Ex Parte Mateu et al

Patent Trial and Appeal Board

Aug 10, 2018

13144900 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/144,900 12/01/2011
143559 7590 08/14/2018
Schwegman Lundberg & Woessner/ Coty
P.O. Box 2938
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Juan R. Mateu
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.
4598.0lOUSl 1030
EXAMINER
GOTFREDSON,GAREN
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
uspto@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN R. MATEU, SALVATORE J. BARONE,
and RALPH MACCHIO 1
Appeal2017-004991
Application 13/144,900
Technology Center 1600
Before RICHARD J. SMITH, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
COTT A, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 relating to an antiperspirant
cosmetic composition for topical application to the skin. The Examiner
rejected the claims on appeal as obvious under 35 U.S.C. § 103(a).
We reverse.
STATEMENT OF THE CASE
Claims 16-22 and 24--34 are on appeal. Claim 16 is illustrative and
reads as follows:
1 Appellants identify the real party in interest as Coty Germany GmbH.
Br. 2.
Appeal2017-004991
Application 13/144,900
16. An antiperspirant cosmetic composition for topical
application to the skin comprising:
an effective amount of at least one antiperspirant active
material;
at least one gelling agent;
at least one wax; and
at least one solvent for the at least one antiperspirant
active material,
wherein the at least one gelling agent forms a gel matrix
incorporating the ingredients of the composition,
wherein the at least one gelling agent is formed inside the
composition by an in situ dehydrogenative coupling reaction of
a mixture of a siloxane polymer with at least two hydroxyl-
functionalized terminal groups or hydroxyl-functionalized side
chains and a polyol with at least two hydroxyl groups, which is
a copolymerized hydroxyl functionalized vegetable or synthetic
oil, with a hydrosiloxane with at least two Si-H units and a
catalyst comprising at least one selected from platinum and
palladium and
wherein the hydrosiloxane is added last to initiate the
dehydrogenative coupling reaction and forming the gelling
agent immediately in-situ inside the cosmetic composition.
App. Br. 13.
The claims stand rejected as follows:
Claims 16, 20-22, and 24--33 were rejected as unpatentable under 35
U.S.C. § 103(a) over the combination of Nye, 2 Morita, 3 Shah, 4 and
Marschner. 5
2 Nye et al., EP 1 074 577, published Feb. 7, 2001 ("Nye").
3 Morita et al., US Patent No. 6,238,656 Bl, issued May 29, 2001
("Morita").
4 Shah et al., US Patent Publication No. 2008/0152678 Al, published June
26, 2008 ("Shah").
5 Marschner et al., US Patent No. 4,526,780, issued July 2, 1985
("Marschner").
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Application 13/144,900
Claims 17 and 18 were rejected as unpatentable under 35 U.S.C.
§ I03(a) over the combination of Nye, Morita, Shah, Marschner, and
Cassin. 6
Claim 19 was rejected as unpatentable under 35 U.S.C. § I03(a) over
the combination ofNye, Morita, Shah, Marschner, and Guskey. 7
ANALYSIS
The same issue is dispositive with respect to all three of the
Examiner's obviousness rejections. Accordingly, we analyze all three
rejections together.
The Examiner found that Nye discloses most of the elements of the
recited antiperspirant composition. Of particular relevance here, the
Examiner found that Nye discloses:
antiperspirant compositions comprising a silicone produced by
the hydrosilyation of an organohydrogen silicone having at
least two Si-H units (a "hydrosiloxane") with a 1,2 diol or a 1,3
diol in the presence of a platinum catalyst, resulting in a
functionalized silicon for use as a gelling agent in antiperspirant
solid sticks that also serves as a solvent for the antiperspirant
salt.
Final Act. 3. The Examiner acknowledged that Nye does not expressly
disclose "that the diol is a copolymerized hydroxy functionalized vegetable
or synthetic oil as recited by claims 16 and 21." Final Act. 3. However, the
Examiner found that Shah discloses "gel-based cosmetic compositions
comprising gelling agents, wherein the gelling agent may be triisostearyl
6 Cassin, US Patent Publication No. 2005/0118218 Al, published June 2,
2005 ("Cassin").
7 Guskey, US Patent Publication No. 2002/0106340 Al, published Aug. 8,
2002 ("Guskey").
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Appeal2017-004991
Application 13/144,900
polyglyceryl-3 dimer dilinoleate (a hydroxyl functionalized oil recited by
claim 21 )." Id. at 5.
Based on the combined disclosures of Nye and Shah, the Examiner
concluded:
It would have been prima facie obvious to one of ordinary skill
in the art at the time of the invention to modify the
antiperspirant cosmetic composition of Nye by 1) using
triisostearyl polyglyceryl-3 dimer dilinoleate as the diol for the
reaction used to gel the composition instead of, or in addition
to, the 1,2 and 1,3 diols taught by Nye, since Shah teaches said
compound as an alternative compound that is useful as a gelling
agent in cosmetic compositions.
Id. at 5. The Examiner explained that "[t]he composition resulting from the
foregoing modifications comprises a gelling agent that reads on the gelling
agent recited by claim 16." Id. at 6.
Appellants argue, inter alia, that the Examiner's proposed
modification of Nye's composition "fails to include all of the components
of the claimed invention." App. Br. 8. In particular, Appellant argues that
the Examiner fails to discuss how the modified composition would "provide
at least one solvent for the at least one antiperspirant active material," as
required by the claims. Id. As Appellants explain, "modifying Nye's silicon
solvent as alleged by the Examiner eliminates Nye's solvent." Reply Br. 2.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
"[T]he examiner bears the initial burden ... of presenting a prima facie case
ofunpatentability." Appellants have persuaded us that the Examiner has not
carried the burden of establishing that the claimed invention would have
been obvious over the cited art.
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Appeal2017-004991
Application 13/144,900
Nye discloses that "by means of a new silicone composition,
antiperspirant salts may be dissolved or dispersed in the silicone of the
present invention and cosmetic, deodorant, antiperspirant, or personal care
compositions may be formulated therewith." Nye ,r 6. Nye further discloses
a process for making a solution of antiperspirant salt in a silicon fluid
comprising: "(a) dissolving the salt in water or an organic solvent or
mixture thereof to form a first solution; (b) adding a silicone fluid to the first
solution; and ( c) removing the water or organic solvent or mixture thereof
under heat, vacuum or a combination thereof, to provide a clear solution of
the salt in the silicone fluid." Id. According to Nye, "This new process
enables the formation of the personal care composition containing
antiperspirant salts." Id. ,r 7. The functionalized silicones used in Nye's
process "were made by the hydrosilylation of an allyl modified 1,2-diol
(mono-allyl glycerine) and 1,3-diol (trimethylolpropane mono allyl ether)."
Id. ,I 24.
To arrive at the claimed composition, the Examiner proposes selecting
triisostearyl polyglyceryl-3 dimer dilinoleate, as disclosed by Shah, as the
diol for Nye's hydrosilylation process rather than 1,2-diol (mono-allyl
glycerine) or 1,3-diol (trimethylolpropane mono allyl ether), as disclosed by
Nye. Ans. 4. The Examiner notes that the composition resulting from this
reaction would "still have a silicone to serve as a solvent for the
antiperspirant active" as is required by claim 16. Id. at 5. However, the
Examiner does not identify any teaching in Nye that suggests that diols other
than those disclosed can be used, much less that the resulting functionalized
silicone would retain the functionality of Nye's functionalized silicone as a
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Appeal2017-004991
Application 13/144,900
solvent for the antiperspirant salt. 8 The Examiner generalizes Nye's
teachings as suggesting that "a gelled antiperspirant cosmetic composition
can be formed using a silicone produced by reacting a hydrosiloxane with a
diol." Ans. 7. But Nye's teachings are not so broad. See, Nye ,r 24
(identifying two specific diols used to make the "functionalized silicones").
Accordingly, we find that the Examiner has not identified persuasive
evidence in Nye that the skilled artisan would reasonably have expected to
be able to substitute Shah's triisostearyl polyglyceryl-3 dimer dilinoleate for
Nye's diols and obtained a functionalized silicone that would serve as a
solvent for the antiperspirant salt. 9
Shah does not remedy this deficiency. The Examiner suggests that
because the diols used in Nye and triisostearyl polyglyceryl-3 dimer
dilinoleate are all gelling agents, the skilled artisan would have expected to
be able to substitute triisostearyl polyglyceryl-3 dimer dilinoleate for Nye's
diols. Ans. 7. This is not persuasive because Shah discloses only that
triisostearyl polyglyceryl-3 dimer dilinoleate is an oil capable of forming a
gel with ETPEA polymer. Shah ,r,r 70 and 75. Shah further discloses that
ETPEA is a "necessary component of [Shah's] inventive compositions." Id.
,r 31. The Examiner does not identify any evidence that Nye's process
8 It is important that Nye's silicone retain its solvent functionality both
because the art suggests the need for a solvent for the antiperspirant salt (see
Nye ,r,r 1---6), and because the present claims require "at least one solvent for
the at least one antiperspirant active material." The Examiner identifies only
the functionalized silicone produced by Nye's hydrosilylation reaction as a
solvent for the antiperspirant active. Ans. 5
9 Nye suggests that antiperspirant salts may be difficult to dissolve. Nye ,r 5
("Antiperspirant salts which have been obtained by spray drying are
notoriously difficult to redissolve as clear solutions.").
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Application 13/144,900
would work with ETPEA. Moreover, the Examiner has not identified
evidence in Shah explaining why the skilled artisan would reasonably have
expected to be able to substitute Shah's triisostearyl polyglyceryl-3 dimer
dilinoleate for Nye's diols and obtained a functionalized silicone that would
serve as a solvent for the antiperspirant salt.
All three of the Examiner's obviousness rejections suffer from the
same deficiency. Accordingly, we reverse the Examiner's rejection of
claims 16-22 and 24--33 as obvious over the cited art.
SUMMARY
In summary, we reverse the Examiner's rejection of claims 16, 20-22,
and 24--33 as unpatentable under 35 U.S.C. § 103(a) over the combination of
Nye, Morita, Shah, and Marschner, the Examiner's rejection of claims 17
and 18 as obvious over the combination of Nye, Morita, Shah, Marschner,
and Cassin, and the Examiner's rejection of Claim 19 was rejected as
unpatentable under 35 U.S.C. § 103(a) over the combination of Nye, Morita,
Shah, Marschner, and Guskey.
REVERSED
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