Ex Parte Cao et al

Board of Patent Appeals and Interferences

Jan 11, 2012

10723341 (B.P.A.I. Jan. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HONGJIE CAO, GARY T. MARTINO, and
SAMUEL A. VONA, JR.
__________

Appeal 2011-007725
Application 10/723,341
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and FRANCISCO C. PRATS,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a personal
care composition. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that “acrylate copolymers provide
excellent water resistance to personal care products without the undesirable
waxy, greasy or heavy feel” (Spec. 2: 30-33).
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Application 10/723,341

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Claims 1, 2, 8-10 and 27-29 are on appeal. Claim 1, the only
independent claim, reads as follows:
1. A personal care composition comprising a water-proofing effective
amount of a water dispersible acrylate copolymer emulsion having
essentially no hydrophobic monomers having an alkyl group of greater than
or equal to C8,
wherein the copolymer is readily dispersible in the personal care
composition at any point during processing without the need for additional
processing,
wherein the acrylate copolymer comprises from about 38% to about
48% butyl acrylate, from about 39% to about 49% methyl methacrylate, and
from about 8% to about 18% methacrylic acid, by weight of the copolymer.

The Examiner has rejected claims 1, 2, 8-10 and 27-29 under 35
U.S.C. § 103(a) as being obvious in view of Cannell,1 Seib2 and Kubik.3
With regard to the claim limitation requiring that the acrylate
copolymer comprises “about 38% to about 48% butyl acrylate” (claim 1),
the Examiner finds that Seib discloses hair care compositions comprising
copolymers of acrylic acid, methacrylic acid and methacrylic acid esters
comprising 10-30% alkyl acrylate(s), which may be butyl acrylate (Answer
5). The Examiner reasons that a skilled artisan would have been able to
prepare the claimed acrylate polymers “by optimizing [Seib’s] percentages
of individual monomers…, depending on the solubility, washability with
water, dispersibility desired” (id. at 7). The Examiner also reasons that
“[w]hile the instant claims recite ‘about 38% to about 48%’, Seib teaches
10% to 30%. However, the term ‘about’ has not been defined in the instant

1 Cannell et al., US 6,221,389 B1, Apr. 23, 2001
2 Seib et al., US 4,085,264, Apr. 18, 1978
3 Kubik et al., US 4,172,122, Oct. 23, 1979
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Application 10/723,341

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application and accordingly encompasses 30% butacrylate monomer taught
by Seib” (id. at 10).
Appellants argue that the cited references would not have made
obvious a personal care composition with an acrylate copolymer comprising
the specified amounts of butyl acrylate (Reply Br. 6-7). Appellants argue
that the claim term “about 38% to about 48% butyl acrylate” does not
encompass the 30% butyl acrylate disclosed in Seib (id. at 7). Appellants
also argue that Seib discloses a range of butyl acrylate of 10% to 30%, with
a preferred range of 10% to 20%, and thus “there is no teaching or
suggestion in Seib that would have led one of ordinary skill in the art to
include butyl acrylate in an amount reaching the level claimed” (id.).
We agree with Appellants that the Examiner has not adequately
explained how the cited references would have made obvious the claimed
composition with an acrylate copolymer that includes “about 38% to about
48% butyl acrylate.”
Seib discloses that its copolymer contains 10-30% alkyl acrylate(s)
(e.g., butyl acrylate) (Seib, col. 1, ll. 51-52; col. 1, l. 67 to col. 2, l. 1), while
the claims on appeal require “about 38% to about 48% butyl acrylate” (claim
1). We are not persuaded by the Examiner’s reasoning that the word
“about” renders the claim term broad enough to encompass Seib’s 30% butyl
acrylate, because this interpretation would more than double the size of the
recited range. That is, the Examiner’s interpretation of about” would expand
the range from the expressly recited 10% (38% to 48%) to encompass a
range of 26% (30% to 56%, if each endpoint is allowed to deviate by 8%).
The Examiner has not provided adequate evidence or sound reasoning to
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Application 10/723,341

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show that such an interpretation would be considered reasonable by a person
of ordinary skill in the art.
We are also not persuaded by the Examiner’s reasoning that acrylate
polymers with “about 38% to about 48% butyl acrylate” would have been
obvious because the skilled artisan would have arrived at that amount by
optimizing the Seib percentages of individual monomers. Seib discloses
acrylate copolymers for use in hair setting compositions (Seib, col. 1, ll. 5-
13). Seib discloses that it “is an object of the present invention to provide a
film-forming agent which, though readily soluble in ethanol, isopropanol
and methylene chloride, has a low water absorption and which, whilst
providing a good stiffening effect, can be combed out without difficulty” (id.
at col. 1, ll. 36-41). Seib discloses that
this object is achieved by … copolymerizing acrylic acid or
methacrylic acid with esters of acrylic acid and methacrylic
acid in the presence of free radical-forming initiators, wherein
the improvement comprises copolymerizing – based on total
weight of monomers (a) from 45 to 80% of methyl
methacrylate, (b) from 10 to 30% of one or more alkyl acrylates
where alkyl is of 3 to 12 carbon atoms and (c) from 10 to 25%
of acrylic acid and/or methacrylic acid at from 140° to 300°C
and at from 2 to 50 bars.
(Id. at col. 1, ll. 42-54, emphasis added.)
Since Seib discloses that its composition – comprising 30% or less
alkyl acrylate(s) – has been optimized for hair care characteristics such as
low water absorption, good stiffening effect and compatibility with combing,
the Examiner has not adequately explained why one of skill in the art would
have found it obvious to modify Seib’s acrylate copolymers by increasing
the proportion of butyl acrylate as required by claim 1.
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We are also not persuaded by the Examiner’s reasoning that
“appellants have not shown any unexpected advantage of 38% butacrylate
monomer as opposed to 30% monomer” (Answer 10). “In rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. Only if that burden is met, does the burden
of coming forward with evidence or argument shift to the applicant.” In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Here, the Examiner has not
met the burden of presenting a prima facie case of obviousness.
SUMMARY
We reverse the rejection of claims 1, 2, 8-10, and 27-29 under 35
U.S.C. § 103(a).

REVERSED

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