Ex Parte Koenig et al

Board of Patent Appeals and Interferences

May 25, 2011

10836449 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID W. KOENIG and CHRISTINE L. SCHNEIDER
____________

Appeal 2011-004443
Application 10/836,449
Technology Center 1600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 3-5, 7-9, and
11-14 (App. Br. 2).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a wet wipe. Claim 1 is representative and
is reproduced below:
1. A wet wipe comprising a fibrous sheet material and a liquid
formulation, the liquid formulation comprising at least about 0.1% by total

1
Pending “[c]laims 15-56 have been withdrawn as directed to non-elected
subject matter” (App. Br. 1).
Appeal 2011-004443
Application 10/836,449

2
weight of the liquid formulation of a fructose polymer, wherein the fructose
polymer is selected from the group consisting of inulin, levan, and graminan,
wherein the fructose polymer is encapsulated, and wherein the fructose
polymer has a degree of polymerization of at least about 10.

Claims 1, 3-5, 7-9, and 11-14 stand rejected under 35 U.S.C § 103(a)
as unpatentable over the combination of Oku,
2
Gildenberg,
3
and Franck.
4

We reverse.
ISSUE
Does the combination of Oku, Gildenberg, and Franck suggest a
composition comprising an encapsulated fructose polymer selected from the
group consisting of inulin, levan, and graminan?
FACTUAL FINDINGS
FF 1. The Examiner relies on Oku to teach a wet towel or wet tissue papers
comprising a body odor inhibiting composition that comprises inulin and/or
levan (Ans. 11-12).
FF 2. The Examiner finds that Oku teaches that inulin and/or levan are
“appropriately used depending on the purpose because they can impart their
inherent functions to the body odor inhibitory agent without deteriorating the
body-odor inhibitory effect of [the active ingredients] trehalose and/or
mannitol” (id. at 10).
FF 3. Oku also teaches that the body odor inhibiting composition may
comprise “ultraviolet absorbents” (Oku, col. 4, ll. 14-21 and col. 5, l. 31).

2
Oku et al., US 6,497,862 B2, issued December 24, 2002.
3
Gildenberg et al., US 6,217,852 B1, issued April 17, 2001.
4
Anne Franck et al., POLYSACCHARIDES AND POLYAMIDES IN THE FOOD
INDUSTRY: PROPERTIES, PRODUCTION, AND PATENTS, Ch. 14: Inulin, 439-448
(2005).
Appeal 2011-004443
Application 10/836,449

3
FF 4. The Examiner finds that Oku fails to teach the encapsulation of
fructose polymer (Ans. 11).
FF 5. Gildenberg teaches “[a] composition for use as a sunscreen applied
during washing [that] includes photoprotective agents” (Gildenberg,
Abstract).
FF 6. Gildenberg teaches that sunscreen components are generally
recognized as either chemical absorption or physical blocking agents (id. at
col. 5, l. 64 - col. 6, l. 1).
FF 7. Gildenberg teaches that “the sunscreen components may be
encapsulated in microspheres or through other capsulization technology” to
“provide the benefit of allowing time release of the sunscreen agent” (id. at
col. 7, ll. 11-14).
FF 8. Gildenberg teaches that the sunscreen composition may also
comprise additional components, such as sugars, starches, and their
derivatives (id. at col. 12, ll. 66-67).
FF 9. The Examiner finds that “[t]he combination of Oku and Gildenberg
does not disclose the degree of polymerization of the polymer” (Ans. 11).
FF 10. The Examiner relies on Franck to suggest, inter alia, the degree of
polymerization of plant and bacterial inulin (id. at 12).
PRINCIPLES OF LAW
“[I]t is not enough to simply show that the references disclose the
claim limitations; in addition, „it can be important to identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements as the new invention does.‟” Transocean Offshore Deepwater

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Application 10/836,449

4
Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed.
Cir. 2010) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007)
(emphasis added).
ANALYSIS
Based on the combined teachings of Oku and Gildenberg the
Examiner concludes that
It would have been obvious to a person of ordinary skill
in the art at the time the invention was made to have used
encapsulation of active agents since Gildenberg discloses this
arrangement would provide the benefit of allowing time release
of the agent so as to provide longer-lasting protection to the
wearer.

(Ans. 11.) We are not persuaded that the preponderance of the evidence on
this record supports the Examiner‟s conclusion of obviousness.
The Examiner fails to state or otherwise identify a teaching in Oku of
what the “inherent functions” of inulin or levan are in Oku‟s composition
(Cf. FF 2). Notwithstanding the Examiner‟s assertion to the contrary,
without knowledge of the function of inulin or levan in Oku‟s composition it
cannot be said that Oku‟s composition would benefit from encapsulating
inulin and/or levan to provide a time release of these two agents (Cf. Ans.
11).
The Examiner fails to identify an evidentiary basis to refute
Appellants‟ contention that Gildenberg does not suggest the encapsulation of
every ingredient in Gildenberg‟s sunscreen composition (see App. Br. 11).
To the contrary, Gildenberg suggests encapsulation of sunscreen
components (FF 7). The Examiner fails to identify a suggestion in
Gildenberg to encapsulate non-sunscreen components, such as sugars (FF 8).
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Application 10/836,449

5
Notwithstanding the Examiner‟s unsupported assertions to the contrary, the
combination of Oku and Gildenberg, at best, suggests the encapsulation of
sunscreen components that may be present in Oku‟s body odor inhibiting
composition (see FF 3).
The Examiner fails to identify a teaching in Franck, relied upon by the
Examiner to suggest, inter alia, the degree of polymerization of plant and
bacterial inulin (FF 10), that makes up for the deficiency in the combination
of Oku and Gildenberg (FF 10).
CONCLUSION OF LAW
The combination of Oku, Gildenberg, and Franck fails to suggest a
composition comprising an encapsulated fructose polymer selected from the
group consisting of inulin, levan, and graminan. The rejection of claims 1,
3-5, 7-9, and 11-14 under 35 U.S.C § 103(a) as unpatentable over the
combination of Oku, Gildenberg, and Franck is reversed.

REVERSED

DEA
FCP
JNF

cdc