11369566 (B.P.A.I. Sep. 15, 2010)

Ex Parte Allef et al

Board of Patent Appeals and InterferencesSep 15, 2010

11369566 (B.P.A.I. Sep. 15, 2010)

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. 11/369,566 03/07/2006 Petra Allef 19585 8766 7590 09/16/2010 Leopold Presser Scully, Scott, Murphy & Presser 400 Garden City Plaza Garden City, NY 11530 EXAMINER CLAYTOR, DEIRDRE RENEE ART UNIT PAPER NUMBER 1627 MAIL DATE DELIVERY MODE 09/16/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte PETRA ALLEF, PETER HAMEYER, JURGEN MEYER, and GABRIELE POLAK __________ Appeal 2010-006440 Application 11/369,566 Technology Center 1600 __________ Before DONALD E. ADAMS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL1 This is a decision on appeal under 35 U.S.C. § 134 from the 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-006440 Application 11/369,566 2 Examiner’s rejection of claims 1 and 3-15.2 (App. Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is the only independent claim on appeal, and reads as follows: 1. An oil-in-water emulsion comprising a non-ethoxylated emulsifier combination including noncarbohydrate polyol partial esters of linear or branched fatty acids having 6 to 22 carbon atoms (emulsifier component A) and emulsifiers based on carbohydrate (emulsifier component B), one or more oils, and at least 10% by weight of preservative, based on the total amount of emulsifier components A and B. The following grounds of rejection are before us on appeal: I. Claims 1, 3-11, and 15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Milius.3 II. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by Milius. We reverse. ISSUE Has the Examiner established by a preponderance of the evidence that Milius anticipates independent claim 1? 2 Claims 16-23 are also pending, but stand withdrawn from consideration. (App. Br. 4.) 3 Milius, US 6,488,946 B1, issued Dec. 3, 2002. Appeal 2010-006440 Application 11/369,566 3 FINDINGS OF FACT FF1 The Examiner’s statement of the anticipation rejection may be found at pages 3 to 4 of the Answer. FF2 Specifically, the Examiner finds that Milius teaches: oil-in-water emulsions that are comprised of emulsifiers based on carbohydrates (oleyl glycosides and/or isostearyl glycosides) and coemulsifiers that are noncarbohydrate polyol partial esters of linear or branched fatty acids including sorbitan esters in amounts up to 50% (Example 3 and Col. 4, lines 65- 67). (Ans. 3.) FF3 As to the preservative, the Examiner finds that the Examples teach “a preservative that is based on alkyl paraben esters with phenoxyethanol (SEPICIDE) that is in an amount of at least 10% by weight.” (Id.) FF4 The Examiner further finds that under the conditions provided by Example 3 of Milius, “a preservative could be in the composition in amounts of at least 10%.” (Id. at 5 (citing the Examples bridging columns 8 and 9 of Milius).) FF5 In Example 3, Milius teaches that a preservative may be added “qsp.” (Milius, col. 7, l. 56.) FF6 In the Examples bridging columns 8 and 9 of Milius, the reference teaches the addition of a maximum of 1% SEPICIDE to water-in-oil emulsions (preservative). FF7 The Examiner’s statement of the obviousness rejection may be found at pages 4 to 5 of the Answer. Appeal 2010-006440 Application 11/369,566 4 FF8 In the obviousness rejection, the Examiner concludes that it would have been obvious to optimize the emulsifier components A and B based on the guidance provided by Milius. (Ans. 4.) PRINCIPLES OF LAW To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). ANALYSIS Appellants argue that the oil-in-water emulsions disclosed in Milius lack “the claimed limitation of at least 10% by weight of preservatives.” (App. Br. 11-12.) We agree with Appellants that the Examiner has failed to set forth a prima facie case of anticipation. Milius fails to teach an oil-in-water emulsion that contains 10% of a preservative. Example 3 of Milius, which provides conditions under which oil-in-water emulsions may be obtained, teaches that the amount of preservative is “qsp.” (FF5.) While the Examiner may be correct that “a preservative could be in the composition in amounts of at least 10%” (FF4), the statement that the preservative “could” be present in the amount claimed is more appropriate in an obviousness rejection, rather than an anticipation rejection. Moreover, the examples at columns 8 to 9 of Milius, even though drawn to water-in-oil emulsions, also do not appear to exemplify the use of a preservative in an amount of at least Appeal 2010-006440 Application 11/369,566 5 10% by weight of preservative. We are thus compelled to reverse the anticipation rejection. As to the obviousness rejection, the Examiner concludes that it would have been obvious to optimize the emulsifier components A and B based on the guidance provided by Milius (FF8). Thus, the obviousness rejection does not address the deficiency of the anticipation rejection as to the amount of preservative, and we are thus compelled to reverse the obviousness rejection as well. CONCLUSION OF LAW We conclude that the Examiner has not established by a preponderance of the evidence that Milius anticipates independent claim 1. We are thus compelled to reverse the anticipation rejection over Milius. In addition, as the Examiner has not addressed the deficiencies of the anticipation rejection in the obviousness rejection, we are compelled to reverse the obviousness rejection over Milius as well. REVERSED cdc LEOPOLD PRESSER SCULLY, SCOTT, MURPHY & PRESSER 400 GARDEN CITY PLAZA GARDEN CITY, NY 11530