Ex Parte Liu et al

Patent Trial and Appeal Board

Apr 17, 2018

13447343 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/447,343 04/16/2012 HongjieLiu
201 7590 04/19/2018
UNILEVER PATENT GROUP
700 SYLVAN AVENUE
A4
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
J9228US 9720
EXAMINER
BECKHARDT, LYNDSEY MARIE
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGJIE LIU, YUNTAO THOMAS HU, and PREM CHANDAR
Appeal2017-005804 1
Application 13/447,343
Technology Center 1600
Before RICHARD M. LEBOVITZ, RICHARD J. SMITH, and RYAN H.
FLAX, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to an aqueous personal wash or
hair composition comprising a premix composition, which consists of
polybutene or natural rubber, and candelilla wax. The Examiner rejected the
claims under 35 U.S.C. § 103(a) as obvious. We have jurisdiction under 35
U.S.C. § 6(b ). The rejection is affirmed.
1 The Appeal Brief ("Br.") identifies Conopco, Inc., d/b/a Unilever, as the
real-party-in-interest. Br. 3.
Appeal2017-005804
Application 13/447 ,343
STATEMENT OF THE CASE
Claims 1 and 7 stand rejected by the Examiner under pre-AIA 35
U.S.C. § 103(a) as obvious over U.S. Patent Number 3,829,563 (issued Aug.
13, 1974) ("Barry '563") and U.S. Patent Publication Number 2003/0207971
Al (publ. Nov. 6, 2003) ("Stuart '971"), with the evidence ofKemat
Belgium, Polybutene Specification Table (available at
http://www.kematbelgium.com/polybutenes/pib-table) (last accessed Mar.
24, 2014) (the "PIB Table"). Answer 3.
Claim 1, the only independent claim on appeal, is reproduced below
with some paragraph formatting:
1. An aqueous personal wash or hair composition comprising a
premix composition which premix composition consists of:
(a) 25 to 95% by weight of pre-mix composition
consisting of flowable hydrocarbon liquids selected from the
group consisting of (1) petroleum derived hydrocarbon oils; (2)
petroleum derived oligomers and polymers which oligomers
and polymers comprise alkene monomeric groups; or two or
more alkene units; and (3) mixtures thereof;
wherein said hydrocarbon liquids have a melting
or phase transition point < 30°C and a viscosity of
500 Pa.s or less at room temperature and wherein
said hydrocarbon liquids are polybutene or natural
rubber; and
(b) 5 to 75% by weight of pre-mix composition
consisting of structuring material selected from the group
consisting of waxes;
wherein said structuring material has melting point
> 30°C and
wherein the wax is candelilla wax[,]
wherein said pre-mix compositions consist of a flowable
hydrocarbon liquid material (Component a) structured with
materials of b;
wherein the said pre-mix compositions have viscosity
below 1000 Pa.s measured at shear rate 10 s-1;
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Application 13/447 ,343
wherein the pre-mix compositions have occlusivity of
>80;and
wherein said pre-mix compositions are prepared by
mixing (a) and (b) at 500-1500 rpm until completely mixed at
temperature higher than highest melting point of any ingredient
being blended and cooling to room temperature to form the pre-
mix composition.
Appellants did not provide separate arguments for dependent
claim 7. Claim 7, therefore, falls with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
DISCUSSION
The Examiner found that Stuart '971 describes a composition (an
emollient gel) comprising (a) polybutenes and (b) candelilla wax in amounts
that fall within the claimed ranges. Final Act. 5. The Examiner provided
evidence that polybutene and wax have the same characteristics recited in
the claim. Id. The Examiner acknowledged that Stuart '971 does not
expressly describe the recited occlusivity ("wherein the pre-mix
compositions have occlusivity of >80") of its emollient gel, but found, citing
In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977), that because the
publication describes the same components in the same amounts, the burden
shifted to Appellants to show that Stuart's gel does not possess the same
occlusivity. Id.
Stuart '971 does not describe its composition as being for an aqueous
personal wash or hair composition as claimed. The Examiner found that it
would have been obvious to one of ordinary skill in the art to have used the
emollient gel of Stuart '971 in the hair cleaning compositions of Barry '563
because:
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Application 13/447 ,343
[T]he [Stuart ']971 publication teaches the emollient gel is
useful as a replacement for petrolatum (abstract) and the
[Barry ']563 patent teaches the cleaning composition
comprising petrolatum (abstract).
Final Act. 6.
The Examiner also stated:
The [Barry ']563 patent teaches it is within the scope of the
invention to partially replace petrolatum with [a] mixture of
hydrocarbon materials which can be formulated to resemble
petrolatum (column 3, lines 25-45).
Final Act. 4.
Appellants challenge the obviousness of utilizing Stuart '971 's
emollient in Barry '563 's hair composition.
Obviousness
Appellants contend that the "entire focus" of Barry '563 is on
petrolatum, including all its examples, and that "no person of ordinary skill
in the art would use this reference to formulate alternatives to petrolatum,"
let alone the specifically recited combination. Br. 7. Appellants state:
Br. 8.
[T]he Examiner refers to column 3, lines 25-45 because it
discloses petrolatum may be "partially replaced". However,
there is no teaching whatsoever of how much petrolatum would
be partially replaced; further applicants invention is not directed
to "partial replacement" of petrolatum (i.e., product in which
petrolatum would still be present), but to alternative products
(page 1, line 28).
This argument does not persuade us that the Examiner erred in
rejecting the claims as obvious.
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Application 13/447 ,343
First, while it may be correct that the examples in Barry '563 are
directed to petrolatum compositions, there is express disclosure in Barry
'563 that it is "within the scope of the invention, however, to partially
replace petrolatum with mixtures of hydrocarbon materials which can be
formulated to resemble petrolatum in appearance and consistency." Barry
'563 col. 3, 11. 32-35.
Second, as found by the Examiner, Stuart '971 describes its emollient
gel as a replacement for petrolatum because of problems that arise with it:
An emollient gel useful as an ingredient in inks, paint,
lubricants, grease and cosmetics, and particularly as a
replacement for petrolatum in such applications.
Stuart '971 Abstract.
Problems arise with the use of petrolatum however. For
example, petrolatum leaves a slight greasy film that can be
undesirable in many applications. . . . As a result, it is desirable
that a substitute for petrolatum be developed which has all of
the advantages of petrolatum but which minimizes its
disadvantages.
Stuart '971 i-f 4.
Stuart '971 also teaches that its petrolatum replacement product,
namely, its emollient gel, is superior to petrolatum:
The present invention provides an emollient gel useful as a
replacement for petrolatum. The emollient gel has all of the
desirable qualities found in petrolatum plus has additional
attributes that make it superior to petrolatum.
Id. i-f 5.
Thus, even ifBarry '563 had no disclosure concerning the
replacement of petrolatum, the teachings in Stuart '971 about the problems
with petrolatum products, and the superiority of its replacement emollient
gel, provides a strong reason to have utilized Stuart '971 's product in place
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Application 13/447 ,343
of the petrolatum in Barry '563. The further teaching in Barry '563 of
"partial" replacement establishes that the publication contemplated using a
petrolatum substitute in its hair and skin compositions, providing further
reason to have used Stuart '971 's emollient gel in Barry '563.
Appellants contend that "nothing [in Stuart '971] would suggest that
first polybutene and candelilla wax be selected to form an emollient gel; and
that such gel then be specifically employed in a cosmetic composition." Br.
8.
To begin with, as noted by the Examiner, candelilla wax is mentioned
in the Abstract of Stuart '971, is disclosed as a preferred wax (Stuart '971,
i-fi-16, 41, 50), is one of two preferred waxes used in the examples (id. i-fi-168,
69), and is listed in the claims (id. at claim 32). Thus, one of ordinary skill
in the art would have had a strong reason at the time of the claimed
invention to have picked candelilla wax to use in Stuart '971 's emollient
because it is preferred, exemplified, and among a list of claimed waxes.
With respect to the choice of the polybutene, Stuart '971 teaches that
the emollient can comprise oils, oil derivatives, oligomers, and low
molecular weight polymers. Stuart '971i-f19. There are only four
mentioned oligomers, one of which is the claimed polybutene. Id.
Consequently, we do not agree with Appellants that the choices were so vast
that nothing would have lead one of skill in the art to have selected
candelilla wax and polybutylene. Appellants have focused on all the
possible choices listed in Stuart '971, without recognizing that Stuart
discloses specific and a limited number of categories, and if one of skill in
the art were choosing from the oligomer category, there are only four listed
examples to choose from.
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Data
Appellants cite to the Specification as evidence "that not all structured
hydrocarbon liquids provide the occlusivity (>80) required to achieve the
benefits of the invention." Appeal Br. 6. Specifically, Appellants compared
soybean oil, described in Stuart '971, to polybutenes, each comprising
candelilla wax. Id. at 6-7; Spec. 14 and 16 (Tables 1 and 2). Appellants
state in the Specification:
As noted, applicants have unexpectedly now found that a
pre-blend of specific hydrocarbon liquids (e.g., low molecular
weight alkanes, oligomers and polymers) of defined viscosity
and defined melting or phase transition point, together with
structuring materials of defined melting point, can be used
instead of petrolatum (e.g., petrolatumjelly or "PJ"); and will
approach, match or surpass the occlusivity of PJ, while also
providing spreadability required to achieve the film forming
and sensory profile desired by consumers.
Spec. 2.
While the Examiner states that certain of the results disclosed by
Appellants were "unexpected," the Examiner found them not to be
commensurate in scope with the claims. Final Act. 8.
Unexpected results must be "commensurate in scope with the degree
of protection sought by the claimed subject matter." In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005). In this case, the claims cover (a) 25 to 95% by
weight of a flowable hydrocarbon liquid that is a polybutene or natural
rubber "having have a melting or phase transition point < 30°C and a
viscosity of 500 Pa.s or less at room temperature" and "(b) 5 to 75% by
weight of ... [a] structuring material" which "is candelilla wax." Table 1,
however, only shows two concentrations of a polybutene (80% and 50%)
and two concentrations of candelilla wax (20% and 50%). Appellants have
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Application 13/447 ,343
not provided evidence or arguments that concentrations outside this range,
e.g., at or near 5% wax and 95% polybutene as claimed, would provide the
recited occlusivity and provide unexpected results. The data shown in the
Specification is insufficient to allow one having ordinary skill in the art "to
reasonably extend the probative value" to the full scope of the claim. In re
Kollman, 595 F.2d 48, 56 (Fed. Cir. 1979). Appellants must, therefore,
demonstrate or explain why the results for two data points (with no
indication of the variation or statistical significance of the data) would
establish the asserted results for the entire claimed ranges of claim 1.
In addition to this, the claims cover polybutenes and natural rubber,
but the examples only provide evidence of the results obtained with
polybutenes. Thus, the claimed subject matter is broader than the disclosed
results for this reason as well.
Summary
For the foregoing reasons, the obviousness rejection of claim 1 is
affirmed. Claim 7 falls with claim 1.
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
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