Ex Parte Kohut et al

Patent Trial and Appeal Board

Sep 20, 2016

10830001 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/830,001 04/23/2004
13897 7590 09/22/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Michaela Kohut
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.
3321-P25129 7651
EXAMINER
NIELSEN, THOR B
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAELA KOHUT, STEPHAN RUPPERT, JORG KUTHER,
MARTIN KAUFFELDT, and OLAF ROHDE 1
Appeal2015-000021
Application 10/830,001
Technology Center 1600
Before ERIC B. GRIMES, TA WEN CHANG, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cleansing emulsion, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Beiersdorf, AG. Appeal
Br. 3.
Appeal2015-000021
Application 10/830,001
STATEMENT OF THE CASE
The present invention is directed to cosmetic and dermatological
cleansing preparations which contain sodium laureth sulfate and/or sodium
myreth sulfate, one or more polyacrylates and an oil phase. Spec. i-f 12.
Claims 49-94 are on appeal. Claim 49 is illustrative and reads as
follows:
49. A cosmetic or dermatological cleansing emulsion
compnsmg:
(a) from 2 % to about 1 7 % by weight of at least one of
sodium laureth sulfate and sodium myreth sulfate;
(b) from about 0.20 % to 0.70 % by weight of one or
more polyacrylates selected from anionic homopolymers and
anionic copolymers of at least one of acrylic acid, an alkylated
acrylic acid and esters thereof;
( c) from 42 % to about 51 % by weight of an oil phase
compnsmg
(i) from 30 % to about 45 % by weight of a paraffin
oil,
(ii) from about 0.5 % to 20 % by weight of one or
more oils having a polarity of from about 5 to about 50 mN/m;
the emulsion having a viscosity of from about 500 to
about 3,500 mPa sat 100 s- 1.
The claims stand rejected as follows:
Claims 49-94 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ruppert2 in combination with Gordon. 3
2 Ruppert at al., EP 1166772 Al, published Feb. 1, 2002. ("Ruppert").
3 Gordon et al., US 5,977,039, issued Nov. 2, 1999. ("Gordon").
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Application 10/830,001
DISCUSSION
Issue
In rejecting the pending claims the Examiner finds Ruppert is directed
to cosmetic or dermatological compositions containing "(a) 1-30 wt. %
wash-active-surfactant(s) having HLB value more than 15; (b) 35-50 wt.%
oil component( s ); ( c) 0.2-5 wt.% polyacrylate( s) selected from anionic
copolymers selected from homo- and copolymers of acrylic acids, alkylated
acrylic acid derivatives and/or their salts; and (d) 5-60 wt.% water."4 Final
Act. 4. The Examiner also finds that Ruppert discloses that the surfactant in
the emulsion can be sodium laureth sulfate or sodium myreth sulfate. Id.
With respect to the oil component, the Examiner finds that Ruppert teaches
that hydrocarbons and triglycerides can be used. Final Act. 5. Turning to
Gordon, the Examiner finds that Gordon teaches personal care compositions
that have viscosities from about 500 to 60,000 cps (e.g. 500 mPa to 60,000
mPa) at 26.7° C. Final Act. 6. The Examiner also finds that Gordon teaches
the use of polymeric thickeners. Id. The Examiner concludes that
It would have been obvious to one of ordinary skill in the art at
the time of the instant invention to combine the teachings of
Ruppert and Gordon and manipulate the viscosity, because
modifying viscosity is common in the personal care product
formulation arts as a means of distinguishing products in the
4 HLB value is a number between 0 and 20 that "indicates if a preferred
water or oil solubility is present. Numbers below 9 characterize oil-soluble
hydrophobic emulsifiers; numbers above 11 characterize water-soluble
hydrophilic emulsifiers. The HLB value provides information ... about the
equilibrium of the size and strength, the hydrophilic and lipophilic groups of
an emulsifier. ... [T]he effectiveness of an emulsifier [also] can be
characterized by means of its HLB value." (Ruppert i-f 23.)
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Appeal2015-000021
Application 10/830,001
marketplace. Depending on the desired consistency of the final
product it would have been obvious to one of ordinary skill in
the art to manipulate the viscosity. A lower viscosity results in a
thinner (more free flowing) composition where as a higher
viscosity results in a thicker (less free flowing) composition.
Optimization of parameters is a routine practice that would
have been obvious to a person of ordinary skill in the art to
employ and that ordinary artisan reasonably would reasonably
have expected success. Thus, it would have been obvious to one
of ordinary skill in the art at the time of the invention to engage
in routine experimentation to determine optimal or workable
ranges that produced expected results. Where the general
conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by
routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ
233 (CCPA 1955).
Final Act. 6-7.
Appellants contend that Ruppert "neither teaches nor suggests which
of the many variables of the compositions disclosed therein should be
adjusted in which way in order to arrive at compositions having more
desirable properties than those achievable with the compositions specifically
disclosed by RUPPERT." Appeal Br. 9. Appellants also argue that the
exemplified compositions of Ruppert differ significantly from the claimed
compositions. Id. Appellants argue that it is impossible to know what the
viscosities are for the compositions disclosed in Ruppert. Appeal Br. 10-11.
With respect to Gordon, Appellants contend that the viscosity range in
Gordon encompasses almost every conceivable viscosity of a liquid and
offers no guidance as to how to achieve the viscosities of the present claims.
Appeal Br. 14--15.
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Appeal2015-000021
Application 10/830,001
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 49-94 would
have been obvious over Ruppert combined with Gordon as defined by 35
U.S.C. § 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Ruppert discloses cosmetic cleaning compositions comprising:
1 to 30% by weight of one or several washing active tensides selected from
the group oftensides having an HLB value of more than 15, 35 to 50% by
weight of one or several oil components, 0.2 to 5% by weight of one or
several polyacrylates selected from the group formed by anionic
homopolymers and/or copolymers of acrylic acid and/or acrylated acrylic
acid derivatives as well as their esters, and 5 to 60% by weight of water.
Ruppert i-f 2 7.
FF2. The tensides used in Ruppert may comprise sodium myreth
sulfate and sodium laureth sulfate. Ruppert i-f 31.
FF3. Ruppert teaches that the oil components can be selected from
the group of
branched and straight hydrocarbons and hydrocarbon waxes,
silicon oils, dialkyl ethers, the group of saturated or
unsaturated, branched or straight alcohols, as well as fatty acid
triglycerides, namely triglyceride esters of saturated and/or
unsaturated, branched and/or straight alkane carboxylic acids
with a chain length of 6 to 24, in particular 12 to 18 C atoms.
The fatty acid triglycerides can be selected, for example, from
the group of synthetic, semi-synthetic and natural oils, for
example, olive oil, sunflower oil, soy oil, peanut oil, rapeseed
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Application 10/830,001
oil, almond oil, palm oil, coconut oil, palm kernel oil and the
like.
Ruppert i-f 43. "Fatty acid triglycerides, in particular soybean oil
and/or almond oil, may particularly preferably be employed according
to the invention as oils having a polarity of from about 5 to about 50
mN/m." Spec. i-f 61.
FF4. Paraffin oil is among the hydrocarbons that can be used in
composition disclosed in Ruppert. Ruppert i-f 4 7.
FF5. Ruppert teaches that the amount of polyacrylate in the
composition should range from 0.5 to 2 % by weight with from 0.7 to 1.5 %
by weight preferred. Ruppert i-f 57.
FF6. Gordon teaches the preparation of a cleansing composition.
Gordon Abstract.
FF7. Gordon teaches that the cleanser has a viscosity of from about
500 to 60;000 cps at 26. 7° C. Gordon col. 8; 11. 18-24.
FF8. Gordon teaches that thickeners, such as acrylate polymers can
be used in the cleaner in amounts of from about 0.1 % to about 2%,
preferably from about 0.2% to about 1.0%. Gordon col. 9, 11. 7-24.
Principles of Law
The test of obviousness is "whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention." In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
"[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
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Analysis
Claim 49 is representative of the rejected claims. The subject matter
of claim 49 relates to a cosmetic cleansing composition comprising sodium
laureth sulfate and/or sodium myreth sulfate, polyacrylates and an oil phase
comprising paraffin oil and, e.g., fatty acid triglycerides.
We agree with the Examiner that the subject matter of claim 49 would
have been obvious to one skilled in the art at the time the invention was
made. Ruppert discloses a cosmetic cleanser which comprises sodium
laureth sulfate and/or sodium myreth sulfate, polyacrylates and an oil phase
that can comprise paraffin oil and fatty acid triglycerides. FFl-5. Gordon
teaches that cosmetic compositions may have a viscosity of from 500 to
60,000 cps. FF7. While neither Ruppert nor Gordon teach the same ranges
of components as recited in the present claims, the ranges overlap. Ans. 7.
For example, claim 1 calls for 2 5 to 17 % by weight of sodium laureth
sulfate and sodium myreth sulfate, Appeal Br. 21 (Claims Appeldix) and
Ruppert teaches 1 to 30% by weight of one or several washing active
tensides (sodium laureth sulfate and sodium myreth sulfate.). FFl and 2.
We agree with the Examiner that it would have been obvious to optimize the
various percentages to fit the need or design of one skilled in the art. Id.
Appellants argue that the present invention corrects the deficiencies of
the prior art recited in the instant Specification. Appeal Br. 8-9. We are
unpersuaded. As the Examiner points out, Appellants have not provide a
side-by-side comparison of Ruppert with the instantly claimed invention.
Ans. 3. Thus there is no evidence of record to support Appellants' position
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Application 10/830,001
regarding the difference between the claimed compositions and those of
Ruppert.
Appellants argue Ruppert does not teach how one should adjust the
different variables of the compositions and does not teach the combination
of elements recited in the instant claims. Appeal Br. 9. We are
unpersuaded. As discussed above, Ruppert teaches all the components of
the claimed composition and the ranges recited in Ruppert and Gordon
overlap with the ranges recited in the instant claims. "[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation." In re
Aller, 220 F.2d at 456.
Appellants next argue that there are significant differences in the
examples recited in Ruppert and the claimed compositions. Appeal Br. 9-
13. Again we are unpersuaded. The Examiner has not relied solely on the
examples of Ruppert in establishing a prima facie case of obviousness but
has relied on the teachings of Ruppert and Gordon as a whole. Ans. 4. As
shown above, Ruppert and Gordon teach all the elements of the claims.
Appellants go on to argue that merely demonstrating that various
elements of a claim are known in the prior art is insufficient to establish a
case of obviousness. Appeal Br. 13-14. Appellants' argument is not
persuasive. Ruppert does not merely disclose the individual elements recited
in the instant claims but teaches putting them together in almost the identical
manner as the claimed composition. FF 1. We agree with the Examiner that
[t]he ordinary artisan would have found it obvious to vary the
amounts of paraffin or other oils in a routine process of
optimizing the composition, for the purpose of making a milder
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Appeal2015-000021
Application 10/830,001
preparation with less defatting action. Moreover, the ordinary
artisan would have had a reasonable expectation of success in
making a modified cleansing emulsion because the change in
the composition is slight and Ruppert and Gordon each disclose
compositions that can be used for many of the same purposes as
the instantly claimed compositions.
Ans. 9.
Appellants contend that Gordon fails to remedy the deficiencies of
Ruppert. Appeal Br. 14. Appellants contend the viscosity range in Gordon
is so broad as to be meaningless. Id. We are unpersuaded. The viscosity
range of Gordon overlaps with those of the instant claims. FF7. Moreover
Gordon teaches the use of polymers, including acrylates to vary the viscosity
of cosmetic compositions. FF8. We therefore agree with the Examiner that
it would have been obvious to one skilled in the art to vary the different
elements of the composition to obtain a consumer-acceptable product. Ans.
8.
With respect to claims 56, 66, 67, 76, and 80, Appellants argue that
the specific ranges recited in these claims are not taught or suggested by
Ruppert. Appeal Br. 15-19. We are unpersuaded. As the Examiner points
out, the various ranges recited in the claims overlap with those recited in
Ruppert and Gordon. Ans. 13. The discovery of the optimum ranges does
not render the claimed compositions patentable. In re Aller, 220 F.2d at 456.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claims 49, 56, 66, 67, 76, and 80 would have been obvious
over Ruppert combined with Gordon under 35 U.S.C. § 103(a).
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Appeal2015-000021
Application 10/830,001
Claims 50-55, 57----65, 68-75, 77-79, and 81-94 have not been argued
separately and therefore fall with claim 49. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 49-94 under 35 U.S.C. § 103(a).
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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