Ex Parte Lersch et al

Board of Patent Appeals and Interferences

Apr 19, 2010

11675280 (B.P.A.I. Apr. 19, 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.
11/675,280 02/15/2007 Peter Lersch 15994A 6024
23389 7590 04/20/2010
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
04/20/2010 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 PETER LERSCH, FELIX MULLER,
JORG PEGGAU, and PATRICK ULRICH
__________

Appeal 2009-012405
Application 11/675,280
Technology Center 1600
__________

Decided: April 20, 2010
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
deodorizing composition. The Examiner has rejected the claims as
indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Appeal 2009-012405
Application 11/675,280

2
STATEMENT OF THE CASE
Claims 1-11 are on appeal. Claims 1 and 8 are representative and read
as follows:
1. An aqueous solution with deodorizing action comprising:
0.01 to 60.0%, by weight, of a zinc salt of ricinoleic acid;
0.01 to 40.0%, by weight, of an amino-functional amino acid;
0.01 to 40.0%, by weight, of at least one solubility promoter;
0.01 to 10.0%, by weight, of at least one organic acid, inorganic acid
or mixtures thereof; and
the balance being water.

8. The aqueous solution of Claim 1 further comprising at least one
animal keeping agent.

The Specification discloses that an amino-functional amino acid is
“preferably lysine, hydroxylysine, arginine, and derivatives and salts
thereof” (Spec. ¶ 29). The Specification also discloses that “solubility
promoters include: nonionic and ionic surfactants” (id. at ¶ 0036).
The claims stand rejected as follows:
• Claim 8 under 35 U.S.C. § 112, second paragraph;
• Claims 1-7, 10, and 11 under 35 U.S.C. § 103(a) in view of Gers-
Barlag1 and Vermeer;2 and
• Claim 9 under 35 U.S.C. § 103(a) in view of Gers-Barlag, Vermeer,
and Bessette.3

1 Gers-Barlag et al., US 20030175221A1, Sept. 18, 2003
2 Vermeer, US 5,880,076, Mar. 9, 1999
3 Bessette, US 6,887,899 B1, May 3, 2005
Appeal 2009-012405
Application 11/675,280

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I.
Issue
The Examiner has rejected claim 8 under 35 U.S.C. § 112, second
paragraph, on the basis that the term “animal keeping agent” is indefinite
because the Specification “does not define what … ‘animal keeping’ means
and does not set forth what this ‘agent’ for animal keeping encompasses”
(Ans. 3).
Appellants contend that the Specification states that the disclosed
formulations can be used in private (or domestic) and commercial animal
keeping (Appeal Br. 9, citing the Spec. at ¶ 0025 and ¶ 0045). Appellants
contend that, in view of the Specification, “a person skilled in the art would
readily understand that the term ‘animal keeping agent’ means animal
husbandry agent” (id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the scope of claim 8 is
unclear because it recites a solution comprising an animal keeping agent?
Findings of Fact
1. The Specification discloses “preparations for the preparation of
deodorizing hygienic and cosmetic formulations, deodorizing household
cleaners, industrial cleaners, adsorbents in filters, [and] deodorizing
formulations for use in private and commercial animal keeping” (Spec.
¶ 0025).
2. The Specification discloses that the disclosed “active ingredient
combinations can also be used in cleaning formulations, such as, for
example, in … deodorizing formulations for use in domestic and commercial
animal keeping” (id. at ¶ 0045).
Appeal 2009-012405
Application 11/675,280

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Principles of Law
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir.
1993).
Analysis
We agree with the Examiner that claim 8 is indefinite. Even assuming
that one of skill in the art might understand that an “animal keeping agent” is
an agent used in animal husbandry, as Appellants argue, the Specification
does not define what distinguishes an animal keeping agent (or animal
husbandry agent) from other agents. Thus, the scope of claim 8 is unclear.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
scope of claim 1 is unclear because it recites a solution comprising an animal
keeping agent.
II.
Issue
The Examiner has rejected claims 1-7, 10, and 11 under 35 U.S.C.
§ 103(a) in view of Gers-Barlag and Vermeer. Claims 2-7, 10, and 11 have
not been argued separately and therefore stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Gers-Barlag discloses an aqueous
“composition comprising amino acids and aliphatic alphahydroxyl fruit
acids, … to serve as base preparation forms for diverse applications, such as
cleansing emulsions … or deodorants” and discloses that “amino acids,
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Application 11/675,280

5
especially the essential amino acids such as arginine, have a particular
advantageous cosmetic or dermatological action” (Ans. 5). The Examiner
also finds that Gers-Barlag discloses “that active ingredients common for
deodorants can be included, i.e. odor absorbers (e.g. zinc salts of ricinoleic
acid)” (id. at 6).
The Examiner finds that Vermeer discloses a composition comprising
a salt of ricinoleic acid and cationic surfactants that “can be used for wide
variety of products such as deodorant,” and discloses that “cationic
surfactants have been taught in the art as conditioning agents for the skin”
(id.). The Examiner concludes that it would have been obvious to combine
Vermeer’s surfactant with Gers-Barlag’s composition because Vermeer
teaches that “the ionic surfactant acts as [a] skin conditioning agent” (id. at
7).
Appellants contend that the cited references would not have suggested
the claimed composition because arginine (an amino-functional amino acid)
is included in a list of fifteen amino acids (Appeal Br. 10-14) and one of
skill in the art would not have been motivated to combine the cited
references (id. at 14-21). Appellants also contend that the claimed
composition provides unexpected results that overcome any prima facie case
of obviousness (id. at 21).
The issues with respect to this rejection are: Does the evidence of
record support the Examiner’s conclusion that the cited references would
have made obvious the composition of claim 1?, and if so
Have Appellants provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Appeal 2009-012405
Application 11/675,280

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Additional Findings of Fact
3. Gers-Barlag discloses emulsion preparations comprising “(1) an oil
phase, (2) a water phase, (3) at least one type of microfine particles … (4) at
least one electrolyte and (5) at most 0.5% by weight of one or more
emulsifiers” (Gers-Barlag 2, ¶¶ 0027-0035).
4. Gers-Barlag discloses that “the preparations … are characterized
by excellent skin tolerability” (id. at 2, ¶ 39).
5. Gers-Barlag discloses that “a particular embodiment of the present
invention relates to … emulsions as bases for cosmetic deodorants” (id. at
10, ¶ 0179).
6. Gers-Barlag discloses that “[a]ll active ingredients common for
deodorants or antiperspirants can advantageously be used, for example
odour concealers, such as customary perfume constituents, odor absorbers,
for example the phyllosilicates …, and also, for example, zinc salts of
ricinoleic acid.” (Id. at 10, ¶ 0184).
7. Gers-Barlag discloses that the “amount of antiperspirant active
ingredients or deodorants (one or more compounds) in the preparations is
preferably from 0.01 to 30% by weight” (id. at 10, ¶ 0186).
8. Gers-Barlag discloses that the electrolytes in its composition are
advantageously selected from:
(1) the salts with the following anions: chlorides, furthermore
inorganic oxo element anions, of these in particular sulphates,
carbonates, phosphates, borates and aluminates.….

(2) certain water-soluble UV filter substances which are mostly
present as alkali metal salts …

(3) the amino acids and their salts or their anions.… Amino
acids having a particularly advantageous cosmetic or dermato-
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Application 11/675,280

7
logical action are glycine, alanine, valine, leucine, isoleucine,
phenylalanine, tyrosine, proline, hydroxyproline, serine,
threonine, cysteine, methionine, tryptophan and arginine.

(4) the cosmetically and dermatologically relevant α-hydroxy-
carboxylic acids, α-ketocarboxylic acids and β-hydroxy-
carboxylic acids and in particular their salts.
(Id. at 3-4, ¶¶ 0047-0060.)
9. Gers-Barlag discloses that the “total amount of one or more
electrolytes in the finished cosmetic or dermatological preparations is
advantageously selected to be less than 5% by weight, preferably between
0.5 and 2.0% by weight” (id. at 5, ¶ 0099).
10. Vermeer discloses compositions comprising “glycacarbamate
and glycaurea compounds which are useful as mild cleansing,
opacifying/pearlescent or suspending agents for personal product
compositions” (Vermeer, col. 5, ll. 28-34), including “deodorant/anti-
perspirant products” (id. at col. 20, ll. 36-37).
11. Vermeer discloses that “[i]ngredients useful in bath, skin care,
shaving, deodorant/antiperspirant products include … skin conditioning
agents” (id. at col. 21, ll. 26-49).
12. Vermeer discloses that “[c]ationic surfactants have been
taught in the art as conditioning agents for the skin” (id. at col. 27, ll.
31-32).

Principles of Law
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
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Application 11/675,280

8
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
The obviousness analysis “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
“It is well established that the objective evidence of nonobviousness
must be commensurate in scope with the claims.” In re Lindner, 457 F.2d
506, 508 (CCPA 1972).
“Commensurate in scope” means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See id. at 508 (“Here, only one mixture of ingredients was
tested.… The claims, however, are much broader in scope, … and we have
to agree with the Patent Office that there is no ‘adequate basis for reasonably
concluding that the great number and variety of compositions included by
the claims would behave in the same manner as the [single] tested
composition.’”) (bracketed material in original).
Analysis
Claim 1 is directed to an aqueous solution with deodorizing action
comprising, by weight, 0.01 to 60.0% of a zinc salt of ricinoleic acid, 0.01 to
40.0% of an amino-functional amino acid, 0.01 to 40.0% of a solubility
promoter, and 0.01 to 10% of an acid.
Gers-Barlag discloses an aqueous emulsion composition as a base for,
among other things, a deodorant composition, with zinc salts of ricinoleic
acid as the active ingredient. Gers-Barlag discloses that the composition
also includes electrolytes that may be salts, amino acids, UV filter
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Application 11/675,280

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substances, or certain carboxylic acids. Gers-Barlag discloses that fifteen
amino acids, including arginine, have “advantageous cosmetic or
dermatological action.” In view of these disclosures, it would have been
obvious to one of skill in the art to include arginine and a carboxylic acid as
electrolytes in Gers-Barlag’s deodorant composition, together with a zinc
salt of ricinoleic acid.
Vermeer suggests including skin conditioning agents in deodorant
compositions, and discloses that cationic surfactants are known as skin
conditioning agents. In view of these disclosures, it would have been
obvious to one of skill in the art to include a cationic surfactant, as a skin
conditioning agent, in Gers-Barlag’s composition. The Specification states
that “solubility enhancers” include ionic surfactants.
Appellants contend that the cited references would not have suggested
the amino-functional amino acid required by the claims because arginine is
included in a list of fifteen amino acids and the other fourteen amino acids
are not amino-functional amino acids (Appeal Br. 10-14).
This argument is not persuasive. In view of the express suggestion in
Gers-Barlag that an electrolyte in the composition can be an amino acid, and
that arginine has advantageous cosmetic or dermatological action, one of
ordinary skill in the art would have been considered it obvious to use
arginine as an amino acid electrolyte in a deodorant composition. The fact
that Gers-Barlag would also have made it obvious to use any of fourteen
other amino acids does not make the use of arginine less obvious.
Appellants also contend that arriving at the invention of claim 1 based
on the cited references would require an undue amount of picking and
choosing (Appeal Br. 15-18).
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Application 11/675,280

10
This argument is not persuasive. Gers-Barlag expressly discloses a
composition containing a zinc salt of ricinoleic acid for use as deodorant
formulation. Gers-Barlag also suggests using multiple electrolytes, and
provides examples of dermatologically compatible electrolytes that include
arginine and carboxylic acids; the reference therefore would make it obvious
to use any combination of the disclosed electrolytes, including the
combination of arginine and a carboxylic acid. And, for the reasons
discussed above, Vermeer would have made it obvious to include a
solutibility promoter (cationic surfactant) in Gers-Barlag’s deodorant
composition. The references therefore provide reasons for a skilled worker
to make the choices required to arrive at the invention of claim 1.
Appellants contend that “there would be no reason for a person skilled
in the art to merely select: zinc salt of ricinoleic acid, a solubility promoter,
an amino acid…, an organic acid, inorganic acid or mixtures thereof, and
meanwhile discard the microfine particle” of Gers-Barlag’s composition
(Appeal Br. 20).
This argument is also unpersuasive, because claim 1 uses the open
transitional term “comprising,” and therefore reads on a composition that
contains other components along with those recited. Therefore, a conclusion
of obviousness would not require that a composition is formulated without
the microfine particles of Gers-Barlag.
Finally, Appellants contend that their unexpected results overcome
any prima facie case of obviousness (Appeal Br. 21), because “the claimed
aqueous solution remains clear even after storage for 3 months at
temperature of 40°C and 10 thaw-freeze cycles” (id., citing the Spec. at
¶ 0051).
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Application 11/675,280

11
This argument is not persuasive. Evidence of nonobviousness must
be commensurate in scope with the claims, and Appellants have not
adequately explained how the exemplary compositions tested in the
Specification provide a basis for concluding that the untested embodiments
encompassed by the claims would behave similarly. For example, all of the
compositions shown in the Specification’s Table 3 (p. 16), which appear to
be the compositions referred to in ¶ 51, have a “Zn ricinoleate content” of
either 1 or 1.15, but the claims encompass compositions with anything from
0.01% to 60% by weight of a zinc salt of ricinoleic acid. The claims also
encompass compositions that contain a broad range of amino-functional
amino acid, solubility promoter(s), and acid(s). Appellants have not
adequately explained why the results shown in the Specification, assuming
that they were in fact unexpected, would be shared by the other
compositions encompassed by claim 1.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have made obvious the composition of claim 1, and
Appellants have not provided evidence of unexpected results that outweighs
the evidence supporting the prima facie case of obviousness.
III.
The Examiner has rejected claim 9 under 35 U.S.C. § 103(a) in view
of Gers-Barlag, Vermeer, and Bessette. Claim 9 reads: “A method of
treating fibers and fabrics comprising applying at least the aqueous solution
of Claim 1 onto a fabric or fiber article.”
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Application 11/675,280

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The Examiner finds that Bessette discloses “a method of applying a
liquid composition in uses for rug treatments, i.e. deodorizers and carpet
fresheners” (Ans. 9). The Examiner concludes that it would have been
obvious to combine the teachings of Gers-Barlag, Vermeer, and Bessette
“because the prior art, namely Bessette, S. M., has already taught that liquid
composition[s] can be applied directly onto a fiber object, i.e. rug or carpet,
for removing the odor from the object or providing freshness scent to the
object” (id.).
Appellants contend that Bessette discloses a method of “killing or
controlling house dust mites [which] is a different application than cosmetic
or dermatological usage as disclosed in Gers-Barlag et al. and detergent
usage as disclosed in Vermeer” (Appeal Br. 23).
Appellants’ arguments are persuasive. Bessette discloses “pesticidal
compositions … [for use] as a contact pesticide in the household against dust
mites” (Bessette, col. 2, ll. 30-32). Bessette discloses that the pesticide
compositions can be used in “head shampoos and gels or lotions, skin
lotions, carpet powders, rug treatments including shampoos, deodorizers and
carpet fresheners, foggers and fumigants, aerosol room sprays, and others.”
(Id. at col. 4, ll. 5-9).
As discussed above Gers-Barlag and Vermeer suggest the
composition of claim 1 as a deodorant for skin treatment. The Examiner has
not adequately explained why one of skill in the art, in view of Bessette,
would have considered it obvious to apply the composition suggested by
Gers-Barlag and Vermeer to fibers or fabrics. Thus, the rejection of claim 9
is reversed.
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Application 11/675,280

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SUMMARY
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a). We
affirm the rejection of claim 8 under 35 U.S.C. § 112, second paragraph, and
the rejection of claims 1-7, 10, and 11 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-IN-PART

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SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY NY 11530