Volker Wendel et al.

Patent Trials and Appeals Board

Sep 26, 2019

12991009 - (D) (P.T.A.B. Sep. 26, 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.
12/991,009 11/04/2010 Volker Wendel 074008-1084-US (286140) 5633
123223 7590 09/26/2019
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
GOTFREDSON, GAREN
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
DBRIPDocket@dbr.com
IPDocketWM@dbr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VOLKER WENDEL, HELMUTH VÖLLMAR, HOLGER TÜRK,
MARKUS BUCHMANN, VALERIE ANDRE,
MATTHIAS LAUBENDER, CLAUDIA WOOD, and ANDREE DRAGON
____________

Appeal 2017-010300
Application 12/991,009
Technology Center 1600
____________

Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, BEVERLY A. FRANKLIN, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

ANKENBRAND, Acting Vice Chief Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 4–11, 16, 19–23, 25–27, 29, and 30. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies BASF SE as the real party in interest. Appeal Brief,
filed December 2, 2016 (“Br.”) 1.
2 Final Action, mailed July 15, 2016 (“Final Act.”).
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STATEMENT OF THE CASE
Background
The subject matter on appeal relates to cosmetic preparations
comprising water-dispersible polyurethanes as a means for modifying the
rheological properties of the preparations. Specification, filed November 4,
2010 (“Spec.”) 1:5–7. According to the Specification, it was known in the
art to modify a cosmetic preparation to increase its viscosity or thicken the
composition. Id. at 2:1–6. Many water-dispersible polyurethane thickeners
existed, but had disadvantages when used in cosmetic preparations. Id. at
2:7–14. For example, many known polyurethane-containing thickeners were
sensitive to salt, surfactants, or mixtures thereof and, as a result, were less
useful as viscosity-imparting agents in shampoo and cosmetic preparations.
Id. at 2:16–27. In particular, adding a salt to a polyurethane thickener was
known to drastically decrease the viscosity of the polyurethane. Id. at 2:21–
22. As a result, finding salt-stable thickeners with good texture and pleasant
feel for use in cosmetic preparations “ha[d] proven extremely difficult.” Id.
at 2:27–30
Appellant purports to improve upon the known polyurethane
thickeners by providing “a cosmetic preparation comprising a water-
dispersible polyurethane (PU) with an essentially linear backbone composed
of alternating hydrophilic and hydrophobic sections” that have increased
viscosity, are stable, convey a soft, non-greasy and non-sticky feel to the
touch, and are cosmetically and dermatologically acceptable. Id. at 4:27–39.
Of the appealed claims, claims 1 and 22 are independent. Claim 1 is
representative of the subject matter on appeal, and reproduced below:

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1. A cosmetic preparation comprising a mixture of water-
dispersible- polyurethanes (PU) with an essentially linear
backbone composed of alternating hydrophilic sections S and P,
and hydrophobic sections T and D, where the polyurethanes
include;
a. the two, hydrophobic terminal sections (T) that are
branched or unbranched alkyl radicals comprising from 8
to 20 carbon atoms,
b. at least two of the hydrophilic sections (S) adjoins each
of the terminal section T,
c. at least two of the hydrophobic sections (D) adjoins each
section Son at least one side, and
d. at least one hydrophilic section (P), where if more than
one section P is present at least one hydrophobic section
D separates sections P, and
the mixture of polyurethanes with sections S, P, T and D further
includes at least three hydrophilic sections, and the ratio of the
molecular weights of each hydrophilic section S to the molecular
weight of each hydrophilic section P is from 1:3.4 to 1:80, the at
least two hydrophobic sections D are aliphatic diisocyanate
radicals and the at least one hydrophilic section P is a polyether
radical with a number-average molecular weight of at least 1500
g/mol, and
the mixture includes polyurethanes with sections T that are both
branched, and polyurethanes with terminal sections T that are
both linear or polyurethanes with one branched terminal section
T and one linear terminal section T, wherein
the cosmetic preparation further comprises at least 50% by
weight water, and the mixture of polyurethanes is present in the
preparation from 0.1 % to 1.5% by weight.
Br. 21 (Claims App’x). Claim 22 is directed to a similar cosmetic
preparation comprising a mixture of water-dispersible polyurethanes.
Id. at 23.
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The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1, 4–9, 16, 19–23, 26, 27, 29, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over Bigorra Llosas,3 in view of König4;
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bigorra Llosas, in view of König and Jacquet5;
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bigorra Llosas, in view of König and Nojiri6; and
5. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bigorra Llosas, in view of König and Borbely.7
Final Act. 3–8; Examiner’s Answer, mailed May 5, 2017 (“Ans.”) 2.8
OPINION
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, we are not persuaded that Appellant
identifies reversible error with respect to the Examiner’s rejections. We
affirm the Examiner’s rejections for the reasons expressed in the Final
Action, the Answer, and explained below.

3 Bigorra Llosas, US 2004/0028742 A1, published Feb. 12, 2004.
4 König, US 5,612,408, issued Mar. 18, 1997.
5 Jacquet, US 4,826,681, issued May 2, 1989.
6 Nojiri, US 2004/0228894 A1, published Nov. 18, 2004.
7 Borbely, US 2008/0070993 A1, published Mar. 20, 2008.
8 The Examiner withdraws a provisional obviousness-type double patenting
rejection of claims 1, 4–11, 16, 19–23, 25–27, 29, and 30 over the claims of
copending Application No. 12/991,302. Ans. 2.
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Rejections 1–3 – Obviousness over Bigorra Llosas, König,
and Additional References
Appellant “requests that the Board collectively address the section
103(a) rejection[s] of claims 1, 4, 5–11, 16, 19, 20, 22, 23, 26, 29, and 30
over Bigorra Llosas and König.” Br. 5. We limit our discussion to claim 1,
which we select as representative of the group. Claims 4, 5–11, 16, 19, 20,
22, 23, 26, 29, and 30 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant also presents arguments for the patentability of
claim 27 over Bigorra Llosas and König, id. at 15–16, which we address
separately.
Claim 1
Claim 1 requires, inter alia, “a cosmetic preparation comprising a
mixture of water-dispersible polyurethanes with an essentially linear
backbone composed of alternating hydrophilic sections S and P, and
hydrophobic section T and D” that include “two, hydrophobic terminal
sections (T) that are branched or unbranched alkyl radicals comprising from
8 to 20 carbon atoms” “at least two hydrophilic section (S)” adjoining each
of the terminal sections, “at least two hydrophobic sections (D)” adjoining
each section S on one side, and “at least one hydrophilic section (P)” where
“the ratio of the molecular weights of each hydrophilic section S to the
molecular weight of each hydrophilic section P is from 1:3.4 to 1:80.”
Br. 21 (Claims App’x). As is relevant to this appeal, the Examiner finds that
Bigorra Llosas discloses cosmetic preparations comprising thickening agents
that are water-dispersible polyurethanes within the scope of Appellant’s
claims. Final Act. 3. In particular, as to the above-recited limitations of
claim 1, the Examiner points to Bigorra Llosas’s Example 3 and finds that
Example 3 discloses a polyurethane composition having the arrangement of
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sections T, S, D, and P that claim 1 requires. Id.; Ans. 3–4. For the identity
of sections T, S, D, and P, the Examiner finds that Example 3 discloses
terminal cetyl alcohol groups that correspond to hydrophobic sections T, two
hydrophilic spacer sections S that each comprise 50 ethylene oxide units and
that adjoin the T sections, polyethylene glycol (“PEG”) 6000 (a hydrophilic
polyether section P), and two tetramethylxylene diisocyanates (hydrophobic
section D). Final Act. 3.
The Examiner acknowledges that the cetyl alcohol groups in
Example 3 that correspond to hydrophobic sections T are not branched alkyl
radicals, but finds that Bigorra Llosas teaches that its terminal sections may
comprise a branched iso-alkyl radical, such as a 2-ethylhexyl or isostearyl
group, in place of the cetyl group. Id. at 4 (citing Bigorra Llosas ¶ 23). The
Examiner also finds that Bigorra Llosas teaches using a mixture of alcohols
to form the terminal sections, which result in a mixture of polyurethanes as
recited in claim 1. Id. The Examiner finds that these teachings would have
led the skilled artisan to a polyurethane falling within the scope of claim 1.
Id. at 3–4.
As to the molecular weights ratio range recited in claim 1, the
Examiner finds that Bigorra Llosas’s Example 3 discloses a ratio of
molecular weights of each hydrophilic section S to each hydrophilic section
P of about 1:3.0, which the Examiner recognizes “is somewhat below the
1:3.4 ratio” recited in claim 1. Id. at 4, 5. However, the Examiner finds that
the broader teachings of Bigorra Llosas describe preferred polyethylene
glycols with degrees of condensation from 100–250. Id. (citing Bigorra
Llosas ¶ 27). Thus, the Examiner reasons that using a PEG with a degree of
condensation of 200 for the P section would have resulted in a ratio S:P of
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approximately 1:4, which falls within the scope of claim 1. Id.9 The
Examiner concludes that it would have been obvious to modify Bigorra
Llosas’s Example 3 to comprise a ratio of molecular weights as recited in
claim 1 because Bigorra Llosas discloses that polyethylene glycols resulting
in such a range are preferred. Id. at 6.
Appellant’s arguments focus on the Examiner’s findings as to Bigorra
Llosas’s disclosure. See Br. 7 (“the Board need only focus on the complete
teachings of Bigorra Llosas” for purposes of the appeal). Appellant
contends that “the dispositive issue on appeal” is whether Bigorra Llosas’s
disclosed genus of polyurethanes teaches or suggests the sub-genus directed
to a mixture of polyurethanes” that claim 1 requires. Id. at 8. According to
Appellant, the fact that Bigorra Llosas’s polyurethane of formula (I)
encompasses the claimed subgenus of polyurethanes is not sufficient by
itself to establish a prima facie case of obviousness. Id. (citing In re Baird,
16 F.3d 380, 382 (Fed. Cir. 1994)).
Appellant’s argument is not persuasive. The Examiner does not
conclude that the recited polyurethanes would have been obvious because

9 The Examiner makes additional findings with respect to the remaining
limitations of claim 1. See Final Act. 5. In particular, the Examiner explains
that Bigorra Llosas does not explicitly disclose using an aliphatic
diisocyanate, but finds that König teaches a polyurethane-based thickener
comprising an aliphatic diisocyanate, such as hexamethylene diisocyanate.
Id. at 5 (citing König, Abstract, Example 1). The Examiner concludes that it
would have been obvious to modify Bigorra Llosas to comprise an aliphatic
diisocyanate as König discloses because doing so would have been
substituting a known equivalent for the same purpose, i.e., making a
polyurethane based cosmetic thickener. Id. Appellant does not dispute the
Examiner’s findings in this regard. See Br. 7 (agreeing that modifying
Bigorra Llosas’s polyurethane with König’s diisocyanate “is proper under
section 103(a)”).
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Bigorra Llosas discloses a prior art genus of polyurethanes of formula (I).
Rather, the Examiner’s rejection focuses on the polyurethane composition in
Bigorra Llosas’s Example 3 (which Appellant concedes has a similar
structure to the recited polyurethanes), and how and why a person of
ordinary skill in the art would have modified that polyurethane in view of
Bigorra Llosas’s additional disclosure (and König) to arrive at the recited
polyurethanes. See Final Act. 3–6; Ans. 3–9; see also Br. 7 (admitting that
Bigorra Llosas’s polyurethanes are composed of alternating hydrophobic
and hydrophilic sections and may comprise two terminal groups).
Moreover, we find Appellant’s reliance on In re Baird misplaced. In
Baird, the Federal Circuit determined that “[a] disclosure of millions of
compounds does not render obvious a claim to three compounds, particularly
when the disclosure indicates a preference leading away from the claimed
compounds.” Baird, 16 F.3d at 383. Appellant’s claim 1, however, is not so
narrow. For example, claim 1 is directed to a mixture of water-dispersible
polyurethanes that include at least two terminal sections that can have a
number of suitable branched and/or unbranched alkyl radicals (i.e., any
branched or unbranched alkyl radical having 8 to 20 carbon atoms).
Appellant also argues that the Examiner erred in finding that a skilled
artisan would have used 2-ethylhexyl alcohol (the one branched alcohol
Appellant contends Bigorra Llosas discloses) in place of cetyl alcohol for the
terminal sections of the polyurethane. Br. 9–10. Specifically, Appellant
contends that merely listing 2-ethylhexyl alcohol along with fourteen other
fatty alcohols that may comprise the terminal sections is not sufficient to
have led a person of ordinary skill in the art to select 2-ethylhexyl alcohol.
Id. at 8, 10.
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We disagree. Here, Appellant concedes Bigorra Llosas “teaches that
the terminal section can include a branched alkyl radical . . . such as a 2-
ethylhexyl group in place of the [preferred] cetyl group.” Id. at 7–8;
see Bigorra Llosas ¶ 23 (disclosing 2-ethylhexyl alcohol and isostearyl
alcohol as two “[t]ypical examples of suitable fatty alcohols”).
Nevertheless, Appellant argues that Bigorra Llosas would not have led a
person of ordinary skill in the art to utilize 2-ethylhexyl alcohol “instead of
one of the other fourteen linear, fatty alcohols listed.” Br. 9.
Although Bigorra Llosas suggests a number of possible alcohols for
the terminal sections of its polyurethane, the mere fact that it “discloses a
multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co., Inc. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989). Rather, we must evaluate all disclosures
therein for what they would have fairly suggested to one of ordinary skill in
the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966); see also In re
Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness
rejection in light of prior art teaching that “hydrated zeolites will work” in
detergent formulations, even though “the inventors selected the zeolites of
the claims from among ‘thousands’ of compounds”). After having reviewed
Bigorra Llosas’s disclosure, we agree with the Examiner that the ordinarily
skilled artisan seeking to prepare a polyurethane thickener reasonably would
have been led to utilize any of the alcohols Bigorra Llosas discloses,
including a branched fatty alcohol, and would have reasonably expected
success in achieving a viable polyurethane. See Ans. 3–6; Bigorra Llosas
¶ 23.
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Appellant argues that in addition to selecting a branched alcohol, one
of ordinary skill in the art would have had to select an ethylene oxide adduct
for section S to arrive at the claimed cosmetic preparation. Br. 10.
According to Appellant, the Examiner selects the ethoxylate adduct of 2-
ethylhexyl alcohol “without any direction in Bigorra Llosas.” Id. at 11.
Appellant’s argument is not persuasive because it does not address the
Examiner’s rejection. Specifically, the Examiner’s rejection is based, in
part, on modifying the terminal sections of the polyurethane disclosed in
Bigorra Llosas’s Example 3 by replacing the cetyl alcohol with 2-ethylhexyl
alcohol or isostearyl alcohol. See Final Act. 3–4. As the Examiner finds,
and Appellant does not dispute, Example 3 already includes hydrophilic
spacer sections S that each comprise 50 ethylene oxide units. Id.; see
Bigorra Llosas ¶ 158. Thus, contrary to Appellant’s argument, the Examiner
does not select the ethoxylate adduct of 2-ethylhexyl alcohol without any
direction in Bigorra Llosas.
Appellant further argues that the Examiner erred in rejecting claim 1
because Bigorra Llosas does not teach or suggest a mixture of
polyurethanes. Br. 11–12. As with the branched alcohol argument we
address above, Appellant contends that the Examiner “account[s] for the
term ‘mixture of polyurethanes’” in claim 1 “by relying upon the generic
disclosure of Bigorra Llosas, paragraph 23, which refers to ‘technical
mixtures thereof’ of the fifteen listed fatty alcohols.” Id. at 12. Appellant
also argues that Bigorra Llosas’s example polyurethanes “should dominate
the section 103(a) inquiry” and that Bigorra Llosas’s Table 1 discloses ten
cosmetic preparations, none of which contains a mixture of polyurethanes.
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Appellant’s argument is not persuasive because, as we explain above,
the mere fact that Bigorra Llosas “discloses a multitude of effective
combinations does not render any particular formulation less obvious.”
Merck, 874 F.2d at 807 (Fed. Cir. 1989). Further, although Bigorra Llosas
exemplifies cosmetic preparations containing a single polyurethane, Bigorra
Llosas’s disclosure is not limited to its preferred embodiments or examples.
Id. Instead, we must evaluate all the disclosures therein for what they would
have fairly suggested to one of ordinary skill in the art. In re Boe, 355 F.2d
961, 965 (CCPA 1966). Here, as Appellant admits, Bigorra Llosas explicitly
discloses using mixtures of fatty alcohols to form the terminal sections,
which will result in a mixture of polyurethanes, as the Examiner finds. Final
Act. 4 (explaining that the mixture of 2-ethylhexyl alcohol or isostearyl
alcohol with cetyl alcohol to form the composition will result in a mixture of
polyurethanes); Ans. 9.
Appellant argues that the Examiner’s conclusion that it would have
been prima facie obvious to modify Bigorra Llosas’s Example 3 to comprise
a ratio of molecular weights encompassing the recited ratio is “conclusory.”
Br. 12–13. Appellant also argues that, if anything, Bigorra Llosas suggests
to use a lower molecular weight PEG because, following Example 3 as the
Examiner has modified it to use two 50 ethylene oxide units and PEG-6000,
the molecular weight is already 10,400, which is larger than “the expressly
stated molecular weight limit of 10,000 for the entire polyurethane.” Id. at
14.
We disagree, and find that the Examiner provides adequate reasons
why a person of ordinary skill in the art would have a reason to use a
molecular weights ratio within the recited range. Specifically, the Examiner
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points to the broader teachings of Bigorra Llosas that preferred polyethylene
glycols may have a degree of condensation between 1 and 250, and finds
that a PEG with a degree of condensation of 200—which is within Bigorra
Llosas’s preferred range—falls within the scope of the claims. Id. Further,
as the Examiner finds, and Appellant does not dispute, Bigorra Llosas’s
teachings are not limited to 50 ethylene oxide units, as Appellant’s argument
suggests and, therefore, provide an express reason to alter the number of
ethylene oxide units. Ans. 6–7.
Appellant argues that the mixture of polyurethanes the claim
compositions require “exhibit substantially improved results for thickening
performance at differen[t] salt concentrations” and “substantial
improvement[s] for thickening performance at elevated temperatures over a
period of time.” Br. 17–18. Appellant supports that argument with the
Declaration of Dr. Holger Türk, filed with the Office on July 31, 2012
(“Türk Declaration” or “Türk Decl.”). Dr. Türk explains that he tested two
polyurethanes that differed only in the structure of the terminal hydrophobic
sections T. Türk Decl. ¶ 6. One polyurethane, which Appellant describes as
the “inventive polyurethane” (Br. 18), was prepared utilizing “a mixture of
an ethoxylated linear C16/C18 fatty alcohol and an ethoxylated Iso-C13
alcohol.” Türk Decl. ¶ 7. The second polyurethane, which Appellant
describes as the “prior art polyurethane” (Br. 18), was prepared utilizing “an
ethoxylated linear C16/C18 fatty alcohol.” Türk Decl. ¶ 8. Dr. Türk then
used the two polyurethanes to make oil-water dispersion fluids and tested the
thickening properties (i.e., viscosity) of each fluid in the presence of
different salt concentrations. Id. ¶¶ 9–11, 15. Dr. Türk found that, under the
same salt concentrations, fluids including the polyurethane with linear
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terminal groups performed worse as thickeners (i.e., had lower viscosities)
than fluids including the polyurethane with branched terminal groups. Id.
¶¶ 12–14. Dr. Türk further found that the thickening performance of the
polyurethane with branched terminal groups was apparent at elevated
temperature and over time, whereas the thickening performance of the
polyurethane with linear terminal groups was not measurable after two
weeks. Id. ¶¶ 16–18. Dr. Türk states that his observed results were
unexpected. Id. ¶¶ 14, 19.
When an Appellant submits evidence of secondary considerations, we
evaluate the rebuttal evidence, including the evidence of secondary
considerations, along with the evidence upon which the Examiner based the
conclusion of prima facie obviousness. In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976). The burden rests with Appellant to establish that the alleged
unexpected results associated with the claimed invention are, in fact,
unexpected, as well as commensurate in scope with the claimed subject
matter. See, e.g., In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The Türk Declaration includes data showing the viscosities of fluids
that include one of the two polyurethanes Dr. Türk prepared—both the
initial viscosities and the viscosities at specific time intervals over the course
of twelve months. Türk Decl. ¶¶ 12, 13, 16, 17. As the Examiner finds,
however, it is not clear that the alleged “inventive composition” is within the
scope of the claims because Appellant and Dr. Türk do not set forth the
complete structures of the two compositions. Ans. 11.
Further, the data in the Türk Declaration are not commensurate in
scope with Appellant’s claims, which encompass a broad scope of T, S, P,
and D sections. Id. at 12–15. And Appellant does not provide any
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explanation why a person of ordinary skill in the art would have accepted the
limited showing in the Türk Declaration as evidence of unexpected results
sufficient to outweigh the Examiner’s evidence of obviousness. See, e.g., In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”);
In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of this court that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA
1971)).
Accordingly, we affirm the Examiner’s rejection of representative
claim 1, as well as the Examiner’s rejection of claims 4, 5–11, 16, 19, 20,
22, 23, 26, 29, and 30 under 35 U.S.C. § 103(a) over the combination of
Bigorra Llosas and König.
Claim 27
Claim 27 depends from claim 22 and further requires, among other
things, a cosmetic preparation “where the two hydrophilic sections S are 3 to
20 ethylene oxide unit radicals.” Br. 23. The Examiner finds Bigorra Llosas
discloses that the total number of ethylene oxide units that form adducts (the
S sections) with the fatty alcohol to produce the terminal sections T may be
anywhere from 1–100, which encompasses the range of ethylene oxide units
that claim 27 recites. Final Act. 5.
Referring to its arguments for claim 1, Appellant contends that the
“recitation of 3 to 20 ethylene oxide unit radicals requires the Office to
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provide additional support for a fifth selection of a sized ethoxylate adduct
of a branched fatty alcohol.” Br. 15. Appellant, however, notes that Bigorra
Llosas discloses adducts with “1 to 50, preferably 10 to 30 and more
particularly 15 to 25 mol ethylene oxide units.” Id. (quoting Bigorra Llosas
¶ 23); see also Bigorra Llosas ¶¶ 5, 19 (explaining that the fatty alcohols
and/or ethylene oxide adducts can be present from 1–100 units). Thus,
Appellant admits that Bigorra Llosas discloses a range of ethylene oxide
units that overlaps the recited range and, therefore, renders the recited
obvious in the absence of criticality (e.g., unexpected results relative to the
prior art range). See In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir.
2003); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir.
2006). As we explain above, however, Appellant’s evidence of unexpected
results are not commensurate in scope with the claims, including claim 27.
Accordingly, we also affirm the Examiner’s rejection of claim 27 under
35 U.S.C. § 103(a) over the combination of Bigorra Llosas and König.
Rejection 4 – Obviousness over Bigorra Llosas, König, and Borbely
Claim 25 recites the cosmetic preparation of claim 22 “further
comprising alpha-hydroxycarboxylic acids [“AHA”] and beta-
hydroxycarboxylic acids [“BHA”], and the pH of the preparation is from 4
to 5.5.” Br. 23 (Claims App’x). The Examiner finds Bigorra Llosas teaches
that its composition may comprise an additive to adjust the pH, and may
comprise a hydroxycarboxylic acid, such as citric acid (an AHA).
Final Act. 7 (citing Bigorra Llosas ¶¶ 112, 128). As is relevant to this
appeal, the Examiner acknowledges that Bigorra Llosas does not expressly
disclose a pH within the range recited in the claim. Id. The Examiner
concludes that it would have been obvious to an ordinarily skilled artisan to
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vary the pH to arrive at an amount within the claimed range based on
Bigorra Llosas’s teaching that one can add a pH adjuster to the composition
and “because it is not inventive to discover optimum or workable ranges by
routine experimentation.” Id. at 8 (quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955)).
Appellant argues that Bigorra Llosas does not teach or suggest that
any cosmetic composition comprising a polyurethane of formula (I) that
discloses a pH. Br. 16. Appellant further contends that the Examiner does
not identify any composition that Bigorra Llosas or Borbely teaches that
includes both AHA and BHA and has a pH from 4 to 5.5. Id. at 17.
Appellant’s arguments do not persuade us of error in the Examiner’s
rejection. The Examiner’s rejection need not point to an express teaching of
the recited pH values. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Here, Bigorra Llosas expressly
discloses using a pH adjuster. Bigorra Llosas ¶ 128. Thus, Bigorra Llosas
teaches that pH is a variable that may be adjusted to achieve a suitable result.
Although Bigorra Llosas does not disclose any particular pH value, we agree
with the Examiner that it would have been within the level of skill of an
ordinary artisan and routine to obtain pH values providing optimal
performance for a particular cosmetic composition. Accordingly, we affirm
the Examiner’s rejection of claim 25 under 35 U.S.C. § 103(a) over the
combination of Bigorra Llosas, König, and Borbely.

Appeal 2017-010300
Application 12/991,009

17
DECISION/ORDER
The Examiner’s rejections of claims 1, 4–11, 16, 19–23, 25–27, 29,
and 30 under 35 U.S.C. § 103(a) are affirmed.
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