Manuela Koehler et al.

Patent Trials and Appeals Board

Oct 15, 2019

13578061 - (D) (P.T.A.B. Oct. 15, 2019)

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.
13/578,061 10/05/2012 Manuela Koehler 3321-P50015 2510
13897 7590 10/15/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
FISHER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANUELA KOEHLER, BERND TRAUPE, ANDREAS FIRYN,
ANTONIA WAGNER, and KATHARINA ROPETER
____________

Appeal 2018-000420
Application 13/578,061
Technology Center 1600
____________

Before JAMES A. WORTH, ROBERT A. POLLOCK, and
RICHARD J. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 27–46. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Beiersdorf
AG of Hamburg, Germany. Appeal Br. 3.

Appeal 2018-000420
Application 13/578,061

2
STATEMENT OF THE CASE
Claims on Appeal
Claims 27–46 are on appeal. Appeal Br. 20–24 (Claims Appendix).
Claim 27 is illustrative and reads as follows:
27. A cosmetic or dermatological emulsion, wherein the
emulsion comprises dissolved therein one or more acyl arginates
of formula

wherein R represents H or alkyl having 5 to 22 carbon atoms and
R2 represents OH, O-C2H5 or O-alkyl having 5 to 22 carbon
atoms and wherein the emulsion further comprises from 25 % to
50 % by weight glycerol, based on a total weight of the emulsion.
Id. at 20.
Examiner’s Rejections
1. Claims 27–39 stand rejected under 35 U.S.C. 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement (new matter). Final Act. 3–4.2

2 Office Action dated Nov. 15, 2016. The Examiner withdrew this rejection
regarding the recitation of “wherein the emulsion comprises dissolved
therein one or more acyl arginates,” but maintained the rejection regarding
“O-alkyl having 5 to 22 carbon atoms.” Ans. 2.
Appeal 2018-000420
Application 13/578,061

3
2. Claims 27–46 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Urgell3 and Yamato.4 Id. at 6–9.
3. Claims 27, 28, 31–41, and 44–46 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Yamato and Takano.5 Id. at 9–11.
FINDINGS OF FACT
The following findings are included for emphasis and reference
purposes.
FF 1. Urgell teaches the use of a class of compounds that are “suitable for
use as preservatives in cosmetic or dermatological preparations,” and that
“[a] particularly suitable compound is the ethyl ester of the lauramide of
arginine hydrochloride (LAE).” Urgell Abstract.
FF 2. Urgell teaches that the chemical structure for LAE is as follows:

Urgell 1.
FF 3. Urgell teaches that the class of compounds, of which LAE is the most
preferred, has the following formula:

3 Urgell et al., WO 03/013453 A1, published Feb. 20, 2003 (“Urgell”).
4 Yamato, US 2003/0124156 A1, published July 3, 2003 (“Yamato”).
5 Takano, EPO 0320976 A1, published June 21, 1989 (“Takano”).
Appeal 2018-000420
Application 13/578,061

4

where:
X- is Br-, Cl-, or HSO4-
R1: is a linear alkyl chain from a saturated fatty acid or hydroxyacid from 8
to 14 atoms of carbon bonded to the α- amino acid group through an amidic
bond.
R2: is a linear or branched alkyl chain from 1 to 18 carbon atoms or an
aromatic group.
R3: is

and n can be from 0 to 4. Urgell 3.
FF 4. Urgell teaches the use of glycerin (glycerol) in the general
composition for a cosmetic formulation. Urgell 9 (Example 3).
FF 5. Urgell teaches that the compositions can be in the form of
“[e]mulsions formed by dispersion of [an] oil phase in a water phase (O/W)
or inverse phase (W/O).” Urgell 5.
Appeal 2018-000420
Application 13/578,061

5
FF 6. Yamato teaches a cosmetic composition comprising one or more
members selected from the group consisting of mono-Nα-acylarginines and
cosmetic powders whose surfaces have been treated with a mono-Nα-
acylarginines (Ingredient A) and one or more members selected from the
group consisting of polyhydric alcohols (Ingredient B). Yamato Abstract.
FF 7. Yamato teaches that its mono-Nα-acylarginine is represented by the
formula

wherein R represents a straight-chain or branched-chain alkyl or alkenyl
group having 1–21 carbon atoms. Yamato ¶¶ 16–17.
FF 8. Yamato teaches that the polyhydric alcohol can be glycerol, and “is
usually employed in the range of 0.001 to 50% by weight based on the total
amount of the cosmetic composition.” Yamato ¶¶ 41–42.
FF 9. Takano teaches cosmetics for the skin or hair containing an arginine
derivative that “can emulsify the oily and aqueous components uniformly to
form a stable emulsion.” Takano Abstract.
DISCUSSION
Except as otherwise indicated, we adopt the Examiner’s findings,
analysis, and conclusions as our own, including with regard to the scope and
content of and motivation to combine the prior art.
Appeal 2018-000420
Application 13/578,061

6
1. Lack of Written Description (new matter)
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejection of claims 27–39 under § 112, as failing to comply with
the written description requirement (new matter).
Analysis
The Examiner finds that “while R2 being OH is supported by the
instant specification and original claim set, there is no such support for R2
being an O-alkyl having 5 to 22 carbon atoms. This is a new matter
rejection.” Final Act. 4.
Appellant argues that original claim 1 recites one or more acyl
arginates of the formula

wherein R and R2, independently of one another, represent H or C5-22-alkyl.6
Appeal Br. 8–9; Reply Br. 2–3.
Appellant further argues that, based on the formulas in original claim
1 and original claim 2 (wherein R2 is O-C2H5) and the naming of the
compounds as acyl arginates, it is apparent that an oxygen is missing
between R2 and the carbonyl group (C=O) in the formula as originally

6 Specification filed Sept. 8, 2012, 19.
Appeal 2018-000420
Application 13/578,061

7
claimed. Appeal Br. 8. Moreover, Appellant argues that acyl arginates are
derivatives of the amino acid arginine, and that “one of ordinary skill in the
art is aware that if [claimed] R2 . . . is H or alkyl, the corresponding
compounds are no longer derivatives of arginine,” and that one of ordinary
skill would understand them to rather be “alkyl-substituted guanidines
whose alkyl group is substituted by an acyl group (with R2 being alkyl
having 5-22 carbon atoms) and an acylamino group (with R being H or alkyl
having 5-22 carbon atoms).” Id.; Reply Br. 2–3.
When an applicant amends or adds claims during prosecution, the
newly claimed subject matter must find written description support in the
original specification. TurboCare Div. of Demag Delavel Turbomachinery
Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001). The
Examiner points to the absence in the Specification of an express showing
that R2 can be O-alkyl having 5 to 22 carbon atoms. Ans. 2–3. However, if
“a person of ordinary skill in the art would have understood the inventor to
have been in possession of the claimed invention at the time of filing, even if
every nuance of the claims is not explicitly described in the specification,
then the adequate written description requirement is met.” In re Alton, 76
F.3d 1168, 1175 (Fed. Cir. 1996); see also Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing cases) (“the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date”).
We are persuaded by Appellant’s arguments that a person of ordinary
skill in the art would have understood that the inventors were in possession
of the limitation that R2 may be O-alkyl having 5 to 22 carbon atoms, as
Appeal 2018-000420
Application 13/578,061

8
recited in claims 27–39, at the time the Specification was filed.
Accordingly, based on the record before us, we find that the Specification as
filed satisfies the written description requirement because it reasonably
conveys to those skilled in the art that Appellant had possession of the
limitation that R2 may be O-alkyl having 5 to 22 carbon atoms as recited in
claims 27–39.
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections under pre-AIA 35 U.S.C. § 103(a).
Analysis
2. Obviousness over Urgell and Yamato
Claims 27–46 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Urgell and Yamato. Final Act. 6–9. We address claim
27, and claims 28 and 40 which are argued separately.
Claim 27
Urgell teaches all of the limitations of claim 27, except for the specific
amount of glycerol being 25% to 50% by weight of the total weight of the
emulsion. Final Act. 6–8; FF 1–5. Urgell teaches the formula of claim 27
wherein R2 is O-C2H5 (FF 2) and further teaches the use of glycerol in a
cosmetic composition (FF 4). Yamato teaches a similar cosmetic
composition wherein the amount of glycerol “is usually employed in the
range of 0.001 to 50% by weight based on the total amount of the cosmetic
composition.” FF 6–8. That range entirely overlaps and encompasses the
claimed range of “from 25 % to 50 % by weight glycerol, based on a total
weight of the emulsion.” See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“[A] prior art reference that discloses a range encompassing a
Appeal 2018-000420
Application 13/578,061

9
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness.”)
The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to utilize [] 0.001 to 50% by
weight of glycerol as taught by Yamato in the composition of
Urgell []. One would be motivated to do so with a reasonable
expectation of success as Yamato teaches a cosmetic
composition comprising one or more mono-Nα-acylarginines and
one or more polyhydric alcohols, where the polyhydric alcohol
can include glycerol and [Yamato] teaches that the cosmetic
composition is excellent in conditioning effects such as moist
feeling and voluminous feeling in the case of hair cosmetics and
excellent in feelings upon use such as smoothening property and
moist feeling without sticky feeling and occlusive feeling in the
case of skin cosmetics.
Final Act. 8–9 (citing Yamato Abstract).
Appellant advances several arguments in opposition to the conclusion
of obviousness. Appellant argues that the compounds of Ugell and Yamato
are distinguishable in that (1) in the compounds of Urgell R2 cannot be H,
but the corresponding R2 in Yamato can only be H, and (2) “the
compositions of YAMATO contain mono-Nα-acylarginines in solid form
and would thus, apparently not be suitable as cationic surfactants or
preservatives” (i.e., as in the case of the compositions of Urgell). Appeal Br.
12–13; Reply 3–4.
We are not persuaded by this argument. To the extent Appellant is
arguing that the compositions of Urgell and Yamato could not be physically
combined, that argument is unavailing because the test for obviousness is
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
Appeal 2018-000420
Application 13/578,061

10
1981); see Ans. 4. Furthermore, to justify combining reference teachings it
is not necessary to establish that a device or composition shown in one
reference can be physically inserted into or combined with the device or
composition shown in the other. See id. Moreover, the Examiner
persuasively explains that Yamato teaches “two distinct embodiments” and
that “Appellant ignores the teaching of mono-Nα-acylarginines that are not
coated on cosmetic particles.”7 Ans. 6; Final Act. 14.
Appellant argues that “most of the compositions that are exemplified
in URGELL are free of glycerol,” but that one of ordinary skill would have
understood that the mono-Nα-acylarginines of Yamato “exhibit [their]
effects . . . only in combination with one or more polyhydric alcohols.”
Appeal Br. 13. We are not persuaded by this argument because Urgell
discloses the use of glycerol and Urgell’s disclosure is not limited to its
working examples. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“a
reference is not limited to the disclosure of specific working examples”);
FF 4.
Appellant argues that, although Yamato discloses that 0.001 to 50%
by weight of polyhydric alcohol (e.g. glycerol) can be present in its
disclosed compositions, it also states that a preferred amount of polyhydric
alcohol is from 0.01 to 10% by weight. Appeal Br. 13. Thus, according to

7 Appellant states in the Reply Brief that “the Examiner now takes the
position [in the Answer] that the mono-Nα-acylarginines of YAMATO are
present in solid form in only one of the two embodiments disclosed therein”
(emphasis added). Reply Br. 4. But the Examiner stated that position prior
to the filing of the Appeal Brief. See Final Act. 14; Advisory Action dated
Feb. 7, 2017, 2. Accordingly, new arguments made in the Reply Brief with
respect to that issue are waived. See, e.g., Reply Br. 4–5.
Appeal 2018-000420
Application 13/578,061

11
Appellant, “it is not seen that YAMATO prompts one of ordinary skill in the
art to include at least 25% by weight of glycerol in the compositions
according to URGELL.” Id. We are not persuaded by this argument
because “[a] reference must be considered for everything that it teaches, not
simply the described invention or a preferred embodiment.” In re Applied
Materials, 692 F.3d 1289, 1298 (Fed. Cir. 2012).
Appellant argues that Yamato does not appear to teach emulsions.
Appeal Br. 14; Reply Br. 5. We are not persuaded by this argument because
Urgell teaches emulsions (FF 5) and Yamato is cited for its teaching of the
amount of glycerol that may be included in the composition of Urgell. Ans.
6; see also In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show
non-obviousness by attacking references individually”).
Appellant argues that “the mono-Nα-acylarginines of YAMATO are
apparently not present in dissolved form but are present in solid form.”
Appeal Br. 14. We are not persuaded by this argument because, as
explained by the Examiner, “Appellant ignores [Yamato’s] teaching of
mono-Nα-acylarginines that are not coated on cosmetic particles,” and “one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.” Ans. 6 (citing Keller,
642 F.2d at 426 and In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986)). Moreover, regarding the dissolved form of acyl arginates, Appellant
has acknowledged that acyl arginates are soluble in at least the aqueous
phase of an emulsion. Appeal Br. 9–10.
Appellant argues that the differences between the compounds of
Urgell and Yamato are such that one of ordinary skill in the art would not
“expect to find useful information regarding a possible improvement of the
Appeal 2018-000420
Application 13/578,061

12
compositions disclosed in URGELL in YAMATO,” particularly with respect
to the amount of glycerol taught by Yamato. Appeal Br. 15; Reply 6. We
are not persuaded by this argument because, as Appellant acknowledges,
“one of ordinary skill in the art will understand that the mono-Nα-
acylarginines of YAMATO exhibit the effects disclosed in [Yamato] only in
combination with one or more polyhydric alcohols” (e.g. glycerol). Appeal
Br. 13. Moreover, it is those effects taught by Yamato that would have
prompted one of ordinary skill in the art to combine Yamato’s teachings
regarding glycerol with the teachings of Urgell to arrive at claim 27. Final
Act. 8–9.
We are persuaded that the Examiner has shown by a preponderance of
the evidence that claim 27 would have been obvious. See FF 1–8.
Claims 28 and 40
Claims 28 and 40 recite isomers wherein R2 is OH. Appeal Br. 20–
23. The Examiner’s rejection does not point to any teaching of Urgell
wherein R2 can be OH. Moreover, Appellant argues that when R2 represents
OH, the compound of claim 27 is in the form of free acid, but “the
preservatives of URGELL can not be present in the form of a free acid.”
Appeal Br. 16. Accordingly, we reverse the rejection of claims 28 and 40,
and claims dependent on claim 40 (41–46) based on the combination of
Urgell and Yamato in Rejection No. 2.
3. Obviousness over Yamato and Takano
Claims 27, 28, 31–41, and 44–46 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Yamato and Takano. Final Act. 9–11.
Appellant does not separately argue the rejection of claims 27, 28, 31–41,
Appeal 2018-000420
Application 13/578,061

13
and 44–46 based on Yamato and Takano. Appeal Br. 16–18. We thus limit
our consideration of this rejection to claim 27.
Yamato teaches all of the limitations of claim 27 other than that the
composition is an emulsion. Final Act. 9–11; FF 6–8. Takano teaches
arginine derivatives that can emulsify the oil and aqueous components to
form an oil-in-water or water-in-oil emulsion. Final Act. 10–11; FF 9. The
Examiner concludes that
it would have been obvious to a person of ordinary skill in the art
at the time that the invention was made to formulat[e] the
composition of Yamato into an emulsion as taught by Takano [].
One would be motivated to do so with a reasonable expectation
of success as Yamato teaches the preparations of milky lotions
and Takano [] teaches that the emsulfier [sic] composition can
provide cosmetics for the skin such as a milky lotion and cream.
Final Act. 11.
Appellant argues that Yamato does not teach or suggest mono-Nα-
acylarginines in dissolved form, and that this deficiency is not cured even if
one were to assume that Takano renders it obvious to provide the
compositions of Yamato in the form of emulsions. Appeal Br. 17.
Appellant further argues that Yamato’s compositions must contain mono-
Nα-acylarginines in solid form, and that one of ordinary skill in the art would
not have been motivated to provide Yamato’s compositions as emulsions.
Id. at 17–18; Reply Br. 6–7.
We are not persuaded by these arguments. As explained by the
Examiner, Yamato teaches mono-Nα-acylarginines (a first embodiment) and
cosmetic powders whose surface have been treated with mono-Nα-
acylarginines (a second embodiment). Ans. 9; Final Act. 14. The Examiner
also persuasively explains the reasons for providing Yamato’s compositions
Appeal 2018-000420
Application 13/578,061

14
as an emulsion. See Final Act. 11; Ans. 9–10. Moreover, regarding the
dissolved form of acyl arginates, Appellant has acknowledged that acyl
arginates are soluble in at least the aqueous phase of an emulsion. Appeal
Br. 9–10.
Appellant argues that there are structural differences between the
compounds of Yamato and Takano, which is “another reason why one of
ordinary skill in the art would not have combined the disclosures of these
documents in the way envisioned by the Examiner.” Appeal Br. 18; Reply
6. We are not persuaded by this argument for the reasons set forth above in
connection with Appellant’s arguments regarding the differences between
the compounds of Urgell and Yamato. See also Ans. 10.
CONCLUSION
Rejection No. 1: A preponderance of evidence of record fails to
support the Examiner’s rejection of claims 27–39 under § 112, as failing to
comply with the written description requirement (new matter).
Rejection No. 2: A preponderance of evidence of record supports the
Examiner’s rejection of claim 27 under pre-AIA 35 U.S.C. § 103(a) based
on Urgell and Yamato. Claims 29–39 were not argued separately and fall
with claim 27. A preponderance of evidence of record fails to support the
Examiner’s rejection of claims 28 and 40–46 under pre-AIA 35 U.S.C.
§ 103(a) based on Urgell and Yamato.
Rejection No. 3: A preponderance of evidence of record supports the
Examiner’s rejection of claim 27 under pre-AIA 35 U.S.C. § 103(a) based
on Yamato and Takano. Claims 28, 31–41, and 44–46 were not argued
separately and fall with claim 27.
Appeal 2018-000420
Application 13/578,061

15
SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
27–39 § 112 written
description
(new
matter)
27–39
27–46 § 103(a)

Urgell,
Yamato
27, 29–39 28, 40–46
27, 28, 31–41,
44–46
§ 103(a)

Yamato,
Takano
27, 28, 31–
41, 44–46

Overall
Outcome
27–41, 44–46 42, 43

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 IN PART