Kolbe, Ludger et al.

Patent Trials and Appeals Board

Dec 12, 2019

12402985 - (D) (P.T.A.B. Dec. 12, 2019)

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.
12/402,985 03/12/2009 Ludger Kolbe 3321-P36069 8810
13897 7590 12/12/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
FRAZIER, BARBARA S
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUDGER KOLBE, JULIA ECKERT, GITTA NEUFANG,
MICHAEL WOEHRMANN, and STEFANIE KNAUPMEIER
____________

Appeal 2018-007427
Application 12/402,985
Technology Center 1600
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from Examiner’s
decision to reject claims 29–36, 41, 42, 45, 46, and 48. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Beiersdorf AG of Hamburg, Germany” (Appellant’s February 23, 2018
Appeal Brief (Appeal Br.) 3).
2 This Appeal is related to Appeal 2013-005984, Application 12/402,985,
Decision affirming the obviousness rejections of record entered February 19,
2016.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to cooling cosmetic and
dermatological preparations, in particular skin care cosmetic and
dermatological preparations.” (Spec.3 ¶ 2). Claim 29 is reproduced below:
29. A cooling topical cosmetic or dermatological preparation,
wherein the preparation is present as an O/W emulsion and
comprises
(A)(i) (1R,2S,5R)-2-isopropyl-5-methyl-N-(2-(pyridin-
2-yl)ethyl)-cyclohexane carboxamide,
(A)(ii) (1 R,2S,5R)-N-(4-cyanomethyl-phenyl)-2-
isopropyl-5-methylcyclohexane carboxamide, and
(B) menthoxypropanediol.
(Appeal Br. 22.)

Grounds of rejection before this Panel for review:
Claims 29, 30, 34–36, 45, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bell,4 Galopin,5 Furman,6
and Suffis.7
Claims 29, 30, 34–36, 42, 45, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bell, Galopin, Furman, and
Haskel.8

3 Appellant’s March 12, 2009 Specification.
4 Bell et al., WO 2007/019719 A1, published Feb. 22, 2007.
5 Galopin et al., US 2006/0276667 A1, published Dec. 7, 2006.
6 Furman, WO 93/23005, published Nov. 25, 1993.
7 Suffis et al., US 5,378,468, issued Jan. 3, 1995.
8 Haskel et al., US 2008/0089850 A1, published Apr. 17, 2008.
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Claims 29–36, 42, 45, 46, and 48 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bell, Galopin, Furman,
Haskel, and Suares.9
Claims 29, 30, 34–36, 41, 42, 45, and 48 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Bell, Galopin,
Furman, Haskel, and Lahanas.10
Claims 29–48 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
Kolbe.11

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Bell “relates to cooling compounds,” which are “chemical
compounds that impart a cooling sensation to the skin or the mucous
membranes of the body” (Bell 1; see generally Final Act.12 3).
FF 2. Bell exemplifies the preparation of Appellant’s compound A(i),
“(1R,2S,5R)-2-isopropyl-5-methyl-N-(2-(pyridin-2-yl)ethyl)
cyclohexanecarboxamide” (Bell 5:Example 2; see Final Act. 3).
FF 3. Bell discloses that cooling compounds within the scope of its
disclosure “may be used alone or in combination with other cooling

9 Suares et al., WO 00/62737, published Oct. 26, 2000.
10 Lahanas et al., US 6,290,941 B1, issued Sept. 18, 2001.
11 Kolbe et al., US 8,343,465 B2, issued Jan. 1, 2013.
12 Examiner’s August 3, 2017 Final Office Action.
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compounds known in the art, e.g., . . . CoolAct™ 10” (Bell 4; see Final Act.
3).
FF 4. Examiner finds that “Bell does not specifically teach the addition of
[Appellant’s] compound A(ii), and does not specifically teach the
composition is in the form of an emulsion” (Final Act. 4).
FF 5. Galopin relates to “[c]ooling compounds,” which are “chemical
compounds that impart a cooling sensation to the skin or the mucous
membranes of the body” (Galopin ¶ 2; see Final Act. 4).
FF 6. Galopin exemplifies the preparation of Appellant’s compound A(ii),
“N-(4-cyanomethylphenyl)p-menthanecarboxamide” (Galopin 2:Example 1;
see Final Act. 4). (Although Galopin uses different nomenclature, Appellant
does not dispute that Galopin discloses compound A(ii). See Appeal Br. 11.)
FF 7. Galopin discloses that cooling compounds within the scope of its
disclosure “may be used alone or in combination with other cooling
compounds known in the art, e.g., . . . CoolAct™ 10” (Galopin ¶ 19; see
Final Act. 4).
FF 8. Galopin discloses that its “cooling compounds are distinguished
from similar compounds of the prior art by their surprisingly high cooling
effect (up to 10 times higher than that of similar known compounds) and by
the longevity of the cooling effect, which adds to their attractiveness in a
large variety of products” (Galopin ¶ 15; see also id. ¶ 17; see Final Act. 4).
FF 9. Examiner finds that Bell and Galopin both exemplify a composition
comprising 0.05% active, i.e., cooling, agent (Final Act. 5 (citing Bell,
Examples 2 and 6; Galopin, Examples 2 and 9)).
FF 10. Examiner finds that Furman discloses the formulation of topical
cooling compositions as an emulsion and exemplifies such a composition
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formulated as an “o/w emulsion” (Final Act. 4 (citing Furman 9 and
Example 6)).
FF 11. Examiner relies on Suffis to establish that “skin typically has a pH of
5.5-7” (Final Act. 5 (citing Suffis, Abstract)).
FF 12. Examiner finds that the combination of Bell, Galopin, Furman, and
Suffis does “not specifically teach the addition of an antiperspirant and/or
deodorant” (Final Act. 6).
FF 13. Haskel discloses that “menthoxypropanediol” is “commercially
available under the tradename Coolact 10” (Haskel ¶ 10; see Final Act. 6).
FF 14. Examiner finds that Haskel discloses cooling “compositions may
comprise alcohols, vitamins, antiperspirants, deodorants, etc. and have a
cooling sensation on application to the body and methods of providing
cooling to the body with the composition” (Final Act. 6 (citing Haskel ¶¶ 19,
22, 23, 26, 27, and 37)).
FF 15. Haskel discloses cooling compositions comprising first and second
compounds that provide a cooling sensation together with a cationic
polymeric compound (Haskel: Abstract; id. ¶¶ 5 and 10; see generally Final
Act. 7).
FF 16. Haskel’s disclosure encompasses any compounds having the
characteristics of a “sensate,” which “refers to a compound that provides a
cooling, tingling or refreshing sensation” (Haskel ¶ 10; see generally Final
Act. 7).
FF 17. Haskel discloses compositions, wherein “the amounts of the first
sensate are generally kept below about 1.0%, e.g., about 0.01 to about 0.3%”
and “the amounts of the second sensate are about 0.01 to about 0.45%”
(Haskel ¶ 12; see Final Act. 7).
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FF 18. Examiner finds that the combination of Bell, Galopin, Furman, and
Haskel fails to suggest “ratios of components with [Appellant’s] claimed
ranges, including about 1:3 to about 1:20 . . ., about 1:4 to about 1:15 . . .,
not higher than about 1:10 . . ., and about 1:4 to about 1:10” (Final Act. 7).
FF 19. Suares discloses “[a] sensate composition . . . for imparting a long
lasting cooling effect on skin” (Suares: Abstract; see Final Act. 7).
FF 20. Suares discloses that “[n]ew cooling agents are continuously being
sought which exhibit improved properties. Attributes of interest are
odorlessness, tastelessness, relatively low burning sensation and enhanced
cooling effects” (Suares 2:7–10; see Final Act. 7).
FF 21. Suares discloses a cosmetic composition (see Suares 2:13–14; see
also Final Act. 7).
FF 22. Suares discloses the use of “menthoxypropanediol as a cooling
enhancer” (Suares 2:31; see Final Act. 7).
FF 23. Examiner finds that Suares discloses a composition comprising
menthoxypropanediol in a “range from 0.0001 to 2%, 0.005[] to 1%, 0.01 to
0.5% or 0.05 to 0.2%” and “[i]n combination with other cooling agents, the
ratio may range from 1,000:1 to 1:100 or 100:1 to 1:20” (Final Act. 7 (citing
Suares 4:24–5:2)).
FF 24. Examiner finds that the combination of Bell, Galopin, Furman, and
Haskel does not disclose a composition formulated as a “roll-on” (Final Act.
8–9).
FF 25. Lahanas discloses that “deodorants are applied in stick, aerosol
spray, roll-on, or cream form” (Lahanas 5:8–9; see Final Act. 9).

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ANALYSIS
The rejection over the combination of Bell, Galopin, Furman, and Suffis:
Examiner reasons that “because both Bell and Galopin teach a
[composition comprising a] combination of cooling agents,” one of ordinary
skill in this art would have found it prima facie obvious to include Galopin’s
“N-(4-cyanomethylphenyl) p-menthanecarboxamide,” i.e., Appellant’s
compound A(ii), in Bell’s composition for benefit of achieving a
composition with high cooling effect (see Final Act. 4; see also FF 1–8,
FF 13). Examiner further reasons that one of ordinary skill in this art would
have been motivated to formulate a composition suggested by the
combination of Bell, Galopin, Furman, and Suffis “as an o/w emulsion,
because emulsions, including o/w emulsions, are known forms of
composition with cooling agents, as taught by Furman” (see Final Act. 4–5;
see also FF 10).
Thus, based on the combination of Bell, Galopin, Furman, and Suffis,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie
obvious to a person having ordinary skill in the art at the time
the invention was made to combine the teachings of Galopin
and Furman with Bell, and formulate the composition of Bell
with the cooling compound A(ii) in the form of an o/w
emulsion; thus arriving at [Appellant’s] claimed invention.
(Final Act. 4.)

Claim 29:
Appellant’s claim 29 is reproduced above.
Bell discloses compositions comprising cooling compounds,
exemplifies the preparation of Appellant’s compound A(i), and discloses
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that its compounds may be used alone or in combination with other cooling
compounds known in the art, such as CoolAct™ 10 (menthoxypropanediol)
(see FF 1–3, FF 13). Galopin discloses that its cooling compound, i.e.,
Appellant’s compound A(ii), exhibits “surprisingly high cooling effect (up
to 10 times higher than that of similar known compounds)” and “may be
used alone or in combination with other cooling compounds known in the
art” (see FF 5–8). Therefore, we are not persuaded by Appellant’s
intimation that a person of ordinary skill in this art would not have found it
prima facie obvious to prepare a composition comprising Appellant’s
compound A(i) and another cooling compound, such as “N-(4-
cyanomethylphenyl)p-menthanecarboxamide,” i.e., Appellant’s compound
A(ii), disclosed by Galopin (see Appeal Br. 10; see generally id. at 8–10).
Nonetheless, Appellant contends that because “‘[a] person of ordinary
skill is . . . not an automaton’ and would use ‘common sense’,” “[i]t is not
seen that one of ordinary skill in the art would be motivated to combine two
highly effective cooling compounds such as compound (A)(i) and compound
(A)(ii) in the same preparation” (Appeal Br. 10–11 (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398 (2007); see also Reply Br. 3). We are not
persuaded. Appellant fails to identify a disclosure in either Bell or Galopin
that limits the choice of “other” cooling compounds that may be combined
with compound A(i) or A(ii) (cf. FF 3 and 7). In addition, notwithstanding
Appellant’s unsupported contentions to the contrary, we find that a person of
ordinary skill in the art would combine cooling compositions, as suggested
by both Bell and Galopin, to achieve a desired cooling effect (cf. Appeal Br.
11–12 (Appellant contends that “it is not seen that one of ordinary skill in
the art would have been motivated to additionally incorporate in a
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corresponding preparation a compound which has a significantly lower
cooling effect than either of compounds (A)(i) and (A)(ii),” to achieve a
desired cooling effect); Reply Br.13 2–3 (Appellant contends that the prior
art fails to “prompt[] one of ordinary skill in the art to combine one of the
most effective cooling compounds of BELL with a significantly less
effective cooling compound”)). Stated differently, on this record,
notwithstanding Appellant’s contention to the contrary, the fact that neither
Bell nor Galopin expressly teaches a composition comprising both
compounds A(i) and A(ii) does not support a conclusion of non-obviousness,
where, as here, the prior art suggests the combination of cooling agents to
achieve a desired effect (see Appeal Br. 11; Reply Br. 2–3 (“Examiner . . .
has not explained what the basis for combining two cooling compounds
which is different from their cooling effectiveness might be”); see also
Reply Br. 5).
Because Bell and Galopin both disclose that their cooling compounds,
i.e., compounds (A)(i) and (A)(ii), may be used in combination with other
cooling compounds known in the art, we are not persuaded by Appellant’s
contention that a person of ordinary skill in this art would not “add
menthoxypropanediol[, i.e., a cooling compound known in this art,] to a
preparation which already contains two compounds [with] a much higher
cooling effect than menthoxypropanediol” (Appeal Br. 12). For the same
reasons, we are not persuaded by Appellant’s contention that those of
ordinary skill in this art would not combine compounds (A)(i), (A)(ii), and
menthoxypropanediol, to achieved a desired cooling effect, because the

13 Appellant’s July 13, 2018 Reply Brief.
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compounds are not “inexpensive” (see Appeal Br. 12–13; see also Reply Br.
4).
Bell and Galopin both disclose topical cooling compositions for
application to skin (see FF 1 and 5). Furman discloses that topical cooling
compositions may be formulated as an O/W emulsion (see FF 10).
Therefore, we are not persuaded by Appellant’s contention that the
combination of Bell, Galopin, and Furman fails to suggest a composition,
within the scope of Appellant’s claimed invention, that is formulated as an
O/W emulsion (see Appeal Br. 14).

Claim 34:
Appellant’s claim 34 ultimately depends from and further limits the
preparation of Appellant’s claim 29 to comprise a total of at least about
0.1% and not more than about 1% by weight of (A)(i) plus (A)(ii), wherein a
weight ratio of [(A)(i) plus (A)(ii)] : (B) is from about 1:4 to about 1:15.
Examiner finds that Bell and Galopin both exemplify a composition
comprising 0.05% active, i.e., cooling, agent (FF 9). Examiner finds that
because Bell and Galopin both exemplify a composition comprising 0.05%
active agent, it would have been prima facie obvious to combine the active
agents from Bell and Galopin to arrive at a composition comprising 0.1%
active agent (Final Act. 5; see Ans.14 8–9 (Examiner finds that “both Bell
and Galopin exemplify amounts of active of 0.05%, which results in 0.1%
total active present” in a combined composition) (emphasis omitted)).

14 Examiner’s May 16, 2018 Answer.
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We understand Examiner’s rationale to mean that having exemplified
compositions comprising a cooling agent and disclosing that more than one
cooling agent may be included in a composition, the combination of Bell and
Galopin set forth the general conditions required for a cooling composition
and a person of ordinary skill in this art would have found it prima facie
obvious to discover the optimum or workable ranges of cooling agent to
achieve a desired cooling effect when combined into a topical cooling
composition (see generally FF 1–9). See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”).
Therefore, we are not persuaded by Appellant’s contention that
because Bell and Galopin do not exemplify a composition comprising “more
than 0.05 % of active,” it would not have been obvious to prepare a topical
cooling composition comprising “at least about 0.1 %” active agent (Appeal
Br. 14).

The rejection over the combination of Bell, Galopin, Furman, and Haskel:
Appellant’s claim 42 is representative. Appellant’s claim 42 depends
from and further limits Appellant’s claim 29 to comprise “at least one
antiperspirant and/or at least one deodorant” (Appeal Br. 23).
Based on the combination of Bell, Galopin, Furman, and Haskel,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious “to include a deodorant in the
composition of the combined references” (Final Act. 7; see FF 1–10 and 13–
17). We find no error in Examiner’s prima facie case of obviousness.
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For the reasons discussed above, we found no deficiency in the
combination of Bell, Galopin, and Furman. Therefore, we are not persuaded
by Appellant’s contention that Haskel fails to make up for Appellant’s
alleged deficiencies in the combination of Bell, Galopin, and Furman (see
Appeal Br. 15).

The rejection over the combination of Bell, Galopin, Furman, Haskel, and
Suares:
Based on the combination of Bell, Galopin, Furman, Haskel, and
Suares, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious to follow the general
conditions set forth in Bell, Galopin, Furman, Haskel, and Suares to prepare
a topical cooling preparation, wherein the amounts and weight ratios of the
active agents are optimized to achieve a desired cooling effect (see Final
Act. 8; see also FF 1–10 and 13–23). We find no error in Examiner’s prima
facie case of obviousness. See In re Aller, 220 F.2d at 456 (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).

Claim 29:
Appellant’s claim 29 is reproduced above.
For the reasons set forth above, we find no error in Examiner’s
conclusion that the combination of Bell, Galopin, and Furman makes
obvious the subject matter of Appellant’s claim 29 (cf. Appeal Br. 15–16).
Because Appellant’s claim 29 is not limited to particular weight ranges, we
are not persuaded by Appellant’s contentions regarding weight ranges (see
Appeal Br. 15–19).
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Claim 31:
Appellant’s claim 31 depends from and further limits Appellant’s
claim 29 to require a [(A)(i) plus (A)(ii)] : (B) weight ratio from 1 : 3 to
about 1 : 20 (see Appeal Br. 22).
We are not persuaded by Appellant’s contention that a person of
ordinary skill in this art would not have found it prima facie obvious to
combine Bell, Galopin, Furman, Haskel, and Suares to arrive at the weight
ratios of Appellant’s claimed invention because Appellant’s claimed weight
ratio falls within the cooling agent weight ratio ranges disclosed in Suares
(Appeal Br. 16–17). See Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004) (“[W]here there is a range disclosed in the
prior art, and the claimed invention falls within that range, there is a
presumption of obviousness.”). Thus, we find no error in Examiner’s
rationale that a person of ordinary skill in this art would have found it prima
facie obvious to follow the general conditions set forth in Bell, Galopin,
Furman, Haskel, and Suares to prepare a topical cooling preparation,
wherein the amounts and weight ratios of the active agents are optimized to
achieve a desired cooling effect (see Final Act. 8).
A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
Therefore, we are not persuaded by Appellant’s contentions regarding
Suares’ “preferred and most preferred weight ratios” (Appeal Br. 17; see
also id. at 17–18).
Appellant contends that “the weight ratios disclosed by SUARES do
not apply to each and every combination of menthoxypropanediol with any
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other compound but to combinations of menthoxypropanediol with
structurally closely related compounds” (Appeal Br. 18; see Reply Br. 6–7).
We are not persuaded. Although, as Appellant points out, Suares does not
mention compounds (A)(i) and (A)(ii), we find no evidence on this record to
support a conclusion that a person of ordinary skill in this art would not have
recognized that menthoxypropanediol may be combined with compounds
(A)(i) and (A)(ii) to attain a composition exhibiting a desired cooling effect
(see Appeal Br. 16 and 18). Therefore, we are not persuaded by Appellant’s
contention that “Examiner has not provided any evidence that one of
ordinary skill in the art would assume that in the preparations recited in the
instant claims menthoxypropanediol is a cooling enhancer and the two
remaining compounds . . . [(A)(i) and (A)(ii)] are cooling agent and a
sensation extender” (Reply Br. 7).
To the contrary, Bell discloses that compound (A)(i) may be
combined with CoolAct™ 10 (see FF 2–3). Similarly, Galopin discloses
that compound (A)(ii) may be combined with CoolAct™ 10 (see FF 6–7).
Haskel discloses that “menthoxypropanediol” is “commercially available
under the tradename Coolact 10” (FF 13). Therefore, we are not persuaded
by Appellant’s contention that a person of ordinary skill in this art would not
have appreciated that menthoxypropanediol may be combined with
compounds (A)(i) and (A)(ii) to achieve a desired cooling effect (see Appeal
Br. 18). Thus, notwithstanding Appellant’s contention to the contrary, we
find no error in Examiner’s rationale that a person of ordinary skill in the art
would have found it prima facie obvious to follow the general conditions set
forth in Bell, Galopin, Furman, Haskel, and Suares to prepare a topical
cooling preparation comprising menthoxypropanediol and compounds (A)(i)
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and (A)(ii), wherein the amounts and weight ratios of the active agents are
optimized to achieve a desired cooling effect (see Final Act. 8; cf. Appeal
Br. 19 (“In view of the fact that compounds (A)(i) and (A)(ii) are much more
effective than [menthoxypropanediol] . . ., it is not seen that one of ordinary
skill in the art would have any motivation to optimize the weight ratio of
these compounds”)).

The rejection over the combination of Bell, Galopin, Furman, Haskel, and
Lahanas:

Claim 41:
Appellant’s claim 41 is representative. Appellant’s claim 41 depends
from and further limits Appellant’s claim 29 to “an aerosol or a roll-on”
preparation (Appeal Br. 23).
Based on the combination of Bell, Galopin, Furman, Haskel, and
Lahanas, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious “to formulate the preparation
[suggested by the combination of Bell, Galopin, Furman, and Haskel,] as a
roll-on,” i.e., a conventional formulation for a deodorant composition (Final
Act. 9; see FF 1–10, 13–17, 24, and 25). We find no error in Examiner’s
prima facie case of obviousness.
For the reasons discussed above, we found no deficiency in the
combination of Bell, Galopin, Furman, and Haskel. Therefore, we are not
persuaded by Appellant’s contention that Lahanas fails to make up for
Appellant’s alleged deficiencies in the combination of Bell, Galopin,
Furman, and Haskel (see Appeal Br. 20).

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CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claims 29 and 34 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bell, Galopin, Furman, and Suffis is
affirmed. Claims 30, 35, 36, 45, and 48 are not separately argued and fall
with claim 29. Claim 36 is not separately argued and falls with claim 34.
The rejection of claim 42 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Bell, Galopin, Furman, and Haskel is affirmed.
Claims 29, 30, 34–36, 45, and 48 are not separately argued and fall with
claim 42.
The rejection of claims 29 and 31 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bell, Galopin, Furman, and Haskel,
and Suares is affirmed. Claims 30, 32–36, 42, 45, 46, and 48 are not
separately argued and fall with claim 29.
The rejection of claim 41 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Bell, Galopin, Furman, Haskel, and Lahanas is
affirmed. Claims 29, 30, 34–36, 42, 45, and 48 are not separately argued
and fall with claim 41.

Obviousness-type Double Patenting:
ISSUE
Should the obviousness-type double patenting rejection be summarily
affirmed by the Board?

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ANALYSIS
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.” Manual of Patent
Examining Procedure § 1205.02 (Rev. 08.2017, January 2018). Appellant
does not address the obviousness-type double patenting rejection, therefore,
it is summarily affirmed.
CONCLUSION OF LAW
The obviousness-type double patenting rejection is summarily
affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
29, 30, 34–36,
45, 48
103 Bell, Galopin,
Furman, Suffis
29, 30, 34–
36, 45, 48

29, 30, 34–36,
42, 45, 48
103 Bell, Galopin,
Furman, Haskel
29, 30, 34–
36, 42, 45,
48

29, 30–36, 42,
45, 46, 48
103 Bell, Galopin,
Furman, and
Haskel, Suares
29, 30–36,
42, 45, 46,
48

29, 30, 34–36,
41, 42, 45, 48
103 Bell, Galopin,
Furman, Haskel,
Lahanas
29, 30, 34–
36, 41, 42,
45, 48

29–36, 41, 42,
45, 46, 48
Obviousness-type
Double Patenting
29–36, 41,
42, 45, 46,
48

Overall
Outcome
29–36, 41,
42, 45, 46,
48

Appeal 2018-007427
Application 12/402,985

18
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