Ex Parte Kroepke et al

Patent Trial and Appeal Board

Feb 25, 2019

13996630 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/996,630 09/16/2013
13897 7590 02/27/2019
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Rainer Kroepke
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.
3321-P50066 9452
EXAMINER
MILLER, DALE R
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAINER KROEPKE, CHRISTIAN FRESE,
CATHRIN SCHERNER, MARTIN GRIEBENOW,
and SVENJA LENA MOELLGAARD 1
Appeal2018-000034
Application 13/996,630
Technology Center 1600
Before JOHN G. NEW, TA WEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Beiersdorf AG of Hamburg, Germany as the real
party-in-interest. App. Br. 3.
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Application 13/996,630
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 26-45. Specifically, claims 26-32 and
37--45 stand rejected as unpatentable under 35 U.S.C. I03(a) as being
obvious over the combination of Thiem et al. (US 5,891,854, April 6, 1999)
("Thiem"), Eliu et al. (US 2004/0231072 Al, November 25, 2004) ("Eliu")
or alternatively, Sadhu (US 2010/0152480 Al, June 17, 2010) ("Sadhu"),
and Wunsch et al. (US 2008/0220031 Al, September 11, 2008) ("Wunsch").
Claims 33-36 stand rejected as unpatentable under 35 U.S.C. § I03(a)
as being obvious over the combination of Thiem, Eliu, or Sadhu, Wunsch, or
Livoreil et al. (US 2003/0091520 Al, May 15, 2003) ("Livoreil").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to cosmetic ingredient combinations
of: (1) one or more preservatives selected from the group of
isothiazolinones, benzethonium chloride, piroctone olamine, and ethyl
lauroyl arginate; and (2) one or more glucosyl glycerides. Abstract.
REPRESENTATIVE CLAIM
Claim 26 is representative of the claims on appeal and recites:
26. A cosmetic preparation, wherein the combination
compnses
(i) one or more preservatives selected from
isothiazolinones, benzethonium chloride, piroctone
olamine, lauroyl ethyl arginate;
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App. Br. 18.
(ii) one or more glucosyl glycerides; and
(iii) one or more surfactants selected from sodium lauryl
ether sulfate, cocamidopropyl betaine, PEG-7
glyceryl cocoate, PEG-40 hydrogenated castor oil,
cationic guar derivatives, polymeric dimethyl diallyl
ammonium salts and copolymers thereof with esters
and amides of acrylic acid and methacrylic acid.
ISSUES AND ANALYSES
We adopt the Examiner's findings, reasoning, and conclusion that the
claims are prima facie obvious over the combined cited prior art. We
address the arguments raised by Appellants below.
A. Claims 26-32 and 37--45
Issue
Appellants argue that the Examiner erred because a person of ordinary
skill in the art would have understood that all of the components of the
compositions of Thiem, including preservatives and surfactants optionally
present therein, must be of a type which does not cause symptoms of
irritation to the skin and mucous membranes, and that the remaining cited
references do not provide guidance in that respect. App. Br. 11.
Analysis
The Examiner finds that Thiem teaches a cosmetic or pharmaceutical
formulation comprising from about 0.001 to about 10% by weight (pentosyl)
hexosyl ether glycerides and/or hexosyl ether glycerides, based on the
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overall weight of the formulation. Final Act. 7 (citing Thiem claim 14). The
Examiner finds that Thiem also teaches that the cosmetic formulation, may
be applied to hair, and may include cosmetic auxiliaries as are commonly
used in such formulations. Id.
The Examiner further finds that Thiem teaches that such cosmetic
auxiliaries may include preservatives bactericides, perfumes, substances for
preventing foaming, dyes, pigments having a coloring action, thickeners,
surfactants, emulsifiers, softening, moisturizing and/or moisture retaining
substances, fats, oils, and waxes. Id. The Examiner finds that Thiem also
teaches the inclusion of other customary constituents of a cosmetic or
dermatological formulation, such as alcohols, polyols, polymers, foam
stabilizers, electrolytes, organic solvents or silicone derivatives, as well as
anionic, non-ionic and amphoteric surfactants at 1-50%. Id. at 7-8 (citing
Thiem cols. 4, 8). However, the Examiner finds that, although Thiem
teaches the inclusion of preservatives generally, it does not expressly teach
the exact preservatives recited in Appellants' claims, i.e., isothiazolinones,
benzethonium chloride, piroctone olamine, and lauroyl ethyl arginate. Id. at
8.
The Examiner finds that Eliu teaches a cosmetic preparation for
application to hair comprising preservatives, wherein several functionally
equivalent preservatives are disclosed including Appellants' claimed
benzethonium chloride and piroctone olamine. Final Act. 16 ( citing Eliu
,r 479).
The Examiner finds that Sadhu teaches that ethyl lauroyl arginate
hydrochloride ("ELA") has cationic surfactant properties, as well as
antimicrobial activity against bacteria, algae, and fungi. Final Act. 16. The
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Examiner further finds that Sadhu teaches that ELA acts by modifying the
permeability of cell membranes of living organisms, and can therefore be
used as a multi-functional component in the formulation of cosmetic
products. Id. ( citing Sadhu ,r 1 ).
The Examiner finds that Wunsch teaches hair care cosmetic
compositions which comprise surfactants and conditioners, and specifically
teaches that such surfactants may be anionic surfactants, such as sodium
lauryl ether sulfate, and amphoteric surfactants, particularly
cocoamidopropyl betaine. Final Act. 16 (citing Wunsch ,r 87,289,337).
The Examiner finds that Wunsch also teaches that suitable surfactants may
include ethoxylated glyceryl fatty acid esters such as PEG-7, glyceryl
cocoate, or PEG-40 hydrogenated castor oil. Id. (citing Wunsch ,r 197). The
Examiner finds that Wunsch further teaches that its compositions may
comprise cationic polymers, particularly guar hydroxypropylammonium
chloride or dimethyl diallylammonium chloride. Id. at 16-17 ( citing
Wunsch ,r,r 192, 237).
The Examiner concludes that it would have been prima facie obvious
to employ the cosmetic preservatives taught by Eliu or Sadhu, in the
composition of Thiem, because Thiem teaches that preservatives may be
added but is silent on specific preservatives. Final Act. 17. The Examiner
concludes that a person of ordinary skill in the cosmetic arts would have
been motivated to seek the guidance provided by Eliu and Sadhu due to the
lack of specific guidance in Thiem. Id.
For similar reasons, concludes the Examiner, it would have been be
prima facie obvious to employ the cosmetic surfactants taught by Wunsch in
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the compositions of Thiem, because Thiem teaches in general that
surfactants may be added but is silent on specific surfactants. Id.
Appellants argue that Thiem expressly teaches that:
In particular, the present invention relates to cosmetic
formulations having a content of substances which increase skin
moistness.
A problem which remains unresolved, however, is that even the
substances glucose and glycerol, which in principle are entirely
unobjectionable, may give rise in particularly sensitive
individuals and at very high levels to certain symptoms of
irritation to the skin and mucous membranes. The aim was
therefore to find moisture-providing substances (moisturizers)
possessing an even better compatibility than, for example,
glucose and glycerol.
App. Br. 10 (quoting Thiem col. 1, 11. 9--12, 46-53). Appellants argue that
this passage expressly teaches that the compositions of Thiem are intended
for increasing skin moistness and, additionally, are to be as mild as possible
and not cause irritation to the skin and mucous membranes. Id. at 11.
Appellants therefore argue that a person of ordinary skill in the art would
have understood that all of the components of the compositions of Thiem,
including preservatives and surfactants optionally present therein, must not
cause symptoms of irritation to the skin and mucous membranes. Id.
Appellants argue that neither Eliu, nor Sadhu, nor Wunsch provides any
guidance in this regard. Id.
By way of example, Appellants point to Eliu, which, Appellants
contend, teaches a process of coloring porous material, which comprises a)
applying to the material being colored at least one capped diazonium
compound, and b) then causing the capped diazonium compound present on
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the material to react with the hair. App. Br. 11 (citing Eliu Abstr.).
Appellants next point to paragraph [04 79] of Eliu, cited by the Examiner,
which provides a list of more than 100 preservatives, which appears to
include at least almost all of the preservatives that have been previously used
in cosmetic compositions. App. Br. 11. Appellants also note that Eliu does
not provide any guidance as to which of these preservatives may be suitable
for use in the compositions taught by Thiem. Id. Rather, Appellants argue
that, because the compositions of Eliu are intended for use in dyeing hair, it
would have been apparent to a person of ordinary skill in the art that the
optional components, including preservatives, do not have to be mild so as
to not cause symptoms of irritation to the skin and mucous membranes. Id.
Similarly, with respect to Sadhu, Appellants argue that paragraph
[0002] of the reference teaches that:
Ethyl lauroyl arginate hydrochloride (ELA) is derived from
naturally occurring substances, L-arginine and lauric acid. It has
cationic surfactant properties. It also has antimicrobial activity
against bacteria, algae and fungi. ELA acts by modifying the
permeability of cell membranes of living organisms. It is
envisaged that it would be used as a multi-functional component
in the formulation of cosmetic products.
App. Br. 12. Appellants argue that, without applying hindsight, one of
ordinary skill in the art would not have concluded from this passage of
Sadhu that ELA is suitable for use in the compositions taught by Thiem,
because Sadhu does not teach that ELA does not cause symptoms of
irritation to the skin and mucous membranes. Id.
With respect to Wunsch, Appellants argue that the reference teaches
the use of compounds in dermocosmetic formulations, and the use of such
dermocosmetics for reducing skin or hair damage caused by free radicals, as
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well as compounds for increasing the stability of dermocosmetic
formulations. App. Br. 12-13. According to Appellants, the compositions
taught by Wunsch are therefore completely unrelated to the glucosyl
glyceride-based cosmetic compositions taught by Thiem. Id. at 13.
Appellants also point to paragraph [0285] of Wunsch, which states
that: "[ a ]11 anionic, neutral, amphoteric or cationic surfactants usually used
in body cleansing compositions can be used in the wash, shower and bath
preparations." App. Br. 13. Appellants also note that paragraph [0337] of
Wunsch teaches that: "[ z ]witterionic surfactants can furthermore be used as
emulsifiers." Id. According to Appellants, these statements indicate that the
specific surfactants thus disclosed by Wunsch do not have to satisfy any
specific requirements, particularly, that they do not cause irritation to the
skin and mucous membranes.
Appellants further note that none of the thirteen exemplary
embodiments of Thiem contain surfactants which, Appellants contend,
would have indicated to a person of ordinary skill in the art that surfactants
are preferably not included in the compositions of Thiem. App. Br. 13.
Appellants therefore argue that it is only through the use of impermissible
hindsight that the Examiner could have arrived at the conclusion that a
person of ordinary skill in the art would have selected any of the specific
surfactants recited in the instant claims from the long list of surfactants
taught by Wunsch for addition to the compositions taught by Thiem. Id. at
14.
We are not persuaded by Appellants' arguments. We find that
Appellants attempt to read too much into the teachings of Thiem.
Specifically, Thiem teaches that: "A problem which remains unresolved,
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however, is that even the substances glucose and glycerol, which in principle
are entirely unobjectionable, may give rise in particularly sensitive
individuals and at very high levels to certain symptoms of irritation to the
skin and mucous membranes." Thiem col. 1, 11. 46-50. Thiem then
continues, teaching that: "It was surprising, and for the skilled worker
unforeseeable, that cosmetic or pharmaceutical formulations characterized
by an effective content of pharmaceutically and/or cosmetically
unobjectionable hexosyl glycerides and/or (hexosyl)hexosyl glycerides
remedy the disadvantages of the prior art." Id. at col. 1, 11. 54--59. Thiem
thus teaches that the use of: "cosmetically unobjectionable hexosyl
glycerides and/or (hexosyl)hexosyl glycerides" remedies the problem of skin
mucous membrane irritation when used at high concentrations or in
individuals who are particularly sensitive. This teaching of Thiem relates
only to the non-irritant qualities of hexosyl glycerides and (hexosyl) hexosyl
glycerides at high concentrations to individuals who are otherwise sensitive
to high concentrations of glucose or glycerol.
However, whereas Thiem is concerned with sensitive skin or irritation
caused by high levels of glucose or glycerol, there is no express teaching in
Thiem that indicates that those with sensitive skin cannot tolerate
preservatives and surfactants normally included in the cosmetic art that are
normally selected to be non-irritating .. Furthermore, we find that a person
of ordinary skill in the cosmetic arts would understand that preservatives and
surfactants acceptable for use in the cosmetic arts would generally be non-
irritating to skin and mucous membranes when employed in those
concentrations normally used for cosmetic purposes. See, e.g., Wunsch ,r
13.
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The Examiner finds, and Appellants do not dispute, that Thiem
teaches other components in addition to glycerides and/or (hexosyl) hexosyl
glycerides in its cosmetic compositions, including preservatives and
surfactants. Specifically, Thiem teaches that:
The cosmetic and dermatological formulations include active
compounds and auxiliaries as are commonly used for this type of
formulation for hair care and hair treatment. Auxiliaries used are
preservatives, surfactants, substances for reducing foaming,
thickeners, emulsifiers, fats, oils, waxes, organic solvents,
bactericides, fragrances, dyes or pigments whose function is to
colour the hair or the cosmetic or dermatological formulation
itself, electrolytes and substances to act against the hair
becoming greasy.
Thiem col. 7, 11. 46-54 (emphasis added); see also id. at col. 4, 11. 31-35.
We therefore agree with the Examiner that Thiem teaches that, in addition to
using cosmetically unobjectionable hexosyl glycerides and/or (hexosyl)
hexosyl glycerides in cosmetic compositions, Thiem also expressly
contemplates the use of cosmetically acceptable preservatives and
surfactants such as are commonly used in the cosmetic arts.
Eliu teaches the use of benzethonium chloride and piroctone olamine
as being among its "preferred antimicrobial preservatives and antimicrobial
actives" used in its hair dyes. Eliu ,r 479. Similarly, Sadhu teaches the use
of ethyl lauroyl arginate ("ELA"), also recited in the claims as an acceptable
preservative, "as a multi-functional component in the formulation of
cosmetic products." Sadhu ,r 2. Sadhu teaches that ELA possesses both
cationic surfactant and antimicrobial preservative properties. Id.
Neither Eliu nor Sadhu expressly teaches that the compounds cited by
the Examiner and recited in Appellants' claims do not cause irritation to the
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skin or mucous membranes. Nevertheless, we agree with the Examiner that
a person of ordinary skill in the cosmetic arts would understand that, because
both references expressly teach the use of these compounds as desirable in
cosmetic compositions, including hair dyes, which are applied on, or close
to, the skin, their use in the compositions of Thiem would be acceptable as
being unlikely to cause irritation to the skin and mucous membranes.
Wunsch expressly teaches the use of, inter alia, sodium lauryl ether
sulfate, cocamidopropyl betaine, PEG-7 glyceryl cocoate, PEG-40
hydrogenated castor oil, cationic guar derivatives, and alkylammonium and
alkanolammonium salts as surfactants, all of which are recited as surfactants
in Appellants' claims. Wunsch ,r,r 192, 197,220,287,289. Furthermore,
Wunsch expressly teaches that:
Owing to the constantly increasing requirement for
dermocosmetic active substances for preventing the
abovementioned damage to skin and/ or hair or reducing existing
damage to skin and/or hair, in particular as a result of phototoxic
chemotoxic reactions, it was the object of the present invention
to identify active substances which (i) have as little irritation
potential as possible for the skin, (ii) have a high free radical-
deactivating effect and (iii) are also suitable for the preparation
of cosmetic and/or dermocosmetic formulations or preparations.
Wunsch ,r 13 (emphases added). We consequently agree with the Examiner
that a person of ordinary skill in the art would have been motivated to
combine the teachings of Wunsch with those of Thiem to include the named
surfactants with those desirable properties recited in the passage quoted
above.
Appellants argue that Wunsch teaches a very large number of
surfactants as being acceptable and that there would have been no reason for
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a person of ordinary skill in the art to select the surfactants recited in the
claims. We agree that Wunsch teaches a large number of surfactants, but we
find that Wunsch acknowledges that these are known in the cosmetic arts to
be cosmetically acceptable surfactants as conditioners. See Wunsch ,r 189 et
seq. Appellants make no argument that the particularly claimed surfactants
impart special, essential, or unexpected properties to their composition, and:
"[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Furthermore, the fact that Thiem, as Appellants argue, does not
include surfactants in its exemplary embodiments is of little import in our
obviousness analysis. As we have explained, Thiem expressly teaches that
surfactants may be included in its compositions (see Thiem col. 4, 11. 31-35,
col. 7, 11. 46-54). Furthermore, "all disclosures of the prior art, including
unpreferred embodiments, must be considered" in an analysis of
obviousness. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) ( citation omitted).
Finally, with respect to Appellants' allegation that the Examiner
improperly relied upon hindsight analysis:
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 (C.C.P.A. 1971). In the appeal
before us, Appellants point to no limitation of their claim which is not in the
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prior art and which could have been gleaned only from the disclosures of
Appellants' Specification.
Consequently, because we do not find Appellants' arguments
persuasive, we affirm the Examiner's rejection of the claims.
B. Claims 33-36
Appellants argue that claims 33-36, which depend directly or
indirectly from claim 26, is not obvious over Thiem, Eliu or Sadhu, Wunsch,
and Livoreil, at least because Livoreil fails to cure any of the alleged
deficiencies of Thiem, Eliu, Sadhu, and Wunsch. App. Br. 16. Appellants
also contend that, even if one were to assume that the percentages of 0-20%
by weight, taught by paragraph [O 157] of Livoreil apply also to
preservatives, it is not clear if they are supposed to apply to each and every
preservative or only to the specific preservative mentioned in paragraph
[0156] ofLivoreil. Id. at 17.
We are not persuaded by Appellants' argument. As we have
explained supra, we are not persuaded by Appellants' argument that the
teachings of Thiem, Eliu, Sadhu, and Wunsch are deficient in establishing a
prima facie case of obviousness as to independent claim 26. Furthermore,
the range of additive concentrations cited in paragraph [O 157] of Livoreil
encompasses the range of preservatives recited in the claims. As such, the
Examiner has established a prima facie case of obviousness. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (holding that: "[i]n cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
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case of obviousness"). We consequently affirm the Examiner's rejection of
the claims.
DECISION
The Examiner's rejection of claims 26-45 under 35 U.S.C. § 103(a) is
affirmed.
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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