Church & Dwight Co., Inc.

Patent Trials and Appeals Board

Jan 18, 2022

2021002292 (P.T.A.B. Jan. 18, 2022)

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. 15/833,127 12/06/2017 Elisabeth Memin 99330 6698 45980 7590 01/18/2022 CHURCH & DWIGHT CO., INC. Princeton North Technical Center ATTN: PATENT GROUP 469 NORTH HARRISON STREET PRINCETON, NJ 08543-5297 EXAMINER ZHANG, YANZHI ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 01/18/2022 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): dorian.grumet@churchdwight.com patents@churchdwight.com paul.fair@churchdwight.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ELISABETH MEMIN, ALBERT NAZARETH, KIRSTEN CLUVER, CAIHUA WANG, MELIS CAKIRER, and JASON KIEKE1 ________________ Appeal 2021-002292 Application 15/833,127 Technology Center 1600 ________________ Before JOHN G. NEW, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 We use the term “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.142. Appellant identifies Church & Dwight Co., Inc. as the real party-in-interest. App. Br. 1. Appeal 2021-002292 Application 15/833,127 2 SUMMARY Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-23 as unpatentable under 35 U.S.C. § 103 as being obvious over Romanoschi et al. (US 2015/0250704 A1, September 10, 2015) (“Romanoschi”).2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s claimed invention is directed to lubricant compositions that provide lubricating effects and various sensory perceptions to the tissue of application, as well as articles that include the lubricant composition and that are configured for contacting human tissue. Spec., Abstr. REPRESENTATIVE CLAIM Independent claim 1 is representative of the claims on appeal and recites: 1. A lubricant composition comprising: a lubricating base; and a sensorial agent package comprising: one or more sensorial agents effective to impart a first sensation to contacted human tissue; and 2 The Examiner also rejected dependent claims 22 and 23 as unpatentable under 35 U.S.C. §§ 112(a) and 112(b) as lacking written descriptive support and as being indefinite, respectively. Final Act. 2-4. The Examiner has withdrawn those rejections. Ans. 3. Appeal 2021-002292 Application 15/833,127 3 one or more sensorial agents effective to impart a second sensation to the contacted human tissue, the second sensation being different from the first sensation; wherein the one or more sensorial agents effective to impart the second sensation have an onset of action that is different from an onset of action of the one or more sensorial agents effective to impart the first sensation such that the onset of action of the first sensation and the onset of action of the second sensation, as measured from a time of application of the lubricant composition to the contacted human tissue, are sequential and are temporally separated. App. Br. 16. ISSUE AND ANALYSIS We agree with and adopt the Examiner’s findings, reasoning, and conclusion that the claims are obvious over the cited prior art. We address below the arguments raised by Appellant. A. Claim 1 Issue Appellant argues that the Examiner erred by not showing that a person of ordinary skill in the art would have found it obvious to modify the teachings of Romanoschi to obtain a composition in which: [T]he one or more sensorial agents effective to impart the second sensation have an onset of action that is different from an onset of action of the one or more sensorial agents effective to impart the first sensation such that the onset of action of the first sensation and the onset of action of the second sensation, as measured from a time of application of the lubricant composition Appeal 2021-002292 Application 15/833,127 4 to the contacted human tissue, are sequential and are temporally separated as required by claim 1, with a reasonable expectation of success. App. Br. 8. The Examiner’s Findings and Conclusions The Examiner finds that Romanoschi is directed to non-irritating lubricant compositions with active sensorial agents (title). Final Act. 5 (citing Romanoschi, Title). The Examiner finds that Romanoschi teaches that its lubricant compositions includes (a) at least one silicone-containing component as a fluid carrier (interpreted as lubricating base in the instant claim 1), and (b) at least one sensorial agent, selected from warming, cooling, tingling or vasodilation agents. Id. at 5-6 (citing Romanoschi ¶ 32). The Examiner finds that Romanoschi teaches various exemplary embodiments of its compositions. Id. at 6 (citing Romanoschi, Table 1). The Examiner further finds that Romanoschi teaches that a mixture of sensorial agents having differing effects may be employed, e.g., warming and cooling agents, and that selection of the sensorial agent combinations may be adjusted to fine-tune the intensity and duration of the sensation desired. Final Act. 6 (citing Romanoschi ¶ 49). The Examiner also finds that Romanoschi teaches that time-release effects may be achieved by certain sensorial agent combinations, or by treatment of sensorial agents, such as by encapsulation methods, to provide extended solubility in the base composition. Id. The Examiner reasons, with respect to the limitation requiring that the onset of the first sensation and onset of the second sensation are sequential and are temporally separated in claims, that a person of ordinary skill in the Appeal 2021-002292 Application 15/833,127 5 art would understand that Romanoschi teaches how to fine-tune the intensity and duration, as well as the onset, of the ensation desired. Final Act. 7. Analysis Appellant argues that the Examiner has mischaracterized the teachings of Romanoschi by impermissibly relying upon hindsight knowledge gained from the Appellant’s Specification. App. Br. 8. According to Appellant, the Examiner’s reliance upon paragraph [0049] of Romanoschi is an interpretation that is based upon knowledge of Appellant’s claimed invention and does not meet the legal requirements for setting forth a prima facie case of obviousness. Id. at 8-9. Specifically, Appellant argues that Romanoschi emphasizes providing compositions that were non-irritating to human skin. App. Br. 9. Appellant contends that the intensity and duration of a sensation provided by Romanoschi’s compositions are therefore relevant to ensuring that the composition is suitable to provide pleasure to the user(s) without causing irritation or pain, and without continuing substantially beyond the duration of the sexual activity. Id. Appellant asserts that the Examiner has not provided any evidence that a person of ordinary skill in the art at the time the present invention was made would have predicted that an ability to fine tune either of intensity or duration of a sensation could have led to an ability to combine multiple sensorial agents in a single composition, such that at least two different sensations could be achieved with different onsets of action that are sequential and temporally separated. Id. Appellant particularly points to the Examiner’s finding regarding encapsulation as failing to meet the sequential and temporal separation Appeal 2021-002292 Application 15/833,127 6 requirement of claim 1. App. Br. 9. Appellant again contends that the Examiner has impermissibly employed hindsight reasoning to interpret the teachings of Romanoschi concerning encapsulation in a manner that would not have been used by a person of ordinary skill in the art without knowledge of the present invention. Id. Appellant points to paragraph [0049] of Romanoschi, which teaches that the time-release effects achieved by methods, such as encapsulation, are achieved because of the ability to “provide extended solubility in the base composition.” Id. According to Appellant, a person of ordinary skill in the art would have predicted, at the time of invention and based on the overall teachings of Romanoschi, that encapsulation is intended to address the issue of duration of the sensation desired, as taught in the same paragraph. Id. at 9-10. Appellant also points to paragraph [0051] of Romanoschi, which is the only other reference to encapsulation. App. Br. 10. Appellant contends that Romanoschi therein teaches that the prior art indicates that encapsulation is a method used to make functional agents non-irritating. Id. Appellant asserts that it is well understood that a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. Id. (citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)). Appellant argues that it is evident that a person of ordinary skill in the art, at the time if invention, would not have predicted from Romanoschi that encapsulation would be effective to cause two different sensations to have different onsets of action that are sequential and temporally separated. Id. Rather, argues Appellant, the expectation would have been that encapsulation would have been effective to improve Appeal 2021-002292 Application 15/833,127 7 solubility of the functional ingredient in the lubricating base and to improve the ability to make the overall composition non-irritating. Id. We are not persuaded by Appellant’s arguments, which are not consistent with a plain reading of Romanoschi. Romanoschi teaches “a personal lubricant composition that includes (a) at least one silicone- containing component as a fluid carrier, and (b) at least one sensorial agent selected from warming, cooling, tingling or vasodilation agents. Romanoschi ¶ 32. With respect to (b), Romanoschi teaches that “[i]n recent years, it has become increasingly popular to add various functional agents to personal lubricant compositions in order to, for example, enhance pleasurable feelings during sexual activity and/or to heighten sexual arousal.” Id. ¶ 2. Specifically, Romanoschi teaches that: Personal lubricants comprising functional agents are designed to cause physiological or physical changes in the area to which they are applied. These functional agents range from agents that self- warm when exposed to moisture, e.g.[,] polyols, agents that act on nerve endings to simulate a perceived sensation such as warming, cooling and/or tingling, and agents that could in sufficient quantity increase localized blood flow, e.g. vasodilators. Id. ¶4. In view of these express teachings, Appellant’s contention that the Romanoschi compositions, and particularly their functional agents (i.e., the claimed “sensorial agents”) are principally concerned with avoiding or reducing irritation, is not credible. We acknowledge that Romanoschi teaches that some functional agents are known to be skin irritants (see Romanoschi ¶ 8), but Romanoschi does not teach or suggest that the avoidance of irritation is the reason for including functional agents in its compositions. See id. ¶ 2. Appeal 2021-002292 Application 15/833,127 8 Furthermore, Romanoschi teaches that multiple functional agents can be included in its compositions: As shown in the examples, compositions of the present invention may include a combination of one or more sensorial agents of the same type. For example, the compositions may contain a mixture of warming agents. On the other hand, a mixture of sensorial agents having differing affects may be used, e.g. warming and cooling agents. The selection of the sensorial agent combinations may be adjusted to fine-tune the intensity and duration of the sensation desired. Romanoschi ¶ 49. In addition, Romanoschi teaches that “[i]n addition, time- release effects may be achieved by certain sensorial agent combinations, or by treatment of sensorial agents such as by encapsulation methods and the like, to provide extended solubility in the base composition.” Id. We agree with the Examiner that a person of ordinary skill in the art would understand that the use of the term “time-release effects” can include delayed release of the functional agent, and could be employed, by means well understood by those of skill in the art, such that: [T]he second sensation ha[s] an onset of action that is different from an onset of action of the one or more sensorial agents effective to impart the first sensation such that the onset of action of the first sensation and the onset of action of the second sensation, as measured from a time of application of the lubricant composition to the contacted human tissue, are sequential and are temporally separated, as recited in claim 1. Finally, Appellant alleges that the Examiner employed impermissible hindsight reasoning in the rejection of claim 1. However, although: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, [ ] so long as it Appeal 2021-002292 Application 15/833,127 9 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, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971). Appellant adduces no evidence or argument to show that the Examiner, in rejecting the claims, relied upon knowledge that was not within the level of ordinary skill at the time the claimed invention was made, or that was gleaned only from disclosures of Appellant’s Specification. Absent any such evidence or argument, Appellant’s argument that the Examiner impermissibly employed hindsight reasoning must fail. We consequently are not persuaded by Appellant’s argument that the Examiner erred in determining that claim 1 is obvious over the cited prior art, and we affirm the Examiner’s rejection. Furthermore, because Appellant makes no separate arguments with respect to dependent claims 2-21, we similarly affirm the Examiner’s rejection of those claims. B. Claims 22 and 23 Issue Appellant makes additional arguments with respect to dependent claims 22 and 23. Claim 22 is representative and recites: “The lubricant composition of claim 1, wherein the one or more sensorial agents effective to impart the first sensation or the one or more sensorial agents effective to impart the second sensation comprise about 10% to about 25% by weight of the sensorial agent package.” App. Br. 20. Appellant contends that the Examiner erred in finding that the weight percentages recited in claims 22 Appeal 2021-002292 Application 15/833,127 10 and 23 would have been obvious for a skilled artisan to achieve through routine experimentation. Id. at 12. Analysis The Examiner finds that the concentration of the sensorial agents in the composition is a result-effective variable. Final Act. 7-8. The Examiner concludes, with respect to claims 22 and 23, that it would have been obvious for a person of ordinary skill in the art to vary the lubricant base, the type, number, and the concentration of sensorial agents, and formulation thereof, to obtain a lubricant composition having the desired effect. Id. at 8 (citing In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). Appellant argues that the Examiner erred because the general conditions of claims 22 and 23 (including the subject matter of independent claim 1) are neither taught nor suggested in the prior art. App. Br. 12. Appellant again contends that the Examiner has pointed to nothing in the teachings of Romanoschi that two sensorial agents in the same composition can be provided with different onsets of action that are sequential and temporally separated. Id. Similarly, argues Appellant, the Examiner has adduced no evidence of record that teaches that the relative concentrations of the sensorial agents have any effect such that a skilled person would be motivated to carry out experimentation to depart from the actual teaching of Romanoschi. App. Br. 12. Appellant contends that it is well known that a particular parameter must first be recognized as a result-effective variable, i.e., a variable that achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine Appeal 2021-002292 Application 15/833,127 11 experimentation. Id. (citing In re Antonie, 559 F.2d 618 (CCPA 1977); MPEP § 2144.0S(II)(B). Appellant contends that, according to Antonie, the Examiner must point out why the prior art teaches that this particular variable should be experimented upon to achieve the desired result. Id. at 13 (citing Antonie, 559 F.2d at 620). According to Appellant, the Examiner alleges only that it would be obvious to vary concentrations to provide “the desired effect,” but has pointed to no specific “desired effect” in Romanoschi. Id. Therefore, Appellant argues, there would have been no motivation for a skilled artisan to carry out routine experimentation. Id. Appellant again argues that the Examiner has based the present rejections on a hindsight analysis rather than what would have been predicted by a person of ordinary skill in the art. App. Br. 13. Appellant points to the Examiner’s citation to MPEP § 2112.02(11) in finding that products of identical chemical composition cannot have mutually exclusive properties. Id. Appellant contends that the Examiner has misrepresented an achieved result (e.g., warming or cooling) as being a chemical composition. Id. Appellant points out that, regardless of whether Romanoschi teaches lubricants capable of providing warming or cooling sensations, Romanoschi does not necessarily teach the same chemical compositions as recited in the claims on appeal. Id. Appellant asserts that one need only look to the examples of the Romanoschi and Appellant’s Specification to recognize that, whereas Romanoschi achieves warming or cooling using certain chemical compounds, the present invention is able to achieve provision of different sensations with different onsets of action that are sequential and temporally separated by using different combinations of compounds that are disclosed by Romanoschi. Id. at 13-14. Appeal 2021-002292 Application 15/833,127 12 The Examiner responds that the claims, as written, require a lubricating base and a sensorial agent package comprising one or more sensorial agents. Ans. 9. The Examiner finds that, when such a broad genus claimed, there is no basis to rely on to provide “the effect desired” nor to identify the result-effective variables. Id. at 9-10. We are not persuaded by Appellant’s arguments. Romanoschi teaches, with respect to heating and cooling functional agents, that: As would be understood by one of ordinary skill in the art, the same compound may act differently depending on its[] use level in the composition. For example, a compound may act as a warming agent at a certain use level, yet the same compound will act as a tingling sensorial agent at a higher use level. Romanoschi ¶ 37; see also id. at ¶¶ 43-44. We conclude that it would therefore be self-evident to a person of ordinary skill in the art that the concentration of a given functional agent is a result-effective variable, because differing concentrations can provide different perceptual effects in a person when the composition is applied. We consequently agree with the Examiner that it would have been obvious to vary the concentrations of the sensorial agents in the composition so as to optimize the perceived effects of the agents. With respect to Appellant’s assertion that “Romanoschi does not necessarily teach the same chemical compositions” as recited in the claims on appeal (see App. Br. 13), we fail to see the relevance of this argument. Neither independent claim 1 nor any of the dependent claims recites a specific sensorial agent, and thus, any functional sensorial agent, including those taught by the prior art, would fall within the scope of Appellant’s claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (holding Appeal 2021-002292 Application 15/833,127 13 that, although the claims are interpreted in light of the Specification, limitations from the Specification may not be read into the claims). Because the Examiner has established a case that Appellant’s claims are prima facie obvious over the prior art, and because Appellant’s arguments are not persuasive of error upon the Examiner’s part, we affirm the Examiner’s rejection of the claims. CONCLUSION The rejection of claims 1-23 as unpatentable under 35 U.S.C. § 103 is 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-23 103 Romanoschi 1-23