Nohbo,LLCDownload PDFPatent Trials and Appeals BoardJan 21, 20212020003703 (P.T.A.B. Jan. 21, 2021) Copy Citation 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. 15/986,592 05/22/2018 Benjamin Gabriel STERN 58976-704.201 5800 21971 7590 01/21/2021 WILSON SONSINI GOODRICH & ROSATI 650 PAGE MILL ROAD PALO ALTO, CA 94304-1050 EXAMINER ALLEY, GENEVIEVE S ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): patentdocket@wsgr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BENJAMIN GABRIEL STERN, ROBERT HUTTON RAY, JAMES J. RAMIREZ, and MATTHEW GERNSTEIN __________ Appeal 2020-003703 Application 15/986,592 Technology Center 1600 __________ Before JEFFREY N. FREDMAN, MICHAEL A. VALEK, and JAMIE T. WISZ, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a single-use hygiene product pod comprising about 25 wt% to about 70 wt% of butylene glycol and surfactant. The Examiner rejected the claims as obvious. 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 the Real Party in Interest as Nohbo, LLC (see Appeal Br. 2). We note this Appeal is related to Appeals 2020-001091 and 2020-00175. 2 We have considered the Specification of May 22, 2018 (“Spec.”); Final Office Action of June 24, 2019 (“Final Action”); Appeal Brief of Nov. 18, 2019 (“Appeal Br.”); Examiner’s Answer of Mar. 19, 2020 (“Ans.”); and Reply Brief of Apr. 16, 2020 (“Reply Br.”). Appeal 2020-003703 Application 15/986,592 2 Statement of the Case Background “Hygiene products, such as shampoo, bodywash, shaving cream, and conditioner are usually . . . provided in small bottles for use in the hospitality and/or travel industries” (Spec. ¶¶ 3–4). “However, the small bottles of shampoo/conditioner/shaving cream generally found in the hospitality industry have a high packaging to product ratio, which contributes to higher costs and excessive amounts of waste” (id. ¶ 4). The Specification teaches “a hygiene product pod comprising a water-soluble envelope and a hygiene product sealed in the envelope in which the hygiene product includes an active agent and a carrier comprising butylene glycol in an amount ranging from about 40 wt% to about 70 wt%,” (id. ¶ 8). The Claims Claims 10–20 are on appeal. Claim 10 is an independent claim, is representative and reads as follows: 10. A single-use hygiene product pod comprising: a water-soluble envelope; and a hygiene product sealed in the envelope, the hygiene product comprising: a carrier comprising butylene glycol in an amount ranging from about 25 wt% to about 70 wt%, based on the total weight of the hygiene product; and an active agent comprising at least one surfactant. The Rejections A. The Examiner rejected claims 10–15 and 19 under U.S.C. § 103(a) as obvious over Labeque,3 Wiesche,4 and Jeong5 (Final Act. 4–8). 3 Labeque et al., US 2017/0298216 A1, published Oct. 19, 2017. Appeal 2020-003703 Application 15/986,592 3 B. The Examiner rejected claim 17 under U.S.C. § 103(a) as obvious over Labeque, Wiesche, Jeong, and Hilvert6 (Final Act. 8–10). C. The Examiner rejected claims 16 and 18 under U.S.C. § 103(a) as obvious over Labeque, Wiesche, Jeong, and Hohenstein7 (Final Act. 10–12). D. The Examiner rejected claim 20 under U.S.C. § 103(a) as obvious over Labeque, Wiesche, Jeong, Hohenstein, and Vainshelboim8 (Final Act. 12–13). A. 35 U.S.C. § 103(a) over Labeque, Wiesche, and Jeong The Examiner finds Wiesche teaches “a hair treatment composition containing, based on their weight, (a) 0.01-40 wt% of 3-methyl-1,3- butanediol (aka isopentyldiol) and (b) 0.1-40 wt% alkylpolyglycoside(s)” (Final Act. 5). The Examiner finds Wiesche teaches “3-methyl-1,3- butanediol has nourishing and moisturizing properties, and in combination with surfactant(s), leads to improved softness and suppleness of the hair” (id. at 6). The Examiner finds Jeong teaches “a bubble type waterless shampoo composition. Jeong teaches that butylene glycol (i.e., 1,3-butanediol) have functions of providing skin stimulus release and scalp moisturizing” (Final Act. 6). The Examiner finds it obvious to combine the teachings of Wiesche and Jeong and “to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (3-methyl-1,3- butanediol and 1,3- 4 Schulze Zur Wiesche et al., WO 2012/055584 A2, published May 3, 2012. 5 Jeong, S., US 2016/0143833 A1, published May 26, 2016. 6 Hilvert et al., US 2013/0090279 A1, published Apr. 11, 2013. 7 Hohenstein et al., US 6,566,313 B1, issued May 20, 2003. 8 Vainshelboim et al., US 2010/0313362 A1, published Dec. 16, 2010. Appeal 2020-003703 Application 15/986,592 4 butanediol for the purpose of providing moisturization to the hair/scalp)” (id. at 7). The Examiner further combines the teachings of Wiesche and Jeong with those of Labeque and finds Labeque teaches a “pouch [that] comprises a household care composition which includes a shampoo or body wash” (Final Act. 4). The Examiner finds that Labeque teaches “a water-soluble film and a composition at least partially enclosed by the water-soluble film in at least one compartment, where the water-soluble film includes a polyvinyl alcohol (PVOH) resin blend” (id.). The Examiner finds it obvious to use the obvious shampoo of Wiesche and Jeong in the pods of Labeque “for providing the desired moisture to the subject’s hair” and “for the purpose of cleaning the hair of the subject” (Final Act. 8). The issues with respect to this rejection are: (i) Does a preponderance of the evidence of record support the Examiner’s conclusion that Labeque, Wiesche, and Jeong render the claims obvious? (ii) If so, has Appellant provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness? Findings of Fact 1. Wiesche teaches: “Hair cleaning products which have increased hair care effect and particularly improve softness, suppleness and shine of the hair contain, based on their weight, 0.01 to 40% of weight of 3-methyl- 1,3-butanediol and 0.1 to 40% by weight of alkyl polyglycoside(s)” (Wiesche, code [57]). Appeal 2020-003703 Application 15/986,592 5 2. Wiesche teaches “3-methyl-1,3-butanediol . . . which is also referred to as isopentyldiol, has nourishing and moisturizing properties and, in combination with surfactant (s), leads to improved softness and suppleness of the hair” (Wiesche translation 1). 3. Jeong teaches a “bubble type waterless shampoo composition further includes any one or more of . . . 3 to 5 wt% of butylenes glycol having functions of providing skin stimulus release and scalp moisturizing” (Jeong ¶ 18). 4. The structure of 3-methyl-1,3-butanediol is shown below: 1 2 3 4 HO OH 3-methyl-1,3 butanediol (see Wiesche Translation 1). 5. The structure of 1,3 butanediol (a type of butylene glycol) is shown below: OH HO 4 3 2 1 1,3 butanediol 6. Labeque teaches “pouches that include a water-soluble film and a composition at least partially enclosed by the water-soluble film in at least one compartment, where the water-soluble film includes a polyvinyl alcohol (PVOH) resin blend” (Labeque ¶ 1). Appeal 2020-003703 Application 15/986,592 6 7. Labeque teaches these pouches may contain “shampoos, body washes, [and] other personal care compositions” (Labeque ¶ 36). 8. Labeque teaches “detergent compositions can comprise from about 1 % to 80% by weight of a surfactant. Surfactant is particularly preferred as a component of the first composition” (Labeque ¶ 132). 9. Labeque teaches that the solvent system can include “mixtures of organic solvents with water” where the organic solvent includes “1,3 butanediol” (Labeque ¶ 139). 10. Labeque teaches that the solvent system may be “at least about 1 % to about 50%” by weight of the composition but contain “about 5% to about 12%, by weight of the composition, of water” (Labeque ¶ 139). 11. Labeque teaches that “glycerol may be present in an amount less than about 15%, preferably less than about 10%, of the total composition by weight” (Labeque ¶ 139). 12. Labeque teaches the choice of solvent type and level is used to control final pouch quality, including phase stability of the liquid ingredients, the tightness/floppiness of the pouch, pouch strength and to control the diffusion of chemistry through the film. Without wishing to be bound by theory it is believed that preferred solvent systems (as described above) ensure a good balance of film plasticization. If the system contains too much water and glycerol, then the pouches become too floppy, and at too low a level, the pouches can become too brittle. (Labeque ¶ 140). 13. Labeque teaches that a pouch “provides for accurate dosing while eliminating the need for the consumer to measure the composition. The pouch may also reduce mess that would be associated with dispensing a similar composition from a vessel” (Labeque ¶ 2). Appeal 2020-003703 Application 15/986,592 7 Principles of Law The Examiner has the initial burden of establishing a prima facie case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Prima facie obviousness can be rebutted by presenting evidence of secondary considerations and when such evidence is submitted, all of the evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472- 1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but unsolved needs, failure of others, unexpected results, commercial success, copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Analysis We adopt the Examiner’s findings of fact and conclusion of law (see Final Act. 4–8, FF 1–13) and agree that Labeque, Wiesche, and Jeong render claim 10 obvious. We address Appellant’s arguments below. Obviousness Appellant contends contrary to the assertion of the Examiner, Labeque’s teaching that the composition may include up to about 98% by weight of the solvent system fails to teach or suggest that the composition includes an organic solvent (e.g., butylene glycol) concentration of greater than 15% by weight. This is especially apparent give than the solvent system is only ever disclosed as including an organic solvent in combination with water, and the composition thereof is limited to less than about 20 wt%. Appeal 2020-003703 Application 15/986,592 8 (Appeal Br. 6). We find this argument unpersuasive as the Examiner also contends that it would have been obvious to fill the Labeque pouch, taught by Labeque for use with shampoos (FF 7), with the obvious shampoo composition of Wiesche and Jeong (FF 1–3; see Ans. 4–6). Wiesche teaches a range of butylene glycol that overlaps that recited by claim 1, specifically teaching “0.01 to 40% of weight of 3-methyl-1,3-butanediol” (FF 1). In “cases involving overlapping ranges, [courts] have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Therefore, the shampoo composition itself would have been obvious over Wiesche and Jeong. It would further have been obvious to incorporate this obvious composition into the shampoo containing pouch of Labeque because Labeque teaches that the use of a pouch “provides for accurate dosing while eliminating the need for the consumer to measure the composition. The pouch may also reduce mess that would be associated with dispensing a similar composition from a vessel” (FF 13). To the extent that Labeque is argued separately, this argument does not address the totality of the art in combination.9 Prior art “must be read, not in isolation, but for 9 While we agree with Appellant that Labeque prefers glycol concentrations less than 15% (FF 11) and does not clearly disclose solvent systems with 40 to 70% butylene glycol, Labeque does teach that the use of 1,3 butanediol (FF 9) in a solvent system may be up to 50% of the weight of the composition and comprise as little as 5% water by weight (FF 10). That would result in a shampoo solvent system 45% weight of an organic solvent like 1,3 butanediol and 5% by weight of water, well within the scope of claim 10. We do not, however, rely upon this reasoning. Appeal 2020-003703 Application 15/986,592 9 what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant contends that “Wiesche fails to disclose any other diols that may be included in the composition” (Appeal Br. 7). Appellant contends “butylene glycol may refer to one of four different stable butanediol structural isomers, namely, 1,2-butanediol, 1,3-butanediol, 1,4-butanediol, or 2,3-butanediol. In other words, butylene glycol is not a methylated diol, such as isopentyldiol” (id. at 7). We are not persuaded. As Appellant acknowledges, butylene glycol may refer to 1,3 butanediol (FF 5) disclosed by Jeong as a useful moisturizing agent in shampoo (FF 3). Wiesche teaches that isopentyldiol (also known as 3-methyl-1,3-butanediol) is a useful moisturizing agent in shampoo (FF 2, 4). These compounds differ by a single methyl group and are therefore reasonably understood as homologs (see FF 4–5). “A homologous series is a family of chemically related compounds, the composition of which varies from member to member by CH2.” In re Henze, 181 F.2d 196, 200 (CCPA 1950). Thus, we are persuaded by the Examiner’s reasonable finding that it would have been obvious to substitute one known homologous10 moisturizing agent for another, using the amounts desired by Wiesche. Wrigley found a “strong case of obviousness” based on a claim that “recites a combination of elements that were all known in the 10 “If an examiner considers that he has found prior art close enough to the claimed invention to give one skilled in the relevant chemical art the motivation to make close relatives (homologs, analogs, isomers, etc.) of the prior art compound(s), then there arises what has been called a presumption of obviousness or a prima facie case of obviousness.” In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990) (en banc). Appeal 2020-003703 Application 15/986,592 10 prior art, and all that was required to obtain that combination was to substitute one well-known . . . agent for another.” Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012). Appellant contends: Jeong discloses a waterless shampoo composition that may include various optional additives, such as “3 to 5 wt% of butylenes [sic] glycol having functions of providing skin stimulus release and scalp moisturizing”. Jeong, ¶¶ [0018], [0024]. Therefore, Jeong discloses compositions that include at most 5 wt% butylene glycol, which is a lower concentration than the 15 wt% or less disclosed in Labeque. (Appeal Br. 7). We find this argument unpersuasive for several reasons. First, while both Jeong and Labeque teach amounts of butylene glycol less than the 25 wt% lower limit recited in claim 10 (see FF 3, 10), Weische specifically teaches an overlapping range (FF 1). However, “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” Merck, 800 F.2d at 1097. The Examiner relies upon Jeong to show that 1,3-butanediol is an obvious equivalent of Wiesche’s 3-methyl-1,3-butanediol because both are shampoo components used for moisturizing (FF 1–3) and therefore it would have been obvious to select Jeong’s 1,3-butanediol for use in Wiesche’s shampoo composition as a substitute for 3-methyl-1,3-butanediol. To the extent that this argument is reiterating whether it would have been obvious to use butylene glycol within the range of 25 wt% to 70 wt% as recited by claim 10, Wiesche renders the claim obvious by teaching a substantially Appeal 2020-003703 Application 15/986,592 11 overlapping range of “0.01 to 40% of weight of 3-methyl-1,3-butanediol” (FF 1). Peterson, 315 F.3d at 1329. Appellant contends Jeong is directed to a dry shampoo composition that is designed to be used without water. In contrast, Labeque is directed to a pouch that is designed to rapidly and completely dissolve in water. As such, a skilled artisan would not look to apply the teaching of Jeong to the compositions of Labeque, since the two compositions are taught to be configured to operate in completely different environments and through different methods of application, namely, via aqueous application vs. nonaqueous application. (Appeal Br. 7–8). We find this argument unpersuasive. As noted above, the rejection combines three references. Jeong is relied upon for the use of 1,3-butanediol as a known and obvious equivalent of Wiesche’s shampoo composition, using 1,3-butanediol. Thus, it is the combination of all three references, not simply Labeque and Jeong, that renders the rejected claims obvious. We further note that Labeque teaches the solvent system may be “at least about 1 % to about 50%” by weight of the composition but contain “about 5% to about 12%, by weight of the composition, of water” (FF 10). Consistent with the use of some water, Wiesche teaches a composition includes aqueous components (see, e.g., Wiesche Translation 17 “water ad 100”). The ordinary artisan, interested in delivering the obvious shampoo composition of Wiesche and Jeong using the pouch of Labeque, would have found it obvious to optimize the amount of water to obtain functional pouches with the obvious shampoo. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the Appeal 2020-003703 Application 15/986,592 12 optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant contends In contrast to In re Keller, [642 F.2d 413, 425 (CCPA 1981)] as noted in the previous response and repeated above, Appellants’ arguments address each of the cited references in establishing that there was no motivation to make the various combinations of the references. As such, contrary to the assertion of the Examiner, the holding in In re Keller is not applicable to the present facts. (Appeal Br. 10). Appellant further contends “there would have been no reason to combine Labeque and Jeong, because the compositions thereof are designed to operate in completely different environments, namely aqueous and non-aqueous environments” (id.). We find this argument unpersuasive because Appellant’s earlier arguments do not purport to address deficiencies of the references in combination, but rather separately point out that Labeque limits organic solvents to 15% by weight (Appeal Br. 6), that Wiesche does not disclose other diols (id. at 7), and that Jeong does not teach the necessary butylene glycol amounts (id.). We explained above why there was reason to combine these references, with it obvious to substitute Wiesche’s homologous moisturizing agent with Jeong’s agent, and obvious to deliver shampoo rendered obvious by Wiesche and Jeong using the pouch of Labeque because Labeque teaches that the use of a pouch “provides for accurate dosing while eliminating the need for the consumer to measure the composition. The pouch may also reduce mess that would be associated with dispensing a similar composition from a vessel” (FF 13). This is Appeal 2020-003703 Application 15/986,592 13 consistent with the understanding that a “person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Appellant contends Wiesche, which is the only cited reference that discloses isopentyldiol, fails to teach or suggest that any other diols, such as butylene glycol, can be substituted for isopentyldiol in the disclosed composition and still provide the same ‘special care action’ when used in conjunction with APG surfactants. . . . Jeong discloses that butylene glycol provides skin stimulus release and scalp moisturizing, and Labeque discloses that butylene glycol operates as an organic solvent. Therefore, the cited art teaches that isopentyldiol and butylene glycol perform different functions, namely treating the skin or treating the hair and operating as a solvent. (Appeal Br. 11). We find this argument unpersuasive for several reasons. First, claim 10 does not require the use of an APG surfactant, but instead broadly encompasses the use of any surfactant. “[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Second, the rejection is for obviousness, not anticipation, and the Examiner reasonably finds that the 1,3 butanediol (FF 5) disclosed by Jeong as a useful moisturizing agent in shampoo (FF 3) is an obvious equivalent to the 3- methyl-1,3-butanediol moisturizing agent of Wiesche (FF 1) based on their structural similarity (see Final Act. 8; cf. Ans. 9). Third, that Labeque teaches an additional function of 1,3 butanediol does not detract from its known use as a moisturizing agent (FF 3). Indeed, the ordinary artisan informed by Jeong that 1,3 butanediol is a useful moisturizing agent in shampoo and informed by Labeque that 1,3 butanediol is also a useful solvent would have reasonably found it useful to select 1,3 Appeal 2020-003703 Application 15/986,592 14 butanediol in order to obtain both desirable properties. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Also, the fact that both 1,3 butanediol and 3-methyl-1,3-butanediol were known to function as moisturizing agents, provides both an expectation of success and reason to substitute the two. “[A] presumption of unpatentability arises against a claim directed to a composition of matter, the adjacent homologue of which is old in the art.” In re Henze, 181 F.2d at 196. Appellant provides no persuasive argument as well as no persuasive evidence or data supporting nonobviousness, as will be discussed regarding secondary considerations below. Appellant contends “that a skilled artisan would be aware that small molecular changes may impart substantial differences in chemical properties” (Appeal Br. 12). We find this argument unpersuasive because there is no evidence that the additional methyl group causes any change in the chemical properties and “attorney argument [is] 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). Appellant contends that even if the art of record lacks evidence to rebut the Examiner's assertions regarding equivalence, such a lack of disclosure cannot reasonably be asserted to support the Examiner’s position. For example, the fact that the art does not provide evidence that butylene glycol cannot be used to cure baldness does not support the assertion that butylene glycol can cure baldness. Appeal 2020-003703 Application 15/986,592 15 (Appeal Br. 12). We find this argument unpersuasive because it misunderstands the allocation of the burden for establishing the rejection. Brandt explains that “it is important for the examiner to have a few procedural tools to aid her efforts to issue as patents only those claims that meet the requirements of the Patent Act . . . One of these procedural tools is the prima facie case, an evidentiary burden-shifting device available to the examiner.” In re Brandt, 86 F.3d 1171, 1176 (Fed. Cir. 2018). In the chemical context, Dillon explains that after a prima facie case is made the “burden then shifts to the applicant, who then can present arguments and/or data to show that what appears to be obvious, is not in fact that, when the invention is looked at as a whole.” Dillon, 919 F.2d at 696. Because we have determined that the Examiner has established a proper prima facie case, the burden does indeed rest on Appellant to rebut the Examiner’s assertions regarding equivalence. Appellant fails to persuasively rebut the Examiner’s findings. Appellant contends Labeque teaches away from including more than 15 wt% organic solvent in the disclosed pouches, since doing so may negatively affect pouch strength and diffusion chemistry, as well as the phase stability of the liquid ingredients. Therefore, Labeque discloses that increasing the organic solvent concentration would destroy the functionality of the disclosed pouches. (Appeal Br. 14). We find this argument focusing on Labeque unpersuasive because Wiesche specifically suggests that up to 40% of 3-methyl-1,3-butanediol may be used as a moisturizer in a shampoo composition (FF 1). Thus, this argument fails to address the references in combination. As to the teaching Appeal 2020-003703 Application 15/986,592 16 away argument, Labeque never teaches that any specific amount of glycol has any negative effects whatsoever (FF 10–11). Instead, Labeque teaches that the solvent system may be optimized to maximize film plasticization but does not provide any specific details on amounts of glycol that are too much. Consequently, Labeque does not criticize, discredit, or otherwise teach away from incorporating shampoo compositions such as the obvious shampoo composition of Wiesche and Jeong into the pouch of Labeque. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant reiterates the contentions that not only is the disclosure of Wiesche limited to isopentyldiol, Wiesche does not teach or suggest utilizing a water soluble pouch. . . . the Examiner failed to provide any reason why a skilled artisan would have disregarded the weight percentage ranges of both Labeque and Jeong, which specifically disclose butylene glycol, and in favor of the isopentyldiol weight percentage of Wiesche. In addition, the Examiner failed to provide any reason a skilled artisan would have utilized the higher isopentyldiol weight range of Wiesche, without also utilizing at least the isopentyldiol in the composition of Labeque. (Appeal Br. 14). Appellant contends “the Examiner appears to be impermissibly picking and choosing which portions of the cited art would have been relied upon and which portions would have been disregarded, without providing any reason for doing so” (Appeal Br. 15). We find this argument unpersuasive because it fails to recognize the combination presented. Wiesche teaches a shampoo that differs from the shampoo required by claim 10 solely by using a homolog of 1,3-butanediol, 3-methyl 1,3-butanediol, that shares moisturizing properties and is disclosed by Jeong as useful in shampoos (FF 13). Labeque teaches the desirability of Appeal 2020-003703 Application 15/986,592 17 providing such shampoo compositions in a single-use pod “for accurate dosing while eliminating the need for the consumer to measure the composition. The pouch may also reduce mess that would be associated with dispensing a similar composition from a vessel” (FF 13). Thus, the Examiner’s rejection properly provides a prima facie case of obviousness. As to the argument regarding picking and choosing, the Examiner’s reasoning “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We note “picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence” In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Claims 10, 11, 19 Appellant contends that “the butylene glycol ranges recited in present claims 10, 11, and 19 cannot be considered obvious based on the optimization of a results effective variable” (Appeal Br. 15). We find this argument unpersuasive. We note that in the related appeal, 2020-001175, we reversed a rejection over claim 6 in that case, which was drawn to a range of “about 45 wt% to about 70 wt%” because the rejection did not include Wiesche and therefore had no teaching of amounts close to the claim 6. Here, however, the Examiner’s rejection does include Wiesche, which teaches the use of 40% 3-methyl-1,3 butanediol (FF 1). Therefore, Wiesche teaches a range overlapping at one point, and otherwise adjacent, to the “about 40 wt% to about 65 wt% 1,3-butanediol” range recited by claims 11 and 19. As already noted, overlapping ranges are prima Appeal 2020-003703 Application 15/986,592 18 facie obvious. Peterson, 315 F.3d at 1329. Appellant does not identify any persuasive criticality for the endpoints of these claimed ranges. Secondary considerations Appellant asserts that the present inventors tested a multitude of nonaqueous solvents, including various diols, in an effort to provide an encapsulatable hygiene product having an acceptable consistency, stability, and envelope compatibility. See Specification, ¶¶ [0085]-[0099]. For example, Composition 22 of the present disclosure included 40 wt% of propylene glycol and had an acceptable consistency, and stability, but was found to rapidly dissolve a PVOH envelope, thereby rendering it unsuitable. See id., ¶¶ [0094]-[0095]. (Appeal Br. 13). Appellant also asserts the inventors “unexpectedly discovered that hygiene compositions that included elevated amounts of the seemingly similar diol, butylene glycol, exhibited not only an acceptable consistency and stability, but also exhibited unexpectedly high envelope compatibility” (id. 13–14). We find these arguments unpersuasive for several reasons. First, that one of the tested compositions, composition 22, that used propylene glycol but did not use 3-methyl-1,3-butanediol failed to work provides no evidence regarding the efficacy or usefulness of 3-methyl-1,3-butanediol in the composition (see Spec. ¶95). Moreover, Appellant offers no evidence suggesting that these results would have been surprising or unexpected to a skilled artisan. “[A]ny superior property must be unexpected to be considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). “It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . [do] not suffice.” In re Soni, 54 F.3d 746, 750 Appeal 2020-003703 Application 15/986,592 19 (Fed. Cir. 1995). The only indication that any of these properties constitutes an unexpected result is attorney argument in the brief. Mere attorney argument that is not supported by evidence regarding the rejection as presented by the Examiner is not persuasive. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) Second, the results disclosed in the Specification are not commensurate in scope with the range in claim 10 of 25 to 70% of 1,3 butanediol. Indeed, Table 1 of the Specification shows that values from 60 to 70% of 1,3 butanediol do not function but rather “exhibited phase separation” or “an overly dense creamy solid” (Spec. ¶ 87). The only compositions tested below 59% in the range from 25% to 59%, compositions 23–26, all showed undesirable properties including “poor performance,” “phase separation,” and “moderate gelation” (see Spec. ¶ 98). Only compositions 28 and 29, using 59.35% and 59.25% 1,3 butanediol respectively, resulted in successful compositions (see Spec. ¶ 99). Therefore, the unexpected results data is not reasonably commensurate in scope with claim 10. Third, the asserted unexpected results were not compared to the closest prior art of Wiesche, who discloses the use of up to 40% 3-methyl- 1,3-butanediol (FF 1). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). Fourth, we are not persuaded by Appellant’s argument that amounts of 1,3-butanediol were not recognized as optimizable variables (see, e.g., Appeal Br. 15), because Wiesche teaches that the amount of 3-methyl-1,3- Appeal 2020-003703 Application 15/986,592 20 butanediol is a moisturizing ingredient and provides a range for that ingredient (FF 1–2) and Jeong also teaches that 1,3-butanediol is a moisturizing agent (FF 3). Thus, the ordinary artisan would have recognized that the amount of 1,3-butanediol would impact the moisturizing ability of the shampoo composition and therefore be an optimizable variable. “[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Conclusion of Law (i) A preponderance of the evidence of record supports the Examiner’s conclusion that Labeque, Wiesche, and Jeong render the claims obvious. (ii) Appellant has not provided evidence of unexpected results that outweighs the evidence supporting the prima facie case of obviousness. B.–D. U.S.C. § 103(a) rejections Appellant does not separately argue these obviousness rejections, instead relying upon their arguments to overcome the combination of Labeque, Wiesche, and Jeong (see Appeal Br. 3). We do not find these arguments persuasive for the reasons given above. The Examiner provides sound fact-based reasoning for combining these references with Hilvert, Hohenstein, and Vainshelboim (see Final Act. 8–13). Having affirmed the obviousness rejection of claim 10 over Labeque, Wiesche, and Jeong, we also find that the further combinations render the rejected claims obvious for the reasons given by the Examiner. Appeal 2020-003703 Application 15/986,592 21 SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–15, 19 103 Labeque, Wiesche, Jeong 10–15, 19 17 103 Labeque, Wiesche, Jeong, Hilvert 17 16, 18 103 Labeque, Wiesche, Jeong, Hohenstein 16, 18 20 103 Labeque, Wiesche, Jeong, Hohenstein, Vainshelboim 20 Overall Outcome 10–20 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 Copy with citationCopy as parenthetical citation