Ex Parte Simon

Board of Patent Appeals and Interferences

May 24, 2010

11303961 (B.P.A.I. May. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PASCAL SIMON
__________

Appeal 2010-000827
Application 11/303,961
Technology Center 1600
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Decided: May 25, 2010
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Before DONALD E. ADAMS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic or dermatological article comprising a water-soluble medium. The
Patent Examiner rejected the claims for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The Specification states that “[a]rticles comprising a flexible medium
that is insoluble in water, and a cosmetic composition that is carried by the
medium, also known as ‘wipes,’ are in widespread use, in particular for
removing makeup.” (Spec. p. 1, ll. 12-15). The invention provides a
medium with a density not greater than 0.1 g/cm3, “mak[ing] it easier to
dissolve in water.” (Id. at p. 5, ll. 33 - p. 6, ll. 1-2).
Claims 1, 3-8, 11-25, 28-40 are on appeal. Claim 1 is representative
and reads as follows:
1. A cosmetic or dermatological article comprising:
a medium comprising at least one sheet of a material that is
soluble in water at a temperature lower than 20°C; and
at least one of a cosmetic and a dermatological compound
carried by the medium;
wherein the medium has a density that is not greater than
0.1 g/cm3.

The Examiner rejected the claims as follows:
• claims 1, 3-8, 11-25, 28-29, 31, 33-38 and 40 under 35 U.S.C.
§ 103(a) over Kamiya1, Niinaka2 and Takeuchi3; and
• claims 30, 32 and 39 under 35 U.S.C. § 103(a) over Kamiya,
Niinaka, Takeuchi and Bara4.

1 US Patent No. 5,780,047 issued to Kamiya et al., Jul. 14, 1998.
2 US Patent No. 5,780,418 issued to Niinaka et al., Jul. 14, 1998.
3 US Patent No. 6,258,210 B1 issued to Takeuchi et al., Jul. 10, 2001.
4 US Patent No. 6,565,862 B1 issued to Bara, May 20, 2003.

Appeal 2010-000827
Application 11/303,961

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OBVIOUSNESS
The Issue
The Examiner’s position is that Kamiya taught a patch comprising a
containing a water-soluble adhesive sheet and a water-soluble protective
material laminated thereon. (Ans. 5). The Examiner found that Kamiya
disclosed that the water-soluble patch may contain additional components
such as dyes, pigments, inorganic compounds, surfactants and fine powers.
(Id. at 5-6). The Examiner also found that Kamiya disclosed that the water-
soluble protective material can range in thickness from 1 µm to 3000 µm,
which is equivalent to 0.001 mm to 3 mm. (Id.) Additionally, the Examiner
found that Kamiya disclosed examples having a fabric thickness of 280 µm
with a Metsuke of 50 g/m2 and other examples having a thickness of 170 µm
with a Metsuke of 25 g/m2. (Ans. 10). The Examiner reasoned that because
density is equal to Metsuke divided by thickness, Kamiya taught densities of
0.147 g/cm3 and 0.179 g/cm3. (Id.) However, the Examiner found that
Kamiya did not teach that the medium has a density that is not greater than
0.1 g/cm3. (Id. at 6).
The Examiner found that Takeuchi taught the production of water-
decomposable fibrous sheet with Metsuke between 20-100 g/m2. (Id.) The
Examiner also found that Takeuchi taught the preferred weight of the fibrous
web for the fibrous sheet is between 20-100 g/m2 to ensure that the sheet has
the necessary wet strength and flexibility. (Id.) Additionally, the Examiner
found that Takeuchi taught that for application to human skin, the weight of
the sheet is more preferably from 30-70 g/m2 to provide both wet strength
and the soft feel of the sheet. (Id. at 7).
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According to the Examiner, it would have been obvious for a person
of ordinary skill in the art at the time the invention was made to optimize
and find materials of various densities, including those having a density of
not greater than 0.1 g/m3 because Kamiya taught water-soluble fibers within
a thickness range of 0.001 mm - 3 mm and Takeuchi taught certain densities
are preferred for proper flexibility and strength. (Id.)
Appellant contends that the rejection improperly combines Kamiya
and Takeuchi because “the two references differ in their ‘structure and
function’ such that they are not analogous.” (App. Br. 18). Appellant also
asserts that the combination does not teach or suggest that the medium has a
density that is not greater than 0.1 g/cm3 or less, as claimed. (Id.)
According to Appellant, the Examiner misinterpreted the teachings of
Takeuchi and combined and modified the cited references based upon
impermissible hindsight reasoning. (Id. at 19-20). Appellant also asserts
that the Examiner has not established that the claimed density value is a
result effective variable and that a skilled artisan would have no reason to
optimize the density value of Kamiya in view of Takeuchi. (Id. at 21-24).
The issue with respect to this rejection is whether it would have been
obvious for a person of ordinary skill in the art at the time the invention was
made to optimize and combine the known elements of the prior art for their
known functions to arrive at the claimed cosmetic or dermatological article
comprising a medium having a density that is not greater than 0.1 g/cm3.

Findings of Fact
1. Kamiya disclosed a patch comprising a water-soluble adhesive sheet
and a water soluble protective material laminated thereon which can be
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applied to the skin to relieve topical symptoms. (Kamiya Abstract, col. 2, ll.
14-17).
2. Kamiya disclosed that the water-soluble patch may contain additional
components such as drugs, dyes, pigments, vitamins, perfumes, enzymes,
oils and various inorganic compounds. (Id. at col. 6, ll. 59-67).
3. Kamiya disclosed that its water-soluble protective material can range
in thickness from 1 µm to 3000 µm (id. at col. 6, ll. 22-23) which is
equivalent to 0.001 mm to 3 mm.
4. Kamiya’s examples 1, 2 and 5 disclosed using a fabric having a
thickness of 280 µm with a Metsuke of 50 g/m2. (Id. col. 12, ll. 1-4, Ex. 1,
2, and 5).
5. Appellant and Examiner agree that density is equal to Metsuke
divided by thickness. (Ans. 10, App. Br. 12).
6. Kamiya’s examples 1, 2 and 5 had a density of 0.179 g/cm3. (FF 4,
5).
7. Kamiya’s examples 11-19 disclosed using a fabric having a thickness
of 170 µm with a Metsuke of 25 g/m2. (Kamiya at col. 14, ll. 18-21, Ex. 11-
19).
8. Kamiya’s examples 11-19 had a density of 0.147 g/cm3. (FF 5, 7).
9. Kamiya did not teach that the fabric had a density that is not greater
than 0.1 g/cm3.
10. Takeuchi disclosed a water-decomposable fibrous sheet usable as a
wet tissue for application to human skin as a wipe and in absorbent articles
such as sanitary napkins and disposable diapers. (Takeuchi Abstract; col.
17, ll. 48-51; col. 18, ll. 1-4).
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11. Takeuchi disclosed that the fibrous sheets of its invention may contain
deodorants, moisturizers, and other substances. (Id. at col. 17, ll. 41-46).
12. Takeuchi taught the preferred weight of the fibers constituting the
fibrous sheet falls between 20-100 g/m2 to ensure that the sheet has the
necessary wet strength and flexibility. (Id. at col. 3, ll. 43-45; col. 11: 4-7).
13. Takeuchi stated, “If its weight is smaller than the lowermost limit of
the defined range, the sheet could not have the necessary wet strength. If …
larger … the sheet will be not flexible.” (Id. col. 11, ll. 8-11).

Principles of Law
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
Determining the optimum values of result effective variables is
ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276
(CCPA 1980).

Analysis
We disagree with Appellant that the Kamiya and Takeuchi represent
non-analogous art such that the references are not properly combinable.
(See App. Br. 18). Specifically, Appellant asserts that Kamiya’s patch is
directed to relieving topical symptoms such as stiff neck and is designed to
dissolve in water and release a substance, while Takeuchi’s fibrous sheets
are for use in sanitary napkins or clean wipes and are designed to absorb
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fluid. (App. Br. 17-18). However, both references address water-soluble or
water-decomposable materials designed to be applied to human skin. (FF-1,
10). In particular, Takeuchi disclosed that its invention may be usable as an
absorbent article and also may contain deodorants and moisturizers and be
used as a wet tissue for application to human skin as a wipe. (FF-10, 11).
Therefore, we do not find that Takeuchi is limited to absorbent articles, but
also discloses a use in which substances such as deodorants and moisturizers
on a wipe are intended for transfer, i.e., “release” onto the skin.
Consequently, we find that Takeuchi is reasonably pertinent to
Kamiya such that, “even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem.” Clay, 966 F.2d at 659.
We are also not persuaded that a person of ordinary skill in the art at
the time the invention was made would not have found it obvious to
combine the teachings of Kamiya and Takeuchi to arrive at a water-soluble
patch comprising a medium having a density that is not greater than 0.1
g/cm3. Kamiya disclosed a patch comprising a water-soluble protective
material that can range in thickness from 1 µm to 3000 µm, i.e., 0.001 mm
to 3 mm. (FF-3). In particular, Kamiya disclosed examples using material
having a thickness of 280 µm with a Metsuke of 50 g/m2. (FF-4). In other
examples, Kamiya disclosed material of having a different thickness and a
Metsuke of 25 g/m2. (FF-7). Therefore, Kamiya taught that the thickness
and Metsuke, i.e., weight per area, for the water-soluble material of its
invention may be varied. It would have been obvious and within the
ordinary skill in the art through routine experimentation for an artisan at the
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time of the invention to combine Kamiya’s material having a thickness of
280 µm with the alternate Metsuke of 25 g/m2 disclosed in Kamiya. See In
re Boesch, 617 F.2d 272, 276 (CCPA 1980). This modification would have
resulted in a patch comprising a medium having a density (Metsuke divided
by thickness, FF-5) not greater than 0.1 g/cm3, i.e., 0.089 g/cm3.
Moreover, Takeuchi disclosed a water-decomposable fibrous sheet
comprising fibers having a preferred Metsuke between 20-100 g/m2 to
ensure that the sheet has the necessary wet strength and flexibility. (FF-10,
12). Takeuchi taught the importance of this range by stating that if the
“weight is smaller than the lowermost limit of the defined range, the sheet
could not have the necessary wet strength[, and if larger,] the sheet will be
not flexible.” (FF-13). Therefore, Takeuchi taught that the optimal
lowermost limit for the Metsuke range was 20 g/m2. It would have been
obvious, through routine experimentation, to modify Kamiya’s examples 1,
2 and 5 by using the lowermost limit for the Metsuke, as taught by Takeuchi
to use the least weight that still provides the necessary wet strength. Doing
so, while keeping the thickness at Kamiya’s disclosed 280 µm, would have
resulted in a medium having a density that is not greater than 0.1 g/cm3.
Thus, optimizing the Metsuke of Kamiya’s medium, as taught by Takeuchi
would have resulted in the claimed density range.
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As discussed, the combined references suggested a medium having a
thickness and Metsuke resulting in the claimed density range and it would
have been obvious to one of ordinary skill in the art at the time of the
invention to combine the references to yield the claimed invention.
Appellant has not raised separate arguments for the rejections of
claims 1, 3-8, 11-25, 28-40, therefore these claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
It would have been obvious for a person of ordinary skill in the art at
the time the invention was made to optimize and combine the known
elements of the prior art for their known functions to arrive at the claimed
cosmetic or dermatological article comprising a medium having a density
that is not greater than 0.1 g/cm3.

SUMMARY
We affirm the rejection of claims 1, 3-8, 11-25, 28-29, 31, 33-38 and
40 under 35 U.S.C. § 103(a) over Kamiya, Niinaka, and Takeuchi; and
we affirm the rejection of claims 30, 32 and 39 under 35 U.S.C.
§ 103(a) over Kamiya, Niinaka, Takeuchi and Bara.
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

Appeal 2010-000827
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