Ex Parte Argembeaux et al

Patent Trial and Appeal Board

Jun 19, 2018

14355616 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/355,616 05/01/2014
13897 7590 06/21/2018
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Horst Argembeaux
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3321-P50127 6232
EXAMINER
CABRAL, ROBERTS
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST ARGEMBEAUX, STEP AN BIEL,
KATRIN COUNRADI, INA SCHORNSTEIN,
SVENJA LENA MOELLGAARD, HEIKE MIERTSCH,
and KATJA MAETZOLD 1
Appeal2017-004294
Application 14/355,616
Technology Center 1600
Before JOHN G. NEW, ELIZABETH A. LA VIER, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Beiersdorf AG of Hamburg, Germany, as the real party-
in-interest. App. Br. 3.
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SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 24--43 as unpatentable under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 24--29, 31-33, 35 and 39 also stand rejected as unpatentable
under 35 U.S.C. § I02(b) as being anticipated by Kolly-Hemandez et al. (US
2008/0089856 Al, April 17, 2008) ("Kolly-Hemandez").
Claims 24--33, 35 and 39 stand rejected as unpatentable under 35
U.S.C. § I03(a) as being obvious over the combination ofKolly-Hemandez
and Rauckhorst et al. (US 2012/0258150 Al, October 11, 2012)
("Rauckhorst").
Claims 24--33, 35 and 39 also stand rejected as unpatentable under 35
U.S.C. § I03(a) as being obvious over the combination ofKolly-Hemandez
and Chen et al. (CN 103301028 A, September 18, 2013) ("Chen").
Claims 24--29, 31-33, 35 and 39--43 stand rejected as unpatentable
under 35 U.S.C. § I03(a) as being obvious over the combination of Kolly-
Hemandez and Roreger (US 2010/0062029 Al, March 11, 2010)
("Roreger").
Claims 24--29 and 31--43 stand rejected as unpatentable under 35
U.S.C. § I03(a) as being obvious over the combination ofKolly-Hemandez
and Maloney (US 2010/0183528 Al, July 22, 2010) ("Maloney").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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NATURE OF THE CLAIMED INVENTION
Appellants' claimed invention is directed to a composition that is in
principle insoluble in a cosmetic or dermatological preparation, and is
converted into a powdery product by absorption onto a carrier, wherein said
powdery product can be distributed better in the preparation. Abstract.
REPRESENTATIVE CLAIM
Claim 24 is representative of the claims on appeal and recites:
24. A cosmetic or dermatological preparation, wherein the
preparation is present in the form of a packaged product which
comprises water and, incorporated therein, one or more powdery
materials comprising or consisting of
(i) one or more hydrophobic substances or substance
mixtures which are liquid or pasty at room temperature and/or
meltable up to a temperature of 150°C and on their own are
insoluble or sparingly soluble in a remainder of the preparation,
bound by at least one of adhesion, impregnation, agglomeration
to
(ii) one or more particulate carriers having an average
particle size in a range of from 5 nm to 2 mm and a tamped
density of from 50 kg/m3 to 1400 kg/m3, and being of a spherical,
fibrous, flocculated and/or sponge-like form.
App. Br. 21.
ISSUE AND ANALYSIS
We disagree with the Examiner's conclusion that the claims are
unpatentable under 35 U.S.C. § 112, first paragraph. However, we agree
with, and adopt, the Examiner's findings and conclusion that the appealed
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claims are primafacie anticipated and/or obvious over the combined cited
prior art. We address the arguments raised by Appellant below.
A. Claims 24--43 as unpatentable under 35 U.S.C. § 112, first paragraph
Issue
Appellants argue that the Examiner erred in concluding that
Appellants' Specification fails to demonstrate that the inventor was in
possession of the claimed cosmetic or dermatological preparation in the
form of a packaged product. App. Br. 8.
Analysis
The Examiner finds that there is no written support in Appellants'
Specification for the limitation of claim 24 reciting: "wherein the
preparation is present in the form of a packaged product." Final Act. 3.
Appellants argue that it is well known in the art that "most - if not all
- cosmetic or dermatological products are regularly provided in packaged
form." App. Br. 8. Appellants point to the Examiner's finding, in the Final
Office Action, that: "one of ordinary skill in the art would understand that
hair conditioning products, such as those disclosed in Kolly-Hemandez et
al., are regularly provided in packaged form that are readily available on the
market." Id. ( quoting Final Act. 5). According to Appellants, not
everything necessary to practice the invention need be disclosed; in fact,
what is well-known is best omitted. Id. at 8-9 ( citing In re Buchner, 929
F.2d 660,661 (Fed. Cir. 1991)).
We are not persuaded by the Examiner's conclusion. What is required
to meet the written description requirement "varies with the nature and scope
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of the invention at issue, and with the scientific and technologic knowledge
already in existence." Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir.
2005). In this instance, Appellants' claims state no more than that the
claimed composition of matter is presented as a "packaged product."
Appellants' claims place no further limitations on the packaging of the
product, and we agree with Appellants that a person of ordinary skill in the
art would have understood that it is well known that compositions that are
intended to be used as "cosmetic or dermatological preparations" are
routinely packaged as products for presentation and purchase in the
marketplace.
Moreover, the Examiner cannot, in the context of an anticipation
rejection, find that it was well known in the art that cosmetic products are:
"regularly provided in packaged form that are readily available on the
market" (see Final Act. 4), when such a disclosure is not present in the
anticipatory reference, and then reverse course and find that Appellants'
Specification is deficient for not expressly disclosing what the Examiner has
already found is well known in the art. We consequently reverse the
Examiner's rejection on this ground.
B. Claims 24--29, 31-33, 35 and 39 under 35 U.S.C. § 102(b)
Issue 1
Appellants argue the Examiner erred because Kolly-Hemandez fails
to disclose all of the limitations of the claims, including, inter alia, the
limitation reciting: "wherein the preparation is present in the form of a
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packaged product which comprises water and, incorporated therein, one or
more powdery materials." App. Br. 9.
Analysis
Appellants argue that Kolly-Hemandez does not disclose a packaged
combination of water and powdery materials incorporated in the water.
App. Br. 9. Appellants point to paragraph [0014] of Kolly-Hemandez, upon
which the Examiner in part relies, as disclosing starting materials for making
the pulverized, non-fluid hair conditioning products disclosed therein. Id. at
9-10. Specifically, Appellants assert that Kolly-Hemandez discloses that
the fluid hair conditioning composition that is to be absorbed on the solid
carrier contains at least one hair conditioning agent which is dissolved or
dispersed in a suitable cosmetically acceptable solvent. Id. at 10.
Appellants point further to paragraphs [0086] to [0090] of Kolly-Hemandez,
which Appellants argue discloses a description of a method for making the
pulverized product. Id. Appellants contend that the pulverized product thus
disclosed is substantially free of any solvents, including water. Id.
Appellants argue further that, whereas Kolly-Hemandez discloses that
the pulverized non-fluid hair conditioning product may be mixed with water
prior to use, and the mixture of non-fluid hair conditioning product and
water may then be applied to hair, the reference does not teach that water
and the pulverized non-fluid hair conditioning product disclosed therein may
be combined (mixed) and thereafter packaged. App. Br. 10.
Appellants also point to the Examiner's finding that: "[ e ]ven if the
method disclosed in Kolly-Hemandez et al. resulted in a composition that
was substantially free of any solvent, what little solvent ( or water) that
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would remain still would read on the amended claims." App. Br. 10-11
( quoting Final Act. 4). Appellants respond that independent claim 24 recites
that the one or more powdery materials are incorporated in water. Id. at 11.
According to Appellants, even assuming, arguendo, that the powdery
materials of Kolly-Hemandez contain small amounts of water, these
powdery materials could not reasonably be considered to be "incorporated"
in the small amounts or traces of water. Id.
Appellants acknowledge that paragraph [0013] ofKolly-Hemandez
discloses that the fluid hair-conditioning composition that is absorbed on the
solid carrier may be a solution or an emulsion. App. Br. 12. Appellants
contend, however, than even assuming that this fluid composition contains
(some) absorbed water, it cannot reasonably be argued that in this case the
solid carrier is incorporated in the water. Id. Appellants assert that this is
also the reason why, according to Kolly-Hemandez, the disclosed
pulverized, non-fluid, hair conditioning product may be mixed with water
and the mixture of non-fluid hair conditioning product and water may be
applied to hair. Id. Appellants also point to paragraph [0085] of Kolly-
Hemandez, which discloses: "[t]he term "absorbed" as used herein, means
that either the surface of a non-fluid ( e.g. solid) carrier particle is partly or
completely coated or covered by the fluid or that the fluid is contained in
cavities or pores of the carrier particle." Id. at 12-13. Appellants assert that
none of these alternatives can be considered to reasonably mean that the
fluid hair conditioning composition has the solid carrier particles
incorporated therein. Id.
We are persuaded by Appellants' arguments. Independent claim 24
recites, in relevant part: "A cosmetic or dermatological preparation, wherein
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the preparation is present in the form of a packaged product which
comprises water and, incorporated therein, one or more powdery materials."
We find that a reasonable interpretation of the plain language of the claim is
that the one or more powdery materials are incorporated into the water
comprising the cosmetic dermatological preparation. To understand what
Appellants mean by the claim term "incorporated therein," we tum to the
disclosures of Appellants' Specification. See, e.g., Phillips v. AWH Corp.,
415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (explaining that the Board
"determines the scope of claims in patent applications not solely on the basis
of the claim language, but upon giving claims their broadest reasonable
construction 'in light of the specification as it would be interpreted by one of
ordinary skill in the art"' (quoting In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)).
Appellants' Specification provides no express description of the claim
term "incorporated therein." However, Appellants' Specification discloses
that:
The aim [ of the invention] is therefore the use of active
ingredients which are predissolved in hydrophobic solvent.
These dissolved substances cannot be incorporated directly into
water-containing formulations. The use of emulsifiers in order to
emulsify hydrophobic fractions in a lipophobic environment
leads inter alia to a hindering of the release of the active
ingredients.
The invention is therefore a cosmetic or dermatological
preparation comprising water and one or more powdery
products, comprising or consisting of one or more hydrophobic
substances or substance mixtures that are liquid or pasty at room
temperature and/or meltable up to a temperature of 150°C (a.),
which are absorbed on one or more particulate carriers (b.). The
substance or substance mixture (a.) is by itself insoluble or
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sparingly soluble in the preparation. The substance or substance
mixture is considered to be soluble if it is present in completely
and homogeneously dissolved form in the surrounding medium,
i.e. the preparation, without further auxiliaries such as
emulsifiers or solubilizers.
Spec. 4. Appellants' Specification further teaches that: "A further preferred
criterion is that the powdery products are produced according to the CPF
[ concentrated powder form] process." Id. at 6. Appellants provide an
extensive description of the CPF process (see id. at 7-8), which is also
described in detail in Kolly-Hemandez (see ,r,r 85-90), and both of which
cite Weinreich at al. (WO 99/17868, April 15, 1999) ("Weinreich"). See
Kolly-Hemandez ,r 86; Spec. 2. Finally, Appellants' Specification
summarizes that: "According to the invention, now hydrophobic deodorant
actives can for example be incorporated into water-containing
formulations." Spec. 9 (emphasis added). We consequently interpret the
language of claim 24 to mean that the powdery substance, produced by the
CPF process, is incorporated into a water-containing formulation that is
packaged as a product.
Kolly-Hemandez is directed to pulverized, non-fluid hair conditioning
products comprising a fluid hair conditioning composition which is absorbed
on a solid carrier. Kolly-Hemandez Abstr. Kolly Hernandez expressly
teaches use of the CPF method to produce a non-fluid hair conditioning
product by coating or adsorbing onto a solid, powdery carrier a non-fluid
(i.e., pulverized) composition of hair-conditioning product in a liquid carrier.
See generally id. at ,r,r 85-90. Specifically:
The term "pulverizing a fluid composition on a non-fluid carrier"
as used herein, means a process of making a non-fluid (e.g.
powdery) end product from a fluid (e.g. liquid or gel)
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composition and a non-fluid (e.g. solid) carrier. The fluid is
absorbed on the carrier. The term "absorbed" as used herein,
means that either the surface of a non-fluid (e.g. solid) carrier
particle is partly or completely coated or covered by the fluid or
that the fluid is contained in cavities or pores of the carrier
particle.
Id. at ,r 85 (emphasis added). Kolly-Hemandez thus teaches that its end
product is a powdery, non-fluid composition. Kolly-Hemandez further
teaches that its claimed product can be mixed with water at the point of use:
An embodiment of the invention is a method of hair
conditioning, said method comprising the steps of:
a) providing a non-fluid hair conditioning product according to
the invention described above,
b) mixing the non-fluid hair conditioning product with water
prior to use,
c) applying said mixture of non-fluid hair conditioning product
and water to the hair, and
d) rinsing the hair.
Id. at ,r 91. Similarly, Kolly Hernandez teaches:
Another application possibility is to add the powdery hair
conditioner of the invention to a conventional, non-powdery hair
conditioning product prior to its application on hair. Further
applications possibilities are uses in connection with hair
coloring products and methods. The powdery hair conditioner of
the invention can be mixed with a conventional hair coloring
product prior to its use or can be applied to the hair after a
coloring process.
Id. at ,I 94.
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In the context of the teachings and claims of Kolly-Hemandez, we
find that the addition of the claimed non-fluid composition to a conventional
conditioning product occurs at the point of use and not when it is packaged
as a product incorporated into a medium comprising water. For example,
Kolly-Hemandez teaches an exemplary embodiment of its composition in
which: "The pulverized hair conditioning products are non-fluid, slightly
agglomerated powdery materials. The powdery products are mixed with
water immediately before use on hair. The powdery products provide the
hairdresser to provide a customized treatment for her client." Id. at ,r 102
(emphasis added) (see also id. at ,r 113 ("The powdery products are mixed
with water immediately before use on hair")).
We are therefore not persuaded by the Examiner's findings that Kolly-
Hemandez discloses the limitation of claim 24 reciting: "wherein the
preparation is present in the form of a packaged product which comprises
water and, incorporated therein, one or more powdery materials." We
consequently reverse the Examiner's rejection upon the ground that Kolly-
Hemandez anticipates Appellants' claims 24--29, 31-33, 35 and 39.
Issue 2
Appellants argue claim 35, which depends from claim 24, separately.
App. Br. 13. Appellants argue that the Examiner erred in finding the
combined references teach or suggest the limitation of claim 3 5 reciting:
"wherein (i) comprises at least one deodorant active ingredient." Id.
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Analysis
Appellants contend that the Examiner relies upon paragraph [0084] of
Kolly-Hemandez, which teaches that optional ingredients of the pulverized
hair conditioning composition disclosed therein may include "fragrances and
perfume." App. Br. 13. Appellants argue that fragrances and perfumes are
not deodorants, nor would it be reasonable to incorporate a deodorant into a
hair-conditioning product. Id. at 13-14. Appellants argue further that
Examiner has pointed to no teaching or suggestion of Kolly-Hemandez that
the fragrances and perfumes named therein would necessarily be insoluble
or sparingly soluble in the remainder of the hair conditioning composition,
as required by independent claim 24. Id. at 14.
The Examiner responds that the broadest reasonable interpretation of
the claim term "deodorant active ingredient" encompasses "fragrances and
perfume." Ans. 5. The Examiner reasons that a person of ordinary skill in
the art would understand that a cosmetic composition comprising a
deodorant active ingredient would be one intended to cleanse, beautify or
promote attractiveness, and that fragrances and perfumes would work to this
end by affecting, reducing and/or masking body odor. Id. ( citing, e.g.,
US Food & Drug Administration, Is It a Cosmetic, a Drug, or Both? (Or Is
It Soap?) available at: https://www.fda.gov/Cosmetics/GuidanceRegulation/
LawsRegulations/ucm07420I.htm (last visited June 11, 2018)). The
Examiner further finds that the disputed limitation of claim 3 5 may be
understood to mean that the component (i) has further materials such as a
deodorant active ingredient and not that the deodorant active ingredient is
required to exhibit the solubility profile recited in (i). Id.
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We are not persuaded by the Examiner's reasoning. Kolly-Hemandez
is not directed to cosmetics generally, but rather to hair-conditioning
products. See Kolly-Hemandez Abstr. Kolly Hernandez teaches: "The
products according to the invention can also contain conventional cosmetic
additives usually used in hair treatment compositions in addition to the
above-mentioned ingredients, e.g. fragrances and perfume oils." Id. at ,r 84.
We are not persuaded by the Examiner's reasoning that, because hair
conditioning compositions, deodorants, and fragrances and perfume oils are
all cosmetics, a person of ordinary skill in the art would understand that
fragrances and perfumes are deodorants. Indeed, we find that a person of
ordinary skill in the art would understand that the very purpose of fragrances
and perfumes is to act as an odorant, i.e., to produce a (generally) pleasing
olfactory stimulus. More importantly, the Examiner has provided no
evidence of record that a person of ordinary skill in the art would understand
that the claim term "deodorant active ingredient" would include a fragrance
or perfume. We consequently reverse the Examiner's rejection of claim 35.
C.
Issue
Claims 24--33, 35 and 39 under 35 U.S.C. § 103 (a) over Kolly-
Hemandez and Rauckhorst
Appellants argue that the Examiner erred because Rauckhorst - upon
which the Examiner relies as teaching the limitation of claim 30 reciting:
"wherein (ii) [the one or more particulate carriers] comprises one or more of
a nylon and lauroyl lysine" - does not cure the alleged deficiencies of Kolly-
Hemandez argued supra with respect to the Examiner's rejection of the
claims as anticipated under 35 U.S.C. § 102(b ).
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Analysis
We have explained why we reverse the Examiner's rejection of claims
24--29, 31-33, 35 and 39 as unpatentable under 35 U.S.C. § 102(b) as being
anticipated by Kolly-Hemandez. However, we find claims 24--33 and 39 are
obvious over the teachings ofKolly-Hemandez under 35 U.S.C. § 103(a).
As we have explained, Kolly-Hemandez teaches that its non-fluid
compositions can be combined with water or with compositions containing
water. By way of example, Kolly-Hemandez teaches:
Another application possibility is to add the powdery hair
conditioner of the invention to a conventional, non-powdery hair
conditioning product prior to its application on hair. Further
application[] possibilities are uses in connection with hair
coloring products and methods. The powdery hair conditioner of
the invention can be mixed with a conventional hair coloring
product prior to its use or can be applied to the hair after a
coloring process.
Kolly-Hemandez ,r 94; see also id. at ,r 91 ( disclosing a method including
the step of "mixing the non-fluid hair conditioning product with water prior
to use"); id at claim 9 (claiming a method wherein "the non-fluid hair
conditioning product is mixed with water prior to use"). Kolly-Hemandez
thus teaches that its compositions can be mixed with water or with
compositions comprising water (i.e., conventional hair-conditioning
products). Given that Kolly-Hemandez teaches that its compositions can be
mixed with water, or a composition comprising water, at the point of use, we
conclude that it would have been obvious to a person of ordinary skill in the
art that it compositions could also be packaged with a composition
comprising water, such as a gel or an emulsion, at a time prior to the
immediate use of the composition.
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Furthermore, Appellants have expressly argued, with respect to the
rejection of the claims under 35 U.S.C. § 112, first paragraph, that it was so
well-known in the cosmetic arts that "most-if not all- cosmetic or
dermatological products are regularly provided in packaged form." See
App. Br. 8. In this context, Appellants rely upon the Examiner's finding
that: "one of ordinary skill in the art would understand that hair conditioning
products, such as those disclosed in Kolly-Hemandez et al., are regularly
provided in packaged form that are readily available on the market." Id.
( quoting Final Act. 5).
As we have explained, Kolly-Hemandez teaches that its compositions
can be mixed with water. See Kolly-Hemandez ,r,r 91, 94. Appellants have
argued, and we agree, that packaging of cosmetic compositions prior to
marketing would have been obvious to a person of ordinary skill in the art.
We therefore conclude that it would have been obvious to a person of
ordinary skill in the art to prepare the compositions of Kolly-Hemandez in a
"packaged product which comprises water and, incorporated therein, one or
more powdery materials," as recited in claim 24. We consequently affirm
the Examiner's rejection of claims 24--33 and 39 over Kolly-Hemandez and
Rauckhorst.
Furthermore, the Examiner finds that Rauckhorst is directed to
"particles containing a polymer and a volatile material, such as a perfume,
and [a] particle gas saturation solution" and that "the particles may be mixed
with a carrier in a Concentrated Powder Form [as also taught by Kolly-
Hemandez]." Final Act. 5 (citing Rauckhorst Abstr., ,r,r 68, 98). Rauckhorst
also teaches that: "Non-limiting examples of volatile materials include
perfumes, flavors, deodorants, insecticides, pheromones, aromas, and
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repellants." Id. at ,r 30. We therefore find that Rauckhorst expressly teaches
a "deodorant active ingredient," as recited in claim 35, and we consequently
affirm the Examiner's rejection of that claim.
D. Claims 24--33, 35 and 39 under 35 U.S.C. § 103(a) over Kolly-
Hemandez and Chen
Appellants rely upon the same arguments presented supra, viz., that
the claims are not anticipated by Kolly-Hemandez. App. Br. 15-16.
Appellants argue further that Chen does not cure the alleged deficiencies of
Kolly-Hemandez. Id. at 16.
For the reasons we have explained supra in Section C, we affirm the
Examiner's rejection of claims 24--44 and 39. However, because neither
Kolly-Hemandez nor Chen teach or suggest an "deodorant active
ingredient," we reverse the Examiner's rejection of claim 35 on this ground.
E. Claims 24--29, 31-33, 35 and 39--43 under 35 U.S.C. § 103(a) over
the combination of Kolly-Hemandez and Roreger
Appellants repeat their argument that Kolly-Hemandez fails to
anticipate the claims and argue that Roreger fails to cure the alleged
deficiencies ofKolly-Hemandez. App. Br. 16.
Appellants argue further that a person of ordinary skill in the art
would not find it obvious to incorporate a "skin oil" such as jojoba oil in a
hair conditioning composition, such as that taught by Kolly-Hemandez.
App. Br. 17.
Appellants additionally argue that Roreger does not relate to any
specific cosmetic composition, but, rather, discloses a product for the
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targeted release of active substances, especially detergents and/or cosmetic
active substances. App. Br. 17. Appellants assert that Roreger teaches a
composition having a layered structure, one layer being impermeable to the
active substance and the other being permeable to the active substance. Id.
According to Appellants, the two layers define a compartment between them
that contains the active substance and, optionally, a gas-releasing
component, and can be used as a cosmetic agent and/or as a cleaning agent.
Id. (citing, e.g., Roreger Abstr.). Appellants argue that a person of ordinary
skill in the art would therefore not combine the teachings of
Kolly-Hemandez and Roreger. Id.
The Examiner finds that Roreger teaches:
Active substances ... in the form of a powder, granules, flakes,
tablets, microencapsulated liquid, microencapsulated solid, CPF
powders ("concentrated powder form", i.e., as flowable powder
with a liquid fraction of preferably at least 10% on a pulverulent
carrier. These CPF powders can be produced in accordance with
[Weinreich], to which reference is made in its entirety) and the
like.
Final Act. 7 ( citing Roreger ,r 19). The Examiner finds that the particles
may be contained in a compartment of the product, and are thus present in
the form of a packaged product, as recited in the claims. Id. ( citing ,r,r 8,
18).
We are not persuaded by Appellants' arguments. We have explained
supra our reasons why we find that claims 24--29, 31-33, and 39 to be
obvious over the teachings of Kolly-Hemandez. Claims 40-43 recite, either
expressly or by reference, the oil of Simmondsia chinensis (i.e., Jojoba oil),
which is expressly taught by Roreger as a skin care agent. See Roreger ,r 33.
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With respect to Appellants' argument that a person of ordinary skill
would not use jojoba oil in a hair-conditioning composition, Appellants
adduce no evidence of record in support of their contention. Such
contentions are mere attorney argument, to which we accord little probative
value. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (giving no
evidentiary weight to arguments and conclusions unsupported by factual
evidence).
Roreger also teaches that particles, including those produced as
powders containing jojoba oil by the CPF method taught by Kolly-
Hernandez (and taught originally by Weinreich), can be used in its
compositions. We consequently affirm the Examiner's rejection of claims
24--29, 31-33, and 39--43 on this ground. However, as previously discussed,
we find that the references relied upon in connection with this ground of
rejection are silent with respect to an active deodorant ingredient, and we
reverse the Examiner's rejection of claim 35 on this ground.
F. Claims 24--29 and 31--43 under 35 U.S.C. § 103(a) over Kolly-
Hernandez and Maloney
Analysis
The Examiner finds that Maloney is directed to "[ d]ry powder
foundation formulations that include a sustained-release salicyclic acid
composition," and which "provide both acne treatment and prevention, and
sunblock protection." Final Act. 8 (citing Maloney Abstr.). The Examiner
finds that Maloney teaches sunblocking or sunscreen agents, including
avobenzone, as recited in Appellants' claims 37 and 38, and anti-acne
agents, including farnesol, as recited in Appellants' claim 36. Id. (see, e.g.,
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Maloney Abstr., ,r,r 8, 32, 40, 75). The Examiner also finds that Maloney
teaches the incorporation of thyme, which would include thymol, as recited
in Appellants' claim 34). Id. (see Maloney ,r,r 32, 67, 75).
The Examiner concludes that it would have been prima facie obvious
to combine the teachings ofKolly-Hemandez and Maloney, because both
references teach powdered compositions that are useful for cosmetic and/ or
dermatological formulations. Final Act. 9. The Examiner also notes that it
is obvious to add known ingredients to known compositions with the
expectation of obtaining their known function. Id. ( citing, e.g., In re Linder,
457 F.2d 506, 507 (C.C.P.A. 1972).
We are not persuaded by the Examiner's findings and conclusion.
Kolly-Hemandez is directed to hair-conditioning compositions, whereas
Maloney is directed to skin compositions for use as sun-blocking agents and
for the treatment of acne. We agree with Appellants that the Examiner has
not articulated sufficient reasoning as to why a person of ordinary skill in the
art would combine references teaching compositions with manifestly
different applications, or why a compound with, e.g., UV-protectant
properties might be incorporated into a hair-conditioning composition. A
prima facie case for obviousness requires: "a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007). We consequently reverse the
Examiner's rejection of the claims on this ground.
19
Appeal2017-004294
Application 14/355,616
DECISION
The Examiner's rejection of claims 24--43 as unpatentable under 35
U.S.C. § 112, first paragraph, is reversed.
The Examiner's rejection of claims 24--29, 31-33, 35 and 39 as
unpatentable under 35 U.S.C. § 102(b) is reversed.
The Examiner's rejection of claims 24--43 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 34 and 36-38 as unpatentable
under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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