Ex Parte Krzysik et al

Patent Trial and Appeal Board

Mar 26, 2013

10957506 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DUANE G. KRZYSIK, KATHERINE D. STAHL,
JULIE M. UTSCHIG, and JAMIE LYNN SONDELSKI
__________

Appeal 2011-010990
Application 10/957,506
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to skin cooling
compositions. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 18, 22-24, 28, 32, 53, 55, and 58-63 stand rejected and
appealed (App. Br. 2). Claim 18 is representative and reads as follows:
18. A skin cooling composition comprising water, from 30%
to about 45% by weight alcohol, a cooling agent, a polymeric
emulsifier and a water dispersible silicone, wherein the water
dispersible silicone includes the following structures:
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where x = 1 to about 500, y = 1 to about 100 and n = 1 to about
30 and wherein the polymeric emulsifier is a cross linked acrylic acid
polymer containing acrylamide groups that aid in compatibility with
organic oils.

The following rejections are before us for review:
(1) Claims 18, 22-24, 28, 32, 53, 55, and 58-61, under 35 U.S.C.
§ 103(a) as obvious over Luke,
1
Shigeta,
2
and Chiarelli
3
(Ans. 4-7); and
(2) Claims 62 and 63, under 35 U.S.C. § 103(a) as obvious over Luke,
Shigeta, and Edwards
4
(Ans. 7-8).
DISCUSSION
The Examiner found that Luke described a skin cooling composition
that differed from the rejected claims in that Luke‟s composition did not
contain the claimed dispersible silicone (see Ans. 4-5). The Examiner noted,
however, that Shigeta described the use of the claimed silicone in cosmetic
compositions as an emulsifier suitable for use in water-in-oil emulsions (see
id. at 5). The Examiner reasoned that, because Luke taught that its
compositions were preferably in the form of emulsions, and Shigeta also

1
EP 0 644 749 B1 (published Mar. 29, 1995).
2
EP 0 291 683 A1 (published Nov. 23, 1988).
3
U.S. Patent App. Pub. No. 2003/0147825 A1 (published Aug. 7, 2003).
4
U.S. Patent No. 4,285,973 (published Aug. 25, 1981).
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taught that its compositions imparted “a refreshing feeling upon use,” an
ordinary artisan would have been prompted to incorporate Shigeta‟s silicone
into Luke‟s compositions (see id. at 6).
The Examiner found that Luke‟s skin cooling compositions also
differed from the claimed compositions because, although Luke used
polymeric thickening agents such as “Pemulen” in its compositions, Luke
did not include an emulsifier comprised of a cross linked acrylic acid
polymer containing acrylamide groups (see id.). To address that deficiency,
the Examiner cited Chiarelli as disclosing that a cross linked acrylic acid
polymer containing acrylamide groups, called “Novemer EC-1,” was known
in the art to be useful as a thickening agent in topical personal care
compositions (id.).
The Examiner thus reasoned that “since Luke and Chiarelli et al both
teach compositions with elements performing the same function (thickening,
stabilizing), it would have been obvious to an artisan of ordinary skill at the
time the invention was made to substitute Novemer for Pemulen in the
composition of Luke” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
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.

We select claim 18 as representative of the claims subject to this
ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants‟ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner‟s prima facie case of obviousness as
to claim 18.
We note, as Appellants argue (App. Br. 7-10; see also Reply Br. 1-2),
that although Luke discloses that its compositions can contain up to 30%
alcohol, Luke prefers that its compositions contain much less than that
amount:
The coolant compositions hereof, suitable for topical
application to skin, will comprise coolant component I together
with coolant component II [both described above] in an
aqueous carrier. Lower alkyl chain alcohols are common
vehicle ingredients in skin care compositions. However these
alcohols can cause excessive levels of a stinging or burning
sensation to the skin, especially cut or irritated skin. Therefore,
the compositions hereof will contain no more than 30%, by
weight of C1-C6 mono-hydric alcohols, preferably no more than
25%, more preferably no more than 20%, even more preferably
no more than 10%, most preferably from 0% to 5%. It is
especially preferred to limit the presence of C1-C4 monohydric
alcohols, such as methanol, ethanol, propanol, isopropanol, and
butanol, according to the preferred above levels.

(Luke 7.)
The fact remains, however, that based on this disclosure an ordinary
artisan would have recognized that, while not preferred, 30% alcohol was
nonetheless an acceptable alcohol concentration for Luke‟s compositions.
See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[A] finding that the
prior art as a whole suggests the desirability of a particular combination need
not be supported by a finding that the prior art suggests that the combination
claimed by the patent applicant is the preferred, or most desirable,
combination.”).
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Moreover, as Luke‟s acceptable range of up to 30% alcohol overlaps
claim 18‟s range of 30 to 45% alcohol, and as the claimed and prior art
compositions share the common property of being skin cooling
compositions, we are not persuaded that the Examiner erred in concluding
that the claimed range would have been prima facie obvious in view of
Luke.
As our reviewing court has explained, “[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 case of obviousness.”
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). Moreover, “a prima
facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.” Id.
We acknowledge that, once a prima facie case of obviousness based
on overlapping or close ranges has been established, “an applicant may rebut
[the] prima facie case of obviousness by showing that the prior art teaches
away from the claimed invention in any material respect.” Id. at 1331.
Appellants‟ arguments do not persuade us, however, that the prior art
as a whole teaches away from compositions containing alcohol at
concentrations encompassed by claim 18. As noted above, we acknowledge,
as Appellants argue (App. Br. 9-10), that Luke teaches that lower alkyl chain
alcohols “can cause excessive levels of a stinging or burning sensation to the
skin, especially cut or irritated skin” (Luke 7).
Immediately thereafter, however Luke explicitly states that,
“[t]herefore, the compositions hereof will contain no more than 30%” by
weight of such alcohols (id.). Thus, rather than teaching away, Luke
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effectively teaches that 30% alcohol, a concentration encompassed by claim
18, is an alcohol concentration that is acceptable to avoid undesired stinging
or burning.
We are also not persuaded that the cited references would have failed
to prompt an ordinary artisan to include, in Luke‟s compositions, a cross
linked acrylic acid polymer containing acrylamide groups, such as
Appellants‟ exemplified Novemer® EC-1 (see Spec. [0032] (as amended
July 6, 2009)).
As the Examiner found, Luke discloses the desirability of including
thickeners and gelling agents in its compositions (see Luke 15). As the
Examiner also found, Chiarelli discloses that Novemer EC-1 was a known
rheology modifying/stabilizing agent useful in a number of different
personal care products, including hand and body lotions, as well as
sunscreens (see Chiarelli, Tables 1, 3, 5), and that Novemer EC-1 was also
known to have emulsifying properties (see id. at [0161]). As the Examiner
also noted, Luke, like Chiarelli, discloses formulating its compositions for
use as lotions and sunscreens (see Luke 13: 31-37).
We note, as Appellants argue (App. Br. 11), that Luke discloses the
“Carbomer” polymers as “preferred” gelling agents (Luke 15). However,
because Chiarelli shows that Novemer EC-1 was known in the art to be a
thickener useful in the same type of topically applied personal care
compositions as described in Luke, we are not persuaded that an ordinary
artisan would only have been prompted to include Novemer EC-1 in Luke‟s
compositions through improper hindsight viewing of Appellants‟ disclosure.
As the Supreme Court has noted, “when a patent „simply arranges old
elements with each performing the same function it had been known to
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perform‟ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
As Appellants‟ arguments do not persuade us that the Examiner erred
in finding that an ordinary artisan would have been prompted to combine the
claimed ingredients in the claimed amounts, and as Appellants point to no
unexpected properties that come from the claimed combination of
ingredients, we affirm the Examiner‟s rejection of claim 18.
As they were not argued separately, claims 22-24, 28, 32, 53, 55, and
58-61 fall with claim 18. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner also rejected claims 62 and 63 over Luke, Shigeta, and
Edwards (Ans. 7-8). The Examiner noted that, although Luke taught the
use of lactate salts in its compositions, Luke did not “teach the addition of
potassium lactate” (id. at 7). The Examiner cited Edwards to remedy that
deficiency, noting that potassium and ammonium lactate were described as
being suitable in topically applied skin lotions due to their buffering,
humectant, and skin moisturizing actions (id.).
In traversing this rejection, Appellants “are not admitting that it is”
true that an ordinary artisan would have been prompted to include potassium
lactate in Luke‟s compositions (App. Br. 15). Appellants do not, however,
allege any clear or specific error in the Examiner‟s fact-finding as to claims
62 and 63.
Rather, Appellants essentially reiterate their previous argument by
stating that “regardless of any addition of potassium lactate to the
combination of Luke and Shigeta, et al., as noted above, it would not be
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obvious to modify the combination of references to arrive at a skin cooling
composition comprising from 30% to about 45% by weight alcohol” (id.).
As discussed above, however, we do not find these arguments
persuasive. We therefore also affirm the Examiner‟s obviousness rejection
of claims 62 and 63 over Luke, Shigeta, and Edwards.
SUMMARY
We affirm the Examiner‟s obviousness rejection of claims 18, 22-24,
28, 32, 53, 55, and 58-61 over Luke, Shigeta, and Chiarelli.
We also affirm the Examiner‟s obviousness rejection of claims 62 and
63 over Luke, Shigeta, and Edwards.

TIME PERIOD
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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