12985098 (P.T.A.B. Sep. 26, 2016)

Ex Parte Kaplan

Patent Trial and Appeal BoardSep 26, 2016

12985098 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/985,098 01/05/2011 22822 7590 LEWIS RICE LLC ATTN: BOX IP DEPT. 600 Washington Ave. Suite 2500 ST LOUIS, MO 63101 09/28/2016 FIRST NAMED INVENTOR David L. Kaplan 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. 176/1832US 3609 EXAMINER BARSKY, JARED ART UNIT PAPER NUMBER 1628 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): IPDEPT@LEWISRICE.COM KDAMMAN@LEWISRICE.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID L. KAPLAN 1 Appeal2015-002635 Application 12/985,098 Technology Center 1600 Before ULRIKE W. JENKS, JOHN G. NEW, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to an ascorbic acid-glycerin solution, which have been rejected as anticipated and/or obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Claims 1, 6-11, 19, and 26-32 are on appeal. Claims 1, 6, and 7 are representative and read as follows: 1. A solution consisting of: 5-15% of an ascorbic acid solute solubilized in 85-9 5% of a glycerin solvent and having no ascorbic acid suspended in said glycerin solvent. 1 Appellant identifies the Real Party in Interest as the inventor David L. Kaplan. (Br. 1.) Appeal2015-002635 Application 12/985,098 6. A solution consisting of: 85-90% of a glycerin solvent; 5-15% of an ascorbic acid solute solubilized in said glycerin solvent; 0-3% of a silicone-based organic polymer solubilized in said glycerin solvent; 0-5% of a pantothenic acid solubilized in said glycerin solvent; 0-5% of a tocopherol solubilized in said glycerin solvent; 0-30% of a propylene glycol solubilized in said glycerin solvent; 0-20% of an ethanol solubilized in said glycerin solvent; and having no ascorbic acid suspended in in said glycerin solver. 7. The solution of claim 1, wherein the solution remains stable for at least one year. (Br. 18.) The Examiner rejected claims 1, 6-11, 19, and 26-32 under 35 U.S.C. Â§ 102(a)/103(a) as anticipated by or, in the alternative, as obvious over Gamay.2 Upon consideration of the evidence on this record and each of Appellant's contentions, we find that the preponderance of evidence on this record supports the Examiner's conclusions that the subject matter of Appellant's claims 1, 6-11, 19, and 26-32 is anticipated by or, in the alternative, obvious over Gamay. Accordingly, we affirm the Examiner's rejection of each of these claims for the reasons set forth in the Answer (Ans. 4--12), which we incorporate herein by reference. 2 Gamay, US 2009/0232943 Al, published Sept. 17, 2009. 2 Appeal2015-002635 Application 12/985,098 For emphasis only, we provide the following: Gamay teaches that in a glycerin-ascorbic acid composition (Gamay i-f 34) water is not necessary though it may be present (Gamay i-f 43), and, that the pH of the composition "may be" adjusted (Gamay i-f 49). That a component, such as water or pH adjuster, may be present (Br. 9), means that it also does not need to be there. (See, e.g., Gamay i-f 73 (sample F of Table 4, indicating water is present in 0.0%).) Additionally, "about 0%" (Br. 11) does not exclude 0%. Gamay demonstrates that a waterless glycerin and ascorbic acid composition is the most stable compared to compositions that contain small amounts of water. (Gamay i-f 81 (Table 7 (Sample F)) and i-f 73 (Table 4 (Sample F) ). ) One of ordinary skill in the art would therefore not be discouraged or led in a direction different from a waterless solution (Br. 11 ). In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) ("'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'"). Moreover, the fact that Gamay's specific embodiment that does not include water does include citric acid (Br. 14) is not dispositive to the issue of whether Gamay also teaches a composition that includes just glycerin and ascorbic acid in the claimed ranges. Gamay merely notes that citric acid would be a suitable agent to adjust the pH should adjustment be needed. ( Gamay i-f 49.) "It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art." In re Fritch, 972 F .2d 1260, 1264 (Fed. Cir. 1992). Indeed, "the fact that a specific [embodiment] 3 Appeal2015-002635 Application 12/985,098 is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered." In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Moreover, as the Examiner noted (Ans. 11 ), the addition of a pH adjuster does not appear to be necessary with a combination of ascorbic acid and glycerin to achieve a pH below 5, including pH 2.5 or below recited in claims 19 and 32; Appellant's "Specification discloses Table 1, which includes ascorbic acid in glycerin with no additional ingredients having a pH level that is below 2.5." (Spec. i-f 55.) Finally, the Examiner has established that Gamay teaches the same solution as the claimed invention. It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant's assumption as to Gamay's silence on stability "for at least one year" (Br. 15-16) is not evidence or sufficient rationale demonstrating that the functional characteristics of the claimed invention are not inherent. 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. Â§ 1.136(a). AFFIRMED 4