Ex Parte Langolf et alDownload PDFBoard of Patent Appeals and InterferencesDec 13, 201011640431 (B.P.A.I. Dec. 13, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation