Ex Parte Lehman

Patent Trial and Appeal Board

Mar 14, 2017

13097773 (P.T.A.B. Mar. 14, 2017)

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.
13/097,773 04/29/2011 Thomas A. Lehman JR. 58999-30 7203
21130 7590 03/16/2017
BENESCH, FRIEDLANDER, COPLAN & ARONOFF LLP
ATTN: IP DEPARTMENT DOCKET CLERK
200 PUBLIC SQUARE
SUITE 2300
CLEVELAND, OH 44114-2378
EXAMINER
BASQUILL, SEAN M
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
patent@beneschlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS A. LEHMAN, JR.1
Appeal 2016-005344
Application 13/097,773
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
nonaqueous hair care composition, which have been rejected as obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s “disclosure relates to compositions for use in hair that are
capable of reducing the time needed to blow dry wet hair.” (Spec. 11.)
According to the Specification, “[t]he composition includes a nonaqueous
1 Appellant identifies the Real Party in Interest as Kenra Professional, LLC.
(App. Br. 1.)
Appeal 2016-005344
Application 13/097,773
combination of a volatile silicone compound, such as cyclopentasiloxane,
and a mixture of one or more silicone elastomers.” (Id. at 12.)
Claims 1, 2, 7, and 8 are on appeal.2 Claim 1 is illustrative:
1. A nonaqueous hair care composition capable of removing
water from a surface or tissue on which it is applied the
composition, comprising:
about 89 to about 95 percent by weight of a volatile
silicone compound, wherein the volatile silicone compound
consists of cyclopentasiloxane;
about 4 to about 5 percent by weight of a first silicone
elastomer comprising at least one of dimethicone and a cetearyl
dimethicone crosspolymer, or a combination thereof;
about 0.5 to about 5.0 percent by weight of a second
silicone elastomer comprising at least one of a dimethicone
crosspolymer, a dimethicone/vinyl, dimethicone cross polymer,
dimethiconol, or a combination thereof;
about 0.1 to about 0.3 percent by weight of a conditioning
agent, wherein the conditioning agent consists of polyethylene
glycol-10 dimethicone; and
about 0.1 to about 1.0 percent by weight of a thermal
protective agent, wherein the thermal protective agent consists of
sodium laneth 40-maleate/styrene sulfonate copolymer,
wherein the composition removes about 85% of added
water weight from a wet surface or tissue when exposed to a pre­
selected amount of heat.
(App. Br. 15 (Claims App’x).)
2 Claims 3—6, 19, and 20 are withdrawn as directed to a non-elected
invention. (Final Act. 2.)
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The Examiner rejected claims 1, 2, 7, and 8 under 35 U.S.C. § 103(a)
over Patil3 in view of Patel,4 Knappe,5 Breyfogle,6 and Resnick.7
DISCUSSION
Issue
Has the Examiner established by a preponderance of the evidence that
claims 1, 2, 7, and 8 would have been obvious over Patil, Patel, Knappe,
Breyfogle, and Resnick?
Findings of Fact
FF 1. The Examiner’s findings of fact and statement of the rejection
are provided at pages 2—5 of the Examiner’s Answer. (See also Ans. 6—14
(Examiner’s Resp. to Argument); Final Act. 2—6.) We provide the following
findings for emphasis.
FF 2. Patil teaches compositions comprising a “Backbiting Silicone
Polymer in a cosmetically acceptable carrier.” (Patil Abstract.) Patil teaches
the compositions “may be anyhydrous, or in emulsion form. If the latter, the
emulsions may be water-in-oil or oil-in-water.” (Id. 112.) Patil teaches that
suitable oil and water emulsions may contain about 0.1—95% by weight of
the total composition of water or about 0.1—99% by weight of the total
composition of oil. (Id.; see also id. at || 19—20.) Appellant’s Specification
3 Patil et al., US 2007/0243143 Al, published Oct. 18, 2007.
4 Patel et al., US 2007/0248550 Al, published Oct. 25, 2007.
5 Knappe et al., US 2010/0028272 Al, published Feb. 4, 2010.
6 Breyfogle et al., US 2010/0092408 Al, published Apr. 15, 2010.
7 Resnick et al., US 2009/0165812 Al, published July 2, 2009.
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discloses that “compositions that include less than about one percent water
are considered to be nonaqueous.” (Spec. 14.)
FF 3. Patil teaches the composition may be used in a variety of skin-
care applications, including “gels, creams, lotions, sunscreens, and the like”
and also color cosmetic applications “such as foundation makeups, blushes,
eyeshadows, mascaras, concealers, eyeliners, lip colors, nail colors, and so
on.” (Patil 118.)
FF 4. Patil teaches the cosmetic carrier may comprise oils, including
volatile silicone Dow Coming 245. (Id. at || 21, 23, 27.) Patil teaches
“suggested ranges for such oils in the compositions ... are about 0.1-90%.”
(Id. at 122.) Appellant’s Specification discloses “[s]uitable volatile silicone
compounds include XIAMETER® PMX-045 CYCLOPENATSILOXANE
(formerly DC 245) from Dow Coming.” (Spec. 1 5.)
FF 5. Patil teaches the carrier “may comprise one [or] more
stmcturing agents” and “[suggested ranges of stmcturing agent. . . range
from about 0.01-65%” by weight. (Id. at || 131—132.) Patil further teaches
“suitable as stmcturing agents are cross-linked organosiloxane compounds
known as silicone elastomers.” (Id. at || 139—140.) “Examples of suitable
silicone elastomers . . . include Dow Coming 9040 . . . and various
elastomeric silicones sold by Shin-Etsu under the KSG tradename including
KSG 15, KSG 16, KSG 19 and so on.” (Id. at 1140.) Appellant’s
Specification discloses “suitable silicone elastomers include DC-9040, DC-
9041 and DC-9045 (available from Dow Coming Inc.), [and] KSG-15 and
USG-103 (available from Shin-Etsu Silicones of America).” (Spec. 19.)
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FF 6. Patil teaches the carrier “may comprise about 0.01-20% . . . by
weight of the total composition of one or more surfactants.” (Patil || 55—
56.) Patil teaches the surfactants may be silicone surfactants, and other
types of surfactants. (Id. at | 64.)
FF 7. Patel teaches anhydrous cosmetic compositions containing,
inter alia, uncoated silicone elastomers, and use of the compositions on a
keratinous substrate. (Patel Abstract and 17.) Patel teaches “examples of
these uncoated silicone elastomers include DC-9040, DC-9041 and DC-
9045.” (Id. at | 8; see also id. at 110 (“Commercially available uncoated
silicone elastomers such as DC-9040, DC-9041, DC-9045, KSG-15 and
USG-103 are already present in the form of a gel.”).)
FF 8. Knappe teaches cosmetic compositions for styling hair.
(Knappe Abstract and 11.) Knappe teaches silicone oils for use in the
cosmetic compositions, including “Dow Coming 9546 Silicone Elastomer
Blend.” (Id. at H 69—71.) Appellant’s Specification discloses the “second
elastomer may include a mixture of cyclopentasiloxane, dimethicone
crosspolymer, dimethicone/vinyl dimethicone crosspolymer, and
dimethiconol. . . [, which] is commercially available under the trade name
DC 9546, available from Dow Coming.” (Spec. 111.)
FF 9. Breyfogle teaches personal-care compositions that include
silicone emulsifiers/surfactants, and that particularly useful compounds
include “Shin Etsu’s KF-6011, KF-6012, KF-6013, KF-6015, KF-6017, KF-
6043, KF-6028, and KF-6038.” (Breyfogle 126.) Appellant’s Specification
discloses “the composition may include a conditioning agent, such as a
dimethicone copolyol and/or other silicone-based surfactant. . . . Examples
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of commercially available dimethicone copolyols . . . include PEG-10
Dimethicone [e.g., KF-6043] available from ShinEtsu.” (Spec. 15—16.)
FF 10. Resnick teaches cosmetic compositions for straightening hair,
which include, inter alia, one or more surfactants. (Resnick 140.) Resnick
teaches a working example of the composition that includes the surfactant
sodium laneth-40 maleate/styrene sulfonate copolymer. (Id. at 198.)
Principles of Law
“‘Functional’ terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
A patent applicant is free to recite features of an apparatus either
structurally or functionally. ... Yet choosing to define an
element functionally, i.e., by what it does, carries with it a risk.
As [the Federal Circuit’s] predecessor court stated . . .
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic
relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (internal quotation
marks and citations omitted).
Analysis
Appellant argues the patentability of the claims as a group. We select
claim 1 as representative on appeal. 37 C.F.R. § 41.37(c)(l)(iv).
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As a preliminary matter, the Examiner determines that “the recitation
of a purported or intended use to which a particular composition may be put
are not relevant to the question of the possible patentability of a composition
which is otherwise fully set forth by the structural limitations of a claim.”
(Ans. 2.) Further, according to the Examiner, “a composition and it’s [sic]
properties are inseparable.” {Id. at 3.) Thus, the Examiner determines the
recitation in claim 1 of “a hair care composition capable of removing water
from a surface or tissue” and the claim’s final “wherein” clause concerning
the extent of water removed by the composition do not structurally
distinguish the claimed composition over the cited art. {Id. at 2—3.)
As to the structural aspects of the claimed composition, the Examiner
finds that Patil teaches anhydrous cosmetic compositions that include
volatile oils, surfactants, and structuring agents (e.g., silicone elastomers) in
ranges that overlap with oils, elastomers, and surfactants encompassed by
claim 1. (Ans. 3 4.) More specifically, the Examiner finds that “Patil
indicates that oils, and specifically the cyclopentasiloxane volatile silicone
oil DC 245 of instant Claim[] 1 . . . should be present in amounts falling
within the range of about 0.1 to about 90%.” {Id. at 3.) The Examiner
further finds Patil teaches “[s]urfactants, and particularly silicone
surfactants, may be present in concentrations falling with the range of 0.1-
15%.” {Id.) According to the Examiner, Patil teaches
[structuring agents are also preferably used as thickening agents
... in amounts ranging between about 0.1-45% of the
composition . . . [and] preferred structuring agents are the
silicone elastomers . . . such as the KSG 15 and Dow Coming
9040 elastomers noted in the applicant’]s specification as
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exemplary of the claimed elastomers, addressing the limitations
of Claim 1.
(Id. at 4.) The Examiner finds that Patil does not disclose the precise
silicone elastomer blends/mixtures of Claim 1, or specifically identify PEG-
10 dimethicone or sodium lanteth-40 maleate/styrene sulfonate copolymer,
and thus the Examiner turns to Patel, Knappe, Breyfogle, and Resnick. (Id. )
The Examiner finds that Patel and Knappe disclose cosmetic
compositions including silicone elastomer blends DC-9041 and DC-9546
respectively.8 The Examiner finds that Breyfogle and Resnick disclose well-
known surfactants for use in cosmetic compositions including, respectively,
KF-6043 (PEG-10 dimethicone) and sodium laneth-40 maleate/styrene
sulfonate copolymer. (Id. at 4—5.)
The Examiner concludes that it would have been obvious to combine
the silicone oils, silicone elastomers and blends, and surfactants disclosed in
Patil, Patel, Knappe, Breyfogle, and Resnick in the amounts disclosed by
Patil, and thus predictably arrive at the composition of claim 1. (Id. at 5.)
The Examiner reasons the skilled person would have been motivated to
make this combination “because each of the claimed composition
components is little more than a well-known silicone oil, silicone elastomer
or combination composition of silicone elastomers, [and] surfactants . . .
which the art recognizes as suitable components, when used in concentration
8 Appellant’s Specification discloses that DC-9041 is a mixture of
dimethicone and a cetearyl dimethicone crosspolymer. (Spec. 110.) The
Specification discloses that DC-9546 is a mixture of cyclopentasiloxane,
dimethicone crosspolymer, dimethicone/vinyldimethicone crosspolymer and
dimethiconol. (Id. at 111.)
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amounts overlapping those of the instant claims.” (Id.) The Examiner
further reasons the selection is “little more than the combination of art-
recognized elements, with each providing precisely the activity or utility
which the art acknowledges is provided by each component.” (Id.)
We adopt the Examiner’s fact-finding and reasoning, and agree with
the conclusion that claim 1 would have been obvious. Patil suggests an
anhydrous composition including cyclopentasiloxane, one or more silicone
elastomers (e.g., DC 9040 and KSG 15), and one or more surfactants in
concentrations that overlap with claim l’s ranges. (FF 2—10.) “[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
reAller, 220 F.2d 454, 456 (CCPA 1955). In “cases involving overlapping
ranges,. . . [the Federal Circuit and its] predecessor court have consistently
held that even a slight overlap in range establishes a prima facie case of
obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The first and second silicone elastomer limitations recited in claim 1
read upon the exemplary silicone elastomers DC 9040 and KSG 15
identified in Patil. (See, e.g., Patel 9 (describing KSG-15 as comprising
dimethicone/vinyldimethicone crosspolymer); Spec. 9 (describing DC-
9040 as comprising dimethicone crosspolymer); FF 2—5.) The Examiner
went further, however, and persuasively showed the silicone elastomer
mixtures (DC-9041 and DC-9546) of claim 1 are art-recognized alternative
elastomers as evidenced by Patel and Knappe. (FF 7—8.)
Similarly, Patil discloses that one or more surfactants may be included
in ranges (0.01—20%) that overlap — indeed entirely encompass — the
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Application 13/097,773
concentrations of the “conditioning agent” and “thermal protective agent”
recited in claim 1. And the Examiner has persuasively shown that recited
“agents” (PEG-10 dimethicone and sodium laneth 40-maleate/styrene
sulfonate copolymer) were well known surfactants used in cosmetic
compositions, as evidenced by at least Breyfogle and Resnick. (Ans. 4—5,
11—13; FF 9—10.)9 Wm. Wrigley Jr. Co. v. Cadbury Adams USALLC, 683
F.3d 1356, 1364 (Fed. Cir. 2012) (finding a “strong case of obviousness
based on the prior art references of record . . . [where the claim] recites a
combination of elements that were all known in the prior art, and all that was
required to obtain that combination was to substitute one well-known . . .
agent for another”). Because the art suggests cosmetic compositions
including combinations of the recited compounds in overlapping
concentrations, the skilled artisan would have had a reasonable expectation
of success in formulating the composition of claim 1.
Appellant argues the rejection is flawed for not giving patentable
weight to the intended use of the claimed composition. (App. Br. 6—8;
Reply Br. 2.) According to Appellant, based on testing disclosed in the
Specification, “surprisingly ... the claimed non-aqueous composition was
capable of removing water from the wet surface thus reducing the drying
time of wet hair by more than 50% within the first 15 minutes.” (App. Br.
8.) And, Appellant argues, “[s]ince no cited prior art composition suggests
9 We observe that Patel also discloses use of silicone emulsifiers, including,
for example, KF6017, KF6028, and KF6012 (PEG-10 dimethicone) (see,
e.g., Patel Tfl[ 21—22, 47, 51), which are among the list of silicone emulsifiers
in Breyfogle. (FF 9.)
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or teaches or anticipates the above-mentioned unexpected application,
Appellant asserts that the intended use of the claimed composition in
disclosed amounts does lend patentable weight to the claims.” {Id.)
Appellant’s argument is unpersuasive. The patentability of
composition claims is based on the structure claimed, not on how that
structure is used. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002) (“[T]he patentability of apparatus or
composition claims depends on the claimed structure, not on the use or
purpose of that structure.”). Here the structure of claim 1 is a nonaqueous
composition that comprises five compounds in recited amounts. The
combination of prior art suggests a nonaqueous cosmetic compositions
including these same compounds in concentrations that overlap or
encompass the ranges recited in claim 1. (FF 1—10.)
Appellant points to the Board’s decision in Takakashi, but that
decision does not help Appellant’s argument. (App. Br. 7—8.) In Takahashi,
the Board affirmed the rejection of the apparatus claims because “the
material intended to be worked upon by the claimed apparatus[] does not
impose structural limitations . . . which differentiates it from a prior art
apparatus satisfying the structural limitations of that claimed.” Ex parte
Takahashi, No. 2004-2192, 2004 WL 2733658, at *1 (BPAI Sept. 30, 2004)
(non-precedential). And, like here, the Board determined that the applicant
did not provide persuasive argument or evidence that the prior art structure
was incapable of performing the intended use. {Id. at *2.) With respect to
process claims, however, the Board reversed the rejection because, for those
claims, the recitation of intended use did distinguish over the art. {Id.) We
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note that, to the extent the present applicant/Appellant continued to rely on
the intended use of the claimed composition as a basis for patentability, the
Examiner “strongly encouraged” applicant to pursue claims “directed to a
method appropriately employing these compounds.” (Final Act. 7.)
We have also considered Appellant’s testing of the composition
related to drying time, but this testing does not provide persuasive evidence
of nonobviousness. (See Spec. 16-27.) Appellant tested a composition
comprising 89.59% cyclopentasiloxane, 4.94% DC 9041, 4.42% DC 9546,
0.25% PEG-10 dimethicone, and 0.10% sodium laneth 40 maleate/styrene
sulfonate copolymer, and a small amount of other oils and fragrance. (Id.
1 at 16.) Appellant does not, however, provide testing data for other
cosmetic compositions with all — or even some — of these ingredients with
concentrations falling outside the scope of the claims. Appellant has thus
not demonstrated any criticality to the ranges of compounds being claimed.
As the Federal Circuit has held,
an applicant may overcome a prima facie case of obviousness by
establishing “that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results
relative to the prior art range.” That same standard applies when,
as here, the applicant seeks to optimize certain variables by
selecting narrow ranges from broader ranges disclosed in the
prior art.
In re Peterson, 315 F.3d at 1330 (internal citations omitted).
Appellant’s testing also fails to persuade because it compared treated
samples with untreated samples; in other words, samples where an example
of the composition claimed is applied versus samples with no composition
whatsoever applied. (Spec. TfTf 21—26.) This does not, however, reflect a
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comparison against the closest prior art. In re Baxter TravenolLabs., 952
F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”). Indeed, Appellant has not shown that
the claimed composition provides unexpected drying effect when applied to
a surface as compared to any of the compositions exemplified in the cited
prior art. As determined by the Examiner, the cosmetic compositions of
Patil would be capable of removing water from the surface to which they are
applied given “their anhydrous and oily nature.” (Ans. 10.) Appellant has
not provided persuasive evidence to the contrary.
Appellant argues the prior art fails to teach each element of claim 1.
(App. Br. 8.) More specifically, Appellant contends “Patil and Patel teach
non hair care compositions” such as lipsticks and foundations, which are
“usually applied on a dry surface or tissue . . . [and] help to retain moisture.”
(Id. (citing Lehman Decl.)10.) That is why, according to Appellant, certain
example compositions described in Patil include higher percentages of
polymer, relative to the claimed cyclopentasiloxane. (App. Br. 8—9
(pointing to a lipstick formulation in Patil with 35% polymer compared to 4—
5% of the first silicone elastomer as in claim 1).)
We remain unpersuaded. The recitation of intended use — “hair care
composition” — does not structurally distinguish over the prior art for the
reasons discussed above. Moreover, the teachings of the prior art are not
limited to preferred embodiments or working examples. Merck & Co., Inc.
10 See Declaration of inventor Thomas A. Lehman, Jr. dated April 11, 2014
(“Lehman Decl.”).
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v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section
103 inquiry, the fact that a specific [embodiment] is taught to be preferred is
not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.”) (internal quotation marks omitted).
As noted previously, Patil teaches compositions including volatile
silicone oils, one or more silicone emulsifiers, and one or more surfactants
— with the ranges of these ingredients disclosed in Patil overlapping with
the claimed concentrations. (FF 2—5.) Although various working examples
of Patil include polymers at higher concentrations than are claimed, Patil
teaches lower ranges are suitable as well. For example, Patil provides
suggested ranges for silicone elastomers (structuring agents) “from about
0.01-65% . . . more preferably about 0.1-45%,” wholly encompassing the
elastomer ranges recited in claim 1 (about 4 to about 5 percent, and about
0.5 to about 5.0 percent). (Patil || 131—132, 140.) Appellant, on the other
hand, has not shown that the compositions taught or reasonably suggested by
Patil lack a water-removing property when applied to a surface.11 See In re
Schreiber, 128 F.3d at 1477; cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (“[T]he statement that aprima facie obviousness rejection is not
supported if no reference shows or suggests the newly-discovered properties
and results of a claimed structure is not the law.”).
11 Insofar as Appellant contends the density and viscosity of the
compositions of Patil would be different than Appellant’s composition (App.
Br. 9—10), Appellant has not provided persuasive evidence to support that
contention. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
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Appellant argues that Patel, Knappe, Breyfogle, and Resnick do not
make up for Path’s deficiencies. (App. Br. 10-14; Reply Br. 2—3.)
According to Appellant, Patel (like Patil) does not relate to hair care and
does not teach DC 9546 or the conditioning agent or thermal protective
agent that is claimed. (App. Br. 10.) Appellant contends it would not be
obvious to combine references like Patil and Patel that are directed to long-
lasting cosmetic applications that allow retention of moisture with the hair-
care products disclosed in Breyfogle, Knappe, and Resnick. (Id. at 14.)
Knappe, Appellant contends, identifies the second elastomer (e.g., DC 9546)
among a long list of substances and does not teach the amount needed, and
also uses more than 1% water in Knappe’s compositions. (Id. at 11.)
Appellant contends Breyfogle lists KF-6043 (PEG-10 dimethicone) as one
of several suitable compounds, but uses other compounds in its working
examples and thus “steers” away from KF-6043. (Id. at 12—13.) As for
Resnick, Appellant contends the Examiner has not shown why the skilled
person would pick sodium laneth-40 maleate/styrene sulfonate and eliminate
Resnick’s other surfactants. (Id. at 13.) Also, Appellant contends, Resnick
teaches away from the claims because Resnick’s composition is applied to
dry hair, not a wet surface as claimed. (Id.)
Appellant’s argument is unpersuasive. The intended use of the
claimed composition does not distinguish over the prior art, and the art is not
limited to its working examples as already explained. Appellant also cannot
show nonobviousness by attacking the references individually when the
rejection is based on the combination of art. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Even if Patil and Patel do not disclose DC-
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9546, KF-6043, and sodium laneth-40 maleate/styrene sulfonate, the
Examiner identified those ingredients as merely an alternative elastomer
mixture and surfactants previously used for their known function in prior art
cosmetic compositions, as evidenced in Knappe, Breyfogle, and Resnick.
The Examiner is not, as Appellant’s argument suggests, proposing wholesale
incorporation of the complete compositions disclosed in those references
with Patil or Patel. (Ans. 11—13.) The concentrations of the compounds is
supplied primarily by Patil (FF 2—5), although we observe overlap of
concentrations is evident in other applied art.12 Further, as the Examiner
notes, the number of combinations suggested by the prior art does not make
any particular combination less obvious, particularly when the selections are
simply of alternative ingredients for their known effect. (Ans. 11—13.)
Conclusion of Law
The Examiner established by a preponderance of the evidence that
claim 1 would have been obvious over Patil, Patel, Knappe, Breyfogle, and
Resnick. Claims 2, 7, and 8 have not been argued separately and thus fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection of claims 1, 2, 7, and 8 under 35 U.S.C.
§ 103(a) over Patil, Patel, Knappe, Breyfogle, and Resnick.
12 (See, e.g., Patel 12 (teaching silicone elastomers in ranges from about
0.1% to about 15%); Breyfogle 24, 26 (teaching emulsifier (e.g., KF-6043
(PEG-10 dimethicone)) concentration “from about 0.1% to about 10%”);
Resnick 142 (teaching surfactant concentrations “with a preferred range of
about 1%-10% by weight”).)
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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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