The Procter & Gamble Company

Patent Trials and Appeals Board

Jun 25, 2020

2019005959 (P.T.A.B. Jun. 25, 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.
14/881,714 10/13/2015 Timothy Charles Gulbin 13592 1025
27752 7590 06/25/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
LAZARO, DOMINIC
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
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 CHARLES GULBIN1
Appeal 2019-005959
Application 14/881,714
Technology Center 1600
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of making a personal care composition, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
According to the Specification:
An improved crystallization process of hydrogenated castor oil
structurant . . . has been developed. This process results in

1 Appellant identifies the real party in interest as The Procter & Gamble
Company. Appeal Br. 1. We use the word Appellant to refer to “applicant”
as defined in 37 C.F.R. § 1.42(a).
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Application 14/881,714

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improved cost by producing (i) a dispersion having high
concentration of the structurant . . . , and (ii) a crystal
habit/form that results in a higher yield stress in the final
product, imparting high stability, for a given amount [of]
structurant.
Spec. 4:5–10.
Claims 6–22 and 26–28 are on appeal. Claim 6, reproduced below, is
illustrative (emphasis added):
6. A method of making a stable personal care composition
comprising the steps of:
a. preparing a premix composition comprising
hydrogenated castor oil, one or more surfactants and
an aqueous carrier by
1. mixing
i. from about 0.30% to about 4% of the
hydrogenated castor oil by weight of the premix
composition, wherein the hydrogenated castor
oil comprises particles of which 90% by weight
of the total hydrogenated castor oil of the
premix has particles with a size of less than 60
micrometers;
ii. from about 15 % to about 40 % of the one or
more surfactants selected from the group
consisting of anionic surfactant, amphoteric,
cationic or zwitterionic surfactants, and
mixtures thereof, by weight of the premix
composition;
iii. from about 60% to about 80% of the aqueous
carrier by weight of the premix composition;
2. adjusting the pH of the premix composition to about 5
to about 12;
3. heating the premix composition to 65–84°C,
maintaining a temperature below the melting point of
the hydrogenated castor oil;
4. cooling the premix composition to a temperature of
about 60°C to about 20°C;
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b. forming a personal care composition comprising the
premix composition, detersive surfactants, and an
aqueous carrier by combining the premix composition
with
1. from about 5% to about 25% of detersive surfactant
by weight of the personal care composition;
2. from about 80% to about 95% of an aqueous carrier
by weight of the personal care composition;
wherein the personal care composition comprises from about
0.03% to about 1% of hydrogenated castor oil by weight of the
personal care composition, and
wherein the personal care composition comprises crystals
resulting from the premix composition, and
wherein from about 80 weight% to about 100 weight% of the
crystals resulting from the premix composition have a fiber
shape, and
wherein from about 80% to about 100% of the fiber shaped
crystals are longer than about 5 micrometers.

Claim 26 is the only other independent claim and also requires
preparing a premix composition comprising hydrogenated castor oil by,
among other steps, “heating the premix composition to from 65 to about
84°C,” and forming a personal care composition comprising the premix
composition, where the personal care composition comprises crystals as
described in claim 6.
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OPINION
Claims 6–22 and 26–28 stand rejected under 35 U.S.C. § 103 as
obvious based on Wise,2 Ryan,3 and Verdicchio.4 Final Action5 6. The
Examiner finds that Wise teaches a “method of making a stable detersive
surfactant containing personal care composition.” Id. The Examiner finds
that Wise teaches treating a “premixture containing []a stabilizing agent in
the presence of anionic surfactant to form an emulsion containing droplets,”
which “is ‘cooled to form a stabilizing premix at a rate of about 10 to about
1000 C/min to form crystals from the droplets, the crystals having a
maximum dimension of about 0.1 to about 3 um.’” Id. The Examiner finds
that Wise teaches that the crystals can have the shape of thin plates or
needles. Id.
The Examiner finds that Wise teaches that a suitable stabilizing agent
is ethylene glycol distearate (EGDS) (id. at 7) and discloses “hydrogenated
castor oil as structuring agent[] . . . but DOES NOT TEACH the use of
hydrogenated castor oil in the premix . . . wherein the premix composition is
heated while ‘maintaining a temperature below the melting point of the
hydrogenated castor oil’” (id. at 10). The Examiner also finds that “Wise . . .
DOES NOT TEACH crystals . . . [that] have a fiber shape and: are longer
than about 5 micrometers.” Id.
The Examiner finds, however, that Ryan teaches a method of making
“a structured aqueous liquid detergent composition . . . characterized in that

2 US 2012/0329768 A1, published December 27, 2012.
3 WO 2011/120799 A1, published October 6, 2011.
4 U.S. 4,726,915, issued February 23, 1988.
5 Office Action mailed June 18, 2018.
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[a] structured water premix is formed by: a) adding 0.1 to 0.4 . . . wt%, HCO
[Hydrogenated Castor Oil] . . . , to 2 to 8 wt% surfactant . . . , [and] b)
heating this mixture to 70 to 84°C.” Id. at 10–11. “Ryan also teaches: ‘[a]
preferred cooling rate, especially after a holding period, is between 1.5 and
2.5°C per minute, to allow the correct crystallization to develop . . .’.” Id. at
11.
The Examiner concludes that “since the references teach that the
compositions of Wise and Ryan are made by a similar process of heating and
cooling in the presence of surfactants . . . , it would have been obvious to
incorporate hydrogenated castor oil in Wise’s method.” Id. at 12.
The Examiner finds that,
[w]ith further respect to the melting point of hydrogenated
castor oil . . . , Ryan notes: ‘at no time during the process does
the temperature of the HCO exceed its melting point’ . . . and
also that ‘taking the HCO above its melting point leads to a
different type of structure when it is subsequently cooled.’
Id.
The Examiner concludes that “one would have been motivated to
maintain an HCO mixture below the melting point of HCO to prevent
seeding effects . . . when using hydrogenated castor oil as a structuring
agent.” Id. at 12–13. “Therefore, it would be obvious to heat Wise’s premix
composition with HCO per Ryan while ‘maintaining a temperature below
the melting point of the hydrogenated castor oil’ as required by claim 6.” Id.
at 13.
The Examiner finds that Verdicchio teaches that detergent and
cleansing compositions must be non-irritating, that pH adjusting agents are
conventional optional ingredients in such compositions, and “that ‘The pH
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of the compositions should be from about 4.0 to 9.0, preferably 6.0 to 8.0.’”
Id. The Examiner concludes that it would have been obvious “to follow
Wise’s method of making a stable detersive surfactant . . . and to have
adjusted the pH to 4.0 to 9.0, as taught by Verdicchio.” Id.
Regarding the requirement in claims 6 and 26 for crystals having a
fiber shape and a certain length, the Examiner reasons that “MPEP
§ 2112.01 states: ‘where the claimed and prior art products are identical or
substantially identical in structure of composition, or are produced by
identical or substantially identical processes, a prima facie case of either
anticipation or obviousness has been established.’” Id. at 17. The Examiner
also points to Wise’s disclosure that its premix is cooled to form “crystals
having a maximum dimension of about 0.1 to about 3 um” and the shape of
thin plates or needles. Id. Finally, the Examiner points to Wise’s cooling rate
of 10–1000°C/min and Ryan’s cooling rate of 1.5–2.5°C/min, and concludes
that the cooling rate
is clearly a result-effective variable for controlling particle size.
Therefore, it would have been customary for an artisan of
ordinary skill to select an appropriate cooling rate . . . in
optimizing the particle size . . . to sizes . . . up to about 10 um,
which is the emulsion size from which particles are “directly”
formed [in Wise’s method].
Id. at 18.
Appellant argues that
[t]he Office Action states that a person of skill in the art would
know to replace [Wise’s] EGDS with hydrogenated castor oil,
however, the Office Action does not point to any disclosure
which would suggest for one of skill in the art to maintain a
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temperature below the melting point of the EGDS [sic,
hydrogenated castor oil] as currently claimed.
Appeal Br. 5.
Appellant points to the Gulbin Declaration,6 which states that “[o]ne
of the processes reported by Wise . . . involves a first step of creating a
mixture of molten EGDS in surfactant/water carrier at 72°C, which is above
the melting point of the solid structurant.” Id. Appellant argues that the
Examiner “has failed to point to the disclosure which would suggest to
maintain the temperature below the melting point of the solid structurant, or
to suggest that a benefit of particular crystal formation results from such step
in the process.” Id.
Appellant also points to the statement in the Gulbin Declaration that
“crystal formation is not a predictable art. . . . A review of the methods in
references, even with an understanding of crystal formation, would not allow
one of skill in the art to predict what changes will result in the type and
number of crystals.” Appeal Br. 6. Appellant argues that the Examiner has
not “pointed to disclosure which would motivate one of skill in the art to use
the claimed structurant and surfactant in a premix and then cooling the
mixture to arrive at the desired crystal structure (shape and size).” Id.
We agree with Appellant that the Examiner has not shown that the
claimed method would have been obvious based on the cited references. See
In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (“An examiner
bears the initial burden of presenting a prima facie case of obviousness.”).

6 Declaration under 37 C.F.R. § 1.132 of Timothy Charles Gulbin, signed
June 30, 2017 (“Gulbin Decl.”).
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Both claim 6 and claim 26 require “preparing a premix composition
comprising hydrogenated castor oil.” Claim 6 requires “heating the premix
composition to 65–84°C, maintaining a temperature below the melting point
of the hydrogenated castor oil.” Claim 26 likewise requires “heating the
premix composition to from 65 to about 84°C.”
Wise’s method requires “emulsifying . . . a stabilizing agent in the
presence of . . . an ionic surfactant to form an emulsion at a temperature of
from 1°C to 50°C above the melting point of the stabilizing agent.” Wise ¶ 6
(emphasis added). Wise discloses that “[s]uitable stabilizing agents include
monoester and/or diester of alkylene glycols,” such as ethylene glycol
distearate. Id. ¶¶ 44, 50.
The Examiner reasons that it would have been obvious “to follow
Wise’s method . . . and to have incorporated hydrogenated castor oil, as
taught by Ryan.” Final Action 11. However, as Mr. Gulbin has stated, if a
skilled artisan had followed Wise’s method but replaced the stabilizing agent
with hydrogenated castor oil, “he or she would modify the temperature of
the initial step to be above the melting point of the hydrogenated castor oil.”
Gulbin Decl. 2:10–12. Mr. Gulbin’s reasoning is supported by Wise’s
disclosure of emulsifying its premix at a temperature “from 1° C to 50° C
above the melting point of the stabilizing agent,” Wise ¶ 6, rather than at a
temperature within a specific range.
However, claim 6 expressly requires “maintaining a temperature
below the melting point of the hydrogenated castor oil.” Claim 26 requires
heating the premix composition to 65–84°C. Mr. Gulbin states that
hydrogenated castor oil has a melting point of 85–88°C. Gulbin Decl. ¶ 3.
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Thus, all of the claims on appeal exclude heating the premix composition to
a temperature above the melting point of hydrogenated castor oil, while
Wise requires doing so. Modifying Wise’s method by substituting
hydrogenated castor oil as the stabilizing agent thus would not result in
Appellant’s claimed method.
In addition, both claim 6 and claim 26 require the final personal care
composition to comprise “crystals resulting from the premix composition,”
where 80–100% of the crystals are fiber-shaped and are longer than about
5 μm. Wise discloses that in its method, “[t]he emulsion is cooled down to
form a stabilizing premix at a cooling rate of about 10 to about 1000°
C/min” and “[t]he rapid cooling step produces crystals directly from the
emulsion droplets.” Wise ¶¶ 35–36. Wise discloses that the crystals can
“have the shape of needles in which the particle length is at least 5 times the
particle width and thickness.” Id. ¶ 36. However, Wise states that “[t]hese
crystals have a maximum dimension of from about 0.1 to about 3um [i.e.,
0.1–3 μm].” Id. ¶ 38.
Thus, Wise discloses that its method produces crystals that are no
more than 3 μm long, rather than producing crystals of which 80–100% are
longer than 5 μm, as claimed.
For its part, Ryan states that, in its method, “[r]apid (crash) cooling
appears to lead to significant loss of structure. The preferred cooling rate . . .
is between 1.5 and 2.5 °C per minute, to allow the correct crystallisation to
develop for best structuring effect for suspending duty.” Ryan 8:20–24.
Ryan does not describe the shape or size of the crystals that result from its
process. However, Appellant’s Specification states that “[f]ollowing . . . the
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process disclosed by Unilever (WO2011120799) [Ryan] results in large
aggregates of structurant rather than the desired dispersion containing
crystals of the HCO in the shape of fibers.” Spec. 4:30–32. The Examiner
has not pointed to evidence in the record that contradicts the Specification’s
description of Ryan’s process.
Thus, Wise discloses a process that results in crystals that are smaller
than those required by the claims, and Ryan’s process results in large
aggregates of structurant rather than crystals in the shape of fibers. The
Examiner has not persuasively explained how two processes, each of which
fails to produce fiber-shaped crystals longer than 5 μm, could be combined
with a reasonable expectation of achieving the required fiber-shaped crystals
longer than 5 μm. The Examiner’s position that an appropriate cooling rate
could be selected to achieve crystals sizes of up to 10 μm (Ans. 11) is not
supported by the evidence because the Examiner has not pointed to evidence
that either Wise’s process, or Ryan’s process, or any combination of the two,
produces crystals longer than 3 μm, as disclosed by Wise.The Examiner has
therefore not persuasively shown that the prior art would have substituted
hydrogenated castor oil as the stabilizing agent in Wise’s method or that the
crystal length obtained by the prior art would fall within the scope of claims
6 or 26. We therefore reverse the rejection of claims 6–22 and 26–28 under
35 U.S.C. § 103 based on Wise, Ryan, and Verdicchio.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6–22, 26–28 103 Wise, Ryan,
Verdicchio
6–22, 26–28

REVERSED