Ex Parte Potechin et alDownload PDFPatent Trial and Appeal BoardSep 14, 201613814803 (P.T.A.B. Sep. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/814,803 02/07/2013 23909 7590 09/16/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Kathy Potechin 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. 9082-00-PC 6009 EXAMINER MRUK,BRIANP ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 09/16/2016 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KA THY POTECHIN and CHRISTINE BOYKE Appeal2015-000394 Application 13/814,803 Technology Center 1700 Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to an aqueous, foamable composition. The Examiner finally rejected the claims as obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The Examiner's rejection is affirmed. STATEMENT OF CASE Appellants appeal the Examiner's final rejection of claims 1, 3-7, and 9 under 35 U.S.C. § 103(a) as obvious in view of Piterski et al. (WO 03/078558 Al, publ. Sept. 25, 2003) ("Piterski"). Claim 1, the only independent claim on appeal, is reproduced below: Appeal2015-000394 Application 13/814, 803 An aqueous, foamable composition comprising: a) 0.1 to 1 % by weight of the composition castor oil maleate, b) 0.05 to 0.3% by weight of the composition PEG-7 glyceryl cocoate, c) 0.5 to 6% by weight of the composition glycerin, and d) surfactant, wherein the glycerin is present in an amount that is greater than any of the castor oil maleate or PEG-7 glyceryl cocoate, and the composition has a viscosity of 1 to 100 mPas (cps). FINDINGS OF FACT Piterski FF 1. Piterski describes a cleansing composition for the skin which comprises a mild surfactant system and a moisturizer system that contains a milk protein. Piterski, 4--5. Moisturizer FF2. Piterski teaches a "moisturizer system" that "may include, for example, one or more" of a list of 12 "[ s ]uitable moisturizers that can be used in the moisturizer system" which can be used in "any combinations thereof." Id. at 8:5-15. FF3. Piterski teaches two moisturizer systems which have two components: "sodium C12-C 15 alkoxypropyl iminodiproprionate and laureth- 12 sulfosuccinate (CETYLSIL NS)" and "cocoglucoside and glyceryl oleate (LAMESOFT PO 65)." Id. at 8:10-12. 2 Appeal2015-000394 Application 13/814, 803 a) 0.1 to 1 % by weight of castor oil male ate in re} ected claim 1 FF4. Piterski teaches that "the moisturizer system is present in the composition of the present invention in an amount about 0.01 wt.% to about 6 wt.% of the total weight of the composition. Preferably, the moisturizer system is present in an amount about 3 wt.% to about 4 wt.%." Id. at 8:28- 32. FF5. Castor oil maleate ("casteryl maleate") is listed in Piterski as a moisturizer among a list of 12 "[ s ]uitable moisturizers that can be used in the moisturizer system." Id. at 8: 6-15. b) 0.05 to 0.3% by weight of PEG-7 glyceryl cocoate in rejected claim 1 FF8. PEG-7 glyceryl cocoate is listed as an emollient for softening the skin among a list of emollients. Id. at 14: 24--29. FF9. "The emollient, when present in the composition, is present in an amount about 0.1 wt.% to about 10 wt.%, and preferably about 0.5 wt.% to about 5 wt.%, of the total weight of the composition." Id. at 14:30-32. FFlO. Example 1 of composition #1 lists PEG-7 glyceryl cocoate as an emollient in a range of 0.5--4 wt.%. Id. at 16. The amount of PEG-7 glyceryl cocoate recited in rejected claim 1 overlaps with the specific range recited in Example 1 of Piterski. c) 0.5 to 6% by weight of glycerin in rejected claim 1 FF6. Glycerin is listed as a moisturizer among a list of 12 "[s]uitable moisturizers that can be used in the moisturizer system." Id. at 8:6-15. Glycerin is listed as a preferred moisturizer among a list of2. Id. at 8:14-- 16. 3 Appeal2015-000394 Application 13/814, 803 FF7. Piterski discloses composition # 1 of Example 1 which lists glycerin as humectant and moisturizer in a range of 1-5 wt.%. Id. at 16. The amount of glycerin recited in rejected claim 1 overlaps with the specific range recited in Example 1 of Piterski and is within the broader range described in Piterski for moisturizes (FF4). d) swfactant in rejected claim 1 FF 11. Example 1 of composition # 1 lists three different surfactants (Cocoamidopropyl betaine, Sodium lauryl sulfate, and PEG-30 and PEG-80) glyceryl cocoate ). Id. at 16. REJECTION The Examiner found that Piterski describes a mild foaming cleanser comprising all four components a) through d) of the claimed aqueous, foamable composition with the same recited viscosity. Answer 2-3. The Examiner also found that the claimed amounts of each component are described or suggested by Piterski as summarized in the Findings of Fact listed above. Id. More specifically, the Examiner found that Example 1 (composition # 1) of Piterski is of a cleanser with three of the four recited components (PEG-7 glyceryl cocoate, glycerin, and surfactant (Piterski 16) ), but is missing castor oil maleate. Answer 2-3. However, the Examiner found that castor oil maleate ("casteryl maleate") is described by Piterski as a moisturizer (FF5). Id., 3. The Examiner determined it would have been obvious to have included castor oil maleate in the exemplified cleansing composition in the claimed amount of 0.1 to 1 % by weight because such 4 Appeal2015-000394 Application 13/814, 803 amount falls within the range of described by Piterski for moisturizers useful for the cleansing composition (FF4, "about 0.01 wt.% to about 6 wt.%). 1 Id. The claim also requires that "the glycerin is present in an amount that is greater than any of the castor oil maleate or PEG-7 glyceryl coco ate." The Examiner found that glycerin can be as much as 5% by weight in Example 1 (FF7), while PEG-7 glyceryl cocoate can be present in lower amounts, such as 0.1%, 0.5 wt.%, and 0.5--4 wt.% (FF9, FFlO); Answer4. Consequently, the Examine determined that the claimed limitation is met by Piterski. Appellants contend that there is no suggestion in Piterski that glycerin is selected to be present in an amount that is greater than PEG-7 glyceryl cocoate. Br. 2. Appellants also contend that there is no disclosure or suggestion to select castor oil maleate to be in combination with PEG-7 glyceryl cocoate and glycerin. Id. at 3. Appellants argue that "[t]oo much picking and choosing of all of the claimed elements is needed without the required direction to make the selections and place them in the possession of the public." Id. 1 The Examiner stated that the amount is "0.01-3% by weight of a moisturizer." Answer 3. On page 8 of Piterski, the amounts are listed as "about 0.01 wt.% to about 6 wt.% of the total weight of the composition. Preferably, the moisturizer system is present in an amount about 3 wt.% to about 4 wt.%." FF4. To the extent the range of 0.01-3% is not expressly described by Piterski, we consider this harmless error because the recited range of 0.1 to 1 % of castor oil maleate is encompassed by disclosed range of 0.01 to 6% of moisturizer. 5 Appeal2015-000394 Application 13/814, 803 DISCUSSION The issue in this appeal is whether there is "[ t Joo much picking and choosing" from Piterski' s disclosure to have arrived at the claimed aqueous foamable composition with components a) through d) in the claimed amounts. Example 1 of Piterski, describing a composition # 1, comprises: b) PEG-7 glyceryl cocoate in an amount (0.5--4 wt.%) which overlaps with the claimed amount (0.05---0.3%) (FFlO); c) glycerin in an amount (1-5 wt.%) which overlaps the claimed amount (0.5 to 6%) (FF7) and a broader range of moisturizer (0.01-6 wt.%) which includes the claimed amount; and d) surfactant (F 11 ). Thus, Piterski describes a specific composition with three of the four recited components. As to the specifically recited amounts, it is well established that, when there is a range disclosed in the prior art, and the claimed invention overlaps or falls within that range, there is a presumption of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). Example 1 of Piterski does not comprise a) castor oil maleate. However, the choice of castor oil maleate would have been obvious to one of ordinary skill in the art. Piterski describes castor oil maleate in a list of 12 other moisturizers. FF5. Piterski describes the moisturizer as a "system" which can contain "combinations" of the 12 specifically named moisturizers. FF2. Two systems in Piterski' s list of moisturizers are combinations of two components. FF3. Glycerin is present in Example 1 and is a preferred moisturizer. FF6, FF7. Based on these teachings, one of ordinary skill in the art would have had reason to choose castor oil maleate as a second moisturizer to combine with the preferred glycerin because castor oil 6 Appeal2015-000394 Application 13/814, 803 maleate is described as a suitable moisturizer and it appears in a relatively short list of other suitable moisturizers. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious."). The claim requires that the castor oil maleate is present in an amount of 0.1 to 1 % by weight. This amount falls within the amount of moisturizer disclosed by Piterski ("about 0.01 wt.% to about 6 wt.%"). FF4. Consequently, when castor oil maleate is selected, Piterski would have guided one of ordinary skill in to choose an amount which overlaps with the claimed amount. When there is a range disclosed in the prior art, and the claimed invention overlaps with that range, there is a presumption of obviousness. Peterson, 315 F.3d at 1329. In sum, a preponderance of the evidence supports the Examiner's finding the choice of 0.1 to 1 % by weight of castor oil maleate in a cleansing composition would have been obvious to one of ordinary skill in the art. The claims also requires that the amount of glycerin is greater than the amount of PEG-7 glyceryl cocoate. Example 1 contains both these components in ranges (1-5 wt.% for glycerin and 0.5--4 wt.% for PEG-7 glyceryl cocoate) that would include glycerin being in both a higher amount and in a lower amount. Indeed, there are only three possible proportions covered by Example 1: 1) the amounts of glycerin and PEG-7 glyceryl cocoate are equal, 2) glycerin is present in a higher amount; and 3) PEG-7 glyceryl cocoate present in a higher amount, with any of these proportions reasonably expected to be useful for a cleansing composition. In view of the 7 Appeal2015-000394 Application 13/814, 803 readily envisaged genus of three proportions useful for a cleansing compostion, we conclude that each species (1, 2, and 3) would have been obvious to one of ordinary skill in the art. The Examiner found a preference for glycerin in a higher amount than because each range endpoint in Example 1 of glycerin is higher than range endpoints for PEG-7 glyceryl cocoate. Answer 4. However, such a finding is not necessary because there are only three possible proportions in which the glycerin and PEG-7 glyceryl cocoate could be present relative to one another (1 ), 2), and 3) above) and all three are covered by Example 1. Appellants lists seven choices to be made to have arrived at the claimed composition. Br. 3. We do not agree. Two of the listed choices are the choice of glycerin and PEG-7 glyceryl cocoate. Id. Example 1 of Piterski has both components, so no choice is necessary. The next two of the listed choices are the amounts of glycerin and PEG-7 glyceryl cocoate. Id. However, the claimed amounts are encompassed by or overlapping with the amounts of glycerin and PEG-7 glyceryl cocoate in Example 1 (FF7, FFlO), creating a presumption of obviousness. Peterson, 315 F.3d at 1329. Accordingly, Example 1 of Piterski explicitly suggests the claimed amounts of glycerin and PEG-7 glyceryl cocoate. As to the choice of castor oil maleate and its amount (the next two choices in the list on page 3 of the Brief), as explained above, once castor oil maleate is selected, Piterski teaches an amount which encompasses the claimed amount. Consequently, the choice of castor oil maleate would have immediately guided the skilled worker to the recited amounts of it which are encompassed by the amounts taught by Piterski. FF4, FF5. 8 Appeal2015-000394 Application 13/814, 803 While Appellants contend there are seven choices to be made, their argument overlooks the fact that Piterski describes a composition with three of the four recited components in which the amount of each component is encompassed by or overlapping with those which are recited. The selection of an amount of glycerin that is greater than that of PEG-7 glyceryl cocoate is one of 3 possible proportions covered by Example 1. The selection of castor oil maleate is one of 12 choices (FF5). The universe of choices to have arrived at the claimed invention does not necessitate vast picking and choosing, but rather only requires selecting from small, well-defined groups. See also Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (The fact that a reference "discloses a multitude of effective combinations does not render any particular formulation less obvious."); 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 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"). For the foregoing reasons, the rejection of claim 1 is affirmed. Claims 3-7 and 9 fall with claim 1 because separate arguments for their patentability were not made. 3 7 C.F .R. § 41.3 7 ( c )(iv). 9 Appeal2015-000394 Application 13/814, 803 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation