Ex Parte Maalouf et al

Patent Trial and Appeal Board

Feb 25, 2019

14799227 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/799,227 07/14/2015
19407 7590 02/25/2019
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Sharbel J. Maalouf
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.
9262-132035-US 2297
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
MAIL DATE DELIVERY MODE
02/25/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SHARBEL J. MAALOUF, JOSEPH CECCOLI,
ALANA CECO LA, MARIA MILLER, and JULIE FISCHER 1
Appeal 2018-002113
Application 14/799,227
Technology Center 1600
Before ELIZABETH A. LA VIER, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims to patient care wipes which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Medline Industries, Inc.
Appeal Br. 3.
2 We have considered and herein refer to the Specification of July 14, 2015
("Spec."); Final Office Action of May 23, 2017 ("Final Act."); Appeal Brief
of Sept. 18, 2017 ("Br."); Examiner's Answer of Oct. 20, 2017 ("Ans."); and
Reply Brief of Dec. 19, 2017 ("Reply Br.").
Appeal 2018-002113
Application 14/799,227
STATEMENT OF THE CASE
Numerous types of patient care wipes are known in the
art. These range generally from mass-marketed consumer
wipes for cleansing, such as baby care products, to products
intended for the medical industry, such as wipes infused with an
antibiotic or other antimicrobial agent. In the production of
such wipes, there are sometimes a number of competing
purposes. For various reasons, it is desirable to fashion the wipe
from a hydrophobic substrate such as a non-woven hydrophobic
material. This can present challenges when the lotion to be
applied to the skin of the patient is hydrophilic, because it can
be difficult to prepare a lotion that has sufficient affinity for the
hydrophobic substrate to permit sufficient stability for transport
and storage of the wipe.
Spec. ,r 2. The Specification describes
a cleansing wipe or moisturizing wipe [which] may be prepared
from a hydrophobic cloth substrate having an aqueous
composition disposed thereon. The aqueous composition may
be characterized as an aqueous cleansing composition, or an
aqueous moisturizing composition, and in some embodiments,
the composition may have both cleansing and moisturizing
properties and may include ingredients suitable for each of
those purposes.
Spec. ,r 6.
Claims 1-17, 45-53, 57, and 58 are on appeal. Claim 1 is
representative and reads as follows:
1. A cleansing wipe comprising:
a hydrophobic cloth; and
an aqueous cleansing composition disposed on said cloth,
said cleansing composition comprising a cleanser and a silicone
emulsion, said emulsion including an emulsifier that comprises
at least one emulsifying agent, said emulsifier being present in
an amount effective to impart a cleansing composition affinity
to the hydrophobic cloth sufficient to provide a stable cleansing
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Application 14/799,227
wipe, said cleansing wipe when applied to the skin releasing a
lotion that comprises silicone in an amount effective to inhibit
transepidermal water loss.
The claims stand rejected as follows:
Claims 1-9, 12-15, 17, 45-51, 57, and 58 have been rejected under 35
U.S.C. § 103(a) as unpatentable over Masse. 3
Claims 10, 11, 16, 52, and 53 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Masse in view of Bidamant. 4
DISCUSSION
Obviousness Based on Masse
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Masse.
We note that Appellants elected disodium cocoaamphodipropionate as
the emulsifier, CI2-22 alcohol as the surfactant, and shea butter as the
nourishing agent. Final Act. 2. Our analysis is limited to these elected
compositions. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App.
Int. 1987).
The Examiner finds that Masse teaches a single use cosmetic article
comprising a water-insoluble support impregnated with a lotion that
3 Masse, US 2007/0212401 Al, published Sept. 13, 2007 ("Masse").
4 Bidamant et al., US 2011/0086060 Al, published Apr. 14, 2011
("Bidamant").
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Application 14/799,227
comprises water. Final Act. 7. The Examiner finds that Masse teaches the
use of myristyl alcohol which can act as an emulsifier. Id. The Examiner
also finds that Masse teaches that silicones may be used in amounts ranging
from 0.01 to 20%. Id. at 7-8. The Examiner finds that the cosmetic articles
of Masse may also comprise a surfactant and nourishing agents such as shea
butter. Id. at 8.
The Examiner concludes:
Because Masse does not teach a single embodiment of
the invention necessarily encompassing the particularly recited
and elected components, this rejection is made using
obviousness rationale. It would have been prima facie obvious
to one of ordinary skill in the art at the time the invention was
made to combine the emulsifying agent, surfactant, nourishing
agent, and/or humectant as instantly recited based on Masse's
teaching. One would have been motivated to do so based on
Masse's teaching of the particular advantages (i.e., humectant
effects from known humectant agents) associated with each of
these components, and further, it would have been obvious to
substitute one known equivalent for another including those
obvious to try species that are instantly elected from those
groups taught by Masse, with a reasonable expectation of
success.
Id. at 9.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Final Act. 4--6. The following findings are included for emphasis and
reference purposes.
FF 1. Masse teaches a single use cosmetic article comprising a water-
insoluble support impregnated with a lotion.
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Application 14/799,227
FF2. Masse teaches that the cosmetic article can be in the form of a
wipe which can be used to clean hair and skin. Masse ,r,r 24, and 104--106.
FF3. Masse teaches that the cosmetic article may comprise disodium
cocoamphodipropionate. Masse ,r 62.
FF4. Masse teaches using a surfactant in amounts ranging from
0.01 % to 20% by weight. Masse ,r 65.
FF5. Masse teaches that the cosmetic article may contain myristyl
alcohol. Masse ,r 77.
FF6. Masse teaches that the cosmetic article may comprise silicones
such as polydimethylsiloxanes and aminated polydimehtylsiloxanes.
Masse ,r 78.
FF7. Masse teaches that the silicones can be present in amounts
ranging from 0.1 % to 10% by weight. Masse ,r 78.
FF8. The Specification teaches using silicones in amounts ranging
from 1---6%. Spec. ,r 14.
FF9. The Specification teaches the use of emulsifiers in amounts
ranging from 1-2%. Spec. 17.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prim a f acie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Application 14/799,227
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Masse. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner's determinations on
obviousness are incorrect. Only those arguments made by Appellants in the
Briefs have been considered in this Decision. Arguments not presented in
the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have
identified claim 1 as representative; therefore, all claims fall with claim 1. 5
We address Appellants' arguments below.
Appellants contend that Masse and the present invention are not
within the same field of endeavor and that one skilled in the art would not
look to Masse for guidance as to how to create a wipe which inhibits
transdermal water loss. Appeal Br. 5---6. Appellants' argument is
unpersuasive.
As the Examiner noted in the Examiner's Answer, the claims are
directed to a product and not a method for using the product. Ans. 3. Both
5 Appellants appear to present an argument with respect to the patentability
of claims 4 and 49. Appeal Br. 7. However, this argument has not been
presented separately as required by our rules. See 37 C.F .R. § 41.37 ( c )(iv).
Instead, Appellants recite the additional limitations of these claims and state,
without further analysis, that Masse does not teach or suggest these
additional limitations. See Br. 7. This cursory argument fails to convince us
of any reversible error in the Examiner's rejection of claims 4 (see Final Act.
7-8 (claim 4)) and 49 (see Final Act. 8-9 (claim 49)). See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably interpreted
Rule 41.3 7 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.").
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the claimed product and Masse are directed to cleansing wipes which
include lotions. Compare Masse Abstract with claim 1 above. As the
Examiner points out, the products in Masse employ the same types of
ingredients as the claimed invention. An. 3. Both the wipes of Masse and
the wipes of the present invention can be applied to the skin. FF2; Spec. ,r 7.
Based on the above analysis, we conclude that Masse and the present
invention are within the same field of endeavor.
Appellants argue that Masse fails to teach or suggest the present
invention. Appeal Br. 6. Appellants contend that Masse does not teach or
suggest the combination of silicone and an emulsifier nor does Masse
disclose the effective ranges recited in the claims. Id. Again, we are
unpersuaded.
Masse teaches a wipe which can comprise silicone and the emulsifier
elected by Appellants. FF3 and 6. The ranges recited in Masse for the
amounts of emulsifier and silicone that can be used overlap with the ranges
taught in the present Specification and recited in the dependent claims. FF4,
7, 8, 9, and Appeal Br. 9 (Claims App'x). "Aprimafacie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
Appellants argue that the Examiner has engaged in the impermissible
use of hindsight in making the rejection. Appeal Br. 7. Appellants contend
"[ w ]ithout using the presently application as a guide, nobody would have
attempted to modify Masse to solve the problem of trans-epidermal water
loss in skin-compromised patients. Not even in retrospect is this rejection
plausible." Id. We remain unpersuaded.
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Application 14/799,227
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In the present case,
the rejection is based entirely on information found within the teachings of
Massey. FFl-7. Appellants have not convincingly demonstrated that the
rejection is based on "knowledge gleaned only from [Appellants']
disclosure." Id. (emphasis added).
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Masse.
Claims 2-9, 12-15, 17, 45-51, 57, and 58 have not been argued
separately and therefore fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Masse Combined with Bidamant
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 10, 11, 16, 52, and 53 would have been obvious over Masse
combined with Bidamant.
Claim 10 is representative of this set of claims and reads:
10. A cleansing wipe according to claim 9, said skin
nourisher comprising an algae extract.
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Application 14/799,227
The Examiner finds that Masse does not teach or suggest the use of an
algae extract as recited in the claims. Final Act. 10. The Examiner finds
that Bidamant teaches the use of algae extract in a cosmetic wipe. Id. The
Examiner concludes:
Both Masse and Bidamant are directed to topically
applicable skin formulations. It would have been prima facie
obvious to one of ordinary skill in the art at the time the
invention was made to include both shea butter and algae
extract as taught by Bidamant in place of the shea butter agent
generally taught by Masse, with a reasonable expectation of
success. One would have been motivated to do so based on
Bidament' s [sic] specific teaching of these agents as desirable
skin benefitting agents as evidenced by Bidament's [sic]
specify teaching of preference and preferred amounts of these
agents (see [0065] and [0066]).
Id. at 10-11.
Findings of Fact
FFlO. Masse teaches that the cleansing wipe may contain a plant oil
such as shea butter. Masse ,r,r 70-71.
FF 11. Bidamant teaches the preparation of a skin care preparation
such as a facial or body cleanser. Bidamant ,r,r 56-57.
FF12. The skin care preparation of Bidamant can be in the form of a
wipe. Bidamant ,r 59.
FF 13. Bidamant teaches that the skin care composition may contain
cosmetically active ingredients. Bidamant ,r 62.
FF14. Bidamant teaches that preferred cosmetically active ingredients
include shea butter and algae extracts. Bidamant ,r,r 63, 65, and 66.
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Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Masse. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner's determinations on
obviousness are incorrect. Only those arguments made by Appellants in the
Briefs have been considered in this Decision. Arguments not presented in
the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have
identified claim 10 as representative; therefore, all claims fall with claim 10.
We address Appellants' arguments below.
Appellants argue that one skilled in the art would not have looked to
Bidamant to develop the claimed invention in that Bidamant is not related to
the problem addressed by the present claims-reducing transdermal water
loss. Appeal Br. 7. Appellants contend that Bidamant teaches the treatment
of stretch marks, something unrelated to water loss. Id.
We have considered Appellants' arguments and find them
unpersuasive. As the Examiner points out Bidamant, Masse and the present
invention all relate to topical application of skin care compositions. Ans. 4.
We find that the references and the claimed invention are all with the same
area of endeavor.
With respect to the claimed composition, Masse teaches that the
composition may contain such agents as shea butter. FFlO. Bidamant
teaches that both shea butter and algae extract are cosmetically active
ingredients. FF 14. We agree with the Examiner that it would have been
obvious to one skilled in the art to substitute one cosmetically active
ingredient for another. Final Act. 1 O; Ans. 4.
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Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 10 would have been
obvious over Masse combined with Bidamant.
Claims 11, 16, 52, and 53 have not been argued separately and
therefore fall with claim 10. See 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejections 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
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