The Procter & Gamble Company

Patent Trials and Appeals Board

Dec 15, 2020

2020003206 (P.T.A.B. Dec. 15, 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.
15/475,519 03/31/2017 Shawn David McCONAUGHY 14761 4887
27752 7590 12/15/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
CHICKOS, SARAH J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
12/15/2020 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 SHAWN DAVID MCCONAUGHY,
JORGE MAX SUNKEL, and REBECCA LYNN BOLAND
____________

Appeal 2020-003206
Application 15/475,519
Technology Center 1600
____________

Before DONALD E. ADAMS, ULRIKE W. JENKS, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–15 (Amdt. After Final2 5).3 We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.

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 of Cincinnati, Ohio” (Appellant’s August 5, 2019
Appeal Brief (Appeal Br.) 1).
2 Appellant’s August 5, 2019 Amendment After Final Office Action.
Examiner entered this After Final Amendment into the record (see
Examiner’s September 13, 2019 Advisory Action (Advisory Act.) 2.
3 Appellant’s pending claim 16 stands withdrawn from consideration (see
Examiner’s February 12, 2019 Final Office Action (Final Act.) 2.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to a personal care composition
comprising a non-volatile dimethicone and suitable tack Properties” (Spec.4
1:6–8). Appellant’s independent claim 1 is reproduced below:5
1. A skin care composition, comprising:
a) about 5% to about 30%, by weight of the composition, of a
blend of at least two dimethicone fluids, wherein the blend of
dimethicone fluids exhibits a viscosity of greater than about
1000 centistokes (cSt) according to the Rheology Method; and
b) a dermatologically acceptable carrier, wherein the
composition exhibits a Time Weighted Force Area of between
about 5 x 104 grams-minute2 and about 12 x 104 grams-minute2-
and a Mean Break Time of between about 0.30 seconds and
about 0.75 seconds according to the Tack Method, and wherein
the skin care composition is in the form of a cream or lotion.
(Amdt. After Final 2.)

Grounds of rejection before this Panel for review:
Claims 1–3, 7, and 8 stand rejected under 35 U.S.C. § 112(b).
Claims 1–15 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Shimizu,6 Nguyen,7 Tanner,8 and Lorant.9

4 Appellant’s March 31, 2017 Specification.
5 Appellant’s claims 2–15 depend directly or indirectly from Appellant’s
claim 1.
6 Shimizu et al., WO 2013/190710 A1, published Dec. 27, 2013.
7 Nguyen et al., US 2006/0292100 A1, published Dec. 28, 2006.
8 Tanner et al., US 2013/0243835 A1, published Sept. 19, 2013.
9 Lorant et al., US 2013/0039963 A1, published Feb. 14, 2013.
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DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that Appellant’s claims are indefinite in the recitations of: “a viscosity
without . . . any indication of what temperature the viscosity is being
measured” and “tack measurements without . . . any indication of what
temperature the tack is being . . . measured” (Advisory Act. 3)?
ANALYSIS
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir.
1993).
On this record, Appellant’s claims require the use of the Rheology
Method and Tack Method (see Amdt. After Final 2.). Reading Appellant’s
claims in light of Appellant’s Specification, a person of ordinary skill in this
art would understand that “[a]ll measurement . . . [set forth in Appellant’s
disclosure] are understood to be made at 25 ºC” (Spec. 3:17–19; see also id.
at 15:15–21 (Appellant discloses that viscosity is measured at 25 ºC by the
Rheology Method)).
Thus, we are not persuaded by Examiner’s assertion that “[t]he
recitation of [temperature] units should be made in [Appellant’s] claim so
that the ordinary skilled artisan is reasonably apprised of what they are and
there is sufficient clarity in the claims” (Ans.10 4).

10 Examiner’s January 24, 2020 Answer.
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CONCLUSION
The preponderance of evidence fails to support Examiner’s conclusion
that Appellant’s claims are indefinite in the recitations of: “a viscosity
without . . . any indication of what temperature the viscosity is being
measured” and “tack measurements without . . . any indication of what
temperature the tack is being . . . measured” (Advisory Act. 3). The
rejection of claims 1–3, 7, and 8 under 35 U.S.C. § 112(b) is reversed.

OBVIOUSNESS:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellant’s Table 1A is reproduced below:

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“The formulas shown in Table[] 1A . . . provide non-limiting examples of
[Appellant’s] . . . composition” (Spec. 16:1–2).
FF 2. Appellant discloses that “[w]hen two dimethicone fluids of different
viscosities are blended together, the resulting blend will generally have a
viscosity that falls somewhere between the viscosities of the individual
fluids” (Spec. 8:23–25).
FF 3. Appellant’s Table 2 is reproduced below:

“The Formulas shown in Table 2 are comparative examples of compositions
that are not contemplated by [Appellant’s] . . . invention” (Spec. 16:2–3).
FF 4. Shimizu:
[R]elates to a cosmetic composition for making up and/or
caring for the skin and/or the lips, comprising in a
physiologically acceptable medium, at least one fatty phase
comprising:
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- from 5% to 70% by weight of non volatile
hydrocarbonated apolar oil(s), or mixture thereof, relative to the
total weight of the composition, and
- from 5% to 40% by total weight of non volatile non
phenylated silicone oil(s) having at least a dimethicone part, or
mixture thereof, relative to the total weight of the composition,
and
- at least 5% by weight of non volatile phenylated silicone
oil chosen from silicone oil having at least a dimethicone part,
and from silicone oils having no dimethicone part, or mixture
thereof, relative to the total weight of the composition.
(Shimizu 2:6–15; see also id. at Abstract.; Advisory Act. 4)
FF 5. Shimizu discloses that “[t]he non-volatile silicone oil . . . may be
chosen especially from silicone oils especially with a viscosity at 25ºC
of . . . preferably between 100 and 500 000 cSt” (Shimizu 6:33–37; see also
Advisory Act. 4; Ans. 6).
FF 6. Examiner finds that Shimizu discloses “that the blend of
dimethicones may be present in an amount of 5 to 40%” or in equal (i.e. 1:1)
amounts (Advisory Act. 4 (citing Shimizu 2:5–15; id. at Examples 1–5:
Formula 1)).
FF 7. Examiner finds that “Shimizu does not expressly teach[, inter alia,] a
dimethicone with a viscosity of about 100 cSt or a viscosity of 60000”
(Advisory Act. 5).
FF 8. Examiner relies on Nguyen to disclose “a dimethicone with a
viscosity of about [1,000] cSt and a dimethicone with a viscosity of about
60000 cSt” (Advisory Act. 5 (citing Nguyen, Example 2); see also Ans. 6).
FF 9. Examiner relies on Tanner to disclose “a combination of silicone
elastomer and superabsorbent polymer [such as Aqua keep] and their use in
providing for improved stability and functioning in skin care cosmetic
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compositions,” retinoids, and fatty acid esters (Advisory Act. 5–6 (citing
Tanner, Abstract; id. ¶¶ 1, 4, 56, 78, and 91; id. Table 1)).
FF 10. Examiner relies on Lorant to disclose “cosmetic compositions
comprising a superabsorbent polymer and a gemini surfactant and
capric/caprylic triglyceride” (Advisory Act. 6 (citing Lorant ¶¶ 5, 49, 172,
and 174)).
ANALYSIS
Based on the combination of Shimizu, Nguyen, Tanner, and Lorant,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to prepare Shimizu’s composition
using “a dimethicone with a viscosity of about [1,000] cSt and a dimethicone
with a viscosity of about 60000 cSt,” as disclosed by Nguyen (Advisory
Action 6; see Ans. 6; FF 4–10). In this regard, Examiner reasons that the
combination of these two viscosities of dimethicone will result in a
dimethicone blend having a viscosity of greater than about 1000 cSt (see
Ans. 6–8; see also FF 2).
Examiner further concludes that because “the claimed composition
appears to be the same as the prior art, absent a showing of unapparent
differences, it would appear that the compositions . . . [suggested by the
combination of Shimizu, Nguyen, Tanner, and Lorant] would meet the
limitations of [Appellant’s] claims” (Advisory Act. 8). Stated differently,
Examiner finds that “the Time Weighted Force Area and Mean Break Time
[are] inherent in this instance because as required by the case law, it is a
natural result of the combination of elements explicitly disclosed by the
prior art” (Ans. 9).
We are not persuaded.
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As Appellant explains,
Even assuming, for the sake of argument, the skilled artisan
would be prompted to combine the 1,000 cSt and 60,000 cSt
dimethicone fluids of Nguyen with composition of Shimizu, as
urged in the Final Rejection, it still would not necessarily result
in a dimethicone blend that has the properties recited in pending
claim 1. The present application provides examples of non-
inventive compositions comprising a blend of dimethicone
fluids, but which do not have the Time Weight Force Area and
Mean Break Time recited in pending claim 1. See, Table 2 at
page 17 of the specification. For example, as can be seen in
Comparative Example N28, merely providing a blend of 1,000
cSt dimethicone fluid and 60,000 cSt dimethicone fluid does
not necessarily provide the composition with the requisite Time
Weight Force Area or Mean Break Time. Id. Accordingly, the
data provided in the present application rebuts the assertion of
inherency in the Final Rejection.
(Appeal Br. 5; see Reply Br. 5; FF 3.) Appellant further explains:
The present application also discloses several inventive
examples comprising a blend of 1,000 cSt dimethicone and
60,000 cSt dimethicone that do exhibit the Time Weight Force
Area and Mean Break Time recited in pending claim 1. See,
e.g., Examples N20, N23, N26 and N29 in Table lA on page 16.
Thus, . . . compositions with blends of identical dimethicones
(i.e., 1,000 cSt and 60,000 cSt) may not necessarily have the
Time Weight Force Area and Mean Break Time recited in
pending claim 1.
(Reply Br. 5; see FF 1.) Thus, Appellant contends that “it cannot be said
that a composition comprising a blend of 100 cSt and 60,000 cSt
dimethicone will necessarily have the Time Weight Force Area and Mean
Break Time recited in pending claim 1” (Reply Br. 5). For the reasons set
forth by Appellant’s, we find that the evidence on this record fails to support
Examiner’s conclusion of obviousness. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (“Inherency, however, may not be established by
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probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”) (citations and internal
quotation marks omitted).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1–15 under 35
U.S.C. § 103 as unpatentable over the combination of Shimizu, Nguyen,
Tanner, and Lorant is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7, 8 112(b) Indefiniteness 1–3, 7, 8
1–15 103 Shimizu, Nguyen,
Tanner, Lorant
1–15
Overall
Outcome
1–15

REVERSED