Ex Parte Schulz et al

Patent Trial and Appeal Board

Oct 21, 2013

10574231 (P.T.A.B. Oct. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ULRIKE SCHULZ and GORDON CHRIST1
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Appeal 2012-004054
Application 10/574,231
Technology Center 1600
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Before TONI R. SCHEINER, JOHN A. EVANS, and
SUSAN L.C. MITCHELL, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 34-57, directed to a cosmetic or dermatological preparation. The
claims have been rejected on the grounds of anticipation, obviousness, and
non-statutory obviousness-type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b).

1 Appellants identify the Real Party-In-Interest as Beiersdorf AG of
Hamburg, Germany (App. Br. 3).
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STATEMENT OF THE CASE
Claims 34-57 are pending and on appeal. Claims 34 and 49 are
representative:
34. A cosmetic or dermatological formulation, wherein the formulation is
transparent and comprises (a) at least one antiperspirant active ingredient,
(b) mandelic acid and (c) water, (a), (b) and (c) being present in ratios which
result in gelling.
49. A cosmetic or dermatological antiperspirant formulation, wherein the
formulation is free from zirconium containing antiperspirant active
ingredients and transparent and comprises (a) an antiperspirant active
ingredient which comprises one or more aluminum salts, (b) at least one α-
hydroxycarboxylic acid and (c) water, (a), (b) and (c) being present in ratios
which result in gelling.
The Examiner relies on the following evidence:
Williams et al. GB 2 280 111 A Jan. 25, 1995
Guskey et al. US 5,776,494 Jul. 7, 1998
Bhakoo et al. US 2003/0059396 A1 Mar. 27, 2003
Hei et al. US 6,593,283 B2 Jul. 15, 2003
Claims 49, 50, and 53 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Williams (Ans. 5), while claims 34-57 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Guskey, Bhakoo, and Hei (Ans. 6-10).
In addition, claims 34-36, 38-45, and 47 stand provisionally rejected
under the doctrine of obviousness-type double patenting over claims 46-56
and 64 of copending Application No. 10/574,219 (Ans. 11), and over claims
43, 51-53, 56-59, 64, 75, and 81 of copending Application No. 11/586,585
(Ans. 11-12).
We reverse the anticipation and obviousness rejections and affirm the
non-statutory obviousness-type double patenting rejections.
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ANTICIPATION
Claims 49, 50 and 53 stand rejected as anticipated by Williams.
Claim 49 is directed to a transparent antiperspirant formulation, and requires
“(a) an antiperspirant active ingredient which comprises one or more
aluminum salts, (b) at least one α-hydroxycarboxylic acid and (c) water, (a),
(b) and (c) being present in ratios which result in gelling.”
Findings of Fact
1. Williams discloses “a stable, clear antiperspirant composition
having an antiperspirant active, a dihydric alcohol as a primary solvent, a
cosolvent such as low molecular weight polyethylene glycol . . . , water,
and/or glycerine, a buffering agent, and a gelling agent” (Williams 2: 3-8).
2. According to Williams, “[w]hen water is present in the
composition, there must be sufficient gelling agent to cause the composition
to solidify at a temperature of less than or equal to about 90°C so that the
water does not boil off during processing” (Williams 5: 30-34). “The gelling
agent is preferably . . . dibenzylidene sorbitol resin” (id. at 7: 17-21).
3. Williams discloses a clear gel antiperspirant stick containing, in
relevant part, aluminum chlorohydrex (an antiperspirant active), propylene
glycol, glycerine, triethanolamine, dibenzylidene sorbitol (a gelling agent),
water, and lactic acid (Williams 3: 33-35; 17: 3-26; Example 9).
Discussion
The Examiner finds that “the antiperspirant, acid, and water are
present in a ratio that resulted in gelling” in Williams’ Example 9 (Ans. 5),
“[s]ince the composition is taught as a gel” (id.).
Appellants contend, in relevant part, that the claims require “that the
three components recited in claim 49 are present in ratios which result in
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gelling” (App. Br. 10), while the composition of Williams’ Example 9
“would be a gel even if aluminum chlorohydrex, lactic acid and water are
present therein in ratios which (alone) do not result in gelling” (id.), because
“the composition contains 3 % by weight of dibenzylidene sorbitol, i.e., a
substance which is expressly mentioned in WILLIAMS as the preferred
gelling agent for use in clear gel antiperspirant compositions” (id.).
Moreover, Appellants contend that “the Examiner’s allegation that in
the composition of Example 9 of WILLIAMS aluminum chlorohydrate,
lactic acid and water (necessarily) are present in ratios which result in
gelling is . . . speculation that is not supported by any evidence” (id. at 13),
especially as the Examiner “has not identified any composition of
WILLIAMS that contains components (a), (b) and (c) recited in the rejected
claims in concentrations and ratios at least similar to those exemplified in
the present specification” (id.).
In a nutshell, we agree with Appellants that one of ordinary skill in the
art would understand the claims “to mean that even in the absence of any
additional gelling agents components (a), (b) and (c) by themselves result in
(are responsible for, cause, etc.) a gelling of the composition” (id. at 14), and
that the Examiner has not established a factual basis “for the assumption that
the composition of Example 9 would have been a gel even without the
presence . . . of dibenzylidene sorbitol therein” (id. at 12).
Finally, to the extent the Examiner newly “interpret[s] ‘being present
in ratios which result in gelling’ as [merely requiring components (a), (b),
and (c)] ‘being present in ratios which thicken the composition’” (Ans. 12-
13), we are not persuaded. According to the Examiner, “‘Gel’ when used as
a verb means no more than ‘to thicken’” (id. at 12). However, the only
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support offered for this interpretation is the Specification’s teaching that the
combination of an antiperspirant active ingredient, an α-hydroxycarboxylic
acid, and water “gels to afford a transparent, viscous to pasty formulation”
(Spec. 3: 12-14). Nevertheless, the mere fact that a gel may by viscous or
pasty is not evidence that one of ordinary skill in the art would consider any
viscous or pasty formulation (e.g., a milkshake or wet cement) to be a gel.
Nor has the Examiner established that one of ordinary skill in the art would
have considered the myriad references to gelling in the Specification to refer
to nothing more than thickening.
Accordingly, the rejection of claims 49, 50, and 53 as anticipated by
Williams is reversed.
OBVIOUSNESS
Claims 34-57 stand rejected as unpatentable over Guskey, Bhakoo,
and Hei. Claim 34 is directed to a transparent dermatological formulation,
and requires “(a) at least one antiperspirant active ingredient, (b) mandelic
acid and (c) water, (a), (b) and (c) being present in ratios which result in
gelling.”
Findings of Fact
4. Guskey discloses “compositions useful as carriers for
pharmaceutical actives such as antiseptics, antifungals, sunscreens,
deodorants and the like” (Guskey, col. 1, ll. 7-9), wherein the compositions
are “in the form of a gel or stick” (id. at col. 1, ll. 10-11).
5. Guskey’s compositions comprise a gelling agent, an anhydrous
liquid carrier (Guskey, col. 2, l. 37; col. 3, l. 29), and a pharmaceutically
active agent (e.g., an exfoliating agent such as salicylic acid or mandelic
acid, or an antiperspirant active such as aluminum chlorohydrate or
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aluminum-zirconium chlorohydrate) (id. at col. 2, ll. 35-36; col. 5, ll. 34-50;
col. 7, ll. 29-36). Suitable gelling agents are “in the form of alkyl amides of
di- and/or tri-basic carboxylic acids or anhydrides” (id. at col. 7, ll. 48-50).
6. According to Guskey, “[t]he pharmaceutical gel compositions
of the present invention preferably contain less than about 5%, preferably
less than about 3%, more preferably less than about 1 %, most preferably
zero percent, by weight of free or added water” (Guskey, col. 10, ll. 29-33).
Discussion
The Examiner finds that Guskey discloses “a topical pharmaceutical
composition comprising at least one active agent, a gelling agent, and an
anhydrous solvent” (Ans. 7). The Examiner further finds that Guskey’s
composition can contain a mixture of active agents (including aluminum or
aluminum-zirconium chlorohydrate and mandelic acid), and “may contain
up to 5% water” (id.).
The Examiner acknowledges that Guskey does not “exemplify an
embodiment that contains the specific active agents” required by the claims
(id. at 8), but concludes that it would have been obvious “to formulate a
composition containing an antiperspirant and mandelic acid” (id. at 9),
because Bhakoo teaches that “malodor is the result of microorganisms” and
Hei teaches that “mandelic acid possesses antimicrobial properties” (id.). As
for the ratio of components require by the claims, the Examiner finds that
Guskey teaches that “the active agents . . . are present in a safe and effective
amount” and “it is . . . within the purview of the skilled artisan to determine
this safe and effective amount” (id. at 7), which “will establish the ratio of
the different active agents” (id.).
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Appellants contend that the claims “unambiguously recite . . . that
water is present in a ratio with respect to (a) at least one antiperspirant active
ingredient and (b) α-hydroxycarboxylic acid (mandelic acid) that results in
gelling” (App. Br. 20), “even in the absence of a (separate) gelling agent”
(id.). Thus, Appellants contend “it is not sufficient for components (a), (b)
and (c) to merely be comprised in a composition that is in the form of a gel”
(id.).
Appellants contend that even assuming, for the sake of argument, that
one of ordinary skill in the art would have had a reason to combine an
antiperspirant agent (e.g., aluminum chlorohydrate) and an exfoliating agent
(e.g., mandelic acid) in a single composition, “there would be no reason . . .
to adjust the amount of water with respect to antiperspirant active agent and
α-hydroxycarboxylic acid so that the ratio of these three components results
in gelling because the compositions of GUSKEY already contain a gelling
agent” (App. Br. 17, 19), and in any case, “GUSKEY teaches that . . . the
presence of water in these compositions is undesirable and should be
avoided” (id. at 17).
Appellants’ arguments are persuasive. The rejection of claims 34-57
as unpatentable over Guskey, Bhakoo, and Hei is reversed.
DOUBLE PATENTING
Claims 34-36, 38-45, and 47 stand rejected under the doctrine of non-
statutory obviousness-type double patenting over claims 46-56 and 64 of
copending Application No. 10/574,219 (Ans. 11), and over claims 43, 51-53,
56-59, 64, 75, and 81 of copending Application No. 11/586,585 (Ans. 11-
12).
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Appellants have acknowledged, but not otherwise addressed these
rejections (App. Br. 5-6). Accordingly, the rejections of claims 34-36, 38-
45, and 47 on the ground of non-statutory obviousness-type double patenting
are summarily affirmed.
SUMMARY
The rejection of claims 49, 50, and 53 as anticipated by Williams is
reversed.
The rejection of claims 34-57 as unpatentable over Guskey, Bhakoo,
and Hei is reversed.
The rejections of claims 34-36, 38-45, and 47 under the doctrine of
obviousness-type double patenting are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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