Ex parte SLAVTCHEFF

Board of Patent Appeals and Interferences

Sep 23, 1997

08099880 (B.P.A.I. Sep. 23, 1997)

Application for patent filed July 30, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CRAIG S. SLAVTCHEFF
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Appeal No. 95-3981
Application 08/099,8801
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ON BRIEF
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Before STONER, Chief Administrative Patent Judge, and WINTERS and WILLIAM F.
SMITH, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 4, 5,
7, and 8. Subsequently, the examiner withdrew the rejection of claims 4 and 5
indicating that these claims would be allowable if placed in independent form. This
leaves claims 1, 7, and 8 for our consideration.
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
Appeal No. 95-3981
Application 08/099,880
The examiner has not determined the publication date of this carton. Thus, it2
is not apparent on what basis the examiner concluded it is prior art against the claims
on appeal. Be that as it may, appellant has not disputed that the information contained
on the carton which is relied upon by the examiner is prior art. For the purposes of this
appeal, we have considered that information.
2
1. A composition for forming a peelable cosmetic mask comprising:
(i) a polyvinyl alcohol polymer having a number average molecular weight
ranging from about 5,000 to about 200,000; and
(ii) a hydrophobically-modified acrylate or methacrylate polymer, the polyvinyl
alcohol and hydrophobically-modified acrylate or methacrylate polymer being present in
a relative weight ratio from about 20:1 to about 1:1, and the polymer being a copolymer
formed from a monoolefinically unsaturated carboxylic acid or anhydride monomer of 3
to 6 carbon atoms in an amount from about 50 to 99% by weight and a C -C alkyl10 30
acrylate ester in an amount from about 1 to about 50% by weight.
The references relied upon by the examiner are:
Gueret et al. (Gueret) 5,026,552 Jun. 25, 1991
UK Patent Application (Mahieu) 2,144,133A July 25, 1983
Noxzema® carton2
Claims 1, 7, and 8 stand rejected under 35 U.S.C. § 103 as unpatentable over
Mahieu, Gueret, and/or the photocopy of the Noxzema® carton. We reverse and
remand the application to the examiner for further consideration since, in our view, the
examiner has premised the examination of this application upon an incorrect
interpretation of the claims.
Appeal No. 95-3981
Application 08/099,880
The examiner cites the following case at the end of the second paragraph of3
this portion of the Examiner’s Answer: “In re Kuelling 15 USPQ (2) 1056.” We have
been unable to locate a case by that name in volume 15 of the USPQ, second series.
3
Rejection Under 35 U.S.C. § 103
The claims on appeal are directed to a composition for forming a peelable
cosmetic mask which comprises a specified polyvinyl alcohol polymer and a specified
hydrophobically-modified acrylate of methacrylate polymer. Appellant has not directly
contested the examiner’s determination that the three references relied upon establish
a prima facie case of obviousness. Rather, appellant’s position in this appeal is
summarized at page 9 of the Appeal Brief as follows:
Appellant has provided comparative experiments to demonstrate the
unexpectedly good results achieved by a combination of PVA and a
hydrophobically-modified acrylate or methacrylate polymer. These
comparative experiments (TABLE II and the Declaration) are considered
by Appellants as overcoming any prima facie case of obviousness.
The examiner’s response to this evidence of nonobviousness is set forth on
pages 5-6 of the Examiner’s Answer as follows:3
Then a declaration was filed under 37 CFR 1.132 on May 2, 1994.
Appellant[’]s position is that the declaration is commensurate with the
scope of the claims. The examiner[’]s position is that in the declaration
the testing is very limited two PVA polymers, namely (i) polyvinyl alcohol
polymer having an average molecular weight of 7000 and (ii) polyvinyl
alcohol polymer having an average molecular weight of 186,000.
However claim 1 is not limited to this [sic, these] specific polymers but a
range of 5,000 to about 200,000.
Appeal No. 95-3981
Application 08/099,880
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It is not apparent and appellants [sic] have [sic] not explained why one
having ordinary skill in the art would have reasonably extrapolate [sic] the
results obtained for two PVA polymers to the various of [sic] polymers
belonging to the range 5,000-200,000. Accordingly it would not appear
that the probative value of the evidence is commensurate in scope with
the degree of protection sought.
Thus, the only objection raised by the examiner to the evidence relied upon by
appellant is based upon the examiner’s determination that the results obtained using
two polyvinyl alcohol polymers having an average molecular weight of 7,000 and
186,000 cannot be extrapolated throughout the range of molecular weights required for
this element of the claimed composition.
We are unaware of any hard and fast rules to be followed in determining
whether evidence of nonobviousness offered in rebuttal of a prima facie case of
obviousness is commensurate in scope with the claims under review. Rather, like so
many other determinations in the field of patent law, this determination must be based
upon the facts of the case. Here, the examiner has attempted to shift the burden to
appellant to explain why the results should be extrapolated. However, in doing so, the
examiner has lost sight of the strength of the evidence relied upon in support of the
conclusion of prima facie obviousness. Gueret and the Noxzema® carton do describe
the use of polyvinyl alcohol in a composition useful in forming a cosmetic mask.
However, neither reference specifies the molecular weight of the polyvinyl alcohol.
This can be seen as a weakness in the evidence supporting the conclusion of prima
Appeal No. 95-3981
Application 08/099,880
5
facie obviousness. In other words, the prior art placed no significance on the molecular
weight of the polyvinyl alcohol to be used for the purposes of the compositions
disclosed in those references. Rather, it was only upon appellant’s disclosure of this
invention that the significance of the molecular weight of the polyvinyl alcohol became
known. Appellant has tested near the outer extremes of the claimed range of molecular
weights of polyvinyl alcohol. The examiner has not disputed that the results shown
would have been considered unexpected by one of ordinary skill in the art. On this
record, we see no reason why appellant should provide any further comparisons.
The rejection under 35 U.S.C. § 103 is reversed.
Remand
By its own terms, claim 1 is directed to a composition for forming a peelable
cosmetic mask which comprises the two stated polymers. In rejecting the claims in the
Examiner’s Answer, the examiner states at page 3 that:
The instant application is claiming cosmetic mask comprising (i)
polyvinyl alcohol (ii) hydrophobically modified acrylate or methacrylate
copolymer (iii) C -C monohydric alcohol (iv) water.1 3
The examiner has misinterpreted the scope of claim 1 on appeal in two significant
aspects. First, the examiner has interpreted the statement of intended use in claim 1
“for forming a peelable cosmetic mask” as meaning that the claim is directed to a
Appeal No. 95-3981
Application 08/099,880
6
cosmetic mask. This is in error. It has long been held that statements of intended use
in a composition claim “do not provide limitations by which the claimed composition is
distinguished from those of the prior art.” In re Pearson, 494 F.2d 1399, 1403, 181
USPQ 641, 644 (CCPA 1974). Second, this statement indicates that the examiner has
apparently interpreted claim 1 as requiring the presence of alcohol and water when
these elements are only required by dependent claims 7 and 8.
Further evidence that the examiner has not appreciated the scope of claim 1 on
appeal is seen from the entries in the administrative file in the boxes entitled
“SEARCHED” and “SEARCH NOTES.” In the box entitled “SEARCHED,” the examiner
has only searched subclasses in class 424 and class 514. In the “SEARCH NOTES”
box, the examiner has not indicated that any of the computerized data bases available
to the patent examiners were searched. Further, the two texts which are listed as being
reviewed in the “SEARCH NOTES” box appear to be directed to cosmetic formulations.
All of these facts indicate that the examiner has searched for the claimed
combination of polymers as if the claimed composition is limited to a cosmetic mask. It
is not. It appears that relevant classes such as class 525 which is directed to mixtures
of polymers regardless of their intended use have not been searched. Furthermore, it
does not appear that the examiner has used the available computerized data bases.
Appeal No. 95-3981
Application 08/099,880
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Upon return of the application, the examiner should determine the proper scope
of all of the pending claims . At that point in time, the examiner should take a step back
and ensure that the full scope of the claimed subject matter has been properly
searched and evaluated.
In summary, we reverse the rejection under 35 U.S.C. § 103 and remand the
application to the examiner for further consideration.
REVERSED and REMANDED
Bruce H. Stoner, Jr., Chief )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Sherman D. Winters ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
William F. Smith )
Administrative Patent Judge )
Appeal No. 95-3981
Application 08/099,880
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Patent Department
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