YUMIOKA, RinaDownload PDFPatent Trials and Appeals BoardOct 23, 201914538113 - (D) (P.T.A.B. Oct. 23, 2019) Copy Citation 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. 14/538,113 11/11/2014 Rina YUMIOKA 443170US68 7826 22850 7590 10/23/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER THOMAS, TIMOTHY P ART UNIT PAPER NUMBER 1611 NOTIFICATION DATE DELIVERY MODE 10/23/2019 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RINA YUMIOKA Appeal 2018-008728 Application 14/538,113 Technology Center 1600 ____________ Before ERIC B. GRIMES, ULRIKE W. JENKS, and MICHAEL A. VALEK, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as Ajinomoto Co., Inc. Appeal Br. 2. Appeal 2018-008728 Application 14/538,113 2 STATEMENT OF THE CASE The Specification acknowledges that glycerol, glycine, and n-acylglycine are often found in cosmetics together. Spec. ¶ 2. When formulating cosmetic agents, glycerol is used to provide a moist feeling to the skin, while glycine works as a moisturizing agent, and n-acylglycine is a washing agent included in such compositions. Id. However, when these three components are blended together they often result in coloration of the product. Id. ¶ 4. It has now been discovered that the presence of dihydroxyacetone as a contaminant in glycerol is responsible for the coloration of the product. Id. ¶ 5. The Specification explains that by using glycerol with reduced contaminants, coloration of the product is minimized. Id. Claims 1, 6, 19–25, 28, and 29 are on appeal. Appeal Br. 21–22 (Claims Appendix). Claim 1 is representative of the claims on appeal, and reads as follows: Claim 1: A method of producing a composition, comprising: (A) glycerol; (B) glycine; and (C) at least one member selected from the group consisting of an N-acylglycine and a salt thereof, said method comprising combining glycine and the N- acylglycine or salt thereof with glycerol that has a dihydroxyacetone content of not more than 40 ppm by mass, to obtain a composition comprising (A) 0.5 to 30 mass% of the glycerol, (B) 0.01 to 1 mass% of the glycine, and (C) 3 to 30 mass% of the N-acylglycine or salt thereof, wherein the composition has a pH of 4 to 8. Appeal Br. 21 (Claims Appendix). Appeal 2018-008728 Application 14/538,113 3 Appellant seeks review of the rejection of claims 1, 6, 19–25, 28, and 29 under 35 U.S.C. § 103 over Hermanson,2 Demirel,3 Kawashima,4 and Lambers.5 Examiner finds that Hermanson teaches a surfactant concentrate. Final Act. 4. Specifically, “Table I [of Hermanson] includes compositions C & D, which both contain 57.2 wt % sodium cocoyl glycinate, 27.8 & 28.4 wt % glycerol (amounts within the ranges of claims 1, 19, 20), respectively, and 1.6 or 0 wt % sodium glycine, respectively.” Id. at 4–5. Hermanson’s process teaches “combining glycine and salt of N-acylglycine (sodium cocoyl glycinate) with glycerol.” Id. at 5. Examiner concludes that based on the disclosed examples, some containing no glycine and others containing 1.6% by weight glycine, that Hermanson teaches a range of glycine from 0 to 1.6% by weight. Id. at 5; Ans. 8. Examiner cites example C and D of Table I as establishing that both 0% glycine as well as 1.6% glycine provide formulations that are sufficiently hard. Final Act. 5. Based on this disclosure Examiner concludes any amount of glycine within that range is obvious. Final Act. 5; Ans. 9–10 (“amounts of sodium glycine between these two endpoints would also have reasonably expected to achieve similar acceptability, in terms of hardness, consistent with MPEP 2144.05(1).”). 2 Hermanson et al., US 2013/0029899 A1, published Jan. 31, 2013. 3 Demirel et al, Reaction kinetics and modelling of the gold catalysed glycerol oxidation, Topics in Catalysis, 44:299–305 (2007). 4 Kawashima et al., Nonenzymatic Browning Reactions of Dihydroxyacetone with Amino Acids or Their Esters, Agric. & Biological Chemistry, 44:1595– 99 (1980). 5 Lambers et al., Natural skin surface pH is on average below 5, which is beneficial for its resident flora, Int. J. Cosmetic Sci., 28:359–70 (2006). Appeal 2018-008728 Application 14/538,113 4 Examiner acknowledges that Hermanson does not disclose dihydroxyacetone (DHA) levels in glycerol, nor does it specifically recognize that the presence of dihydroxyacetone in glycerol contributes to coloration of the product. Final Act. 5–6. Examiner looks to the teachings of Demirel and Kawashima to establish that DHA reacts with amino acids, including glycine, to form highly colored products. Id. at 8. Based on this knowledge, Examiner concludes that it would have been obvious to use purified glycerol in Hermanson’s formulations. Id. Examiner acknowledges that “by following the teachings of Hermanson the amount of sodium cocoyl glycinate would be at least 35 wt %, slightly above the range of amended claim 1 and above the range of claim 28.” Final Act. 9. Examiner finds that Hermanson’s reason to make these concentrated products in the first place is to remove water content in order to reduce weight and therefore reduce shipping costs. Id. at 9 (citing Hermanson ¶ 4). Examiner concludes that by diluting composition C of Hermanson one of ordinary skill in the art would arrive at the method of producing the composition as claimed. Id. “The motivation would have been to prepare the concentrate, then ship the solid to reduce transportation costs, but to dilute before local retail distribution, which would supply the consumer with a readily acceptable liquid detergent form.” Id. at 10. Examiner acknowledges that Hermanson’s products that possess the requisite pH value “do not achieve the strength desired” by Hermanson. Final Act. 11. Examiner relies on Lambers to provide motivation to reduce the pH of a skin cleaning product to between 4–5. Id. at 13. “In order to achieve the solid shipping materials preferred by Hermanson along with a final product that has a pH in the range 4–5, dilution in the obvious scenario Appeal 2018-008728 Application 14/538,113 5 discussed above would have been accompanied by pH adjustment.” Id. Examiner concludes that it would have been obvious to dilute Composition C with up to 80% water and during this dilution process, to reduce the pH of the product to the range from pH 4-5, e.g., about pH 4.7 (preferred by Lambers for skin products), and then to distribute the product locally to retail stores. Id. at 14. Hermanson teaches “concentrate compositions formulated with high levels of fatty acyl amido surfactant, particularly but not exclusively, for skin cleansing products.” Hermanson ¶ 2. Hermanson teaches that shipment of water is wasteful of transportation energy. Id. ¶ 5. For example, “liquid laundry detergents traditionally have contained up to 80% water and been packaged in relatively large plastic containers,” but by removing some of the water and concentrating the products they can be packaged in smaller containers. Id. ¶ 4. Hermanson is concerned with finding “more convenient ways of providing fatty acyl amido surfactants such as sodium cocoyl glycinate” for cleansing compositions. Id. ¶ 6. Most useful are concentrates that can be made into a solid so they can be ground into particles or chip format. Id. Hermanson defined solid as a material “exhibiting a Penetration Force value between 8 and 250, preferably between 10 and 200, . . . as measured by a TA.XTplus Texture Analyzer type of penetrometer.” Id. ¶ 14. Examples of Hermanson’s fatty acyl amido surfactant compositions and their respective properties are set out in Table I below: Appeal 2018-008728 Application 14/538,113 6 The table shows various sample compositions and their component make up as provided in % weight. Id. ¶ 41. The table also shows penetration force measurements as well as “pH values . . . measured by dispersing 10% of a sample in a deionized water.”. Id. ¶¶ 40–41. Appellant contends that “[t]he disclosure of a single data point is not the disclosure of a range between that data point and zero.” Appeal Br. 7. Appellant further contends that Examiner has not established that glycine in the context of the method of making the claimed composition is a result effective variable. See id. at 9 (citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977).) According to Appellant, “Hermanson does not describe any result achieved by having sodium glycine present in Samples C, F, I, J and K compared to having sodium glycine absent in Samples D, E and H.” Id. at 11. Appeal 2018-008728 Application 14/538,113 7 We find that Appellant has the better position. As stated in Antonie, while discovery of an optimum value of a variable is normally obvious, one exception to this rule is the situation where the parameter optimized was not recognized to be a result-effective variable. See Antonie, 559 F.2d at 620. Here, Hermanson does not disclose that glycine should be varied. Indeed, Hermanson is silent with respect to glycine’s function in any of the formulations. All that Hermanson provides is that some samples contain glycine in an amount exceeding the upper end of the claimed range, while others do not possess any glycine. See Hermanson ¶¶ 35, 41 (Table I). In this case, the Examiner has not established, with evidence, that the glycine in the context of Hermanson’s formulations achieves a particular outcome that could be used as a measure to adjust the glycine content. A review of Hermanson’s Table I, (reproduced above) does not establish that glycine changes the product in any measurable way. For example, the penetration force does not always increase with the presence of glycine. Just because an ordinary artisan is capable of changing the amount of glycine in a formulation does not provide a reason to make such a change in the first place. In other words, unless a particular goal is identified, there is no reason for the ordinary artisan to adjust the glycine levels. Accordingly, we agree with Appellant that Examiner has not established that glycine is taught to be a result effective variable in Hermanson. Appellant contends that “Hermanson teaches away from using a pH below the range of 9 to 13.” Appeal Br. 13. Lowering the pH of Hermanson’s product to 7.2 and 7.8 resulted in an undesirable paste rather than solid. Appeal. Br. 15 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). The Examiner reasons that it would be “obvious to dilute Appeal 2018-008728 Application 14/538,113 8 [Hermanson’s] Composition C . . . and during this dilution process, to reduce the pH of the product to the range from pH 4-5, e.g., about pH 4.7 (preferred by Lambers for skin products), and then to distribute the product locally.” Final Action 14. On this point, we also find that Appellant has the better position. Here, Examiner contemplates diluting the samples before local distribution. See Ans. 11–12, 15. However, what is missing from the Examiner’s analysis is evidence that an artisan would have a reason not only to dilute the product, but also to change the pH. See KSR Int’l Co. v. Teleflex Inc., 550 U.S 398, 418 (2007) (obviousness rejections require “some articulated reasoning with some rational underpinning”). Here, Hermanson supports removing water from the composition to reduce shipping costs. Hermanson ¶¶ 4–5. Hermanson discloses, however, that the concentrated product is not diluted before local distribution, but is the final product sold to consumers. Id. ¶ 4 (“In recent years the market has responded favorably to concentrated laundry liquids. The Small and Mighty® variant of ‘all’ brand laundry liquid provides the same cleaning amount as the traditional full size yet with substantially less water and in a much smaller container.”). Thus, the Examiner’s reason for making dilutions as hypothesized in the Final Office Action and Answer is not supported by evidence in the record. We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Hermanson, Demirel, Kawashima, and Lambers teaches a method having all limitations of independent claim 1 and dependent claims thereto. We thus reverse the rejections under 35 U.S.C. § 103. Appeal 2018-008728 Application 14/538,113 9 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6, 19–25, 28, 29 103 Hermanson, Demirel, Kawashima, Lambers 1, 6, 19–25, 28, 29 REVERSED Copy with citationCopy as parenthetical citation