Ex Parte Lee et alDownload PDFBoard of Patent Appeals and InterferencesApr 28, 200910228328 (B.P.A.I. Apr. 28, 2009) Copy Citation 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. 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