Ex Parte Lersch et alDownload PDFBoard of Patent Appeals and InterferencesApr 19, 201011675280 (B.P.A.I. Apr. 19, 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. 11/675,280 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 3 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 4 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, Appeal 2009-012405 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 6 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- Appeal 2009-012405 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 Appeal 2009-012405 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 Appeal 2009-012405 Application 11/675,280 9 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). Appeal 2009-012405 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). Appeal 2009-012405 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.” Appeal 2009-012405 Application 11/675,280 12 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. Appeal 2009-012405 Application 11/675,280 13 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 lp SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY NY 11530 Copy with citationCopy as parenthetical citation