Ex Parte Walling et al

Board of Patent Appeals and Interferences

Feb 23, 2010

11158171 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID WILLIAM WALLING and SASCHA MAIER
__________

Appeal 2010-001330
Application 11/158,171
Technology Center 1600
__________

Decided: February 23, 2010
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
LORA M. GREEN Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 3-5. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2010-001330
Application 11/158,171

2
STATEMENT OF THE CASE
Claim 3 is representative of the claims on appeal, and reads as
follows:
3. An anhydrous antiperspirant composition having an a-value
measurement of greater than 2.0, wherein said composition comprises an
antiperspirant active, a liquid carrier, and a structurant, wherein said a-value
is measured by a method of determining performance of said composition
using a phenol red/deionized water solution, a potassium
hydroxide/deionized water solution, and a pH-indicator solution, said
method comprising the steps of:
a) preparing an antiperspirant sample;
b) applying said pH-indicator solution to said antiperspirant sample;
c) taking a standard spectral photometric measurement of said sample;
and
d) converting said measurement into a standard L-a-b scale reading,
resulting in an a-value measurement.

The Examiner relies on the following evidence:
Brieva US 6,103,250 Aug. 15, 2000
Buranachokpaisan US 2003/0113282 A1 Jun. 19, 2003
Shin US 4,937,069 Jun. 26, 1990
Hilvert US 5,843,414 Dec. 1, 1998
Putnam US 5,718,890 Feb. 17, 1998

Appellants rely on the following evidence:
Declaration of David Walling, executed December 20, 2007.

Appeal 2010-001330
Application 11/158,171

3
The following grounds of rejection are before us for review:
I. Claims 3-5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Shin.
II. Claims 3-5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Brieva.
III. Claims 3-5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Buranachokpaisan.
IV. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being rendered
obvious by Putnam.
V. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being rendered
obvious by Hilvert.
Note that Appellants do not argue the claims separately in any of the
above rejections. Thus, we choose independent claim 3 to be representative
of the claims on appeal, and claims 4 and 5 stand or fall with that claim.
37 C.F.R. § 41.37(c)(1)(vii).

We affirm.

ISSUE (Anticipation)
The Examiner finds that claim 3 is anticipated by Brieva,
Buranachokpaisan, or Shin.
Appellants contend that the Walling Declaration demonstrates that the
Examiner erred in finding that the antiperspirant compositions taught by
Brieva, Buranachokpaisan, or Shin would inherently have an a-value
measurement of greater than 2.0.
Appeal 2010-001330
Application 11/158,171

4
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding the Walling Declaration does not demonstrate that
that the antiperspirant compositions taught by Brieva, Buranachokpaisan, or
Shin would inherently have an a-value measurement of greater than 2.0?

FINDINGS OF FACT
FF1 The Specification teaches that the “present invention relates to a
method to evaluate the performance of antiperspirant compositions.” (Spec.
2.) According to the Specification, “[i]t has been found that compositions
that develop higher red values, that is, a higher a-value on a standard L-a-b
colorimetric measurement . . . are better performing products.” (Id.) The
claims are directed to antiperspirant compositions.
FF2 The Specification presented the following examples of embodiments
that fall within the scope of the invention.

(Id. at 13.)
FF3 The Specification also tested some commercially available
competitive products (id. at 12). The Specification found that Old Spice Red
Appeal 2010-001330
Application 11/158,171

5
Zone Invisible Solid has an a-value of 1.91, Old Spice Red Zone Soft Solid
has an a-value of 1.89, Speedstick 24/7 IS has an a-value of 1.89, and Ban IS
has an a-value of 1.89 (id.).
FF4 The Examiner rejects claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Shin (Ans. 3).
FF5 The Examiner finds that “Shin discloses anhydrous semi-solid
antiperspirant compositions comprising an antiperspirant active, liquid
emollients (i.e., liquid carriers), and a solid emollient (i.e., structurant).”
(Id.)
FF6 The Examiner reviews the examples of Shin, and makes the following
comparison.

(Id. at 11.)
FF7 The Examiner thus finds that “[s]ince the compositions of Shin have
the same components and amounts as the composition of the claimed
Appeal 2010-001330
Application 11/158,171

6
invention, the compositions of Shin would also have the same a-value
measurement as the composition of the claimed invention.” (Id. at 4.)
FF8 The Examiner rejects claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Brieva (Ans. 5).
FF9 The Examiner finds that Brieva discloses an anhydrous antiperspirant
composition that has all of the components required by claim 3 (id. (citing
Example 10).)
FF10 The Examiner reviews the examples of Brieva, and makes the
following comparison.

(Id. at 14-15.)
FF11 The Examiner thus finds that “[s]ince the compositions of Brieva have
the same components as the composition of the claimed invention (i.e., an
antiperspirant active, a liquid carrier, and a structurant), the compositions of
Brieva would also have the same a-value measurement as the composition of
the claimed invention.” (Id. at 5.)
FF12 The Examiner rejects claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Buranachokpaisan (id.).
Appeal 2010-001330
Application 11/158,171

7
FF13 The Examiner finds that Buranachokpaisan teaches “a low residue
anhydrous antiperspirant stick composition comprising a volatile, such as
cyclomethicone (a liquid carrier), a gelling agent, such as stearyl alcohl (a
structurant), and at least one active antiperspirant material, such as
particulate aluminum zirconium tetrachlorohrdrex salts.” (Id. at 5-6.)
FF14 The Examiner reviews the examples of Buranachokpaisan, and makes
the following comparison.

(Id. at 18.)
FF15 The Examiner thus finds that “[s]ince the compositions of
Buranachokpaisan have the same components as the composition of the
claimed invention (i.e., an antiperspirant active, a liquid carrier, and a
structurant), the compositions of Buranachokpaisan would also have the
same a-value measurement as the composition of the claimed invention.”
(Id. at 6.)
FF16 The Walling Declaration states that the exact materials in the
examples cited in the Office Action were obtained, except for two specific
Appeal 2010-001330
Application 11/158,171

8
raw materials cited by the examples in Brieva and Buranachokpaisan - PEG
25 propylene glycol stearate and AlZr Tetrachlorohydrex Gly (Walling
Declaration, ¶4).
FF17 The Declaration determined the A-values for Examples I-IV of both
Hilvert and Putnam (id.). The results are reproduced below.

(Id.)

PRINCIPLES OF LAW
We recognize that in order for a prior art reference to serve as an
anticipatory reference; it must disclose every limitation of the claimed
invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997).
A single prior art reference that discloses, either
expressly or inherently, each limitation of a claim invalidates
that claim by anticipation. Thus, a prior art reference without
express reference to a claim limitation may nonetheless
anticipate by inherency. “Under the principles of inherency, if
the prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Moreover,
“[i]nherency is not necessarily coterminous with knowledge of
those ordinary skill in the art. Artisans of ordinary skill may
not recognize the inherent characteristics or functioning of the
prior art.”

Appeal 2010-001330
Application 11/158,171

9
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed.
Cir. 2005) (citations omitted); see also In re Spada, 911 F.2d 705, 709 (Fed.
Cir. 1990 (“When the claimed compositions are not novel they are not
rendered patentable by recitation of properties, whether or not these
properties are shown or suggested in the prior art.”).
Moreover:
Where . . . the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…. Whether the rejection is based on “inherency”
under 35 U.S.C. § 102, on “prima facie obviousness” under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)

ANALYSIS
Appellants note as to the anticipation rejections over Brieva,
Buranachokpaisan, or Shin, that the rejections rely on the principle of
inherency (App. Br. 3). Appellants assert that the Declaration of David
William Walling refutes that finding (id. at 4).
According to Appellants, the “Examiner cited Examples I-IV of
Putnam, Examples I-IV of Hilvert, Example 10 of Brieva, and Examples 1-3
of Buranachokpaisan as inherently possessing or suggesting an a-value of at
least 2.0.” (Id.) Appellants argue, that as set forth in the Declaration, the
Appeal 2010-001330
Application 11/158,171

10
Examples from Brieva and Buranachokpaisan could not be reproduced (id.;
see FF16). The a-values for the examples reproduced ranged from 1.49 to
1.87, “evidencing that an antiperspirant composition that includes an
antiperspirant active, a liquid carrier, and a structurant does not necessarily
yield an a-value in the recited range.” (App. Br. 4.) Appellants assert that
result “successfully rebuts an inherency rejection,” as the prior art disclosure
must necessarily include the unstated limitation, and the mere possibility that
the claimed feature is present is not sufficient (id. at 4-5).
Thus, Appellants argue, the “mere possibility, or even probability that
the compositions exemplified by Brieva, Buranachokpaisan, and Shin yield
an a-value that is greater than 2.0 is an improper basis for maintaining the
Section 102 rejection since the inherency foundation—a composition
employing an AP active, a liquid carrier, and a structurant has an a-value
that is greater than 2.0—has been shown to be less than absolute through Mr.
Walling’s declaration.” (Id. at 6.)
We have carefully considered Appellants’ arguments and Declaration,
but do not find them to be convincing. First, we agree that the Examiner has
established a prima facie case of anticipation. That is, we find that the
Examiner has demonstrated that the antiperspirant compositions of Shin,
Brieva, and Buranachokpaisan teach antiperspirant composition that have
essentially the same percentages of each of the antiperspirant active (AP
active), a liquid carrier, and a structurant as the antiperspirant compositions
set forth by the examples presented in the Specification.
While Appellants argue that the Walling Declaration establishes that
an antiperspirant composition comprising an AP active, a liquid carrier, and
Appeal 2010-001330
Application 11/158,171

11
a structurant will not necessarily have an a-value that is greater than 2.0,
Appellants have not addressed the Examiner’s finding that each of the
antiperspirant compositions of Shin, Brieva, and Buranachokpaisan teach
antiperspirant composition that have essentially the same relative amounts of
each of the AP active, a liquid carrier, and a structurant, as set forth by the
examples presented in the Specification. Moreover, as to Appellants
inability to reproduce the examples in Brieva and Buranachokpaisan,
Appellants have not established by evidence or by argument that even if
those examples had been reproduced, the antiperspirant compositions
exemplified by Brieva and Buranachokpaisan would not have an a-value that
is greater than 2.0. Finally, the Declaration does not even address the Shin
reference, and as found by the Examiner and discussed above, Shin teaches
antiperspirant compositions that have essentially the same amounts of each
of the AP active, a liquid carrier, and a structurant as the examples presented
in the Specification.

CONCLUSION OF LAW
We find that Appellants have not demonstrated that the Examiner
erred in finding that the Walling Declaration does not demonstrate the
antiperspirant compositions taught by Brieva, Buranachokpaisan, or Shin
would inherently have an a-value measurement of greater than 2.0.
We thus affirm:
The rejection of claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Shin:
Appeal 2010-001330
Application 11/158,171

12
The rejection of claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Brieva:
The rejection of claims 3-5 under 35 U.S.C. § 102(b) as being
anticipated by Buranachokpaisan.
ISSUES (Obviousness)

The Examiner concludes that claim 3 is rendered obvious by Hilvert
or Putnam.
Appellants contend that the Examiner erred in concluding that there
would have been a reason to optimize the antiperspirant compositions of
Hilvert and Putnam to obtain the antiperspirant composition of claim 3.
Appellants contend further that they have discovered a new formulation
guidepost, which is specifically recited in claim 3.
Thus, the issues on appeal are:
1) Have Appellants demonstrated that the Examiner erred in
concluding that there would have been a reason to optimize the
antiperspirant compositions of Hilvert and Putnam to obtain the
antiperspirant composition of claim 3?
2) Have Appellants demonstrated that the Examiner erred by not
considering the claim limitation that the antiperspirant composition meets
the formulation guidepost of having an a-value measurement of greater than
2.0?

Appeal 2010-001330
Application 11/158,171

13
FINDINGS OF FACT
FF18 The Examiner rejects claims 3-5 under 35 U.S.C. § 103(a) as being
rendered obvious by Hilvert (Ans. 6).
FF19 The Examiner finds that Hilvert teaches an anhydrous antiperspirant
composition “comprising a volatile silicone material (i.e., a liquid carrier), a
particulate antiperspirant active, and a gellant material (i.e., a structurant).”
(Id. (citing Examples I-IV of Hilvert).)
FF20 The Examiner notes that “[e]xamples I, II, and IV have a-value
measurements of 1.84, 1.87, and 1.80, respectively, as evidenced by
Applicant’s Declaration filed 6/20/08.” (Ans. 7.)
FF21 The Examiner notes that Hilvert does not teach “that the compositions
have an a-value measurement of greater than 2.0.” (Ans. 7.)
FF22 The Examiner concludes to optimize the amounts of antiperspirant
active, liquid carrier, and structurant for optimum activity, and that
“depending on the amounts chosen for optimum activity, the composition
would possess a-values in the claimed range.” (Id.)
FF23 The Examiner rejects claims 3-5 under 35 U.S.C. § 103(a) as being
rendered obvious by Putnam (Ans. 7).
FF24 The Examiner finds that Putnam teaches an anhydrous antiperspirant
composition “comprising a volatile silicone material (i.e., a liquid carrier), a
particulate antiperspirant active, and a gellant material (i.e., a structurant).”
(Id.at 8 (citing Examples I-IV of Putnam).)
FF25 The Examiner notes that “[e]xamples I- IV [of Putnam] have a-value
measurements ranging from 1.49 to 1.75, as evidenced by Applicant’s
Declaration filed 6/20/08.” (Id.)
Appeal 2010-001330
Application 11/158,171

14
FF26 The Examiner notes that Putnam does not teach “compositions having
a-value measurements of at least about 2.0.” (Id.)
FF27 The Examiner concludes it would have been obvious to optimize the
amounts of antiperspirant active, liquid carrier, and structurant for optimum
activity, and that “depending on the amounts chosen for optimum activity,
the composition would possess a-values in the claimed range.” (Id.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “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
Int’l v. Teleflex Inc., 550 U.S. 398. 418 (2007); see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
As recognized by the Court of Appeals for the Federal Circuit, the
“normal desire of scientists or artisans [is] to improve upon what is already
generally known.” In re Petering, 315 F.3d 1325, 1330 (Fed. Cir. 2003). In
addition, “where general conditions of a claim are disclosed in the prior art,
it is not inventive to discover the optimum or workable ranges by routine
Appeal 2010-001330
Application 11/158,171

15
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955); see also In
re Boesch, 617 F.2d 272, 276 (CCPA 1980) (noting that determining the
optimum values of result effective variables is ordinarily within the skill of
the art).

ANALYSIS
Appellants argue that there is no motivation or reason to modify
Hilvert or Putnam as suggested by the Examiner (App. Br. 6). According to
Appellants, as the Examiner notes that both Hilvert and Putnam disclose that
their compositions have improved performance characteristics, there would
be no reason to further modify the antiperspirant compositions of Hilvert and
Putnam as “[i]t is reasonable to conclude that [the] exemplified inventive
compositions within a patent document manifest the touted performance
characteristics.” (Id. at 6-7.)
Appellants argue further that “the discovery of a formulation
guidepost via the a-value measurement is by itself an inventive contribution
to the arts,” and that is also recited by the rejected claims (id. at 7).
Appellants argue that “[s]uch a formulation guidepost is neither taught nor
suggested by either applied reference.” (Id.)
Appellants’ arguments are not convincing. First, Appellants’
argument that there is no reason to optimize the antiperspirant compositions
of Hilvert and Putnam is contrary to the case-law of the Federal Circuit set
forth in cases such as Petering, Aller, and Boesch. The antiperspirant
compositions taught by Hilvert and Putnam have a-values ranging from 1.49
to 1.87. In addition, the Specification teaches that commercially available
Appeal 2010-001330
Application 11/158,171

16
compositions such as Old Spice Red Zone Invisible Solid have an a-value of
1.91. Thus, antiperspirant compositions available in the prior art have a-
values very close to the claimed a-value cutoff of 2.0. Given that fact, we
agree with the Examiner that it would have been well within the level of
skill of the ordinary artisan to optimize the amount of each of the
antiperspirant active (AP active), a liquid carrier, and a structurant in the
antiperspirant compositions of Hilvert and Putnam and obtain more effective
antiperspirant compositions. Such optimized antiperspirant compositions
would then meet the claim limitation of having an a-value measurement of
greater than 2.0.
As to Appellants’ argument that they have discovered a new
formulation guidepost, it must be remembered that Appellants are claiming a
composition, and not a method of determining a particular property of the
composition. Thus, while we agree that “every limitation positively recited
in a claim must be given effect in order to determine what subject matter that
claim defines. However, recitation, in a claim to a composition, of a
particular property said to be possessed by the recited composition, be that
property newly-discovered or not, does not necessarily change the scope of
the subject matter otherwise defined by that claim.” In re Wilder, 429 F.2d
447, 450 (CCPA 1970). Thus, the recitation that the antiperspirant
compositions meet a newly discovered guidepost, that is, that the
antiperspirant compositions have an a-value measurement of greater than
2.0, does not necessarily change the scope of the claimed antiperspirant
composition.

Appeal 2010-001330
Application 11/158,171

17
CONCLUSIONS OF LAW
We conclude:
1) Appellants have not demonstrated that the Examiner erred in
concluding that there would have been a reason to optimize the
antiperspirant compositions of Hilvert and Putnam to obtain the
antiperspirant composition of claim 3.
2) Appellants have not demonstrated that the Examiner erred by not
considering the claim limitation that the antiperspirant composition meets
the formulation guidepost of having an a-value measurement of greater than
2.0.
We thus affirm the rejection of claims 3-5 under 35 U.S.C. § 103(a) as
being rendered obvious by Putnam; as well as the rejection of claims 3-5
under 35 U.S.C. § 103(a) as being rendered obvious by Hilvert.

Appeal 2010-001330
Application 11/158,171

18
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

alw

THE PROCTER & GAMBLE COMPANY
GLOBAL LEGAL DEPARTMENT - IP
SYCAMORE BUILDING - 4th FlOOR
299 EAST SIXTH STREET
CINCINNATI, OH 45202