Ex Parte 6841523 et al

Patent Trial and Appeal Board

Mar 24, 2014

95001150 (P.T.A.B. Mar. 24, 2014)

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.
95/001,150 04/14/2009 6841523 7189984 6492
23413 7590 03/25/2014
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/25/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CALICO LABORATORIES, INC.
Requester1

v.

VI-JON LABORATORIES, INC.2
Patent Owner and Appellant
____________

Appeal 2014-000033
Reexamination Control 95/001,150
Patent 6,841,523 B1
Technology Center 3900
____________

Before JAMES T. MOORE, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 Requester, Calico Laboratories, Inc., did not participate in this appeal. See Right
of Appeal Notice mailed August 17, 2012 (“RAN”), at 2; see also Requester’s
Notification of Concurrent Proceedings, filed November 24, 2009.

2 Vi-Jon is identified as the real party-in-interest in the Patent Owner's Appeal
Brief, filed November 19, 2012 (hereinafter "App. Br."), at 4.
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Patent Owner Vi-Jon ("Patent Owner") appeals under 35 U.S.C. §§ 134(b)
and 315(a) the Examiner’s decision to reject claims 1-52. See App. Br. 4;
Examiner's Answer 3 (mailed May 21, 2013) (hereinafter "Ans.") (incorporating
the grounds of rejection recited in the RAN). We have jurisdiction under 35
U.S.C. §§ 134(b) and 315(a).
We heard oral arguments from Patent Owner on February 19, 2014, a
written transcript of which will be entered into the electronic record in due course.
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 6,841,523 B1 (hereinafter the “’523 Patent”), which is
the subject of the current inter partes reexamination, issued to Benjamin J. Holtz
on January 11, 2005. As previously mentioned, Requester did not file a
Respondent Brief in this appeal.
The ’523 Patent relates to a single phase aqueous methyl acetate nail polish
remover composition. Col. 2, ll. 25-26. The ’523 patent states that methyl acetate
has a solubility in water of 22% and that about 5-75% glycol ether is added to
make a haze free single phase system. Col. 3, ll. 60-64.
Independent claim 1, which is illustrative of the appealed subject matter, is
an original claim and reads as follows:
1. A single phase aqueous based nail polish remover
composition comprising:
a) about 20 to about 80% methyl acetate;
b) about 5% to about 75% of a glycol ether coupling agent;
c) an effective amount of a buffering agent to maintain a pH of
about 5 to about 9; and
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d) about 10% to about 70% water.
App. Br. 31, Claims App’x.
Independent claims 25, 34, and 44 were added during reexamination. Claim
25 further adds a limitation that the composition is “haze free.” Id. at 33. Claim
34 is similar to claim 1 but uses a “consisting essentially of” transitional phrase
instead of the “comprising” language of claim 1. Id. at 34. Claim 44 is similar to
claim 1 but uses a “consisting of” transitional phrase and further includes ranges of
dimethyl ester, acetone, and certain recited additives. Id. at 35.
Patent Owner contests the Examiner’s decision to reject the claims under 35
U.S.C. § 103 (a) as obvious over Jarema3 in view of Junino4 and Perlman5 either
alone or in view of additional prior art of record. See RAN at 3-12 and App. Br. 6-
7 (detailing the specific rejections on appeal). Patent Owner’s arguments are
directed only to the Examiner’s reliance on Jarema, Junino, Perlman, and Jerusik,6
the latter being relied upon for using sodium acetate as the recited buffering agent
in certain dependent claims.

THE PRIOR ART
Jarema
Jarema describes a thickened nail polish remover including a solvent/water
blend containing about 70% to about 95% organic solvent and from about 5% to
about 30% water by weight. Col. 3, ll. 1-3. Jarema describes that both glycol

3 U.S. Patent 6,028,040 issued February 22, 2000 to Chester P. Jarema.
4 FR 2 709 665 published March 17, 1995 naming Alex Junino et al. as inventors.
This decision references the English language translation of record, submitted at
Exhibit B to the Request for Inter Partes Reexamination.
5 U.S. Patent 6,156,711 issued December 5, 2000 to Daniel Perlman.
6 U.S. Patent 5,004,749 issued April 2, 1991 to Russell J. Jerusik, et al.
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ethers and methyl acetate are “[s]uitable organic solvents.” Col. 2, l. 50-54.
Jarema further describes that “[b]lends of organic solvents can also be used.” Col.
2, l. 54.
Jarema describes that methyl acetate is “essentially immiscible with water.”
Col. 2, ll. 56-57. Jarema teaches including an alcohol to couple the solvent and
water so that they do not separate. Col. 2, ll. 57-60. When an alcohol is added,
Jarema describes using 25% to about 85% organic solvent, about 10% to about
45% alcohol, and from about 5% to about 30% water. Col. 3, ll. 3-8.
Jarema further describes that
Advantageously, the thickened nail polish remover can be the same
formulation as a currently marketed product, except that the thickener
and neutralizing agent are added to make a thickened or gelled
product. Consumers have recently shown a preference for various
types of gelled products.
Col. 4, ll. 28-33.

Junino
Junino describes a nail polish remover composition including a mixture of
methyl acetate and water in a ratio of from 90/10 to 60/40. Page 1, ll. 30-33
(Abstract). Junino describes the composition as being “stable, homogeneous, not
defatting, and may be free of a third solvent and/or surfactants.” Page 1, ll. 36-37.
Junino particularly distinguishes its composition from nail polish removers
in “a biphasic form (organic phase-aqueous phase).” Page 3, ll. 12-17. Junino
teaches that the “basis of the present invention” is accomplished by “enabling the
proportion of water in the mixture then to advantageously reach high values.” Page
3, ll. 23-27.
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Junino further describes that “[t]he composition according to the invention
can be presented in liquid form, but also in the form of gels due to the addition of
standard gelling agents.” Page 4, ll. 20-21.

Perlman
Perlman describes a substantially non-volatile nail polish remover
composition comprising “gamma butyrolactone (abbreviated GBL) and/or
propylene glycol ether” as organic solvents. Col. 3, ll. 2-5; col. 8, ll. 41-47; col.
11, l. 66 to col. 12, l. 4; col. 16, ll. 30-32. Perlman also describes supplementing
GBL-containing compositions with propylene glycol ether as a “co-solvent[].”
Col. 6, ll. 35-55. However, Perlman states that “[p]referably both butyrolactone
and a propylene glycol derivative solvent are present” and “[p]referably the
butyrolactone concentration is greater than the propylene glycol derivative solvent
concentration.” Col. 8, ll. 47-50; see also col. 12, ll. 31-65 (describing a
composition including both gamma butyrolactone and propylene glycol ether as
“preferred”). Perlman further describes that propylene glycol ether solvents used
alone being “somewhat slower to dissolved dried nail lacquers.” Col. 14, ll. 16-19;
see also Example 1, col. 23, l. 1 to col. 24, l. 12.
Perlman states that the co-solvent may be added as a “diluent, humectant,
active co-solvent, solubilizing agent for another component (e.g., a thickening
agent).” Col. 6, ll. 58-62. Perlman also identifies propylene glycol as particularly
useful as a “humectant/diluent.” Col. 7, ll. 31-35.
Perlman further teaches that a thickening agent is “preferred.” Col. 4, ll. 14-
16; col. 7, ll. 7-10; col. 15, ll. 48-49.

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Jerusik
Jerusik describes a biocidal composition comprising 1, 2-benzisothiazolin-3-
one in water and a buffering agent to maintain a pH of about 3 to 7. Col. 1, ll. 7-
17.
Jerusik describes that buffering compositions are well known in the art and
includes acetic acid and sodium acetate as preferred buffering agents. Col. 2, ll.
23-34.

THE REJECTION
The Examiner determines that Jarema teaches a nail polish remover
composition as recited in the claims, except that it fails to describe the inclusion of
a buffering agent to maintain the recited pH range (RAN 3). The Examiner
concludes that “[i]t would have been obvious to one of ordinary skill in the art to
prepare a nail polish removing composition as in Jarema, including a blend of the
solvents methyl acetate and glycol ether in view of the teachings of Junino and
Perlman, as each provided an effective solvent with fewer skin and environmental
complications than solvents having higher volatility such as acetone or ethyl
acetate.” RAN 4. The Examiner also concludes that “[i]t would further have been
obvious to include a buffer agent to maintain the pH between 5 and 9 as taught by
Perlman and as recognized in the art as an appropriate pH being compatible with
skin contact applications.” RAN 4-5.

DISCUSSION
As an initial matter, Patent Owner has not presented separate arguments for
all of the rejected claims. Any claim not separately argued will stand or fall with its
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respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). Patent Owner
presents arguments with respect to all of the claims on appeal as a group (App. Br.
9-23), for which we select claim 1 as a representative claim. Patent Owner also
presents separate arguments as to the Examiner’s application of the teachings of
Jerusik. App. Br. 23-25. Since Jerusik was added to address the claims which
particularly recite “sodium acetate” as a buffering agent (see e.g., RAN 6), we
address these claims (claims 3, 14, 20, 27, 36, and 45) as a group, for which we
select claim 3 as a representative claim. Patent Owner also presents separate
arguments with respect to claims 34-43 and 44-52 as a group (App. Br. 25-29), for
which we select claims 34 and 44 as representative claims, respectively. Finally,
Patent Owner present separate arguments with respect to claims 25-33 (App. Br.
29-30), for which we select claim 25 as a representative claim.

CLAIM 1
Issue
The issue on appeal is:
Does the evidence taken as a whole show that the Examiner erred in
determining that one of ordinary skill in the art would have had a reasonable
expectation of success in forming a nail polish remover composition comprising
the amounts of methyl acetate, water, and glycol ether recited in claim 1?

Analysis
Patent Owner argues that, despite the fact that Jarema describes the use of
glycol ether as a desirable solvent, the skilled artisan would not have used glycol
ether because there would have been no expectation of success that the glycol ether
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would have compatibilized methyl acetate and water. In other words, Patent
Owner argues that the prior art does not instruct the skilled artisan to use glycol
ether to form a single phase composition because of the known immiscibility of
methyl acetate and water. See generally, App. Br. 11-23.
Patent Owner specifically argues that Jarema only describes the use of
alcohols, namely isopropyl or ethyl alcohol, to address the immiscibility of methyl
acetate and water. Id. at 11 (citing Jarema, col. 2, ll. 60-62). According to Patent
Owner, “one of ordinary skill in the art upon reading Jarema, Junino and Perlman
would not be apprised as to whether the specific use of glycol ether would act as a
successful replacement for the strongly recommended alcohols in Jarema (such as
isopropyl alcohol and ethyl alcohol) . . . , and not glycol ethers, in compatibilizing
the methyl alcohol with water.” Id. at 12. Patent Owner relies on the declaration
testimony of William F. Bailey, dated August 19, 2009, in support of this position.
Id. 11-23. However, Bailey’s generally opinion testimony is entirely based on the
teachings in the reference and provides no factual based evidence in addition to the
teachings of the prior art itself.
Patent Owner asserts that one of ordinary skill in the art would not have
chosen glycol ether over other alcohols as a solvent in the composition of Jarema.
See App. Br. 14-20. Patent Owner alleges that the skilled artisan would not have
chosen glycol ether, of all the solvents described in Jarema, as a coupling agent for
methyl acetate and water given the known solubility parameters of alcohols, glycol
ethers, methyl acetate and water. Id. Patent Owner relies on the evidence provided
in Burke7 in support of this position. App. Br. 14-20.

7 John Burke, “Solubility Parameters: Theory and Application,” The Book and
Paper Group Annual, vol. 3 (1983).
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Patent Owner’s arguments regarding what the skilled artisan would have
expected regarding the use of glycol ether as a coupling agent are unpersuasive.
Jarema describes the use of glycol ethers as one of as one of five specifically
mentioned types of organic solvents, with several specifically mentioned examples,
and that blends of organic solvents can be used. Jarema, col. 2, ll. 50-54. Jarema
shows that glycol ethers were as well-known as methyl acetate as suitable organic
solvents.8 The Examiner finds that the skilled artisan would have added glycol
ether and methyl acetate “in view of the teachings of Junino and Perlman, as each
provides an effective solvent with fewer skin and environmental complications
than solvents having higher volatility such as acetone or ethyl acetate.” RAN 4;
Ans. 5.
The Examiner’s determination is factually supported. Methyl acetate is
described as a preferred organic solvent in Jarema’s nail polish remover “based on
a solvent/water blend” (Jarema, col, 2, ll. 45-54), and glycol ether is specifically
mentioned as a suitable solvent. Id. Jarema describes using blends of organic
solvents, making it obvious to have used the preferred methyl acetate combined
with any of the specifically mentioned suitable organic solvents, including glycol
ether. In addition, Perlman describes using propylene glycol ether either as a
solvent or co-solvent in nail polish removers, providing further reason to have
selected the glycol ether as a co-solvent taught by Jarema. Accordingly, the skilled
artisan would have a reasonable expectation of success in using a blend of methyl
acetate and a glycol ether as a suitable organic solvent for a nail polish remover.
The Examiner need show no more than this for the skilled artisan to have

8 This finding is further supported by the teachings of Perlman, which shows that
propylene glycol ethers may be used as a less-preferred single organic solvent for a
nail polish remover. See discussion of Perlman, supra.
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reasonable expectation of a composition comprising methyl acetate, glycol ether
and water to be suitable for use as a nail polish remover.
“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). The question to be asked is “whether
the improvement is more than the predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417. In this case, glycol ethers and
methyl acetate were known in the art as appropriate organic solvents for nail polish
removers. From the teachings of Jarema, a blend of organic solvents was also
known for nail polish removers. Thus, the use of a methyl acetate and glycol ether
blend as an organic solvent would have been no more than the predictable use of
known prior art organic solvents according to their established function as a
solvent for nail polish removers.
We have not been directed to sufficient persuasive evidence that the
suggested blend of glycol ether and methyl acetate was “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious step over
the prior art.” Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-419). Rather, with very few
disclosed types of solvents described in Jarema, it was reasonable for the Examiner
to find that the skilled artisan would have pursued any of these solvents, or blends
thereof, as solvent alternatives.
Moreover, the reason the skilled artisan would have added glycol ether need
not be for the same reason that the inventor of the ’523 Patent added glycol ether,
namely to couple the methyl acetate and water. The fact that a skilled artisan
would have added it as one of the suggested organic solvents is sufficient because
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“any need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in the
manner claimed.” KSR, 550 US at 420; In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); see also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion
to combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons contemplated by
the inventor.”).
We note that the Appellant is correct in observing that the claims recite the
use of “a glycol ether coupling agent.” Claim 1. However, glycol ether added in
the amounts recited in claim 1 necessarily would function as a coupling agent,
whether or not this function is expressly acknowledged in the prior art. Jarema is
silent as to the specific amounts of methyl acetate and glycol ether, but describes
the use of 70 to 95% total organic solvents. Jarema, col. 3, ll. 1-3. Further, the
Examiner found that Perlman teaches using glycol ether as a solvent in a preferred
concentration range of 0 to 49% (Perlman, col. 12, l. 48-50), which overlaps the
recited range of glycol ether of 5 to 75%, thus rendering the claimed range
obvious. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (“[a] claimed invention is rendered
prima facie obvious by the teachings of a prior art reference that discloses a range
that touches the range recited in the claim.”).
Similarly, as the claimed range of 5 to 75% is a broad concentration range, it
is reasonable, given the disclosure of glycol ether as a solvent, the skilled artisan
would have determined a workable concentration within the recited range. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (discovery of an
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optimum value of a variable in a known process is usually obvious); In re Aller,
220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
We see no error in with the Examiner’s rationale that the skilled artisan
would have recognized, based on Burke’s teachings, that a glycol ether is also an
alcohol. Therefore, based on the description in Jarema that alcohols assist with the
immiscibility of methyl acetate and water, the skilled working would have had
reasonable expectation of success to have included glycol ether as a coupling agent
as taught by Jarema. RAN 12; Ans. 5-6 (citing Perlman and Burke). Jarema
describes the use of 25 to 85% organic solvent (methyl acetate), 10 to 45% alcohol
(glycol ether), and 5 to 30% water (col. 3, ll. 3-7), sufficient to meet the
concentration ranges recited in claim 1 and thus inherently forming a single phase
nail polish remover.
Patent Owner has failed to meaningfully rebut the conclusion that it would
have been obvious to a skilled artisan to use the claimed amount of glycol ether
and methyl acetate, as organic solvents in an aqueous nail polish remover, and
achieve the necessarily resulting single phase composition.
The Patent Owner’s arguments regarding solubility parameters are
unpersuasive. Patent Owner’s calculations and analysis are not supported by
declaration testimony. Rather, the calculations are attorney argument, based on
statements in the Burke reference, which is directed towards selective dissolution
of materials. However, we are not persuaded that Burke supports Patent Owner’s
attorney’s calculations and analysis as regards the claimed subject matter.
For example, Patent Owner contends that Burke supports the principle that
“[a] solvent will generally dissolve another solvent or swell a polymer when the
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solubility parameter is proximate to the other solvent or polymer.” App. Br. 14
(citing Burke, p. 7). However, Burke teaches that the solubility parameter of a
mixture of solvents, namely toluene and acetone, can be calculated and compared
to other solvents to determine their similar ability to mutually dissolve a resin. See
Burke, p. 7 (“such a 2:1 toluene\acetone mixture should have solubility behavior
similar to chloroform. If, for example, a resin was soluble in one, it would
probably be soluble in the other.”). The principle described in Burke does not
describe that a solvent would be expected to compatibilize immiscible solvents
having a similar same solubility parameters, i.e. that chloroform would render
toluene and acetone miscible. 9
Moreover, we agree with the Examiner that Burke expressly states that the
formula for determining the solubility parameter of a mixture cannot be used when
water is one of the components. Ans. 6 (citing Burke, p. 2) (“water based systems
and those systems involving acid-base reactions cannot be evaluated by simple
solubility parameter systems alone”); see also Burke, p. 27 (“The presence of
water in a solvent blend, however, can alter dramatically the accuracy of solubility
predictions.”). As such, any reliance on solubility parameters with respect to a
methyl acetate and water mixture is not reasonable.
Finally, we note that all of Patent Owner’s arguments are directed towards
the fact that methyl acetate and water are immiscible for methyl acetate
concentrations greater than 22% by weight. See App. Br. 12, 20-21, and 29; see
also Bailey Decl. Appendix 10 (MSDS for methyl acetate confirming 22%
immiscibility); ’523 Patent, col. 3, l. 60. However, Patent Owner fails to address

9 We take judicial notice of the fact that toluene is miscible in acetone. Thus, the
mixture relied upon in Burke is irrelevant to the immiscible nature of water and
methyl acetate.
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the fact that claim 1 recites methyl acetates concentrations lower than 22%, namely
as low as 20%.
Accordingly, we affirm the rejection of claim 1 as being obvious over the
teachings of Jarema, Junino, and Perlman either alone or in view of additional prior
art along with the remaining claims that stand or fall with claim 1, as identified
supra.

CLAIM 3
Issue
The issue on appeal is:
Does the evidence taken as a whole show that the Examiner erred in
determining that one of ordinary skill in the art would have a reasonable
expectation of success in forming a nail polish remover composition comprising
the recited amounts of methyl acetate, water, and glycol ether, and sodium acetate
to maintain the pH between 5 and 9?

Analysis
Claim 3, depends from claim 1, and further recites that “the buffering agent
is about 0.01 % to about 1.0% sodium acetate.” The Examiner further cited Jerusik
to meet this limitation. RAN 6. Patent Owner argues that Jerusik is non-analogous
art because it is in the field of biocides, not nail polish removers, and because it is
not pertinent to the problem addressed by the ’523 Patent, namely “excellent
solvency and reduced environmental impact.” App. Br. 24. According to Patent
Owner, “[o]ne of ordinary skill in the art desirous of improving the solubility and
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solvency of a particular product would not be motivated to examine the field of
biocides nor the field of slurries for a solution.” Id.
We are not persuaded that Jerusik is non-analogous art for the limited
purpose for which the Examiner cites the reference. The Examiner relies on the
teachings of Perlman to show that it would have been obvious to one of ordinary
skill in the art to have maintained a nail polish remover composition at a pH
between 5 and 9 using a pH buffer. RAN 4; see e.g., Perlman, col. 5, ll. 8-20.
Patent Owner does not persuasively dispute this finding.
The Examiner relies on the teachings of Jerusik for the limited purpose of
determining buffering agents capable of maintaining a pH of between 5 and 9.
Jerusik teaches a composition, albeit for use as a biocide composition, having a pH
of between 3 and 7. Jerusik, col. 2, ll. 16-19. Jerusik teaches the use of sodium
acetate as a preferred buffering agent and further suggests that the use of buffering
agents would have been obvious to any artisan of the chemical arts in stating “[t]he
relative amounts of each component in such buffering agents may be readily
calculated by one of ordinary skill in the art from buffer table such as those present
in the ‘CRC Handbook of Chemistry and Physics’, CRC Press, Inc. pp. D-I44 et
seq., 66th Ed. (1985-86).” Jerusik, col. 2, ll. 36-40.
The problem addressed by the inventors of a composition having “excellent
solvency and reduced environmental impact” was reasonably suggested by
Perlman and Junino, which teaches nail polish removers with good dissolution and
less environmental impact, with a specific teaching of a glycol ether and methyl
acetate, respectively, as an alternative to acetone or ethyl acetate as solvents. See
e.g., Perlman, col. 7, ll. 42-55 and Junino, p. 2, ll. 1-14.
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Instead, the problem to be solved for which the Examiner resorted to Jerusik
would have been the determination of a suitable buffering agent. “A reference is
reasonably pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure
has the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” Id. We agree with the Examiner that Jerusik provide sufficient
evidence that sodium acetate was a recognized buffering agent, and Patent Owner
has not provided any persuasive evidence to the contrary.
Accordingly, we affirm the rejection of claim 3 as obvious over the
teachings of Jarema, Junino, Perlman, and Jerusik, either alone or in view of
additional prior art and the claims that stand or fall with claim 3, as identified
supra.

CLAIM 34
Issue
The issue on appeal is:
Does the evidence taken as a whole show that the Examiner erred in
determining that one of ordinary skill in the art would have a reasonable
expectation of success in forming a nail polish remover composition “consisting
essentially of” the recited components in claim 34?

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Analysis
Patent Owner argues that the “consisting essentially of” language claim 34
excludes the presence of a thickener and that such a thickener is required in the
compositions of Jarema and Perlman. App. Br. 25-29.
Patent Owner has failed to persuade us that the Examiner erred in not
finding that the “consisting essentially of” language excludes the presence of a
thickener or in concluding that Jarema, Junino and Perlman render obvious an
unthickened nail polish remover composition.
To establish that “consisting essentially of” excludes specific unlisted
ingredients, Patent Owner bears the burden of: (1) showing the basic and novel
characteristics of its claimed invention, and (2) establishing how those
characteristics would be materially changed by any allegedly excluded component
of an applied reference. See In re De Lajarte, 337 F.2d 870, 873-74 (CCPA 1964);
Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
Patent Owner directs us to nothing in the Specification of the ’523 Patent
indicating that the presence of a thickener would affect the basic and novel
characteristics of the Patent Owner’s invention. Rather, Patent Owner’s arguments
are directed to how the presence of a thickener may affect the nail polish
compositions of the prior art. See App. Br. 25 (“modification of Jarema to an
unthickened nail polish remover as suggested by the Examiner would render
Jarema unsatisfactory for its intended purposes.”).
Further, Patent Owner’s arguments, that the exclusion of a thickener would
render the composition unsuitable as a nail polish remover is contrary to the
express teachings of Jarema, which state that “the thickened nail polish remover
can be the same formulation as a currently marketed product, except that the
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thickener and neutralizing agent are added to make a thickened or gelled product.”
Jarema, col. 4, ll. 28-33. Similarly, Perlman teaches that a thickening agent is
merely “preferred.” Perlman, col. 4, ll. 14-16; col. 7, ll. 7-10; col. 15, ll. 48-49.
Junino also describes that “[t]he composition according to the invention can be
presented in liquid form, but also in the form of gels due to the addition of standard
gelling agents.” Junino, p. 4, ll. 20-21. Accordingly, preponderance of the
evidence of record suggests that the skilled artisan would have understood that a
composition suitable as a nail polish remover may be in either a liquid or gelled
form without affecting the compositions ability to remove nail polish. Patent
Owner’s arguments regarding the presence or absence of certain other advantages
of a gelled product over a liquid product do not refute the compositions suitability
as a remover of nail polish whether in a liquid or gelled form.
Accordingly, we affirm the rejection of claim 34 as obvious over the
teachings of Jarema, Junino, and Perlman, either alone or in view of additional
prior art and the claims that stand or fall with claim 34, as identified supra.

CLAIM 44
Issue
The issue on appeal is:
Does the evidence taken as a whole show that the Examiner erred in
determining that one of ordinary skill in the art would have a reasonable
expectation of success in forming a nail polish remover composition “consisting
of” the recited components in claim 44?

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Analysis
Patent Owner argues that the “consisting of” language claim 44 excludes the
presence of a thickener and that such a thickener is required in the compositions of
Jarema and Perlman. App. Br. 25-29.
Patent Owner has failed to persuade us that the Examiner erred in
concluding that Jarema, Junino and Perlman render obvious an unthickened nail
polish remover composition. We agree with Patent Owner that the transitional
phrase “consisting of” excludes a thickener as it is not identified as a listed
ingredient. See Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir.
2004) (“‘consisting of’ is a term of patent convention meaning that the claimed
invention contains only what is expressly set forth in the claim ... [however] it does
not limit aspects unrelated to the invention”); In re Gray, 53 F.2d 520, 521 (CCPA
1931) (the use of the claim term “consists” is limited to the claim's enumerated
alloy metals without other elements).
However, the teachings of Jarema, Junino, and Perlman described above are
sufficient evidence that the skilled artisan would have understood the use of the
thickener would have been optional and that a liquid composition would have been
equally useful form for a nail polish remover, even if not a preferred form in some
cases. Moreover, Junino suggests that, in some cases, the liquid form may be more
preferred than the gelled form. A reference may be relied upon for all that it would
have reasonably suggested to one having ordinary skill in the art, including non-
preferred embodiments. Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered.”)(quoting In re Lamberti, 545 F.2d 747, 750
(CCPA 1976)). Disclosed examples and preferred embodiments do not constitute
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a teaching away from a broader disclosure or non-preferred embodiments. In re
Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Patent Owner’s arguments are not
persuasive that a composition without a thickener, and thus meeting the
requirements of claim 44 would not have been obvious to one of ordinary skill in
the art.
Accordingly, we affirm the rejection of claim 44 as obvious over the
teachings of Jarema, Junino, and Perlman and further in view of additional prior art
and the claims that stand or fall with claim 44, as identified supra.

CLAIM 25
Issue
The issue on appeal is:
Does the evidence taken as a whole show that the Examiner erred in
determining that one of ordinary skill in the art would have a reasonable
expectation of success in forming a nail polish remover composition that is haze
free?

Analysis
Patent Owner argues that “[t]he compositions of Jarema and Perlman are
highly unlikely to be haze free, as they are directed to thickened nail polish
removers.” App. Br. 29. Patent Owner also argues that a two-phase composition,
as water and methyl acetate are immiscible, would not be haze free. Id. at 30.
For the reasons discussed above, we find Patent Owner’s arguments
unpersuasive. The prior art describes a thickened or unthickened nail polish
remover composition that is single phase and substantially identical to the claimed
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composition, so as to necessarily be haze free. Patent Owner’s arguments lack
meaningful evidence to the contrary.
According we affirm the rejection of claim 25 as obvious over the teachings
of Jarema, Junino, and Perlman, either alone or in view of additional prior art and
the claims that stand or fall with claim 25, as identified supra.

DECISION
In sum, we affirm the Examiner’s decision to reject Claims 1-52 under 35
U.S.C. § 103(a) as obvious over the teachings of Jarema, Junino and Perlman
either alone or further in view of additional prior art as identified by the Examiner.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
This is a final decision. Parties to the proceeding seeking
judicial review of the decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2. For judicial review of decisions arising out of
proceedings referenced in 37 C.F.R. § 90.1, the notice and service requirements are
governed by the pertinent regulations in effect on July 1, 2012.

AFFIRMED

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PATENT OWNER:
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103

THIRD-PARTY REQUESTER:

HUSCH BLACKWELL SANDERS LLP
190 Carondelet Plaza
Suite 600
St. Louis, MO 63105