Ex Parte Pinzon et al

Board of Patent Appeals and Interferences

Nov 24, 2009

10722878 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDIA PINZON, LAURA SCHICK, and
WALTER J. CARMODY
____________

Appeal 2009-005136
Application 10/722,878
Technology Center 1700
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Decided: November 24, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-29 (Final Office Action (“Final”), mailed
Aug. 18, 2005), the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
Independent claims 1 and 19 are illustrative of the subject matter on
appeal, and are reproduced from the Claims Appendix to the Appeal Brief
(“Br.”), filed Sep. 5, 2007:
1. A topical aqueous cleansing composition,
comprising:
about 0.05 wt% to about 20 wt% of one or more waxes
having a melting point of about 70° C or more;
an anionic surfactant and an additional surfactant selected
from the group consisting of a nonionic surfactant, an
amphoteric surfactant, and a combination of a nonionic
surfactant and an amphoteric surfactant, in an amount effective
to stabilize the wax in the composition; and
about 20 wt% or more water.
19. The composition of claim 1, wherein the
composition is in the form of a dispersion.
Appellants request review of the sole ground of rejection (Br. 4):
claims 1-29 under 35 U.S.C. § 103(a) as unpatentable over Dufay, US.
2002/0010114, published Jan. 24, 2002.
Appellants present separate arguments in support of patentability of
claims 19, 22, and 25, as a group. The remaining claims stand or fall with
claim 1.1

1Although Appellants place claims 2-10, 21, and 24 under a separate
subheading (Br. 7), they do nothing more than point out what the claims
recite. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”).
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The following issues are presented for our review:
1. Have Appellants shown that the Examiner’s findings are
insufficient to establish that it would have been obvious to have selected a
wax and an anionic surfactant as recited in claim 1 for use in Dufay’s
aqueous cleaning concentrate?
2. Have Appellants shown that the Examiner reversibly erred in
finding that Dufay discloses or suggests a composition in the form of a
dispersion as recited in claims 19, 22, and 25?
We answer both questions in the negative for the reasons expressed on
pages 4-7 of the Examiner’s Answer (mailed Dec. 21, 2007 (“Ans.”)), to
which we add the following discussion of the relevant case law and its
applicability to the facts in this appeal. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1366 (Fed. Cir. 2007) (quoting In re Jones, 958 F.2d 347, 350
(Fed. Cir. 1992) (“Every case, particularly those raising the issue of
obviousness under section 103, must necessarily be decided upon its own
facts.”)).
Appellants contend that the Examiner erred in rejecting the claims as
obvious in view of Dufay because considerable picking and choosing is
necessary to achieve the claimed invention.
An obviousness rejection predicated on selection of one or more
components from numerous possible choices may be appropriate if the prior
art provides direction as to which of many possible choices is likely to be
successful, see PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d
1342, 1364 (Fed. Cir. 2007), e.g., “where the prior art ‘contain[s] detailed
enabling methodology for practicing the claimed invention, a suggestion to

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modify the prior art to practice the claimed invention, and evidence
suggesting that it [will] be successful,’” In re Kubin, 561 F.3d 1351, 1360
(Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d 894, 902 (Fed. Cir.
1988) (emphasis added)). See also, KSR Int'l. Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (prima facie case of obviousness established where the
Examiner demonstrates that the invention is nothing more than the
predictable result of a combination of familiar elements according to known
methods); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1166-67 (Fed.
Cir. 2006).
Based on the Examiner’s factual findings (Ans. 3-4), we determine
that Dufay would have clearly guided the ordinary artisan toward selection
of waxes and surfactants within the scope of appealed claim 1, since Dufay
specifically identifies many of the same waxes and surfactants used by
Appellants (compare Dufay, ¶ [0064] with Spec. 4:5-18 and Dufay, ¶ [0060]
with Spec. 5:26-6:7) as suitable for use in Dufay’s final compositions (see
Dufay, ¶ [0058]). As indicated in both Dufay and Appellants’ Specification,
it is well known in the art to use these waxes and surfactants in skin
cleansers (Dufay, ¶ [0060] (“The surfactants mentioned are all known
compounds.”); Spec. 4:13-16 and 6:4-6 (citing the International Cosmetic
Ingredient Dictionary and Handbook)). See Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill, 771
F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed
in light of prior art teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites of the claims
from among ‘thousands’ of compounds”)); In re Susi, 440 F.2d 442, 445
(CCPA 1971) (obviousness rejection affirmed where the disclosure of the
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prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant's generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant's additives”).
Moreover, the Examiner’s obviousness determination is not based on
varying numerous parameters in Dufay; rather, the principal parameter
which must be varied to achieve the claimed invention is the quantity of wax
present in the final composition. It is well settled that “discovery of an
optimum value of a variable in a known process is usually obvious.” Pfizer,
480 F.3d at 1368; see also, Medichem, 437 F.3d at 1168 (citing In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (The “‘normal desire of
scientists or artisans to improve upon what is already generally known
provides the motivation to determine where in a disclosed set of percentage
ranges is the optimum combination of percentages.’”)); In re Aller, 220 F.2d
454, 456 (CCPA 1955) (noting that it is normally “expected that a change in
temperature, or in concentration, or in both, would be an unpatentable
modification” over the prior art).
With respect to claims 19, 22, and 25, Appellants additionally argue
that the Examiner erred in failing to fully explain why Dufay’s teaching of a
composition in the form of an emulsion suggests a composition in the form
of a dispersion as claimed. The Examiner fully addressed this argument on
page 6 of the Answer, and Appellants have not filed a Reply Brief in
response. Because Appellants have not provided arguments or evidence
establishing that the Examiner’s findings and reasons on page 6 of the
Answer are incorrect, we determine that Appellants have not shown
reversible error in the Examiner’s obviousness determination as to claims
19, 22 and 25. See, e.g., In re Fox, 471 F.2d 1405, 1407 (CCPA 1973)
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(affirming the Board’s decision: “In this court appellant has not denied the
existence of the facts on which the examiner rested his obviousness rejection
nor the added facts of which the board took judicial notice.”); In re
Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“[T]he examiner appears
to have considered thoroughly this assertion, and to have found otherwise.
Since appellant has not shown this finding to be clearly erroneous, we accept
it as fact.”).
In sum, for the reasons stated in the Examiner’s Answer and expanded
upon above, we determine that Appellants have not identified reversible
error in the Examiner’s obviousness determination.
The decision of the Examiner rejecting claims 1-29 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)(1)(iv).

AFFIRMED

kmm

Charles N.J. Ruggiero, Esq.
Ohlandt, Greeley, Ruggiero & Perle, L.L.P.
10th Floor, One Landmark Square
Stamford, CT 06901-2682