The Procter & Gamble Company

Patent Trials and Appeals Board

Mar 30, 2022

2021002817 (P.T.A.B. Mar. 30, 2022)

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. 14/973,765 12/18/2015 Timothy Alan Scavone 10263CC4C 1834 27752 7590 03/30/2022 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER PARK, HAEJIN S ART UNIT PAPER NUMBER 1615 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): centraldocket.im@pg.com mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY ALAN SCAVONE, MISAEL OMAR AVILES, DEAN LARRY DUVAL, PETER CHRISTOPHER ELLINGSON, BRIAN FRANCIS GRAY, NANCY KARAPASHA, KEITH JOSEPH STONE, RAPHAEL WARREN, and NERY VANESSA BRESLIN Appeal 2021-002817 Application 14/973,765 Technology Center 1600 Before DONALD E. ADAMS, JOHN E. SCHNEIDER, and TAWEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2-5, 7, and 27. 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 The Procter & Gamble Company. Appeal Br. 1. Appeal 2021-002817 Application 14/973,765 2 STATEMENT OF THE CASE The Specification states that “[t]he present invention relates to an anhydrous cosmetic composition for topical application to the intimate skin area,” which “may comprise: one or more complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 20,” wherein TVPS index is “a measure of the reduction in butanethiol concentration in the headspace by a compound.” Spec. 2:8-14, 11:31-33. According to the Specification, prior art compounds for controlling body malodors that have low TVPS values may be very effective against malodorant comprising ammonia or amine groups, but may be “surprisingly less effective in counteracting . . . malodors . . . deriving from protein degradation and containing thiol groups.” Spec. 14:2-7. Further according to the Specification, “[r]eactive compounds according to the present invention, having relatively high TVPS values[,] are surprisingly effective in counteracting both types of malodorant molecules and are therefore overall more effective in neutralizing malodors in a broader range of situations.” Id. at 14:7-15:3. CLAIMED SUBJECT MATTER The claims are directed to an anhydrous cosmetic composition. Claim 27 is illustrative: 27. An anhydrous cosmetic composition for topical application to skin in the intimate area, the anhydrous cosmetic composition comprising: a combination of complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 25, wherein the combination of complexed or encapsulated compounds comprise at least one of adoxal, trans- 2-hexenal, ligustral, floral super, Florhydral, 5-methyl-2- thiophenecarboxaldehyde, hydratropic aldehyde, undecenal, 9- Appeal 2021-002817 Application 14/973,765 3 undecenal, 10-undecenal, trans-4-decenal, cis-6-nonenal, isocyclocitral, precyclemone, (E)-2-(z)-6-nonadienal, undecyl aldehyde, methyl-octyl-acetaldehyde, lauric aldehyde, and Silvial, wherein the anhydrous cosmetic composition is in the form of a solid stick comprising a product hardness of at least 600 gram-force; and wherein the anhydrous cosmetic composition is devoid of an antiperspirant active, and wherein the anhydrous composition provides an intimate area skin benefit and/or a benefit for hair in the intimate area. Appeal Br. 9-10 (Claims App.) (underlining omitted). REJECTION(S) A. Claims 2-5, 7, and 27 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 3. B. Claims 4, 7, and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over Kuhn,2 as evidenced by Bacon.3 Final Act. 6. C. Claims 2-5, 7, and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over Kuhn, as evidenced by Bacon, and Denutte.4 Final Act. 8. OPINION A. Lack of adequate written description (claims 2-5, 7, and 27) 1. Issue The Examiner asserts that “the disclosure does not describe ‘a combination of complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 25, wherein the 2 Kuhn et al., US 2012/0107258 A1, published May 3, 2012. 3 Bacon et al., US 6,110,449, issued Aug. 29, 2000. 4 Denutte et al., US 2010/0287710 A1, published Nov. 18, 2010. Appeal 2021-002817 Application 14/973,765 4 combination of complexed or encapsulated compounds comprise[s] at least one of’ those recited in claim 27.” Final Act. 3. The Examiner notes that “no compound’s TVPS was measured and/or calculated in a complexed or encapsulated form,” and, “[e]ven assuming arguendo that the claim recited that the combination of compounds has a combined TVPS [of] over 25 prior to encapsulation or complexation, the disclosure is entirely silent regarding such a combination.” Id. at 4-5. Appellant contends that the Table on page 14 of the Specification “expressly recites several compounds having a TVPS of greater than 25.” Appeal Br. 2. Appellant contends that the Specification does not need to disclose the TVPS of compounds after encapsulation, because the Specification teaches that encapsulated composition is released when needed, and, “[u]pon release, these compounds exhibit the TVPS values in the Table on page 14.” Id. Appellant also contends that an ordinarily skilled artisan, based on the teachings in the Specification, would be able to envision and make “a myriad of combinations of compounds with a TVPS of greater than 25.” Id. The issue with respect to this rejection is whether the Specification sufficiently describes the full scope of the claimed “combination of complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 25, wherein the combination of complexed or encapsulated compounds comprise at least one of” the compounds recited in claim 27, so as to reasonably convey to a skilled artisan that the inventor and/or joint inventor had possession of the claimed invention at the time of the application. Appeal 2021-002817 Application 14/973,765 5 2. Analysis We agree with the Examiner that the Specification does not adequately describe the full scope of the limitation, “a combination of complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 25, wherein the combination of complexed or encapsulated compounds comprise[s] at least one of” those recited in claim 27. We address Appellant’s arguments below. Only those arguments timely made by Appellant in the Appeal Brief (no Reply Brief was submitted) have been considered; arguments not so presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). Appellant contends that the Specification “expressly recites several compounds having a TVPS of greater than 25” and that “the TVPS values of the non-complexed / encapsulated compounds is the same as that of the complexed / encapsulated compounds.” Appeal Br. 2. Appellant contends that the Specification teaches that “the encapsulation vehicles release these compositions when needed” and that, “[u]pon release, these compounds exhibit the TVPS values in the Table on page 14.” Id. at 2-3. We are not persuaded. We acknowledge that a claim that recites a property inherent in an adequately described composition is not invalid as lacking written description merely because the property itself is not explicitly described. Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1309 (Fed. Cir. 2015). However, Appellant cites no persuasive evidence to support its assertion that “the TVPS values of the non-complexed / encapsulated compounds is the same as that of the complexed / encapsulated compounds.” Appeal Br. 2. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appeal 2021-002817 Application 14/973,765 6 To the extent Appellant is making a claim construction argument - i.e., that the claim should be construed as requiring the combination of compounds to have a thiol vapor pressure suppression index (TVPS) of more than 25 prior to, or after release from, encapsulation or complexation, we need not decide this issue: As the Examiner points out and as further discussed below, the limitation would lack adequate written description even if the claims were construed as described above. Final Act. 4-5. In particular, although the Specification describes specific compounds that have TVPS of more than 25, Appellant does not adequately describe combinations of compounds comprising at least one of the compounds recited in claim 27 and having TVPS of more than 25. Id. at 4. In response to this point, Appellant contends that an ordinarily skilled artisan, based on the teachings in the Specification, would be able to envision and make “a myriad of combinations of compounds with a TVPS of greater than 25.” Appeal Br. 3. We are not persuaded by Appellant’s attorney argument, which is “no substitute for evidence.” Johnston, 885 F.2d at 1581. Moreover, we note that a “sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc) (citation omitted). Appellant has not argued, much less provided persuasive evidence, that the Specification discloses either a representative number of combinations comprising at least one of the compounds recited in claim 27 and having TVPS of greater than Appeal 2021-002817 Application 14/973,765 7 25, or provided structure features common to the genus of such combinations. Accordingly, for the reasons discussed above, we affirm the Examiner’s rejection of claims 2-5, 7, and 27 as invalid for lack of adequate written description. B. Obviousness rejections over Kuhn, as evidenced by Bacon (claims 4, 7, and 27) and over Kuhn, as evidenced by Bacon, and Denutte (claims 2-5, 7, and 27) 1. Issue The Examiner has rejected claims 4, 7, and 27 as obvious over Kuhn, as evidenced by Bacon, and claims 2-5, 7, and 27 as obvious over Kuhn, as evidenced by Bacon, and Denutte. The same issues are dispositive as to both rejections; we therefore consider them together. The Examiner finds that Kuhn teaches “topical compositions comprising antimicrobial actives of a formula (I), for combating body odor in intimate areas.” Final Act. 6. The Examiner finds that Kuhn teaches “odor-masking or deodorant substances can be used in cyclodextrin- encapsulated form in its compositions” and that “[t]he compositions may be in the form of anhydrous sticks,” and further teaches “stick formulations comprising . . . compounds such as those in instant claim 27.” Id. The Examiner points in particular to Kuhn’s Example D18, which is in the form of “an anhydrous solid comprising perfume oil of Example P4 (containing the compounds in instant claim 27),” wherein the deodorant is mixed with the antimicrobial active and “encapsulated.” Id. The Examiner finds that “Kuhn does not exemplify a formulation arranged precisely as in instant claim 27” but concludes that “[i]t would have been prima facie obvious to Appeal 2021-002817 Application 14/973,765 8 one having ordinary skill in the art to . . . prepare Kuhn’s antimicrobial compositions without an antiperspirant active as recited in the instant claims,” because “Kuhn teaches that its [antimicrobial active] of formula (I) are by themselves ‘effective against body odor, and more specifically the smell of human sweat,” does not require the use of an antiperspirant active, and also teaches that “‘particularly preferred cosmetic preparation according to the invention are deodorants and/or antiperspirants’, wherein ‘and/or’ indicates distinction between the two.” Id. at 6-7. 2. Findings of Fact 1. Kuhn teaches using ω-cyclohexylalkan-1-ales of the following formula (I) as antimicrobial agents for treating body odor: wherein R1 to R6 independently of one another denote hydrogen or a linear or branched alkyl radical having 1 to 12 carbon atoms, Ra and Rb independently of one another denote hydrogen, a linear or branched alkyl radical having 1 to 6 carbon atoms or a linear or branched alkoxy radical having 1 to 4 carbon atoms, and x is 0 or l, wherein preferably the total number of carbon atoms in R1 to R6 is 18 or less. Kuhn Abstr.; see also id. ¶¶ 6, 31-34. 2. Kuhn teaches that “[t]he compounds according to the invention of formula (I) may also be used as a constituent of fragrance compositions (perfume oils) and, for example, impart an antimicrobial action to a perfumed finished product.” Id. ¶ 70; see also, e.g., id. ¶¶ 6, 75, 77, 82. Appeal 2021-002817 Application 14/973,765 9 3. Kuhn teaches that “[f]ragrance compositions (perfume oils) in the context of the present invention relate to mixtures of two or more odoriferous substances (fragrance materials).” Id. ¶ 72. 4. Kuhn teaches that “[i]ndividual fragrance materials are preferably selected from the group comprising . . . aliphatic aldehydes and their acetals such as for example . . . 10-undecenal.” Id. ¶ 84. 5. Kuhn teaches “[i]t is of particular advantage if the formulation according to [its] invention comprise at least one aroma[tic] substance, preferably . . . more aroma substances,” chosen from a group including trans-2-hexenal. Id. ¶ 128. 6. Kuhn teaches an example of a perfume oil for use in deodorants and antiperspirants that includes 10-undecenal and florhydral, and examples of anhydrous sticks comprising such perfume oil. Id. ¶ 206 (Example P1), 209 (Example P4), 225 (Example D11, wax stick comprising perfume oil of Example P1), 233 (Example D18, suspension stick comprising perfume oil of Example P4). 7. Kuhn teaches that “[t]he compounds of formula (I) and perfume oils according to [its] invention can be included in all products,” in particular deodorants, “with products that remain on the skin or hair (so-called leave-on products) being particularly advantageous.” Id. ¶ 92. Kuhn teaches that the form of administration of the leave-on products can include, e.g., sticks. Id. ¶¶ 93-96. 8. Kuhn teaches that, for some applications “it is advantageous to use the compounds of formula (I) or a perfume oil comprising one or more compounds of formula (I) according to the Appeal 2021-002817 Application 14/973,765 10 invention in micro-encapsulated and spray-dried form or as an inclusion complex or extrusion product.” Id. ¶ 113; see also id. ¶ 115 (explaining that microencapsulation can take place via, e.g., coacervation method, while “[i]nclusion complexes can . . . be manufactured by introducing dispersions of the perfume oil and cyclodextrins or urea derivatives into a suitable solvent”), ¶ 102 (teaching that “[i]n anhydrous cosmetic preparations, [odor-masking] substances can be used in spray-dried or encapsulated form, e.g. using cyclodextrin.”). Id. ¶ 102. 9. Bacon suggests that solid stick compositions, such as solid antiperspirant stick compositions, have penetration force values substantially greater than about 500 gram-force, typically above about 1000 gram-force. 3. Analysis Unless otherwise noted, we adopt the Examiner’s findings of fact and reasoning regarding the scope and content of the prior art with respect to claim 27 (FF1-FF9; Final Act. 5-9; Ans. 3-4, 5-10) and agree that claim 27 is obvious over Kuhn as evidenced by Bacon. We add the following comments for emphasis. Kuhn teaches anhydrous compositions capable of topical application to the skin of the intimate area and thus meets the preamble of claim 27. FF6-FF8. More particularly, Kuhn teaches solid sticks comprising perfume oil comprising 10-undecenal and florhydral, which are two of the compounds recited in claim 27. FF6. Kuhn likewise teaches using the perfume oil in its composition in encapsulated form or as an inclusion complex. FF8. Furthermore, although Kuhn does not disclose the hardness Appeal 2021-002817 Application 14/973,765 11 of the solid stick described in its example, Bacon teaches that cosmetic solid sticks having penetration force values above 1000 gram-force is known in the art. FF9. Kuhn also does not require an antiperspirant active, thus rendering obvious the limitation in claim 27 of the composition being “devoid of an antiperspirant active.” Accordingly, Kuhn teaches all of the explicit structural limitations of claim 27. As to the functional limitations of claim 27, Kuhn teaches that its composition provides both antimicrobial and deodorant benefits. FF1, FF2, FF7. Furthermore, although Kuhn does not teach the TVPS of its compositions (i.e., “combination of complexed or encapsulated compounds”), Kuhn teaches compositions comprising compounds disclosed in claim 27. As the predecessor of our reviewing court has explained, [w]here. . . the claimed and prior art products are identical or substantially identical. . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). Appellant has not provided persuasive evidence that Kuhn’s composition would not have the recited TVPS. Next, we turn to Appellant’s arguments. Only those arguments timely made by Appellant in the Appeal Brief (no Reply Brief was submitted) have been considered; arguments not so presented in the Brief are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-002817 Application 14/973,765 12 Appellant first argues that, in order for the Examiner to rely on inherency in meeting the limitation of a “combination of complexed or encapsulated compounds having a thiol vapor pressure suppression index (TVPS) of more than 25,” “each and every combination” suggested by Kuhn must necessarily have a TVPS of more than 25. Appellant contends: However, this is simply not the case. In order to achieve a TVPS value of more than 25, the appropriate combination of materials must be chosen to do so. And given the infinite number of possibilities taught by Kuhn, not each and every combination of fragrance materials yields a TVPS of more than 25. As such, the Office’s reliance on inherency to fill the void of teaching in Kuhn is inapposite. And, the addition of Bacon does not rectify the outage identified in Kuhn. Accordingly, Applicants assert that the suggested combination of Kuhn and Bacon fails to teach or suggest all of the claim features of claim 27. Appeal Br. 5. We are not persuaded. Appellant is correct that “[i]nherency may not be established by probabilities or possibilities” and that “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.” Scaltech Inc. v. Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). However, a rejection based on inherency does not require all combinations disclosed in or rendered obvious by the cited prior art to inherently achieve the claimed results. Instead, the Examiner needs only show that a particular combination rendered obvious by the prior art- in this case a composition comprising a perfumed oil comprising, e.g., 10- undecenal and florhydral, FF6, would inherently meet the functional limitation regarding a TVPS of greater than 25. Furthermore, as we have noted above, where, as here, “the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that Appeal 2021-002817 Application 14/973,765 13 the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” Best, 562 F.2d at 1255. As discussed above, Appellant has not provided such evidence. Appellant next contends that “there is no teaching provided in [the] art regarding the importance of the TVPS value of compounds in either Kuhn or Bacon,” and “Kuhn teaches an infinite number of combinations of aroma substances, fragrance materials, and perfume oils.” Appeal Br. 6. Appellant contends that, “because there is no indication of the importance of the TVPS value, or its criticality in fighting specific odors associated with intimate areas in the prior art, the Office has engaged in impermissible hindsight regarding the currently pending claims.” For the same reasons, Appellant contends that, “[w]ithout the teachings of the Applicant[’s] specification, there is no reasonable expectation of success.” Id. at 6-7. We are not persuaded. Contrary to Appellant’s suggestion, the “statement that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.” In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). Similarly, [i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). In short, the fact that the prior art does not suggest “the importance of the TVPS value” is not dispositive of non-obviousness, because the cited art provides a skilled Appeal 2021-002817 Application 14/973,765 14 artisan with reasons to combine elements disclosed in the prior art so as to arrive, with a reasonable expectation of success, at a composition that meets all the structural limitations of the claimed invention. The fact that such a composition may have a property not previously disclosed in the art (e.g., TVPS of more than 25) does not render the claim non-obvious. As for Appellant’s argument that Kuhn teaches “an infinite number of combinations of aroma substances, fragrances materials, and perfume oils” (Appeal Br. 6), we first note that “disclos[ing] a multitude of effective combinations does not render any particular formulation less obvious. This is especially true [where] the claimed composition is used for the identical purpose taught by the prior art.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Furthermore, in this case Kuhn teaches examples of specific combinations of aromatic substances comprising compounds recited in claim 27. FF6. For all of the reasons above, we are not persuaded by Appellant’s contention that the Examiner has not established obviousness by a preponderance of obviousness. Appeal Br. 7. Accordingly, we affirm the Examiner’s rejection of claim 27 as obvious over Kuhn and Bacon. Claims 4 and 7, which are not separately argued, fall with claim 27. Appellant does not make any additional arguments with respect to the rejection of claims 2-5, 7, and 27 as obvious over Kuhn, Bacon, and Denutte, stating only that “the addition of Denutte does not rectify the outages identified herein regarding Kuhn.” Appeal Br. 8. Because we do not find the rejection over Kuhn and Bacon to be deficient, we also affirm the rejection of claims 2-5, 7, and 27 as obvious over Kuhn, Bacon, and Denutte. Appeal 2021-002817 Application 14/973,765 15 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-5, 7, 27 112 Written Description 2-5, 7, 27 4, 7, 27 103 Kuhn, Bacon 4, 7, 27 2-5, 7, 27 103 Kuhn, Bacon, Denutte 2-5, 7, 27 Overall Outcome 2-5, 7, 27 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED