Ex Parte Schwartz

Patent Trial and Appeal Board

Jun 1, 2016

13028865 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/028,865 02/16/2011
27752 7590 06/03/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
James Robert Schwartz
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.
11618 9575
EXAMINER
HEYER, DENNIS
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
06/03/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ROBERT SCHWARTZ
Appeal2014-004086
Application 13/028,865 1
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an aerosol shave composition. Claims 1-11 and 15-17
are on appeal as rejected under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 The Real Party in Interest is The Procter & Gamble Company of
Cincinnati, Ohio. Br. 1.
Appeal2014-004086
Application 13/028,865
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim and reads as follows:
1. An aerosol shave composition comprising:
a. from about 0.01 % to 5% of a shave_anti-irritation[sic] agent
comprising pyrithione, a polyvalent metal salt of pyrithione or
a combination thereof;
b. from about 2% to about 25% of a water dispersible surface
active agent; and
c. from about 60% to about 93 % of a carrier comprising water.
Br. 4 (Claims Appendix).
The following grounds of rejection are on appeal:
A. Claims 1-7 and 16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Jeanjean. 2
B. Claims 8-11 and 17 rejected under 35 U.S.C. § 103(a) as
unpatentable over Jean jean, Spencer, 3 and Epstein. 4
2 International Pub. No. WO 2008/135361 A2 (published Nov. 13, 2008)
(hereinafter "Jeanjean"). During prosecution the Examiner indicated that the
U.S. Pub. No. US 2010/0129468 Al (published May 27, 2010) of Jeanjean
was relied upon as an equivalent English language translation. Non-Final
Action 6 (dated Jan. 10, 2013). Like the Examiner, herein we also cite to the
U.S. published version of this application. This published application issued
as U.S. Patent 8,372,440 B2 on Feb. 12, 2013
3 Thomas S. Spencer, Dry Skin and Skin Moisturizers, 6 CLINICS IN
DERMATOLOGY 24--28 (July-Sept. 1988) (hereinafter "Spencer").
4 U.S. Patent 5,759,558 to Epstein et al. (issued June 2, 1998) (hereinafter
"Epstein").
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Appeal2014-004086
Application 13/028,865
C. Claim 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Jeanjean and Coffindaffer. 5
FINDINGS OF FACT
FFI. The appealed claims are directed to a composition. Br. 4--5.
FF2. Jeanjean disclosed a composition in the form of an emulsion
that can be expanded by an aerosol dispenser, useful as a medical and
cosmetic application, e.g., as a topical treatment for seborrheic dermatitis of
the scalp and face. Jeanjean Abstract, i-fi-f l-2; see also Final Action 4--7
(discussing Jean jean).
FF3. Jeanjean disclosed the symptoms of seborrheic dermatitis
include itchiness and burning. Jeanjean i14.
FF4. Jeanjean disclosed an example embodiment comprising 0.5-2%
(% as grams of 1 OOg) zing pyrithione, 3-30% ethoxylated oleic alcohol I
ethoxylated glyceryl cocoate I ethoxylated hydrogenated castor oil
(surfactants), and 9-79.9% demineralized water. Jeanjean i157-84; see also
Final Action 4--7 (discussing Jeanjean).
FF5. Jeanjean disclosed zinc pyrithione contributes to soothing of
skin irritations. Jeanjean i-fi-f 15 and 93; see also Final Action 4 (discussing
Jeanjean).
DISCUSSION
We address all rejections together because Appellant's arguments on
appeal hinge on one common allegation, which is that Jeanjean fails to
5 U.S. Patent 5,624,666 to Coffindaffer et al. (issued Apr. 29, 1997)
(hereinafter "Coffindaff er").
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Appeal2014-004086
Application 13/028,865
disclose or suggest an aerosol shave composition with a shave anti-irritation
agent (as in current independent claim 1). Br. 2. As a fallback to this
argument, Appellant also argues that the Specification provides evidence of
unexpected results so as to overcome a prima facie case for obviousness.
The only difference between a "shave" composition and Jeanjean's
topical composition for application to the face is the intended use associated
with shaving. However, a "mere statement of a new use for an otherwise old
or obvious composition cannot render a claim to the composition
patentable." In re Zierden, 411F.2d1325, 1328 (CCPA 1969). Moreover,
"the discovery of a previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art's functioning,
does not render the old composition patentably new to the discoverer .... "
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347-1348 (Fed. Cir. 1999).
Here, Jeanjean discloses the same composition components as the
appealed claims in overlapping amounts. See FF4. Whether the reference
identifies the recited function of use in shaving or shaving irritation
mitigation changes nothing because assigning different functional labels to
these components does not change their chemical and physical nature.
On the issue of whether Appellant has shown evidence of unexpected
results to overcome the Examiner's prima facie case for obviousness, we
find that he has not. "[I]t is well settled that unexpected results must be
established by factual evidence. 'Mere argument or conclusory statements
in the specification does not suffice."' In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984)).
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Appeal2014-004086
Application 13/028,865
The entirety of the alleged evidence proffered by Appellant for
unexpected results amounts to a statement in the Specification that, while
not wishing to be bound by theory, the Applicant believed the disclosed
compositions including zinc pyrithione reduced irritation and resulted in an
improved shaving experience. We are not persuaded.
For the reasons discussed above, the rejections of claims 1-11 and
15-17 under 35 U.S.C. § 103(a) are affirmed.
SUMMARY
The rejection of claims 1-7 and 16 under 35 U.S.C. § 103(a) over
Jeanjean is affirmed.
The rejection of claims 8-11 and 17 under 35 U.S.C. § 103(a) over
Jeanjean, Spencer, and Epstein is affirmed.
The rejection of claim 15 under 35 U.S.C. § 103(a) over Jeanjean and
Coffindaffer is 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
5