Ex Parte Biercevicz et al

Board of Patent Appeals and Interferences

Feb 28, 2007

10320028 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER A. BIERCEVICZ,
KENNETH P. MANZARI,
PETER A. DIVONE,
KIMBERLY ANN PRIEST,
JOSEPH J. REGAN and MATTHEW JUNGBLUT
____________

Appeal 2007-0652
Application 10/320,028
Technology Center 1700
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Decided: February 28, 2007
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10 and 12-25.
Claim 1 is illustrative:

Appeal 2007-0652
Application 10/320,028

1. A process for manufacture of a personal care composition
comprising:

(i) forming a first aqueous phase portion of a personal care base
composition in a first vessel;

(ii) optionally forming a second phase portion of the personal care
base composition in a second vessel;

(iii) delivering via an electronically controlled servo-driven rotary
pump the first aqueous phase into a blending tube, the first aqueous phase
moving through the blending tube at a rate from about 5 to about 5,000 lbs.
per minute;

(iv) optionally delivering via a further electronically controlled servo-
driven rotary pump the second phase when present into the blending tube,
the second phase moving through the blending tube at a rate from about 5 to
about 5,000 lbs. per minute;

(v) mixing the first aqueous phase and, when present, the second
phase within the blending tube;

(vi) feeding a late variant addition phase into the mixed phases of the
base composition downstream from the mixing in the blending tube, the late
variant addition phase comprising a liquid material selected from the group
consisting of a fragrance, a colorant, a promotional ingredient and mixtures
thereof, to form a resultant personal care composition;

(vii) delivering into and further blending the resultant personal care
composition in a static mixer; and

(viii) recovering the resultant personal care composition.

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Application 10/320,028

The Examiner relies upon the following references as evidence of
obviousness:
Pfening US 1,984,595 Dec. 18, 1934
Kacher US 5,674,511 Oct. 7, 1997
Phallen US 5,996,650 Dec. 7, 1999
Lorenzi US 2001/0018068 A1 Aug. 30, 2001
Billet et al., "Cavitation," AccessScience@McGraw-Hill,
http://www.accessscience.com, DO1 10.1036/1097-8542.114900,
last modified: Oct. 23, 2001.

Cornelis US 2001/0051204 A1 Dec. 13, 2001
Bechtel US 6,515,030 B1 Feb. 4, 2003

Appellants' claimed invention is directed to a process for
manufacturing a personal care composition that comprise oil and water
emulsions and variants, such as colors and fragrances. The aqueous phase is
delivered by an electronically controlled servo-driven rotary pump from a
first vessel into a blending tube, and then downstream from the blending
tube, a so-called late variant addition phase, such as a liquid material
comprising a fragrance or colorant, is fed into the base composition after it
leaves the blending tube. Appellants explain in the Specification that when
only a fragrance or color change is necessary in formulating a different
product, turn around preparation, which includes cleaning the feed lines, is
costly both in time and material (see page 2 of Specification). The present
invention solves this problem by adding the variant, such as fragrance or
color, downstream from the blending tube, thereby obviating the need to
clean the blending tube and the vessel wherein the aqueous phase is
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Application 10/320,028

formulated. Also, by adding the variants downstream from the
homogenizing blender, "[t]he process is intended to protect temperature and
shear sensitive additives such as fragrances and organic colorants" (page 4,
Specification, para. [0008]).
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1-10, 12, and 13 over Lorenzi in view of Bechtel, Cornelis,
Kacher, Phallen, and Billet,
(b) claim 14 over Lorenzi in view of Bechtel, Cornelis, Kacher,
Phallen, and Pfening,
(c) claims 15, 17-22, 24, and 25 over Lorenzi in view of Bechtel,
Cornelis, Phallen, and Billet,
(d) claim 16 over Lorenzi in view Bechtel, Cornelis, Phallen, Billet,
and Kacher, and
(e) claim 23 over Lorenzi in view of Bechtel, Cornelis, Phallen, and
Pfening.
Appellants do not present separate arguments for claims 1-10, 12, and
13 as a group, or for claims 15, 17-22, 24, and 25 as a group. Accordingly,
the rejection of claims 1-10, 12, and 13 stands or falls together, as does the
rejection of claims 15, 17-22, 24, and 25.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we fully concur with the Examiner that the claimed
subject matter would have been obvious to one of ordinary skill in the art
within the meaning § 103 in view of the applied prior art. Accordingly, we
will sustain the Examiner's rejections for essentially those reasons expressed
in the Answer, and we add the following primarily for emphasis.
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Appellants do not dispute the Examiner's factual determination that
Lorenzi, like Appellants, discloses the manufacture of a personal care
composition by blending a first aqueous composition and a second, optional,
composition in a homogenization device wherein variants, such as
fragrances and colorants, are included in the composition. As recognized by
the Examiner, Lorenzi does not expressly teach moving the first aqueous
phase through a blending tube at the recited rate. However, we agree with
the Examiner that Bechtel evidences the obviousness of formulating
emulsions by moving the composition through a blending tube at the
claimed rate for realizing the known advantages of a continuous process.
Also, the Examiner appreciates that Lorenzi does not teach the
essence of the invention described in Appellants' Specification, namely,
adding the variant ingredients, such as color and fragrance, at a stage
downstream from the homogenizer. However, Appellants do not dispute the
Examiner's factual finding that "[C]ornelis discloses adding a
polyunsaturated fatty acid to an emulsion after emulsification (¶ 0062) and
the addition of vitamins, minerals and trace elements after cooling the
emulsion from 60ºC to 5ºC (¶¶ 0007-0009)" (page 5 of Answer, penultimate
para.). Accordingly, we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art to modify the process of Lorenzi
by adding the color and fragrance components downstream from the blender
in order to realize the advantage taught by Cornelis, i.e., to minimally
expose these variants to conditions that can cause degradation (see Cornelis
at ¶ 0028).
We also agree with the Examiner that it would have been obvious for
one of ordinary skill in the art, based on the Kacher disclosure, to blend the
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final personal care composition in a static mixer. Manifestly, it is
notoriously well-known to give a final mix to a product composition after
all the ingredients have been added.
Also, we find no error in the Examiner's reliance on Phallen for
establishing the obviousness of employing the claimed electronically
controlled servo-driven rotary pump for delivering the first aqueous phase
into the blending tube. It is evident from Appellants' Specification that the
claimed rotary pump was conventional in the art at the time of filing the
present application. Appellants tribute no unexpected result to the use of the
known rotary pump.
As for separately rejected claim 14, we subscribe to the Examiner's
reasoning that it would have been obvious for one of ordinary skill in the art
to use the flow meter controlled mixing valve of Pfening in the manu-
facturing process in order to obtain the desired proportion of the individual
liquids (see Pfening at col. 1, ll. 10-14).
Appellants, while recognizing that Lorenzi discloses homogenized
personal care compositions, note that the compositions of reference
Examples 1-89 are not homogenized. However, simply because Lorenzi
discloses homogenized and non-homogenized personal care compositions
does not undermine the obviousness of making homogenized compositions.
Appellants also emphasize that Lorenzi does not teach the concept of
late variant addition, and Cornelis teaches late stage addition of a variants to
minimize their degradation to the harsh conditions of heating, drying, and
homogenization. Appellants maintain that, in contrast, their "objectives
were development of a manufacturing system suitable for producing variants
of a base product with different color, fragrance, and/or promotional
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Application 10/320,028

ingredients" (page 13 of principal Br., last para.). However, as noted above,
Appellants' Specification expressly discloses that "[t]he process is intended
to protect temperature and shear sensitive additives such as fragrances and
organic colorants" (page 4, Specification, para. [0008]). Hence, it can be
seen that both Appellants and Cornelis share a common objective.
Moreover, it is well-settled that finding an additional advantage of a feature
disclosed by the prior art does not impart patentability to a known or obvious
feature. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990). Furthermore, it is not required for a finding of obviousness that the
motivation of one of ordinary skill in the art be the same as an applicant's
motivation. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996). Also, we are satisfied that Appellants' solution to the problem of
cleaning the entire system for only a simple color or fragrance change would
have been readily apparent to one of ordinary skill in the art. In re Ludwig,
353 F.2d 241, 244, 147 USPQ 420, 421 (CCPA 1965).
Appellants also argue that the rotary pump of Phallen driven by a
servo-motor was used subsequent to the manufacturing process, i.e., "the
failing equipment did not handle delivery of individual components to a
reactor" (page 15 of principal Br., last para.). However, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to employ the known pump of Phallen to accurately deliver a specific
amount of ingredients to the reactor. Appellants have provided no factual
support for the statement that "[a] significant break through of the present
invention was appellant's realization that the servo-driven rotary pump
approach could be applied to the manufacture of personal care
compositions" (id.). Indeed, the present Specification attaches no particular
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significance or criticality to the claimed use of an electronically controlled
servo-driven rotary pump. We observe that no mention of the claimed rotary
pump is found in the SUMMARY OF THE INVENTION in appellants'
Specification. The Specification describes the invention as the later stage
addition of variants. The Specification simply states that delivery of fluids
from the tanks into the blending tube can be achieved with the rotary pumps
to effect careful control of flow (see page 9, para. [00027]) This is the same
advantage taught by Phallen.
Consequently, based on the collective teachings of the prior art cited
by the Examiner, we find that it would have been obvious for one of
ordinary skill in the art to perform the claimed process for manufacturing a
personal care composition. We note that Appellants base no arguments
upon objective evidence of nonobviousness, such as unexpected results,
which would serve to rebut the inference of obviousness established by the
applied prior art.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

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