Ex Parte Bruening et al

Patent Trial and Appeal Board

Oct 18, 2016

10495697 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/495,697 10/22/2004
23657 7590 10/20/2016
SERVILLA WHITNEY LLC/BASF
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
FIRST NAMED INVENTOR
Stefan Bruening
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.
C 2593 PCT/US 6507
EXAMINER
KAROL, JODY LYNN
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
10/20/2016 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):
docket@dsiplaw.com
spedersen@dsiplaw.com
jescobar@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN BRUENING, ACHIM ANSMANN, and
HELGA GONDEK
Appeal2015-003487
Application 10/495,697 1
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LA VIER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek reversal of the
Examiner's rejection of claims 11, 13, 16, 18-20, 32, and 33. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we
AFFIRM.
BACKGROUND
The Specification "relates to antiperspirant roll-on formulations based
on water-in-oil emulsions." Spec. 1 :2-3. The Specification seeks to provide
1 Appellants state the real party in interest is Cognis IP Management GmbH.
Br. 3.
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Application 10/495,697
improved antiperspirant formulations, with reduced white residues, high
dermatological compatibility, reduced tackiness, rapid absorption, and high
stability. Id. at 1:20-2:1.
Claim 11 is representative:
11. A composition comprising:
(a) from about 1 to 30% by weight of an antiperspirant
component;
(b) from about 3 to 10% by weight of a polyolpoly-12-
hydroxystearate;
( c) from about 5 to 30% by weight of an oil component,
wherein the oil component is liquid at 20°C and immiscible
with water at 25°C; and
( d) the balance of water to 100%;
and wherein the composition is a water-in-oil emulsion having
a viscosity of from about 500 to 5,000 mPas at 20°C.
Br. 22 (Claims Appendix).
Claims 11, 13, 16, 18-20, 32, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Herb,2 Ansmann,3 and Diec4 (English abstract
only). Ans. 5-7. 5
2 Herb et al., US 5,534,246, issued July 9, 1996.
3 Ansmann et al., US 5,840,943, issued Nov. 24, 1998.
4 Diec et al, DE 196 43 238 Al, published Oct. 19, 1996. An English
translation (Derwent Information Ltd. © 2009) of the abstract and other
basic information is of record. The Examiner relies only on the English
version of Diec abstract (hereinafter "Diec abstract") for the rejection. See
Ans. 7; Final Action 4.
5 The Examiner at page 5 of the Answer and page 4 of the Final Action
identifies claim "12" in the heading as subject to the§ 103(a) rejection. We
treat this as a typographical error on appeal because claim 12 is not currently
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Application 10/495,697
DISCUSSION
The Examiner's findings regarding the§ 103(a) rejections are set forth
on pages 4---6 of the Final Action. In short, the Examiner finds that Herb
teaches water-in-oil antiperspirant compositions with the components recited
in representative claim 11 except that Herb does not teach a polyolpoly-12-
hydroxystearate as a surfactant. See Final Action 4--5. However, Ansmann
teaches emulsifiers that are condensation products of pol yo ls with
polyhydroystearic acids, such as 12-hydroxystearic acid. Id. at 5 (citing
Ansmann 1:34--49, claim 1). Further, the Diec abstract teaches PEG-30
dipolyhydroxystearate, which is a polyolpoly-12-hydroxystearate,6 as a
water-in-oil emulsifier for antiperspirant compositions. Id. at 6. The
Examiner finds that it would have been obvious to have used a polyolpoly-
12-hydroxystearate emulsifier of Ansmann as the surfactant in Herb's
antiperspirant compositions "to provide a stable, storable w/o [water-in-oil]
emulsions with a broad range of oils; such as dialkyl carbonates or dialkyl
ethers." Id. The Diec abstract would have provided a reasonable
expectation of success in doing so because the Diec abstract "teach[ es] an
exemplary polyolpoly-12-hydroxystearate for used in antiperspirant water-
in-oil emulsions." Id.
Appellants do not dispute that the cited references teach or suggest
each element of the pending claims. See generally Br. 13-20. Rather,
taking all the claims together, Appellants argue that (i) the Examiner offers
no rationale for modifying Herb as claimed, see id. at 13, and (ii) that the
pending, and the body of the rejection refers to claim 13. See, e.g., Final
Act. 4.
6 See also Spec. 3:11--4:21; Br. 22 (claim 32).
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Application 10/495,697
Specification and previously-submitted declarations of co-inventor Helga
Gondek (dated May 27, 2009 and March 22, 2010) show unexpected results,
specifically in regard to improved microfoaming and absorption properties
for formulations containing polyolpoly-12-hydroxystearate, see id. at 1 7.
1. Motivation to Combine
Appellants begin by focusing on the problem addressed by the
Specification: "to reduce white residues from antiperspirant roll-on
formulations, i.e. to provide low-viscosity formulations which would have a
reduced tendency to form microfoam and, despite the presence of
antiperspirant components, would show high dermatological compatibility."
Br. 13. Appellants note that while Herb pertains to roll-on antiperspirants,
Ansmann does not. See id. Rather, Ansmann generally relates to cosmetic
and/or pharmaceutical formulations, such as skin creams and body lotions,
which have higher viscosities and do not have antifoaming issues. See id.
(citing Ansmann 6:7-10).
Diec's abstract discusses an antiperspirant stick, not a roll-on, which
Appellants argue likely would have a different viscosity, outside the claimed
range, and further that "it is unlikely Diec would be concerned with a
formulation having antifoaming properties." Id. at 14. Further, Appellants
argue there is no reason that one of skill in the art would have selected PEG-
30 dipolyhydroxystearate from Diec among the many other emulsifiers listed
in the full reference. See id.
Thus, Appellants argue that "[n]one of Herb, Ansmann or Diec teach,
disclose, suggest or motivate one skilled in the art that employing their
disclosures by themselves or in any combination would result in a
composition that would show improvement in microfoaming and absorption
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properties as only taught by the instantly amended claims and new claims."
Id. at 15; see also id. at 16-17. Rather, Appellants characterize the rejection
as impermissibly picking and choosing from many variables, using the
Specification as a roadmap, and relying on impermissible hindsight. See id.
at 15.
In an obviousness analysis, "neither the particular motivation nor the
avowed purpose of the patentee controls." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Instead, "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." Id. at 420.
Here, although Appellants focus on microfoaming and absorption, the
Examiner points to a different reason, for combining the references: storage
stability. See Final Action 6. As the Examiner explains, see Ans. 8, all three
references relate to dermatological compositions, and Ansmann focuses on
the problem of providing "new w/o emulsifiers which would form storable
emulsions with a broad range of oils," Ansmann 1 :27-28. Indeed, Ansmann
and Herb teach emulsions with an overlapping set of oils. See Ans. 9-10
(discussing Herb 12:25-13:31, Ansmann 3:40-51). We discern no error in
the Examiner's finding that a desire for improved storage characteristics
would have been sufficient to motivate the combination of references, and
Appellants do not contest it specifically. Accordingly, Appellants'
arguments regarding the (unclaimed) microfoaming and absorption
properties of the alleged invention are not persuasive.
Appellants' other arguments largely attempt to attack the references
individually. Such arguments are not persuasive. See In re Keller, 642 F .2d
413, 426 (CCPA 1981) ("But one cannot show non-obviousness by
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Application 10/495,697
attacking references individually where, as here, the rejections are based on
combinations of references."). For example, the Examiner relies on Herb,
not Ansmann or Diec, for the claimed viscosity range. See Ans. 9, 11. As to
the disclosure of PEG-30 dipolyhydroxystearate in Diec, the Examiner notes
that the Diec abstract lists this compound as a preferred emulsifier for
antiperspirant compositions. Ans. 11. Although Diec' s antiperspirant is a
stick, not a roll-on formulation, the Examiner relies on the Diec abstract
"solely to demonstrate that polyolpoly-12-hydroxystearates have been used
in antiperspirant compositions wherein the antiperspirant component is a
water-soluble antiperspirant such as Al chlorohydrate." Ans. 10 (citing Diec
abstract).
2. Unexpected Results
Appellants argue that the data from the Specification and the Gondek
declarations show unexpected results regarding microfoaming and
absorption properties, and that these results are commensurate in scope with
the claimed ranges, specifically with respect to both the antiperspirant
component and the polyolpoly-12-hydroxystearate component. See Br. 17-
20. The Examiner finds that the data are not sufficient to support
unexpected results commensurate in scope with the claims. See Ans. 14. In
regard to the antiperspirant component, the Examiner notes that between the
Specification and 2009 Gondek declaration,7 only one in-range amount of
antiperspirant, 20% by weight, is tested. The other compositions (including
the sole test composition in the 2009 Gondek declaration) use 40%
antiperspirant by weight, which is outside the claimed range.
7 The 2010 Gondek declaration does not include additional experimental
data.
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Appellants argue that because microfoaming "is a problem in roll-on
formulations," "if anything, contrary to the Examiner's assertions, the
Examples containing 40% of antiperspirant component further support the
present invention, as they contain extremely high amounts of antiperspirant
component above the claimed range without showing microfoaming." Br.
18.
With only a single in-range value of antiperspirant tested, however,
we are unpersuaded that Appellants have met their burden to show evidence
of unexpected results over the closest prior art, commensurate in scope with
the claimed ranges. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Indeed, the only comparison/control formulations (i.e., those without a
polyolpoly-12-hydroxystearate-Specification composition Cl and 2009
Gondek declaration composition A) include 40% of an antiperspirant by
weight. Without a control with an in-range amount of antiperspirant, it is
not clear how to isolate the effect ofpolyolpoly-12-hydroxystearate, or
assess whether those results are unexpected. The 2010 Gondek declaration
states that the examples with 20% and 40% antiperspirant support the
claimed range of about 1-30% because "[a]s one skilled in the art, I can
further attest to the fact that as the amount of antiperspirant in the inventive
compositions increases, the adsorption of the compositions on skin
decreases." Br. 32 (Ex. 2). This assertion is not persuasive as applied to the
claims, however, in the absence of additional in-range objective data. Cf In
re Greenfield, 571F.2d1185, 1189 (CCPA 1978) ("Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
'it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
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Application 10/495,697
support."' (quoting in re Tijjzn, 448 F.2d 791, 792 (CCPA 1971))).
Accordingly, as the only in-range examples Appellants offer have the same
amount of antiperspirant-20% by weight-we agree with the Examiner
that, from this single data point, "a trend cannot be established for the range
of antiperspirant component as claimed." Ans. 15. We thus conclude that
Appellants have not overcome the Examiner's prima facie case with
persuasive evidence that establishes unexpected results commensurate in
scope with the claims.
CONCLUSION
The rejection of claims 11, 13, 16, 18-20, 32, and 33 is affirmed for
the reasons of record and as explained herein. 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 )(iv).
AFFIRMED
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