Ex Parte Wischhoefer et al

Patent Trial and Appeal Board

Nov 2, 2016

12441550 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/441,550 01/13/2011
13897 7590 11/04/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Svea Wischhoefer
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.
3321-P36061 3340
EXAMINER
PARK, HAEJIN S
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEA WISCHHOEFER, NILS HOFFMANN,
SILKE WEYLAND, and JESSICA SCHAEFER1
Appeal2014-006956
Application 12/441,550
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
cosmetic capsule which have been rejected based on obviousness and
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Beiersdorf AG. (Appeal
Br. 3.)
Appeal2014-006956
Application 12/441,550
STATEMENT OF THE CASE
Claims 24--43 are on appeal. Claim 24 is illustrative and reads as
follows:
24. A cosmetic capsule, wherein the capsule can be topically applied and
rubbed in and comprises a casing material and a filling material enclosed by
the casing material, the casing material being solid, semi-solid or stable in
form at room temperature and being composed of an emulsion which
comprises one or more waxes that are solid above 25°C, and the filling
material comprising a preparation which has an abrasive effect and
comprises one or more abrasive peeling agents in one of
(i) an oil or lipid mixture having a viscosity of from 3 to 50,000 mPa*s at
25°C·
'
(ii) a surfactant-containing preparation; and
(iii) an emulsion.
The claims stand rejected as follows: 2
Claims 24 and 28--43 under 35 U.S.C. § 103(a) as obvious based on
Kallmayer3 and Vernice4 (Final Rej. 5 3);
Claims 24--43 under 35 U.S.C. § 103(a) as obvious based on
Kallmayer, Vernice, and Wagner6 (Final Rej. 6); and
Claims 24--43, provisionally, for obviousness-type double patenting
based on claims 10-29 of application 12/441,553 (Final Rej. 8).
2 In addition to the above rejections, the Examiner provisionally rejected the
claims for obviousness-type double patenting based on the claims of
application 13/202,107. (Final Rej. 9.) The '107 application went
abandoned Aug. 11, 2014, so this provisional rejection is moot.
3 Kallmayer et al., US 2008/0089913 Al, published Apr. 17, 2008.
4 Vernice et al., US 2006/0127427 Al, published Jun. 15, 2006.
5 Office Action mailed April 25, 2013.
6 Wagner et al., US 5,948,416, issued Sept. 7, 1999.
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Appeal2014-006956
Application 12/441,550
I
The Examiner has rejected claims 24 and 28--43 as obvious based on
Kallmayer and Vernice, and has rejected claims 24--43 as obvious based on
Kallmayer, Vernice, and Wagner. The same issue is dispositive for both
rejections.
The Examiner finds that Kallmayer discloses cosmetic capsules
meeting most of the limitations of claim 24 but "does not specifically
disclose [an] abrasive peeling agent." (Final Rej. 4.) The Examiner finds,
however, that Kallmayer discloses that is capsules can "contain 'particles
which are insoluble in both phases' including synthetic and inorganic
particles such as polyethylene, silicates, and aluminosilicates." (Id.)
The Examiner also finds that "Vernice teaches exfoliating products
containing abrasive particles in a shell," including "polyethylene powders
and finely ground minerals such as silica, glacial limestone, aluminum
oxide, or talc." (Id.) The Examiner concludes that it would have been
obvious to "prepare Kallmayer's compositions to include the polyethylene,
silicates, or aluminosilicate powders of sufficient size to have abrasive or
peeling effects." (Id. at 5.) The Examiner finds that the combination would
have been obvious because:
(Id.)
(i) both Kallmayer and Vernice are drawn to cosmetic topical
compositions comprising a coated solid filling material, (ii)
wherein the solid filling may be polyethylene, silicate, and/or
aluminosilicate powder, (iii) Vernice teaches that polyethylene,
silicate, and/or aluminosilicate powders having abrasive or
peeling effect can be used, and (iv) the skilled person would have
appreciated that providing exfoliation effect is beneficial to skin
health and appearance.
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Appeal2014-006956
Application 12/441,550
We agree with the Examiner's findings of fact and conclusion that the
claimed product would have been obvious based on Kallmayer and Vernice.
Appellants argue, however, that Kallmayer "indicates that instead of
using emulsifiers or surfactants for stabilizing a corresponding emulsion one
can use particles which are insoluble in both phases" and "even if the filling
of the capsules of KALLMA YER were assumed to contain any particulate
material, the corresponding particles would be sufficiently small to exhibit
an emulsion-stabilizing effect and would thereby be too small to be able to
exert an abrasive action." (Appeal Br. 7-10.7) Appellants also argue that
"one of the advantages of the capsules ofKALLMAYER ... is that they do
not leave behind any perceptible residues on the skin and bring about a
pleasant feel on the skin." (Id. at 13.)
The Examiner responds to these arguments by pointing out that
"Kallmayer also teaches cleansing or washing compositions that are washed
or rinsed off." (Ans. 5.)
Kallmayer discloses that its capsule "can also be used as a cleansing
capsule." (Kallmayer i-f 199.) Kallmayer states that
[ o ]f advantage particularly when providing the capsules
containing surfactants is the combination of the washing-active
substances in the filling with the wax in the envelope. In this
way, upon dissolution of the capsules during rubbing or under
warm water, a formulation is obtained which foams and, as a
7 Appellants cite two references to support their position that Kallmayer
would be understood to describe "Pickering emulsions." (Appeal Br. 7-10.)
However, Appellants have not pointed to any previous admission of these
references into the record, and new evidence cannot be submitted with an
appeal brief, with exceptions not relevant here. 37 C.F.R. § 41.33.
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Appeal2014-006956
Application 12/441,550
result of the wax content, is able to also remove water-resistant
residues, such as, for example, make-up.
(Id. ii 202.)
Along the same line, Vernice states that "[ n ]umerous exfoliating
abrasives have been known in the art, including ... synthetic polymers such
as polyethylene powders and granulated particles ... and finely ground
minerals such as silica, glacial limestone, aluminum oxide, or talc."
(Vernice ii 4.) Vernice states that "water insoluble abrasive particles such as
minerals and walnut shells have been used widely in water-based cosmetic
products and they are generally expected to be removed from the skin by
wiping or rinsing with water after application to the parts of the body to be
cleaned." (Id. ii 5.)
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to include known exfoliating abrasives in
Kallmayer's cleansing capsules for their known use in providing "deep
cleansing in order to remove ... sebaceous secretions, soil deposits and dead
skin resulting from desquamation of the epidermal tissue." (Vernice ii 2.)
Kallmayer discloses that the filling of its capsules can contain particles such
as "natural or synthetic polymers (polyethylene, nylon, starch and its
derivatives) or inorganic particles (Ti02, Ah03, BaSQ4, BN, silicates,
alumosilicates)." (Kallmayer ii 128.) The cited references therefore support
a reasonable expectation of incorporating Vernice's exfoliating agents (e.g.,
polyethylene powder or particles, silica, or aluminum oxide) into
Kallmayer' s cleansing capsule embodiment.
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Appeal2014-006956
Application 12/441,550
We affirm the rejection of claim 24 under 35 U.S.C. § 103(a) based on
Kallmayer and Vernice. Claims 28--43 have not been argued separately and
therefore fall with claim 24. 37 C.F.R. § 41.37(c)(l)(iv).
With regard to the rejection of claims 24--43 under 35 U.S.C. § 103(a)
based on Kallmayer, Vernice, and Wagner, Appellants argue only that
Wagner does not cure the deficiencies of Kallmayer and Vernice. (Appeal
Br. 15-16.) Because we agree with the Examiner that Kallmayer and
Vernice support a prima facie case of obviousness, Appellants' argument is
unpersuasive.
II
The Examiner provisionally rejected claims 24--43 based on claims
10-29 of application 12/441,553. The '553 application issued as US Patent
8,691,249 (April 8, 2014), so the rejection is no longer provisional.
The Examiner finds that the "primary difference between the claim
sets is that the '553 application's claims do not require the capsule to be
composed of an emulsion. However, the claims recite [] the capsule can
comprise emulsifier which indicates that the capsules can be emulsions as in
the present claims." (Final Rej. 8.)
We agree with the Examiner that the claim 24 on appeal is directed to
a product that is not patentably distinct from that of the '249 patent. Claim 1
of the '249 patent is directed to a "cosmetic peeling preparation comprising
a plurality of capsules," comprising a casing material that can be selected
from waxes and emulsifiers or mixtures thereof, and a capsule filling
comprising "an oil or lipid mixture having a viscosity of from 3 to 50,000
mPa*s at 25°C" and a solid substance having an abrasive effect. ('249
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Appeal2014-006956
Application 12/441,550
patent 10:2-20.) Thus, claim 1 of the '249 patent is directed to an invention
that is encompassed by claim 24 on appeal. Claim 24 is therefore not
patentably distinct from the invention claimed in the '249 patent.
Appellants argue that the instant application has an earlier effective
filing date than the '553 application and, under MPEP § 804(I)(B)(l ), the
provisional rejection should be withdrawn in the earlier-filed application and
maintained in the later-filed one. (Appeal Br. 16.)
That guidance, however, applies only when the two conflicting
applications are co-pending. It does not apply where, as here, the later-filed
application has already issued as a patent. The rejection of claim 24 for
obviousness-type double patenting is affirmed.
Claims 25--43 have not been argued separately and therefore, fall with
claim 24. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm all of the rejections on appeal.
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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