Ex Parte TannerDownload PDFBoard of Patent Appeals and InterferencesJun 27, 201111120027 (B.P.A.I. Jun. 27, 2011) 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. 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. Appeal 2011-002585 Application 11/120,027 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). Appeal 2011-002585 Application 11/120,027 3 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). Appeal 2011-002585 Application 11/120,027 4 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). Appeal 2011-002585 Application 11/120,027 5 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 Appeal 2011-002585 Application 11/120,027 6 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 Appeal 2011-002585 Application 11/120,027 7 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. Appeal 2011-002585 Application 11/120,027 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 Appeal 2011-002585 Application 11/120,027 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 Appeal 2011-002585 Application 11/120,027 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 alw Copy with citationCopy as parenthetical citation