Ex Parte Harvey et al

Patent Trials and Appeals Board

Jan 22, 2019

13510126 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/510,126 05/16/2012 Severin Luc Ramses Harvey
24737 7590 01/24/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2009P01640WOUS 5852
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEVERIN LUC RAMSES HARVEY,
MARK JOHANNES LELIEVELD, and JASPER ZUIDERVAART 1
Appeal 2017-011805
Application 13/510, 126
Technology Center 1600
Before TA WEN CHANG, JOHN E. SCHNEIDER, and RYAN H. FLAX,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's final
rejection of claims to a polyethylene glycol containing shaving composition
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify the Real Party in Interest as "Koninklijke Philips N.V."
Appeal Br. 2.
2 We have considered and herein refer to the Specification of May 16, 2012
("Spec."); Final Office Action of December 2, 2016 ("Final Act."); Appeal
Brief of April 27, 2017 ("Appeal Br."); Examiner's Answer of July 24, 2017
("Ans."); and Reply Brief of September 25, 2017 ("Reply Br.").
Appeal2017-011805
Application 13/510,126
STATEMENT OF THE CASE
The Specification states:
Friction during shaving may be irritating and is not
desired. Hence, it is a first aspect of the invention to reduce
friction during shaving. Reducing friction during shaving may
improve shaving performance, which is desired by consumers.
Traditional blade shavers may employ lubra strips to provide
additional gliding properties. Friction between the cartridge
and the skin may be further reduced by using a liquid additive.
However, unfortunately the volume requirements to achieve
noticeable friction reduction are too high.
Spec. 2. The Specification describes a composition that "may reduce
the amount of additive needed to achieve noticeable friction reduction
but may at the same time also reduce friction while shaving or during
other activities. Hence, the invention provides in an aspect a
composition that can be used while shaving." Id.
Claims 1-3, 5, 16, 19, 21, and 22 are on appeal. 3 Claim 1 is
representative and reads as follows:
1. A composition comprising;
a liquid including one or more low molecular weight
polyethylene glycols (LMW-PEGs); and
a solid suspended in the liquid and including one or more
high molecular weight polyethylene glycols (HMW-PEGs) for
dissolution upon contact with water during use and decreasing
friction,
wherein the one or more LMW-PEGs have a molecular
weight in a range of 200 to 500 dalton,
wherein the one or more HMW-PEGs have a molecular
weight in a range of 36,000 to 45,000 dalton, and
wherein the one or more LMW-PEGs and the one or
more HMW-PEGs are present in amount of excess of 50% by
3 Claims 6-15, 17, and 18 are pending in the application, but have been
withdrawn from consideration. Final Act. 2.
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Application 13/510,126
weight in the composition for providing the composition having
a reduced volume and reduced friction as the solid is dissolved
upon contact with water during use.
Claims 1-3, 5, 16, 19, 21, and 22 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over Harrison4 in view ofLittau. 5
DISCUSSION
Issue
The issue presented in this appeal is whether a preponderance of the
evidence supports the Examiner's conclusion that the subject matter of the
claims would have been obvious over the combination of Harrison and
Littau.
The Examiner finds that Harrison teaches a topical cosmetic
composition 50 to 90% of a polyethylene glycol ("PEG") composition.
Final Act. 4. The portion of Harrison cited by the Examiner teaches a
composition having two PEG components. Final Action 4 ( citing Harrison
paras 16, 25). Harrison discloses that the two PEG components can have
molecular weights of about 100 or 150 to about 1000, or about 3000, or
about 5000, or higher. Harrison paras 16, 25. As determined by the
Examiner, Harrison also teaches that these two PEG components can be
provided in a ratio of 0.1 to 10 and that the difference in molecular weight
between the two can be 1000 or more. Final Action 4 ( citing Harrison paras
13, 25).The Examiner finds that Harrison teaches that the difference in
molecular weight between the PEG components can be over 1,000. Id.
4 Harrison, US 2008/0057017 Al, published March 6, 2008 ("Harrison").
5 Littau et al., US 2005/0215443 Al, published September 29, 2005
("Littau").
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Application 13/510,126
The Examiner finds that Littau similarly teaches a topical skin
composition comprising two PEG components with differing molecular
weights with one PEG component having a molecular weight of about
35,000. Final Act. 5.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to produce the
formulations of Harrison with a PEG skin conditioning
component with a MW of 36,000 as taught by Littau et al. in
order to produce the instant invention.
One of ordinary skill in the art would have been
motivated to do this because both references are drawn to
topical skin care compositions comprising PEG and skin
conditioning components. Therefore it would have been
obvious to utilize the 36,000 MW PEG skin conditioner of
Littau et al., in the formulations of Harrison in order to use a
known skin conditioning component with a known molecular
weight. Further, as Harrison already teaches a PEG component
having a MW over 5[,]000, it would be advantageous to use one
component that will provide dual benefits.
From the teachings of the reference, it is apparent that
one of ordinary skill in the art would have had a reasonable
expectation of success in producing the claimed invention.
Therefore, the invention as a whole would have been prima
facie obvious to one of ordinary skill in the art at the time the
invention was made, as evidenced by the references, especially
in the absence of evidence to the contrary.
Final Act. 5---6.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Final Act. 4---6. The following findings are included to highlight certain
evidence:
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Application 13/510,126
FF 1. Harrison discloses preshave compositions comprising "at least
about 50% by weight of a polyalkylene glycol component, preferably
including at least two portions of different molecular weights, and an
additional component in an amount effective to benefit the area of the body
to be shaved." Harrison Abstract. Harrison teaches that the additional
component may include, for example, "one or more medications, such as
anti-fungal agents and the like, one or more fragrances, one or more
colorants and the like particularly suited for application to the benefiting of
one or more body areas to be shaved." Harrison ,r 6; see also id. ,r 4 7
( compositions of invention may include skin conditioners).
FF2. Harrison teaches that the viscosities of the composition can
range from 50 cps to about 100 cps or more. Harrison ,r 11.
FF3. Harrison teaches
In one very useful embodiment, the polyalkylene glycol
component, preferably a polyethylene glycol component,
comprises a first polyalkylene glycol component portion having
a first molecular weight and a second polyalkylene glycol
component portion having a second molecular weight which is
reduced relative to the first molecular weight.
Harrison ,r 12.
FF4. Harrison teaches
In one very useful embodiment, the polyalkylene glycol
component is present in different portions having different
molecular weights. For example, in one embodiment the
preshave compositions of the present invention comprise a first
polyalkylene glycol component portion having a first molecular
weight and a second polyalkylene glycol component portion
having a second molecular weight reduced relative to the first
molecular weight. It has been found that controlling the
molecular weight of the polyalkylene glycol component and
maintaining a relatively high concentration of the polyalkylene
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Application 13/510,126
glycol component are effective in providing the present
lubricant compositions with a substantially advantageous
combination of benefits.
Harrison ,r 24.
FF5. Harrison teaches
Polyalkylene glycol components, for example
polyethylene glycol components, and component portions, may
have molecular weights varying over relatively wide ranges, for
example in a range of about 100 or about 150 to about 1000 to
about 3000 or about 5000 or more. In one very useful
embodiment, the first polyalkylene, for example, polyethylene,
glycol component portion preferably has a molecular weight in
the range of about 350 to about 450. The second polyalkylene,
for example, polyethylene, glycol component portion preferably
has a molecular weight of less than about 270, and more
preferably in a range of about 150 to about 250. When two
polyalkylene glycol component portions are used together the
molecular weight difference between the two portions is
preferably at least about 100 or about 150 to about 300 or about
500 or about 1000 or more.
Harrison ,r 25.
FF6. Harrison teaches that its compositions are "substantially
anhydrous" and are "effective to generate heat or warming when placed in
contact with water." Harrison ,r 8; see also Harrison ,r,r 22, 54 and 62.
Harrison teaches that its compositions may be in the form of a liquid.
Harrison ,r 48.)
FF7. Littau discloses a "multiphase aqueous cleansing composition
for cleansing human skin and hair." Littau Abstract.
FF8. Littau teaches that the cleansing composition comprises a
polyalkylene glycol component, such as PEG, having a minimal molecular
weight. Littau ,r 3 8.
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FF9. Littau also teaches that the composition may comprise a skin
conditioner such as a PEG with a molecular weight of greater than 11,000
and that a particularly preferred PEG Polyglykol 35,000, which has a
molecular weight of about 35,000. Littau ,r 47.
FFlO. Polyglykol 35,000 is solid. MSDS 6 1.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references .... [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole."
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In cases involving overlapping ranges, [the Federal Circuit] and
[its] predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of
obviousness .... We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled
in the art would have expected them to have the same
properties.
6 AAKO B.V., MATERIAL SAFETY DATA SHEET, Polyglykol 35000 s, 1-3
(Feb. 25, 2008) ("MSDS").
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In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Where ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . [The]
fairness [of the burden-shifting] is evidenced by the PTO's
inability to manufacture products or to obtain and compare
prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
We find the Examiner has established a prima facie case that the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Harrison combined with Littau. See supra
Issue and Findings of Fact Sections. Appellants have not produced evidence
showing, or persuasively argued, that the Examiner's determinations on
obviousness are incorrect. Only those arguments made by Appellants in the
Briefs have been considered in this Decision. Arguments not presented in
the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have
identified claim 1 as representative and Appellants argue the claims as a
group; therefore, all claims fall with claim 1. We address Appellants'
arguments below.
Appellants argue that the combination of references does not teach or
suggest a composition comprising a HMW-PEG suspended in a liquid which
dissolves on contact with water and decreases friction. Appeal Br. 9.
Appellants contend that, while Harrison teaches that the HMW PEG
component may have a molecular weight of over 5,000, the Specification
specifically teaches a molecular weight for the HMW PEG of from 350 to
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450. Appeal Br. 9--10. Appellants also argue that Harrison does not teach
the presence of a solid suspended in a liquid. Appeal Br. 10.
Appellants contend that while Littau teaches the use of a HMW PEG
with a molecular weight of 35,000, the HMW PEG is dissolved in an
aqueous formulation and is not present as a solid. Appeal Br. 10, Reply Br.
4. Appellants contend that the use of a PEG with a molecular weight of
35,000 would not lead one skilled in the art to use a PEG with a molecular
weight of from 36,000 to 45,000. Appeal Br. 10.
Appellants argue that nothing in either Harrison or Littau would lead
one skilled in the art to use a HMW PEG to produce a composition that
reduces friction and volume during shaving. Appeal Br. 11-12.
We have considered Appellants' arguments and find them
unpersuasive. Polyglykol 35000 is a solid in its pure state. FFlO. While
Littau suggests that it is not solid in the composition of Littau, Littau's
composition is aqueous, hence it would be expected that Polyglykol 35000
would not be present as a solid because Polyglykol 35000 is water soluble.
Ans. 3, MSDS 2. The compositions of Harrison, however, may be liquid
and are substantially anhydrous. FF6. There is no water present in the
compositions of Harrison to dissolve the Polyglykol 35000. We agree with
the Examiner that one skilled in the art would expect addition of Polyglykol
35000 to the low molecular weight ("LMW") PEG of Harrison to result in
solids suspended in a liquid. Ans. 3.
While we agree with Appellants that neither reference specifically
teaches the range of molecular weights recited in claim 1, we agree with the
Examiner that the recited range would have been obvious. Harrison teaches
that the HMW PEG component can have a molecular weight of greater than
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5,000 and that the difference between the HMW-PEG and LMW-PEG
components can exceed 1,000. FF5. Littau teaches that a PEG with a
molecular weight of greater than 11,000 may act as a skin conditioner and
further teaches a preferred PEG having a molecular weight of about 35,000
(Polyglykol 35,000), which is very close to the lower end of the claimed
molecular weight range of 36,000 to 45,000. FF9. While the molecular
weight of Polyglykol 35,000 is not within the claimed range, Littau does
teach PEG skin conditioners having molecular weights (i.e., greater than
11,000) that encompasses the claimed range of 36,000 to 45,000;
furthermore, a prima facie case of obviousness may also exist where, as in
the case of Littau's preferred PEG Polyglykol 35,000, "the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties."
Peterson, 315 F.3d at 1329.
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
In re Woodruff, 919 F. 2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990) ( citations omitted, emphasis in original). Here, Appellants have not
persuasively argued that the claimed HMW-PEG components' specific
molecular weight is critical, or that it achieves some unexpected result
relative to the closest prior art, i.e., a 35,000 PEG. See generally Appeal Br.
We conclude it would have been obvious based on Littau's teachings.
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With respect to the properties of lubricity and volume reduction, we
do not find Appellants' argument persuasive. Harrison teaches the use of a
HMW PEG in a lubricant composition. FF4. In addition, the composition
advanced by the Examiner and that of claim 1 are nearly identical and one
would expect them to have the same properties, absent evidence to the
contrary.
"[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on."
In re Best, 562 F.2d 1252, 1254--55, (CCPA 1977) (quoting In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)). Appellants have not offered any
credible evidence that the proposed composition would not have the same
properties as the claimed composition.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's determination that the subject matter of claim 1 would have been
obvious over Harrison combined with Littau.
Claims 2, 3, 5, 16, 19, 21, and 22 have not been argued separately
and, therefore, fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a) of claims 1-3, 5, 16,
19, 21, and 22.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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