Ex Parte Student et al

Patent Trial and Appeal Board

Jul 22, 2013

11554660 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/554,660 10/31/2006 Joerg Student 204552-1 (1302-334Q) 5772
82159 7590 07/22/2013
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o McDonald Hopkins LLC
600 Superior Avenue, EAST., SUITE 2100
Cleveland, OH 44114-2653
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
07/22/2013 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 JOERG STUDENT, RICKSON SUN,
KRISTI SCHERLER, PAUL HANS,
JON LEIST, and GREGORY W. SHAFFER
__________

Appeal 2012-002795
Application 11/554,660
Technology Center 1600
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an anti-
chafing composition. The Examiner rejected the claims as obvious and on
the ground of obviousness type double patenting. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as Momentive
Performance Materials, Inc. (see App. Br. 2).
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Application 11/554,660

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Statement of the Case
Background
“Chafing is skin irritation that occurs where skin rubs against skin,
clothing, shoes, or other materials” (Spec. 1 ¶ 002). The Specification
teaches “boron nitride, with its unique lubricity and thermal conductivity
properties, can be used in an anti-chafing composition to minimize skin
irritation problems when the skin is in contact with itself or with another
surface, and can provide relief and comfort to the wearer” (Spec. 2 ¶ 006).
The Claims
Claims 1-3, 8, 10, 11, 13-18, and 22 are on appeal. Claims 1 and 17
are representative and read as follows:
1. An anti-chafing composition for maintaining and/or
improving skin health in an area covered by an article, the
composition comprising an aqueous dermatologically
acceptable carrier and from 0.5 to 15 wt. % of boron nitride
particles, containing boron nitride particles having a particle
size of from about 10 to about 250 µm, wherein the
composition, upon topical application onto skin, leaves a
layer comprising a chafe-reducing effective amount of boron
nitride particles on the skin.

17. An anti-chafing composition consisting essentially of
boron nitride having an average particle size from about 10
to about 250 µm, wherein the composition has a density
ranging from 0.20 to 1.500 g/cm3, and an 02 concentration
ranging from 0.2 to 1.3 wt. %, wherein the composition,
upon topical application onto skin, leaves a layer comprising
a chafe-reducing effective amount of boron nitride particles
on the skin.

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The issues
A. The Examiner rejected claims 17, 18, and 22 under 35 U.S.C. § 103(a)
as obvious over Elliott2 and Clere3 (Ans. 15-17).
B. The Examiner rejected claims 1-3, 8, 10, 11, 13-17, and 22 under 35
U.S.C. § 103(a) as obvious over Butts4 and Clere (Ans. 17-19).
C. The Examiner rejected claims 1 and 8 on the ground of nonstatutory
obviousness-type double patenting over claim 1 of US 5,898,009 (Ans. 19-
20).
D. The Examiner rejected claims 1 and 8 on the ground of nonstatutory
obviousness-type double patenting over claims 1-6 of US 6,048,511 (Ans.
20-21).
E. The Examiner rejected claims 1 and 8 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 5, 7, 24, 25, 27, 29, and 30
of US 7,445,797 (Ans. 21-22).
F. The Examiner rejected claims 1, 8, and 14 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 3, 23, 27, and
29 of US 7,524,560 (Ans. 22-23).
G. The Examiner provisionally rejected claims 1-3, 8, 13-18, and 22 on
the ground of nonstatutory obviousness-type double patenting over claims 1-
20 of copending US application 11/554,705 (Ans. 23-24).
H. The Examiner provisionally rejected claims 1-2, 8, 14, 17, 18, and 22
on the ground of nonstatutory obviousness-type double patenting over

2 Elliott et al., US 5,340,569, issued Aug. 23, 1994.
3 Clere et al., US 6,951,583 B2, issued Oct. 4, 2005.
4 Butts et al., US 2007/0207101 A1, published Sep. 6, 2007.
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claims 1, 2, 5-8, and 10-15 of copending US application 11/555,290 (Ans.
24).
I. The Examiner provisionally rejected claims 1, 8, 14, 17, and 18 on the
ground of nonstatutory obviousness-type double patenting over claims 1-13
of copending US application 11/555,292 (Ans. 25).
A. 35 U.S.C. § 103(a) over Elliott and Clere
The Examiner finds that “Elliott et al. teach powdered molded color
cosmetic compositions containing 0.001-30% of boron nitride particles
having an average particle size of 0.1-30 microns in an anhydrous carrier”
(Ans. 15). The Examiner finds that Clere teaches a “powder comprising
boron nitride particles having an aspect ratio of 50-300 and a particle size of
1-20 microns. . . . The hexagonal boron nitride of Clere et al. can be used in
cosmetic compositions because it has high lubricity and a low weight
percentage of boron oxide to increase the hydroscopic nature of the resulting
powder” (Ans. 16).
The Examiner finds it obvious to “modify the cosmetic compositions
of . . . Elliott et al. such that to employ boron nitride of Clere et al. One
having ordinary skill in the art would have been motivated to do this to
obtain compositions having high lubricity which would not dry the skin as
suggested by Clere et al.” (Ans. 16). The Examiner finds that “the
determination of optimal or workable density and/or O2 concentration by
routine experimentation is obvious absent showing of criticality of the
claimed parameters” (Ans. 16-17).
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Elliott and Clere render claim
17 obvious?
Findings of Fact
1. Elliott teaches “an improved pressed powder color cosmetic can
be achieved that combines boron nitride with a magnesium C12-C20 fatty acid
salt, the combination being delivered with a suitable powdered vehicle.
Improved spreadability, adherence, skin-feel and covering power are
achieved with this composition” (Elliott, col. 1, ll. 56-62).
2. Elliott teaches “a first component an ultrafine powdered boron
nitride. A wide variety of boron nitrides may be employed including the h-
Bn, w-Bn, c-Bn, r-Bn and t-Bn varieties. Average particle size based upon
spherical morphology can range from about 0.1 to about 30 microns”
(Elliott, col. 1, l. 67 to col. 2, l. 4).
3. Clere teaches that “a powder comprising hexagonal boron
nitride particles having an aspect ratio of from about 50 to about 300”
(Clere, col. 1, ll. 47-49).
4. Clere teaches that “the particles have an average diameter of at
least about 1 micron, typically between about 1 and 20 µm, more typically
between about 4 and 9 µm” (Clere, col. 2, ll. 55-57).
5. Clere teaches
for cosmetic applications, the h-BN powder of the present
invention should have a low weight percentage of B2O3 to
increase the hydroscopic nature of the resulting powder (will
not dry the skin). Preferably, for cosmetic applications, the
h-BN powder of the present invention has no more than 500
ppm B2O3, more preferably, from about 0 ppm to about 200
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ppm B2O3. Low B2O3 content can be achieved by careful
washing

(Clere, col. 3, ll. 35-42).
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
While Elliott and Clere teach cosmetic compositions with boron
nitride particle sizes overlapping the claimed 10 to 250 µm range, neither
reference teaches or suggests the specific density range or O2 concentration
required by claim 17, nor does the Examiner provide any evidence or
reasoning that these ranges would have been inherent.
The Examiner finds that “the determination of optimal or workable
density and/or O2 concentration by routine experimentation is obvious
absent showing of criticality of the claimed parameters” (Ans. 16-17).
We are not persuaded. A parameter in a patent claim must be
recognized as result-effective (namely, as achieving a recognized result)
before a determination can be made that optimizing the parameter would
have been a matter of routine experimentation. In re Antonie, 559 F.2d 618,
620 (CCPA 1977) (a finding that the discovery of the optimum values of a
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variable in a known process would have been within the level of ordinary
skill in the art must be supported by a showing that the variable is in fact
result-effective). Critically absent here is any showing that the specified
densities or oxygen concentrations would have been recognized as result-
effective variables. Absent such a showing, we agree with Appellants that
the Examiner fails to articulate a reason with rational underpinning as to
why an ordinary artisan would have been led to optimize the specified
densities or oxygen concentrations to fall within the ranges required by
claim 17.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Elliott and Clere render claim 17 obvious.
B. 35 U.S.C. § 103(a) over Butts and Clare
The Examiner finds that Butts teaches “sticks, sprays, gels, emulsions
and anhydrous cosmetic formulations containing 0.1-70% of boron nitride
powder having an average particle size of less than 1 micron” (Ans. 17).
The Examiner finds that Clere teaches “a powder comprising boron nitride
particles having an aspect ratio of 50-300 and a particle size of 1-20
microns. . . . The hexagonal boron nitride of Clere et al. can be used in
cosmetic compositions because it has high lubricity and a low weight
percentage of boron oxide to increase the hydroscopic nature of the resulting
powder.” (Ans. 18). The Examiner finds it obvious “to modify the cosmetic
compositions of Butts et al. such that to employ boron nitride of Clere et al.
One having ordinary skill in the art would have been motivated to do this to
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obtain compositions having high lubricity which would not dry the skin as
suggested by Clere” (Ans. 18).
The Examiner finds that “determination of optimal or workable
concentration of boron nitride in the composition of Butts et al. by routine
experimentation is obvious absent showing of criticality of the claimed
concentration” (Ans. 19).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Butts and Clere render claim
1 obvious?
Findings of Fact
6. Butts teaches “a composition containing sub-micron boron
nitride powder having an average particle size of less than 1 micron. In one
example, the composition has the effect of blurring lines, scars, and/or
wrinkles on the skin while providing opacity to hide color blemishes” (Butts
1 ¶ 0009).
7. Butts teaches that the “sub-micron BN blends of the present
invention can be used in any type of skin treatment or cosmetic product . . . .
The cosmetic or makeup products of the invention include, but are not
limited to, liquid foundations, blushes, pressed or loose powders” (Butts 4 ¶
0039).
8. Butts teaches that “JP Patent Publication No. 2003-104841
discloses cosmetic compositions with spherical BN particles having an
average diameter of 1 to 20 µm” (Butts 1 ¶ 0007).
9. Butts teaches that “the use of certain BN powder, specifically,
sub-micron powder, in a formulation such as a foundation, surprisingly
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creates the illusion of substantially flawless skin, by blurring the appearance
of wrinkles and lines on the wearer’s skin while also providing noticeable
coverage of color blemishes, spots and defects” (Butts 2 ¶ 0019).
Analysis
Butts teaches and focuses on boron nitride powders or liquid
foundations with an average particle size of less than 1 micron in order to
blur lines, scars or wrinkles (FF 6-7). Clere teaches cosmetic blushes
containing boron nitride particles “between about 1 and 20 µm, more
typically between about 4 and 9 µm” (Clere, col. 2, ll. 55-57; FF 4).
The Examiner finds it obvious to “modify the cosmetic compositions
of Butts et al. such that to employ boron nitride of Clere et al. One having
ordinary skill in the art would have been motivated to do this to obtain
compositions having high lubricity which would not dry the skin as
suggested by Clere” (Ans. 18).
We do not find the Examiner’s reasoning persuasive. The entire focus
of Butts is on submicron boron nitride particles, and Butts even points out
prior art with “spherical BN particles having an average diameter of 1 to 20
µm” (see Butts 1 ¶ 0007; FF 8). Butts choose submicron particles because
Butts “found that the use of certain BN powder, specifically, sub-micron
powder, in a formulation such as a foundation, surprisingly creates the
illusion of substantially flawless skin, by blurring the appearance of wrinkles
and lines on the wearer’s skin while also providing noticeable coverage of
color blemishes, spots and defects” (Butts 2 ¶ 0019; FF 9).
Thus, the Examiner has provided no reason why the ordinary artisan
would have substituted the larger boron nitride particles of Clere for the
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smaller submicron particles of Butts, since the larger particles would not be
expected to share the wrinkle and line hiding properties of the submicron
particles and the Examiner has provided no evidence that the larger boron
nitride particles of Clere provide superior lubricity or other features relative
to the submicron boron nitride particles taught by Butts.
The Examiner finds that in an “obviousness rejection a combination of
references is used, and the references are relied upon in combination and are
not meant to be considered separately as in a vacuum” (Ans. 27).
We are not persuaded, since the Examiner did not consider the
references in combination, but simply picked a feature from Clere to import
into Butts, without considering the combination of Butts and Clere as a
whole. The use of the larger boron nitride particles of Clere in the cosmetic
of Butts would prevent Butts’s composition from performing its intended
function of hiding wrinkles, scars and lines (FF 9). Thus, it is in considering
the references together that we conclude that they fail to support a finding of
obviousness.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Butts and Clere render claim 1 obvious.
C. Double Patenting
We will consider the numerous double patenting rejections in two
groups.
Group I
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The first group of rejections involves claims of US patents 5,898,009,
6,048,611, 7,445,797, 7,524,560, and US applications 11/555,2905 and
11/555,2926 over claim 1 of the instant application.
We have reviewed the claims of each of these patents and
applications, and conclude that none of these claims teaches or suggests the
use of boron nitride powders with 0.5 to 15% boron nitride particles which
are 10 to 250 µm in size. Claims 1 and 2 of US patent 5,898,009 do not
teach or suggest the concentration of boron nitride particles (see US
5,898,009, col. 6, ll. 20-38). Claims 1-6 of US patent 6,048,511 do not teach
or suggest the concentration of boron nitride particles (see US 6,048,511,
col. 6, ll. 10-48). Claims 1-34 of US patent 7,445,797 do not teach or
suggest the concentration of boron nitride particles (see US 7,445,797, col.
9, l. 46 to col. 12, l. 41). Claims 1-30 of US patent 7,524,560 do not teach or
suggest the concentration of boron nitride particles (see US 7,524,560, col.
17, l. 7 to col. 20, l. 14).
Claims 20-37 of US Application 11/555,290 do not teach a cosmetic
composition, instead teaching a “method for lubricating cable being pulled
through a conduit” (see US 11/555,290, claims filed April 22, 2009). Claims
1 and 3-20 of US Application 11/555,292 also do not teach a cosmetic
composition, instead teaching an “apparatus for lubricating a cable” (see US
11/555,292, claims filed Dec. 10, 2009).

5 US application 11/555,290 matured into US Patent 7,900,892,
issued Mar. 8, 2011.
6 US application 11/555,292 matured in US Patent 8,047,506,
issued Nov. 1, 2011.
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While the Examiner may reasonably find that the “anti-chafing”
element in the preamble of claim 1 simply represents intended use, none of
the patents teaches or suggests the percentage limitations of boron nitride
being claimed. With regard to the two applications on lubricating cable
method and apparatus, we do not find any reason to modify these to form the
claimed composition into an “aqueous dermatologically acceptable carrier”
as required by claim 1, which is reasonably interpreted as a structural
limitation.
Group II
Claim 1 of US Application 11/554,7057 teaches a “topical
composition for applying onto the skin, comprising boron nitride having a
primary average particle size ranging from 10 to about 250 µm” (Claim 1,
US Application 11/554,705, claims filed Sep. 29, 2011). While claim 1 of
US Application 11/554,705 does not teach an aqueous carrier nor the
claimed percent composition of boron nitride, claim 22 of US Application
11/554,705 teaches a “topical composition for applying onto the skin,
comprising 0.1 to 99.9 wt. % boron nitride, wherein the boron nitride has a
graphitization index of less than 7, and wherein the composition is one of an
aerosol, pump spray, liquid, roll-on, lotion, cream, gel, foam, or stick,
wherein said boron nitride is present in an amount of from 5 to 40 wt. % in

7 US application 11/554,705 matured into US Patent 8,206,729,
issued Jun. 26, 2012. The issued claims remain drawn to topical
compositions with the claimed 10 to 250 µm boron nitride particle
size (see claim 1) as well as the 5 to 40 wt% of boron nitride (see
claim 2).
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said composition” (Claim 22, US Application 11/554,705, claims filed Sep.
29, 2011).
Thus, we agree with the Examiner that it would have been obvious
over claims 1 and 22 of US Application 11/554,705 (now US patent
8,206,729) to form a liquid or lotion composition which is aqueous and
which contains boron nitride particles of 10 to about 250 µm with an
overlapping weight percent of 5 to 40% in the absence of any secondary
considerations. Appellants only argument, generic to all of the rejections, is
that the “limitation of an ‘aqueous dermatologically acceptable carrier’ alone
is enough to distinguish the current claims from the claims in the cited
patents and applications” (Reply Br. 6). We are not persuaded because
claims 1 and 22 are clearly drawn to topical compositions for skin, including
aqueous compositions such as liquids, lotions, creams, and gels (see Claims
1 and 22 of US Application 11/554,705, claims filed Sep. 29, 2011).
SUMMARY
In summary, we reverse the rejection of claims 17, 18, and 22 under
35 U.S.C. § 103(a) as obvious over Elliott and Clere.
We reverse the rejection of claims 1-3, 8, 10, 11, 13-17, and 22 under
35 U.S.C. § 103(a) as obvious over Butts and Clere.
We reverse the rejection of
 claims 1 and 8 on the ground of nonstatutory obviousness-type
double patenting over claim 1 of US 5,898,009.
 claims 1 and 8 on the ground of nonstatutory obviousness-type
double patenting over claims 1-6 of US 6,048,511.
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 claims 1 and 8 on the ground of nonstatutory obviousness-type
double patenting over claims 1, 5, 7, 24, 25, 27, 29, and 30 of
US 7,445,797.
 claims 1, 8, and 14 on the ground of nonstatutory obviousness-
type double patenting over claims 1, 3, 23, 27, and 29 of US
7,524,560.
 claims 1-2, 8, 14, 17, 18, and 22 on the ground of nonstatutory
obviousness-type double patenting over claims 1, 2, 5-8, and
10-15 of copending US application 11/555,290.
 claims 1, 8, 14, 17, and 18 on the ground of nonstatutory
obviousness-type double patenting over claims 1-13 of
copending US application 11/555,292.

We affirm the rejection of claims 1-3, 8, 13-18, and 22 on the ground
of nonstatutory obviousness-type double patenting over claims 1 and 22 of
copending US application 11/554,705 (now US patent 8,206,729).

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-IN-PART

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