Ex Parte Albrecht et al

Patent Trial and Appeal Board

Sep 26, 2013

11004650 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HARALD ALBRECHT, SVENJA CERV,
ALBRECHT DOERSCHNER, LUDGER KOLBE, JORG KUETHER,
CHRISTOPHER MUMMERT, STEPHAN RUPPERT and
MAREN WILKEN
__________

Appeal 2012-004558
Application 11/004,650
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to
cosmetic cleansing compositions. The Patent Examiner rejected the claims
as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify Beiersdorf AG as the real party in interest (App. Br. 3).
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STATEMENT OF THE CASE
Claims 70-99 are on appeal. Claims 70-73, 77, 79, 80, and 82 are
representative and read as follows:
70. A cosmetic cleansing composition, wherein the composition is present
in a liquid or gel form and comprises an extract of Radix Glycyrrhiza inflata
and one or more surfactants in an amount of from 5 % to 50 % by weight,
based on a total weight of the composition, the one or more surfactants
comprising at least one anionic surfactant.

71. The composition of claim 70, wherein the composition comprises at
least 10 % by weight of the one or more surfactants.

72. The composition of claim 70, wherein the composition comprises
from 5 % to 12 % by weight of at least one anionic surfactant.

73. The composition of claim 70, wherein the composition is present as a
shampoo.

77. The composition of claim 70, wherein the composition comprises
from 0.0001 % to 5 % by weight of an extract of Radix Glycyrrhiza inflata,
based on the total weight of the composition.

79. The composition of claim 70, wherein the composition comprises one
or more amphoteric surfactants in an amount of from 1 % to 20 % by
weight, based on a total weight of the preparation.

80. The composition of claim 70, wherein the one or more surfactants
comprise sodium laureth sulfate.

82. The composition of claim 70, wherein the composition is impregnated
on an insoluble substrate in a form of a wipe, a ball, a perforated nonwoven
or a net.

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The Examiner rejected the claims as follows:
• claims 70, 71, 77, and 84 under 35 U.S.C. § 102(b) as anticipated by
Oto;2 and
• claims 70-99 under 35 U.S.C. § 103(a) as unpatentable over Oto,
Hata,3 Hunter,4 and Sodium Lauryl Sulfate and Sodium Laureth Sulfate.5

ANTICIPATION
The Examiner found that Oto taught the claimed invention. (Ans. 4.)
Specifically, the Examiner found that Oto taught a milky lotion comprising
an extract of licorice root from a mixture of Glycyrrhiza glabra and
Glycyrrhiza inflata in an amount of 1 g/100g, i.e., 1% by weight. (Id.) The
Examiner found that Oto taught that its composition also comprised
hyaluronate sodium, which the Examiner found to be an anionic surfactant,
in an amount of 0.5 grams (0.5%). (Id.) Also, the Examiner found that
Oto’s composition further comprised the following additional surfactants:
monostearin acid glyceryl (2%); polyoxyethylene cetyl ether (2.5%); oleic
acid polyoxyethylene sorbitan (2%); 1,3-butylene glycol (3%); wherein the
total amount of combined surfactants totals 10%. (Id.)

2Patent Application Publication No. JP 2002-363054 A by Nobuaki Oto et
al., published Dec. 18, 2002.
3 Patent Application Publication No. JP 2003-238379 A by Hata Yuko et al.,
published Aug. 27, 2003.
4 J. Edward Hunter and Joseph F. Fowler, Jr., Safety to Human Skin of
Cocoamidopropyl Betaine: A Mild Surfactant for Personal-Care Products, 1
J. SURFACTANTS AND DETERGENTS 235-239 (1998).
5 Sodium Lauryl Sulfate and Sodium Laureth Sulfate, COSMETICS INFO.ORG,
http://www.cosmeticsinfo.org/HB1/20 (last visited Jun. 21, 2010).

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Appellants contend that the milky lotion of Oto “does not contain any
anionic surfactant,” as required by independent claim 70. (App. Br. 10.)
Appellants assert that “there is no evidence of record that sodium
hyaluronate is an anionic surfactant.” (Id.) Appellants rely on a discussion
of sodium hyaluronate in Wikipedia6 and assert that “[n]othing in the
…discussion …indicates or makes it reasonable to conclude that this
substance is an (anionic) surfactant.” (Id. at 10-12). Additionally,
Appellants assert that Oto describes hyaluronic acid as a substance having a
moisture retaining action, which according to Appellants “clearly has
nothing to do with the action exhibited by a surfactant.” (Id. at 12-13.)
Therefore, Appellants assert that “it [is] apparent that also the inventors of
OTO did not consider hyaluronic acid to be a surfactant.” (Id. at 13.)
Further, Appellants assert that the Specification describes hyaluronic acid as
a thickener, which is “a clear indication that hyaluronic acid is not intended
to be encompassed by the term ‘surfactant(s)’ recited in the instant claims.”
(Id.)
The Examiner responds that sodium hyaluronate is an anionic
polysaccharide, and a wetting agent, as evidenced by the Examiner’s
Reference U1.7 (Ans. 10.) The Examiner also found that the term “wetting
agent” is synonymous with the term “surfactant.” (Id.)(citing Examiner’s

6 (See App. Br. 10)(citing http://en.wikipedia.org/wiki/Sodium_hyaluronate,
accessed on the Internet on February 6, 2011 and submitted with the
response to the January 10, 2011 Final Office Action).
7 The Restorative Power of Sodium Hyaluronate,
http://www.disop.com/pdf/mp/comfort_drops_hya_en.pdf.
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References V18 and W19). Therefore, the Examiner reasoned that sodium
hyaluronate is an anionic surfactant. (Id.)
In the Reply Brief, Appellants assert,
even if one were to assume, arguendo, that the terms “wetting
agent” and “surfactant” can be synonyms, in the case of
document U1 the term “wetting agent” is clearly not used in the
sense of “surfactant” but merely indicates that sodium
hyaluronate is capable of wetting the eye, i.e., is suitable for
treating dry eye.

(Reply Br. 2.) Further, Appellants assert,
the wetting properties of sodium hyaluronate described by
[Oto] have nothing to do with the properties of a wetting agent
(surfactant) as this term is defined in document V1 (i.e., a
substance that reduces the surface tension of a liquid, causing
the liquid to spread across or penetrate more easily the surface
of a solid).

(Id. at 3-4.) Additionally, Appellants assert that “document W1 confirms
that surfactants and sodium hyaluronate are different types of substances and
also confirms the teaching of document U1, i.e., that sodium hyaluronate is a
‘wetting agent’ in the sense that it can be used to treat dry eye.” (Id. at 5.)
After considering the evidence and arguments, we find that the
Examiner has provided a sound basis, supported by the evidence, for finding
that sodium hyaluronate is an anionic surfactant. To begin, we note that
Appellants do not dispute that sodium hyaluronate is an anionic

8 http://www.thefreedictionary.com/wetting+agent, visited on Oct 14, 2011.
9 http://www.clspectrum.com/article.aspx?article=13005, visited on Oct., 14,
2011.
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polysaccharide. Nor do Appellants dispute that it is a wetting agent.
Further, Appellants do not assert that the terms “wetting agents” and
“surfactants” cannot be synonyms. Thus, Appellants have not rebutted the
Examiner’s finding that sodium hyaluronate may be considered an anionic
surfactant.
Appellants’ assertion that neither Oto nor the Examiner’s reference
U1 used sodium hyaluronate as a surfactant misses the point. The claimed
invention recites a composition “comprising at least one anionic surfactant.”
(App. Br. 26, Claims App’x.) To read on this composition claim limitation,
the prior art need only disclose a composition comprising a component that
is an anionic surfactant. The prior art does not, itself, need to identify or
describe using the component as such a substance to be anticipated. See
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987)( “A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.”).
Appellants also assert that “there is no evidence of record that
glyceryl monostearate and 1,3-butylene glycol are (nonionic) surfactants.”
(Id. at 14.) Regarding glyceryl monostearate, Appellants assert that “OTO
mentions glycerol monostearate as an example of an ester … not as an
example of any of the surface active agents ….” (Id.) According to
Appellants, “[t]his makes it apparent that also the inventors of OTO did not
consider glycerol monostearate to be a surfactant.” (Id.)
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Regarding 1,3-butylene glycol, Appellants rely on a discussion of the
chemical in an online article10 by asserting that “[n]othing in the …
discussion … allows the conclusion that this substance is a surfactant.” (Id.)
Further, Appellants assert that Oto describes 1,3-butyl glycol “as an example
of an alcohol … not as an example of the surface active agents ….” (Id. at
15.) Additionally, Appellants assert that the Specification discloses that
alcohols and polyols may be present as optional components of the aqueous
phase of the preparations of the instant invention, “mak[ing] it clear that 1,3-
butylene glycol is not intended to be encompassed by the term ‘surfactant(s)’
recited in the present claims.” (Id.)
However, the Examiner has provided evidence supporting the finding
that glyceryl monostearate is known to be a surfactant (see Ans. 12; referring
to, e.g., Examiner’s Reference Y111) which Appellants do not dispute.
Further, the Examiner provided evidence supporting the finding that 1,3-
butylene glycol is a surfactant. (Ans. 10)(citing Examiner’s Reference
X1.12) The reference states that butylene glycol “[a]cts as a ‘surfactant’
(wetting agent and solvent).” (Id.) Appellants have not established
otherwise by merely asserting that to “be a surfactant and to ‘act as’ a
surfactant is clearly not the same.” (Reply Br. 6.) Consequently, we find
that the record supports the Examiner’s finding that Oto disclosed a

10 (See App. Br. 14)(citing http://www.healthy-communications.com/
butylene.htm (accessed on the Internet on February 6, 2011 and submitted
with the response to the January 10, 2011 Final Office Action)).
11 Surfactant-Glyceryl Monostearate-GMS, http://www.alibaba.com/product-
gs/446103019/surfactant_Glyceryl_monostearate_GMS.html?s=p, visited
Oct. 14, 2011.
12 Amurie Toxin-Free Eco-Friendly Products,
http://www.amurie.com/learn_avoid1.html, visited on Oct. 14, 2011.
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composition comprising surfactants in an amount totaling 10%. (See Ans.
4.)
Accordingly, we affirm the Examiner’s anticipation rejection of claim
70. Appellants do not raise separate arguments for claims 71 and 84,
therefore these claims fall with claim 70. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claim 77, Appellants assert that Oto’s lotion comprises “a mixture
of Glycyrrhiza glabra and Glycyrrhiza inflata … with unknown relative
ratios of the starting materials, wherefore it is impossible to know how much
of the licorice extract … can be considered to be an (aqueous) extract of
Glycyrrhiza inflata.” (App. Br. 16.) We agree with Appellants. While it
would have been obvious for a skilled artisan at the time of the invention to
include an equal mixture of Glycyrrhiza glabra and Glycyrrhiza inflata, or at
least a mixture comprising 0.0001% of Glycyrrhiza inflata in the
composition of Oto, in the context of anticipation, we do not find that the
Examiner has established that such was necessarily the case. See
MEHL/Biophile Int'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)(“Inherency
… may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.”).
Accordingly, we reverse the anticipation rejection of claim 77.

OBVIOUSNESS
The Examiner applied Oto as set forth in the anticipation rejection.
(Ans. 5.) The Examiner found that Hata taught an extract of Glycyrrhiza,
where in the extract can be Glycyrrhiza inflata and can be used in a skin care
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composition from improving the horny layer. (Id. at 6.) The Examiner also
found that Hata taught that the composition can be affixed to absorbent
cotton and applied to human skin via the cotton, e.g., a wipe. (Id.)
Additionally, the Examiner found that Hunter taught that cocoamidopropyl
betaine is a mild surfactant used in shampoos, conditioners, body washes
and other personal-care products. (Id.) The Examiner also found that
Sodium Lauryl Sulfate and Sodium Laureth Sulfate taught that sodium
laureth sulfate, an anionic surfactant, is safe and useful in cosmetic and
personal care products. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
the composition of Oto by combining an extract of Glycyrrhiza inflata with
cocoamidopropyl betaine and sodium laureth sulfate and to apply the
composition to a wipe, based on the combined teachings of the prior art
because the recited ingredients were well-known in the art to be useful for
the same purpose. (Id.)
Regarding claims 73, 74, and 76, Appellants contend that “Oto is not
concerned with a cosmetic cleansing composition as recited in the instant
claims ….” (App. Br. 18.) Therefore, Appellants assert that “one of
ordinary skill in the art would have had an apparent reason to modify the
disclosed exemplified compositions of OTO … to make them suitable for
cleansing (removing dirt from) the skin,” i.e., as compositions recited in
claims 73 (shampoo), 74 (shower gel or foam bath) and 76 (hand-washing
lotion.) (Id.)
We are not persuaded by this argument. As the Examiner correctly
explained (Ans. 12) the preamble of the independent claims reciting “[a]
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cosmetic cleansing composition” recites an intended use that is not afforded
patentable weight. Indeed, Appellants do not argue that the preamble is
limiting, but instead assert that a skilled artisan would not be motivated to
prepare Oto’s compositions into cleansing preparations such as a shampoo,
shower gel, foam bath or hand-washing lotion. (See App. Br. 18.) However,
the Examiner articulated sound reasoning (Ans. 12) to support formulating
Oto’s composition into these preparations, i.e., Oto taught that its
composition is useful for improving skin health, and a skilled artisan would
understand that such a composition would be useful in these preparations.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(There need only be an
articulated reasoning with rational underpinnings to support a motivation to
combine teachings.) Moreover, the Examiner found that Hata is directed to
skin care compositions and that Hunter is directed to shampoos, body
washes and other personal-care products, such that the Examiner’s
modification of Oto’s composition amounted to no more than the
combination of familiar elements according to known methods, which did no
more than to yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Accordingly, we affirm the obviousness rejection of claims 73, 74,
and 76.
Regarding claims 71, 87, and 93, Appellants assert that “the fact that
the composition of OTO apparently is intended to remain on the skin is a
disincentive rather than a motivation to include significant amounts of
surfactants (at least 5 % by weight, or at least 10 % by weight in the case of
instant claims 71, 87 and 93) in the composition.” (App. Br. 19.)
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We are not persuaded by this argument. As discussed regarding the
anticipation rejection, which included claim 71, we found that the record
supported the Examiner’s finding that Oto disclosed a composition
comprising surfactants in an amount totaling 10%. (See Ans. 4.)
Accordingly, we affirm the obviousness rejection of claims 71, 87,
and 93.
Regarding claim 82, Appellants assert that Oto does not “convey the
impression that an impregnated product would be of any benefit” and that
Appellants do not see that it would make sense to provide Oto’s
“composition whose components are to be transferred to the skin as
completely as possible (and to stay on the skin) to exert their beneficial
(moisture retention) effects thereon” on an impregnated wipe or absorbent
cotton. (App. Br. 22.)
We are not persuaded by this argument. As the Examiner found (Ans.
6) Hata taught affixing a skin care composition comprising an extract of
Glycyrrhiza to an absorbent cotton for application to the skin, and as the
Examiner reasoned (id. at 12) a skilled artisan would have found it obvious
to do so with the composition of Oto to provide a convenient way to apply
the composition with ease and less mess.
Accordingly, we affirm the obviousness rejection of claim 82.
Regarding claims 79, 85, 87, 88, 93, and 94, Appellants assert that “it
is not seen what would motivate on[e] of ordinary skill in the art to include
an amphoteric surfactant in a composition of OTO, let alone in combination
with an anionic surfactant and/or in the significant amounts recited in instant
claims 79, 88, 93 and 94.” (App. Br. 22.)
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We are not persuaded by this argument. Oto taught that its
composition may comprise surface active agents, including amphoteric
surface active agents. (Oto [0049].) Therefore, it would have been obvious
to include an amphoteric surfactant, such as cocoamidopropyl betaine
disclosed by Hunter as a mild surfactant useful in shampoos, conditioners,
body washes, and other personal care products. (See Ans. 6.) Further, as the
Examiner found, Oto taught a composition comprising 0.5% by weight of an
anionic surfactant and 9.5% by weight of additional surfactants. (Ans. 4.) It
would have been obvious for a person of ordinary skill in the art at the time
the invention was made to have prepared the composition comprising an
amphoteric surfactant in an amount of at least 2% of the total percent by
weight of surfactants. (See Ans. 12.)
Accordingly, we affirm the obviousness rejection of claims 79, 85, 87,
88, 93, and 94.
Regarding claims 80, 81, 91, 96, 97, and 98, Appellants assert:
Appellants are unable to see that the mere fact that these
compounds are known to be suitable ingredients for cosmetic
and personal care products provides an apparent reason for one
of ordinary skill in the art to include them as (anionic)
surfactants in the compositions of OTO, let alone in
combination with cocoamidopropyl betaine, and neither does
the Examiner provide any explanation in this regard.

(App. Br. 23.)
We are not persuaded by this argument. “It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980). Moreover, “[t]he combination of familiar elements according
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to known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
Accordingly, we affirm the obviousness rejection of claims 80, 81, 91,
96, 97, and 98.
Regarding claims 72 and 86, Appellants assert that “[n]one of the
exemplified compositions of OTO contains any anionic surfactant, let alone
(any) surfactants in a total amount of at least 5% by weight or in
combination with an amphoteric surfactant (as recited in independent claim
85).” (App. Br. 24.)
As discussed regarding the anticipation rejection, we found that the
evidence supported the Examiner’s finding that Oto’s compositions
comprised an anionic surfactant and a total amount of surfactants of 10%.
However, we agree with Appellants that the Examiner has not established
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to have provided the anionic surfactant in Oto’s
composition to an amount of at least 5% to 12%, as required by claims 72
and 86.
Accordingly, we reverse the obviousness rejection of claims 72 and
86.
Claims 70, 75, 77, 78, 83, 84, 89, 90, 92, 95, and 99 have not been
argued separately. The obviousness rejection of independent claim 70 is
affirmed, as we have affirmed the anticipation rejection of this claim and
anticipation is the epitome of obviousness. In re McDaniel, 293 F.3d 1379,
1385 (Fed. Cir. 2002). Dependent claims 75, 77, 78, 83, and 84 fall with
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independent claim 70; dependent claims 89, 90, and 92 fall with independent
claim 85; and dependent claims 95 and 99 fall with independent claim 93.
See 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the anticipation rejection of claims 70, 71, and 84;
we reverse the anticipation rejection of claim 77
we affirm the obviousness rejection of claims 70, 71, 73-85, and 87-
99; and
we reverse the obviousness rejection of claims 72 and 86.

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-IN-PART

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