Ex Parte Wolff et al

Patent Trials and Appeals Board

May 21, 2019

13460439 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/460,439 04/30/2012 Kelly Laura Wolff
111049 7590 05/23/2019
DORITY & MANNING, P.A. and KIMBERLY-CLARK
WORLDWIDE, INC.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
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.
KCX-1864
(64785288US02)
CONFIRMATION NO.
2658
EXAMINER
BABSON, NICOLE PLOURDE
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/23/2019 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY LAURA WOLFF, COREY THOMAS CUNNINGHAM,
and JEFFREY RICHARD SEIDLING
Appeal2018-007529
Application 13/460,439 1
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 3-10, and 21
(Final Act. 2 2).3 Examiner entered rejections under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Kimberly-Clark Worldwide, Inc." as the real party in
interest (Appellants' January 29, 2018 Appeal Brief (Br.) 3).
2 Examiner's September 6, 2017 Final Office Action.
3 Claims 11-20 stand withdrawn from consideration (Final Act. 2).
Appeal2018-007529
Application 13/460,439
STATEMENT OF THE CASE
Appellants' disclosure relates "to a formulation comprising a silicone-
based polyurethane" (Spec. ,-J 1 ). Appellants' independent claim 1 is
representative and reproduced below:
1. A foaming formulation comprising
water,
at least 50% by weight of one or more alcohols, and
a silicone-based polyurethane having a polymeric
backbone comprising at least one silaphilic moiety, at least one
lipophilic moiety and at least one hydrophilic moiety, wherein
the polymeric backbone comprises a bis-(PEG)x dimethicone
wherein x ranges from 8 to 20 and wherein the at least one
lipophilic moiety is a diisocyanate.
(Br. 27.)
Grounds of rejection before this Panel for review:
I. Claims 1 and 3-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fernandez de Castro4 and Baumeister. 5
II. Claims 1, 3-10, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Seidling6 and Baumeister.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
4 Fernandez de Castro et al., US 2007/0065383 Al, published Mar. 22, 2007.
5 Baumeister et al., US 2005/0222001 Al, published Oct. 6, 2005.
6 Seidling et al., US 2009/0098067 Al, published Apr. 16, 2009.
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Application 13/460,439
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Final Act. 3-6) and provide the following for emphasis.
FF 1. Fernandez de Castro
relates to compositions with high contents of lower alcohol
(Ci-4) that could be dispensed as a foam both under low
pressure from unpressurized containers and from pressurized
containers achieved with an aerosol packaging system. The
compositions to be dispensed as foams contain a silicone-based
surfactant for foaming and when mixed with air provide a stable
alcohol foam which can be used for personal disinfecting
purposes.
(Fernandez de Castro ,-J 2.)
FF 2. Fernandez de Castro's foamable alcohol composition comprises,
inter alia, a foam stabilizing agent (Fernandez de Castro ,-J 32; see also id.
,-J,-J 29-33; id. ,-i 55 (Fernandez de Castro discloses that "[t]he phrase 'foam
stabilizer' as used herein refers to an additive that increases the amount or
persistence of foam produced by a surfactant system"); see generally ,-i 83
( exemplifying compatible foam stabilizers)).
FF 3. Examiner finds that "Fernandez de Castro ... do[es] not teach the
use of [Appellants'] elected species of [silicone-based polyurethane:] Bis-
PEG-15 Dimethicone/IPDI copolymer" and relies on Baumeister to make up
for this deficiency (Final Act. 3).
FF 4. Seidling discloses "foamable sanitizing compositions," which
"contain[] an alcohol in combination with the foaming agent and [ may also
contain a] foam strengthening agent" (Seidling ,-J,-J 11, 28, and 39 ("In
addition to an alcohol and a foaming agent, the composition can also contain
a foam strengthening agent")).
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Application 13/460,439
FF 5. Seidling discloses that "[t]he amount of alcohol contained within the
sanitizing composition may depend upon various factors" and "even at the
higher weight percentages, the composition can still remain foamable due to
the presence of ... derivatized dimethicone" (Seidling ,i 29).
FF 6. Seidling discloses that
linear dimethicone copolyols have thus far shown better
foaming properties. . . . [T]he linear molecules are capable of
stabilizing individual bubbles within the foam. In addition, the
linear nature of the molecules may form bridges between
bubbles with one polar end inserted into the lamella of one
bubble, the silicone backbone in the plateau junction and the
other polar end inserted into the lamella of an adjacent bubble
within the foam. Further, the silicone-silicone interactions in
linear molecules may also contribute to a cross-linked network
within and in between films adding excellent stability to the
foam and an increase in the quality and quantity of foam
generated when the composition is aerated.
(Seidling ,i 31; see also id. ,i 32 (Seidling discloses that linear dimethicone
copolyols include PEG dimethicone copolyols.)
FF 7. Examiner finds that although Seidling discloses "the use of
dimethicone copolyols to stabilize [a] foam and additional foam
strengthening agents .... Seidling ... do[es] not teach [Appellants'] elected
species of [ silicone-based polyurethane: ] Bis-PEG-15 Dimethicone/IPDI
copolymer" and relies on Baumeister to make up for this deficiency (Final
Act. 5 ( citing Seidling ,i,i 30-39)).
FF 8. Baumeister discloses the "use of certain silicone compounds as foam
stabilizers for [a] stable or permanent foamed composition" having "high
storage stability and ... improved sensory properties" (Baumeister ,i,i 5-6).
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FF 9. Baumeister discloses that preferred foam stabilizer silicon
compounds, include "bis-PEG-15 dimethicone/IPDI copolymer"
(Baumeister ,i 25).
ANALYSIS
Rejection I:
Based on the combination of Fernandez de Castro and Baumeister,
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious "to use the bis-PEG-15
dimethicone/IPDI copolymer of Baumeister ... [ as the foam stabilizer] in
the composition of Fernandez de Castro" (Final Act. 4; see FF 1-3, 8, and
9). In this regard, Examiner reasons that the combination of Fernandez de
Castro and Baumeister is nothing more than the combination of known
elements "with no change in their respective functions, and ... yielding
nothing more than predictable results" (id.). See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,416 (2007) ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results"). Examiner further finds that a person of
ordinary skill in this art would have been further motivated to combine
Fernandez de Castro with Baumeister "in order to obtain high storage
stability and improved sensory properties [ associated with the foam
stabilizers] taught by Baumeister" (Final Act. 4; see also FF 8).
As Appellants explain, Fernandez de Castro defines "a foam
stabilizing agent [as] an additive that increases the amount or persistence of
foam produced by a surfactant system (i.e., not just any foam, but only a
particular type of foam - one that is produced by a surfactant system)" (Br.
10; see also id. at 10-11; FF 2). Thus, Appellants contend that because
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Application 13/460,439
"Baumeister is not a foam produced by a surfactant system, one of skill in
the art would not look to Baumeister when considering alternative foam
stabilizers for a foam that is produced by a surfactant system" (Br. 11; see
also id. at 12 ("Fernandez de Castro utilizes foam stabilizers for alcohol
foams produced by a surfactant system, but the foam stabilizers of
Baumeister are not designed for a surfactant system" and "[g]iven the
specific definition of the foam stabilizers suitable for use in the alcohol
foams of Fernandez de Castro, one of skill in the art would simply not look
to foam stabilizers from other types of systems that form other types of
foams for alternative possibilities"); id. at 9-10 (Because Fernandez de
Castro and Baumeister describe foams "having different characteristics,
functions, methods, and basic structures of components, and in particular
[are] different types of foams," a person of ordinary skill in the art would not
utilize Baumeister' s foam stabilizer as the foam stabilizer in Fernandez de
Castro's foam (Br. 9-10). We agree.
Most if not all inventions arise from a combination of old
elements. . . . Thus, every element of a claimed invention may
often be found in the prior art. . . . However, identification in
the prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. . . . Rather,
to establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making
the specific combination that was made by the applicant.
In re Kotzab, 217 F.3d 1365, 1369-70 (Fed. Cir. 2000) ( citations omitted).
In other words, "there still must be evidence that 'a skilled artisan, ... with
no knowledge of the claimed invention, would select the elements from the
cited prior art references for combination in the manner claimed."'
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Application 13/460,439
Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361, 1375 (Fed.
Cir. 2000). Stated differently, an invention
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. ... [I]t can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.
KSR, 550 U.S. at 418.
For the foregoing reasons, we are not persuaded by Examiner's
assertion that "[t]he fact that Fernandez de Castro and Baumeister do not
teach identical compositions does not mean that they are not combinable and
that one of ordinary skill in the art would not be motivated to use the foam
stabilizer of Baumeister in the foams of Fernandez de Castro," because "[i]n
each formulation the ingredient would still be functioning as a foam
stabilizer" (Ans.7 4). The question is not, as Examiner appears to assert,
whether each of Fernandez de Castro and Baumeister disclose a foam
stabilizer. To the contrary, the question is whether, absent impermissible
hindsight, the evidence relied upon by Examiner supports a conclusion that a
person of ordinary in this art would have considered Baumeister' s foam
stabilizer to represent an additive that would increase the amount or
persistence of foam produced by Fernandez de Castro's surfactant system
(see FF 2). Although Examiner identified ingredients in both references that
have been labeled as foam stabilizers, Examiner failed to establish an
evidentiary basis, i.e. a reason, on this record to support a conclusion that
7 Examiner's May 18, 2018 Answer.
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Baumeister's foam stabilizer would function as such in Fernandez de
Castro's surfactant system (see e.g., Br. 9-12).
Rejection II:
Based on the combination of Seidling and Baumeister, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to use Baumeister' s bis-PEG-15 dimethicone/IPDI
copolymer as the foam stabilizer in Seidling' s composition (see Final Act. 6;
see FF 4-9). In this regard, Examiner reasons that the combination of
Seidling and Baumeister is nothing more than the combination of known
elements "with no change in their respective functions, and ... yielding
nothing more than predictable results" (id.). See KSR, 550 U.S. at 416 ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results"). Examiner
finds that a person of ordinary skill in this art would have reasonably
expected "success because Seidling ... teach[ es] the use of foam stabilizers
and foam strengtheners, including dimethicone copolyols, in [its]
composition" (Final Act. 6). Examiner further finds that a person of
ordinary skill in this art would have been further motivated to combine
Seidling with Baumeister "in order to obtain high storage stability and
improved sensory properties [ associated with the foam stabilizers] taught by
Baumeister" (id.; see also FF 8).
Although Appellants recognize that Seidling's derivatized
dimethicones "can aid in stabilizing individual bubbles within [its] foam,"
Seidling' s "derivatized dimethicones ... are not the foam stabilizers or foam
strengthening agents of [its] composition ... [but are instead,] the foaming
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agents and as such, Seidling combines the [ composition comprising]
foaming agents with ... foam strengthening agents" (Br. 21 ). We are not
persuaded.
Seidling discloses a foaming composition comprising a derivatized
dimethicone as a foaming agent (FF 4-6). Seidling directs a person of
ordinary skill in this art to the use of linear dimethicone copolyols, because
they exhibit "better foaming properties" (FF 6). In addition, Seidling
discloses that linear dimethicone copolyols not only "stabiliz[ e] individual
bubbles within the foam," but also "form bridges between bubbles with one
polar end inserted into the lamella of one bubble, the silicone backbone in
the plateau junction and the other polar end inserted into the lamella of an
adjacent bubble within the foam," wherein "the silicone-silicone interactions
in linear molecules may also contribute to a cross-linked network within and
in between films adding excellent stability to the foam and an increase in the
quality and quantity of foam generated when the composition is aerated" (FF
6). Although Seidling does not disclose bis-PEG-15 dimethicone/IPDI
copolymer as its linear dimethicone copolyol, Baumeister not only discloses
this specific linear dimethicone copolyol, but also discloses that it provides
"for [a] stable or permanent foamed composition" having "high storage
stability and ... improved sensory properties" (FF 7-9; see also Ans. 9-10).
Thus, notwithstanding Appellants' contention to the contrary, we find no
error in Examiner's prima facie case of obviousness (see Final Act. 5-6; see
also Ans. 8-12). For the foregoing reasons, we are not persuaded by
Appellants' contention "that a person of ordinary skill in the art having
common sense at the time of the invention would not have reasonably
looked to Baumeister to solve a problem already solved by Seidling" or that
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Application 13/460,439
"[ o ]ne of [ordinary] skill in the art would simply have had no expectation
that a foam stabilizer designed to stabilize" Baumeister' s foams would not
be useful in Seidling' s foam (Br. 23 and 26; see also id. at 23-24; cf Ans.
10-11).
Because Seidling directs a person of ordinary skill in this art to a
linear dimethicone copolyol, that exhibits foam stabilizing properties, such
as the foam stabilizer disclosed by Baumeister, we are not persuaded by
Appellants' contentions regarding the methods Seidling and Baumeister use
to produce their foams (see Br. 21-22; see also id. at 23-24). For the same
reasons, we are not persuaded by Appellants' contentions regarding
Seidling' s optional foam strengthening agent (see Br. 22; see also FF 4; cf
Ans. 9-10 (Examiner acknowledges that the linear dimethicone copolyol
disclosed by Baumeister is different than Seidling's foam strengthening
agents (i.e. surfactants) and that Examiner's rejection does not exclude the
addition of the optional foam strengthening agents from Seidling' s
composition)).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness; therefore, the rejection of claims 1 and
3-10 under 35 U.S.C. § 103(a) as unpatentable over the combination of
F emandez de Castro and Baumeister is reversed.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness; therefore, the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over the combination of Seidling and
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Application 13/460,439
Baumeister is affirmed. Claims 3-10 and 21 are not separately argued and
fall with claim 1.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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