Ex Parte Misner et al

Patent Trial and Appeal Board

Dec 12, 2016

12671715 (P.T.A.B. Dec. 12, 2016)

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.
12/671,715 02/02/2010 H. Steven Misner 8723-00-PC 3574
23909 7590 12/14/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
TCHERKASSKAYA, OLGA V
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte H. STEVEN MISNER, AIXING FAN, LATONYA
KILPATRICK-LIVERMAN, ELIZABETH LINN, DARRICK CARLONE,
MELISSA MUIR, and JOHN P. HOGAN1
Appeal 2015-004709
Application 12/671,715
Technology Center 1600
Before RICHARD J. SMITH, TAWEN CHANG, and JOHN E.
SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
antiperspirant stick composition. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Colgate-Palmolive
Company. (Br. 2.)
Appeal 2015-004709
Application 12/671,715
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 3, 5—8, 11—19, 23—25, 28, and 29 are on appeal.2 (Claims
Appendix, Br. 10-12.) Claim 1 is illustrative and reads as follows:
1. A composition comprising a mixing product of:
a) an antiperspirant;
b) greater than 15 weight% of a palm kernel oil;
c) less than 40 weight% of a volatile silicone oil; and
d) a gellant
wherein the composition is an antiperspirant stick.
Examiner’s Rejections
1. Claims 1, 3, 5—7, 11—19, 23—25, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Potechin,3 Dayan,4 and Keil.5 (Final
Act. 2—5; Ans. 2.)
2. Claims 1, 3, 5—7, 11—19, 23—25, 28, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Potechin, Kruchoski,6 and Keil. (Final
Act 5—6; Ans. 2.)
3. Claims 1,3,7, 8, and 11—13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Cap.7 (Final Act. 6—8; Ans. 2.)
2 Claims 2, 4, 9, 10, 20-22, 26, 27, and 30 are cancelled. (See Subsequent
Examiner’s Answer dated Feb. 24, 2015; Br. 3, 10—12.) The rejections in
the Final Action dated May 8, 2014, refer to claims 2, 26, and 27 (and
rejection no. 3 also refers to claims 9 and 10), but the rejections are
corrected in the Answer and correctly identified herein. (See Ans. 2.)
3 Potechin et al., US 6,682,749 Bl, issued Jan. 27, 2004 (“Potechin”).
4 Dayan, US 2008/0193393 Al, published Aug. 14, 2008 (“Dayan”).
5 Keil, US 4,265,878, issued May 5, 1981 (“Keil”).
6 Kruchoski et al., US 6,689,932 B2, issued Feb. 10, 2004 (“Kruchoski”).
7 Cap, US 2005/0281851 Al, published Dec. 22, 2005 (“Cap”).
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FINDINGS OF FACT
We adopt as our own the Examiner’s findings and analysis concerning
the scope and content of the prior art. The following findings are included
for emphasis and reference convenience.
FF 1. The Examiner finds that Potechin teaches a composition
comprising a) an antiperspirant and/or deodorant; b) from 0.5 to 50 weight
% of emollient comprising a plant oil, such as palm oil; c) less than 40
weight % of a volatile silicone oil; and d) a gellant, and that the composition
can be made as a stick. (Final Act. 3, citing Potechin col. 1,11. 10—15; col. 3,
11. 20-25, 27-35, 40-49, col. 3,1. 52-k:o1. 4,1. 32; col. 10,11. 7-31; col. 11,
11. 46-50; and col. 12,11. 35^15.)
FF 2. The Examiner finds that Dayan teaches delivery systems for
topically applied compositions that can be useful in personal care
compositions as an antiperspirant, and that the compositions may comprise
oils, such as palm kernel oil, in an amount ranging from 20 to 90 weight
percent. (Final Act. 4, citing Dayan Abstract, || 1, 10, 11, 15, 21, 36, 37,
44, 48, and 79.)
FF 3. The Examiner finds that Kruchoski teaches skin care
compositions that are in direct contact with the skin, can be in solid form,
and may include up to 59% of natural oils, such as palm kernel oil. (Final
Act. 5, citing Kruchoski Abstract, col. 3,11. 53, 62—67; col. 4,11. 52—54; col.
18,11. 17—20; col. 20,11. 1—17; and claim 6.)
FF 4. The Examiner finds that Cap teaches a composition comprising
a) an antiperspirant; b) greater than 10 weight % of a plant oil; c) that may
be free of a volatile silicone oil or silicone; that the plant oil may be palm
kernel oil; and that the composition may be a stick product. (Final Act. 7,
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citing Cap Abstract, || 5, 7, 13—15, 34, 45, 46, and Examples 1—12.) Cap
also teaches that the composition can be in a gel form. (Cap 1 34.)
ISSUE
Whether a preponderance of evidence of record supports the
Examiner’s conclusion of obviousness under 35 U.S.C. § 103(a).
ANALYSIS
We adopt the Examiner’s findings and analysis, and agree with the
Examiner’s conclusions that claims 1, 3, 5—8, 11—19, 23—25, 28, and 29
would have been obvious to a person of ordinary skill in the art at the time
of the invention. (Final Act. 2—15; Adv. Act. dated July 22, 2014; Ans. 2—
12.)8 The rejections are affirmed, and Appellants’ arguments are addressed
below. Our consideration of the rejections is limited to claim 1, for the
reasons also addressed below.
Rejection No. 1
Appellants argue that “[t]he disclosure of palm oil in Potechin [] is not
a disclosure or suggestion of palm kernel oil,” that palm kernel oil “is one
member of a laundry list of oils” in Dayan, and that there is “no disclosure
or suggestion to select palm kernel oil from this list.” (Br. 3.) Furthermore,
Appellants argue that none of the reference “direct the selection” of the
elements of claim 1, and “[t]oo much picking and choosing is needed.” (Id.
at 4.)
We are not persuaded. It is well settled that “picking and choosing
may be entirely proper in the making of a 103, obviousness rejection.” In re
8 The Answer does not include page numbers, but is numbered herein
beginning with the cover page as page 1 and the last page as page 12.
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Arkley, 455 F.2d 586, 587 (CCPA 1972). Moreover, the fact that palm
kernel oil is in a list of oils does not make its selection any less obvious. See
Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious”). In this case, both
the palm oil and palm kernel oil are used in antiperspirant compositions.
(FF 1, 2.) Moreover, substituting palm kernel oil in place of palm oil
constitutes the mere substitution of one plant oil for another, known in the
field, yielding predicable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398,416 (2007).
Knowledge in the Art
Appellants argue that the “selections go against what was known in
the art.” (Br. 4.) In support of this argument, Appellants point to the
Declarations of Kathy Potechin9 and Elizabeth Linn10 as indicating that the
amount of emollient in Potechin “is to the total amount of all emollients,”
“there is no disclosure for a selection of an amount of any one of the listed
emollients,” and that “there was no consideration of adding only plant oil” as
the emollient.” (Br. 4—5.) However, Potechin states that “[t]he emollient or
emollient mixture” (i.e., a single emollient or plural emollients) can be
included “in amounts of 0.5—50%,” and that plant oils are an example of a
chemical class “from which suitable emollients can be found.” (Potechin
col. 10,11. 5-10; col. 11,11. 46-48.)
9 Declaration under 37 CFR 1.132 of Kathy Potechin dated March 22, 2013.
10 Declaration under 37 CFR 1.132 of Elizabeth Linn dated March 25, 2013.
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In further support of their argument, Appellants point to Potechin for
the proposition that “the selection of materials in an antiperspirant
composition have to be selected so that the antiperspirant active can be
released from the composition to obtain efficacy.” (Br. 4.) Appellants
further point to Walling11 for the proposition that oils, such as those listed in
Potechin, “should not be used in higher amounts because high levels of non­
volatile organic fluids inhibit antiperspirant efficacy.” (Id.)
We are not persuaded. As an initial matter, claim 1 does not recite
any particular antiperspirant efficacy. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (rejecting arguments “not based on limitations appearing in
the claims”). Furthermore, Walling discloses an advantage of high levels of
non-volatile organic fluids in antiperspirant films as well as a disadvantage.
(Walling col. 1,11. 36—54.) Moreover, Appellants have not persuasively
established that a person of ordinary skill in the art would not have made the
selections reflected in claim 1 based on the prior art, and taking into
consideration what was known in the art. See KSR, 550 U.S. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art).
Teaching Away
Appellants also make the statement that “[t]he prior art teaches away
from making such a selection as is now claimed.” (Br. 5.) We are not
persuaded. Appellants do not explain or otherwise establish how the prior
11 Walling et al., US 7,347,989 B2, issued Mar. 25, 2008 (“Walling”).
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art criticizes, discredits, or otherwise discourages the claimed invention. See
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Dependent Claims
Appellants purport to separately argue dependent claims 3, 7, 17—19,
and 23—25. (Br. 5.) However, those claims are not separately argued
because they do not comply with the requirements for separate argument of
claims. See 37 C.F.R. § 41.37(c)(l)(iv); see also In reLovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 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.”).
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 3, 5—7,
11—19, 23—25, 28, and 29 were not separately argued and fall with claim 1.
Rejection No. 2
Appellants argue that Kruchoski is non-analogous art. (Br. 5—6.) In
particular, Appellants ague that “[t]he present invention is directed to an
antiperspirant stick composition. Kruchoski [] is directed to barrier
compositions for absorbent articles.” {Id. at 6.) Appellants argue further
that “[t]he antiperspirant needs to be released from the composition to enter
into pores to occlude sweat” whereas “[b]arrier compositions are not
designed for releasing antiperspirant actives.” {Id.)
We are not persuaded. Appellants correctly note the two separate
tests for analogous art: “whether the art is from the same field of endeavor,
regardless of the problem addressed,” and if not, “whether the reference still
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is reasonably pertinent to the particular problem with which the inventor is
involved.” (Br. 6, citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).)
Here, Kruchoski satisfies both tests. It is in the same field of endeavor;
namely, skin care compositions that are in direct contact with the skin.
(Final Act. 12.) Kruchoski is also reasonably pertinent to the use of plant
oils in compositions that are in direct contact with the skin. (FF 3.)
Appellants also make arguments, similar to those advanced in
connection with Rejection No. 1, that there is no direction to select the
components and percentages in claim 1, that Kruchoski “only discloses palm
kernel oil in a laundry list of oils” (see argument regarding Dayan), and that
“the combination still does not disclose or suggest all of the claim elements.”
(Br. 6-7.)
We are not persuaded. All of the elements of claim 1 are taught by
Potechin and Kruchoski. (FF 1,3.) Moreover, Appellants’ arguments are
unpersuasive for the reasons set forth above in connection with Rejection
No. 1. Appellants also purport to contest the rejection of dependent claims
3, 7, 17—19, and 23—25 (Br. 7), but those claims are not separately argued for
the same reasons as set forth above in connection with Rejection No. I.12
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 3, 5—7,
11—19, 23—25, 28, and 29 were not separately argued and fall with claim 1.
12 Claim 8 is mentioned in connection with Rejection No. 2, but it is subject
to Rejection No. 3 (and addressed below) rather than Rejection No. 2. (Ans.
2.)
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Rejection No. 3
Appellants argue that “[t]here is no direction or suggestion in Cap” to
make the selections of claim 1 “without the need for picking and choosing.”
(Br. 8.) We are not persuaded. Cap teaches the elements of claim 1 (FF 4),
and any picking and choosing would have been obvious to, and well within
the skill of, a person of ordinary skill in the art. See Arkley, 455 F.2d at 587;
Merck, 874 F.2d at 807; KSR, 550 U.S. at 416.
Appellants point to two different examples in Cap showing palm
glycerides in the amounts of 4.5% (max) and 3.2%. (Br. 8—9.) Appellants
argue, based on those examples, that “[t]her is no suggestion in Cap [] of
selecting palm kernel oil from the list and selecting at least 15% palm kernel
oil in combination” and that Cap “expressly teaches away from making a
selection of at least 15% palm kernel oil.” {Id. at 9.)
We are not persuaded. A prior art reference may be read for all that it
teaches. In reMouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). Here, Cap
teaches the use of a plant oil at greater than 10 weight percent, and that the
plant oil may be palm kernel oil. (FF 4.) Moreover, Cap does not teach
away from a selection of at least 15% palm kernel oil because it does not
criticize, discredit, or otherwise discourage such a selection. See Fulton, 391
F.3d at 1201.
Appellants also purport to separately argue dependent claims 3 and 7.
(Br. 9.) However, those claims are not separately argued for the reasons set
forth above in connection with Rejection No. 1. Similarly, we note that
Appellants include claim 8 in connection with Rejection No. 2, whereas
claim 8 is subject to Rejection No. 3. (Br. 7.) Appellants state that “no
silicone” (i.e., the absence of silicone) is not disclosed or suggested in
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Potechin, Kruchoski, or Keil. (Id. ) However, “no silicone” is taught by
Cap. (FF 4.)
Conclusion of Law
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 1 is obvious under 35 U.S.C. § 103(a). Claims 3, 7, 8,
and 11—13 were not separately argued and fall with claim 1.
SUMMARY
We affirm the rejections of all claims on appeal.
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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