims 1-8 and 15 are on appeal (App. Br. 3).
1
The claims have not
been argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
1. A silicone emulsion, comprising:
(A) a polyorganosiloxane containing not greater than 10% (w/w) of
cyclic organosiloxane tetramer;
(B) a surfactant having the formula:

wherein each R
2
is independently -H or -F, R
3
is -H, hydrocarbyl, or
substituted hydrocarbyl, each R
4
is independently R
3
or -(CH2CH2O)mR
3
,
wherein m is from 1 to 20, and M is a metal ion or an ammonium ion; and
(C) water.
Claims 1-8 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hamachi et al. (US 2004/0138373 A1, Jul. 15, 2004) in view of Pate et
al. (US 6,783,766 B2, Aug. 31, 2004) (Ans. 3).
The Examiner relies on Hamachi for teaching “a polyorganosiloxane
emulsion comprising a polyorganosiloxane and water . . . and a cosmetic
material made therefrom” (id.). The Examiner finds that the “content of
cyclic organosiloxane is no more than 3.5% by weight” (id.). The Examiner

1
Claims 9-14 are also pending but have been withdrawn from consideration
(App. Br. 3).
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Application 11/885,092

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also finds that Hamachi teaches “that component (b) is an N-acylalkyl
taurine and/or salt thereof that is an anionic surface-active agent used for
emulsification and dispersion of the polyorganosiloxane in water” and “used
as a dehydration and polycondensation reaction catalyst” (id. at 4).
The Examiner relies on Pate for teaching “a cosmetic silicone
emulsion wherein sodium taurocholate may be used as an ionic surfactant
suitable for stabilizing the emulsion” (id.). The Examiner concludes that it
would have been obvious “to use sodium taurocholate as an ionic surfactant
in [Hamachi’s] silicone emulsion . . . because sodium taurocholate is a
known ionic surfactant used in cosmetic silicone emulsions and is thus a
known substitution for another ionic surfactant used in cosmetic silicone
emulsions” (id.).
ANALYSIS
As noted by Appellant, Hamachi is directed to a cosmetic emulsion
composition comprising, as component B, particular anionic surface-active
agents (Hamachi, ¶¶ [0010] & [0017]). We agree with Appellant that the
Examiner has not adequately explained why one of ordinary skill in the art
would have replaced these particular anionic surface-active agents with
sodium taurocholate.
However, as noted by the Examiner (Ans. 9), Hamachi teaches that
“anionic surface active agents other than component (B) can be added to the
emulsion composition . . . in order to maintain its stability” (Hamachi,
¶ [0039]). In addition, Pate, in the context of a cosmetic formulation,
discloses sodium taurocholate as a suitable ionic surfactant to stabilize a
silicone emulsion (Pate, col. 1, ll. 6-8 & 47, col. 3, ll. 41-42, & col. 4, ll. 8-
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Application 11/885,092

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11). We conclude that it would have been prima facie obvious to include
sodium taurocholate in Hamachi’s emulsion composition to maintain its
stability.
Appellant argues, however, that “Pate[]’s process to prepare its HIPR
emulsions are unique and therefore may have different surfactant
requirements from other emulsions in the art” (App. Br. 10 (emphasis
added)). We are not persuaded. As pointed out by the Examiner, both
Hamachi and Pate are directed to cosmetic emulsion compositions (Ans. 3 &
4). Appellant has not adequately explained why one of ordinary skill in the
art would not have had a reasonable expectation for success.
Appellant also argues that the “rejection fails to provide sufficient
rationale as to why one skilled in the art would be motivated to choose
sodium taurocholate from the long listing of surfactant options taught by
Pate” (App. Br. 7). We are not persuaded. We recognize that Pate includes
sodium taurocholate in a list of suitable surfactants (Pate, col. 4, ll. 8-19).
However, given the broad disclosure in Hamachi of anionic surfactants
suitable for use in its composition (Hamachi, ¶¶ [0039]-[0040] & [0049]),
Appellant has not adequately explained why it would not have been prima
facie obvious to include any of Pate’s anionic surfactants in Hamachi’s
composition.
CONCLUSION
The evidence supports the Examiner’s conclusion that representative
claim 1 would have been obvious. We therefore affirm the obviousness
rejection. However, because our reasoning differs from that the Examiner,
we designate the affirmance as a new ground of rejection.
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Application 11/885,092

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED, 37 C.F.R. § 41.50(b)

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