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Board of Patent Appeals and Interferences

Jun 27, 2011

11120027 (B.P.A.I. Jun. 27, 2011)

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.
11/120,027 05/02/2005 Paul Robert Tanner 9982 9687
27752 7590 06/27/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
06/27/2011 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 PAUL ROBERT TANNER
__________

Appeal 2011-002585
Application 11/120,027
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a personal
care composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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2
Statement of the Case
The Claims
Claims 1-6, 8-12, 14-22, and 47-60 are on appeal. Claim 1 is
representative and reads as follows:
1. A personal care composition comprising:
a) hydrophobic modified silica selected from
the group consisting of silica dimethyl silylate,
silica silylate, silica dimethicone silylate, and
mixtures thereof;
b) a particulate material;
c) at least one skin care active;
d) a dermatologically-acceptable carrier,
said carrier comprising about 70% or greater by
weight of the carrier of one or more water-soluble
polyols, wherein said water-soluble polyol has a
solubility parameter of from about 11 to about 17.

The issues
A. The Examiner rejected claims 1-6, 8-12, 14-22 and 47-60 under 35
U.S.C. § 103(a) as obvious over Girardot
1
and Hasenzahl
2
(Ans. 3-8).
B. The Examiner rejected claims 1, 8-12, 14, and 15 on the ground of
nonstatutory obviousness type double patenting over claims 1, 2, 4-8, 10,
and 15 of US application 10/152,924 (Ans. 8-9).
A. 35 U.S.C. § 103(a) over Girardot and Hasenzahl
The Examiner finds that Girardot teaches compositions which
“include deodorant actives in 0.001 to about 50% (column 12, lines 65-67),
fragrances (column 13), suspending or thickening agents (column 14), liquid

1
Girardot et al., US 6,325,565 B1, issued Dec. 4, 2001.
2
Hasenzahl et al., Fumed silica for personal care and cosmetics –
versatile and effective, 129 SOFW JOURNAL 2-8 (2003).
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carrier in an amount ranging from about 1 to about 90% (column 17), and
optional components (column 22)” (Ans. 4). The Examiner finds that
“thickening agents taught include inorganic particulates such as clays or
silicas” (Ans. 4). The Examiner finds that one “example of suitable polar
organic liquid carriers for the compositions includes mono and polyhydric
alcohols” (Ans. 4). The Examiner finds that “Hasenzahl et al. teach that
fumed silica products are versatile raw materials for cosmetic and personal
care applications” (Ans. 5).
The Examiner finds that the ordinary artisan “would have been
motivated to utilize the hydrophobic modified silica in order to thicken and
stabilize the active ingredients in the composition” (Ans. 6). The Examiner
finds that it would have been obvious “to combine the teachings of Girardot
et al. and Hasenzahl et al. and utilize sodium bicarbonate as an odor-
absorbing material, polyethylene glycol as the carrier and niacinamide as a
skin modifying agent” (Ans. 7).
Appellant “asserts that the excessively broad disclosure of suspending
or thickening agents as disclosed in the „565 patent does not provide the
skilled artisan with motivation to selectively choose one from another” (App.
Br. 6). Appellant contends that there is “nothing in the [Examiner‟s]
rationale that would lead a skilled artisan to selectively choose colloidal
pyrogenic silica pigments over the numerous other exemplary suspending or
thickening agent[s]” (App. Br. 6). Appellant “asserts that the excessively
broad disclosure of liquid carriers as disclosed in the „565 patent does not
provide the skilled artisan with motivation to selectively choose the one
option from another” (App. Br. 8).
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Appellant contends that “the reasoning provided by the Office appears
guided by Appellant's disclosure which is indicative of hindsight bias” (App.
Br. 10). Appellant “asserts that the SOFW article, when read as a whole,
does not provide a sufficient technical reason directing a skilled artisan to
combine hydrophobic modified silica into a composition having a carrier
comprising about 70% or greater by weight of the carrier of one or more
water-soluble polyol” (App. Br. 11).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Girardot and Hasenzahl render
obvious the composition of claim 1?
Findings of Fact
1. Girardot teaches that “antiperspirant compositions for use in the
applicator of the present invention comprise antiperspirant active suitable for
application to human skin” (Girardot, col. 11, ll. 47-49).
2. Girardot teaches that the “antiperspirant and deodorant
compositions . . . comprise a suspending or thickening agent to help provide
the compositions with the desired viscosity . . . Suitable suspending or
thickening agents include . . . inorganic particulates such as clays or silicas”
(Girardot, col. 14, ll. 49-63).
3. The Specification teaches that “the particulate material is
selected from the group consisting of sodium bicarbonate, magnesium
sulfate, sodium chloride, calcium chloride, and mixtures thereof.
Alternatively, the particulate material is a bicarbonate salt” (Spec. 12, ll. 3-
6).
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4. Girardot teaches that “deodorant actives include odor-absorbing
materials such as carbonate and bicarbonate salts, including alkali metal
carbonates and bicarbonates, ammonium and tetraalkylammonium. Preferred
are sodium and potassium salts of such odor-absorbing materials” (Girardot,
col. 13, ll. 30-34).
5. The Specification teaches that “[c]lasses of suitable skin care
actives include, but are not limited to vitamins . . . The vitamins may include
water soluble vitamins, for example . . . niacinamide” (Spec. 17, ll. 16-29).
6. Girardot teaches a “class of compositions generally referred to
as skin care compositions. Such compositions include those intended to treat
or modify human skin in terms of structure, condition, or appearance. . . .
Another area of current interest is skin care compositions containing
niacinamide” (Girardot, col. 24, ll. 39-52).
7. The Specification teaches that “[p]olyols suitable for use herein
include any natural and synthetic polyol with an overall solubility parameter
of from about 11 to about 17 . . . Examples of suitable polyols and polyol
derivatives include, but are not limited to . . . propylene glycol, dipropylene
glycol, tripropylene glycol” (Spec. 15, ll. 5-16).
8. Girardot teaches that “suitable liquid carriers for use in the
antiperspirant and deodorant compositions described herein include . . .
glycol solvents such as propylene glycol, hexylene glycol, dipropylene
glycol, tripropylene glycol, and so forth” (Girardot, col. 21, ll. 29-35 ).
9. Girardot teaches that “[p]referred concentrations of the liquid
carrier ranges from about 1% to about 90%, preferably from about 10% to
about 80%, more preferably from about 20% to about 70%, by weight of the
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selected antiperspirant or deodorant composition” (Girardot, col. 17, ll. 61-
65).
10. Hasenzahl teaches that
Fumed silica performs many functions in
antiperspirant sprays, creams, and sticks. It is an effective
suspension stabilizer for preventing the agglomeration of
active ingredients – generally aluminum and zirconium salts
(AP salts) - and guaranteeing their uniform distribution. This
ensures an intense long-lasting action of the AP salts. Fumed
silica also increases the viscosity of creams and sticks. In
sprays it prevents sedimentation of suspended active
ingredients and clogging of the spray nozzle. Besides
hydrophilic fumed silica types, hydrophobic products are
also suitable for this application. Hydrophilic and
hydrophobic fumed silica may also be combined in a single
formulation to achieve the desired effects.

(Hasenzahl 7, col. 3 to 8, col. 1).
11. Hasenzahl teaches that “Dimethyl silyl, trimethyl silyl or
polydimethyl siloxane groups can be bound chemically to the surface of
fumed silica by chemical reaction with organosilicon compounds. Examples
of surface-modified products are AEROSIL
®
R 972, AEROSIL
®
R 812 S,
and AEROSIL
®
R 202” (Hasenzahl 2, col. 2).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Girardot teaches a personal care composition, specifically an
antiperspirant (FF 1). Regarding element a) of claim 1, Girardot teaches that
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the composition may comprise a silica thickening agent (FF 2). Hasenzahl
teaches hydrophobic modified silica (e.g., silica having surface-bound
dimethyl silyl groups) is useful in antiperspirant compositions (FF 10-11).
Regarding element b) of claim 1, the Specification teaches that
particulate materials may include bicarbonate salts including sodium
bicarbonate (FF 3). Girardot teaches inclusion of a deodorant active into the
antiperspirant which may include bicarbonates, including sodium
bicarbonate (FF 4).
Regarding element c) of claim 1, the Specification teaches that skin
care actives may include vitamins such as niacinamide (FF 5). Girardot
teaches that skin care compositions may include niacinamide (FF 6).
Regarding element d) of claim 1, the Specification teaches that
suitable liquid carriers include water-soluble polyols with solubility
parameters from 11 to 17 such as propylene glycol, dipropylene glycol, and
tripropylene glycol (FF 7). Girardot teaches liquid carriers such as
propylene glycol, dipropylene glycol, and tripropylene glycol (FF 8).
Girardot further teaches that these liquid carriers may be in concentration
ranges of about 70% or greater (FF 9).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
form an antiperspirant composed of the disclosed components taught by
Girardot and Hasenzahl (FF 1, 2, 4, 6, 8, 9). Such a combination is merely a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
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8
Appellant “asserts that the excessively broad disclosure of suspending
or thickening agents as disclosed in the „565 patent does not provide the
skilled artisan with motivation to selectively choose one from another” (App.
Br. 6). Appellant contends that there “nothing in the [Examiner‟s] rationale
that would lead a skilled artisan to selectively choose colloidal pyrogenic
silica pigments over the numerous other exemplary suspending or thickening
agent[s]” (App. Br. 6). Appellant “asserts that the excessively broad
disclosure of liquid carriers as disclosed in the „565 patent does not provide
the skilled artisan with motivation to selectively choose the one option from
another” (App. Br. 8).
We are not persuaded by the asserted large number of combinations.
That the prior art “discloses a multitude of effective combinations does not
render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose taught by
the prior art.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989). In the instant case, Appellant has provided no evidence that the
selection of the elements of claim 1 was in any way unpredictable,
unexpected or otherwise not routine. It is the essence of the Supreme
Court‟s holding in KSR that the “combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416.
Appellant contends that “the reasoning provided by the Office appears
guided by Appellant's disclosure which is indicative of hindsight bias” (App.
Br. 10). Appellant “asserts that the SOFW article, when read as a whole,
does not provide a sufficient technical reason directing a skilled artisan to
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9
combine hydrophobic modified silica into a composition having a carrier
comprising about 70% or greater by weight of the carrier of one or more
water-soluble polyol” (App. Br. 11).
We are not persuaded. While we are fully aware that hindsight bias
often plagues determinations of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
That is precisely the rejection at issue here. Hasenzahl expressly
teaches the use of fumed silica to increase viscosity (i.e., serve as a
thickener) in antiperspirants (FF 10). An ordinary artisan, taught by
Girardot to use silicas as thickeners (FF 2), would have reasonably used the
improved form of silica taught by Hasenzahl as a thickener in the
antiperspirant composition (FF 10).
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Girardot and Hasenzahl render obvious the composition of claim 1.
B. Provisional Obviousness type Double Patenting
We vacate the Examiner‟s rejection of claims 1, 8-12, 14, and 15 on
the ground of nonstatutory obviousness type double patenting over claims 1,
2, 4-8, 10, and 15 of US application 10/152,924 since in a previous Decision
we affirmed the prior art and double patenting rejections over claims 1, 2, 4-
8, 10, and 15 of US application 10/152,924, and there is therefore no
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10
possibility of improper term extension or multiple assignees relative to
claims 1, 2, 4-8, 10, and 15 of US application 10/152,924.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Girardot and Hasenzahl. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-6, 8-12, 14-
22 and 47-60, as these claims were not argued separately.
We vacate the rejection of claims 1, 8-12, 14, and 15 on the ground of
nonstatutory obviousness type double patenting over claims 1, 2, 4-8, 10,
and 15 of US application 10/152,924.

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

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