SHIN-ETSU CHEMICAL CO., LTD.

Patent Trials and Appeals Board

Dec 7, 2020

2020002525 (P.T.A.B. Dec. 7, 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.
15/019,694 02/09/2016 Emi AKABANE 169775 9456
25944 7590 12/07/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
KANTAMNENI, SHOBHA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
12/07/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMI AKABANE and CHIHIRO HAYAKAWA
Appeal 2020-002525
Application 15/019,694
Technology Center 1600
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4, 7, 10, and 13–18. See Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/019,694 filed Feb. 9, 2016 (“the ’694 App.”); the Final Office Action
dated May 6, 2019 (“Final Act.”); the Appeal Brief filed Sept. 25, 2019
(“Appeal Br.”); the Examiner’s Answer dated Dec. 27, 2019 (“Ans.”); and
the Reply Brief filed Feb. 10, 2020 (“Reply Br.”).
2 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 Shin-Etsu
Chemical Co., LTD. Appeal Br. 1.
Appeal 2020-002525
Application 15/019,694

2
The invention is drawn to a gel paste composition that contains a
crosslinking organopolysiloxane having improved compatibility with
ethylhexyl methoxycinnamate and water, which exhibits excellent
dispersibility when blended into a cosmetic. Spec. ¶ 9.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A gel paste composition comprising:
(A) a crosslinking organopolysiloxane; and
(B) a liquid oil,
wherein the crosslinking organopolysiloxane (A) is
obtained by reacting an organohydrogenpolysiloxane shown by
the following general formula (I) with a polyoxyalkylene
compound shown by the following general formula (II) and a
polyoxyalkylene compound shown by the following general
formula (III) in the presence of a catalyst for hydrosilylation
reaction, the component (A) containing polyoxyethylene units
in an amount in a range of 30 wt% to 60 wt% and at least one
of absorbs and swells with each of water and ethylhexyl
methoxycinnamate (OMC):
R1aHbSiO(4-a-b)/2 (I)
where each R1 may be the same or different and
represents a substituted or unsubstituted monovalent
hydrocarbon group having 1 to 30 carbon atoms and not having
an alkenyl group, and “a” and “b” each represent a positive
number satisfying 1.0≤a≤2.5, 0.001≤b≤1.2, 1.001≤a+b≤ 2.6,
CcH2c-1O(C2H4O)d(C3H6O)eCcH2c-1 (II)
where “c” represents an integer of 2 to 6, and “d” and “e”
each represent an integer satisfying 5≤d≤200 and 0≤e≤200,
CcH2c-1O(C2H4O)d(C3H6O)e-R2 (III)
where R2 represents a hydrogen atom, a monovalent
hydrocarbon group having 1 to 10 carbon atoms, or –(CO)R3
where R3 represents an alkyl group having 1 to 5 carbon atoms.
Appeal 2020-002525
Application 15/019,694

3
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Koji et al. (“Koji”) EP 2 014 701 A2 Jan. 14, 2009
Kennan et al. (“Joseph”)3 WO 2010/080755 A2 July 15, 2010
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103: (1) claims 1, 4, 7, 10, 13, and 14 over Joseph; and (2) claims 15–18
over Joseph in view of Koji. Final Act. 3–12.
OPINION
Obviousness rejection over Joseph
The Examiner rejects claims 1, 4, 7, 10, 13, and 14 as obvious over
Joseph. Final Act. 3–10. Appellant argues the claims as a group. Appeal
Br. 3–10. We select claim 1 as representative of the group. 37 C.F.R.
§ 42.37(c)(1)(iv).
The Examiner finds that Joseph teaches the limitations of claim 1
except for “polyoxyethylene units in polyoxyalkylene crosslinked silicone
elastomers therein in an amount of 30 wt% to 60 wt%.” Final Act. 3–4. The
Examiner finds that Joseph teaches that ethylene oxide content can be varied
in polyoxyalkylene crosslinked silicone elastomers, therefore “[t]he
reference has recognized these parameters as result effective variables that a

3 Both the Examiner and Appellant discuss WO 2010/080755 A2 as
“Joseph” (which appears to be the middle name of the first inventor), not
“Kennan” (the surname of the first inventor). See Final Act. 3; Appeal Br. 3;
Kennan (75). We use the “Joseph” denomination employed by the
Examiner and Appellant in an effort to avoid further confusion.
Appeal 2020-002525
Application 15/019,694

4
person of routine skill in the art would routinely optimize.” Id. at 4; see also
Ans. 4–5.
In the Answer, the Examiner finds
organopolysiloxane polymer with higher amount of ethyleneoxide
content (30 wt% or more) is expected to have better water absorption
property and dispersability [sic] in water than with lower amount of
ethyleneoxide content 13 wt%, 15 wt%, or 20 wt %, since higher
amount of ethyleneoxide content results in more hydrophilic
organopolysiloxane polymer i.e.[,] better water absorption property
and dispersibility in water is expected with higher amount of
ethyleneoxide which is hydrophilic.
Ans. 10 (citing Table 1a of the Emi Akabane Declaration dated Jan. 2, 2018;
Spec. Table 1).
Appellant argues, inter alia, that Joseph merely discloses that
different polyoxyalkylenes can be varied to provide an ethylene oxide
content in the range of 2 to 25 wt%, which is well outside the claimed range.
Appeal Br. 3–4. Appellant further argues that one of ordinary skill in the art
would not have had reason to modify the range of ethylene oxide disclosed
in Joseph, as Joseph teaches a specific range with specific end points and no
reason to go beyond those end points. Id. at 5–7. According to Appellant,
the Examiner provides no explanation of how or why one would optimize
Joseph and achieve the claimed range. Reply Br. 3.
Joseph discloses that silicone elastomer gels and pastes can be used as
rheology modifiers or thickeners, and may impart desirable aesthetics such
as skin feel to a formulation. Joseph ¶ 3. Joseph’s only teaching in relation
to ethylene oxide content is that the silicone elastomer has 2 to 25 weight
percent ethylene oxide groups. Id. ¶¶ 6, 26, 54. Joseph provides no teaching
that varying the amount of ethylene oxide results in any effect. See
generally id. Contrary to the Examiner’s finding, we see no recognition in
Appeal 2020-002525
Application 15/019,694

5
Joseph that ethylene oxide content is a result effective variable. See Final
Act. 4.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (emphasis added).
However, Joseph does not identify any property associated with varying
content of ethylene oxide. Joseph merely indicates that ethylene oxide
content can be varied from 2 to 25 wt%. See, e.g., Joseph ¶ 6. Joseph’s
teaching in relation to ethylene oxide is limited to an amount by which it can
be varied, and lacks any discussion of why one of ordinary skill in the art
would vary the amount with what expected results. Thus, the Examiner does
not persuasively explain why a skilled artisan would have recognized from
Joseph that ethylene oxide content is a result effective variable. Under such
circumstances, the prior art does not provide any reason for one of ordinary
skill in the art to “optimize” the ethylene oxide content to include 30 wt% to
60 wt%, a range outside of Joseph’s disclosed range.
The Examiner’s citation to the Specification and Akabane Declaration
as teaching a reason to vary ethylene oxide content to 30 wt% or more fails
to even suggest that the prior art recognizes ethylene oxide content as a
result effective variable. See In re Applied Materials, Inc., 692 F.3d at 1297.
Instead, the Examiner falls prey to impermissible hindsight.
We do not sustain the rejection of claim 1 as obvious over Joseph.
For the same reasons, we also do not sustain the rejection of claims 4, 7, 10,
13, and 14 as obvious over Joseph.

Appeal 2020-002525
Application 15/019,694

6
Obviousness rejection over Joseph in view of Koji
Claims 15–18 depend indirectly from claim 1. See Appeal Br. A-1–
A-2. The Examiner finds that claims 15–18 are obvious over Joseph in view
of Koji. Final Act. 10–12. For this rejection, the Examiner relies on the
finding in the earlier rejection that Joseph recognizes ethylene oxide content
as a result effective variable. See id. at 10.
Because Koji does not cure the deficiency in Joseph regarding the
obviousness of the claimed ethylene oxide content, we do not sustain the
rejection.
CONCLUSION
The Examiner’s decision to reject claims 1, 4, 7, 10, and 13–18 is
reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 7, 10,
13, 14
103 Joseph 1, 4, 7, 10,
13, 14
15–18 103 Joseph, Koji 15–18
Overall
Outcome
1, 4, 7, 10,
13–18
REVERSED