Nohbo,LLC

Patent Trials and Appeals Board

Jan 21, 2021

2020003703 (P.T.A.B. Jan. 21, 2021)

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.
15/986,592 05/22/2018 Benjamin Gabriel STERN 58976-704.201 5800
21971 7590 01/21/2021
WILSON SONSINI GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
EXAMINER
ALLEY, GENEVIEVE S
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
01/21/2021 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BENJAMIN GABRIEL STERN, ROBERT HUTTON RAY,
JAMES J. RAMIREZ, and MATTHEW GERNSTEIN
__________

Appeal 2020-003703
Application 15/986,592
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, MICHAEL A. VALEK, and
JAMIE T. WISZ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
single-use hygiene product pod comprising about 25 wt% to about 70 wt%
of butylene glycol and surfactant. The Examiner rejected the claims as
obvious. 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 Nohbo, LLC
(see Appeal Br. 2). We note this Appeal is related to Appeals 2020-001091
and 2020-00175.
2 We have considered the Specification of May 22, 2018 (“Spec.”); Final
Office Action of June 24, 2019 (“Final Action”); Appeal Brief of Nov. 18,
2019 (“Appeal Br.”); Examiner’s Answer of Mar. 19, 2020 (“Ans.”); and
Reply Brief of Apr. 16, 2020 (“Reply Br.”).
Appeal 2020-003703
Application 15/986,592

2
Statement of the Case
Background
“Hygiene products, such as shampoo, bodywash, shaving cream, and
conditioner are usually . . . provided in small bottles for use in the hospitality
and/or travel industries” (Spec. ¶¶ 3–4). “However, the small bottles of
shampoo/conditioner/shaving cream generally found in the hospitality
industry have a high packaging to product ratio, which contributes to higher
costs and excessive amounts of waste” (id. ¶ 4). The Specification teaches
“a hygiene product pod comprising a water-soluble envelope and a hygiene
product sealed in the envelope in which the hygiene product includes an
active agent and a carrier comprising butylene glycol in an amount ranging
from about 40 wt% to about 70 wt%,” (id. ¶ 8).
The Claims
Claims 10–20 are on appeal. Claim 10 is an independent claim, is
representative and reads as follows:
10. A single-use hygiene product pod comprising:
a water-soluble envelope; and
a hygiene product sealed in the envelope, the hygiene
product comprising:
a carrier comprising butylene glycol in an amount ranging
from about 25 wt% to about 70 wt%, based on the total weight
of the hygiene product; and
an active agent comprising at least one surfactant.

The Rejections
A. The Examiner rejected claims 10–15 and 19 under U.S.C. § 103(a) as
obvious over Labeque,3 Wiesche,4 and Jeong5 (Final Act. 4–8).

3 Labeque et al., US 2017/0298216 A1, published Oct. 19, 2017.
Appeal 2020-003703
Application 15/986,592

3
B. The Examiner rejected claim 17 under U.S.C. § 103(a) as obvious
over Labeque, Wiesche, Jeong, and Hilvert6 (Final Act. 8–10).
C. The Examiner rejected claims 16 and 18 under U.S.C. § 103(a) as
obvious over Labeque, Wiesche, Jeong, and Hohenstein7 (Final Act. 10–12).
D. The Examiner rejected claim 20 under U.S.C. § 103(a) as obvious
over Labeque, Wiesche, Jeong, Hohenstein, and Vainshelboim8 (Final Act.
12–13).

A. 35 U.S.C. § 103(a) over Labeque, Wiesche, and Jeong
The Examiner finds Wiesche teaches “a hair treatment composition
containing, based on their weight, (a) 0.01-40 wt% of 3-methyl-1,3-
butanediol (aka isopentyldiol) and (b) 0.1-40 wt% alkylpolyglycoside(s)”
(Final Act. 5). The Examiner finds Wiesche teaches “3-methyl-1,3-
butanediol has nourishing and moisturizing properties, and in combination
with surfactant(s), leads to improved softness and suppleness of the hair” (id.
at 6).
The Examiner finds Jeong teaches “a bubble type waterless shampoo
composition. Jeong teaches that butylene glycol (i.e., 1,3-butanediol) have
functions of providing skin stimulus release and scalp moisturizing” (Final
Act. 6). The Examiner finds it obvious to combine the teachings of Wiesche
and Jeong and “to substitute equivalents, each of which is taught by the prior
art to be useful for the same purpose (3-methyl-1,3- butanediol and 1,3-

4 Schulze Zur Wiesche et al., WO 2012/055584 A2, published May 3, 2012.
5 Jeong, S., US 2016/0143833 A1, published May 26, 2016.
6 Hilvert et al., US 2013/0090279 A1, published Apr. 11, 2013.
7 Hohenstein et al., US 6,566,313 B1, issued May 20, 2003.
8 Vainshelboim et al., US 2010/0313362 A1, published Dec. 16, 2010.
Appeal 2020-003703
Application 15/986,592

4
butanediol for the purpose of providing moisturization to the hair/scalp)” (id.
at 7).
The Examiner further combines the teachings of Wiesche and Jeong
with those of Labeque and finds Labeque teaches a “pouch [that] comprises
a household care composition which includes a shampoo or body wash”
(Final Act. 4). The Examiner finds that Labeque teaches “a water-soluble
film and a composition at least partially enclosed by the water-soluble film
in at least one compartment, where the water-soluble film includes a
polyvinyl alcohol (PVOH) resin blend” (id.).
The Examiner finds it obvious to use the obvious shampoo of
Wiesche and Jeong in the pods of Labeque “for providing the desired
moisture to the subject’s hair” and “for the purpose of cleaning the hair of
the subject” (Final Act. 8).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Labeque, Wiesche, and Jeong render the claims
obvious?
(ii) If so, has Appellant provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness?
Findings of Fact
1. Wiesche teaches: “Hair cleaning products which have increased
hair care effect and particularly improve softness, suppleness and shine of
the hair contain, based on their weight, 0.01 to 40% of weight of 3-methyl-
1,3-butanediol and 0.1 to 40% by weight of alkyl polyglycoside(s)”
(Wiesche, code [57]).
Appeal 2020-003703
Application 15/986,592

5
2. Wiesche teaches “3-methyl-1,3-butanediol . . . which is also
referred to as isopentyldiol, has nourishing and moisturizing properties and,
in combination with surfactant (s), leads to improved softness and
suppleness of the hair” (Wiesche translation 1).
3. Jeong teaches a “bubble type waterless shampoo composition
further includes any one or more of . . . 3 to 5 wt% of butylenes glycol
having functions of providing skin stimulus release and scalp moisturizing”
(Jeong ¶ 18).
4. The structure of 3-methyl-1,3-butanediol is shown below:
1
2
3
4
HO
OH
3-methyl-1,3 butanediol
(see Wiesche Translation 1).
5. The structure of 1,3 butanediol (a type of butylene glycol) is
shown below:
OH
HO 4
3
2
1
1,3 butanediol
6. Labeque teaches “pouches that include a water-soluble film and
a composition at least partially enclosed by the water-soluble film in at least
one compartment, where the water-soluble film includes a polyvinyl alcohol
(PVOH) resin blend” (Labeque ¶ 1).

Appeal 2020-003703
Application 15/986,592

6
7. Labeque teaches these pouches may contain “shampoos, body
washes, [and] other personal care compositions” (Labeque ¶ 36).
8. Labeque teaches “detergent compositions can comprise from
about 1 % to 80% by weight of a surfactant. Surfactant is particularly
preferred as a component of the first composition” (Labeque ¶ 132).
9. Labeque teaches that the solvent system can include “mixtures
of organic solvents with water” where the organic solvent includes “1,3
butanediol” (Labeque ¶ 139).
10. Labeque teaches that the solvent system may be “at least about
1 % to about 50%” by weight of the composition but contain “about 5% to
about 12%, by weight of the composition, of water” (Labeque ¶ 139).
11. Labeque teaches that “glycerol may be present in an amount
less than about 15%, preferably less than about 10%, of the total
composition by weight” (Labeque ¶ 139).
12. Labeque teaches the
choice of solvent type and level is used to control final pouch
quality, including phase stability of the liquid ingredients, the
tightness/floppiness of the pouch, pouch strength and to control
the diffusion of chemistry through the film. Without wishing to
be bound by theory it is believed that preferred solvent systems
(as described above) ensure a good balance of film
plasticization. If the system contains too much water and
glycerol, then the pouches become too floppy, and at too low a
level, the pouches can become too brittle.
(Labeque ¶ 140).
13. Labeque teaches that a pouch “provides for accurate dosing
while eliminating the need for the consumer to measure the composition.
The pouch may also reduce mess that would be associated with dispensing a
similar composition from a vessel” (Labeque ¶ 2).
Appeal 2020-003703
Application 15/986,592

7
Principles of Law
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472-
1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but
unsolved needs, failure of others, unexpected results, commercial success,
copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 4–8, FF 1–13) and agree that Labeque, Wiesche, and Jeong render
claim 10 obvious. We address Appellant’s arguments below.
Obviousness
Appellant contends
contrary to the assertion of the Examiner, Labeque’s teaching
that the composition may include up to about 98% by weight of
the solvent system fails to teach or suggest that the composition
includes an organic solvent (e.g., butylene glycol) concentration
of greater than 15% by weight. This is especially apparent give
than the solvent system is only ever disclosed as including an
organic solvent in combination with water, and the composition
thereof is limited to less than about 20 wt%.
Appeal 2020-003703
Application 15/986,592

8
(Appeal Br. 6).
We find this argument unpersuasive as the Examiner also contends
that it would have been obvious to fill the Labeque pouch, taught by
Labeque for use with shampoos (FF 7), with the obvious shampoo
composition of Wiesche and Jeong (FF 1–3; see Ans. 4–6). Wiesche teaches
a range of butylene glycol that overlaps that recited by claim 1, specifically
teaching “0.01 to 40% of weight of 3-methyl-1,3-butanediol” (FF 1). In
“cases involving overlapping ranges, [courts] have consistently held that
even a slight overlap in range establishes a prima facie case of obviousness.”
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Therefore, the shampoo composition itself would have been obvious
over Wiesche and Jeong. It would further have been obvious to incorporate
this obvious composition into the shampoo containing pouch of Labeque
because Labeque teaches that the use of a pouch “provides for accurate
dosing while eliminating the need for the consumer to measure the
composition. The pouch may also reduce mess that would be associated
with dispensing a similar composition from a vessel” (FF 13). To the extent
that Labeque is argued separately, this argument does not address the totality
of the art in combination.9 Prior art “must be read, not in isolation, but for

9 While we agree with Appellant that Labeque prefers glycol concentrations
less than 15% (FF 11) and does not clearly disclose solvent systems with 40
to 70% butylene glycol, Labeque does teach that the use of 1,3 butanediol
(FF 9) in a solvent system may be up to 50% of the weight of the
composition and comprise as little as 5% water by weight (FF 10). That
would result in a shampoo solvent system 45% weight of an organic solvent
like 1,3 butanediol and 5% by weight of water, well within the scope of
claim 10. We do not, however, rely upon this reasoning.
Appeal 2020-003703
Application 15/986,592

9
what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant contends that “Wiesche fails to disclose any other diols that
may be included in the composition” (Appeal Br. 7). Appellant contends
“butylene glycol may refer to one of four different stable butanediol
structural isomers, namely, 1,2-butanediol, 1,3-butanediol, 1,4-butanediol, or
2,3-butanediol. In other words, butylene glycol is not a methylated diol,
such as isopentyldiol” (id. at 7).
We are not persuaded. As Appellant acknowledges, butylene glycol
may refer to 1,3 butanediol (FF 5) disclosed by Jeong as a useful
moisturizing agent in shampoo (FF 3). Wiesche teaches that isopentyldiol
(also known as 3-methyl-1,3-butanediol) is a useful moisturizing agent in
shampoo (FF 2, 4). These compounds differ by a single methyl group and
are therefore reasonably understood as homologs (see FF 4–5). “A
homologous series is a family of chemically related compounds, the
composition of which varies from member to member by CH2.” In re
Henze, 181 F.2d 196, 200 (CCPA 1950). Thus, we are persuaded by the
Examiner’s reasonable finding that it would have been obvious to substitute
one known homologous10 moisturizing agent for another, using the amounts
desired by Wiesche. Wrigley found a “strong case of obviousness” based on
a claim that “recites a combination of elements that were all known in the

10 “If an examiner considers that he has found prior art close enough to the
claimed invention to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs, isomers, etc.) of the
prior art compound(s), then there arises what has been called a presumption
of obviousness or a prima facie case of obviousness.” In re Dillon, 919 F.2d
688, 696 (Fed. Cir. 1990) (en banc).
Appeal 2020-003703
Application 15/986,592

10
prior art, and all that was required to obtain that combination was to
substitute one well-known . . . agent for another.” Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
Appellant contends:
Jeong discloses a waterless shampoo composition that may
include various optional additives, such as “3 to 5 wt% of
butylenes [sic] glycol having functions of providing skin
stimulus release and scalp moisturizing”. Jeong, ¶¶ [0018],
[0024]. Therefore, Jeong discloses compositions that include at
most 5 wt% butylene glycol, which is a lower concentration
than the 15 wt% or less disclosed in Labeque.
(Appeal Br. 7).
We find this argument unpersuasive for several reasons. First, while
both Jeong and Labeque teach amounts of butylene glycol less than the 25
wt% lower limit recited in claim 10 (see FF 3, 10), Weische specifically
teaches an overlapping range (FF 1). However, “[n]on-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.” Merck, 800 F.2d
at 1097.
The Examiner relies upon Jeong to show that 1,3-butanediol is an
obvious equivalent of Wiesche’s 3-methyl-1,3-butanediol because both are
shampoo components used for moisturizing (FF 1–3) and therefore it would
have been obvious to select Jeong’s 1,3-butanediol for use in Wiesche’s
shampoo composition as a substitute for 3-methyl-1,3-butanediol. To the
extent that this argument is reiterating whether it would have been obvious
to use butylene glycol within the range of 25 wt% to 70 wt% as recited by
claim 10, Wiesche renders the claim obvious by teaching a substantially
Appeal 2020-003703
Application 15/986,592

11
overlapping range of “0.01 to 40% of weight of 3-methyl-1,3-butanediol”
(FF 1). Peterson, 315 F.3d at 1329.
Appellant contends
Jeong is directed to a dry shampoo composition that is designed
to be used without water. In contrast, Labeque is directed to a
pouch that is designed to rapidly and completely dissolve in
water. As such, a skilled artisan would not look to apply the
teaching of Jeong to the compositions of Labeque, since the two
compositions are taught to be configured to operate in
completely different environments and through different
methods of application, namely, via aqueous application vs.
nonaqueous application.
(Appeal Br. 7–8).
We find this argument unpersuasive. As noted above, the rejection
combines three references. Jeong is relied upon for the use of 1,3-butanediol
as a known and obvious equivalent of Wiesche’s shampoo composition,
using 1,3-butanediol. Thus, it is the combination of all three references, not
simply Labeque and Jeong, that renders the rejected claims obvious.
We further note that Labeque teaches the solvent system may be “at
least about 1 % to about 50%” by weight of the composition but contain
“about 5% to about 12%, by weight of the composition, of water” (FF 10).
Consistent with the use of some water, Wiesche teaches a composition
includes aqueous components (see, e.g., Wiesche Translation 17 “water ad
100”). The ordinary artisan, interested in delivering the obvious shampoo
composition of Wiesche and Jeong using the pouch of Labeque, would have
found it obvious to optimize the amount of water to obtain functional
pouches with the obvious shampoo. “[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
Appeal 2020-003703
Application 15/986,592

12
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955).
Appellant contends
In contrast to In re Keller, [642 F.2d 413, 425 (CCPA 1981)] as
noted in the previous response and repeated above, Appellants’
arguments address each of the cited references in establishing
that there was no motivation to make the various combinations
of the references. As such, contrary to the assertion of the
Examiner, the holding in In re Keller is not applicable to the
present facts.
(Appeal Br. 10). Appellant further contends “there would have been no
reason to combine Labeque and Jeong, because the compositions thereof are
designed to operate in completely different environments, namely aqueous
and non-aqueous environments” (id.).
We find this argument unpersuasive because Appellant’s earlier
arguments do not purport to address deficiencies of the references in
combination, but rather separately point out that Labeque limits organic
solvents to 15% by weight (Appeal Br. 6), that Wiesche does not disclose
other diols (id. at 7), and that Jeong does not teach the necessary butylene
glycol amounts (id.). We explained above why there was reason to combine
these references, with it obvious to substitute Wiesche’s homologous
moisturizing agent with Jeong’s agent, and obvious to deliver shampoo
rendered obvious by Wiesche and Jeong using the pouch of Labeque
because Labeque teaches that the use of a pouch “provides for accurate
dosing while eliminating the need for the consumer to measure the
composition. The pouch may also reduce mess that would be associated
with dispensing a similar composition from a vessel” (FF 13). This is
Appeal 2020-003703
Application 15/986,592

13
consistent with the understanding that a “person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Appellant contends
Wiesche, which is the only cited reference that discloses
isopentyldiol, fails to teach or suggest that any other diols, such
as butylene glycol, can be substituted for isopentyldiol in the
disclosed composition and still provide the same ‘special care
action’ when used in conjunction with APG surfactants. . . .
Jeong discloses that butylene glycol provides skin stimulus
release and scalp moisturizing, and Labeque discloses that
butylene glycol operates as an organic solvent. Therefore, the
cited art teaches that isopentyldiol and butylene glycol perform
different functions, namely treating the skin or treating the hair
and operating as a solvent.
(Appeal Br. 11).
We find this argument unpersuasive for several reasons. First, claim
10 does not require the use of an APG surfactant, but instead broadly
encompasses the use of any surfactant. “[A]ppellant’s arguments fail from
the outset because . . . they are not based on limitations appearing in the
claims.”). In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Second, the
rejection is for obviousness, not anticipation, and the Examiner reasonably
finds that the 1,3 butanediol (FF 5) disclosed by Jeong as a useful
moisturizing agent in shampoo (FF 3) is an obvious equivalent to the 3-
methyl-1,3-butanediol moisturizing agent of Wiesche (FF 1) based on their
structural similarity (see Final Act. 8; cf. Ans. 9).
Third, that Labeque teaches an additional function of 1,3 butanediol
does not detract from its known use as a moisturizing agent (FF 3). Indeed,
the ordinary artisan informed by Jeong that 1,3 butanediol is a useful
moisturizing agent in shampoo and informed by Labeque that 1,3 butanediol
is also a useful solvent would have reasonably found it useful to select 1,3
Appeal 2020-003703
Application 15/986,592

14
butanediol in order to obtain both desirable properties. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR, 550 U.S. at 417. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421. Also, the fact
that both 1,3 butanediol and 3-methyl-1,3-butanediol were known to
function as moisturizing agents, provides both an expectation of success and
reason to substitute the two. “[A] presumption of unpatentability arises
against a claim directed to a composition of matter, the adjacent homologue
of which is old in the art.” In re Henze, 181 F.2d at 196. Appellant provides
no persuasive argument as well as no persuasive evidence or data supporting
nonobviousness, as will be discussed regarding secondary considerations
below.
Appellant contends “that a skilled artisan would be aware that small
molecular changes may impart substantial differences in chemical
properties” (Appeal Br. 12).
We find this argument unpersuasive because there is no evidence that
the additional methyl group causes any change in the chemical properties
and “attorney argument [is] not the kind of factual evidence that is required
to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997).
Appellant contends that
even if the art of record lacks evidence to rebut the Examiner's
assertions regarding equivalence, such a lack of disclosure
cannot reasonably be asserted to support the Examiner’s
position. For example, the fact that the art does not provide
evidence that butylene glycol cannot be used to cure baldness
does not support the assertion that butylene glycol can cure
baldness.
Appeal 2020-003703
Application 15/986,592

15
(Appeal Br. 12).
We find this argument unpersuasive because it misunderstands the
allocation of the burden for establishing the rejection. Brandt explains that
“it is important for the examiner to have a few procedural tools to aid her
efforts to issue as patents only those claims that meet the requirements of the
Patent Act . . . One of these procedural tools is the prima facie case, an
evidentiary burden-shifting device available to the examiner.” In re Brandt,
86 F.3d 1171, 1176 (Fed. Cir. 2018). In the chemical context, Dillon
explains that after a prima facie case is made the “burden then shifts to the
applicant, who then can present arguments and/or data to show that what
appears to be obvious, is not in fact that, when the invention is looked at as a
whole.” Dillon, 919 F.2d at 696. Because we have determined that the
Examiner has established a proper prima facie case, the burden does indeed
rest on Appellant to rebut the Examiner’s assertions regarding equivalence.
Appellant fails to persuasively rebut the Examiner’s findings.
Appellant contends
Labeque teaches away from including more than 15 wt%
organic solvent in the disclosed pouches, since doing so may
negatively affect pouch strength and diffusion chemistry, as
well as the phase stability of the liquid ingredients. Therefore,
Labeque discloses that increasing the organic solvent
concentration would destroy the functionality of the disclosed
pouches.
(Appeal Br. 14).
We find this argument focusing on Labeque unpersuasive because
Wiesche specifically suggests that up to 40% of 3-methyl-1,3-butanediol
may be used as a moisturizer in a shampoo composition (FF 1). Thus, this
argument fails to address the references in combination. As to the teaching
Appeal 2020-003703
Application 15/986,592

16
away argument, Labeque never teaches that any specific amount of glycol
has any negative effects whatsoever (FF 10–11). Instead, Labeque teaches
that the solvent system may be optimized to maximize film plasticization but
does not provide any specific details on amounts of glycol that are too much.
Consequently, Labeque does not criticize, discredit, or otherwise teach away
from incorporating shampoo compositions such as the obvious shampoo
composition of Wiesche and Jeong into the pouch of Labeque. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellant reiterates the contentions that
not only is the disclosure of Wiesche limited to isopentyldiol,
Wiesche does not teach or suggest utilizing a water soluble
pouch. . . . the Examiner failed to provide any reason why a
skilled artisan would have disregarded the weight percentage
ranges of both Labeque and Jeong, which specifically disclose
butylene glycol, and in favor of the isopentyldiol weight
percentage of Wiesche. In addition, the Examiner failed to
provide any reason a skilled artisan would have utilized the
higher isopentyldiol weight range of Wiesche, without also
utilizing at least the isopentyldiol in the composition of
Labeque.
(Appeal Br. 14). Appellant contends “the Examiner appears to be
impermissibly picking and choosing which portions of the cited art would
have been relied upon and which portions would have been disregarded,
without providing any reason for doing so” (Appeal Br. 15).
We find this argument unpersuasive because it fails to recognize the
combination presented. Wiesche teaches a shampoo that differs from the
shampoo required by claim 10 solely by using a homolog of 1,3-butanediol,
3-methyl 1,3-butanediol, that shares moisturizing properties and is disclosed
by Jeong as useful in shampoos (FF 13). Labeque teaches the desirability of
Appeal 2020-003703
Application 15/986,592

17
providing such shampoo compositions in a single-use pod “for accurate
dosing while eliminating the need for the consumer to measure the
composition. The pouch may also reduce mess that would be associated
with dispensing a similar composition from a vessel” (FF 13). Thus, the
Examiner’s rejection properly provides a prima facie case of obviousness.
As to the argument regarding picking and choosing, the Examiner’s
reasoning “takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We note “picking and
choosing may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence” In re Arkley, 455 F.2d 586, 587 (CCPA 1972).
Claims 10, 11, 19
Appellant contends that “the butylene glycol ranges recited in present
claims 10, 11, and 19 cannot be considered obvious based on the
optimization of a results effective variable” (Appeal Br. 15).
We find this argument unpersuasive. We note that in the related
appeal, 2020-001175, we reversed a rejection over claim 6 in that case,
which was drawn to a range of “about 45 wt% to about 70 wt%” because the
rejection did not include Wiesche and therefore had no teaching of amounts
close to the claim 6. Here, however, the Examiner’s rejection does include
Wiesche, which teaches the use of 40% 3-methyl-1,3 butanediol (FF 1).
Therefore, Wiesche teaches a range overlapping at one point, and otherwise
adjacent, to the “about 40 wt% to about 65 wt% 1,3-butanediol” range
recited by claims 11 and 19. As already noted, overlapping ranges are prima
Appeal 2020-003703
Application 15/986,592

18
facie obvious. Peterson, 315 F.3d at 1329. Appellant does not identify any
persuasive criticality for the endpoints of these claimed ranges.
Secondary considerations
Appellant asserts that
the present inventors tested a multitude of nonaqueous solvents,
including various diols, in an effort to provide an
encapsulatable hygiene product having an acceptable
consistency, stability, and envelope compatibility. See
Specification, ¶¶ [0085]-[0099]. For example, Composition 22
of the present disclosure included 40 wt% of propylene glycol
and had an acceptable consistency, and stability, but was found
to rapidly dissolve a PVOH envelope, thereby rendering it
unsuitable. See id., ¶¶ [0094]-[0095].
(Appeal Br. 13). Appellant also asserts the inventors “unexpectedly
discovered that hygiene compositions that included elevated amounts of the
seemingly similar diol, butylene glycol, exhibited not only an acceptable
consistency and stability, but also exhibited unexpectedly high envelope
compatibility” (id. 13–14).
We find these arguments unpersuasive for several reasons. First, that
one of the tested compositions, composition 22, that used propylene glycol
but did not use 3-methyl-1,3-butanediol failed to work provides no evidence
regarding the efficacy or usefulness of 3-methyl-1,3-butanediol in the
composition (see Spec. ¶95). Moreover, Appellant offers no evidence
suggesting that these results would have been surprising or unexpected to a
skilled artisan. “[A]ny superior property must be unexpected to be
considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1371 (Fed. Cir. 2007). “It is well settled that unexpected
results must be established by factual evidence. Mere argument or
conclusory statements . . . [do] not suffice.” In re Soni, 54 F.3d 746, 750
Appeal 2020-003703
Application 15/986,592

19
(Fed. Cir. 1995). The only indication that any of these properties constitutes
an unexpected result is attorney argument in the brief. Mere attorney
argument that is not supported by evidence regarding the rejection as
presented by the Examiner is not persuasive. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984)
Second, the results disclosed in the Specification are not
commensurate in scope with the range in claim 10 of 25 to 70% of 1,3
butanediol. Indeed, Table 1 of the Specification shows that values from 60
to 70% of 1,3 butanediol do not function but rather “exhibited phase
separation” or “an overly dense creamy solid” (Spec. ¶ 87). The only
compositions tested below 59% in the range from 25% to 59%,
compositions 23–26, all showed undesirable properties including “poor
performance,” “phase separation,” and “moderate gelation” (see Spec. ¶ 98).
Only compositions 28 and 29, using 59.35% and 59.25% 1,3 butanediol
respectively, resulted in successful compositions (see Spec. ¶ 99).
Therefore, the unexpected results data is not reasonably commensurate in
scope with claim 10.
Third, the asserted unexpected results were not compared to the
closest prior art of Wiesche, who discloses the use of up to 40% 3-methyl-
1,3-butanediol (FF 1). See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”).
Fourth, we are not persuaded by Appellant’s argument that amounts
of 1,3-butanediol were not recognized as optimizable variables (see, e.g.,
Appeal Br. 15), because Wiesche teaches that the amount of 3-methyl-1,3-
Appeal 2020-003703
Application 15/986,592

20
butanediol is a moisturizing ingredient and provides a range for that
ingredient (FF 1–2) and Jeong also teaches that 1,3-butanediol is a
moisturizing agent (FF 3). Thus, the ordinary artisan would have recognized
that the amount of 1,3-butanediol would impact the moisturizing ability of
the shampoo composition and therefore be an optimizable variable.
“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980).
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Labeque, Wiesche, and Jeong render the claims obvious.
(ii) Appellant has not provided evidence of unexpected results that
outweighs the evidence supporting the prima facie case of obviousness.

B.–D. U.S.C. § 103(a) rejections
Appellant does not separately argue these obviousness rejections,
instead relying upon their arguments to overcome the combination of
Labeque, Wiesche, and Jeong (see Appeal Br. 3). We do not find these
arguments persuasive for the reasons given above. The Examiner provides
sound fact-based reasoning for combining these references with Hilvert,
Hohenstein, and Vainshelboim (see Final Act. 8–13). Having affirmed the
obviousness rejection of claim 10 over Labeque, Wiesche, and Jeong, we
also find that the further combinations render the rejected claims obvious for
the reasons given by the Examiner.
Appeal 2020-003703
Application 15/986,592

21
SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–15, 19 103 Labeque, Wiesche,
Jeong
10–15, 19
17 103 Labeque, Wiesche,
Jeong, Hilvert
17
16, 18 103 Labeque, Wiesche,
Jeong, Hohenstein
16, 18
20 103 Labeque, Wiesche,
Jeong, Hohenstein,
Vainshelboim
20
Overall
Outcome
10–20

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