Ex Parte Cunningham et al

Patent Trial and Appeal Board

Mar 28, 2016

12641659 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/641,659 12/18/2009
23556 7590 03/28/2016
KIMBERLY-CLARK WORLDWIDE, INC,
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Corey Thomas Cunningham
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64640372US01 1016
EXAMINER
COUGHLIN, DANIEL F
ART UNIT PAPER NUMBER
1619
MAILDATE DELIVERY MODE
03/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY THOMAS CUNNINGHAM, SCOTT W. WENZEL,
CHRISTOPHER VINCENT DECKER, and PHILIP EUGENE KIEFFER
Appeal2013-010099
Application 12/641,659 1,2
Technology Center 1600
Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a wet wipe that imparts a
perceivable aesthetic benefit to the skin. The Examiner has finally rejected
the claims as obvious under 35 U.S.C. § 103. We have jurisdiction under
35 U.S.C. § 134. The Examiner's rejections are affirmed.
STATEMENT OF CASE
Claims 1-5, 8-15, and 18-20 stand finally rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as obvious in view of Krzysik et al.,3 "Salt of Fatty
1 "The '659 Specification."
2 According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Br. 1.
3 US 6,440,437 Bl issued Aug. 27, 2002 (hereinafter "Krzysik").
Appeal2013-010099
Application 12/641,659
Acid",4 Borsinger et al., 5 and "Emulsifiers with HLB Values"6 and
Appellants' published application. Final Rej. 3.
Claims 16 and 17 stand finally rejected under 35 U.S.C. § 103(a) (pre-
AIA) as obvious over Krzysik, in view of "Salt of Patty Acid", Borsinger
'642, as evidenced by "Emulsifiers with HLB Values" further in view of
Fructus et al. 7
Claims 1 and 18 are independent claims. Claims 2-5, 8-15, 19, and
20 depend from them. Claim 1 is representative and reads as follows
1. A wet wipe that imparts a perceivable aesthetic
benefit to skin, the wipe comprising:
a wipe substrate; and
a liquid composition containing:
from about 40% by weight of the composition to
about 99.9% by weight of the composition of water;
from about 0.01 % by \veight of the composition to
about 20% by weight of the composition of at least one skin
aesthetic agent is a salt derivative of a fatty acid selected from
potassium soyate, potassium cocoate, potassium rapeseedate,
potassium sunflowerate, potassium olivate, potassium palmate,
potassium avocadoate, potassium shea butterate, potassium
canoloate, potassium safflowerate, potassium oryzarate,
potassium ricinoleate, potassium babassuate, potassium
behenate, potassium caprylate, potassium castorate, potassium
4 Salts of Fatty Acids (1988), http://www.fao.org/ag/agn/jecfa-
additives/specs/Monograph l/Additive-383.pdf (hereinafter, "SPA").
5 US 2007/0068642 Al published Mar. 29, 2007 (hereinafter "Borsinger
'642").
6 Emulsifiers with HLB Values (undated),
http://www. theherbarie. com/files/resource-
center/formulating/Emuisifiers_HLB_ Values. pdf.
7 US 2002/0025303 Al published Feb. 28, 2002 (hereinafter "Fructus").
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Appeal2013-010099
Application 12/641,659
caprate, potassium cocoa butterate, potassium dilinoleate,
potassium grapeseedate, potassium hempseedate, potassium
hydrogenated cocoate, potassium hydrogenated palmate,
potassium hydrogenated tallowate, potassium jojobate,
potassium lanolate, potassium lardate, potassium laurate,
potassium linoleate, potassium macadamiaseedate, potassium
mangoseedate, potassium myristate, potassium oleate,
potassium palmitate, potassium palm kemelate, potassium
passiflora edulis seedate, potassium stearate, potassium sweet
almondate, potassium peanutate, potassium tallate, potassium
tallowate, potassium tamanuseedate, potassium tsubakiate,
potassium undecylenate, sodium soyate, sodium cocoate,
sodium rapeseedate, sodium sunflowerate, sodium olivate,
sodium palmate, sodium avocadoate, sodium shea butterate,
sodium canoloate, sodium safflowerate, sodium oryzarate,
sodium ricinoleate, sodium babassuate, sodium behenate,
sodium caprylate, sodium castorate, sodium caprate, sodium
cocoa butterate, sodium dilinoleate, sodium grapeseedate,
sodium hempseedate, sodium hydrogenated. cocoate, sodium
hydrogenated palmate, sodium hydrogenated tallowate, sodium
jojobate, sodium lanolate, sodium lardate, sodium laurate,
sodium linoleate, sodium macadamiaseedate, sodium
mangoseedate, sodium myristate, sodium oleate, sodium
palmitate, sodium palm kemelate, sodium passiflora edulis
seedate, sodium stearate, sodium sweet almondate, sodium
peanutate, sodium tallate, sodium tallowate, sodium
tamanuseedate, sodium tsubakiate, sodium undecylenate,
ammonium soyate, ammonium cocoate, ammonium
rapeseedate, ammonium sunflowerate, ammonium olivate,
ammonium palmate, ammonium avocadocate, ammonium shea
butterate, ammonium canoloate, ammonium safflowerate,
ammonium oryzarate, ammonium ricinoleate, ammonium
babassuate, ammonium behenate, ammonium caprylate,
ammonium castorate, ammonium caprate, ammonium cocoa
butterate, ammonium dilinoleate, ammonium grapeseedate,
ammonium hempseedate, ammonium hydrogenated cocoate,
ammonium hydrogenated palmate, ammonium hydrogenated
tallowate, ammonium jojobate, ammonium lanolate,
ammonium lardate ammonium laurate, ammonium linoleate,
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Appeal2013-010099
Application 12/641,659
ammonium macadamiaseedate, ammonium mangoseedate,
ammonium myristate, ammonium oleate, ammonium palmitate,
ammonium palm kemelate, ammonium passiflora edulis
seedate, ammonium stearate, ammonium sweet almondate,
ammonium peanutate, ammonium tallate, ammonium tallowate,
ammonium tamanuseedate, ammonium tsubakiate, ammonium
undecylenate and combinations thereof;
an acidifying agent; and
from about 0.01 % by weight of the composition to
about 10% by weight of the composition of an emulsifying
agent.
DISCUSSION
Rejected claim 1 is directed to a wet wipe that imparts a perceivable
aesthetic benefit to the skin. The wet wipe comprises a liquid composition
containing water, at least one skin aesthetic agent which is a salt derivative
of a fatty acid, an acidifying agent, and an emulsifying agent. The water,
skin aesthetic agent, and emulsifying agent are present in specifically recited
ranges. The skin aesthetic agent is selected from a list of specifically recited
compounds. One of the compounds in the list of skin aesthetic agents is
potassium soyate which is soybean oil that has been saponified with
potassium hydroxide to make it water-soluble. '659 Spec. 9:21-26. The
'659 Specification teaches that the skin aesthetic agent forms an emulsion in
the liquid composition. Id. at 5:29 to 6:2.
Claim 18 is specifically directed to a wet wipe comprising potassium
soyate. Claim 3 further recites that skin aesthetic agent is protonated by the
acidifying agent.
The Examiner found that Krzysik describes a wet wipe comprising
water, an acidifying agent, and an emulsifying agent in ranges which fall
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Appeal2013-010099
Application 12/641,659
within the ranges recited in rejected claim 1. Final Rej. 5-7. The disclosed
components form an emulsion. Id. The Examiner found that Krzysik
describes a maleated soybean oil - soybean oil protonated by treatment with
maleic acid - but not a salt of the soybean oil as required by the rejected
claims. Id. at 5, citing to Krzysik at col. 7, 11. 49-50. To make up for this
deficiency, the Examiner cited SF A and Borsinger '642. The Examiner
found that SF A "discloses that the potassium soap salts of fatty acids derived
from edible fats and oils are obtained by treatment with potassium hydroxide
(saponification) and the salts resulting from this process are soluble in water
(seep. 1)." Final Rej. 6. Borsinger '642 was cited for a similar teaching in
which waxes obtained from hydrogenated oils, such as soybean oil, are
saponified by treatment with potassium hydroxide to make them more
hydrophilic when forming an emulsion. Id.
The Examiner determined that, motivated "by the desirability of
optimizing the emulsification process" of Krzysik, one of ordinary skill in
the art would have saponified the soybean oil described by Krzysik to form a
salt of the soybean oil, namely potassium soyate, to have made the oil more
soluble in water when forming the emulsion. Id. at 7. Based on this
determination, the Examiner concluded that the rejected claims would have
been obvious to one of ordinary skill in the art at the time of the invention.
Id.
Appellants, on pages 6-7 of the Appeal Brief ("Br."), identify the
deficiencies in each of the publications. However, as noted by the
Examiner, the rejection is based on 35 U.S.C. § 103, not§ 102. Under
§ 103:
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Appeal2013-010099
Application 12/641,659
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.
Patentability shall not be negated by the manner in which the
invention was made.
In this case, the question is whether the differences between Krzysik and the
rejected claims would have been obvious to a person having ordinary skill in
the art. The mere identification of differences between the claimed subject
matter and Krzysik, SPA, and Borsinger '642, does not address obviousness
under§ 103.
Appellants argue that there is "no teaching, suggestion, or motivation
to alter the references of Kr[ z ]ysik and Borsinger to change the maleated or
hydrogenated soybean oil into a salt derivative of a fatty acid as claimed."
Br. 6-7. However; as discussed above; the Examiner explicitly found that
the skilled worker would have done so to make the oil more soluble in water
when forming an emulsion as described in Borsinger '642. Appellants have
not identified a defect in the Examiner's fact-finding or reasoning.
For the foregoing reasons, we affirm the obviousness rejection of
claim 1. Appellants make the same unpersuasive argument for claim 18. Br.
7-8. We thus affirm the rejection of claim 18. Appellants do not provide
separate patentability arguments for claims 4, 5, 8-15, but simply argue that
they are "not obvious by virtue of ... dependency" on claim 1. Id. at 7. We
thus affirm the rejection of these claims. Dependent claims 2, 3, 16, 17, 19,
and 20 were not argued separately and thus fall with independent claims 1
and 18. 37 C.F.R § 41.37(c)(l)(iv). Therefore, we also affirm the rejection
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Appeal2013-010099
Application 12/641,659
of Claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over Krzysik, in
view of Borsinger, as evidenced by "Emulsifiers with HLB Values" further
in view of Fructus. All rejections of all pending claims are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7