Maria Fernandez de Castro et al.

Patent Trials and Appeals Board

Oct 23, 2020

2020001974 (P.T.A.B. Oct. 23, 2020)

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.
14/938,663 11/11/2015 Maria Teresa Fernandez de Castro 25129-8001 3712
25541 7590 10/23/2020
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
EXAMINER
CHUI, MEI PING
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
10/23/2020 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):
ipusmail@ngelaw.com
twilliams@ngelaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIA TERESA FERNANDEZ DE CASTRO,
BRUCE MICHAEL KOIVISTO, and FRANCISCO MUNOZ
____________

Appeal 2020-001974
Application 14/938,663
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–4, 6, 8, 17–20, 27–31, 33–35, 40, and

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 DEB
WORLDWIDE HEALTHCARE INC. (See Appeal Br. 2.)
2 We consider the Specification dated November 11, 2015 (“Spec.”), Final
Office Action issued November 6, 2018 (“Final Act.”), the Appeal Brief
filed July 8, 2019 (“Appeal Br.”), and the Examiner’s Answer issued
October 31, 2019 (“Ans.”).
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88. (Appeal Br. 3.) We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
ANALYSIS
Appellant’s Specification describes a disinfectant foam product
containing greater than 40% v/v lower alcohol. (Spec. 3:7–15.) The
Specification explains that, because of their defoaming properties, lower
alcohols have been combined with foam-forming agents, e.g., propellants, to
form stable foams. (Id. at 3:20–4:2.) However, the Specification explains
that it is undesirable to generate foams using propellants or aerosol
containers. (Id. at 4:3–12.) Therefore, the Specification describes a need for
alcohol-based disinfecting formulations which may be dispensed as foams
under low pressure conditions, e.g., from non-pressurized dispensers. (Id. at
6:6–10.)
Appellant’s claim 1 recites:
A foamable alcohol composition comprising;

a) at least one C1–4 alcohol, or mixtures thereof,
present in an amount greater than about 40% v/v of the
total composition;

b) at least one effective physiologically acceptable
silicone-based surface active agent, which includes a
lipophilic chain containing a silicone backbone, for
foaming present in an amount of at least 0.01% by weight
of the total composition; and

c) water present in an amount to balance the total
composition to 100% by weight,

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stored in an unpressurized dispenser having a dispenser
pump for mixing the composition with air and dispensing
foam therefrom.

(Appeal Br. 19.)
The Examiner rejects claims 1–4, 6, 8, 17–20, 27–31, 33–35, 40, and
88 under 35 U.S.C. § 103(a) as obvious over Scholz,3 Dubois,4 and Wivell.5
(Final Act. 3–9.) The Examiner further cites Culeron6 to show the existing
knowledge of one of ordinary skill in the art. (Final Act. 11.)
Appellant does not argue for the separate patentability of any of these
claims. See generally Appeal Br. We focus on claim 1 in our review. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Scholz teaches a foamable alcohol composition
including: a) at least one C1–4 alcohol, e.g., ethanol, present in an amount of
78.4% v/v; b) at least one silicone-based surface active agent, e.g.,
dimethicone copolyol, present in an amount of 0.5% by weight of the
composition; and c) water as the remaining weight of the composition.
(Final Act. 4, citing Scholz 49:15–39 (Example 37).)
The Examiner acknowledges that Scholz does not teach storing the
composition in an unpressurized container having a dispenser pump for
dispensing a foam. (Id. at 7.) However, the Examiner finds Dubois teaches
an unpressurized container with a pump for dispensing alcohol-based
compositions. (Id., citing Dubois 2:9–12, 31–36; 3:30–58.) The Examiner

3 Scholz et al., US Patent No. 5,951,993, issued September 14, 1999.
4 Dubois et al., US Patent No. 5,843,881, issued December 1, 1998.
5 Wivell et al., US Patent No. 5,439,682, issued August 8, 1995.
6 Culeron et al., WO 2004/078901 A1, published September 16, 2004.
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finds further that Wivell teaches a non-aerosol pump container for delivering
foamed personal-cleansing compositions. (Id. at 8, citing Wivell 7:55–8:5.)
The Examiner finds that Wivell teaches unpressurized containers with
foaming dispenser pumps that can create foam from almost any surfactant
composition. (Id.) The Examiner finds that Wivell teaches the foaming
dispensers mix the surfactant-containing compositions with air to discharge
a uniform aerated foam. (Id.) The Examiner finds that a person of ordinary
skill in the art would have been motivated to deliver Scholz’s foaming
alcohol-based compositions from a non-pressurized container with a
foaming dispenser to obtain a homogenous foam that is more consistent, as
taught by Wivell. (Id. at 9.)
Appellant argues that Scholz does not teach the claimed composition,
and that a person of ordinary skill in the art would not have stored Scholz’s
composition in an unpressurized dispenser. (See Appeal Br. 5–6.) First,
Appellant argues that Scholz does not teach the claimed chemical
composition because Scholz teaches high viscosity compositions having a
viscosity of at least 4000 centipoise at 23° C. (Id. at 7–9, citing Scholz
2:31–45.) Appellant argues that the claimed composition has “vastly
different” viscosity properties. (Id. at 9.) Appellant argues further that
Scholz teaches dispensing high viscosity formulations as aerosol foams from
pressurized containers. (Id. at 10, citing Scholz 21:60–62.) Appellant
argues that a person of ordinary skill in the art would not have combined
Scholz’s high viscosity composition with Dubois or Wivell’s non-
pressurized containers, which contain low viscosity compositions. (Id. at
10–11.)
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We are not persuaded by Appellant’s argument. Appellant’s claims
do not recite any viscosity limitation that distinguishes the claimed
composition from Scholz’s composition. (See Ans. 6.) Rather, Scholz
teaches a composition that is identical to the claimed composition, i.e., a
foamable alcohol composition containing greater than about 40% v/v
ethanol, at least 0.01% by weight silicon-based surface active agent, and
balance water. (Scholz 2:35–37; 49:15–39 (Example 37).) Where the
claimed and prior art products are identical, the PTO can require an
applicant to prove that the prior art products do not necessarily possess the
characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). Appellant does not provide any evidence that: 1) the
claimed composition has different viscosity properties from Scholz; 2) that
Scholz’s composition cannot be foamed from a non-pressurized foamed
dispenser; or 3) that a person of ordinary skill in the art would have not have
dispensed a high viscosity composition from a non-pressurized container.
“An assertion of what seems to follow from common experience is just
attorney argument and not the kind of factual evidence that is required to
rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).
Second, Appellant argues that Culeron shows that a person of
ordinary skill in the art would not have expected an unpressurized dispenser
to produce a foam from a high-viscosity composition. (Appeal Br. 11–12.)
Appellant argues that Culeron teaches a “new unpressurized dispenser” that
solved the previously existing problem of generating non-aerosol foams of
high viscosity compositions. (See id. at 12–13.) Appellant argues that a
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person of ordinary skill in the art, “who thinks along a line of conventional
wisdom,” would not have applied Culeron’s innovation to combine Scholz
with Dubois and Wivell. (Id. at 13, citing Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).)
We are not persuaded by Appellant’s argument. The Examiner cites
Culeron to rebut Appellant’s argument that a person of ordinary skill in the
art would not have had a reasonable expectation of success of storing a high
viscosity composition in an unpressurized foam dispenser. (Final Act. 11;
Ans. 6–7.) Culeron teaches unpressurized containers for dispensing high
viscosity compositions as foams, prior to the filing of the instant application.
See Culeron, Abstr. Although a person of ordinary skill in the art “thinks
along the line of conventional wisdom in the art,” they are also “presumed to
be aware of all the pertinent prior art.” See 774 F.2d at 454. Accordingly, a
person of ordinary skill in the art would have been aware of Culeron’s
teachings that high viscosity foams were successfully generated from
unpressurized pump dispensers. Therefore, Culeron supports the
Examiner’s finding that a person of ordinary skill in the art would have had
a reasonable expectation of success of storing Scholz’s composition in an
unpressurized dispenser having a dispenser pump for mixing the
composition with air and dispensing foam therefrom.
Third, Appellant argues that Dubois fails to disclose dispensing a
foam. (Appeal Br. 13–14, citing Dubois 2:15–16; 3:17–19.) Appellant
argues that Wivell teaches that only low viscosity compositions can be
delivered as foams. (Id. at 16, citing Wivell 8:42–47.) Appellant argues that
“[i]f the rejection is not based on putting Scholz’s compositions into the
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actual dispensers of Dubois and Wivell, but rather on some hypothetical
combination of those references, then the Office Action has failed to identify
the structure of that dispenser or how it operates to dispense a foam.” (Id. at
15.)
We are not persuaded by Appellant’s argument. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . Rather,
the test 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 1981). Scholz’s composition is an alcohol-based composition
including a silicone-based surfactant. See above. Dubois teaches
unpressurized containers for alcohol-based compositions. (See Dubois 3:31–
40.) Wivell teaches known unpressurized foam dispensers for personal-
cleansing compositions. (Wivell 7:56–8:29.) Although Wivell teaches that
low viscosity compositions are preferred for generating foams, Wivell does
not criticize or otherwise discourage storing a high viscosity composition in
an unpressurized foam dispenser. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Rather, Wivell provides express motivation to store a
surfactant-containing composition in an unpressurized container to obtain
uniform aerated foams. (Wivell 8:18–29.) Accordingly, the combined prior
art suggests using Wivell’s foam dispenser for Scholz’s foamable alcohol-
based surfactant-containing composition.
Finally, Appellant argues that the Examiner relies on hindsight
reasoning to combine the references. (Appeal Br. 17.) Specifically,
Appellant argues that the Examiner uses Appellant’s Specification as
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roadmap to combine Scholz’s composition with Wivell’s unpressurized
foam dispenser. (Id.)
We are not persuaded by Appellant’s argument. As discussed above,
Scholz teaches the claimed foamable composition and Dubois and Wivell
teach storing and dispensing foamable compositions from unpressurized
dispensers. Culeron confirms that a person of ordinary skill in the art would
have had reasonable expectation of success in dispensing a high viscosity
foamable composition from an unpressurized container. Accordingly, the
prior art teaches the claimed limitations and a reason to combine the
references with a reasonable expectation of success. Because the Examiner
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made, the Examiner’s
obviousness reconstruction is proper. In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971). Accordingly, we sustain the Examiner’s rejection.

CONCLUSION
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 8,
17–20, 27–
31, 33–35,
40, 88
103 Scholz, Dubois,
Wivell
1–4, 6, 8,
17–20, 27–
31, 33–35,
40, 88

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED