Ex Parte Loechel

Patent Trial and Appeal Board

Jul 18, 2016

13468489 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/468,489 05/10/2012
27752 7590 07/20/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Florian LOECHEL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CM3637MQ 2600
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN LOECHEL 1
Appeal2014-008145
Application 13/468,489
Technology Center 1600
Before JEFFREYN. FREDMAN, ULRIKE W. JENKS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic composition that is discharged as a foam from a container in which
at least one inner bag stores the composition under pressure. The Examiner
finally rejected the claims as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Appellant identifies the Real Party in Interest as Procter & Gamble
Company of Cincinnati, Ohio. (Br. 1 ).
Appeal2014-008145
Application 13/468,489
STATEMENT OF THE CASE
Background
The Specification explains that while "cosmetic aerosols, particularly
foams, for hair conditioning purposes, deliver significant advantages
concerning distribution and handling ... conventional foams are generally
less creamy and rich ... as compared to a cream or an emulsion." (Spec.
1: 14--18). "A further problem ... can lie in the fact that a propellant which
may be desirable from the point of how to dispense the foam most
economically from the aerosol can, may be undesirable with regard to the
properties it confers to the foam." (Spec. 2: 1-3). The Specification
discloses that the
basic idea of the present invention is to provide a possibility to
offer a foam, especially a creamy aerosol mousse, in a form,
where a maximum of exhaustion from an aerosol driven
container is possible, but the nature and the features of the foam
are not limited by the necessity to use a certain propellant or a
combination of propellants only to achieve good exhaustion ..
(Spec. 3 :21-25).
The Claims
Claims 1-10 are on appeal. Claim 1 is illustrative and reads as
follows:
1. Cosmetic composition in a container comprising at least
one inner bag and an outer container, wherein the outer
container encloses the inner bag and is filled with a propellant
compressing the inner bag; and a valve mechanism attached to
the inner bag moveable between an open position, in which a
composition stored in the inner bag is allowed to be discharged
by the pressure of the compressed gas as a foam, and a closed
position, in which the composition is not allowed to be
2
Appeal2014-008145
Application 13/468,489
discharged, wherein the composition within the inner bag
comprises
a) 0.1 to 5 % by weight of a cationic surfactant (A),
b) 0.1 to 10 % by weight of a fatty alcohol (B), and
d) 0.1 to 10 % by weight of carbon dioxide.
The Issues
The Examiner rejected claims 1-9 under 35 U.S.C. § 103(a) as being
unpatentable over Keller2 in view of Gilkerson3 and claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Keller in view of Gilkerson as
applied to claims 1-9 and further in view of Salemme. 4 (Final Rej. 5 3---6).
The issues presented are: Does the evidence of record support the
Examiner's conclusions that Keller and Gilkerson suggest the cosmetic
composition in a container of claims 1-9 and that Keller, Gilkerson, and
Salemme suggest the cosmetic composition in a container of claim 1 O?
Appellant addresses the rejections together on appeal. (See Br. 5---6).
We agree the same issues are relevant to all rejections and consider the
rejections together.
Findings of Fact
1. Keller discloses a "stable aerosol cream mousse composition,
preferably hair composition, that can provide enhanced touch, compatibility,
alignment and volume reduction to the hair, with low or reduced greasy, oily
2 U.S. Patent Application No. 2008/0131378 Al published June 5, 2008.
3 U.S. Patent Application No. 2004/0166064 Al published Aug. 26, 2004.
4 U.S. Patent Application No. 2006/0124663 Al published June 15, 2006.
5 Final Office Action, mailed Oct. 15, 2013.
3
Appeal2014-008145
Application 13/468,489
hair feel, while being formulated in an emulsion having a thick, cream-type
rheology with excellent spreading, perception of spreading, and feel."
(Keller i-f 9).
2. Claim 1 of Keller reads as follows:
1. An aerosol composition comprising:
(A) 0.1 to 5% by weight of a cationic surfactant;
(B) 0.1 to 10% by weight of a fatty alcohol;
(C) 0.1 to 10% by weight of a propellant comprising
carbon dioxide; and
(D) 70 to 98% by weight of water.
(Id., claim 1 ).
3. Gilkerson discloses that a shortcoming of the prior art is the
decrease in the gas concentration in a product within internal
pressurized product containers in accordance with Boyle's Law:
as the product is dispensed from a conventional pressurized
container, displaced liquid volume within the container is filled
with expanding gas and the container pressure decreases
proportionately in accordance with Boyle's Law. As a result,
concentration of the gas in the product decreases in proportion
to the overall pressure loss within the product container.
Therefore, conventional pressurized containers fail to maintain
gas concentration in the product that is subject to recurring
dispensing. Because most conventional pressurized, or aerosol
cans only use dissolved volatile gas as a propellant for product
delivery, and not for therapeutic purposes, this limitation is
generally not problematic. However, the maintenance of high
pressure within the product container during dispensation
would advantageously ensure a high level of dissolved gas in
the product throughout its use.
(Gilkerson i-f 4).
4
Appeal2014-008145
Application 13/468,489
4. Gilkerson teaches "currently available methods for packaging
products containing dissolved gases either fail to maintain the gas
concentration in the product or suffer from technical disadvantages
that make their utilization in cosmetic and therapeutic products
impractical." (Id. i1 7).
5. Gilkerson discloses "a device for holding and dispensing a product
having a gas dissolved in it without a decrease in the concentration
of the dissolved gas in the product." (Gilkerson i18).
6. Gilkerson discloses "a packaged gas-solubilized product
comprising a product having dissolved in it a first gas with a first
pressure and an assembly for holding and dispensing the gas-
solubilized product. ... The product may be substantially in any
form." (Id. i137).
7. Gilkerson discloses an embodiment having an inner bag \'l1ith
substantially lateral edges as shown in Figure 1:
Figure 1 depicts an assembly of a sealed rigid outer container, a
flexible inner container made of gas-impermeable material and holding the
5
Appeal2014-008145
Application 13/468,489
gas-solubilized product, and a product dispenser in fluid connection with the
product contained in the inner container. (Id., Fig. 1 ).
8. Gilkerson discloses an embodiment having an inner bag with
lateral edges as shown in Figure 3:
3
Figure 3 depicts an assembly of a sealed rigid outer container, a
flexible inner container made of gas-impermeable material and holding the
gas-solubilized product, and a product dispenser in fluid connection with the
product contained in the inner container. (Id., Fig. 3).
9. Gilkerson discloses "[i]n one embodiment, the inner container 2 is
folded along one edge to form a gusted bottom and sealed along
the other three edges .... " (Id. i-f 42).
10. Salemme teaches bags for pressurized personal care containers
that "have a shape that prevents material from being trapped in the
bottom of the bag, which reduces residue and allows more product
to be delivered to the consumer rather than wasted." (Salemme i-fi-1
2--4).
6
Appeal2014-008145
Application 13/468,489
11. Salemme discloses an embodiment having an inner bag with
triangular portions extending from the bottom edge to the lateral
edges with an angle of substantially 45 degrees as shown in Figure
3.
Figure 3 is a cross-sectional view of a bag-in-bag two component
dispensing system. (Id., Fig. 3).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 417.
"Although secondary considerations must be taken into account, they
do not necessarily control the obviousness conclusion." Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (citing Newell Cos., Inc.
7
Appeal2014-008145
Application 13/468,489
v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) and holding "Here,
the record establishes such a strong case of obviousness that Pfizer's alleged
unexpectedly superior results are ultimately insufficient.").
Analysis
The Examiner finds that
One of ordinary skill in the art would have been motivated to
combine the teachings of Keller with Gilkerson to place the
Keller composition in a container comprising at least one inner
bag and an outer container, wherein the outer container encloses
the inner bag and is filled with a propellant compressing the
inner bag, and a valve mechanism attached to the inner bag
moveable between an open position, in which a composition
stored in the inner bag is allowed to be discharged by the
pressure of the compressed gas as a foam, and a closed position,
in which the composition is not allowed to be discharged
because of the advantages that Keller and Gilkerson teach.
(Final Rej. 5).
We agree with the Examiner that one of skill in the art would have
been motivated to combine the cited art to achieve the claimed invention.
We address Appellant's arguments below.
Appellant argues that
the sensory data found in Appellants' table 4 surprisingly shows
that Appellants' invention provides larger foam extension, more
foam compactness, better foam persistency, smoother hair feel,
more visual volume of the hair, more curl definition, and more
hair shine in comparison to the comparative example
(comparison composition in a regular aerosol can).
(Br. 2).
8
Appeal2014-008145
Application 13/468,489
Appellant argues this result is unexpected. (Br. 2). Appellant argues
the Examiner's rejection based on Gilkerson
fails to assert ( 1) where in paragraph 004 Gilkerson states that
failure to maintain gas concentration leads to composition
changes to the product applied to the hair, as asserted in the
Office Action; and (2) why one of ordinary skill in the art
would predict that such a change in gas concentration would
result in changes to the feel and efficacy of Appellants'
composition ....
(Br. 3). Appellant further argues the Examiner's conclusions regarding
Gilkerson's teachings "are particularly troubling because, in contradiction to
Appellants' data, Gilkerson specifically states that changes in gas
concentration in aerosol cans comprising a volatile gas as a propellant are
generally 'not problematic."' and also that in "'typical pressurized
containers ... concentration of the gas in the product decreases in proportion
to the overall pressure loss \vithin the product container."' (Id. at 3--4).
Appellant argues the Office "erroneously analogizes the change in gas
concentration (technical disadvantages) taught by Gilkerson with
Appellants' findings of improved feel and efficacy." (Id. at 4--5).
We do not find these arguments persuasive. The more complete
excerpt from Gilkerson cited by Appellant makes clear that Gilkerson
teaches the advantage of maintaining high pressure in the product container
is to ensure a high level of dissolved gas in the product through it use.
(FF 3). Moreover, Appellant's arguments are directed to the individual
teachings of Gilkerson rather than addressing the combination of art cited by
the Examiner. The test for obviousness is what the combined teachings of
9
Appeal2014-008145
Application 13/468,489
the references as a whole would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We find the combination of cited art establishes a strong prima facie
case of obviousness. Gilkerson's disclosure, in combination with the
teachings of Keller that a stable aerosol composition provides enhanced
sensory and cosmetic qualities (FF 1 ), would reasonably lead the ordinary
artisan to conclude that it would be advantageous to maintain a composition
under stable gas concentration during dispensation to retain Keller's
improved sensory and cosmetic qualities. The "stable aerosol ...
composition" taught by Keller provides "enhanced touch, compatibility,
alignment and volume reduction to the hair, with low or reduced greasy, oily
hair feel, while being formulated in an emulsion having a thick, cream-type
rheology with excellent spreading, perception of spreading, and feel."
(FF 1 ). The container taught by Gilkerson overcomes the defects of the
prior art by "holding and dispensing a product having a gas dissolved in it
without a decrease in the concentration of the dissolved gas in the product."
(FF 5---6). Gilkerson discloses specific embodiments that teach the features
taught in instant claims 8 and 9. (FF 7-9). Salemme discloses that the shape
of bags for pressured containers can "prevent[] material from being trapped
in the bottom of the bag," thereby reducing residue waste and increasing
product delivery, and provides embodiments teaching the features of instant
claim 10. (FF 10-11 ).
We find Appellant's data, submitted to prove superiority of the
claimed invention, to be unpersuasive because Appellant does not fully
account for differences between the tested compositions. The data compare
10
Appeal2014-008145
Application 13/468,489
qualities of an embodiment of the invention (cosmetic composition in a
container) against a comparative example (a cosmetic composition in an
aerosol can without an inner bag). (Spec. 26-28). Although the testing
performed was identical, the cosmetic compositions themselves were not.
The Tables below show the compositions differed in the amount of carbon
dioxide and purified water:
[:>;;in;•Jfo d tl:w im=;.;n~k>t!~ ___________ J; ____________________________________ _
(~o-=:;.1l'l L·:.fac ~~~)o-~r)(_,_,,~·l t~:on:
--;;n;;~-~~~;Tgtll_T __________________________________________ ,
i),J ! d~~pamh(,!ld
· ~;-~~ ~ g· · · · · · · · · · · · · · · · · ·r · ~~~:·{1te~: · ro· r~·t~~e:a · · ·
l!A : crn'inmniurn d1!nrick :
r-~·1:--1--------------------t·:-::·1·--::·~-:--~--::::;7:·:-----------.; i I,·~ ~: Sd t l._.i,_.rn.~x.·~l~_L(·S~ ~
:--iY.~:~-------------------ri~i~~;;~~-;1~~k~i:i,~·~_;--------------------:
r·-c;:-r----------------l~~~~y;;;~~j~-----------------------------;
[ ___ 1_,~-----------------------~~:~('.<11~:1 __ ~:!\'.~))):(?l ____________ _
: l.l <: : p ,, •. '·1' ""' . i .·, .... ' ~: .•t.•;Jt.h:.i: .~.u~~-~
.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-:· ..................... . [ 0,4 ! rnj_mrnl o~I ···················"'
r-;T~--------------------;-1;~;i';J:I;;~--------------------------·
:- .......................... -~ ........................................... ..:
i __ ~-~-~~------------------J-~~~:~~~:~-~-~-~~~~~-~~~--------------~
(Spec. 22-23).
---------------------------:----------------------------------------------.
~}; by \V t~~ght r .
.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-.-:· ............................... .
~13":~ ~~ \vaS:eJ pt~rkt!ed
--1:;:4-------------------r~~~~ir:;-;1;~~;;;;-i:.;;;;--,j.;1~~;;.;-(l;:--
~ .
. i'.i: ·1: ................... ·1. ;;~ i"1: -~:;;;·;[i~;~iii ~;;-; ........... :
-;:;:3-------------------r-11-1:;:~;;1-~:;;i-f~;;:-------------------=
~~i:~~~T~~~~~~~~~~~~~~~~~~~f ~g~~H~~~i~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
--r:;r------------------r::~i;:;;;;,:r~i:;i11~:;r-----------;
· h ~ s ·· · · · · · · · · · · · · · · · · · ·r · r~~1~~~~-~~~~:~~ ~~~· · · · · · · · · · · · · · · · · · · · · ·:
--------------------------..:i--------------------------------------------:
(}_4- : rnj.m:rnl od
· l)5···················l j)\'.~fwm~
--;:;--;""""""""""t.:-:::.;:-:-----;-;::-~--~-l~:--------------;
~.,;_,~) :· ~.·,~.R~:i,)n ~.•.'\.U::'tJl t-;.
Appellant's testing does not control for the difference the composition may
have on the test results and Appellant does not otherwise explain any
potential effect of the difference. Therefore, the observed differences
between the compositions could be a result of their differing components.
Consistent with Harris, the slight changes in sensory attributes were
not identified as unexpected by the Specification (see Spec. 27-28, Table 4),
only by post-hoc argument of Appellant's counsel; also, the values in Table
4 do not significantly differ as in Harris where a "32-43% increase in stress-
rupture life, however, does not represent a 'difference in kind' that is
11
Appeal2014-008145
Application 13/468,489
required to show unexpected results." In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
Accordingly, we do not find Appellant's argument that the results of Table 4
are unexpected persuasive in light of our findings of fact (FF 1-11)
regarding the teachings of the prior art or in light of the data itself.
Appellant further argues "the exhaustion data found in Appellants'
Tables 1-3 surprisingly show that the weight/amount of the composition
remaining in Appellants' container is decreased in comparison to the
comparative example (comparable composition in a regular aerosol can)."
(Br. 3). Appellant argues this surprising increased level of exhaustion
compared to a regular aerosol can is not taught or suggested by the cited
references. (Id.) Appellant argues that the
Examiner takes an unsupported leap by asserting that Salemme
teaches that its contoured bag-in-bag system also has less
residue than traditional cans ... [and therefore] fails to provide
any support for its assertion that, based on the teachings of
Salemme, "it would be expected that less composition would
remain in [Appellants'] container after exhaustion [when
compared to a regular aerosol can]." (Office Action, p.8.)
(Id. at 5).
We are not persuaded. Appellant's data compare exhaustion of an
embodiment of the invention (cosmetic composition in a container with an
inner bag) against a comparative example (a cosmetic composition in an
aerosol can without an inner bag). (Spec. 22-26). The superior exhaustion
results demonstrated in the data appear to reflect the reasonably expected
outcome of combining the teachings of the composition of Keller with the
teachings regarding containers of Gilkerson and Salemme, especially in light
12
Appeal2014-008145
Application 13/468,489
of Salemme' s teaching of a device that "reduces residue and allows more
product to be delivered to the consumer rather than wasted" (FF 10).
"Expected beneficial results are evidence of obviousness of a claimed
invention. Just as unexpected beneficial results are evidence of
unobviousness." In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
The results identified by Appellant as "unexpected" do not overcome
the strong case of obviousness based on the express teachings of Keller and
Gilkerson, and further in view of Salemme. See Newell, 864 F.2d at 768
(finding alleged unexpectedly superior results were ultimately insufficient to
overcome the conclusion of obviousness based on findings of fact). Cf
Pfizer, 480 F.3d at 1372 (secondary consideration of unexpected results
"does not overcome the strong showing of obviousness in this case").
Conclusion of Law
We conclude the evidence of record supports the Examiner's
conclusions that Keller and Gilkerson suggest the cosmetic composition in a
container of claims 1-9 and that Keller, Gilkerson, and Salemme suggest the
cosmetic composition in a container of claim 10.
SUMMARY
We affirm the rejection of obviousness 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
13