Ex Parte Merat

Patent Trial and Appeal Board

Aug 28, 2018

14239848 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/239,848 02/20/2014
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
08/30/2018
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Emmanuelle Merat
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.
0503-1238 2102
EXAMINER
MRUK,BRIANP
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMANUELLE MERA T
Appeal2017-010990
Application 14/239,848
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-17. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant identifies the real party in interest as "SOCIETE
D 'EXPLOITATION DE PRODUITS POUR LES INDUSTRIES
CHIMIQUES (SEPPIC)" (Appeal Brief filed February 28, 2017 (hereinafter
"Br.") 2).
2 Br. 5-20; Final Office Action entered September 1, 2016 (hereinafter
"Final Act.") 2-3; Examiner's Answer entered June 1, 2017 (hereinafter
"Ans.") 2-7.
Appeal2017-010990
Application 14/239,848
I. BACKGROUND
The subject matter on appeal relates to: a method for improving the
foaming properties of a cleaning formulation by incorporating into the
cleaning composition a specified crosslinked anionic polyelectrolyte; a
composition; and to a method of using the composition in cosmetic
applications (Specification filed February 20, 2014 (hereinafter "Spec.") 1,
11. 6-10; Abstract). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief (Br. 21-22), with key limitations emphasized,
as follows:
1. A method for improving the foaming properties of
a cleaning formulation for topical use, with a pH greater than or
equal to 4.0 and less than or equal to 6.5 and at least one
foaming surfactant, said method comprising:
incorporating into said cleaning formulation for topical
use an effective quantity of a crosslinked anionic polyelectrolyte
(P),
wherein said crosslinked anionic polyelectrolyte (P) is
derived from polymerisation in the presence of at least one
crosslinking agent, at least one monomer having a strong acid
function, said monomer being 2-methyl 2-[(1-oxy 2-
propenyl)amino] 1- propanesulfonic acid, partially or completely
salified, with at least one neutral monomer chosen from the N,
N-dialkyl acrylamides, in which each of the alkyl groups
comprises between one and four carbon atoms, and at least one
monomer of formula (I):
CH . ..... :j-
.0
0 (I)
in which R represents a linear or branched alkyl radical
comprising from eight to twenty carbon atoms and n represents
a number greater than or equal to one and less than or equal to
twenty, and
2
Appeal2017-010990
Application 14/239,848
wherein the effective quantity of a crosslinked anionic
polyelectrolyte (P), is such that:
said cleaning formulation has a viscosity greater than or
equal to 2,000 mPa.s and less than or equal to 30,000 mPa.s,
measured at a temperature of 20°C by means of a viscometer of
the Brookfield L VT type at a speed of 6 revolutions/minute, and
said cleaning formulation forms a foam having air
bubbles, and after a period of 10 minutes from a moment of
generation of said foam, at least 70% of said air bubbles have
diameters of less than or equal to 150 µm and no more than 30%
of said air bubbles have diameters greater than or equal to 150
µm and less than or equal to 450 µm.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA 35
U.S.C. § I03(a): 3
A. Claims 1-17 as unpatentable over Braun et al. (WO
2011/030044 Al, published March 17, 2011; 4 hereinafter
"Braun"); and
B. Claims 1-17 as unpatentable over Braun et al. (FR 2 910 899
Al, published July 4, 2008; hereinafter "Braun '899")
(Ans. 2-7.)
3 The Examiner states that a rejection under 35 U.S.C. § I02(a) of claims 1-
17 as anticipated by Braun and a rejection under 35 U.S.C. § I02(b) of
claims 1-17 as anticipated by Braun '899, as set forth in the Final Office
Action (Final Act. 2), are withdrawn (Ans. 5---6). Therefore, these
anticipation rejections are not before us.
4 Because Braun is a French-language document, the Examiner relies on US
2012/0172457 Al, published July 5, 2012, as an English language
translation (Ans. 2). Therefore, our citations to Braun are to the US
document.
3
Appeal2017-010990
Application 14/239,848
III. DISCUSSION
Rejection A. The Appellant argues the claims according to two
groups-namely, claims 1-11 as a first group and claims 12-17 as a second
group (Br. 5-14). We select claims 1 and 12 as representative of the two
groups, respectively, and confine our discussion to these two selected claims
pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided under this rule, all
other claims stand or fall with either claim 1 or claim 12.
The Examiner finds that Braun describes a method for forming a
composition for treating human skin and scalp, such as a shampoo, by
combining various components that may be selected to be the same
ingredients as specified in claim 1 to result in a composition including a
foaming surfactant and a pH within the range recited in the claim (Ans. 2-3)
(relying on, e.g., Braun's Examples 46 and 51). The Examiner concludes
that "[i]t would have been obvious to a person of ordinary skill in the art ...
to have formulated a composition, as taught by Braun et al, which contained
a crosslinked anionic polyelectrolyte and surfactants, wherein the pH of the
composition is greater than 3, because such compositions fall within the
scope of those taught by Braun" (id. at 3--4).
The Appellant contends that the rejection is flawed because although
Braun's Example 46 describes a composition with a foaming surfactant
(PROTEOL TM APL), it concerns a milk for makeup removal and the pH is
7.0, which is outside the range recited in claim 1-i.e., "a pH greater than or
equal to 4.0 and less than or equal to 6.5" (Br. 6). The Appellant also argues
that Braun's Polyelectrolyte 3, which is used in Example 46, does not
include polymerized units ofN, N-dialkyl acrylamide as required for
polyelectrolyte (P) specified in claim 1 (id. at 9). The Appellant argues (id.):
4
Appeal2017-010990
Application 14/239,848
Neither the general teachings nor the Examples of
BRAUN '044 direct one of ordinary skill in the art to begin with
a cleaning formulation with a foaming surfactant and specific pH
range and incorporating into said cleaning formulation an
effective quantity of a crosslinked anionic polyelectrolyte to
obtain a particular viscosity and particular foam property.
According to the Appellant, the Specification states that "it is preferable that
cleaning formulations for topical use provide a foam during use that is stable
and includes sufficiently fine air bubbles, which ... helps to avoid eye
irritation[,]" but a pH of 7 .0 as disclosed in Braun does not make it possible
to obtain a sufficiently fine foam (id. at 10-11). As for claim 12, the
Appellant argues that Braun "[has] no mention of the size of the air bubbles
formed from the composition" (id. at 13).
We have fully considered the Appellant's arguments but find them
insufficient to identify any reversible error in the Examiner's rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
It is undisputed-and indeed conceded by the Appellant (Br. 10; Spec.
29, 1. 13}-that PROTEOLâ„¢ APL, which Braun discloses is present in an
amount of 2% by weight in Example 46's "milk" makeup removal
composition (Braun ,r,r 487--495), is in fact a foaming surfactant. Although
Braun teaches that the composition described in Example 46 has a pH of 7
(id. ,r 495), the Examiner correctly finds that Braun teaches lower pH values
are within the prior art's scope and content (Ans. 7) (Braun ,r 50 ("The pH of
the topical composition is preferably greater than or equal to 3.")).
Therefore, a person having ordinary skill in the art would have expected
similar successful results in reformulating the exemplified composition to
have a slightly lower pH, such as 6.5. KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,421 (2007) (when some reason to pursue a known option that is
5
Appeal2017-010990
Application 14/239,848
within the technical grasp of a person having ordinary skill in the art exists
and the option "leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.").
Furthermore, although "Polyelectrolyte 3" (Braun ,r 60 (Example 3))
used in Braun's Example 46 does not include monomeric units ofN, N-
dialkyl acrylamide as required by claim 1, Braun teaches the use ofN, N-
dialkyl acrylamide as a neutral monomer and as part of other suitable
polyelectrolytes such as a "[t]erpolymer of 2-methyl 2-[(1-oxo 2-propenyl)
amino] 1-propanesulfonic acid completely salified in the form of ammonium
salt, N,N-dimethyl acrylamide and eicosaethoxylated stearyl methacrylate,
crosslinked with trimethylol propanetriacrylate" (id. ,r,r 17, 30, 33).
Therefore, a person having ordinary skill in the art would have found it
obvious to substitute "Polyelectrolyte 3" with other disclosed, suitable
polyelectrolytes, including terpolymers that contain N, N-dialkyl acrylamide
as a comonomer, as interchangeable polyelectrolytes. Merck & Co. v.
Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
[reference] discloses a multitude of effective combinations does not render
any particular formulation less obvious.").
The Appellant's arguments concerning the specified foaming
characteristics are unpersuasive. Consistent with the Examiner's position
(Ans. 6-7; Final Act. 2-3), a person having ordinary skill in the art would
have understood that a foaming surfactant such as PROTEOLTM APL
disclosed in Braun's Example 46 would affect the foaming characteristics by
altering the surface tension. Hence, the determination of workable or
optimum amounts of surfactants to obtain desired foaming characteristics
would have been within the level of ordinary skill. In re Applied Materials,
6
Appeal2017-010990
Application 14/239,848
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) ("'[W]here the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.'" ( quoting In re
Aller, 220 F.2d 454,456 (CCPA 1955))).
Additionally, as we found above, Braun teaches that Example 46's
composition has a pH of 7-a pH value not far removed from the upper limit
(pH of 6.5) of the Appellant's specified range-and a polyelectrolyte that is
structurally similar to that specified in claim 1 or 12. Therefore, in view of
their structural similarities, it would reasonably appear that the prior art
composition would have similar foaming characteristics. The Appellant
offers no objective evidence to the contrary, let alone evidence establishing
unexpected results. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re
Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane).
For these reasons, we uphold Rejection A.
Rejection B. Although Braun '899 is written in the French language,
neither the Examiner nor the Appellant points to an English language
translation. Nevertheless, Braun '899's scope and content and the issues
concerning Rejection B appear to be cumulative to those presented in
Rejection B (Ans. 4--5; Br. 14--20).
Therefore, we sustain Rejection B for reasons analogous to those
discussed in Rejection A.
7
Appeal2017-010990
Application 14/239,848
IV. SUMMARY
Rejections A and Bare sustained. Therefore, the Examiner's final
decision to reject claims 1-1 7 is affirmed.
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
8