Ex Parte Shick et al

Board of Patent Appeals and Interferences

Jul 14, 2010

11579301 (B.P.A.I. Jul. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/579,301 11/01/2006 Reed A. Shick 63833A 3377
109 7590 07/14/2010
The Dow Chemical Company
P.O. BOX 1967
Midland, MI 48641
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
07/14/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte REED A. SHICK, CHRISTIAN PIECHOCKI, CHRISTOPHER J.
TUCKER and LETHA A. GATZ

Appellants
_________________

Appeal 2010-001413
Application 11/579,301
Technology Center 1600
_________________

Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and SALLY
C. MEDLEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode shown on the PTOL-90A cover letter attached to this decision.
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Application 11/579,301

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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134, is from a Final Rejection of claims
1-6, 9-15, and 18-23. Claims 7-8 and 16-17 were cancelled by Appellants.
(App. Br. 11-15, Claims App’x). We affirm.
Appellants’ specification is directed to perfumed compositions.
The Examiner relied on EP 0 842 606 (“Petri”) to reject claims 1-6, 9-
15, and 18-23 under 35 U.S.C. § 103(a).
Appellants’ claim 1 recites:
An ethanol- free, transparent, perfumed aqueous microemulsion
composition comprising:
(A) a fragrance material, wherein the fragrance material is
present in an amount greater than 5% and less than 50% by weight;
(B) a solvent, wherein said solvent is 1,2-hexanediol or 1,2-
heptanediol;
(C) an aqueous medium; and
(D) optionally, one or more surfactants,
wherein the weight ratio between the fragrance material and the
surfactant, if present, is from 1:1 to 10:1.

(App. Br. 11, Claims Appx). Though Appellants do not provide a clear
subheading identifying separately argued claims by number, as required
under our rules, see 37 C.F.R. § 41.67(c)(vii), they separately discuss
independent claims 14, 15, and 21, as well as dependent claim 18 in their
Brief. We focus on claim 1 and claims 14, 15, 18, and 21 in our review.
II. FINDINGS OF FACT
1. Petri relates to disinfectants to be applied to human skin, as
well as to walls and floors. (Petri ¶ [0001]).
2. Petri teaches a microemulsion comprising a surfactant and an
aqueous phase containing essential oils. (Petri ¶ [0013]).
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3. Petri teaches that the microemulsion comprises from 0.01% to
40% by weight of surfactant. (Petri ¶ [0031]).
4. Petri teaches that essential oils are 0.005% to 5% by weight of
the total microemulsion. (Petri ¶ [0027]).
5. Petri teaches that the essential oil may be of many different
natural plant products, including orange, rose, and peppermint, which would
all be fragrant, “impart[ing] pleasant odor.” (Petri ¶¶ [0023] and [0024]).
6. Appellants’ specification includes these essential oils as
fragrance materials. (Spec. p. 4, ll. 10-17).
7. The range of percentage by weight of the essential oils and
surfactants taught in Petri encompasses the claimed weight ratios of from 1:1
to 10:1. (See App. Br. 6, FN 3 (explaining that the range of ratios of
essential oil to surfactant taught in Petri is from 0.000125:12 to 500:1)).
8. Petri teaches that the microemulsions may include a
hydroxylated solvent to promote the formation of microemulsion (Petri
¶¶ [0060] and [0061]), wherein glycols are provided as one of several
possible hydroxylated solvents (id. ¶ [0063]), and 1,2-hexanediol is provided
as one of several possible glycols (id. ¶ [0071]).
III. ISSUES AND ANALYSIS
Like the claimed microemulsion composition, Petri teaches a
microemulsion composition that may be used on human skin and includes
fragrant material, 1,2-hexanediol, an aqueous medium, and surfactant.
(FFs 2, 5, and 8; Petri ¶¶ [0013], [0023], [0024], and [0071]).

2 Appellants’ calculation of the lower limit of the range of ratios as
0.0000125:1 is in error because 0.005%/40% equals 0.000125.
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The first issue is whether Petri would have rendered obvious the
claimed amount of fragrance material. Appellants argue that Petri does not
teach a microemulsion composition comprising fragrance at “greater than
5%” by weight, as claimed, because Petri teaches including fragrant
essential oils “from 0.005% to 5% by weight” of the total microemulsion.
(App. Br. 4; FF 4; Petri ¶ [0027]). Prior art ranges that are very close to a
claimed range may render the claimed range obvious because those in the art
would have expected the same properties from the prior art amount. See
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783(Fed. Cir. 1985)
(holding a claim to an alloy of "having 0.8% nickel, 0.3% molybdenum, up
to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys
of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel,
0.31% molybdenum, balance titanium). In view of Petri’s teaching of 5%
fragrance, one skilled in the art would have had sufficient reason to use
“greater than 5%” with an expectation that “greater than 5%” would yield
essentially the same properties as “5%”. Appellants have not persuaded us
that those of skill in the art would consider “5%” fragrance and “greater than
5%” fragrance to be so different that the former would not have rendered the
latter obvious. Similarly, one skilled in the art viewing Petri would have had
reason to use 6% fragrance with an expectation of obtaining the same result.
Appellants have not shown that “equal to or greater than 6%” fragrance, as
recited in claim 18 (see App. Br. 4 and 14), is so different from 5%
fragrance that those in the art would not have had sufficient reason to use,
e.g., 6% fragrance.
The second issue is whether Petri renders the claimed ratios of
fragrance material to surfactant obvious. Appellants argue that the Examiner
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erred in relying on optimization to show that Petri teaches a “weight ratio
between the fragrance material and the surfactant, if present, . . . from 1:1 to
10:1.” (App Br. 5-8 and 11-15, Claims App’x). According to Appellants,
because the range taught in Petri is “staggeringly broad,” from 0.000125:1 to
500:1 (FF 7; App. Br. 6, FN 3), those in the art would not have arrived at the
claimed range of ratios. Appellants assert that those in the art would have
chosen larger amounts of surfactant because it would make a better cleaning
solution and that such large amounts of surfactant are undesirable when
sprayed on human skin. (App. Br. 7 (citing Spec. p. 1, l. 26, through p. 2,
l. 1)).
Petri specifically teaches that the microemulsion composition taught
can be used on human skin (FF 1; Petri ¶ [0001]) and specifically teaches
that the choice of surfactant may be influenced by factors such as mildness
on skin (see Petri ¶ [0039]). Thus, unlike the facts of In re Baird, 16 F.3d
380 (Fed. Cir. 1994), we do not find Petri to “indicate[] a preference leading
away from the claimed [composition],” id. at 383, and are not persuaded that
those of skill in the art would have optimized the ratio of essential oils to
surfactant only for uses of the claimed microemulsion composition other
than those on the skin.3
Furthermore, Petri teaches that the amounts of essential oil and
surfactant, and therefore the ratio of these components, are result effective
variables by teaching that different amounts are more preferable over others
for imparting a pleasant odor, as well as providing antimicrobial and

3 In addition, the scope of Appellants’ claims 1 and 14, if not claim 15 as
discussed elsewhere in this opinion, encompasses household cleaners and air
fresheners. (See Spec. p. 1, ll. 6-7, and p. 11, ll. 5-8).
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antibacterial activity. (See Petri ¶¶ [0023], [0027], and [0031]). Regardless
of the size of the range taught in the prior art, “discovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Appellants have not shown that the claimed range of ratios is “unexpectedly
good” or critical, see id., thus Appellants have not persuaded us that those of
skill in the art would not have had reason to arrive at the claimed range.
The third issue is whether Petri teaches “cosmetic active ingredients”
as recited in Appellants’ claim 14. (App. Br. 5). Appellants’ claim 14
recites:
An ethanol-free, transparent, perfumed aqueous
microemulsion composition comprising:
(A) a fragrance material;
(B) a solvent, wherein said solvent is 1,2-hexanediol or
1,2-heptanediol;
(C) an aqueous medium;
(D) optionally, one or more surfactants, wherein the
weight ratio between the fragrance material and the surfactant,
if present, is from 1:1 to 10:1; and
(E) one or more additional ingredients selected from the
group consisting of antioxidants, UV filters, cosmetic active
ingredients, moisturizers, humectants, emollients, opacifiers,
pearly gloss impacting substances, and antifoams.

(App. Br. 13, Claims App’x). According to Appellants, claim 14 specifies
personal care ingredients, which are not taught in Petri. (App. Br. 5).
Appellants do not point to and we do not find a definition of “cosmetic
active ingredients” in Appellants’ specification. “During examination,
‘claims ... are to be given their broadest reasonable interpretation consistent
with the specification, and ... claim language should be read in light of the
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specification as it would be interpreted by one of ordinary skill in the art.’”
In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). Petri teaches that
pigments, dyes, and antimicrobials can be included in the composition
taught. (Petri ¶ [0078]). We agree that those skilled in the art would have
considered pigments, dyes, and antimicrobials to fall within the broad
category of “cosmetic active ingredients.” Appellants have not directed us
to evidence to the contrary. Accordingly, the Examiner did not err in
rejecting claim 14.
The fourth issue is whether the Examiner erroneously failed to give
patentable weight to certain claim phrases. (App. Br. 8-10). Appellants
argue that Petri fails to teach a “cosmetic composition,” as recited in claim
154, because the compositions of Petri include bleach, which, according to
Appellants, would not be included in a cosmetic by one skilled it the art.
(App. Br. 9). Appellants do not provide evidence to support whether or not

4 Claim 15 recites:
An ethanol-free, transparent, perfumed aqueous
microemulsion composition comprising:
(A) a fragrance material;
(B) a solvent, wherein said solvent is 1,2-hexanediol or
1,2-heptanediol;
(C) an aqueous medium; and
(D) optionally, one or more surfactants, wherein the
weight ratio between the fragrance material and the surfactant,
if present, is from 1 : 1 to 10 : 1,
the composition being a cosmetic composition.

(App. Br. 14; Claims App’x).

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those of skill in the art would have considered bleach to be included in a
“cosmetic composition.” See Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977) (“Argument of counsel cannot take the place of evidence
lacking in the record.”). Appellants do not point to, and we do not find, a
definition of a “cosmetic composition” in Appellants’ specification.
Appellants have not provided sufficient evidence that a “cosmetic
composition” differs structurally from a composition with the components
recited in claim 15, and thus is not merely a statement of intended use. “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, 411
F.2d 1325, 1328 (Fed. Cir. 1969).
Similarly, we are not persuaded by Appellants’ argument that the
Examiner erroneously failed to give weight to the phrase “wherein the
product is not a refreshing and cleaning wet towel or a household cleaner” in
claim 21. Petri does not require that the microemulsion composition taught
must be provided on a towel or be a household cleaner. (App. Br. 9-10; see
App. Br. 15, Claims App’x). Appellants do not provide sufficient evidence
that the components of the composition recited in claim 21 are not taught in
Petri.
Accordingly, the Examiner did not err in denying these limitations
patentable weight.
IV. ORDER
Upon consideration of the record and for the reasons given, the
rejection of claims 1-6, 9-15, and 18-23 under 35 U.S.C. § 103(a) over Petri
is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
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cc:

The Dow Chemical Company
Intellectual Property Section
P.O. Box 1967
Midland, MI 48641-1967