Ex Parte de Beer et al

Patent Trial and Appeal Board

Dec 12, 2016

12593747 (P.T.A.B. Dec. 12, 2016)

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.
12/593,747 01/29/2010 Andrew Iwan de Beer 9419-00-SN 7798
23909 7590 12/14/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
KASSA, JESSICA M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW IWAN DE BEER and STUART JOHN CAMPBELL
Appeal 2016-000120
Application 12/593,7471
Technology Center 1600
Before ELIZABETH A. LaVIER, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek reversal of the
Examiner’s rejection of claims 14, 16—18, 22, 23, 25—27, 34, 35, 37, and 40.
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth
below, we AFFIRM.
BACKGROUND
The Specification describes cosmetic compositions comprising an
aluminum salt, and methods for preparing the same. Spec. 1. The
1 Appellants state the real party in interest is Colgate-Palmolive Europe
SARL. Br. 2.
Appeal 2016-000120
Application 12/593,747
Specification notes that agglomeration of aluminum salt particles can be
problematic in spray formulations such as aerosols, where the outlets from
the container are small. See id. Thus, the Specification aims to provide
novel compositions “with good flowing properties.” Id.
Claim 14, the only pending independent claim, is illustrative:
14. An aerosol antiperspirant comprising: an at least partially
dehydrated aluminum sulfate salt, silicone oil present in an
amount of at least 70 weight % of a total weight of liquids and
solids, and an aerosol propellant, and wherein at least 95 vol%
of the aluminum sulfate salt is present in the form of particles
having a size of less than 50 pm, and wherein the water of
hydration content of the salt is 90 mole %, or less, of the fully
saturated water of hydration content.
Br. 7 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 14, 16—18, 22, 23, 25—27, 34, 35, 37, and 40 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Nakane,2 Salas,3 Wahl,4
Goldberg,5 and Brewster.6 Ans. 2.
DISCUSSION
The Examiner relies on Nakane to teach or suggest much of the
claimed subject matter. See Final Action 4—5; Ans. 2—3. Nakane generally
discloses “[a] skin treatment composition comprising anti-bacterial zeolite
and alum and/or dried alum.” Nakane Abstract. The Examiner points to
2 Nakane et al., US 2006/0099161 Al, published May 11, 2006.
3 Salas et al., 5,945,085, issued Aug. 31, 1999.
4 Wahl, 3,725,540, issued Apr. 3, 1973.
5 Goldberg et al., 5,176,903, issued Jan. 5, 1993.
6 Brewster, 5,922,309, issued July 13, 1999.
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Application 12/593,747
Example 2-16 of Nakane (see Ans. 2—3), which discloses a deodorizing
spray comprising dried alum with an average particle size of 4.5 pm, and
dimethyl polysiloxane as the silicone oil (Nakane 1208 (Example 2-16)).
Among other things, the Examiner finds:
Because the alum is dried, the examiner concludes that the
water hydration content falls within the ranges found in instant
claims 14 and 16—17. The examiner calculates that the amounts
of solid and liquid components in the deodorizing spray
(paragraph 206) is 9.0. Dimethylpolysiloxane constitutes a
silicone oil. The percentage of dimethylpolysiloxane is 56%
(5.0/9.0*100=56%) which is close to the range found in instant
claim 14.
Ans. 3.
As to illustrative claim 14, the Examiner finds that Nakane fails to
expressly disclose two aspects: (1) “silicone oil present in an amount of at
least 70 weight % of a total weight of liquids and solids,” and (2) “at least 95
vol% of the aluminum sulfate salt is present in the form of particles having a
size of less than 50 pm.” See Ans. 4—5.
For the silicone oil, the Examiner finds that Nakane’s 56% is “close
to, albeit lower than, the range of instant claims 14 and 37.” Ans. 4. For
additional support, however, the Examiner turns to Goldberg, which teaches
an antiperspirant/deodorant composition that may take many compositional
forms, including aerosol, but provides details for a preferred roll-on
composition including silicones in the amount of 10—70% cyclomethicone
and 1—10% dimethicone. See Ans. 4 (discussing Goldberg 6:17—26). The
Examiner also cites Brewster, which teaches an underarm treatment
composition that may be an aerosol but is preferably a cream. See Ans. 5;
Brewster 4:46-48. Brewster’s compositions include a cyclomethicone
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Application 12/593,747
hexamer, present in amounts from 5—80% by weight, but optimally from 30—
50% by weight. Brewster 3:23—27; see also Ans. 5.
For the 95% of aluminum sulfate salt in particles of less than 50 pm,
the Examiner relies on Salas and Wahl. See Ans. 5—6. Salas, which
discloses aerosol deodorant/antiperspirant compositions (Salas Abstract),
teaches that “[sjuperior wetness reduction properties are obtained if part or
all of the antiperspirant ingredient is in the form of particles which have a
diameter of less than about 15 microns” {id. at 3:41 44). Salas includes
aluminum sulfate among its list of suitable astringent compounds. Id. at
3:51—55. Wahl also teaches aerosol antiperspirant compositions {see Wahl
Abstract) using “any of those [antiperspirant compounds] well known in the
art that are insoluble in the aerosol composition as a whole” {id. at 1:55—57).
Wahl describes the importance of uniform, small particle sizes to keeping
the particles suspended in the composition, avoiding clogging the valve of
the aerosol container, and for adequate dispersal on the skin {see id. at 2:28—
39). Wahl prefers particles ranging from 10—26 pm. Id. at 2:46-47.
The Examiner finds it would have been obvious to combine the
references as claimed, starting with Nakane. See Ans. 6—7. For the silicone
oil, the Examiner finds that Nakane teaches ring polysiloxanes {see id. at 6
(citing Nakane 1112)) in an amount “close to” the claimed range {id. at 3
(discussing Nakane 1206)), while Goldberg and Brewster teach
cyclomethicone in amounts that overlap with the claimed range and render
them prima facie obvious {id. at 7). The Examiner also finds that increasing
the amount of silicone oil from that taught in Nakane would have been a
matter of routine optimization. See id. at 12. Indeed, the Specification states
that silicone oils can be used as carrier liquids {see Spec. 4), and that the
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Application 12/593,747
concentration thereof “may be chosen within a wide range” depending on
the purpose and application form (id. at 5), anywhere from “at least 25 wt%”
to “up to 99.5 wt%” (id. at 5—6), although “at least 80 wt%” is particularly
preferred (id. at 5).
For the aluminum sulfate particles, the Examiner notes that Nakane
“already teach[es] aerosol antiperspirant compositions comprising aluminum
sulfate with a particle size of 4.5 microns,” which is more than 10 times
smaller than the 50 micron limit recited in claim 14. Ans. 7. Accordingly,
the Examiner finds that “one would reasonably expect that the aluminum
sulfate particles of Nakane et al. have a particle size distribution which lies
within or is at least close to the instantly claimed range,” especially in view
of the teachings in Salas and Wahl regarding the importance of particle size
uniformity. Id.
Appellants fail to persuade us of any reversible error by the Examiner.
Several of Appellants’ arguments unpersuasively attack the references
individually rather than the combination. See In re Keller, 642 F.2d 413,
426 (CCPA 1981). For example, Appellants assert that “Brewster ’309 does
not disclose alum or the selection of the particle size and level of hydration.”
Br. 3. This is unpersuasive, as the Examiner relies on Brewster for a
different claim element, namely cyclomethicone hexamer (a silicone oil) at
5—80% by weight of the deodorant/antiperspirant composition. Ans. 5
(citing Brewster 3:25—27).
Further, Appellants critique the Examiner’s use of references directed
toward non-aerosol antiperspirant compositions, arguing that formulations of
sticks and roll-ons, for example, fail to “provide direction to one of ordinary
skill in the art to make selections for an aerosol composition.” Br. 3. The
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Examiner acknowledges that roll-on compositions are different from
aerosols, as the former lacks the propellants found in aerosols, but finds that
otherwise, “roll-on and aerosol compositions are similar liquid
compositions.” Ans. 11. We discern no error in this analysis. Cf.Wyersv.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (noting the scope of
analogous art should be construed broadly).
Regarding the amount of silicone oils specifically, Appellants assert
that the lower-than-claimed amounts taught in Nakane, Salas, and Wahl
teach away from the higher claimed range. See Br. 4—5. But teaching
another way is not the same as teaching away. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” (quoting In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)); see also Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (observing that
when considering § 103, the prior art must be considered for all of its
teachings, including unpreferred embodiments). We agree with the
Examiner (see Ans. 12) that the lower concentrations of silicone oils in
Nakane, Salas, and Wahl do not teach away from the claimed invention.
As to the claimed combination, Appellants argue that “[t]oo much
picking and choosing is required from among all the variables found in these
references” to achieve the claimed invention. Br. 5. Similarly, Appellants
reject the Examiner’s optimization analysis as unfounded. See id. We are
not persuaded. As an initial matter, “picking and choosing” can be
appropriate in an obviousness rejection. See In reArkley, 455 F.2d 586, 587
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(CCPA 1972) (observing that “picking and choosing may be entirely proper
in the making of a 103, obviousness rejection,” unlike in an anticipation
rejection); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). The Examiner’s rejection of claim 14 relies largely on
Nakane; the only modifications are increasing the amount of silicone oil (to
70 weight %) and ensuring uniformity and size of aluminum sulfate salt
particles (at least 95 vol% of particles less than 50 pm). See Ans. 4—5. And
as explained above, Nakane discloses an amount of silicone oil (56 weight
%) close to the claimed amount and also teaches an alum average particle
size (4.5 pm) significantly less than 50 pm, while the other references
provide additional direction for formulating antiperspirant/deodorant
compositions. For example, Goldberg and Brewster both provide reasons
for using their silicone oils, which would have provided a rationale to the
ordinarily skilled artisan to pursue silicone oil levels within the ranges
disclosed in Goldberg and Brewster. Namely, Goldberg states that “[t]he
silicone components provides [sic] a pleasant layer on the skin which
enhances feel.” Goldberg 4:47-49. Brewster, on the other hand, focuses on
solving the problem of white residue left by many underarm products (see
Goldberg 1:31—38) by using “predominantly hexameric cyclomethicone,” to
the partial exclusion of tetramer and pentamer forms {id. at 1:57—61). Thus,
we find that this is not a case of too much “picking and choosing,” so much
as one of modest, obvious modification of the prior art. Cf. KSR, 550 U.S. at
420 (“[I]n many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.”).
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For these reasons and those of record, we are unpersuaded by
Appellants’ arguments, and we affirm the Examiner’s rejection of claim 14.
As to claims 16, 17 and 40, Appellants’ “separate^” arguments
regarding these claims amount to restating the additional limitations of these
claims and stating that the references fail to teach or suggest the claimed
combination “without the need for picking and choosing from among all of
the variables.” Br. 5—6. Accordingly, these arguments are not substantively
different from those made in regard to claim 14. For similar reasons as
discussed above with regard to claim 14, we do not find Appellants’
“picking and choosing” arguments persuasive for claims 16, 17, or 40. We
affirm the Examiner’s rejection of claims 16, 17, and 40.
Claims 18, 22, 23, 25—27, 34, 35, and 37, which are not argued
separately, fall with claim 14.
CONCLUSION
The rejection of claims 14, 16—18, 22, 23, 25—27, 34, 35, 37, and 40
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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