Ex Parte Langolf et al

Board of Patent Appeals and Interferences

Dec 13, 2010

11640431 (B.P.A.I. Dec. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/640,431 12/15/2006 Brian M. Langolf KCX-1189
(64119881US01)
5162
22827 7590 12/13/2010
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
GOUGH, TIFFANY MAUREEN
ART UNIT PAPER NUMBER
1657
MAIL DATE DELIVERY MODE
12/13/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN M. LANGOLF, SCOTT W. WENZEL,
COREY THOMAS CUNNINGHAM, and LISA FLUGGE-BERENDES
____________

Appeal 2010-004946
Application 11/640,431
Technology Center 1600
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-004946
Application 11/640,431

2
This is a decision on the appeal under 35 U.S.C. § 134 by the Patent
Applicants from the Patent Examiner’s rejections of claims 1-23 in U.S.
Application 11/640,431. The Board’s jurisdiction for this appeal is under 35
U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims in this appeal are drawn to a diaper rash composition.
Claims 1-23 are pending. Claims 32 and 33 were included in Appellants’
Brief on Appeal (“Br.”), but these claims were added after the Final
Rejection, were not entered by the Examiner, and therefore are not subject of
this appeal (Ans. 2).
Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of Krzysik,2 Vatter,3 and Dobkowski4 (Ans. 4). Claim 1 is
representative and reads as follows:

2 Skin Care Topical Ointment, U.S. Patent Publication No. 2005/0058669
(filed Sept. 11, 2003) (published Mar. 17, 2005).
3 Anhydrous Cosmetic Compositions, U.S. Patent No. 6,475,500 B2 (filed
May 8, 2001) (issued Nov. 5, 2002).
4 Anhydrous Cosmetic Compositions, U.S. Patent No. 5,849,314 (filed Mar.
20, 1997) (issued Dec. 15, 1998).
Appeal 2010-004946
Application 11/640,431

3
ISSUES
Did the Examiner identify an adequate reason for a person of ordinary
skill in the art to have combined Krzysik, Vatter, and Dobkowski to have
made the claimed diaper rash composition?
Did Dobkowski disclose or suggest the claimed silicone elastomer
comprising a crosslinked reaction product of a polysiloxane containing a ≡S-
H group and an alpha, omega-diene?

LEGAL PRINCIPLES
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
Sakraida and Anderson’s-Black Rock are illustrative – a court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416.

Appeal 2010-004946
Application 11/640,431

4
FINDINGS OF FACT (“FF”)
Claim 1 Volatile silicone
(cyclomethicone
or dimethicone
in claim 3)
Silicone
elastomer
comprising a
crosslinked
product of ≡Si-
H group &
alpha,omega-
diene
Diaper rash
agent (zinc
oxide,
petrolatum,
& others in
claim 6)
No emulsifier
Krzysik [FF1]
cyclomethicone
& dimethicone
as emollient
(¶26)
[FF2] silicone
elastomer (¶26);
styrenic block
copolymers
(¶32; Ans. 5)
[FF3]
petrolatum
(¶26)

Vatter [FF4] volatile
silicone such as
cyclomethicone
(col. 9, ll. 38-62)

[FF5]
crosslinked
siloxane
elastomer such
as dimethicone/
vinyl
dimethicone
copolymers
(col. 2, ll. 17-
22; col. 6, ll.
50-56)
[FF6]
pigment
such as zinc
oxide (col.
13, l. 6)
[FF7]
emulsifiers or
surfactants are
“essential” to
aid in
dispersion of
solid particles
(col. 12, ll. 5-
8)
Dobkowski [FF8] volatile
siloxane such as
cyclomethicone
(col. 2, 45-47)

[FF9] non-
emulsifying
siloxane
elastomer
“formed from a
divinyl
compound,
particularly a
polymer with at
least two free
vinyl groups,
reacting with
Si-H linkages of
a polysiloxane
backbone” (col.
3, 19-23)
[FF10]
petrolatum
(col. 4, ll.
17-18)
[FF11] other
materials may
be included,
for instance,
nonionic,
anionic,
cationic,
amphoteric
emulsifying
agents (col. 5,
l.. 31-36)
Appeal 2010-004946
Application 11/640,431

5
ANALYSIS
Claim 1 is directed to a diaper rash composition which comprises a
volatile silicone, a silicone elastomer, and a diaper rash agent. The silicone
elastomer is a crosslinked reaction product of a polysiloxane containing a
≡Si-H group and an alpha, omega-diene. The composition contains no
emulsifiers.
The Examiner found that all the recited components were described in
prior art skin compositions (Ans. 5-6; FF1-FF6 & FF8-FF10). The
Examiner acknowledged that not all the claimed components were in a
single composition, but concluded “it would have been obvious to one of
ordinary skill in the art . . . to combine the instant ingredients for their
known benefits, i.e[.] skin care components, especially in treating diaper
rash, as disclosed by the cited references above, since each is well known in
the art for their claimed purpose.” (Ans. 6.)
Appellants contend that the Examiner did not provide a sufficient
reason for combining the recited elements into a single composition (Br. 6-
7). They assert: “the Examiner simply makes a broad statement that the
idea for combining the elements flows from their mere existence in the
references.” (Id. at 7.)
Appellants’ argument is not persuasive. The Examiner expressly
articulated where each component of the claimed composition could be
found in the cited Krzysik, Vatter, and Dobkowski publications (Ans. 5-6;
summarized in FF1-FF6 & FF8-FF10). Based on the finding that all the
recited components were found in skin care compositions, the Examiner
relied on “the well established proposition of patent law that no invention
resides in combining old ingredients of known properties where the results
Appeal 2010-004946
Application 11/640,431

6
obtained thereby are no more than the additive effect of the ingredients” to
establish that the composition would have been obvious to the ordinary
skilled worker (Ans. 6). The Examiner’s position is legally sound as each of
the claimed components were known to be useful in skin care products and
thus were being utilized for their established function. KSR, 550 U.S. at
416-17.
In fact, Appellants did not dispute that Vatter describes a composition
with the claimed volatile silicone, siloxane elastomer, and diaper rash agent
(FF4-FF6) (see Br. 8-9). Rather, Appellants contend that Vatter “teaches
away” from the claimed composition because it states that emulsifiers are
“essential” for the “functioning” of the Vatter composition, and the claimed
composition expressly excludes them (id.).
It is true that Vatter discloses that emulsifiers are essential in its
composition (FF7). However, in Dobkowski’s composition with the same
three recited components, emulsifiers are not characterized as essential
(FF8-FF11). Consequently, persons of ordinary skill in the art would have
recognized that emulsifiers are dispensable in skin treatment compositions
containing the broadly claimed volatile silicone, siloxane elastomer, and
diaper rash agent.
Appellants attempted to distinguish Dobkowski by arguing that
Dobkowski’s non-emulsifying elastomers (FF9) do not “disclose or suggest”
and “actually teach[ ] away” from a silicone elastomer that comprises a
crosslinked reaction product of a polysiloxane containing ≡S-H groups and
an alpha, omega-diene as claimed (Br. 9-10).
Appellants’ argument is not supported by the evidence. Dobkowski
describes a crosslinked non-emulsifying siloxane elastomer “formed from a
Appeal 2010-004946
Application 11/640,431

7
divinyl compound, particularly a polymer with at least two free vinyl groups,
reacting with Si-H linkages of a polysiloxane backbone” (FF9). The
Examiner properly found that Dobkowski’s divinyl group encompassed the
claimed alpha, omega-diene as both contain double-bonds and thus
reasonably suggested the latter compounds in view of Vatter’s teachings
(Ans. 8-9). Appellants did not identify a defect in the Examiner’s findings.

CONCLUSIONS OF LAW & SUMMARY
The Examiner identfied an adequate reason for the ordinary skilled
worker to have combined Krzysik, Vatter, and Dobkowski to have made the
claimed diaper rash composition.
Dobkowski reasonably suggested to persons of ordinary skill in the art
the claimed silicone elastomer comprising a crosslinked reaction product of
a polysiloxane containing a S-H group and an alpha, omega-diene.
The obviousness rejection of claim 1 is affirmed. Claims 2-23 fall
with claim 1 because separate reasons for their patentability were not
provided. 37 C.F.R. § 41.37(c)(1)(vii).

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

Appeal 2010-004946
Application 11/640,431

8

KMF

DORITY & MANNING, P.A.
Post Office Box 1449
Greenville, SC 29602-1449