Ex Parte Mistry

Board of Patent Appeals and Interferences

May 25, 2012

10559588 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NIRAJ DHANSUKHLAL MISTRY
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Appeal 2010-012245
Application 10/559,588
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-012245
Application 10/559,588

2
DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 3, 4, and 6-10 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over GB ‘023 (Pelizza,
GB 1,190,023 A, published Apr. 29, 1970).2, 3 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
“The present invention . . . relates to liquid soap compositions prepared at
low cost due to the inexpensive and widely available raw materials used, at the
same time providing excellent cleaning properties, as well as high consumer appeal
due the high transparency of the soap composition.” (Spec.4 1:4-9.) The
“inventors have [] found that surprisingly low amounts of castor oil soap/salt of
ricinoleic acid or their derivatives when incorporated in liquid/gel soap
compositions provide for high transparency and excellent cleaning performance.”
(Id. at 3:17-21.) Claim 1 is representative of the invention and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A transparent liquid or gel soap composition comprising:

5 to 25% by weight of C12 to C18 soap,

2 to 20% by weight humectants, wherein the humectant is selected from
polyhydric alcohols including glycerol, sorbitol, polyethylene glycols, propylene
glycols and mixtures thereof;

1 Final Office Action mailed Oct. 26, 2009.
2 Appeal Brief filed Mar. 31, 2010 (“Br.”).
3 The Examiner has withdrawn the rejections based on GB 2,005,297. (Examiner’s
Answer mailed Jun. 16, 2010 (“Ans.”), 3.)
4 Specification filed Dec. 2, 2005.
Appeal 2010-012245
Application 10/559,588

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balance water;

wherein the soap comprises unsaturated fatty acid soap which consists
essentially of 0.05 to 4 % by weight of the composition castor oil soap or salt of
ricinoleic acid, or the derivatives thereof;

and,

wherein the composition is transparent in the temperature range of 4 to 25
ºC.
Appellant’s arguments in support of patentability as to all appealed claims
are based on limitations found in independent claim 1. (See generally, Br. 5-9.)
Specifically, Appellant raises the following issue for our consideration: did the
Examiner reversibly err in finding that GB ‘023 teaches or suggests a transparent
liquid or gel soap composition “wherein the soap comprises unsaturated fatty acid
soap which consists essentially of 0.05 to 4 % by weight of the composition castor
oil soap or salt of ricinoleic acid, or the derivatives thereof” (claim 1)? (See id. at
5.)
Rejection under 35 U.S.C. §102(b)
The Examiner’s anticipation rejection is based on a finding that “GB ‘023
teaches unsaturated fatty acid soaps in amounts from 0 to 50%, which includes
amounts 0.05 to 4.0% and further includes carbon atoms of C14-22 and C8-22,
which overlaps with castor oil or ricinoleic fatty acids of C18.” (Ans. 5.) This
finding is insufficient to support a rejection under 35 U.S.C. § 102(b). See Atofina
v. Great Lakes Chemical Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (explaining
that the disclosure of a range is not a disclosure of the end points of the range or of
each of the intermediate points).
The rejection of claims 1, 3, 4, and 6-10 under 35 U.S.C. § 102(b) as
anticipated by GB ‘023 is reversed.
Appeal 2010-012245
Application 10/559,588

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Rejection under 35 U.S.C. §103(a)
Appellant does not dispute that GB ‘023 teaches a liquid soap comprising
“unsaturated fatty acid soaps in amounts from 0 to 50%, which includes
[Appellant’s claimed] amounts [of] 0.05 to 4.0%” (Ans. 5). (See generally, Br. 5-
9.) Appellant does not dispute the Examiner’s finding that GB ‘023 specifically
teaches “unsaturated fatty acid soaps having 14-22 carbons and mixtures of at least
one C8-C22 unsaturated fatty acid” which “encompasses the castor oil or ricinoleic
fatty acids carbon chain length of 18” (Ans. 5). (See generally, Br. 5-9.) The
liquid soaps are “clear liquids . . . even when cooled to a temperature less than 0
ºC.” (GB ‘023 p. 7, ll. 16-19, cited in Ans. 4.)
“[T]he existence of overlapping or encompassing ranges shifts the burden to
the applicant to show that his invention would not have been obvious.” In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Appellant argues that even if the Examiner properly established a prima
facie case of obviousness, test results in the Specification establish “that the
addition of castor oil increases the transparency of the soap composition
dramatically and unexpectedly. . . . The results from the referenced [Specification]
tables indicate that such behaviour is not seen when a different unsaturated oleate
soap is added to the compositions.” (Br. 6.)
“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness.” Sud-
Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009).
We have considered Appellant’s evidence of unexpected results, but are in
agreement with the Examiner that a preponderance of the evidence still weighs in
favor of obviousness. (See Ans. 5-7.) As pointed out by the Examiner, the
evidence does not support a finding that it was unexpected that “a small amount of
Appeal 2010-012245
Application 10/559,588

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soap made from castor oil based unsaturated fatty acids, their precursors or
derivatives, in a C12-C18 soap matrix ensures high transparency in the composition”
(Br. 5), given GB ‘023’s disclosure of soaps which may contain castor oil or
ricinoleic fatty acids in the amounts claimed, and are “clear liquids . . . even when
cooled to a temperature less than 0 ºC” (GB ‘023 p. 7, ll. 16-19). The evidence
fails to establish any criticality in the claimed range. (Compare Spec. Tables 1-4
(testing compositions containing castor soap in amounts of 1% and 2%) and Table
5 (testing a single soap formulation in which only the quantity of castor soap is
varied in amounts of 0.5-2.0%) with claim 1 (“unsaturated fatty acid soap which
consists essentially of 0.05 to 4 % by weight of the composition castor oil soap or
salt of ricinoleic acid, or the derivatives thereof”) (emphasis added).)
Accordingly, for the reasons expressed in the Answer and above, we affirm
the rejection of claims 1, 3, 4, and 6-10 under 35 U.S.C. § 103(a) as obvious over
GB ‘023.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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