Ex Parte Tanner et al

Patent Trial and Appeal Board

May 5, 2016

12252638 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/252,638 10/16/2008
27752 7590 05/09/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Paul Robert Tanner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10937 7810
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROBERT TANNER and
ROBERT JOHN ELSBROCK1
Appeal2013-006417
Application 12/525,638
Technology Center 1600
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims a multi-
phase personal care composition. The Examiner rejects the claims as
indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is The Procter &
Gamble Company of Cincinnati, Ohio. (Br. 1.)
Appeal2013-006417
Application 12/252,638
STATEMENT OF THE CASE
Claims 1-22 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1 is representative of the claims on appeal, and
reads as follows:
1. A skin care product comprising:
a) a non-solid multi-phase, multi-function skin care
composition comprising:
(i) a translucent base phase comprising a first chronic
skin care active;
(ii) a first opaque phase having a lightness of greater than
80 and a chroma of less than 5, said first opaque phase
comprising a skin conditioning agent; and
(iii) a second opaque phase having a hue from about 35
to about 70, said second opaque phase comprising an
opacifying particulate materials; wherein the translucent
base phase, first phase, and second phase form a stable,
visually distinct pattern; and
b) a container for storing the multi-phase skin care composition,
wherein the container is at least partially translucent
wherein the first opaque phase and the second opaque
phase would not be visible through the container if the base
phase were not translucent.
The following grounds of rejection2 are before us for review:
I. claims 11 and 14--22 under 35 U.S.C. § 112, second paragraph
as being indefinite; and
2 In the Final Action mailed Nov. 20, 2011 the Examiner rejected claims 1-
22 on the ground of nonstatutory obviousness-type double patenting. The
US PTO mailed a notice of abandonment on Dec. 3, 2015, for U.S.
Application No. 10/963,166, the application upon which this provisional
nonstatutory obviousness-type double patenting rejection is based. As the
application that forms the basis of this rejection has been abandoned, the
contentions presented by Appellants and the Examiner regarding this
rejection are moot. Accordingly, we dismiss the appeal with respect to this
rejection.
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Application 12/252,638
11. claims 1-22 under 35 U.S.C. § 103(a) as unpatentable over
Clapp, 3 Wei, 4 Long, 5 and Zelnic. 6
I. Indefiniteness
The Examiner's position is that claim 11 still recites "greater than
about 40,000" and claim 14 recites "at least about 1 %". "Greater than and
at least provide a static point and about provides a dynamic point and cannot
be used to modify one another. This renders the claim indefinite." (Final
Act. 27; Ans. 2.)
Appellants recognize that they "failed to delete a few terms objected
to by the Examiner .... This rejection can be overcome by deleting the
objectionable phrases when the substantive 35 USC§ 103(a) rejection below
is overcome." (Br. 3.) Appellants do not otherwise argue the merits of the
rejections, but note that they will consider amending the claims once the
obviousness rejection is overcome. (Id.) We therefore summarily affirm
this rejection for the reason set out by the Examiner (see Final Act. 2 and
Ans. 2). See MPEP § 1205.02 ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board."). The failure to appeal is a
waiver under Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010)
(precedential) ("If an appellant fails to present arguments on a particular
3 Clapp et al., US 2006/0210505 Al, published Sep. 21, 2006.
4 Wei et al., US 2005/0100570 Al, published May 12, 2005.
5 Long et al., WO 02/100358 Al, published June 11, 2001.
6 Zielnik et al., Keeping up appearances, J. Architectural Coatings 62----67
(2006).
7 Final Office Action mailed Nov. 30, 2011.
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Application 12/252,638
issue--or, more broadly, on a particular rejection--the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection").
II. Obviousness over Clapp, Wei, Long, and Zelnic
The Examiner takes the position that Clapp teaches multiphase
personal care compositions that can "comprise a number of additional
phases .... Each of the phases can be opaque, transparent or translucent."
(Final Act. 6; Ans. 4.) Wei also teaches a multiphase personal care product
that uses "[i]nterference pigments [that] include titanium dioxide .... Skin
lightening agents [that] include hexamidine and sugar amines ... .
Pearlescent agents include titanium dioxide." (Final Act. 8; Ans. 6.) Long
also teaches a "multiple-phase swirled composition [that] has a clear gel
phase and a lotion phase." (Final Act. 8; Ans. 6.) The Examiner finds that
Long teaches that "preferred embodiments of the system has multiple phases
(more than two)." (Final Act. 9; Ans. 6-7.)
The Examiner acknowledges that Clapp, as well as Wei and Long, are
"silent as to the lightness, hue and chroma." (Final Act. 6; Ans. 4.) The
Examiner relies on Zielnik to establish that the CIE LAB scale uses "three
defining qualities hue, lightness and chroma any color could be
mathematically described as a location in the three dimensional globe."
(Final Act. 7; Ans. 5.)
The Examiner concludes that"[ o ]ne of ordinary skill in the art would
have been motivated to manipulate the color in order to achieve a visually
distinct pattern and a more aesthetically pleasing composition as taught by
Clapp et al" (Final Act. 11; Ans. 9.) The claimed chroma, hue and
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Application 12/252,638
lightness, as taught by Zielnik, determine the respective color of the
composition. "Since the associated values of the chroma, lightness and hue
is well known for colors, one of ordinary skill in the art would be motivated
to choose the respective values of chroma, lightness and hue to achieve the
desired color." (Final Act. 11; Ans. 9.)
Appellants contend that the Examiner "has failed to make a prima
facie case of obviousness." (Br. 3.)
The issue is: Does the preponderance of evidence of record support
the Examiner's conclusion that the combination renders the skin care
product of claim 1 obvious?
Findings of Fact
We adopt the Examiner's findings and analysis concerning the scope
and content of the prior art. The following facts are repeated for reference
convemence.
FPL Clapp teaches "multi-phase personal care compositions ... [that]
further comprise a second phase that is visually distinct from the first
phase. . . . If the first phase comprises a colorant, the second phase
will comprise a different colorant or no colorant, such that the second
phase is visually distinct from the first phase." (Clapp if 75.)
FF2. Clapp teaches that the multiphase composition
can optionally further comprise a number of additional phases,
e.g., a third phase, fourth phase, et al. [sic] These additional
phases can be comprised of similar, or the same, ingredients as
the first and/or second phases. These additional phases
preferably comprise a different colorant such that the additional
phases are visually distinct from the first and/or second phases.
(Clapp ii 76.)
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Application 12/252,638
FF3. Clapp teaches that "[e]ach of the phases of the present compositions
can be opaque, transparent, or translucent. Aqueous gel phases are
typically transparent or translucent." (Clapp i-f 77.)
FF4. Clapp teaches that the multiphase composition can be packages in "a
transparent or translucent container, as opposed to an opaque
container, so that a consumer can see the visually distinct pattern
through the container as it sits on a store shelf." (Clapp i-f 83.)
FF5. Clapp teaches that the multiphase composition can contain oil/
emollient benefit agents (Clapp i-fi-117-18; Ans. 3), auxiliary benefit
agents such as anti-wrinkle actives (Clapp i-fi-126-27; Ans. 3); as well
as antimicrobial agents (Clapp i-fi-165----67; Ans. 3).
FF6. Long teaches that "according to this preferred embodiment the system
optionally has multiple phases (more than two). The combination of
products which may be generated for separate cosmetic applications is
therefore de-limited." (Long 28: 5-8; see Final Act. 15; see Ans. 18.)
FF7. Long teaches that "[t]he gel system will always maintain a clear
appearance. The clear appearance will create a great visual effect on
the finished product. The gel system will normally come in different
colors, different chemicals and physical properties." (Long 26: 10-
14.)
FF8. Wei teaches a multi-phase personal care composition where "[e]ach
phase could be one or more of the following nonlimiting examples
including: a cleansing phase, a benefit phase, and a non-lathering
structured aqueous phase." (Wei i-f 46.)
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Application 12/252,638
FF9. Wei teaches interference pigments such as titanium dioxide (Wei
i-f 150), as well as skin lightening agents such as hexadiamine and
sugar amines (Wei i-f 158).
FF 10. Zielnik teaches that
The human eye perceives color as the following pairs of
opposites: Light-Dark, Red-Green, and Yellow-Blue (called the
Opponent Colors Theory) .... Using this system, any color can
be described by its three-dimension L *a*b* coordinates. A
CIELAB of 50,75,5 would be red, while 50,75,5 would be
green, and a yellow could be 70,0,80. Two samples that are the
same color and change only in lightness would be, for example,
50,50,50 and 75,50,50.
(Zielnik 64.)
FF 11. Zielnik explains the relationship betwe+en chroma and hue.
The L *c*h color space uses the same diagram as the L *a*b*
color space, but employs cylindrical rather than rectangular
coordinates. C* is the chroma and has a value of oat the central
neutral axis and increases according to the distance from the
center. Hue angle h is defined as starting at the +a* axis and is
expressed in degrees as the chroma axis rotates
counterclockwise.
(Zielnik 64.)
Principle 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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Clapp, Wei, and Long each teach multi-phase skin care compositions
(FF 1-FF9). Both Clapp and Long additionally teach the use of more than
two visually distinct phases (FF2, FF6). Clapp and Long also teach that one
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of the phases can be transparent (FF3, FF7). Specifically, Long explains that
a clear (a.k.a. transparent) appearance will create a great visual effect (FF7).
Each of these references also teaches the use of colorants to form these
visually distinct patterns (FF1-FF9). However, none of the references recite
a particular range for the chroma or hue.
The Examiner takes the position that one of ordinary skill in the art
would know that in order to create visually distinct patterns the artisan needs
to change the chroma, hue, and lightness (see FF 10, FF 11; Final Act. 11;
Ans. 9). Because "the associated values of the chroma, lightness and hue
[are] well known for colors, one of ordinary skill in the art would be
motivated to choose the respective values of chroma, lightness and hue to
achieve the desired color as taught by Zielnik." (Final Act. 11; Ans. 9.)
After considering the evidence and the arguments, we conclude the
weight of the evidence favors the Examiner's conclusion of obviousness.
Accordingly, we adopt the Examiner's reasoning (see Grounds of Rejection,
Final Act. 4--14; Ans. 3-12), and agree that the Examiner properly found
Appellants' arguments unpersuasive (see Response to Argument, Ans. 17-
18). We address Appellants' argument below.
Appellants contend "that Long's reference to 'multiple phases' should
[not] be interpreted to mean 'more than two' phases as is asserted in this
rejection. The Appellants read the Long specification such that 'multiple
phases' means two phases." (Br. 4.) Appellants further contend that "the
references cited against the present claims do not teach the present three
phase system, wherein the base phase is translucent allowing the two opaque
phases contained there within to be visible to the consumer." (Id.)
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Application 12/252,638
We are not persuaded by Appellants' contentions. Both Clapp and
Long teach the use of more than two phases and also teach that one phase
may be translucent or clear. (See FF2, FF3, FF6, FF7.) As pointed out by
the Examiner,
[ o ]ne cannot not take away from the plain language utilized in
the Long reference. Long expressly states ... "Finally,
according to this preferred embodiment the system optionally
has multiple phases (more than two)." Therefore, Long clearly
teaches more than two phases as the references utilizes the
language more than two.
(Ans. 18.) We find no error with the Examiner's assessment regarding the
teachings of Long (FF6).
On the record before us, we conclude the Examiner did not err in
rejecting claim 1under35 U.S.C. § 103(a) as being unpatentable over the
Clapp, Wei, Long, and Zelnic. Claims 2-22 were not separately argued.
SU~'vH'v1AR Y
We affirm the rejections of claims 11 and 14--22 under 35 U.S.C.
§ 112, second paragraph.
We affirm the rejection of claim 1under35 U.S.C. § 103(a) as
unpatentable over Clapp, Wei, Long, and Zelnic. Claims 2-22 were not
separately argued and fall with claim 1. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
TIME PERIOD FOR RESPONSE
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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