Ex Parte SwanzyDownload PDFPatent Trial and Appeal BoardNov 16, 201713320138 (P.T.A.B. Nov. 16, 2017) Copy Citation 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. 13/320,138 11/11/2011 James Swanzy MKAY.P0276US 8950 32425 7590 11/20/2017 NORTON ROSE FULBRIGHT US LLP 98 SAN JACINTO BOULEVARD SUITE 1100 AUSTIN, TX 78701-4255 EXAMINER EBRAHIM, NABILA G ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 11/20/2017 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): aoipdocket @ nortonrosefulbright .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES SWANZY Appeal 2017-004875 Application 13/320,1381 Technology Center 1600 Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and KRISTI L. R. SAWERT Administrative Patent Judges. SAWERT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1—17 and 29. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Mary Kay, Inc. as the real party in interest. Appeal Br. 1. Appeal 2017-004875 Application 13/320,138 STATEMENT OF THE CASE Claims 1—17 and 29 are on appeal. Claims 1—12 and 29 stand rejected as unpatentable under 35 U.S.C. § 103(a) for obviousness over Laden2 in view of Young,3 and further in view of Horn.4 Final Act. 3—6. Claims 13— 17 stand rejected as unpatentable under 35 U.S.C. § 103(a) for obviousness over C&H5 in view of Young and Horn. Id. We choose claims 1 and 13 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 1 provides: 1. An anhydrous cleanser comprising: (a) a dispersed sugar phase comprising granulated sugar having a mean aperture (MA) size between 200 pm to 1000 pm and powdered sugar having an average particle size between 30 pm to 150 pm, wherein the dispersion comprises 55% to 75% by weight, based on the total weight of the dispersion, of a combination of granulated sugar and powdered sugar; and (b) a continuous oil phase, wherein the dispersion comprises at least 20% by weight, based on the total weight of the dispersion, of an oil or a mixture of oils, wherein the weight ratio of granulated sugar to powdered sugar within the dispersion is from 1.1 to 2:1, and wherein the dispersion does not include glycerol or includes glycerol in an amount of less than 5%. Appeal Br. 7. Claim 13 provides: 2 Karl Laden and Harry Brand, U.S. Patent Publication No. 2003/0211062 A1 (Nov. 13, 2003) (“Laden”). 3 Joo Young Oh and Jeong Rae Lee, Korean Patent Publication No. KR20090070880 (July 1, 2009) (“Young”), machine translation of record. 4 Harold Edwin Horn et al., U.S. Patent No. 3,676,155 (July 11, 1972) (“Horn”). 5 C&H Sugar Body Scrubs, www.chsugar.com/Consumer/baking-gift- ideas-scrub-recipes.html (Dec. 21, 2009) (“C&H”). 2 Appeal 2017-004875 Application 13/320,138 13. The anhydrous dispersion of claim 1, wherein the dispersion is surfactant-free. Id. at 8. DISCUSSION A claimed invention is unpatentable if the differences between it and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (pre-AIA). To assess whether the subject matter would have been obvious, the Board follows guidance in Graham v. John Deere Co., 383 U.S. 1 (1966) and KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). The obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Applying this standard, we conclude that the Examiner did not err in determining that representative claims 1 and 13 would have been obvious to an ordinarily skilled artisan over Laden in view of Young, and over C&H in view of Young, respectively. We also determine that the Examiner’s reliance on Horn was unnecessary, and affirm the Examiner’s rejections only on the references used herein. See In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966); In re Bush, 296 F.2d 491, 496 (CCPA 1961). The prior art Laden discloses an anhydrous skin cleanser comprising a water- immiscible emollient oil, an oil-gelling agent, an emulsifying agent, and a water-soluble, substantially crystalline abrasive material. Laden (Abstract). 3 Appeal 2017-004875 Application 13/320,138 As exemplary abrasive materials, Laden teaches sugars, such as cane sugars, beet sugars, and water-soluble saccharides and polysaccharides. Id. Tflf 34, 37. Laden teaches that the abrasive materials “assist in scrubbing off non- dissolved dirt and rough dead skin cells.” Id. 149. Laden provides as an example an anhydrous skin cleanser gel comprising mineral oil in an amount of 39.5 weight %, isopropyl stearate (an emollient) at 17.5 weight %, Quatemium 18 Hectorite (a gelling agent) at 2.4 weight %, glyceryl stearate at 1.6 weight %, PEG-100 stearate at 1.3 weight %, propylene carbonate at 0.7 weight %, refined cane sugar at 36.4 weight % and fragrance at 0.6 weight %. Id. 154 (Example 2). Young discloses a non-aqueous cosmetic composition comprising sugar, thickener, and an oil component. Young 1. Young teaches that sugar is a scrub and exfoliator, id., and as such, is the active ingredient of the disclosed cosmetic composition, id. at 3. As the sugar component, Young lists superfine sugar, light brown sugar, confectioner’s sugar, granulated sugar, and dark brown sugar, and teaches that each sugar can be used alone or “as two or more normal mix of sugar.” Id. at 3. Young also teaches that, preferably, sugar makes up 10-70 parts by weight of the cosmetic composition. Id. at 2. Young teaches that particle size of the sugars in the cosmetic composition is preferably 50 to 1000 pm, and more preferably 50 to 200 pm. Id. at 4. C&H discloses recipes for make-your-own “sugar body scrubs” comprising, inter alia, sugar and oil. C&H 1. C&H provides a recipe for “Sweet N’ Spicy Brown Sugar Scrub,” which calls for a 1 cup to 1 cup ratio of dark or light brown sugar to pure cane sugar, and a recipe for “Brown Sugar Body Scrub,” which calls for packed brown sugar. Id. C&H teaches 4 Appeal 2017-004875 Application 13/320,138 that the consistency of the “Brown Sugar Body Scrub” can be modified by adjusting the amounts of oil and sugar. Id. at 2. The Examiner’s rejections The Examiner rejected claims 1—12 and 29 for obviousness over Laden in view of Young. Final Act. 3—6. The Examiner also rejected claims 13—17 for obviousness over C&H in view of Young. Id. at 6—7.6 As to representative claim 1, the Examiner found that Laden teaches all elements of that claim, except for “powdered sugar and its amount.” Id. at 3. To address that deficiency, the Examiner relied on Young. Id. at 3^4. The Examiner found that Young teaches a mixture of two types of sugars, including confectioner’s sugar and granulated sugar. Id. The Examiner acknowledged that Young does not expressly teach a 1:1 mixture of sugars, but reasoned that a “normal mix is a 1:1 mixture of two types of sugars.” Id. at 4. In particular, the Examiner stated that, “when faced with a mixture of two ingredients, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio.” Id. The Examiner also reasoned that optimization of the ratio of sugars would have been obvious, stating that “[t]he person having ordinary skill would be motivated to optimize the ratio of 1:1 as needed to obtain [a] stable and effective non-aqueous sugar dispersion.” Id. As to representative claim 13, the Examiner relied on C&H to teach sugar-based scrubs lacking emulsifiers, glycerol, triglycerides, silicone-containing compounds, and preservatives. Id. at 6. 6 As noted above, we determine that the Examiner’s reliance on Horn was unnecessary. 5 Appeal 2017-004875 Application 13/320,138 Analysis On appeal, the Board “reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.” Ex parte Frye, 94 USPQ2d 1072, 1075—76 (BPAI 2010) (Precedential). The issues Appellants raise on appeal are: (1) whether the prior art discloses or suggests all the limitations of the claim, Appeal Br. 3—5, (2) whether the translation of Young is so nonsensical as to preclude its use in the Examiner’s rejection, id. at 4—5, and (3) whether the Examiner provided an adequate reason as to why the ordinarily skilled artisan in the art would have been motivated to modify the cited references to produce the claimed composition, id. at 5—6. See also Reply Br. 2 (stating that “[tjhere is no suggestion or motivation to modify Laden”). As to the first issue, Appellants argue that the prior art references, even if combined, do not teach the claimed composition because “each of the references taken individually or together still require a gelling agent, a thickener, a surfactant, and/or an emulsifier to impart the desired characteristics.” Appeal Br. 3. We agree with the Examiner, however, that representative claim 1 does not exclude such components because the “comprising” transitional phrase is “inclusive or open-ended and does not exclude additional, unrecited elements.” Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). Cf. Ans. 8; see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“the name of the game is the claim”). Moreover, as the Examiner persuasively points out, the Specification contemplates that use of thickening agents and emulsifiers in the claimed compositions. Ans. 8—9. In particular, the Specification teaches that surfactants/emulsifiers are beneficial because they “can reduce the 6 Appeal 2017-004875 Application 13/320,138 interfacial tension between phases and improve the formulation and stability of an emulsion.” Spec. 146. The Specification also teaches that “[tjhickening agents, including thickener or gelling agents” are beneficial in that they “can increase the viscosity of a composition without substantially modifying the efficacy of the active ingredient within the composition,” as well as “increase the stability of compositions of the present invention.” Id. 147. In summary, because the claims do not exclude a gelling agent, thickener, surfactant, and/or emulsifier and because the Specification expressly teaches adding these components to the disclosed compositions, Appellant’s first argument does not persuade us of Examiner error. As to the second issue, Appellant argues that the translation of Young contains ambiguities that “make it difficult to assess the composition of the sugar dispersion” described therein. Appeal Br. 4. Appellant also criticizes the Examiner’s reasoning that the “normal mix” of sugars disclosed in Young encompasses a 1:1 ratio, arguing that the translation contains nonsensical words that make it “difficult to determine the true meaning of the word‘normal.’” Id. Indeed, Appellant asserts, “[t]he Examiner’s unsupported statement of ‘people having ordinary skill in the art would logically start a normal mixture with 1:1 ratio’ is conjecture.” Reply Br. 3. As an initial matter, we find that the machine translation of Young is sufficient in this case to support the Examiner’s rejection. See In re Orbital Techs. Corp., 603 F. App’x 924, 932 (Fed. Cir. 2015) (non-precedential) (finding that a machine translation provided adequate evidence of the prior art reference’s contents, given the simple nature of the technology described therein). Although Appellant correctly notes that some parts of the machine translation are poorly worded, the portions the Examiner relied on are 7 Appeal 2017-004875 Application 13/320,138 sufficiently clear. Specifically, Young clearly teaches a sugar-based non- aqueous cosmetic composition. Young 1; see also Young 3 (stating that the invention is “sugar, thickener and the oil component”). Young also teaches that the cosmetic composition contains sugar in an amount of 10 to 70 parts by weight, id. at 2, and lists superfine sugar, light brown sugar, confectioners’ sugar, granulated sugar, and dark brown sugar as usable in the disclosed cosmetic composition, id. at 3. Finally, Young teaches that these sugars may be “used alone” or “as two or more normal mix of sugar.” Id. at 3. We find it sufficiently clear that “used alone” or “as two or more normal mix of sugar” means that each exemplary sugar may be used as the sole sugar ingredient in the cosmetic composition, or may be added to the cosmetic composition as a mixture of two or more sugars. Thus, we find no error in the Examiner’s finding that Young teaches a mixture of two sugars, which encompasses granulated sugar and powdered (i.e., confectioners’) sugar as claimed. See Ans. 11—12. Young fails to expressly disclose using a mixture of sugars in a 1:1 ratio. Nevertheless, we determine that the Examiner correctly found that use of a 1:1 ratio would have been obvious. Ans. 12. First, we note that the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Here, the Examiner reasonably employed such “logic, judgment, and common sense available to the person of ordinary skill” when finding that 8 Appeal 2017-004875 Application 13/320,138 the skilled artisan would have “logically started a normal mixture with [a] 1:1 ratio.” Ans. 12. Thus, because a precise teaching in the prior art is not necessary for a conclusion of obviousness, we reject Appellants’ assertion of error because Young does not expressly state the 1:1 ratio. See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (stating that a “reference must be considered not only for what it expressly teaches, but also for what it fairly suggests”) (quotation omitted). Second, we find that the Examiner did not err in finding that an ordinarily skilled artisan would have been motivated to optimize the amounts of powdered sugar to granulated sugar as a matter of routine. “[Wjhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Alter, 220 F.2d 454, 456 (CCPA 1955). As the Examiner explained, Young teaches that particle size of the sugar-based cosmetic composition is preferably 50 to 1000 pm, and more preferably 50 to 200 pm. Final Act. 4 (citing Young 4). Young also teaches disadvantages associated with particle diameter of less than 50 pm or more than 1000 pm. Young 4. Thus, the ordinarily would have had a reason to optimize the mixture of sugars to obtain a preferable range of particle sizes, such as by adding powdered sugar to granulated sugar in order to reduce the mean particle size of the cosmetic composition. Final Act. 4—5. As to the third issue, Appellant argues that the Examiner has failed to “satisfactorily address the question of what evidence teaches or suggests] modification of the prior art references” to achieve the claimed invention. Reply Br. 2. We disagree. The Examiner stated that “[i]t would have been obvious to a person of ordinary skill in the art to add powdered sugar as taught by Young to the composition comprising granulated sugar disclosed 9 Appeal 2017-004875 Application 13/320,138 by Laden” based on several fact findings that are supported by a preponderance of the evidence. Final Act. 5. Specifically, the Examiner found that Laden teaches a sugar-based cosmetic composition comprising granulated sugar as the abrasive. Id. at 3; see also Laden || 34, 37. The Examiner also found that Young teaches a sugar-based cosmetic composition comprising a mixture of two sugars, including a mixture of granulated sugar and powdered sugar as claimed. Id. at 3^4; see also Young 3 (describing a mixture of two or more sugars, including granulated sugar and confectioners’ sugar). The Examiner found that Young teaches a range of preferred sugar particle sizes: preferably 50 to 1000 pm, to more preferably 50 to 200 pm. Id. at 4; see also Young 4 (“In the present invention, the above-described particle diameter of the sugar is preferably 50 to 1000 pm[,] 50 to 200 pm more preferably.”). And the Examiner found that Young also teaches benefits associated with these particle sizes (i.e., increased blood circulation). Id. at 5; see also Young 4 (stating that compositions with a sugar-particle diameter of less than 50 pm decreases the blood-circulation effect). Based on these reasonable factual findings, the Examiner provided an adequate prima facie rationale for modifying the prior art. Specifically, as the Examiner articulated, the skilled artisan would have had reason “to add powdered sugar as taught by Young to the composition comprising granulated sugar disclosed by Laden[,] to enhance the effect of sugar on the skin.” Final Act. 5. In particular, Young teaches creating a sugar mix having a preferred particle size for scrubbing and the promotion of blood circulation. Id.-, Young 4. “A person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. 10 Appeal 2017-004875 Application 13/320,138 at 421. And here, Appellant provides no persuasive evidence to the contrary. For these reasons, we reject Appellant’s argument that the Examiner did not provide a credible reason for modifying the prior art. KSR, 550 U.S. at 421. SUMMARY We affirm the rejection of claims 1—17 and 29 under 35 U.S.C. § 103(a) on appeal. 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 11 Copy with citationCopy as parenthetical citation