Ex Parte Lee et al

Board of Patent Appeals and Interferences

Apr 28, 2009

10228328 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LEE WILSON, XIAOZHONG TANG, JOHN BRAHMS,
JAMES CUSH JR., ANTHONY ESPOSITO, and MARIE JOHANSSON
__________

Appeal 2009-0562
Application 10/228,328
Technology Center 1600
__________

Decided:1April 28, 2009
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-15, 17,
and 18, all of the pending claims, which are directed to a method of making

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0562
Application 10/228,328

a salt composition. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “enhanced antiperspirant salts containing
(1) aluminum or (2) aluminum and zirconium polymeric species” (Spec. 1).
The Specification states that the salts are produced by “a wet grinding
method … which creates improved antiperspirant salts as reflected in
molecular weight distributions for Peaks 1-5 in an SEC [size exclusion
chromatography] chromatogram evidencing a quantitative increase in the
smaller species for both aluminum and zirconium species” (id.). “Peak 4 is
the smaller aluminum species (aluminum oligomers), and . . . Peak 5
(sometimes referred to as Peak 5-6) is the smallest aluminum species” (id. at
2).
Claim 1 is representative of the appealed claims and reads as follows:
Claim 1: A method for enhancing the activity of an aluminum or an
aluminum/zirconium salt containing small and large aluminum species,
comprising
(a) combining a parent salt with a non-aqueous liquid vehicle in which
the salt is suspended but not soluble to form a mixture; and
(b) grinding the mixture at a temperature in the range of 20-70 degrees
C to an average particle size of less than or equal to 2 microns to form an
enhanced salt;
wherein the enhancement comprises increasing the smaller species in
an amount of at least 10% as compared to the parent salt and wherein the
enhanced salt is characterized as having a sum of Peak 4+Peak 5 areas in the
enhanced salt which is at least 10% greater than the sum of Peak 4+Peak 5
areas of the parent salt.

2
Appeal 2009-0562
Application 10/228,328

OBVIOUSNESS
The Issue
The Examiner has rejected claims 1-15, 17, and 18 under 35 U.S.C.
§ 103(a) as being obvious in view of Breker2 and Juneja.3 Claims 17 and 18
have been argued separately; claims 2-15 will stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Breker as disclosing a method that comprises
“mixing antiperspirant active salts in a nonaqueous oil phase (e.g.
cyclomethicone) in the absence of water and grinding the mixture at
temperatures of below 60°C … to a final fineness of 95%<15μm” (Ans. 3).
The Examiner relies on Juneja as disclosing antiperspirant active salts
“prepared by anhydrous mixing” and grinding of the anhydrous salt
suspension to a “particle size of … preferabl[y] from about 0.1 to about 2
microns” (id. at 4).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to combine the methods of Breker and Juneja, in
order “to obtain a more stable mixing process than the prior art methods of
using aqueous mediums … as suggested by Juneja” (id.). The Examiner
reasons that the method suggested by the combined references “teaches the
same process steps” as instantly claimed and thus would reasonably be
expected to “achieve the same end result, i.e. increasing the smaller species
in an amount of at least 10% as compared to the parent salt” (id. at 4-5).

2 Breker et al., US 6,517,819 B1, Feb. 11, 2003
3 Juneja et al., US 6,136,302, Oct. 24, 2000
3
Appeal 2009-0562
Application 10/228,328

Appellants contend that the Examiner erred in finding that the
combination of the cited references suggests the limitation that “the sum of
Peak 4+Peak 5 areas in the enhanced salt is at least 10% greater than the
sum of Peak 4+Peak 5 areas of the parent salt” (Appeal Br. 3).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the references suggest a method of
producing an enhanced salt from a parent salt such that the enhanced salt has
a “sum of Peak 4+Peak 5 areas …[that] is at least 10% greater than the sum
of Peak 4+Peak 5 areas of the parent salt”?
Findings of Fact
1. The Specification discloses that “aluminum zirconium glycine salts
(abbreviated here as ‘ZAG’, ‘ZAG complexes’ or ‘AZG’), are known to
contain a variety of polymeric and oligomeric species with molecular
weights (MW) ranging from 100 - 500,000. … [I]n general, the smaller the
species, the higher the efficacy for reducing sweat.” (Spec. 1.)
2. The Specification discloses:
Size exclusion chromatography (“SEC”) or gel permeation
chromatography (“GPC”) are methods frequently used for
obtaining information on polymer distribution in antiperspirant
salt solutions. With appropriate chromatographic columns, at
least five distinctive groups of polymer species can be detected
in a ZAG, appearing in a chromatogram as peaks 1, 2, 3, 4 and
a peak known as “5”.
(Spec. 1: 25 - 2: 3.)
3. The Specification discloses:
Peak 1 is the larger Zr [zirconium] species (greater than the
pore size of the column materials . . . ). Peak 2 is the larger
aluminum species (particularly greater than 120-125
Angstroms). Peak 3 is the medium species. Peak 4 is the
4
Appeal 2009-0562
Application 10/228,328

smaller aluminum species (aluminum oligomers), and has been
particularly correlated with enhanced efficacy for both ACH
[aluminum chlorohydrex] and ZAG salts. Peak 5 (sometimes
referred to as Peak 5-6) is the smallest aluminum species.
(Id. at 1: 30 to 2: 3.)
4. The Specification discloses the process recited in claim 1 on appeal
(see id. at 5: 22-26).
5. The Specification discloses that the “process of the invention may
be viewed as affecting both the physical size of the particles of the active
salt in powder form and the molecular weight distribution of the various
aluminum and zirconium species in the active salt” (id. at 6: 29-32).
6. The Specification discloses that the nonaqueous liquid vehicle used
in the disclosed method can be
(a) cosmetic esters … especially fatty esters having 6-22
carbons in straight or branched chains;
(b) glycols and polyols such as propylene glycol and
dipropylene glycol;
(c) volatile silicones such as the cyclomethicones;
(d) non-volatile silicones such as polydimethicone …;
(e) hydrocarbons such as mineral oils; [or]
(f) alcohols having more than three carbons.
(Id. at 9: 23-32.)
7. Breker discloses a “process for the synthesis of the antiperspirant
suspension [that] includes mixing an aluminum salt which is effective as an
antiperspirant with a zirconium salt which is effective as an antiperspirant
… , in a non-aqueous oil phase in the absence of water to provide a mixture;
and grinding the mixture” (Breker, abstract).
8. Breker discloses that “the non-aqueous phase consists of a largely
unpolarised organic liquid that is not miscible with water, belonging to the
5
Appeal 2009-0562
Application 10/228,328

substance group alkanes, isoalkanes, monofunctional alcohols,
polyfunctional alcohols, fatty acid esters of mono and dibasic carboxylic
acids with monofunctional and polyfunctional alcohols, … cyclic silicones,
open-chained silicones and combinations of these” (id. at col. 3, ll. 45-53).
9. In Breker’s working examples, the non-aqueous phase is
cyclomethicone (see id. at col. 5, ll. 9 and 42; col. 6, ll. 6 and 36).
10. Breker discloses that “[g]rinding of the antiperspirant suspension
… is carried out at temperatures of below 60°C., particularly below 40°C”
(id. at col. 4, l. 65 – col. 5, l. 1).
11. Juneja discloses a “process for making zirconium-aluminum salts
for use as antiperspirant actives, which process comprises the step of
anhydrous mixing of a zirconium salt and aluminum salt to form a solid
zirconium-aluminum salt” (Juneja, col. 2, ll. 45-55).
12. Juneja discloses that the “anhydrous mixing process is more
stable than the prior art methods involving … aqueous mediums containing
both zirconium and aluminum salts” and that it is “easier to control the
desired zirconium-aluminum polymer distribution by the anhydrous mixing
as compared to the historical aqueous solution methods” (id. at col. 2, ll. 62-
67).
13. Juneja discloses that the
anhydrous mixture resulting from the process … can be in the
form of a particulate or other solid form, or it can be in the form
of dissolved or suspended salts in a non-aqueous medium.
Preferred are anhydrous mixtures in the form of flowable
particulates. The particle size of the preferred particulates is
preferably less than about 20 microns, more preferably less than
about 4 microns, even more preferably from about 0.1 to about
2 microns.
6
Appeal 2009-0562
Application 10/228,328

(Id. at col. 5, l. 64 – col. 6, l. 4.)
14. Juneja discloses that the “average particle size can be controlled
by … reducing particle size of the resulting anhydrous blend by any known
or otherwise effective particle size reduction method” and that “suitable
particle size reduction methods include grinding” (id. at col. 6, ll. 5-16).
15. Juneja discloses that the “non-aqueous mediums suitable for use
in the process include any known or otherwise effective vehicle for topical
application from an antiperspirant and deodorant composition, and which is
substantially free of water” (id. at col. 6, ll. 51-54).
16. Juneja discloses that “zirconium-aluminum salt made in
accordance with the anhydrous mixing process … can have a polymer size
distribution … that is the same or similar to that found in zirconium-
aluminum salts made by prior art aqueous solution methods” and “will
typically have an average ratio of the area of Peak IV to Peak III … of at
least about 0.1:1, preferably from about 0.2:1 to about 1.4:1” (id. at col. 7, ll.
39-48).
Principles of Law
Once the Examiner establishes that a product, recited in terms of its
process of making, is prima facie unpatentable due to being in the prior art,
Appellants bear the burden of proving “that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985) (quoting In re Fitzgerald,
619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA
1977)).
7
Appeal 2009-0562
Application 10/228,328

Analysis
Claim 1 is drawn a method for enhancing the activity of an aluminum
or aluminum/zirconium salt containing small and large aluminum species
that comprises (a) combining a parent salt with a non-aqueous liquid vehicle
in which the salt is suspended but not soluble and (b) grinding the
salt/vehicle mixture at a temperature of 20-70° C to an average particle size
of less than or equal to 2 microns to obtain an enhanced salt.
Breker discloses the preparation of an antiperspirant suspension by
mixing an aluminum salt with a zirconium salt in a non-aqueous oil phase
and grinding the mixture, preferably at a temperature of below 60°C. Juneja
discloses a process that comprises anhydrous mixing of a zirconium salt and
aluminum salt to form a zirconium-aluminum salt for use as an
antiperspirant active and discloses that the optimal particle size, achieved by
grinding the mixture, is less than or equal to 2 microns.
We agree with the Examiner that it would have been obvious to one of
skill in the art to combine the prior art methods to arrive at an anhydrous
mixing process for preparing aluminum-zirconium antiperspirant salts, as
disclosed by both Breker and Juneja, that includes grinding the salt at a
temperature between 20-70° (as disclosed by Breker) and grinding the salt to
an average particle size of less than or equal to 2 microns (as disclosed by
Juneja), because Juneja teaches that that particle size is optimal for use of a
zirconium aluminum salt as an antiperspirant active.
Claim 1 also requires that the enhanced salt, as compared to the parent
salt, has an increase in the smaller species of aluminum of at least 10% (i.e.,
a sum of Peak 4+Peak 5 areas in the enhanced salt that is at least 10%
8
Appeal 2009-0562
Application 10/228,328

greater than the sum of Peak 4+Peak 5 areas of the parent salt). Appellants
contend that the Examiner erred in finding that the combination of the cited
references suggests this limitation (App. Br. 3).
We disagree. Although Breker and Juneja do not disclose the “Peak
4+Peak 5” characteristics of their salt compositions, the references suggest
carrying out the same process recited in claim 1, using the same starting
materials. Therefore, it is reasonable to expect that the product resulting
from the prior art process would have the property recited in claim 1 (i.e., a
sum of Peak 4+Peak 5 areas in the enhanced salt which is at least 10%
greater than the sum of Peak 4+Peak 5 areas of the parent salt). Thus, in
accord with In re Thorpe, a prima facie case of unpatentability has been
established and Appellants bear the burden of proving “that the prior art
products do not necessarily or inherently possess the claimed characteristic.”
Appellants have not pointed to any distinguishing aspects of the claimed
method that would be expected to provide a different result than the method
suggested by the prior art.
Appellants also argue that the Juneja method “results in a polymer
size (molecular weight) distribution that is the same or similar as to that
found in zirconium-aluminum salts made by prior art aqueous solution
methods” (App. Br. 3; citing Juneja at col. 7, ll. 40-44). Appellants argue
that “[w]hile Juneja '302 may suggest grinding to a particle size of less than
2 microns, Juneja '302 does not suggest a grinding process such that the
polymer size (molecular weight) distribution is altered to give an increase in
the Peak 4 +Peak 5 area. Juneja ‘302 actually teaches that the distribution
should be the same” as the prior art (id.). Thus, Appellants argue that “[b]y
9
Appeal 2009-0562
Application 10/228,328

keeping the distribution the same, Juneja '302 teaches away from a process
wherein the area of Peak 4 + Peak 5 is increased as compared to the parent
salt” (id.).
This argument is not persuasive. Juneja discloses that the anhydrous
method produces a composition that yields a size exclusion chromatography
profile that is similar to the profiles of zirconium-aluminum salts made by
prior art aqueous solution methods, but does not compare the profile of a
parent salt to an enhanced, ground salt. As set forth above, the anhydrous
grinding method suggested by Breker and Juneja appears to be the same as
the process of claim 1, and Appellants have not pointed to any aspects of the
claimed method that would be expected to produce a different result.
With regard to claim 17,4 Appellants’ argument is similar to that
discussed above with regard to claim 1; specifically, that Juneja and Breker
do not disclose increasing the Peak 4+Peak 5 area by at least 20% (App. Br.
4). Similarly, with regard to claim 18,5 Appellants argue that “there is no
disclosure or suggestion of grinding to reduce the area of Peak 1 in the
enhanced salt as compared to the parent salt” (App. Br. 4).

4 Claim 17 reads: “An enhanced salt as obtained by the method of claim 1
wherein the enhanced salt is characterized as having a sum of Peak 4+Peak 5
areas in the enhanced salt which is at least 20% greater than the sum of Peak
4+Peak 5 areas of the parent salt.”

5 Claim 18 reads: “An enhanced salt as obtained by the method of claim 1
wherein the parent salt comprises aluminum and zirconium and the
enhanced salt is further characterized as having a Peak 1 area of at least 10%
less than the Peak 1 area of the parent salt.”

10
Appeal 2009-0562
Application 10/228,328

These arguments are not persuasive for the reasons discussed above:
the references suggest carrying out the process recited in claim 1 using the
same starting materials, and therefore support a reasonable expectation that
the process suggested by the prior art would result in a product having the
properties recited in the claims. Appellants have not pointed to any
distinguishing aspects of the claimed method that would be expected to
provide a different result than the suggested prior art method. Thus, the
products of claims 17 and 18 reasonably appear to be obvious in view of the
prior art.
CONCLUSIONS OF LAW
The evidence of record supports the Examiner’s conclusion that the
references suggest a method of producing an enhanced salt from a parent salt
such that the enhanced salt has a “sum of Peak 4+Peak 5 areas … [that] is at
least 10% greater than the sum of Peak 4+Peak 5 areas of the parent salt.”

SUMMARY
We affirm the rejection under 35 U.S.C. § 103(a) of claims 1-15, 17,
and 18 as obvious in view of Breker and Juneja.

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).

11
Appeal 2009-0562
Application 10/228,328

AFFIRMED

Ssc:

PATENT DEPARTMENT
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
P.O. BOX 1343
PISCATAWAY, NJ 08855-1343
12