CRODA, INC.

Patent Trials and Appeals Board

Sep 24, 2021

2021000262 (P.T.A.B. Sep. 24, 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.
14/775,144 09/11/2015 ABEL G. PEREIRA CDA-142US 2550
23122 7590 09/24/2021
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
TCHERKASSKAYA, OLGA V
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABEL G. PEREIRA and ERIK GUNDERMAN
Appeal 2021-000262
Application 14/775,144
Technology Center 1600
Before LINDA M. GAUDETTE, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–19, 21, 23, and 29–33.2 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 Croda, Inc. Appeal
Br. 1.
2 Claims 25–28 are pending in the Application but have been withdrawn as
directed to non-elected species. Non-Final Act. 2.
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Application 14/775,144

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CLAIMED SUBJECT MATTER
The claims are directed to personal care products, such as anti-
perspirants, moisturizing lotions, hair conditioners, shampoos, sun screens
and the like, which comprise alkoxylated fatty alcohol alkyl ethers. Claim
14, reproduced below, is illustrative of the claimed subject matter:
14. A personal care product comprising:
(I) at least about 0.25 % by weight of a compound of
Formula X:
R1O - A - R2 (Formula X)
wherein:
i) A is (PO)n, where P is a branched alkyl group having 3
carbons and n is an integer ranging from 2 to 10;
ii) R1 is a branched or unsaturated hydrocarbon having 14
to 24 carbons which are substituted or unsubstituted; and
iii) R2 is a methyl group, an ethyl group, a linear or
branched alkyl group having 3 to 5 carbons, or a substituted or
unsubstituted aromatic ring; and
(II) a dermatologically acceptable excipient.

Appeal Br. 7, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Royce US 2003/0143174 A1 July 31, 2003
Manelski US 2004/0180032 A1 Sept. 16, 2004
Scherl US 2009/0286684 A1 Nov. 19, 2009
Fujii WO 96/36583 Nov. 21, 1996
Carlisle WO 00/23544 Apr. 27, 2000

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Application 14/775,144

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REJECTIONS
The Examiner has rejected the claims as follows3:
Claims 29 and 30 have been rejected under 35 U.S.C. § 112 second
paragraph as indefinite. Non-Final Act. 4–5.
Claims 14–19, 21, 23 and 29–33 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fujii in view of Scherl, Carlisle, Royce and
Manelski. Non-Final Act. 6–11.
OPINION
Indefiniteness
The Examiner has rejected claims 29 and 30 as indefinite. Non-Final
Act. 4–5. The Examiner finds that claim 29 recites the terms “oleth-10” and
“oleth-20” which appear to be product names. Id.
With respect to claim 30, the Examiner finds that the claim defines
viscosity in terms of a reference compound that can be varied. Non-Final
Act. 5. The Examiner concludes “there is no clear cut indication of the
scope of the subject matter covered by the claim, one of ordinary skill in the
art would not know from the claim terms what structures are encompassed
by the claim.” Id.
Appellant has not presented any arguments in the briefing on Appeal
with respect to this rejection.4 See Appeal Br. 2–3. We therefore affirm the
rejection of claims 29 and 30 as indefinite under 35 U.S.C. §112.

3 The Examiner has rejected claim 21 under 35 U.S.C. § 112, fourth
paragraph as being in improper dependent form. Non-Final Act. 5. This
rejection is withdrawn. Ans. 3.
4 We note that Appellant presented arguments relating to claims 29 and 30 in
an Amendment filed after the Notice of Appeal dated April 9, 2020.
However, the Examiner finds that the amendment and argument do not
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Application 14/775,144

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Obviousness
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that the subject matter of
claims 14–19, 21, 23, and 25–33 would have been obvious to one of
ordinary skill in the art at the time the invention was made over Fujii
combined with Scherl, Carlisle, Royce and Manelski.
The Examiner finds that Fujii teaches a cosmetic composition
comprising novel ether compounds that act
(i) as oil agents for cosmetics/detergents/lubricants being
colorless, odorless, free from change or development of color
and odor with the elapse of time, having little oily feeling,
excellent touch, pertinently low viscosity and no irritating effect
to eyes, and/or (ii) as surfactants tor penetrating agents,
emulsifiers, solubilizing agents, dispersing agents, having
pertinently low viscosity and little stickiness.

Non-Final Act. 6.
The Examiner finds that while Fujii teaches compounds with the
formula R1O - A - R2, it does not teach “that R1 may include from 14 to 24
carbon atoms, e.g., isostearyl, behenyl groups, or cetyl groups (Claims 14–
19, 21 and 31–33), and/or R2 as a benzyl group.” Id. at 8.
The Examiner finds that Scherl teaches ether compounds having the
formula R1--(OA1)x(OA2)y(OA3)z--O--R2 where
R1 is a linear or branched, saturated or unsaturated alkyl
group having from 6 to 30, or is a cyclic alkyl radical having
from 5 to 6 carbon atoms; and

overcome the rejection based on indefiniteness. Advisory Act. 3. While
Appellant’s response was entered into the record, the arguments presented
therein are not presented to us in this Appeal.
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Application 14/775,144

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(iii) R2 is hydrogen, or alkyl group having from 1 to 8
carbon atoms (e.g., methyl, ethyl, and the like), or an alkylaryl
group having from 6–10 carbon atoms, e.g., benzyl.

Id.
The Examiner finds that Carlisle teaches polyalkylene glycol having a
structure falling within the scope of the claims and can be used to control
stickiness/adhesiveness of oil phase to surfaces. Id. at 9, 14.
The Examiner finds that Royce teaches personal care products
comprising at least 0.05 wt% of polyalkylene oxide alkyl ethers. Id. The
Examiner finds that Manelski teaches a personal care product such as a
cosmetic that may include alkoxylated alcohols or ethers. Id. at 10.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to use polyalkylene oxide
alkyl ethers taught by Scherl and Carlisle in compositions
taught by Fujii, Royce and Manelski. One would do so with
expectation of beneficial results, because Scherl and Carlisle
teach alkoxylated _fatty_alcohol alkyl ethers providing multiple
functionalities as surfactants, foam-suppressing agents, wetting
agents and/or dispersants (by Scherl) and/or oil agents for
controlling stickiness/adhesiveness of oil phase to surface (by
Carlisle).

Id. at 10–11.
Appellant contends that each of the references fails to suggest a
personal care product containing a compound of formula X that would
exhibit lower tackiness when compared with a similar product without a
compound of the formula X. Appeal Br. 3–4. Appellant cites to the
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Application 14/775,144

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Declaration of Abel Pereira5 to support its contention that personal care
products containing a compound of Formula X exhibit lower tackiness as
compared to a composition without the compound. Id. at 2–3. Appellant
also contends that the reduced tackiness exhibited by the composition
containing a compound of formula X is an unexpected improvement over the
prior art sufficient to overcome the Examiner’s prima facie case of
obviousness. Id. at 4–5.
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Non-Final Action and
Answer regarding this rejection. We find the Examiner has established a
prima facie showing that the subject matter of the claims would have been
obvious over Fujii combined with Scherl, Carlisle, Royce and Manelski to a
person of ordinary skill in the art at the time the invention was made.
Appellant has not produced evidence showing, or persuasively argued, that
the Examiner’s determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015). We have identified claim 14 as representative;
therefore, all claims fall with claim 14. We address Appellant’s arguments
below.
Appellant contends that none of the references teach or suggest a
personal care composition comprising a compound of formula X that
exhibits reduced tackiness. Appeal Br. 3–4. We are not persuaded by this
argument.

5 Declaration Under 37 C.F.R. § 1.132, filed June 7, 2019 (“Pereira Decl.”)
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To begin, we note that Appellant argues each reference separately
whereas the rejection is based on the combination of references. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In addition, Fujii teaches that compositions containing the ether
compounds described therein exhibit little stickiness and excellent touch.
Fujii 1. Scherl teaches that the ethers disclosed therein can be used as
surfactants, wetting agents and dispersants. Scherl ¶ 41. Royce and
Manelski both teach the use of the use of alkylene oxide alkyl ethers in
personal care compositions. Royce Abstr.; Manelski ¶ 180. We agree with
the Examiner, and Appellant does not dispute, that one skilled in the art
would have been motivated to use the ethers of Scherl or Carlisle in the
personal care compositions of Fujii Royce and/or Manelski. Non-Final Act.
11, 14. We also agree with the Examiner that, given the teachings of Fujii
and Carlisle, one skilled in the art would have expected the composition to
exhibit reduced stickiness.6 Id.
Appellant contends that the data presented in the Pereira Declaration
shows unexpected results sufficient to overcome the Examiner’s prima facie
case of obviousness. Appeal Br. 4–5. We are not persuaded by Appellant’s
argument or the evidence presented in the Declaration.

6 We note that in the test reported in the Pereira Declaration, stickiness is
equated to tackiness. See Pereira Decl. ¶ 8.
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The Declaration reports the result of a panel test where subjects were
asked to compare two formulations, one containing an ether of the invention
and one without. Pereira Decl. ¶¶ 7–8. The composition containing the
ether compound was reported to exhibit less tackiness than the composition
without the ether compound. Id. ¶ 8. Mr. Pereira testified that the result was
unexpected. Pereira Decl. ¶¶ 11–14.
We find the results reported in the Declaration to be unpersuasive of
unexpected results sufficient to demonstrate non-obviousness as the results
are not commensurate with the scope of the claims. “The evidence presented
to rebut a prima facie case of obviousness must be commensurate in scope
with the claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361
(CCPA 1979).
The data reported in the Declaration is limited to a single example of a
compound of Formula X whereas the claims embrace a much wider class of
compounds. As the Examiner points out, “[t]here is no discussion of why
this single example would be expected to represent the full scope of Formula
X so there is no way to determine if the ‘unexpected’ property would be
demonstrated by formulations containing other compounds within the scope
of Formula X.” Ans. 5.
Based on the foregoing we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of
claims 14–19, 21, 23 and 29–33 would have been obvious to one of ordinary
skill in the art at the time the invention was made.
CONCLUSION
The Examiner’s rejections are affirmed.
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Application 14/775,144

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More specifically, the rejection of claims 29 and 30 under 35 U.S.C.
§ 112 second paragraph as indefinite is affirmed.
The rejection of claims 14–19, 21, 23 and 29–33 under 35 U.S.C.
§ 103(a) as unpatentable over Fujii in view of Scherl, Carlisle, Royce and
Manelski is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
29, 30 112 Indefiniteness 29, 30
14–19, 21,
23, 29–33
103 Fujii, Scherl,
Carlisle, Royce,
Manelski
14–19, 21,
23, 29–33

Overall
Outcome
14–19, 21,
23, 29–33

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED