Shannon Elizabeth. Klingman

Patent Trials and Appeals Board

May 1, 2020

14613420 - (R) (P.T.A.B. May. 1, 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.
14/613,420 02/04/2015 Shannon Elizabeth Klingman Klingman-U3 3514
66125 7590 05/01/2020
JEFFREY DEAN LINDSAY
20 DIANE LANE
APPLETON, WI 54915
EXAMINER
CHANG, KYUNG SOOK
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
jeff@jefflindsay.com
jeff@magicinnovation.com
ldsfaq@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte SHANNON ELIZABETH KLINGMAN

_________________

Appeal 2019-000606
Application 14/613,420
Technology Center 1600
_________________

Before FRANCISCO C. PRATS, RAE LYNN P. GUEST, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing of our Decision on Appeal, issued
December 30, 2019 (“Decision”). (Request for Reconsideration, filed
February 28, 2020 (“Request”).) We affirmed the Examiner’s rejection of
claims 15–26 in the Decision. We DENY the request for rehearing and
decline to modify the Decision.

1 We use the word “Appellant” as defined in 37 C.F.R. § 1.42. Inventor
Shannon Elizabeth Klingman is identified as the real party-in-interest.
(Appeal Br. 4.)
Appeal 2019-000606
Application 14/613,420

2
A request for rehearing is a request that the original decision be
modified because of “points believed to have been misapprehended or
overlooked by the Board,” which must be stated by Appellant with
particularity. 37 C.F.R. § 41.52(a)(1). To have misapprehended or
overlooked a fact or an issue, Appellant must have made us aware of it in the
briefing for appeal.
Appellant raises 12 issues to argue that we should rehear our Decision
affirming the Examiner’s rejection of claims 15–26 as being obvious under
35 U.S.C. § 103(a) over So,2 Hart,3 Klier,4 Casas-Sanchez,5 and Vagisil.6
(See Request 4.)
In Issue 1, Appellant argues that because the Examiner failed to
respond to arguments about the enablement of the teachings of So, the
rejection should have been reversed. (See Request 4.)
We addressed Appellant’s argument regarding the asserted lack of
enablement of So in the Decision. (See Decision 11.) We explained that we
were persuaded by the Examiner’s reliance on the suggestion in So that
vaginitis causes malodor and that mandelic acid can be used to treat vaginitis
for the rejection under 35 U.S.C. § 103. (See id., citing Final Act. 5.) The

2 So and Jeon, WO 2006/132515 Al, published December 14, 2006.
3 Hart, U.S. Patent 4,078,050, issued March 7, 1978.
4 Klier et al., EP 0775486 Al, published May 28, 1997 (English
Translation).
5 Casas-Sanchez et al., EP 1982689 Al, published October 22, 2008.
6 Vagisil Medicated Wipes (pramoxine hydrochloride) cloth, (2005)
retrieved from http://dailymed.nlm.nih.gov/ dailymed/lookup .cfm?
setid=5df5243a-30ef-4c54-b 19b-50335bac0d84.

Appeal 2019-000606
Application 14/613,420

3
Examiner stated: “So teaches an active agent for the treatment of vaginitis
containing mandelic acid (claim 1 of prior art) . . . [and teaches] vaginitis
causes bad odors in the secretion due to increase in pH (page 2, lines 15–21)
. . . .” (Final Act. 5.) The Examiner did not rely on the experimental
evidence reported in So. (See id.) As we noted, each reference need not be
enabling of the claimed subject matter in the context of an obviousness
rejection. (See Decision 9, 11, citing Symbol Tech., Inc. v. Opticon, Inc.,
935 F.2d 1569, 1578 (Ed. Cir. 1991).)
Appellant argued in the Appeal Brief that So provides only in vitro
laboratory experiments, not any clinical trials or human case studies. (See
Appeal Br. 17–20.) Appellant’s argument does not address the Examiner’s
rejection because it focuses on the experimental evidence in So, which was
not relied upon as a basis for the rejection. Because Appellant’s argument
for lack of enablement failed to address the Examiner’s rejection, the
Examiner’s response was not a reason for reversing the rejection.
Accordingly, we are not persuaded that we misapprehended or overlooked
any points raised by Appellant on the basis of Issue 1.
In Issue 2, Appellant argues that claim 16 should have been allowed in
light of what Appellant characterizes as an admission by the Examiner
regarding the narrower pH range recited in the claim. (See Rehearing 5.)
In the Appeal Brief, Appellant argued:
Claim 16 further distinguishes over the art by requiring “at least 1 %
by weight of a second carboxylic acid component” and a “pH of said
acidifying composition . . . between 3.2 and 4.5.” Essentially the same
arguments for Claim 15 apply here. In the final Office Action, the
Examiner states that while So lacks the second carboxylic acid, that
deficiency is cured by the combination of Klier, Hart, and Casas-
Sanchez (final Office Action, p. 9), but these references again fail to
Appeal 2019-000606
Application 14/613,420

4
teach Applicant's method and the use of both mandelic acid and a
second carboxylic acid as claimed by Applicant to reduce fishy odor
from the pudendum.

(Appeal Br. 36.) This argument does not cite to any alleged admission by
the Examiner regarding pH. Similarly, Appellant does not cite to any
findings or conclusions regarding pH in the Reply Brief. (See Reply Br. 51–
52.)
Because Appellant failed to raise an argument for the patentability of
claim 16 based on a finding regarding pH in the briefing on appeal, we could
not have misapprehended or overlooked the argument. Accordingly, we are
not persuaded that we misapprehended or overlooked any points raised by
Appellant on the basis of Issue 2.
In Issue 3, Appellant asserts that we “erred in conflating generic ‘bad
odors’ with the specific issue of feminine fishy odor from sources other than
vaginosis.” (See Request 5.) According to Appellant, the problem solved by
the claimed method is prevention of feminine fishy odor from sources other
than vaginosis, not general bad odors. (See id. at 5–7)
We addressed this issue at least on pages 14–16 of the Decision. We
explained that Appellant claims a method with the steps of: (1) providing a
composition of mandelic acid and (2) providing instructions to apply it to the
entire pudendum, not inside the vagina.7 Even if one of ordinary skill in the

7 The second step of Appellant’s claim 15 recites “providing directions to
the user to apply the acidifying composition to the entire pudendum and not
inside the vagina . . . .” (Appeal Br. 57.) Claim limitations directed to
printed matter, or information that would be printed, are not entitled to
patentable weight unless the printed matter is functionally related to the
substrate on which the printed matter is applied. See Praxair Distribution,
Appeal 2019-000606
Application 14/613,420

5
art would not have known the source of the odor was from something other
than vaginosis, the prior art demonstrates that it would have been obvious to
perform these recited steps. Appellant’s discovery of the source of the odor
does not render the claimed method non-obvious because the prior art shows
that one of ordinary skill in the art would have had a reason to apply
mandelic acid to reduce fishy odor from the teachings of So and would have
known that applying mandelic acid externally can reduce malodor of the
genital area. (See id.) Thus, despite Appellant’s argument in the Request,
we considered the totality of the evidence. We were not persuaded that,
even if the specific problem to be solved by Appellant was not appreciated
as Appellant presents it, the claimed steps would have been non-obvious.

Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1031 (Fed. Cir.
2018). Under this doctrine, merely adding an instruction sheet or other
informational content to a drug product has been held to be insufficient to
create a functional relationship to the drug. See AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1065 (Fed. Cir. 2010); see also In re Ngai, 367 F.3d,
1336, 1339 (holding that instructions in a kit fail to make the kit patentable
because they merely provide a new use for an existing product).
Furthermore, claim limitations directed to providing informational content
have been considered to be mental steps that lack patentable weight in an
obviousness analysis. See Praxair, 890 F.3d at 1033 (holding that claims to
a method of providing nitric oxide gas that includes providing information to
a medical provider are unpatentable under 35 U.S.C. § 103 because, in part,
the limitation of providing information requires the medical provider to only
think about the information and therefore is an unpatentable mental step).
Although our Decision is based on the obviousness of applying mandelic
acid to the pudendum to treat odor, we note that Appellant’s claimed method
reasonably might be interpreted to require only the step of providing a user
with a composition and directions. The step of providing directions to apply
the composition to the pudendum and not inside the vagina reasonably might
be interpreted to be non-limiting.
Appeal 2019-000606
Application 14/613,420

6
“[T]the analysis [of obviousness] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Appellant does not point to any facts or issues that we did not
consider in our Decision. Thus, we are not persuaded that we
misapprehended or overlooked any points raised by Appellant on the basis
of Issue 3.
In Issue 4, Appellant argues that we misunderstood Hart because (1)
we made an “implicit suggestion” that Hart teaches applying mandelic acid
to various areas of the human body and (2) we found that Hart was known to
work with other ingredients in the genital/anal area of animals for odor
control. (See Request 7–9.)
Appellant asserts that when the Decision is read “in context,” we
found that Hart teaches applying mandelic acid to areas on the human body
other than the vagina. (See Rehearing 7.) Appellant fails to cite to such a
finding in the Decision and we did not make one. Instead, we found: “Hart
teaches the application of deodorant to the genital and anal areas of cats and
dogs to control offensive odors. (See Hart 2:25–32.)” (Decision 3, Finding
of Fact (“FF”) 4.) We stated further: “The Examiner relied on Hart to show
that mandelic acid was known to work with other ingredients in the
genital/anal area of animals. (See Final Act. 6.)” (Decision 7.) These are
not findings that Hart teaches that mandelic acid can be applied to areas
other than the human vagina.
Appeal 2019-000606
Application 14/613,420

7
As we explained, “Hart may not teach using mandelic acid in exactly
the same way as claimed, but its teachings of the use of mandelic acid on the
external genitalia of animals are cited along with the teachings of So and
Klier for using mandelic acid in humans to suggest the claimed method.”
(Decision 7.) Thus, our findings regarding Hart were in the context of our
findings regarding the teachings of the other cited prior art for the
Examiner’s obviousness rejection. As the Supreme Court explained:
Often, it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at
issue.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Furthermore, we addressed Appellant’s further argument regarding
the teaching in Hart of dioxanes in the Decision by explaining that the
argument does not accurately reflect the Examiner’s rejection. (See
Decision 10–11; see Request 7–8.)
We also addressed Appellant’s argument that because Hart teaches
dioxane is an alkaline deodorant, one of ordinary skill would not understand
that mandelic acid could be added to increase effectiveness. (See Request 8–
9.) Specifically, we cited the abstract of Hart, which states: “Offensive
odors of animal origin are lessened or neutralized by application of
deodorant compositions comprising [dioxanes]. The effectiveness of the
compositions toward specific odors is increased by incorporation of acidic or
basic components.” (See Decision 10.) As we explained, Hart teaches other
Appeal 2019-000606
Application 14/613,420

8
alternative treatments, without criticizing the claimed solution such as by
teaching that mandelic acid would not be useful in reducing odors on pet
genitalia. (See id. at 9–10.)
Appellant fails to identify any points raised by Appellant that we
misapprehended or overlooked on the basis of Issue 4.
In Issue 5, Appellant argues that we erred in finding that the term
“pudendum” is not limited to humans. (See Request 9–10.) Appellant cites
to footnote 8 on page 7 of the Decision, which notes that claim 15 does not
expressly recite human subjects and that the Specification does not include a
limitation to human in the definition of “pudendum.” (See Decision 7 n.8.)
Appellant cites a dictionary definition of the term that refers to women and
portions of the Specification that refer to women. (See Request 9–10.)
Appellant asserts that this alleged error “was an improper shrinking of the
gap between Applicant's product for controlling odor in the complex
environment of the pudendum and Hart’s teachings for treating pets with his
dioxane compounds” (Id. at 10.)
We did not misapprehend the claim term “pudendum” because we did
not interpret claim 15 as being broader than providing directions to apply the
composition to a female human body. We merely noted that claim 15 does
not expressly recite human subjects and that the Specification does not
include a limitation to humans. The Decision was based on the combination
of teachings in the prior art of applying mandelic acid to women to prevent
odor and of applying mandelic acid to the external genitalia to prevent odor.
Thus, our findings and conclusions are consistent with the definitions
provided by the Appellant.
Appeal 2019-000606
Application 14/613,420

9
Accordingly, we are not persuaded that we misapprehended or
overlooked any points raised by Appellant on the basis of Issue 5.
In Issue 6, Appellant argues that we overlooked alleged “gaps” in the
teachings of So. (See Request 11–13.) Appellant argues that So presents
only in vitro data and, therefore, cannot be relied upon to demonstrate that
mandelic acid can be actually useful in treating humans with vaginosis or in
reducing odor. (See id. at 10–12.) We addressed this argument in our
analysis of Issue 1, above.
Appellant argues further that So fails to establish successful control of
odor-producing microbes. (See id. at 12–13.) According to Appellant,
mere suggestion is not the standard required for So as the primary
reference in this particular rejection, given the unpredictability of
medical treatment and the complexities of an internal human
environment vs. a Petri dish. So does not provide a reasonable
expectation that mandelic acid can treat vaginosis, and provides no
evidence, in vitro or in vivo, that mandelic acid can reduce fishy odor
from sources other than vaginosis in an environment outside the
vagina or outside the Petri dish that So examined.

(Request 12.) Appellant argues that the lack of certain test results in So
means So cannot be used to “guide one skilled in the art to use mandelic acid
in treating humans having odor arising from a different source in a different
environment.” (Request 11 (emphasis omitted).)
This argument fails to address the combination of the teachings of
each of the cited prior art references. (See Decision 7, 14.) The Supreme
Court has explained that “[c]ommon sense teaches, however, that familiar
items may have obvious uses beyond their primary purposes, and in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Appellant’s
Appeal 2019-000606
Application 14/613,420

10
arguments focus only on the lack of certain test results in So, without
considering the teaching of all the cited prior art together, without
addressing the totality of the record. The Examiner provided at least three
references (So, Hart, and Klier) that all teach the odor reducing properties of
mandelic acid. Thus, we are not persuaded that we misapprehended or
overlooked any points raised by Appellant in that Decision.
Accordingly, we are not persuaded that we misapprehended or
overlooked anything on the basis of Issue 6.
In Issue 7, Appellant again argues that we failed to apply the proper
standard for an obviousness rejection because there was an inadequate
demonstration of a reasonable expectation of success. (See Request 13–15.)
As explained above, we addressed this issue in the Decision and are not
persuaded that it should be modified.
Appellant argues further that one of ordinary skill in the art would not
have combined Klier with the other references because it is related to a
problem with “no clear relevance to the challenge of fishy odor.” (Request
15.) We addressed this argument in the Decision, finding it to be
unpersuasive because Klier teaches using mandelic acid as a deodorant.
(See Decision 14.) Deodorants are used to reduce bad odor, regardless of the
specific scent.
Accordingly, we are not persuaded that we misapprehended or
overlooked any points raised by Appellant on the basis of Issue 7.
In Issue 8, Appellant argues we improperly relied on market demand
as a motivation in affirming the Examiner’s rejection for obviousness. (See
Request 15.) Appellant acknowledges, “there is market demand for
eliminating fishy odor, . . .” but argues that the market did not realize that
Appeal 2019-000606
Application 14/613,420

11
there was a problem of fishy odor due to sources other than vaginosis. (Id.)
Thus, Appellant relies on the discovery of a new source of odor to argue for
the obviousness of the claimed method.
These arguments do not persuade us to modify the Decision because
they are contrary to the law of obviousness. If the steps of the claimed
method would have been obvious in light of the art available at the time,
discoveries that lead to the obvious method do not render it non-obvious,
regardless of whether the results were recognized in the art. See In re May,
574 F.2d 1082, 1090 (CCPA 1978) (holding that discovery of the unknown
property of nonaddictiveness of a species disclosed in the prior art does not
constitute a new use); see also In re Tomlinson, 363 F.2d 928, 934 (CCPA
1966) (claims to a process of inhibiting degradation of polypropylene caused
by exposure to light by mixing a certain genus of compounds with
polypropylene held to have been obvious because the prior art reference
taught mixing a species falling within the claimed genus with polypropylene
for the purpose of preventing heat degradation during extrusion.)
We are not persuaded that we misapprehended or overlooked any
points raised by Appellant in that Decision on the basis of Issue 8.
In Issue 9, Appellant argues that we failed to show how the references
as a whole lead one to recognize and solve the problem targeted by the
invention. (See Request 15–17.) Appellant argues “there is no obvious
‘demand for a treatment’ of the problem of fishy odor arising from
sources other than vaginosis.” (Request 16.) Appellant argues further:
Applicant has explained that the references individually and
cumulatively do not lead to Applicant’s discovery as claimed,
foremost because they fail to even recognize the problem that
Appeal 2019-000606
Application 14/613,420

12
needs to be solved, that of reducing fishy odor arising on the
pudendum from sources other than vaginosis.

(Id.) Thus, Appellant again relies on the argument that the discovery of a
new problem addressed by steps that would have been obvious in light of the
prior art renders the method non-obvious because the reason to perform the
obvious steps were not recognized in the art. As explained above, this
argument is contrary to the law.
Appellant argues further that there would not have been a reason to
combine the teachings of Casas-Sanchez or Vagisil with So and Hart
because they are not analogous art. (See Decision 16–17.) According to
Appellant, because Casas-Sanchez teaches a shelf-stable wet wipe solution
without antimicrobials or harsh chemicals it is not taught to be a treatment
for vaginitis or for reducing odors. (See id. at 16.) Similarly, Appellant
argues that because Vagisil teaches preservatives that provide “odor block,”
its teachings are not combinable with Casas-Sanchez. (See id. at 17.)
We addressed these arguments in the Decision, explaining that they
do not address the teachings of Casas-Sanchez and Vagisil that were cited by
the Examiner. (See Decision 12–13.)
We are not persuaded that we misapprehended or overlooked any
points raised by Appellant regarding Issue 9.
In Issue 10, Appellant argues that we erroneously characterized
Appellant’s statement about the use of wipes to prevent odor as an
admission. (See Request 17–19.) In the Appeal Brief, Appellant stated:
Based on the formulation, the Vagisil product may be useful for
cleansing and providing relief for itching, but it is not relevant to the
claimed invention except to document what the Applicant freely
recognizes, that cleansing wipes for the perineum are known.
Appeal 2019-000606
Application 14/613,420

13

(Appeal Br. 27.) In the Decision, we stated:
Whether or not the product described in Vagisil actually works, it
demonstrates what was understood in the art at the time – that
external-use wipes could be useful in preventing odor. Appellant
"freely recognizes" this fact. (Appeal Br. 27.)

(Decision 13.) Appellant now argues that the statement in the Appeal Brief
only acknowledged that cleansing wipes for the perineum were known. (See
Request 17.) Appellant argues that the statement in the Appeal Brief was
not an admission that cleansing wipes such as taught in Vagisil have any
utility in reducing fishy odor as claimed. (See id.)
Appellant emphasizes that Vagisil does not provide any basis for
believing that its wipes control fishy odor. (See Request 16.) Appellant also
emphasizes that the action of the wipes taught in Vagisil is based on the
preservatives used. (See id.) These points are not relevant to the teachings
of Vagisil that were the basis of the Examiner’s rejection. As we explained
in the Decision, Vagisil was cited for its teaching of using a wipe intended
for use on the external vaginal area to block odor. (See Decision 13, citing
Final Act. 8; see also Final Act. 16 (“Vagisil teaches that anti-itch medicated
wipes have odor block protection and is adopted to disclose application
method to external area.”).) This teaching is relevant not only to the step in
Appellant’s claim 15 of providing directions to the user to apply a mandelic
acid composition to the pudendum, and not inside the vagina, but also to the
recitation in claim 23 of treating a pudendum with a wipe comprising the
mandelic acid composition. The teaching in Vagisil demonstrates that those
of skill in the art knew that odor blocking compositions, could be applied
with a wipe to the pudendum, not only inside the vagina.
Appeal 2019-000606
Application 14/613,420

14
Appellant argues that it is unreasonable to separate the functionality of
the wipes from their ingredients and that the reference must be considered as
a whole. (See Request 18–19.)
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. 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). Thus, we are not persuaded
that relying on Vagisil for the teaching of using a wipe on the pudendum to
block odor was improper.
We are not persuaded that we misapprehended or overlooked any
points raised by Appellant regarding Issue 10.
In Issue 11, Appellant argues that we erred in affirming the rejection
of claim 18 because we considered the claimed “non-zero yield stress” to be
a natural result and inherent property of the ingredients recited. (See
Request 19.) Appellant argues that it is hindsight to use an inherent property
as evidence of obviousness where the cited art does not provide a missing
element. (See id.) Appellant asserts that the intended result of the claimed
method is to the problem of fishy odor on the pudendum from sources other
than vaginosis – not the general problem of bad odor. (See id.)
As explained above, arguments based on the discovery that the
method steps of claim 15 will treat fishy odor from sources other than
vaginosis are not persuasive of the non-obviousness of the method steps
recited in Appellant’s claims.
Appeal 2019-000606
Application 14/613,420

15
Furthermore, the term “non-zero yield stress” in claim 18 is extremely
broad, excluding only compositions with zero yield stress. In the Appeal
Brief, Appellant stated:
For an externally used wipe to be effective in treating vaginitis
according to So, if one were somehow motivated to attempt the use of
a wipe, then Applicant submits that one skilled in the art would likely
be motivated to ensure that the externally applied active ingredient has
a chance to migrate into the vagina to have a chance of treating the
vaginitis. Thus, the carrier should have low viscosity and low
resistance to flowing.

(Appeal Br. 37.) Thus, Appellant stated that even when the intent would be
to have a composition move to a different location on the body, such as into
the vagina, the yield stress would be “low,” not zero. Appellant fails to
direct us to an example of or an explanation of a composition with a zero
yield stress. Given Appellant’s statement that even compositions appearing
to have characteristics not beneficial to the claimed method have a non-zero
yield stress, we are not persuaded that we overlooked or misapprehended
any points raised by Appellant in determining that compositions useful in
Appellant’s claimed method would inherently have non-zero yield stress.
We are also unpersuaded by Appellant’s argument that we implied
that Vagisil teaches a treatment for some forms of malodor, but not fishy.
(See Request 19.) As explained above, the Examiner’s rejection was not
based on a teaching in Vagisil of treating fishy odor, but on the teaching of
using a wipe on the external genitalia to block odor, in general.
We are not persuaded that we misapprehended or overlooked any
points raised by Appellant regarding Issue 11.
Appeal 2019-000606
Application 14/613,420

16
In Issue 12, Appellant argues that we made errors regarding Klier.
(See Request 20.) Appellant argues that we improperly shifted the burden to
Appellant to show that the Gram-positive bacteria referred to in Klier do not
cause fishy odor and that there would not have been a reasonable
expectation of success in using Klier to address the problem of Gram-
negative vaginosis taught in So. (See Request 20.)
As we explained, Klier teaches using mandelic acid as a deodorant
and “intimate cleansing agent.” (See Decision 14.) Therefore, we are
persuaded that it contributes to the other cited art, which also teach using
mandelic acid to prevent odor, to render Appellant’s claimed method
obvious. Klier need not have taught that mandelic acid is useful in treating
Gram-negative bacteria or in treating fishy odor because, as explained
above, those of ordinary skill in the art would have understood from its
teachings, as well as the teachings of the other cited art, that mandelic acid
could be used to treat odor in the “intimate” or genital area. Thus, we are
not persuaded that we improperly shifted a burden to Appellant in regard to
the teachings of Klier.
Accordingly, we are not persuaded that we misapprehended or
overlooked any point raised by Appellant on the basis of Issue 12.
Conclusion
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
15–26 103(a) So, Hart, Klier,
Casas-Sanchez,
Vagisil
15–26

Appeal 2019-000606
Application 14/613,420

17
Final Outcome of Appeal After Rehearing
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
15–26 103(a) So, Hart, Klier,
Casas-Sanchez,
Vagisil
15–26

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