Ex Parte Grandjon

Patent Trial and Appeal Board

Jul 26, 2018

12949441 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/949,441 11/18/2010
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
07/30/2018
FIRST NAMED INVENTOR
Vincent Grandjon
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.
085507-536258 5795
EXAMINER
KLINKEL, KORTNEY L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT GRANDJON 1
Appeal2017-008050
Application 12/949,441
Technology Center 1600
Before RICHARD J. SMITH, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
fragrancing compositions, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
"Human beings have always sought to perfume themselves and to
perfume the objects surrounding them or their environments, both to mask
strong and/or unpleasant odours and to give a nice odour." Spec. 1. Many
1 Appellant identifies the Real Party in Interest as L'OREAL. (Appeal Br.
2.)
Appeal2017-008050
Application 12/949,441
cosmetic compositions containing fragrances also contain emollients or
other compounds that adversely affect the consumer's ability to perceive the
fragrance contained in the composition. Spec. 2. The Specification
describes an aqueous fragrancing composition.
Claims 1, 10, 13, and 142 are on appeal. Claim 1 is illustrative and
reads as follows:
1. An aqueous fragrancing composition comprising, in a
cosmetically acceptable medium:
a) 30% to 80% by weight of water relative to the total
weight of the composition;
b) at least 2% by weight of a fragrancing substance; and
c) at least a mixture ofn-undecane (C 11) and ofn-
tridecane (C13).
The claims stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackwerth3 in view of Ohloff. 4
DISCUSSION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Jackwerth combined with Ohloff.
2 Claim 15 is pending in the application but has been withdrawn from
consideration. Final Act. 1.
3 Jackwerth et al., (WO 08/155059 Al, published December 24, 2008
("Jackwerth")). Citations are to the English language equivalent, US
2010/0189673 Al, published July 29, 2010.
4 Ohloffet al., (US 4,372,881, issued Feb. 8, 1993 ("Ohloff')).
2
Appeal2017-008050
Application 12/949,441
The Examiner finds that J ackwerth discloses hydrocarbon mixtures
which contain n-undecane and n-tridecane which are suitable for use in
cosmetic compositions. Final Act. 4. The Examiner finds that Jackwerth
teaches a body milk formulation which includes a mixture of n-undecane
and n-tridecane, water, and perfume. Final Act. 5. The Examiner finds that
the water present in the body milk composition of Jackwerth falls within the
range recited in the claims. Id. The Examiner finds that Ohloff teaches a
fragrance composition which can be included in cosmetic compositions,
such as body milk, in amounts ranging from 0.1 to 5% by weight and
possibly as high as 10% by weight. Final Act. 6.
The Examiner concludes:
It would have been prima facie obvious to one of
ordinary skill in the art at the time of the instant invention
to have formulated a perfumed composition comprising
the n-undecane/n-tridecane hydrocarbon mixture of
Jackwerth et al. comprising 14C isotopes, at least 2% by
weight of a fragrancing substance, such as a perfume and
30-80% by weight water, specifically 53.6% or 72% with
a reasonable expectation that an effective fragrancing
composition would result. Specifically, one would have
been motivated to utilize at least 2% of a fragrancing
substance in the body milk composition of Jackwerth et
al., as from about 0.1 to 5% of a perfume is taught to be
common for use in cosmetics, including in body milk
compositions. Generally, differences in concentration or
temperature will not support the patentability of subject
matter encompassed by the prior art unless there is
evidence indicating such concentration or temperature is
critical. "[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover
the optimum or workable ranges by routine
experimentation." In re Aller, 220 F.2d 454, 456, 105
3
Appeal2017-008050
Application 12/949,441
USPQ 233,235 (CCPA 1955). Here, one would be
motivated to adjust the relative amount of perfume
contained in the aqueous hydrocarbon mixture containing
body milk composition in an effort to arrive at a pleasant
smelling composition. More generally, one would be
motivated to include at least 2% of a fragrancing
substance in the general cosmetic compositions of
J ackwerth et al. comprising a [hydrocarbon] mixture,
preferably a mixture of n-undecane and n-tridecane, as
J ackwerth et al. generally teach that the hydrocarbon
mixtures are particularly well suited for use in cosmetic
compositions, including cosmetic formulations for skin
and/or hair, including sunscreens, make-up, shampoo,
bath additives, shower gel, and for forming finely divided
emulsions etc., and these cosmetics typically contain
from 0.1-5% perfume as taught by Ohloff et al. Namely,
one would be motivated to include at least 2% perfume
in the cosmetic compositions of Jackwerth et al. as
Jackwerth et al. generally teach that perfumes may be
included ([0324]) and Ohloff et al. specifically teaches
that perfumes are included in such cosmetic compositions
in amounts which overlap substantially with at least 2%
as claimed.
Final Act. 6-7.
Appellant contends that J ackwerth does not teach or suggest the
claimed composition in that Jackwerth is not directed to the problems
associated with fragrancing compounds. Appeal Br. 6. Appellant argues
that Jackwerth does not teach the specific amount of perfume as called for in
the present claims. Appeal Br. 7. Appellant contends that Ohloff does not
teach including perfume in an amount of greater that 2% nor does Ohloff
teach the presence of water. Id. Appellant contends that the Examiner
impermissibly used hindsight in combining the references. Appeal Br. 8.
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Appeal2017-008050
Application 12/949,441
Appellant goes on to argue that neither of the references provide any
direction of motivation to combine the references nor would one skilled in
the art have a reasonable expectation of success in developing the claimed
invention. Appeal Br. 9. Appellant contends that the evaporation data
supports the patentability of the claims by showing surprising results when
compared with prior art compositions. Appeal Br. 10-13. Appellant
contends that while none of the claims recited a limitation relating to
evaporation, the evaporation feature of the invention is important and should
be considered as part of the patentability analysis. Id.
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. The following findings are included for emphasis and reference
purposes.
FFl. Jackwerth teaches the use of hydrocarbon mixtures for cosmetic
and pharmaceutical compositions. Jackwerth ,r 1.
FF2. The hydrocarbon mixtures contain
(a) 55 to 80% by weight, especially 60 to 75% by weight,
especially 65 to 70% by weight, of linear C-11 hydrocarbons,
preferably n-undecane
(b) 20 to 45% by weight, especially 24 to 40% by
weight, especially 24 to 3 0% by weight, of linear C-13
hydrocarbons, preferably n-tridecane based on the sum of the
hydrocarbons.
J ackwerth ,r,r 44--4 7.
5
Appeal2017-008050
Application 12/949,441
FF3. Jackwerth teaches the following formulation for a moisturizing
body milk:
n.
Hl.
]\',
X\CJ
(\i~:.:;~~ryl tso.rK>::R~n~::-&te·
f.::;..ud) 1,.:(.::ttx~.1-i;th~-20
(:tnd} g]y<~i:-ryl
:,;r~~:.U\~~\~· ( ~{{]d)
f~{yt·~n:.>f (~Uki}
.;:\_~t(~h-~~th
pnJ~fgly~~~·~··l-2-
dSp~)1J.hyd::c~~:y~:1::r~tn1te
(:wd) glyq,,m.l
\.Yt.
),0
C ETIOL lt OE D 1c~pryiyl f'thd' 4.C
(:E.T'I()L :.Xe: 6(::0 ()l~~l~ eruc;'J.tt:: i.t:
lSOPR.ClP".ll..'1\fY1-UST.\I£ fao;:,r::,pyl myii"bk 7.Jj
}·tyd1t-:.c .. 1it::-rin snix11~re ~·tc:cc::rdh1g: 10
prep~~rat\~~:~ ~>:~~1n1pk"- :~ c~ 2
\\-"ah.:.":!\ dei-un.;~~d
7 .. G
2U .. C
J ackwerth ,r 3 63.
FF4. Ohloff teaches compounds that are characterized by "a powerful
scent of green, fresh, fruity and flowery type reminiscent of the odor
possessed by galbanum resinoid." Ohloff col. 2, 11. 4--7.
FF5. Ohloff teaches that the compounds disclosed therein can be used
to perfume articles as varied as soaps, detergents,
lotions, shampoos, cosmetics in general, such as
body-milks or beauty creams, to which articles
they confer a very pleasant fresh and natural note.
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Appeal2017-008050
Application 12/949,441
In order to achieve these results, compounds (I)
can be used in proportions varying from about O .1
to 5% by weight based on the total weight of the
perfumed article or perfume composition into
which they are added. These proportions can be
as high as 10% or even higher in those cases
involving the preparation of perfume bases or
concentrates.
Ohloff col. 2, 11. 11-22.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima
facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument
shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of
the record, by a preponderance of evidence with due
consideration to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
"A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
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Appeal2017-008050
Application 12/949,441
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
"[I]t is well established that the objective evidence of nonobviousness
must be commensurate in scope with the claims." In re Lindner, 457 F.2d
506, 508 (CCPA 1972).
"To be particularly probative, evidence of unexpected results must
establish that there is a difference between the results obtained and those of
the closest prior art, and that the difference would not have been expected by
one of ordinary skill in the art at the time of the invention." Bristol-Myers
Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014).
Analysis
We find the Examiner has established that the subject matter of the
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made in view of Jackwerth combined with Ohloff.
Appellant has not produced evidence showing, or persuasively argued, that
the Examiner's determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Briefs have been considered in this
Decision. Arguments not presented in the Briefs are waived. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2015). We have identified claim 1 as representative;
therefore, all claims fall with claim 1. We address Appellant's arguments
below.
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Appeal2017-008050
Application 12/949,441
Appellant contends that the references do not teach all of the
limitations of the claims. Appeal Br. 6. Appellant argues that Jackwerth
only alludes to the possibility of including perfume oils in the cosmetic
composition and does not teach the relative amount of perfume to use.
Appeal Br. 6-7. With respect to Ohloff, Appellant contends that Ohloff
does not teach the advantage of using at least 2 % perfume in creating the
claimed invention. Appeal Br. 7.
We have considered Appellant's arguments and find them
unpersuasive. Appellant's argument are an attack on the individual
references and not on what the references in combination would have
suggested to one skilled in the art. Merck, 800 F .2d at 1097.
Jackwerth teaches a body milk composition having all the elements of
the instant claims with the exception of teaching a specific amount of
perfume. FF3. Ohloff teaches that the fragrances described therein can be
incorporated into compositions such as body milk in amounts ranging from
0.1 to 10% by weight. FF5. This range overlaps with the range of at least
2% recited in the claims. We agree with the Examiner that the combined
teachings of the references would have led one skilled in the art to use
perfume in the amounts recited in Ohloff in the body milk of Jackwerth.
Final Act. 6-7.
Appellant contends that the teachings of Ohloff would not lead one
skilled in the art to use at least about 2% perfume as each of the examples in
Ohloffuse less than 2% perfume and the specification of Ohloffteaches a
range of from 0.1 to 5%. Appeal Br. 7. We are unpersuaded by Appellant's
argument.
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Appeal2017-008050
Application 12/949,441
The general range taught by Ohloff overlaps with the claimed range
establishing a prima facie case of obviousness. In re Peterson, 315 F.3d at
1329. Moreover, as demonstrated by the Examiner, at least two of the
examples in Ohloffuse perfume in amounts greater than 2%, thus teaching
at least 2%. Ans. 5.
Appellant argues that the Examiner engaged in the impermissible use
of hindsight in making the rejection. Appeal Br. 8. This argument is not
persuasive. As shown above, the evidence of record teaches all the claim
limitations and provides a sufficient reason to combine the prior art in the
manner proposed without resort to Appellant's Specification. Appellant has
not pointed to any teaching in the Specification that supports the contention
that the Examiner improperly used the present disclosure in making the
rejection.
Appellant argues that neither Jackwerth nor Ohloff provide any
direction or incentive to combine the references. Appeal Br. 10. Again, we
are unpersauded. Jackwerth specifically teaches a body milk composition
that contains an unspecified amount of perfume. FF3. Ohloff teaches that
the fragrance compounds disclosed therein can be used in a body milk in
an amount of from 0.1 to 5%. FF5. We agree with the Examiner that the
combined references would have led one skilled in the art to create the
claimed composition.
Appellant contends that the Examiner has improperly ignored the
evidence of improved evaporation achieved by the claimed composition.
Appeal Br. 10-11. Appellant argues that while the evaporation rate is
not an element of the claims, it is a key feature of the claims and was
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Application 12/949,441
the motivation for creating the present invention. This argument is
unpersuasive. "In determining whether the subject matter of a patent claim
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,419 (2007).
Appellant argues that there is evidence of unexpected results. Appeal
Br. 11. In support of this contention, Appellant points to the evaporation
profile of the claimed composition compared to compositions without the
recited undecane/tridecane mixture. Id., Spec. 26.
We have considered Appellant's argument and the data in the
Specification and are not convinced that the evidence rebuts the Examiner's
prima facie case of obviousness. The experiment does not compare the
invention with the closet prior art, namely Jackwerth. Neither does
Appellant provide evidence on the question of what the skilled person would
have expected (specific to an evaporation profile) in light of Jackwerth's
teachings. We also note the Specification does not identify this result as
unexpected or surprising in any way. Attorney argument is insufficient to
establish that the results are unexpected. In re Geisler, 116 F.3d 1465, 1470
(1997).
Appellant contends that the Examiner has not shown the composition
taught by the references would have the same characteristics as the claimed
invention, namely the improved evaporation profile. Appeal Br. 11-12. We
find this argument unpersuasive.
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Appeal2017-008050
Application 12/949,441
To begin, the evaporation profile is not a claim limitation. And,
insofar as a reasonable expectation of success is required, this requirement
"refers to the likelihood of success in combining references to meet the
limitations of the claimed invention." Intelligent Bio-Systems, Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 206) (emphasis
added). Moreover, as the Examiner points out, the composition in Jackwerth
is nearly the same as that in the recited claims, except that J ackwerth does
not specify the amount of fragrance. Ans. 10; FF 3. The specific fragrance
amount is, however, taught by Ohloff, which relates to the same type of
compositions exemplified in Jackwerth-body milks. Ans. 10; FF 5.
"Where, ... the claimed and prior art products are identical or substantially
identical ... the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. ... [The] fairness [ of the burden-shifting] is evidenced by
the PTO's inability to manufacture products or to obtain and compare prior
art products." In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here
Appellant has not offered any credible evidence to show that the
composition described by the art does not possess the same characteristics as
the claimed composition.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 1 would have been
obvious over Jackwerth combined with Ohloff.
Claims 10, 13, and 14 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 12/949,441
SUMMARY
We affirm the rejection based on 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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