Ex Parte O et al

Board of Patent Appeals and Interferences

Jun 8, 2010

10719224 (B.P.A.I. Jun. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JANET K. O'GRADY,
MAUREEN SULLIVAN MORRISSEY,
ALEXANDER NOVIKOV,
and
RONALD MCLAUGHLIN,
Appellants1
____________________

Appeal 2010-002959
Application 10/719,224
Technology Center 1600
____________________

Decided: June 08, 2010
____________________

Before CAROL A. SPIEGEL, TONI R. SCHEINER, and
FRANCISCO C. PRATS, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from an Examiner's final
rejection of claims 1-6 and 22-32 (Br. 2; Ans. 2). Claims 11-21, the only
other pending claims, stand withdrawn from consideration as directed to a

1 The real party in interest is THE PROCTER & GAMBLE COMPANY OF
CINCINNATI, OHIO (Corrected Appeal Brief filed 19 May 2009 ("Br.") at
1). This decision also cites to the Examiner's Answer mailed 17 September
2009 ("Ans.").
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nonelected invention (id.). We have jurisdiction under 35 U.S.C. § 134. We
AFFIRM.
The subject matter on appeal is directed to shaving gel compositions
comprising (1) vitamin A, (2) vitamin E, (3) aloe, and (4) at least one of
bisabolol, panthenol (vitamin B5), vitamin B3 (niacin), and vitamin C, each
in an amount between about 0.001 and about 5 weight %.2 The shaving gel
compositions may be used alone or in combination with an aftershave gel, a
moisturizing lotion, or a cleansing wash or bar composition which also
contains one of ingredients (1)-(4). Claims 1 and 24 are illustrative and read
(Br. 9-10):
1. A topical cosmetic composition for providing
noticeably healthy looking human skin comprising
a topical cosmetic carrier vehicle including
vitamin A, vitamin E, aloe, and at least one
member selected from the group consisting of
bisabolol, panthenol, vitamin B3 and vitamin C,
wherein said vitamin A, said vitamin E, said aloe,
and said at least one member are each
independently included in an amount of about
0.001% to about 5% by weight of the composition,
wherein the topical cosmetic composition is
in the form of a shaving gel and further comprises
a lathering agent, a foaming agent, and/or a self-
foaming agent.

24. An array of topical cosmetic compositions
for combined application to human skin, the array
comprising:
a) a first topical cosmetic composition in
accordance with claim 1; and
b) a second topical cosmetic composition
selected from the group consisting of an aftershave

2 This decision uses the terms "weight %" and "%" interchangeably.
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gel, a moisturizing lotion, a cleansing wash, and a
cleansing bar,
wherein the second topical cosmetic
composition comprises vitamin A, vitamin E, aloe,
bisabolol, panthenol, vitamin B3 and/or vitamin C.
The Examiner has rejected claims 1-6 and 22-32 as unpatentable
under 35 U.S.C. § 103(a) over the combined teachings of Stoner,3 Fike,4 and
Lisboa5 (Ans. 2-4).6
The Examiner found that Stoner teaches a treatment using two
compositions, a self-foaming shaving gel and an aftershave splash, lotion or
gel (Ans. 5). The Examiner found that Stoner teaches that the self-foaming
shaving gel contains a lathering agent and additives such as aloe, vitamin A
palmitate, panthenol, vitamin E, and preservatives (id.). The Examiner also
found that Stoner teaches that the aftershave splash, lotion or gel comprises a
humectant and can contain a wide variety of other cosmetic ingredients (id.).
According to the Examiner, Stoner differed from the claimed subject matter
in (a) failing to teach a shaving gel composition having the claimed weight

3 U.S. Patent 5,902,574, Shaving Preparation for Improved Shaving Comfort,
issued 11 May 1999 to Stoner et al. ("Stoner").
4 U.S. Patent 5,612,382, Composition for Percutaneous Absorption of
Pharmaceutically Active Ingredients, issued 18 March 1997 to Elmer A.
Fike ("Fike").
5 U.S. Patent 5,679,324, Aerosol Foamable Fragrance Composition, issued
21 October 1997, to Lisboa et al. ("Lisboa").
6 The Examiner has withdrawn the final rejection of claims 24-32 under 35
U.S.C. § 112, first paragraph (written description), and has added claims 22
and 23 to the final rejection of claims 1-6 and 24-32 under 35 U.S.C. §
103(a). Appellants have not responded to the new rejection of claims 22 and
23 under 35 U.S.C. § 103(a), despite having the ability to file a Reply Brief.
Therefore, there is no apparent due process issue in deciding the appeal on
the record before us.
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percents of vitamin A, vitamin E, aloe, and at least one of bisabolol,
panthenol, vitamin B3, and vitamin C, and (b) failing to teach an aftershave
gel composition comprising vitamin A, vitamin E, aloe, bisabolol, panthenol,
vitamin B3, and/or vitamin C (id. at 6).
However, the Examiner found that Stoner Example 4 provided
guidance regarding the amount of additives to add to a shaving gel
composition (id. at 7). The Examiner also found that Fike teaches adding
0.1 to 15 weight % vitamin B3 to compositions for delivering active
ingredients through skin or mucosal tissues and that Lisboa teaches
foamable fragrance compositions comprising about 0.01 to about 10
weight % bisabolol for use in the shaving gel art (id. at 5).
Thus, the Examiner concluded that it was "only a matter of judicious
selection and routine optimization for one of ordinary skill in the art to add
other additives, such as vitamins, in the amount taught by Stoner et al. to
read on the amount instantly claimed" (id. at 7). The Examiner further
concluded that it was similarly just a matter of judicious selection and
routine optimization to produce a second composition comprising vitamin A,
vitamin E, aloe, bisabolol, panthenol, vitamin B3 and/or vitamin C because
all of these ingredients are taught by Stoner, Lisboa, and Fike for the same
use, i.e., in topical skin compositions (id. at 7-8).
Appellants argue that none of the applied references teach or suggest
the specific base mixture of vitamin A, vitamin E, and aloe, along with an
additional material(s) selected from bisabolol, panthenol, vitamin B3, and
vitamin C, required by claims 1 and 24 (Br. 6).
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Appellants have not presented separate patentability arguments for
any of claims 2-6, 22, 23 or 25-32. Therefore, we decide this appeal on the
basis of claims 1 and 24. 37 C.F.R. § 41.37(c)(1)(vii).
Based on the respective positions of the Examiner and Appellants, the
issues before us are whether the evidence of record supports the Examiner's
conclusions that it would have been obvious
(1) to provide a shaving gel composition containing vitamin A,
vitamin E, aloe, and at least one of bisabolol, panthenol, vitamin B3, and
vitamin C in the amounts recited in claim 1; and,
(2) to provide the shaving gel composition of claim 1 in combination
with an aftershave gel comprising vitamin A, vitamin E, aloe, bisabolol,
panthenol, vitamin B3, and/or vitamin C as recited in claim 24.
II. Findings of Fact
The following findings of fact ("FF") are supported by a
preponderance of the evidence of record.
A. Stoner
[1] Stoner teaches the sequential use of two compositions to provide
improved shaving comfort (Stoner abstract; 1:12-17).
[2] The first composition is a shaving composition comprising a reducing
agent and the second composition is an aftershave composition
comprising a humectant (Stoner 1:60-2:11).
[3] The shaving composition comprises about 65 to 90% water, about 5 to
25% of a foaming agent, and about 0.2 to 2.3% of the reducing agent
cysteamine (Stoner 2:37-41).
[4] The shaving composition may also include other optional components,
including humectants; emollients; skin freshening and soothing agents,
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such as aloe; lubricants; vitamins, such as panthenol, vitamin E, and
vitamin A palmitate; colorants; fragrances; antioxidants; and,
preservatives (Stoner 5:33-49).
[5] Example 4 describes a non-soap self-foaming shave gel containing
74.75 wt.% water, 7.11 wt.% stearoyl/myristoly sarcosine, 4.33 wt.%
oleth-20, 3.85 wt.% isopentane:isobutene (3:1), 2.69 wt.% myristyl
alcohol, 2.60 wt.% triethanolamine, 1.92 wt.% mineral oil, 0.19 wt.%
dimethethicone/dimethiconolol, 0.24 wt.% hydroxyethyl cellulose,
0.24 wt.% polyquaternium-10, 0.14 wt.% PEG-14M, 0.50 wt.%
cysteamine, and q.s. fragrance/color/preservative (Stoner 11:1-17).
[6] The aftershave composition is in the form of an aftershave splash,
lotion or gel and typically comprises about 20 to 80% water, about 0
to 50% ethyl alcohol, about 5 to 50% humectant, fragrance, and
optional thickening agent (Stoner 7:40-44).
B. Fike
[7] Fike discloses a composition for transdermally delivering
pharmaceutically active ingredients into the body through skin or
mucosal tissues (Fike abstract; 1:7-11; 2:49-51; 3:3-7).
[8] The composition comprises the active ingredient(s) in admixture with
a carrier comprising at least one hydroxy alkyl amide, preferably N-
(2-hydroxyethyl) acetamide (Fike 3:3-7 and 37-38).
[9] Exemplary active ingredients include vasodilators, such as derivatives
of vitamin B3 (Fike 4:15-37).
[10] "Compositions using niacin, for example, may also be used as skin
conditioners to soften, moisturize and reduce the flakiness of skin"
(Fike 4:47-49).
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[11] For specific ailments, such as arthritis, split finger syndrome or
hemorrhoidal tissues, the composition should comprise vitamin B3 in
an amount of from 0.1 to 15 percent by weight of the composition as
the pharmaceutically active ingredient (Fike 4:57-5:1).
C. Lisboa
[12] Lisboa discloses cosmetic aerosol foamable fragrance compositions
which may contain additional ingredients to promote skin
moisturization and conditioning (Lisboa 1:8-14).
[13] The compositions comprise a surfactant, propellant, fragrance, and
thickener (Lisboa 1:63-66).
[14] Optional additional ingredients include medicaments and cosmetically
active ingredients (Lisboa 6:12-23).
[15] Exemplary cosmetically active ingredients are present at levels from
about 0.1 to about 20% of the composition and include
moisturizers/humectants, such as aloe vera (Lisboa 6:27-35 and 55-
65).
III. Discussion
A. Legal principles
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and, (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Further, "the [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take [into] account the inferences and creative steps that a person of
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ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). "The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." KSR, 550 U.S. at 416. "It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose." In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980). "[D]iscovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art." In re
Boesch, 617 F.2d 272, 276 (CCPA 1980).
B. Analysis
As to claim 1, Stoner teaches shaving gel compositions comprising
aloe (a skin freshening and soothing agent), vitamins including A, E, and
panthenol, and a foaming agent in an aqueous carrier (FF 3 and 4). Stoner
does not expressly teach the weight % of aloe, vitamins A, E, or panthenol
present in the shaving gel composition. However, Stoner provides general
guidance for the composition of the shaving gel, i.e., about 65-90% water,
about 5 to 25% foaming agent, and about 0.2 to 2.3% reducing agent, plus
optional other components (FF 3 and 4), as well as specific exemplary
shaving gel compositions. Example 4 of Stoner describes a shaving gel
composition containing about 75% water, about 5 % foaming agent, about
0.5% reducing agent, and the remainder about ten optional components (FF
5). Thus, we agree with the Examiner that it would have been obvious to
provide shaving gel compositions as taught by Stoner, including
conventional additives, such as aloe and vitamins (including A, E, and
panthenol), for their known benefits, such as skin freshening. We also agree
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with the Examiner that the claimed % amounts of aloe, vitamin A, vitamin E,
and panthenol would have been a matter of routine optimization well within
ordinary skill in the art, especially given both the general guidance and
specific Example 4 of Stoner. Moreover, Fike teaches both the skin
conditioning properties of vitamin B3 (FF 10) as well as its compatibility in
compositions applied to the skin in amounts overlapping the claimed weight
percent (FF 11). Similarly, Lisboa teaches both the skin conditioning
(moisturizing) properties of aloe as well as its compatibility in compositions
applied to the skin in amounts overlapping the claimed weight percent (FF
15). Thus, in our opinion, the subject matter of claim 1 would have been
prima facie obvious from at least the teachings of Stoner and the teachings
of Fike and Lisboa do not undermine the teachings of Stoner.
As to the array of claim 24, Stoner also teaches using its shaving gel
compositions in combination with an aftershave gel (FF 1, 2, and 6).
According to Stoner, the aftershave gel typically contains water, humectant,
fragrance, and optional thickening agent (FF 6). Again, Lisboa teaches that
aloe vera is a humectant as well as its compatibility in compositions applied
to the skin (FF 15). Thus, in our opinion, the subject matter of claim 24
would have been prima facie obvious from at the teachings of the applied
references.
C. Conclusion
We will sustain the rejection of claims 1-6 and 22-32 under § 103(a)
over Stoner, Fike, and Lisboa. The evidence of record supports the
Examiner's conclusions that it would have been obvious (1) to provide a
shaving gel composition containing vitamin A, vitamin E, aloe, and at least
one of bisabolol, panthenol, vitamin B3, and vitamin C in the amounts
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recited in claim 1; and, (2) to provide the shaving gel composition of claim 1
in combination with an aftershave gel comprising vitamin A, vitamin E, aloe,
bisabolol, panthenol, vitamin B3, and/or vitamin C as recited in claim 24.
Appellants have not presented any evidence of secondary considerations of
nonobviousness to persuade us otherwise.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-6 and
22-32 as unpatentable under 35 U.S.C. § 103(a) over the combined teachings
of Stoner, Fike, and Lisboa is AFFIRMED, and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with the appeal may be extended under 37 C.F.R. §
1.136(a).
AFFIRMED

alw

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