Ex Parte Kitko et al

Patent Trial and Appeal Board

Oct 26, 2017

12255920 (P.T.A.B. Oct. 26, 2017)

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.
12/255,920 10/22/2008 David Johnathan Kitko 10934M 4236
27752 7590 10/30/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JOHNATHAN KITKO,
HOWARD DAVID HUTTON III, ERIC SCOTT JOHNSON
and THOMAS ALLEN HUTCHINS1
Appeal 2016-005549
Application 12/255,920
Technology Center 1600
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
personal care compositions comprising at least one undecyl sulfate
surfactant compound. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as The Proctor & Gamble
Company. (App. Br. 2.)
Appeal 2016-005549
Application 12/255,920
STATEMENT OF THE CASE
Appellants’ “invention relates to personal care compositions
comprising compounds comprising undecyl sulfates and/or ethoxylated
undecyl sulfates (undeceth sulfates).” (Spec. 1:8—10.)
Claims 1—5, 7, 9, 21, 23—30, and 35—38 are on appeal. Claim 1 is
illustrative:
1. A personal care composition comprising a dermatologically
acceptable carrier, and from about 3 wt% to about 40 wt% of at
least one undecyl sulfate surfactant compound selected from the
group consisting of:
a) Ri-0(CH2CHR30)y-S03M;
b) CH3-(CH2)z-CHR2-CH2-0(CH2CHR30)y-S03M; and
c) mixtures thereof;
where Ri represents CH3(CH2)io, R2 represents a
hydrocarbon radical comprising 1 to 4 carbon atoms such
that the sum of the carbon atoms in z and R2 is 8, R3 is H
or CH3, y is 0 to 7, the average value of y is about 1 when
y is not = 0, and M is a mono-valent or di-valent,
positively-charged cation.
(App. Br. 14 (Claims App.).)
Dependent claim 7 recites that “the concentration of the undecyl
sulfate surfactant compound is from about 3 wt% to about 37 wt%” and that
an additional anionic surfactant is also included in the composition (also at a
concentration of about 3—37 wt%). (Id. at 15.)
The other independent claims are claims 23, 28, and 35, which are
similar to claim 1 but distinct in these respects: claim 23 recites that the
surfactant includes compound “a” as in claim 1, and that its concentration is
“from about 5 wt% to about 15 wt%”; claim 28 recites a composition in
“single phase, isotropic” form; and claim 35 indicates that the surfactant
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includes compound “a” as in claim 1, and does not expressly recite “b” or
mixtures of “b” with “a”). (Id. at 15—17.)
Appellants elected a species of “personal care compositions
comprising — in addition to an undecyl sulfate and/or an undecyl alkoxy
sulfate compound defined in Claim 1 — an additional surfactant.” (See Mar.
15, 2011 Resp. to Restriction Req. 2. (Appellants stated that “[cjlaims 7-12
are drawn to this invention.”).) In response to the Examiner’s determination
that Appellants’ election was not fully responsive, Appellants further elected
species corresponding to four different elements relevant to various
dependent claims. (See June 6, 2011 Resp. to Restriction Req. 2.)
Appellants elected “a conditioning agent as the benefit agent” for Group 1,
“cooamido propyl betain as the co-surfactant” for Group II, “sodium laurel
sulfate as the additional surfactant” for Group III, and “a viscosity of about
3,000 to about 500,000 cps” for Group IV. (Id. at 2—3; see also Final Act.
4.) We limit our analysis of the claims to the patentability of the elected
species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
The claims stand rejected as follows:
I. Claims 1—5, 7, 9, and 21 under 35 U.S.C. § 103(a) over
Wagner2 and Shay.3 (Non-Final Act. 4—7.)4
II. Claims 23—30 and 35—38 under 35 U.S.C. § 103(a) over Greeb5
and Shay. (Id. at 7—10.)
2 Wagner et al., US 2006/0079420 Al, published Apr. 13, 2006.
3 Shay et al., US 3,616,859, issued Nov. 2, 1971.
4 Non-Final Rejection mailed April 27, 2015.
5 Greeb, US 4,772,424, issued Sept. 20, 1988.
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Application 12/255,920
I — Obviousness of Claims 1—5, 7, 9, and 21 over Wagner and Shay
Rejection I relates to claim 1 and its dependent claims.
The Examiner finds that Wagner teaches the invention in claim 1,
except that it “do[es] not explicitly disclose that the alkyl sulfate compound
can comprise 3-37 wt% of the composition, and that the alkyl sulfate
compound is advantageously an undecyl sulfate.” (Non-Final Act. 5.) More
specifically, the Examiner finds, inter alia, that Wagner teaches a personal
cleansing composition comprising at least one linear or branched alkyl
sulfate compound having an average of about 8—24 carbons, and that “[t]he
alkyl sulfate can include” salts of “a branched Cn alkyl sulfate compound
(i.e. undecyl sulfate).” {Id. at 4 (citing Wagner 144).) The Examiner further
finds that Wagner teaches the composition “comprises 2-23 wt% of a
surfactant system that itself comprises most preferably 60-85 wt% of one or
more anionic surfactants.” (Id. at 5.) Thus, according to the Examiner,
Wagner effectively discloses “about 20 wt% (i.e. 85% of 23%) of an anionic
surfactant component.” (Id.)
The Examiner turns to Shay. The Examiner finds Shay “disclose[s] a
foam-forming composition comprising a dermatologically acceptable carrier
(i.e. water) and a water soluble salt of undecyl sulfate.” (Id.)
The Examiner concludes it would have been obvious “to combine the
respective teachings of Wagner et al. and Shay et al.,... to devise
Applicants’ claimed composition.” (Id.) According to the Examiner:
[0]ne of ordinary skill in the art would be motivated to
incorporate greater than 5 wt% up to about 12 wt% of a
monomethyl branched anionic surfactant, such as 4-methyl
undecyl sulfate . . . (i.e. 20 wt% total anionic surfactant
component minus 8 wt% linear anionic surfactant fraction equals
12 wt% for the branched anionic surfactant fraction) into the
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Application 12/255,920
composition of Wagner et al., with the reasonable expectation
that the resulting personal cleaning composition, having an
undecyl sulfate content will [be] within the claimed 3-37 wt%
range, would successfully exhibit optimal mildness, structure,
and lather volume when applied to skin.
{Id. at 6.) The Examiner further reasons that, because Shay discloses
“ammonia salts of undecyl sulfate are capable of producing stable aqueous
lather/foam of high bulk that is superior to that produced by sodium lauryl
sulfate” over a temperature range of 60-120°F and in hard water conditions,
the ordinarily skilled person would have been motivated to incorporate salts
of undecyl sulfates into Wagner’s compositions “with the reasonable
expectation that the resulting composition will exhibit superior
lathering/foaming characteristics.” {Id. at 6—7.)
Appellants argue claim 1 is nonobvious because Wagner does not
teach or suggest all the claim limitations. (App. Br. 3—8.) More specifically,
Appellants contend the Examiner “fails to consider the lower end of both
[surfactant] ranges” in Wagner, which fall outside the range recited in claim
1. {Id. at 4.) Appellants contend element “a” of claim 1 is directed to linear
undecyl sulfates, and that “linear Cn materials are not described at all” in
Wagner. {Id. at 4—5.) Appellants also contend there is no basis for the
Examiner’s finding that Wagner teaches more than 5 wt% of branched
anionic surfactants. (Id. at 4.) And, in any event, Appellants contend the
branched surfactants identified by the Examiner (e.g., 4-methyl undecyl
sulfate) include at least 12 carbons, not 11 carbons in the alkyl chain like the
surfactant of element “b” of claim 1. {Id. at 5 (citing Wagner 146).)
As to Shay, Appellants argue it “has nothing remotely to do with high
viscosity, isotropic shampoo gels/concentrates — or at least with personal
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care compositions more generally” like Wagner. (Id. at 11 ,)6 Instead,
Appellants contend, “Shay is directed to foam forming compositions that can
be incorporated into compositions containing gypsum or plaster of paris (for
wall board) or compositions containing concrete, or they may be used to
create foams to extinguish fires.” {Id. at 11.) According to Appellants, the
references are only arguably related insofar as both discuss surfactants and
foams, but that is true of “thousands, perhaps tens of thousands, of
references . . . [that] span numerous fields.” (Id. at 11.) With no apparent
problem in Wagner’s compositions (e.g., lauryl sulfate being Wagner’s
preferred and exemplified anionic surfactant), and without hindsight,
Appellants thus contend the skilled artisan would not have turned to Shay.
(Id. at 4—5 and 10—11.)
Finally, Appellants argue the “claimed compositions provide
unexpected benefits compared to the very materials Wagner describes as
preferred.” (Id. at 5.) According to Appellants, compositions containing
undecyl or undeceth sulfates, as in claim 1, “provide superior
foaming/lathering benefits compared to the closest prior art personal care
compositions (e.g., containing sodium lauryl/laureth sulfate).” (Id. at 5—6.)
As support, Appellants cite Examples 1—6 and 8 (and the related data in Fig.
6 Appellants mistakenly asserted that Rejection I was based on Wagner
alone, which the Examiner pointed out is incorrect. (App. Br. 7—8; Ans. 8.)
Appellants acknowledged the error and now contend the arguments relevant
to Shay, based on its combination with Greeb, apply equally to the
combination with Wagner. (Reply Br. 1.) The Examiner’s findings and
reasoning based on Shay substantially overlap for Rejections I and II. And
the Examiner did have an opportunity to respond to Appellants’ contentions
regarding Shay. (Ans. 10—14.) Accordingly, on this record, we will treat
Appellants’ arguments regarding Shay as equally applicable to Rejection I.
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1 and Tables 1—3, 6, 7, and 9) from the Specification as showing surprisingly
improved lathering (e.g., Sita foam volume and flash-lather volume) and
other properties (e.g., improved rinse times on par with fast rinse clarifying
shampoos). {Id. at 6—7; see Spec. 31—46.)
On the record of this appeal, and balancing all the evidence, we are
unpersuaded claim 1 would have been obvious over Wagner and Shay. As
an initial matter, we are unpersuaded by Appellants’ arguments that claim 1
is nonobvious because Wagner does not expressly disclose or exemplify use
of Cn or undecyl sulfate surfactants with concentrations within the range
claimed. The fact is, Wagner does suggest that linear or branched anionic
surfactants with between 8 to 24 carbon atoms are suitable, and teaches a
concentration for such surfactants that significantly overlaps with the
claimed range. (See Wagner || 25—26, and 30; see also id. 144 (disclosing
branched anionic surfactants including “C11-15 alkyl sulfate”).)7 That Cn
compounds or the precise concentration may not be preferred or exemplified
is not dispositive when obviousness is the issue. Merck & Co. Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding unpreferred
embodiments must also be considered under § 103); In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003) (analyzing obviousness when claimed
and prior art ranges abut or overlap). With a fair amount of picking from the
broad range of unpreferred surfactants and concentrations suggested in
Wagner, the skilled person would arrive at the composition of claim 1.
7 Wagner teaches that the anionic surfactant may comprise from at least 40%
to about 95% of the overall surfactant component (between 2—23.5%).
(Wagner || 25—26.) Thus, Wagner suggests a range of anionic surfactant of
between 0.8 wt% (40% x 2%) to roughly 22 wt% (95% x 23.5%).
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Application 12/255,920
When we account for Appellants’ evidence of unexpected results,
however, we are not persuaded that claim 1 would have been obvious.
Appellants’ Specification states, for example, that “Applicants unexpectedly
have found that compositions comprising undecyl (Cn) sulfates . . . have
many of the characteristics necessary to fulfill consumer needs and
preferences in personal care products.” (Spec. 1:27—31.) Appellants’data
shows that personal care compositions containing claimed amounts of
undecyl sulfates outperformed other compositions including Cg, Cio, Cn,
C14, and sodium lauryl sulfate (a blend of C12/C14/C16 compounds), which
has long been a preferred surfactant in shampoos and other personal care
compositions. (See Spec. 32:15—24 (“undecyl sulfate has an unexpected,
higher lather profile versus chain lengths Cg-Cn and SLS”) and Fig. 1; see
also id. 1—2 and 31—46 (Examples 1—6 and 8).)
The Examiner relies on Shay to support the motivation for picking
undecyl sulfates, as described above, and also to counter Appellants’
evidence of unexpected results. (Ans. 11.) According to the Examiner,
Appellants’ results are “not unexpected at all” because Shay shows that
undecyl sulfates provide better foaming than lauryl sulfates. (Id.) Thus, the
Examiner asserts, “Appellant has merely confirmed what Shay disclosed 45
years ago.” (Id.) On these points, the Examiner does not persuade us.
If Shay is relevant at all, it is at the fringe of what would reasonably
be considered analogous art. It is clearly not in the same field of endeavor
as the present application — personal care compositions. Shay is directed to
surfactants for industrial applications, such as for manufacturing wall board
or laying concrete — and particularly to the hard-water conditions that arise
in those applications. (See, e.g., Shay 1:28—50 and Examples).) As to
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whether Shay “is reasonably pertinent to the particular problem with which
the inventor is involved” the record lacks a sufficient and persuasive
analysis. In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992); see also In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (holding a reference is
reasonably pertinent and analogous if it “would have commended itself to an
inventor’s attention in considering his problem”). The Examiner does not,
for example, identify the specific problem confronting the inventors.
Neither does the Examiner identify deficiencies with the lauryl sulfate
surfactants known to ordinary artisans in the field, which might have (much
less predictably would have) motivated them to look outside of personal care
compositions for a solution.
Even if Shay, despite being outside the field of the invention, was
“analogous” for disclosing the foaming ability of undecyl sulfates, we weigh
Shay’s disclosure against evidence within the field that bears on the
reasonable expectations of skilled persons. On the record here, evidence
reflecting expectations within the field outweighs an expectation pieced
together with hindsight outside the field.
As noted above, Appellants provide substantial testing data showing
superior performance of the claimed compositions compared to other
personal care compositions illustrative of those exemplified in Wagner (or
Greeb). The Specification describes the data as “unexpected,” presumably
to those working in the relevant art of personal care products. (See, e.g.,
Spec. 32.) The Examiner’s only response to this data, supported only by
Shay, is that it would have been expected. The Specification, however,
undermines that very contention. In describing the state of the art, the
Specification explains that “[tjhough previously taught as a member of the
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group of Cio-Cis sulfate surfactants, the undecyl sulfates were thought to be
less suitable for personal care compositions based on studies of lather and
foaming properties that were conducted using relatively dilute
concentrations.” {Id. at 1:31—2:2.) And, in support, the Specification cites
U.S. 4,732,707 (a patent issued in 1988 and related to surfactants for
shampoos and other cleansing compositions) as “advis[ing] that
compositions should not contain more than 1% Cn.” (Spec. 2:2—3.) This
evidence along with the testing reported in the Specification is more
probative than Shay on the question of what the ordinarily skilled person
working with surfactants for personal care compositions would have
expected at the time of the invention. In short, we are unpersuaded Shay’s
teaching outside the relevant field outweighs the evidence squarely within
the field.
For the reasons above, the preponderance of the evidence does not
support the Examiner’s conclusion that claim 1 would have been obvious
over Wagner and Shay. The preponderance of the evidence further fails to
support the rejection of dependent claims 2—5, 7, 9, and 21.
II — Obviousness of Claims 23—30 and 35—38 over Greeb and Shay
The Examiner’s rejection over Greeb and Shay parallels the rejection
based on Wagner and Shay. For brevity, we do not repeat all the Examiner’s
findings and reasons provided for modifying Greeb based on Shay. (Non-
Final Act. 7—10.)
The Examiner finds that Greeb discloses a single-phase isotonic
shampoo composition comprising about 15% of at least one alkyl sulfate
surfactant. {Id. at 8; see Greeb 2:24—26 (teaching a “cleaning composition
comprising from about 15% to about 30% of an alkyl sulfate or alkyl
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sulfonate surfactant”); see also id. at 2:2:41—44 (teaching surfactants with
“an alkyl radical containing from 8—22 carbon atoms”).) Because the
Examiner finds that “Greeb does not explicitly disclose that the at least one
alkyl sulfate is advantageously a linear undecyl sulfate” as in claims 23, 28,
or 35, the Examiner again turns to Shay’s teaching of surface active agents
comprising undecyl sulfate. (Non-Final Act. 9.) The Examiner concludes it
would have been obvious to modify Greeb to select an undecyl sulfate
surfactant, with a reasonable expectation of forming a shampoo with a
superior lather/foam. (Id. at 9-10.)
Appellants argue: (i) Greeb does not identify, prefer, or exemplify
undecyl sulfate surfactants and that the Examiner is interpreting Greeb with
hindsight, (ii) Shay is unrelated to personal care compositions, and (iii)
Appellants have shown unexpected results with the claimed compositions
compared to compositions like those exemplified in Greeb. (App. Br. 9—12.)
For reasons similar to those described above related to Rejection I, the
preponderance of the evidence on this record does not support the
Examiner’s conclusion that claims 23, 28, and 35 (or the respective
dependent claims) would have been obvious. The Examiner again asserts
that Appellants’ evidence of unexpected results is not unexpected based on
Shay. (Ans. 11.) On that point, we are unpersuaded as explained above.
SUMMARY
We reverse the rejection of claims 1—5, 7, 9, and 21 over Wagner and
Shay. We also reverse the rejection of claims 23—30 and 35—38 over Greeb
and Shay.
REVERSED
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