L'OREAL

Patent Trials and Appeals Board

Oct 12, 2021

2021000945 (P.T.A.B. Oct. 12, 2021)

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.
15/622,682 06/14/2017 Audrey Gueniche 085507-574641 6219
30678 7590 10/12/2021
POLSINELLI PC
(DC OFFICE)
PO Box 140310
Kansas City, MO 64114-0310
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
10/12/2021 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AUDREY GUENICHE and ISABELLE CASTIEL

Appeal 2021-000945
Application 15/622,682
Technology Center 1600
Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, and 9–13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies L’OREAL as the real party-in-
interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Specification describes the use of “a monounsaturated fatty acid
or one of its salts and/or of its esters and/or its amides, in particular in a
composition comprising a physiologically acceptable medium” for treating
and/or preventing unpleasant human body odors. Spec. 1. According to the
Specification, the inventors have surprisingly discovered that the use of such
fatty acids have activity against body odors even though they do not have
detectable antibacterial activity with regard to the microorganisms
responsible for such unpleasant body odors, such as Corynebacterium
striatum, Corynebacterium mucifaciens or Corynebacterium xerosis. Id. at
4–5.
Claim 7 is the only independent claim, is illustrative of the claimed
subject matter, and is reproduced below:
7. A cosmetic method by topical route for treating and/or
preventing human body odours, which comprises applying, to
the surface of a human keratinous substance, a deodorant
composition comprising, in a physiologically acceptable
medium, as deodorant active agent at least one
monounsaturated fatty acid or one of its salts and/or one of its
esters and/or one of its amides, wherein the at least one
monounsaturated fatty acid is selected from the group
consisting of, petroselinic acid, cis-8-octadecenoic acid and cis-
vaccenic acid, and their mixtures; and wherein the at least one
monounsaturated fatty acid or one of its salts and/or one of its
esters and/or one of its amides does not exhibit a detectable
antibacterial activity with regard to Corynebacterium striatum,
Corynebacterium mucifaciens or Corynebacterium xerosis.
Appeal Br. 15 (Claims App. A).
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REJECTIONS
The Examiner rejected claims 7, and 9–13 under 35 U.S.C. § 102 as
anticipated by Mayes2 as evidenced by Wikipedia.3
ISSUES AND ANALYSIS
The Examiner finds that Mayes discloses an antiperspirant or
deodorant composition in a physiologically acceptable medium suitable for
topical application to the human skin comprising an antiperspirant active and
a PPAR activating fatty acid and/or hydrolysable precursor thereof such as a
triglyceride or ester, where the PPAR fatty acids are preferably unsaturated.
Final Act. 4 (citing Mayes Abstract, 2:32–67, 4:65–67, claims 1, 3, and 9).
The Examiner also finds that Mayes discloses a list of possible PPAR fatty
acids in isolated form including petroselinic acid and vaccenic acid, which
are recited in claim 1. Id. (citing Mayes 5:1–54).
With regard to the claim preamble, the Examiner finds that,
“deodorants by definition prevent body odor as evidenced by Wikipedia,”
thus, “the topical application of the antiperspirant or deodorant compositions
of Mayes is necessarily a method for treating and/or preventing unpleasant
human body odor.” Id. at 4–5. The Examiner finds that claim 17 of Mayes,
which claims the topical application of the antiperspirant or deodorant
compositions as a method of reducing or eliminating sweat or body odor, is
further evidence of inherency. Id. at 5 (citing Mayes, claim 17). With
regard to the final wherein clause of not exhibiting a detectable antibacterial
activity for the recited Corynebacterium species, the Examiner finds that,

2 Mayes et al., US 6,713,051 B2, issued March 30, 2004 (“Mayes”).
3 Wikipedia, “Deodorant,” last edited June 24, 2018 (“Wikipedia”).
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because Mayes discloses compositions comprising petroselinic acid in
compositions comprising antiperspirants, the method of Mayes necessarily
produces the claimed result. Id.
With respect to claims 12 and 13, which recite that the composition is
in a stick form or is an aerosol, respectively, the Examiner find that Mayes
teaches a stick form in claim 14 and teaches an aerosol in claim 15. Id.
(citing Mayes, claims 14, 15).
Appellant argues that Mayes is concerned with antiperspirant
compositions and distinguishes between deodorants and antiperspirants
(contrasting Mayes 1:15–19 with 1:21–28), while the claimed invention is
concerned with applying a deodorant composition. Appeal Br. 5. Appellant
asserts that “[a]lthough the term ‘comprising’ opens the claims to include
components in addition to those explicitly recited, it cannot open the claim
to include ingredients and/or relative amounts that would detract from the
composition being a deodorant” because “significant differences exist[]
between antiperspirant compositions and deodorant compositions.” Id. at 6
(citing to Exhibits A–D). Appellant argues that the claim recitation of
“deodorant composition” excludes “antiperspirants that would convert the
deodorant composition to an antiperspirant composition.” Id. Appellant
further asserts that the present Specification clearly distinguishes between
deodorant compositions and antiperspirant compositions. Id. at 6–7 (citing
Spec. 4:1–6, 5:25–28, 14:11–15).
Appellant also argues that Mayes does not disclose or suggest that the
fatty acids act as active deodorant agents. Id. at 9. According to Appellant,
the PPAR activating fatty acids of Mayes are used to ameliorate or
overcome the perceived irritancy of the astringent aluminum or zirconium
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salts of the antiperspirant, thus, “it is not at all apparent that such would or
could be available to even act as a deodorant active agent in the
compositions suggested by Mayes.” Id. at 5, 9. Appellant asserts that
Mayes supports this argument because it states that “[t]he effect of each
ingredient of a formulation should not be considered by itself. Its interaction
with other ingredients should also be considered to obtain an overall picture.
For example, acid neutralisation of antiperspirant actives can result in the
de-activation of the antiperspirant active by complexation.” Id. (quoting
Mayes 3:9–15).
With regard to claim 12, Appellant argues that “[a]lthough Mayes
mentions stick form as a possibility, there are no specific examples in Mayes
that are in stick form and containing petroselinic acid or vaccenic acid from
the various possibilities therein.” Id. at 9–10. Similarly, with regard to
claim 13, Appellant asserts that “[a]lthough Mayes mentions aerosols as a
possibility, there are no specific examples in Mayes that are in aerosol form
and containing petroselinic acid or vaccenic acid from the various
possibilities therein.” Id. at 10.
We find that the Examiner has the better position. The Examiner’s
finding that Mayes discloses compositions comprising petroselinic and/or
vaccenic acid and also discloses methods of reducing or eliminating sweat or
body odor by topically applying these compositions to the skin is supported
by a preponderance of the evidence. See Mayes Abstract, 4:38–41, 5:1–18,
claim 17. Specifically, Mayes teaches the use of PPAR fatty acids in
antiperspirant compositions and provides a list of sixteen different PPAR
fatty acids that may be used, including the claimed petroselinic and vaccenic
acids. See Mayes 4:38–41, 5:1–18.
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Appellant argues that “the cited art must clearly and unequivocally
disclose the claimed invention without any need for picking and choosing
and combining various disclosures from the reference.” Appeal Br. 10
(citing Net MoneyIn v. VeriSign, Inc. et al., 545 F.3d 1359, 1371 (Fed. Cir.
2008)). We are not persuaded by this argument. Here, Mayes provides a list
of sixteen possible PPAR fatty acids and we find that the Examiner’s
rejection is consistent with In re Petering, 301 F.2d 676, 682 (CCPA 1962).
Indeed, in Petering, the CCPA found that “each compound within the
limited class [of 20 compounds] . . . has been described in a printed
publication within the meaning of 35 U.S.C. § 102(b).” Petering, 301 F.2d
at 682. The rejection is also consistent with Perricone, which found in that
case that, “the prior art does not merely disclose a genus of skin benefit
ingredients without disclosing the particular claimed ingredient. Rather
Pereira specifically discloses ascorbyl palmitate. That specific disclosure,
even in a list, makes this case different from cases involving disclosure of a
broad genus without reference to the potentially anticipating species.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005)
Appellant also argues that the claim limitation “deodorant
composition” limits the claims to compositions that function as deodorant
compositions and excludes antiperspirant components “that would convert
the deodorant compositions to an antiperspirant composition.” Appeal Br. 6.
First, we note that the pending claims recite “comprising” so they
encompass other non-recited elements such as the antiperspirant components
of Mayes. “In the patent claim context, the term ‘comprising’ is well
understood to mean ‘including but not limited to.’” CIAS, Inc. v. Alliance
Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007).
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Second, Appellant has not presented any evidence demonstrating the
alleged incompatibility of deodorant and antiperspirant compositions.
Appellant merely speculates that the PPAR activating fatty acids in the
compositions of Mayes may not be able to act as a deodorant active agent
because these fatty acids also need to ameliorate or overcome the perceived
irritancy of the astringent aluminum or zirconium salt in the anti-perspirant
compositions of Mayes. However, Appellant does not provide any objective
evidence that the PPAR activating fatty acids in Mayes’ composition could
not act as a deodorant, especially given Mayes’s teaching of using the
disclosed compositions to reduce or eliminate body odor. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Further, Appellant has not persuasively shown that a composition
cannot act as both a deodorant and an anti-perspirant. The current
Specification does not explicitly define “deodorant” but does define a
“deodorant active agent” as an agent that “has the effect of masking,
absorbing, improving and/or reducing the unpleasant odor resulting from the
decomposition of human sweat.” Spec. 5:25–28. Mayes teaches that
antiperspirants can also act as deodorants in stating that antiperspirants “can
often simultaneously provide a perceived degree of deodorancy.” Mayes
1:19–20. The Wikipedia entry cited by the Examiner also describes
antiperspirants as a subgroup of deodorants with deodorant being a
substance that prevents body odor while antiperspirants affect odor and
prevent sweating. See Wikipedia 1. Similarly, the evidence cited by
Appellant also describes antiperspirants as odor control products. See, e.g.,
Exhibit B (“Deodorant protects against odor, while antiperspirant protects
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against sweat and odor.”); Exhibit C, 8–9 (describing a deodorant combined
with an antiperspirant). Appellant therefore has not persuasively shown that
the recitation of “deodorant” in the claims excludes the additional actives
described in Mayes’ composition.
Appellant further contends that Mayes does not disclose or suggest
that the fatty acids therein act as active deodorant agents as recited in the
claims. Appeal Br. 9. However, under In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990), the Examiner had sound basis to find that the deodorant activity
of the petroselinic or vaccenic acid is inherent to these fatty acids since the
activity is a property of each of the compounds. See In re Papesch, 315 F.2d
381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same thing.”). “A
reference may anticipate even when the relevant properties of the thing
disclosed were not appreciated at the time.” Abbott Labs. v. Baxter Pharm.
Products, Inc., 471 F.3d 1363, 1367 (Fed. Cir. 2006).
With regard to claims 12 and 13, Appellant argues that there are no
specific examples in Mayes that are in stick or aerosol form containing
petroselinic acid or vaccenic acid. See Appeal Br. 9–10. We are not
persuaded by this argument because claims 14 and 15 of Mayes disclose the
use of a stick form and aerosol form, respectively. See Mayes 22:19–24.
These claims depend from claim 1, which recites the use of a PPAR
activating fatty acid. As discussed above, Mayes discloses a list of sixteen
different PPAR activating fatty acids, including petroselinic and vaccenic
acid. Thus, for the reasons discussed above, Mayes teaches the use of
petroselinic and vaccenic acid in such compositions and also discloses their
use in stick or aerosol form. “The question for purposes of anticipation is
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therefore whether the number of categories and components in [the single
prior art reference] was so large that the combination of [one item from each
list] would not be immediately apparent to one of ordinary skill in the art.”
WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012). Disclosure of a specific working example is not required to
establish anticipation. Petering, 301 F.2d at 681; Wrigley, 683 F.3d at 1361–
1362.
For the reasons explained above, we affirm the Examiner’s rejection
of claims 7, 12, and 13 as being anticipated by Mayes as evidenced by
Wikipedia. Claims 9–11 are not argued separately apart from the
independent claim, and, therefore, fall with claim 7. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
For the reasons described herein and those already of record, we
affirm the anticipation rejection of claims 7, and 9–13.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 9–13 102 Mayes, Wikipedia 7, 9–13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED