Edward Dewey. Smith et al.

Patent Trials and Appeals Board

Jan 14, 2020

15135648 - (D) (P.T.A.B. Jan. 14, 2020)

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.
15/135,648 04/22/2016 Edward Dewey SMITH III 13806M 2004
27752 7590 01/14/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
OGDEN JR, NECHOLUS
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD DEWEY SMITH III,
SHAWN DAVID McCONAUGHY,
JIANJUN JUSTIN LI, and
MARC ADAM FLICKINGER

Appeal 2019-002490
Application 15/135,648
Technology Center 1700
Before ROMULO H. DELMENDO, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
Appeal 2019-002490
Application 15/135,648

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DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a rinse-off cleansing
composition. Appeal Br. 1–2. According to Appellant, most perfume in
cleansing compositions is washed away during rinsing and the skin retains
no or very little scent and only for a short duration after cleaning. Spec.
4:27–30. Appellant seeks to improve perfume retention on the skin by
providing perfume in a microemulsion comprising a surfactant and a hydric
solvent. Id. at 6:12–16. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A rinse-off cleansing composition, comprising:
a. from about 20% to about 34%, by weight of the
composition, of surfactant;

1 In this Decision, we refer to the Specification dated April 22, 2016
(“Spec.”), the Final Office Action dated April 5, 2018 (“Final Act.”), the
Appeal Brief dated September 13, 2018 (“Appeal Br.”), the Examiner’s
Answer dated November 30, 2018 (“Ans.”), and the Reply Brief dated
January 30, 2019 (“Reply Br.”).

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The
Procter & Gamble Company. Appeal Br. 1.
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b. from about 4% to about 30%, by weight of the
composition, of a perfume, wherein the weight percent of
perfume is from about 10% to about 90%, by weight of the
surfactant;
c. from about 3% to about 20%, by weight of the
composition, of a solvent, wherein at least 3% of the solvent,
by weight of the composition, comprises a hydric solvent and
wherein the weight percent of the hydric solvent is from about
8% to about 60%, by weight of the surfactant; and
d. from about 10% to about 73%, by weight of the
composition, of water; wherein the rinse-off cleansing
composition has a G' at 1 Hz of about 25 Pa to about 3000 Pa
wherein said composition exhibits enhanced perfume retention
on the skin after use.
Appeal Br. 8 (Claims Appendix).

REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Frantz US 2003/0180246 A1 Sept. 25, 2003
Taylor US 2012/0015009 A9 Jan. 19, 2012

REJECTION
The Examiner maintains the rejection of claims 1–25 under 35 U.S.C.
§ 103 as being unpatentable over Taylor in view of Frantz. Ans. 3.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented and each of Appellant’s arguments in this appeal, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 2–6.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv)
(2013), we limit our discussion to claim 1, and all other claims on appeal
stand or fall together with claim 1.
The Examiner finds that Taylor teaches a multi-phase personal
cleansing composition that may be a rinse-off composition, comprising at
least 0.40% by weight of a blooming perfume, 0–80% of solvents such as
dipropylene glycols, 30–90% by weight of water or aqueous phase, and 2–
40% of a surfactant. Final Act. 2 (citing Taylor abstract, ¶¶ 15–17, 19, 30–
31, 38–41, and 52). The Examiner finds that Taylor does not specifically
teach the percentage by weight of the composition of perfume, or the
percentage by weight of the composition of solvent, as recited in appealed
claim 1. Id. at 2–3. The Examiner finds that a person of ordinary skill in the
art would have optimized Taylor’s proportions in order to reach the claimed
percentage range of perfume in the composition. Id.
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The Examiner finds that Frantz teaches aqueous personal cleansing
formulations comprising surfactants, thickening agents, perfumes, and
humectants such as dipropylene glycol. Id. at 3 (citing various parts of
Frantz). The Examiner finds that Frantz teaches using dipropylene glycol at
levels up to 10% of the composition (citing Frantz ¶ 83), and that a person of
ordinary skill in the art would have been able to optimize the amount of
dipropylene glycol in order to reach the claimed percentage range of solvent.
Id. at 4.
Appellant argues that Taylor teaches levels of perfume that are well
below the lowest level of perfume recited in claim 1, and further argues that
it is impossible to tell from Taylor’s examples how much perfume is in the
final composition. Appeal Br. 2–3. These arguments do not persuasively
identify error because the Examiner’s rejection is based on a person of
ordinary skill in the art optimizing the percentage of perfume taught in
Taylor, which teaches that its composition comprises at least 0.40% by
weight of blooming perfume ingredients, without an upper limit. Taylor
¶ 19. Appellant does not dispute this teaching, or point to evidence of record
to show that the claimed percentage levels of perfume are critical. Similarly,
Appellant’s argument that “Taylor is focused on compositions which bloom
in the shower and leave little to no residual scent on the skin” and therefore
“does not support the rationale in the Office Action that Taylor’s open ended
perfume amount reads on a higher level” (Appeal Br. 4) is not persuasive
because it does not rebut the Examiner’s finding that a person of ordinary
skill in the art would have been motivated to optimize the amount of
perfume upwards from 0.40% in view of Taylor’s teaching of perfumed
compositions that provide “significantly noticeable scent in the shower.”
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Ans. 6 (citing Taylor ¶ 6). See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”)
Appellant further argues that the Examiner fails to show a teaching in
Taylor of 3% to 20% solvent, at least 3% of which is hydric, or weight
percentage of hydric solvent by weight of surfactant (as recited in appealed
claim 1) or the weight percentage of dipropylene glycol (as recited in
appealed claims 20 and 25). Appeal Br. 4. This argument does not
persuasively identify error because the Examiner’s rejection is based on
Frantz’s teaching of dipropylene glycol used as a humectant at concentration
levels up to 10%. Ans. 7 (citing Frantz ¶ 83). The Examiner reasons that a
person of ordinary skill in the art would have been motivated to adjust the
dipropylene glycol solvent in Taylor’s composition to the amount taught by
Frantz, in view of the benefit of humectants taught by Frantz, and in order to
optimize the amount of solvent in Taylor. Id. at 7–8. Based on the
preponderance of the evidence, we agree with the Examiner’s rationale as to
why a person of ordinary skill in the art would have combined the teachings
of Taylor and Frantz. Further, Appellant’s argument that there is nothing in
Frantz to overcome the lack of teaching in Taylor with respect to perfume
levels, hydric solvent by weight of surfactant, or G’ levels is not persuasive
because it attacks the references individually when the rejection is based is
on a combination of the references. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Based on our determination above that the Examiner did not err in
finding that the combination of Taylor and Frantz teaches all of the
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ingredients of Appellant’s claimed cleansing composition, with their
requisite proportions, we do not find persuasive Appellant’s argument
specifically directed to the limitation of G’ in claims 1, 14, and 21 (Appeal
Br. 6–7), which is based on Appellant’s contention that the Examiner “failed
to show teachings of several claimed elements at least some of which can
impact the G’ value”). Id.
We have also considered Appellant’s argument that Taylor is not
relevant prior art for the problem solved by the claimed subject matter,
because Appellant is claiming a method of enhancing in-vitro bloom and
retention of a rinse-off composition, in contradiction to Taylor, which
teaches a product that leaves little or no residual odor on the skin and hair
after the shower. Appeal Br. 4–5 (citing Taylor ¶ 4). Appellant’s argument
is not persuasive of error, because Taylor is relevant for all that it reasonably
would have suggested to a person of ordinary skill in the art, and Appellant
does not dispute that it teaches at least 0.40% by weight of the composition
of perfume. To the extent that Appellant is attempting to argue that Taylor
teaches away, Appellant does not point to any teaching in Taylor that would
discourage increasing the level of perfume to the claimed range, and
therefore, Taylor does not teach away from the claimed subject matter.
With regard to Appellant’s argument specifically directed to the
additional limitation recited in claims 18 and 22 that “the composition is a
microemulsion or contains a microemulsion phase” (Appeal Br. 7), we are
not persuaded by Appellant’s argument that the Examiner failed to show a
teaching of this limitation, because the Examiner found that Taylor’s
composition will comprise a microemulsion upon mixing of its benefit and
cleansing phases. Final Act. 11. Appellant does not appear to dispute that
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finding, and thus, does not persuade us of error in the rejection. See In re
Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and naked assertion that the corresponding
elements were not found in the prior art).

CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–25 103 Taylor, Frantz 1–25
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED