Ex parte Khayat et al.

Board of Patent Appeals and Interferences

Nov 30, 2000

08258024 (B.P.A.I. Nov. 30, 2000)

1
The opinion in support of the decision being entered today was not written for publication
and is not binding precedent of the Board
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CARINE KHAYAT and DIDIER CANDAU
__________
Appeal No. 1997-3900
Application 08/258,024
___________
HEARD: November 16, 2000
___________
Before ROBINSON, SPIEGEL, and SCHEINER, Administrative Patent Judges.
ROBINSON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1 - 8 and 10-11 which are all of the claims pending in the case.
Appeal No. 1997-3900
Application 08/258,024
2
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
1. A cosmetic or dermatological composition in the form of a stable oil-in-water
emulsion, comprising
(a) from 15 to 50% by weight of at least one vegetable oil containing at least 40%
linoleic acid triglycerides,
(b) from 2 to 7% be weight of a self-emulsifiable composition comprising from 60
to 90% by weight of at least one fatty alcohol having from 12 to 22 carbon atoms, from 10
to 40% by weight of at least one alkylpolysaccharide whose alkyl chain has from 12 to 22
carbon atoms, and from 0 to 5% by weight of polysaccharide,
(c) from 0.5 to 5% by weight of a coemulsifying agent selected from the group
consisting of at least one saturated fatty alcohol having from 16 to 32 carbon atoms, a
saturated fatty acid having from 16 to 32 carbon atoms and a mixture thereof,
(d) from 0.1 to 1% by weight of a gelling agent, and the remainder consisting
essentially of an aqueous phase.
The references relied upon by the examiner are:
Orr et al. (Orr) 4,976,953 Dec. 11, 1990
Ziegler 5,310,5556 May 10, 1994
Brancq et al. (Brancq) WO 92/06778 Apr. 30, 1992
GROUND OF RECORD
Claims 1 - 8 and 10-11 stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner relies on Brancq, Ziegler, and Orr.
We reverse.
Appeal No. 1997-3900
Application 08/258,024
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BACKGROUND
The invention is described by applicants, at page 1 of the specification, as being
directed to a composition in the form of a stable oil-in-water emulsion which consists
essentially of at least one vegetable oil with a high linoleic acid content, a surface active
agent based on fatty alcohols and of a gelling agent. The composition is stated to be
useful in various cosmetic and dermatological applications.
DISCUSSION
The rejection under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicants. (Id.) In order to meet that
burden the examiner must provide a reason, based on the prior art, or knowledge
generally available in the art as to why it would have been obvious to one of ordinary skill in
the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985). On the record
before us, the examiner has not met the initial burden of establishing why the prior art,
relied on, would have led one of ordinary skill in this art to modify the oil-in-water emulsions
of Brancq in a manner to arrive at the presently claimed composition. The examiner
Appeal No. 1997-3900
Application 08/258,024
We note that the pages of the Examiner's Answer are misnumber with an1
additional unnumbered page appearing between numbered pages 2 and 3. Our reference
throughout this opinion reflects the page number which would be appropriate if the pages
were correctly numbered.
4
acknowledges that (Answer, page 3 ):1
Brancq differs from the claimed invention in failing to specify
the vegetable oil as comprising at least 40% linoleic acid and
in failing to teach specifically a coemuslifier (sic, coemulsifier)
(although fatty alcohols are present as part of the self-
emulsifying system) or gelling agent (although cellulose and
may be part of the self-emulsifying system).
The examiner cites Ziegler as teaching cosmetic emulsions comprising .5-20%
vegetable oil such as sunflower oil, which is identified by applicants as a vegetable oil
within the scope of the claims, and which is disclosed as containing linoleic acid as its
primary constituent. (Answer, page 3). Ziegler is, also, urged to teach oily emollients such
as fatty acids and fatty alcohols and gelling agents such as xanthan gum which are the
same as those identified by applicants as being with the scope of the claims. (Answer,
page 4). Orr is cited as teaching cosmetic emulsions comprising 1-20% emollient
including vegetable oils such as sesame oil, which falls within the scope of the claimed
invention and fatty alcohols, vegetable waxes in combination with 1-10% emulsifier such as
a fatty alcohol and gelling agents such as tree exudates and water. (Id.). The examiner
then concludes that:
Appeal No. 1997-3900
Application 08/258,024
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[I]t would have been obvious to one having ordinary skill in the
art at the time of the invention to select the claimed vegetable
oils for use in the Brancq emulsion with the reasonable
expectation of deriving a cosmetic composition with emollient
properties. The motivation lies in the selection of species
within the Brancq generic disclosure in view of the disclosed
use and advantage of such species by the secondary
references. While the primary reference includes fatty
alcohols, it would have been within the skill of the art to include
a fatty acid or fatty alcohol as the claimed “coemulsifier” in
view of the disclosed use of such as either emulsifiers or
emollients by the secondary references. The motivation lies in
achieving an emollient or additive emulsifier effect. The
inclusion of a gelling agent within Brancq is also within the skill
of the art in view of the secondary reference teaching of the
thickening ability and conventional use of such. [Examiner's
Answer, pp. 4-5]
What is missing from the examiner's discussion of the rejection are those facts or
evidence which would have directed one or ordinary skill in this art to modify the teaching
of Brancq in the manner required to arrive at the claimed invention. As urged by appellants
(Principal Brief, page 7):
In order to arrive at the presently claimed composition,
starting from example 3 of Brancq et al, one of ordinary skill in
the art would have had to, at a minimum, take the following
steps:
Step 1: increase the amount of vegetable oil, i.e., of
sweet almond oil of Brancq et al, from 5% up to an amount
between 15-50% by weight.
Step 2: replace the sweet almond oil by the same
amount of a vegetable oil containing at least 40% linoleic acid
triglycerides.
Appeal No. 1997-3900
Application 08/258,024
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Step 3: add from 0.5 to 5% by weight of a
coemulsifying agent.
Step 4: replace the specific polyacrylamide synthetic
gelling agent (SEPIGEL 305) of Brancq et al. with a natural
gelling agent specified by the presently claimed invention.
We do not question that one or ordinary skill in this art could select and combine the
various components required by the claims on appeal in a manner to arrive at a
composition which would fall within the scope of the present claims. However, the fact that
the prior art could be so modified would not have made the modification obvious unless
the prior art suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason
stemming from the prior art which would have led a person having ordinary skill to the
modify the composition of Brancq by substituting the various components described by
Ziegler and Orr. Thus, in our opinion, the examiner has failed to establish a prima facie
case of obviousness within the meaning of 35 U.S.C. § 103 of the subject matter of the
claims on appeal.
Where, as here, the examiner fails to establish a prima facie case of obviousness,
the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore the rejection of claims 1-8
and 10-11 under 35 U.S.C. § 103 is reversed.
Appeal No. 1997-3900
Application 08/258,024
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CONCLUSION
The examiner's rejection of claims 1-8 and 10-11 under 35 U.S.C. § 103 as obvious
over the combined teachings of Brancq, Ziegler, and Orr is reversed.
REVERSED
Douglas W. Robinson )
Administrative Patent Judge )
)
)
Carol A. Spiegel ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
Toni R. Scheiner )
Administrative Patent Judge )
DWR/cam
Appeal No. 1997-3900
Application 08/258,024
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B.J. Sodoff
Nixon & Vanderhye
1100 North Glebe Road, 8th Floor
Arlington, VA 22201-4714