Ex Parte Scavone et al

Board of Patent Appeals and Interferences

Jan 29, 2008

10317339 (B.P.A.I. Jan. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY ALAN SCAVONE, BENJAMIN SCOTT
SCHLAGHECK, LISA ANN RUNTZ, and KELLY LYNN CASSIERE
____________________

Appeal 2008-0581
Application 10/317,339
Technology Center 1600
____________________

Decided: 29 January 2008
____________________

Before SALLY G. LANE, MICHAEL P. TIERNEY, and
JAMES T. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
1
STATEMENT OF CASE 2
The Appellants appeal under 35 U.S.C. § 134 (2002) from a final 3
rejection of claims 2, 4, 11, 13, 14, 16, and 18.1 We have jurisdiction under 4
35 U.S.C. § 6(b) (2002). 5

1 Claims 1, 3, 5-10, 12, 15, 17, and 19-25 have been canceled.

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The Appellants’ claims are directed to a method of using and topical 1
leave-on compositions containing pantothenic acid and its derivatives which 2
are said to reduce the need for underarm shaving. 3
Claims 2 and 18 are the only independent claims in the application. 4
The Appellants do not argue any claims or rejections separately. Therefore, 5
we select independent claim 18, the composition claim, to decide the appeal. 6
See 37 C.F.R. § 41.37(c)(1)(vii)(2006). Accordingly, the remaining claims 7
stand or fall with claim 18. 8
Claim 18 reads as follows: 9
18. An antiperspirant composition comprising; 10
(a) from about 0.1 % to about 30 % by weight of an 11
aluminum-containing antiperspirant active; 12
(b) from about 0.01% to about 10% by weight of panthenyl 13
triacetate; 14
(c) from about 10% to about 99.89% by weight of a liquid 15
carrier; 16
(d) wherein said composition is stable after 24 hours at 85C, 17
wherein stable means that said composition is free of off-odor 18
and free of undesirable visible crystals; 19
(e) wherein said panthenyl triacetate is stable in the presence 20
of said aluminum-containing antiperspirant active; and 21
(f) from about 0.05% to about 15% petrolatum, by weight of the 22
composition. 23
24
25
THE EVIDENCE 26
The Examiner relies upon the following as evidence in support of the 27
rejections: 28
Brenner US 4,055,634 Oct. 25, 1977 29
Trinh US 5,540,853 Jul. 30, 1996 30
Guskey US 5,976,514 Nov. 2, 1999 31
Beck US 6,551,604 Apr. 22, 2003 32

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THE REJECTIONS 1
2
The following rejections are before us for review: 3
1. Claims 2, 4, 11, 13, 14, 16, and 18 stand rejected under 35 U.S.C. 4
§ 103(a) (2004) over the combination of Brenner, Beck, and Guskey. 5
2. Claims 2, 4, 11, 13, 14, 16, and 18 stand rejected under 35 U.S.C. 6
§ 103(a) (2004) over the combination of Trinh and Beck. 7
We AFFIRM. 8
ISSUES 9
Have the Appellants established that the Examiner erred in 10
determining that it would have been obvious to one of ordinary skill in the 11
art at the time the invention was made to combine the known elements of the 12
prior art for their known functions to arrive at the claimed subject matter? 13
FINDINGS OF FACT 14
The record supports the following findings of fact by a preponderance 15
of the evidence: 16
1. Brenner describes compounds having activity as antiperspirants. 17
(Brenner 1:6-7). 18
2. Brenner’s active antiperspirant compounds contain aluminum. 19
(1:5-10). 20
3. Brenner describes that the compounds provided by the invention 21
have good perspiration absorbing capability and do not irritate the skin. 22
(4:65-5:2). 23
4. Brenner describes that when the active compounds are 24

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incorporated into conventional cosmetically acceptable carriers, vehicles or 1
formulations, then a composition with antiperspirant, deodorant or a 2
combination of these properties is formed. (6:47-51). 3
5. Brenner’s carriers include the generally acceptable nonirritating 4
carriers used for antiperspirants in cosmetics, e.g., in the form of powders, 5
sticks, creams solutions, aerosols and the like. (6:51-56). 6
6. Brenner describes that additives used in the invention, such as 7
panthenol or one of its lower alkyl ethers, increase the skin metabolism 8
and/or the skin elasticity. (6:59-61). 9
7. Brenner describes that the antiperspirant/deodorant composition 10
preferably contains between about 1 and 30% by weight of the active 11
compound or mixtures of active compounds. (7:4-8). 12
8. Brenner describes that the compositions can also contain other 13
cosmetically valuable substances, such as other perspiration-inhibiting or 14
deodorizing compounds. (7:9-12). 15
9. Brenner describes an example of a typical composition 16
comprising 3.0 gm Isobutyl-aluminum-diethylate, 7.0 gm n-hexane, 0.2 gm 17
panthenol ethyl ether, and propellant gas mixture sufficient to total a 100 gm 18
preparation. (Example 1(b), 10:40-43). 19
10. Brenner describes methods of controlling perspiration and 20
perspiration odor comprising applying the antiperspirant/deodorant 21
composition to the skin area to be affected. (20:25-30). 22
11. One difference between Brenner and the claimed invention is that 23
Brenner does not expressly describe using panthenyl triacetate. 24

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12. Another difference between Brenner and the claimed invention is 1
that Brenner does not expressly describe using petrolatum. 2
13. Beck describes topical compositions for improving the 3
appearance or other conditions of skin. (Beck 1:7-9). 4
14. Beck describes that the compositions provide good coverage of 5
skin imperfections, such as pores and uneven skin tone, while retaining a 6
natural skin appearance. (1:10-12). 7
15. Beck describes that the compositions are useful to treat hands and 8
other non-facial parts of the body. (1:12-14). 9
16. Beck describes that a composition comprising an active for 10
chronically regulating skin condition and one or more particulate actives of 11
defined refractive index and particle size can enhance improvements in short 12
and long-term appearance and feel of skin. (1:61-67). 13
17. Beck describes that the topical compositions claimed are suitable 14
for imparting an essentially immediate improvement in skin feel and 15
appearance. (2:1-3). 16
18. Beck describes that the topical compositions contain a particulate 17
material, such as polymethylsilsesquioxane, which provides desirable 18
coverage of skin imperfections such as pores and uneven skin tone while 19
maintaining a natural skin appearance. (2:3-8). 20
19. Beck describes that the invention also relates to cosmetic methods 21
of improving skin appearance and/or condition by topical application of the 22
subject compositions. (2:18-20). 23
20. Beck describes that the topical compositions may comprise a 24

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variety of optional components, that may be dispersed, dissolved or the like 1
in the carrier of the compositions. (8:58-65). 2
21. Beck describes optional components include anti-inflammatory 3
agents. (8:66-9:8). 4
22. Beck describes that a safe and effective amount of an anti- 5
inflammatory agent may be added to the composition preferably from about 6
0.1% to about 5%, and more preferably from about 0.1% to about 2% of the 7
composition. (14:17-21). 8
23. Beck describes that the exact amount of anti-inflammatory agent 9
used will depend upon the potency of the anti-inflammatory agent selected. 10
(14:24-27). 11
24. Beck describes that the anti-inflammatory agent enhances the 12
skin appearance benefits of the composition, e.g., the agents contribute to a 13
more uniform and acceptable skin tone or color. (14:21-24). 14
25. Beck describes that useful anti-inflammatory agents include: 15
Steroids; non-steroidal anti-inflammatory drugs (NSAIDS); panthenol and 16
its ether and ester derivatives, e.g., panthenol ethyl ether and panthenyl 17
triacetate; and, pantothenic acid and its salt and ester derivatives. (14:28-18
33). 19
26. Beck describes that particularly preferred anti-inflammatory 20
agents are panthenol, pantothenic acid and their ether, ester or salt derivative 21
and mixtures thereof, having suitable levels from about 0.1 to about 5% and 22
preferably from about 0.5 to about 3%. (14:38-42). 23
27. Guskey describes low-irritation antiperspirant and deodorant 24

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compositions comprising a volatile, nonpolar hydrocarbon liquid and a skin 1
irritation-mitigating material. (1:6-9). 2
28. Guskey describes the mitigating material in the compositions 3
reduces or eliminates skin irritation associated with the topical application of 4
the volatile, nonpolar hydrocarbon liquid from an antiperspirant or 5
deodorant composition. (1:9-12). 6
29. Guskey describes antiperspirant compositions which comprise an 7
antiperspirant active at a concentration of from about 0.01% to about 60%, 8
more preferably from about 5 to about 35%, and even more preferably from 9
about 7 to about 26%. 10
30. Guskey describes that particularly preferred antiperspirant 11
actives are aluminum and zirconium salts. (4:22-29). 12
31. Guskey describes that the antiperspirant embodiments can also be 13
formulated to comprise other materials, either in addition to, or in place of 14
the antiperspirant active, including deodorant actives and/or perfumes. (5:4-15
10). 16
32. Guskey describes that the compositions may be in the form of 17
soft solids/semisolids/creams, solid sticks, aerosols, roll-on liquids, gel solid 18
sticks, and suspension/emulsions. (16:35,65; 17:27; 18:3; 19:20,47). 19
33. Guskey describes that the preferred mitigating materials are 20
nonvolatile-silicone containing materials. (9:3-4). 21
34. Guskey describes that the mitigating materials, individually or 22
collectively, are at a concentration of from about 1% to about 60%, 23
preferably from about 5% to about 30%, and more preferably from about 5% 24
to about 10% by weight of the composition. (8:45-51). 25

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35. Guskey describes that non-silicone containing organic emollients, 1
although less preferred, may also be used as mitigating materials. 2
(11:32-34). 3
36. Guskey describes that among the non-silicone containing 4
emollients, highly occlusive materials such as petrolatum are most preferred. 5
(11:37-38). 6
37. Trinh describes personal treatment compositions comprising 7
perfumes that provide a long lasting perfume benefit with a minimum 8
amount of material and are relatively non-irritating. (Trinh 1:57-61). 9
38. Trinh describes that the personal treatment compositions include 10
deodorants and antiperspirants that are normally applied to one or more parts 11
of the body and are incompletely removed. (2:60-65). 12
39. Trinh describes that the compositions can contain an astringent 13
antiperspirant active, typically used at levels from about 0.5 to about 60%, 14
and preferably from about 5% to about 35%. (38:21-25). 15
40. Trinh describes that any aluminum astringent antiperspirant salt 16
or aluminum and/or zirconium astringent complex can be employed in the 17
antiperspirant active. (38:48-49). 18
41. Trinh describes optionally adding to non-rinsed compositions 19
aesthetic components such as fragrances, colorings, essential oils, skin 20
sensates, astringents, skin soothing agents, skin healing agents and the like. 21
(44:43-45; 45:6-9). 22
42. Trinh describes that non-limiting examples of the aesthetic 23
components include panthenol and derivatives, (e.g. ethyl panthenol), and 24
pantothenic acid and its derivatives. (45:9-11). 25

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43. Trinh describes using an emollient from about 1 to about 50%, 1
preferably from about 1 to about 25%, and more preferably from about 1 to 2
10% by weight. (44:39-42). 3
44. Trinh describes that carriers for antiperspirants and deodorants 4
are well known in the art. (32:32-33). 5
PRINCIPLES OF LAW 6
“Section 103 forbids issuance of a patent when ‘the differences 7
between the subject matter sought to be patented and the prior art are such 8
that the subject matter as a whole would have been obvious at the time the 9
invention was made to a person having ordinary skill in the art to which said 10
subject matter pertains.’” KSR International Co. v. Teleflex Inc., 127 S. Ct. 11
1727, 1734 (2007). 12
“Newly discovered results of known processes directed to the same 13
purpose are not patentable because such results are inherent.” Bristol-Myers 14
Squibb Co. v. Ben Venue Laboratories, 246 F.3d 1398, 1376 (Fed. Cir. 15
2001)(citing In re May, 574 F.2d 1082, 1090 (C.C.P.A. 1978)). 16
ANALYSIS 17
I. Prosecution Issues Relating to a Proposed Amendment 18
Claims 2, 4, 11, 13-14, 16, and 18 stand rejected under 35 U.S.C. 19
§ 112, first paragraph, as failing to comply with the written description 20
requirement. More specifically, the Examiner has found that the 21
specification as filed does not support the Appellants’ possession of an 22
invention as now claimed. 23
This rejection arises from an amendment submitted by the Applicants 24
which amended independent claims 2 and 18 to delete the term 25

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“substantially” from the claims. Specifically, the clause stated that the 1
claimed composition is “stable after 24 hours at 85C, wherein stable means 2
that said composition is substantially free of off-odor and free of undesirable 3
visible crystals.” (Amendment after 2nd Office Action, Nov. 2, 2006, pp. 2, 4
4). 5
In the ensuing Final Rejection, the Examiner found the resulting 6
limitation that the “composition is free of odors after 24 hours is considered 7
new matter.” (Final Rejection, Jan. 29, 2007, p. 2)(emphasis in original). 8
The Examiner found that the Applicants provided data for panthenyl 9
triacetate and support for no visible crystal formation or “off-odor 10
formation” at 24 hours, but did not provide support for a composition free of 11
visible crystal formation and “off-odor formation” after 24 hours. (Id.) 12
Subsequently, the Applicants filed a proposed amendment seeking to 13
change the term “after” to “at” in the independent claims. (Amendment after 14
Final Office Action, Mar. 7, 2007, pp. 2-5). The Examiner declined to enter 15
the amendment in an Advisory Action, stating that “the amendment after-16
final requires further consideration since the limitation was not present for 17
the examiner to consider prior to the Final Office Action of 1/29/07.” 18
(Advisory Action, Mar. 23, 2007, p. 2). 19
On appeal, the Appellants do not assert that the claims are supported 20
by the specification or otherwise make persuasive arguments refuting the 21
Examiner’s position on the pending rejection. Rather, the Appellants urge 22
that “the proposed amendment should have been entered, at least for 23
purposes of appeal….” (Br. pp. 2, 7). The proper route to obtain review of 24

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an Examiner’s decision to refuse to enter an amendment after final rejection 1
is by way of a petition to the Director. 37 C.F.R. § 1.181. 2
II. The 35 U.S.C § 103(a) Rejections 3
A. The Rejection of Claims 2, 4, 11, 13-14, 16, and 18 under 35 4
U.S.C. § 103(a) as being unpatentable over the combination of Brenner, 5
Beck, and Guskey. 6
Claims 2, 4, 11, 13-14, 16, and 18 stand rejected under 35 U.S.C. 7
§ 103(a) as being unpatentable over the combination of Brenner, Beck, and 8
Guskey. 9
Brenner- Antiperspirant Compositions with Additives 10
The Examiner found that Brenner teaches antiperspirant compositions 11
having generally acceptable non-irritating carriers used for antiperspirants in 12
cosmetics. (Final Rejection, Jan. 29, 2007, p. 3). The Examiner also found 13
that Brenner teaches additives used to increase skin metabolism and/or skin 14
elasticity, including panthenol or one of its lower alkyl ethers. (Id.). 15
Brenner teaches the percent by weight of the active compounds or mixtures 16
of active compounds contained in the antiperspirant and/or deodorant 17
mixtures. (Id. p. 4). 18
The Examiner determined that Brenner specifically teaches an 19
example composition that contains 0.2 grams panthenol ethyl ether (ethyl 20
panthenol). (Final Rejection, Jan. 29, 2007, p. 4). Brenner teaches a method 21
of controlling perspiration and perspiration odor comprising applying the 22
composition to the skin area needing perspiration control. (Id.) The 23
Examiner also determined, however, that Brenner does not teach using 24
panthenyl triacetate or using petrolatum in the instant amount. (Id.) 25

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The presently argued difference between Brenner and the claimed 1
invention principally resides in the use of panthenyl triacetate in the 2
antiperspirant composition. 3
Beck- Enhancing Skin with Panthenyl Triacetate 4
The Examiner found that Beck teaches a skin care composition to 5
improve the appearance of skin, especially useful for areas other than facial 6
skin. (Final Rejection, Jan. 29, 2007, p. 4). Beck teaches that anti-7
inflammatory agents in the amount of 0.1% to about 5% enhance the skin 8
appearance and contribute to a more uniform and acceptable skin tone or 9
color. (Id. p. 5). 10
According to the Examiner, Beck teaches that useful anti-11
inflammatory agents include panthenol and its ether and ester derivatives, 12
including panthenol ethyl ether (ethyl panthenol), panthenyl triacetate; 13
pantothenic acid and salt and its ester derivatives, especially calcium 14
pantothenate. (Id.). The Examiner additionally found that Beck teaches that 15
panthenol, pantothenic acid and their ether, ester or salt derivatives and 16
mixtures thereof are particularly preferred, in an amount of about 0.1 to 17
about 5%, preferably from about 0.5 to about 3%. (Id.). 18
Guskey- Petrolatum as a Skin Irritation-Mitigating Material 19
The Examiner found that Guskey teaches low-irritation antiperspirant 20
and deodorant compositions comprising a volatile, nonpolar hydrocarbon 21
liquid and a skin irritation-mitigating material. (Final Rejection, Jan. 29, 22
2007, p. 5). The Examiner also determined that Guskey teaches that the 23
mitigating material reduces or eliminates skin irritation associated with the 24

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topical application the volatile, nonpolar hydrocarbon liquid from an 1
antiperspirant or deodorant composition. (Id.) 2
The Examiner found that Guskey teaches a mitigating material in the 3
amount of 1% to about 60%, preferably from about 5% to about 30%, more 4
preferably from about 5% to about 10%. (Final Rejection, Jan. 29, 2007, p. 5
5). According to the Examiner, Guskey describes that the skin mitigating 6
material includes any material effective in reducing skin irritation due to the 7
hydrocarbon and providing emolliency such as petrolatum. The Examiner 8
also found that Guskey teaches that petrolatum is the most preferred non-9
silicone occlusive material. (Id. pp. 5-6). 10
The Combination of Brenner, Beck and Guskey 11
The Examiner concluded that it would have been obvious to one of 12
ordinary skill in the art at the time of invention to combine the teachings of 13
Brenner and Beck, substituting Brenner’s pantothenic acid derivative with 14
the claimed panthenyl triacetate. The Examiner determined that motivation 15
for combining these teachings is provided by Beck’s teaching a skin care 16
composition for improving the appearance of skin and using ethyl panthenol 17
and panthenyl triacetate to enhance skin appearance by improving skin color 18
and tone. (Final Rejection, Jan. 29, 2007, p. 5). 19
The Examiner also determined that the prior art teaches that both 20
panthenol ethyl ether and panthenyl triacetate are functional equivalents in 21
improving skin tone and color so that a skilled artisan would have 22
reasonably expected similar results in substituting one for the other. (Final 23
Rejection, Jan. 29, 2007, pp. 5-6). The Examiner additionally found that a 24
skilled artisan would expect similar results from such substitution because 25

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Brenner teaches the use of pantothenic acid derivatives for their skin 1
enhancing effects of improving skin elasticity and metabolism. (Id.) 2
The Examiner stated that because Beck teaches using 0.5-3% 3
pantothenic acid derivatives in skin care compositions and Brenner teaches 4
using 2% panthenol ethyl ether in a composition applied to the skin, the 5
pantothenic acid derivatives would have the same effect. (Id. p. 6). 6
The Examiner also concluded that it would have been obvious to one 7
of ordinary skill in the art at the time the invention was made to combine the 8
volatile hydrocarbon-containing composition in Brenner with the petrolatum 9
described in Guskey and to use petrolatum in the amount claimed. (Final 10
Rejection, Jan. 29, 2007, p. 6). According to the Examiner, the motivation 11
for this combination is provided by Guskey’s teaching that petrolatum acts 12
as a skin mitigating material to reduce irritation cause by volatile 13
hydrocarbon. (Id.) 14
The Examiner further concluded that application of the 15
antiperspirant/deodorant composition under the arm would have been 16
obvious to one of ordinary skill in the art at the time the invention was made 17
obvious based upon Brenner’s teaching to apply the composition to the area 18
requiring perspiration control. (Final Rejection, Jan. 29, 2007, p. 6). 19
Similarly, the Examiner determined that Brenner inherently describes the 20
preamble “softening the hair and reducing the need for shaving” because 21
Brenner teaches a similar antiperspirant composition comprising the same 22
ingredients in the same proportion for the same underarm method of use. 23
(Id.). 24

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Finally, the Examiner found that one of ordinary skill in the art would 1
have combined the known ingredients for their known purpose, formation of 2
an antiperspirant with skin-care properties. Further, the Examiner found that 3
the prior art composition will have the claimed stability, as the suggested 4
prior art composition contains the same components in the same proportions 5
as that claimed by Appellants. (See Final Rejection, Jan. 29, 2007, p. 7). 6
The Examiner then concluded that the combined teachings of the prior art 7
provide a composition comprising all of the claimed components in the 8
claimed weight percents. (Id.). 9
The Appellants initially assert that the Examiner failed to establish a 10
prima facie case of obviousness in rejecting the claims as being unpatentable 11
over the combination of Brenner, Beck and Guskey because there is no 12
motivation or suggestion to combine the references. (Br. pp. 5-7). 13
Specifically, the Appellants argue that there is no motivation to 14
combine Beck’s teaching that panthenyl triacetate improves skin color and 15
tone with Brenner because “neither Brenner nor the rejected claims relate in 16
any way to improving skin color and tone,” as taught by Beck. (Id. p. 5). 17
Accordingly, the Appellants “disagree with the asserted motivation to 18
modify Brenner with the disclosure of Beck to arrive at the rejected claims.” 19
This argument is not persuasive. 20
First, we observe that the motivation to combine references need not 21
be identical to that of the applicants to establish obviousness. See In re 22
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Because Beck suggests an 23
advantage to be attained by the addition of anti-inflammatory agents, it is 24
valid to make the combination advanced by the Examiner, even if for a 25

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different purpose than that of the Appellants. Beck describes that an anti-1
inflammatory agent, such as panthenyl triacetate, “enhances the skin 2
appearance benefits” of the patented composition. Beck then describes that 3
an example of this enhancement is improved skin tone or color. By 4
describing this example, Beck does not limit its teachings of the benefits of 5
panthenyl triacetate to improved skin appearance. 6
Similarly, Brenner provides an additive to improve skin appearance. 7
Brenner describes an antiperspirant composition containing panthenol, or 8
one of its lower alkyl ethers, such as panthenol ethyl ether, as the additive. 9
Brenner describes that this panthenol additive increases skin metabolism 10
and/or skin elasticity. The fact that the additive in Brenner is described in a 11
different manner than the additive in Beck, does not negate the fact that both 12
additives were known in the art to improve the appearance of skin. As stated 13
in In re Fout, 675 F.2d 297, 301 (CCPA 1982), “Express suggestion to 14
substitute one equivalent for another need not be present to render such 15
substitution obvious.” The known properties of these additive taught by the 16
references would make it obvious to a person of ordinary skill in the art at 17
the time of the invention to select the panthenyl triacetate described by Beck, 18
as the additive to improve skin condition described by Brenner. 19
Moreover, it is evident from the references that these components are 20
well known skin treatment agents. The simple combination of these known 21
elements in a known manner and used in a known manner to provide the 22
claimed invention amounts to a predictable variation that can be 23
implemented by a person of ordinary skill. See KSR International Co. v. 24
Teleflex Inc., 127 S. Ct. 1727, 1740, (2007). Thus we do not find error with 25

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the Examiner’s conclusion that the prior art provides motivation to combine 1
these elements so as to establish a prima facie evidence of obviousness. 2
The Appellants additionally argue that the Examiner is incorrect in 3
finding that panthenol ethyl ether described by Brenner is functionally 4
equivalent to the panthenyl triacetate disclosed in Beck. The Appellants 5
urge that their specification established that these pantothenic acid 6
derivatives are not functionally equivalent with regard to “crystal formation 7
and off-odor formation in a composition comprising an antiperspirant 8
active.” (Br. p. 5). 9
Appellants’ contend that the data in its specification demonstrates that 10
panthenol ethyl ether and panthenyl triacetate are not functional equivalents. 11
(Br. p. 5, citing Specification, Comparative Data table, p. 17). We have 12
reviewed the data cited by Appellants, but do not find it persuasive for at 13
least the following reasons. 14
An appellant rebutting a prima facie case of obviousness may present 15
comparative test data showing that the claimed invention possesses 16
unexpectedly improved properties or properties that the prior art does not 17
have. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Appellants’ however, 18
have failed to explain how the comparative data presented in its specification 19
compares with the closest prior art. For example, the comparative data 20
states that both ethyl panthenol (aka, panthenol ethyl ether) and panthenyl 21
triacetate showed no visible crystal formation but ethyl panthenol showed 22
slight “off-odor” at 24 hours, whereas panthenyl triacetate did not. 23
(Specification 17:15-18). This showing represents a single data point 24
without any useful background information pertaining to that data point, 25

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e.g., how the data point compares with the closest prior art compositions 1
cited by the Examiner. Furthermore, no methodology for determining the 2
presence of “off odor” is presented. We are not informed what constitutes 3
an “off odor” and how it is determined. Given Appellants’ lack of guidance 4
as to the data in the specification, we are unable to state that the data point 5
represents a valid comparison with the closest prior art. 6
We also are not informed that the compositions were actually 7
manufactured and tested. The specification is unclear, given the examples 8
are all stated in the present tense and possibly prophetic. 9
Objective evidence of non-obviousness must be commensurate in 10
scope with the claims which the evidence is offered to support. In re 11
Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The composition tested 12
appears to have only 3% of a pantothenic acid derivative, whereas the claims 13
recite a range of about 0.01% to about 10%. Applicants do not explain how 14
three percent is representative of the claimed range. 15
Similarly, based upon the same specification data discussed, supra, 16
we conclude that the Appellants have not established that the Examiner erred 17
in finding motivation to combine the prior art based upon the functional 18
equivalency between pantothenic derivatives described in the prior art. 19
Thus, we do not find error with the Examiner’s conclusion that the 20
claimed invention would have been obvious in view of the combination of 21
Brenner, Beck and Guskey. 22
The Appellants next argue that a prima facie case of obviousness has 23
not been established because “Guskey does not teach the employment of 24
panthenyl triacetate.” (Br. p. 6). 25

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This argument is without merit. The Appellants cannot overcome an 1
obviousness rejection “by attacking references individually where the 2
rejection is based upon the teachings of a combination of references.” In re 3
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). It is the cited 4
combination of references which, when considered as a whole, discloses the 5
limitations of claim 2. Beck teaches the use of panthenyl triacetate. 6
Accordingly, the examiner did not err in determining that it would have been 7
obvious to one of ordinary skill in the art at the time of the invention to 8
combine the references to arrive at the claimed invention. 9
B. The Rejection of Claims 2, 4, 11, 13-14, 16, and 18 under 35 10
U.S.C. § 103(a) over the Combination of Trinh and Beck 11
Claims 2, 4, 11, 13-14, 16, and 18 stand rejected under 35 U.S.C. 12
§ 103(a) over the combination of Trinh and Beck. 13
The Examiner found that Trinh teaches a personal or cosmetic 14
composition with an enduring perfume in an emulsion form. (Final 15
Rejection, Jan. 29, 2007, p. 9). The Examiner also found that Trinh 16
specifically teaches a deodorant composition having 39.8% cyclomethicone 17
(carrier), 26% aluminum chlorohydrate, perfume, and other components. 18
Furthermore, the Examiner found that Trinh discloses the deodorant 19
composition in a solid or semi-solid form and the use of perfume to provide 20
a good odor to the body. The Examiner also found that Trinh also discloses 21
that the carriers for deodorant compositions, such as solid, semi-solid, and 22
aerosol forms, are well known in the art. (Id. p. 9-10). 23
The Examiner determined that Trinh teaches optional additives, 24
including, panthenol and its derivatives, such as ethyl panthenol, as soothing 25

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20
and skin healing agents. (Final Rejection, Jan. 29, 2007, p. 9). The 1
Examiner also found that Trinh teaches using 0.5-15% petrolatum as an 2
emollient in the composition. (Id. p. 10). Finally, the Examiner found that 3
Trinh does not specifically teach using panthenyl triacetate or using the 4
panthenol derivative in a deodorant composition. (Id.). The Appellants 5
have not challenged these findings in any meaningful way. 6
The Examiner concluded that it would have been obvious to one of 7
ordinary skill in the art at the time the invention was made to combine the 8
teachings of Trinh and Beck by using panthenyl triacetate. (Final Rejection, 9
Jan. 29, 2007, p. 10). The Examiner determined that Trinh’s teachings 10
provide motivation to use a pantothenic acid derivative in Trinh’s deodorant 11
composition to provide a deodorant that has skin healing and soothing 12
benefits. (Id.). 13
The Examiner also determined that Beck provides motivation to use 14
panthenol derivatives by teaching that panthenol derivatives, including 15
panthenol ethyl ether and panthenyl triacetate, improve skin color and tone. 16
(Id. pp. 10-11). The Examiner also noted that panthenol and its derivatives 17
are anti-inflammatory agents that heal skin by reducing inflammation and 18
redness. (Id. p. 11). Therefore, the Examiner determined that a skilled 19
artisan would have expected similar results in substituting panthenol ethyl 20
ether with its functional equivalent, panthenyl triacetate. (Id.). 21
The Examiner also determined that the recitation “wherein said 22
composition is stable after 24 hours” was inherently described by the 23
combination of Trinh and Beck because this combination comprises all the 24
claimed components in the instant weight percent. (Id.). 25

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21
Turning to the Appellants’ arguments, the Appellants urge that there 1
is no motivation to combine Beck’s teaching of the use of panthenyl 2
triacetate in a skin care composition with Trinh’s teaching of the use of 3
panthenol and its derivatives as soothing and skin healing agents because 4
“soothing and healing skin is not synonymous with improving skin tone and 5
color.” (Id.). The Appellants further argue that motivation to combine is 6
lacking because “neither Trinh nor the rejected claims relate in any way to 7
improving skin care and tone.” (Id.). 8
This argument is also not persuasive. As noted above, the motivation 9
to combine the references need not be the same one as the claimed 10
invention. Trinh describes benefits of soothing and healing of the 11
pantothenic acid derivatives, which alone provides sufficient motivation for 12
one of ordinary skill in the art to include them in a composition for use in a 13
method including applying them on the skin, alone or in combination with 14
aluminum-containing, antiperspirant compositions having a pantothenic acid 15
derivative known in the art at the time of the invention. 16
Accordingly, as the Appellants have not persuaded us of any error, we 17
affirm the Examiner’s rejections. 18
CONCLUSION OF LAW 19
On the record before us, the Appellants have not shown error on the 20
part of the Examiner. It would have been obvious to one of ordinary skill in 21
the art at the time the invention was made to combine the known elements of 22
the prior art for their known functions. 23
DECISION 24
The Rejection of claims 2, 4, 11, 13, 14, 16, and 18 under 35 U.S.C. 25

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22
§ 103(a) as being unpatentable over the combination of Brenner (US 1
4,055,634), Beck (US 6,551,604), and Guskey (US 5,976,514), and the 2
combination of Trinh (US 5,540,853) and Beck (US 6,551,604) is 3
AFFIRMED. 4
No time period for taking any subsequent action in connection with 5
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 6

AFFIRMED

The Procter & Gamble Company
Intellectual Property Division – West Bldg.
Winton Hill Business Center – Box 412
6250 Center Hill Avenue
Cincinnati, OH 45224