Ex Parte Smith

Board of Patent Appeals and Interferences

Jun 30, 2010

10825389 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KIM R. SMITH
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Appeal 2009-011086
Application 10/825,389
Technology Center 1700
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Decided: June 30, 2010
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1 and 3-9. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-011086
Application 10/825,389

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A soap product consisting of:

(a) a non-propellant dispenser comprising a liquid retaining container
and a foam dispenser head; and

(b) liquid soap present in the container, the foam dispenser head
fluidly connected to the liquid soap and the liquid soap composition
consisting of:

(1) an alkali salt of a C6 to C24 fatty acid; and

(2) optionally, an additional ingredient selected from the group
consisting of water, antioxidants, water softening agents,
preservatives, solubilizers, color, fragrances, pH modifiers and
mixture thereof,

wherein the liquid soap has a viscosity less than 100 cps.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Uehira 5,271,530 Dec. 21, 1993
Gross 5,990,074 Nov. 23, 1999

THE REJECTION
Claims 1 and 3-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gross in view of Uehira.
ISSUE
Did the Examiner err in determining the applied art suggests all
elements of the claims and is combinable based upon proper motivation and
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a reasonable likelihood of success? We answer this question in the
negative.

FINDINGS OF FACT, PRINCIPLES OF LAW, and ANALYSIS
Appellant first argues that the applied art does not teach the claimed
features recited in claims 1 and 3-9. Br. 10-11.
Appellant argues that Gross is directed to a process for producing
soap from a mixed feedstock of at least one triglyceride and at least one free
fatty acid. Appellant argues that the quantity of triglyceride present is such
that "’the glycerin produced from its saponification with strong alkali does
not exceed about 6 wt. % of the finished soap product.’" Br. 11.
Appellant submits that this level of glycerin in the final product
produced by the method of Gross is important because "’of various handling
problems as well as undesired plasticity . . . . A 6 wt. % glycerin content
will generally bring about a relatively translucent and plastic bar.’" Br. 11.
We are not persuaded that the above teachings of Gross differentiate
from the components recited in Appellant’s claim 1. That is, we agree with
the Examiner’s response made on page 5 of the Answer. Therein, the
Examiner states:
The examiner contends that the feedstock employed by Gross et
al which yields less than 6% by weight of glycerin is a feature
disclosed in Gross et al, but it is not outside the scope of the claimed
invention. Specifically appellant's call out a broad range of fatty acid
soaps such as C6-C22 and Gross et al specifically suggest C16 and
C18, well within the claimed limitation. Further the amount of
glycerin produced by C16 and C18 fatty acid is inherent to the
claimed invention which clearly permits these carbon chain fatty acids
as soap products.
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Notably, Appellant does not specifically address the above-quoted
Examiner’s position. See particularly the Reply Brief. Also see the
Specficiation, p.5, ll. 18-20.
Appellant then argues that Gross states that "’[a]ll of the specific
examples relate to preparation of a solid soap product, the preferred bar,’ but
that the process is applicable to liquid soap products as well." Br. 11.
Appellant argues that Gross is primarily directed to the preferred solid soap
product, a bar, and it is silent with respect to how a liquid soap would be
dispensed. Br. 11-12.
We are not convinced by the above-mentioned arguments, and agree
with the Examiner’s response made on page 5 of the Answer wherein the
Examiner correctly states that Gross specifically teaches that the disclosed
soap composition can be used for liquid soaps. Gross, col. 6, ll. 20-40. The
Examiner recognizes that the details of such a liquid soap product is not
specifically described in Gross, but that it is within the purview of one of
ordinary skill in the art to prepare a liquid soap product according to the
teachings of Gross. Ans. 6. We agree and note that in making their
arguments, Appellant does not consider the perspective of one of ordinary
skill in the art. In other words, Appellant has not convinced us that one of
ordinary skill in the art would not have found it obvious to have made a
liquid soap product, especially in view of the fact that Gross teaches the
disclosed soap composition can be used for making liquid soaps. We refer
to KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) which states

The obviousness analysis cannot be confined by . . .
overemphasis on the importance of published articles and the
explicit content of issued patents. . . . In many fields it may
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be that there is little discussion of obvious techniques or
combinations, and it often may be the case that market
demand, rather than scientific literature, will drive design
trends.

In the instant case, there is little discussion in Gross of the details of
the liquid soap disclosed that can be made according Gross, and we liken
this to “little discussion of obvious techniques” as referred to in KSR, supra.
Appellant then argues that Gross does not teach a liquid soap having a
viscosity of less than 100 centipose ("cps"). Appellant also argues that
Uehira does not disclose a soap having a viscosity of less than 100 cps. Br.
12.
We agree with the Examiner’s response made on pages 5-6 of the
Answer. Therein, the Examiner states:
The examiner contends that the most comprehensive claims
states C6-C24 fatty acid soap and optional ingredients. Gross et al, in
examples 2 and 3 call out C16 and C18 fatty acid soaps and over 30%
water before drying and states that said examples could be altered to
produce liquid preparations. The examiner contends that in the liquid
preparation, the skilled artisan would have reasonably construed to
optimize the water content to satisfy any liquid preparation and
therefore encompass a viscosity of less than 100 cps since Gross et al
do not comprise any thickeners, polymers or viscosity adjusting
agents to suggest otherwise. Therefore, it would have been with [sic,
within] the purview of the artisan of ordinary skill to produce liquid
soap products according to the claimed invention because Gross et al
suggest said liquid preparations and does not include adjunct materials
to suggest a thickened composition, where one of ordinary skill in the
absence of a showing to the contrary would expect the compositions
of Gross et al, when prepared in liquid form, to encompass
characteristics such as less than 100 cps viscosities.

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We also agree with the Examiner’s position as stated on page 4 of the
Answer that since the pump dispenser of Uehira forms soap formulations
into foam, it would have been obvious to the skilled artisan that such
formulations pumped would have a viscosity less than 100 cps since Gross
teaches liquid preparation of soap products and Uehira forms liquid soap
into foam soap products.
In other words, it is the Examiner’s position that it would have been
within the purview of the artisan to have formulated a liquid soap product in
a manner to facilitate foam dispensing from the foam dispenser of Uehira,
and that such a product would have a viscosity as claimed in order to be
compatible with the dispenser of Uehira. Appellants do not address this
position of the Examiner’s.
Appellant argues that with respect to the foamable liquid for use with
the disclosed pump of Uehira, Uehira states that "a surfactant or the like is
added to impart foaming properties when mixed with air." Uehira, col. 4, ll.
50-55. Appellant argues that such hand soaps with foam enhancing
additives are not the same as their claimed invention which consists of an
alkali salt of a fatty acid and an optional ingredient wherein the optional
ingredients included in the claimed soaps do not include additives such as
synthetic anionic and amphoteric surfactants to enhance the foam. Appellant
submits that their claimed liquid soap is therefore different from the
foamable liquids disclosed by Uehira which require surfactants to impart
foaming properties.1 Br. 12-13.

1 On page 7 of the Answer, the Examiner states that he cannot locate where
Uehira teaches use of synthetic surfactants. However, on pages 2-3 of the
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However, the fact that Uehira includes a “surfactant or the like” does
not convince us of error in the Examiner’s position. Appellant has not
offered evidence, for example, showing that it has been understood that a
foam dispenser (of the kind, e.g., in Uehira) can only function when
additives such as a synthetic anionic and amphoteric surfactants are included
in the liquid soap product. To the contrary, Appellant’s Specification, on
page 4, at lines 17-21, indicates that foam dispensers are known and function
by creating foam by mixing air with the liquid being dispensed, where
surfactants are added to “enhance” the foam. There is no indication that it
has been known that a surfactant is necessary for a foam dispenser to
dispense a liquid soap product having a foam consistency. On page 6 of the
Answer, the Examiner emphasizes that he relied upon Gross for teaching the
components of the claimed liquid soap product, which does not include a
surfactant, and that he relied upon Uehira for teaching a foam dispenser.
With respect to claims 4 and 5, Appellant argues that Gross fails to
disclose that the liquid soap is a mixture of soap and water (claim 4), or the
claimed ratio of soap to water (claim 5). Appellant argues that since Gross
is silent as to the characteristics of a liquid soap, Gross also fails to disclose
any possible mixtures of a liquid soap and water. Br. 13.
We agree with the Examiner’s response made on page 7 of the
Answer. Therein, the Examiner states:
The examiner contends and respectfully disagrees and directs
appellant to examples 2 and 3 which clearly suggest over 30% water
admixed with C16 and C18 fatty acid soaps for preparing solid soaps.
Therefore, one of ordinary skill in the absence of unexpected results,
Reply Brief, Appellant refers to col. 4, ll. 50-55 of Uehira for such a
teaching.
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would expect the skilled artisan to include additional amounts of
water in preparing liquid soaps thereby optimizing the ratio of soap to
water to produce liquid compositions as suggested by Gross et al (col.
6, lines 30-38).
With respect to claims 6 through 9, Appellants argue that the applied
art is silent about the claimed amounts of alkali salts and solids present when
the soap is a mixture of soap and water. Appellant argues that the
Examiner’s position that the claimed amounts of these components would
have been obvious in view of the soap products of Gross based solely on the
fact that the same components are present in both Gross and the soap
product of the instant invention is incorrect. Br. 13-14.
We agree with the Examiner’s response made on page 7 of the
Answer. Therein, the Examiner states:
The examiner asserts that Gross et al is silent with respect to the
alkali salts content and solids content, however, Gross et al teach the
specific alkali metal salts components such as sodium or potassium
and further teach the specific fatty acid C16 or C18 as claimed in
order to produce a fatty acid soap product. Therefore, in the absence
of unexpected results one of ordinary skill would expect the soaps of
Gross et al to have similar characteristics such as salts contents and
solid contents as the claimed invention because Gross et al
specifically suggest the fatty acid soaps and salts as claimed.
In other words, it is the Examiner’s position that, absent evidence of
unexpected results, the claimed amount would have been within the purview
of the skilled artisan in formulating a liquid soap composition having the
ingredients as taught by Gross, for facilitating dispensing from a foam
dispenser of the kind in Uehira.
Appellants then argue that there is no motivation to combine Gross in
view of Uehira. Appellant asserts that Gross is not specific regarding the
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liquid soap (the characteristics of the liquid soap is not disclosed), including
its viscosity. Appellant argues that Uehira is directed to foamable liquids
having surfactants, and that Gross does not teach the use of surfactants.
Appellant asserts that it would not have been obvious for one of ordinary
skill in the art to dispense the soap of Gross through a foam dispenser in
order to effectively deliver the soap. Appellant also argues that there is not
any teaching that the liquid soap products disclosed in Gross would be
capable of being foamed, with or without the addition of a surfactant or
foam enhancing agent. Br. 14-15.
As discussed, supra, Appellant has not offered evidence that it has
been known that a foam dispenser (of the kind, e.g., in Uehira) can only
function when additives such as a synthetic anionic and amphoteric
surfactants are included in the liquid soap product. We emphasize that, to
the contrary, Appellant’s Specification, on page 4, at lines 17-18, indicates
that foam dispensers function by creating foam by mixing air with the liquid
being dispensed. There is no indication that it has been known that a
surfactant is necessary for the foam dispenser to dispense the liquid soap
having a foam consistency. We therefore are unconvinced that there is no
motivation to combine the references as the Examiner has done simply
because the liquid soap composition in Uehira includes "a surfactant or the
like” while Gross’ liquid soap composition does not include one.
Appellant then argues that the combination of Gross and Uehira does
not suggest Appellant's invention with a reasonable expectation of success.
Appellant submits that there is no reasonable expectation of success to
combine the soap product of Gross with the dispenser of Uehira. Br. 15-16.
Appellant argues that Gross is directed to a process for producing a soap
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product, preferably a bar of soap. Appellant argues that Uehira is directed to
a foam dispensing device. Appellant submits that one of ordinary skill in the
art would not have had a reasonable expectation of success that the liquid
soaps produced by Gross would be capable of producing foam when used in
the dispenser of Uehira. Appellant argues that there is no disclosure in
Gross that a liquid soap produced by the methods disclosed therein would be
capable of being foamed. Appellant also argues that Uehira states that
foamable liquids for use with the dispenser disclosed therein have
surfactants added to impart foam properties. Appellant argues that there is
nothing in Gross that teaches or suggests the use of surfactants to increase
the foaming properties of the disclosed soaps.
Appellant then argues that none of the rationales provided by the
Supreme Court in KSR v. Teleflex are applicable to the presently claimed
invention. Appellant discusses many different rationales (we do not repeat
them here) and argues that none are applicable to the instant rejection. Br.
16-19.
We are not convinced by the aforementioned arguments. Again,
Appellant has not offered evidence, for example, that it has been known that
a foam dispenser (of the kind, e.g., in Uehira) can only function when
additives such as a synthetic anionic and amphoteric surfactants are included
in the liquid soap product. We therefore are unconvinced that there is not a
reasonable likelihood of success to combine the references as the Examiner
has done to arrive at Appellant’s claimed invention, whereby one of ordinary
skill in the art is employing “inferences and creative steps that a person of
ordinary skill in the art would employ”. KSR, at 417-18 (2007).
In view of the above, we affirm the rejection.
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CONCLUSIONS OF LAW
The Examiner did not err in determining the applied art suggests all
elements of the claims and is combinable based upon proper motivation and
a reasonable likelihood of success.

DECISION
The rejection is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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ECOLAB USA INC.
MAIL STOP ESC-F7, 655 LONE OAK DRIVE
EAGAN, MN 55121
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