Ex Parte Kux et al

Patent Trial and Appeal Board

Oct 30, 2013

11586585 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ULRICH KUX, ULRIKE SCHULZ, STEFAN BIEL,
SABINE RIPKE, and LARA TERSTEGEN1
__________

Appeal 2012-000647
Application 11/586,585
Technology Center 1600
__________

Before TONI R. SCHEINER, JOHN A. EVANS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 43, 46, and 49-84, directed to a cosmetic or dermatological
preparation. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify the Real Party-In-Interest as Beiersdorf AG of
Hamburg, Germany (App. Br. 3).
Appeal 2012-000647
Application 11/586,585
2

STATEMENT OF THE CASE
Claims 43, 46, and 49-84 are pending and on appeal. Claim 43, the
broadest claim on appeal, is representative:
43. A cosmetic or dermatological preparation, wherein the preparation
comprises (a) at least one antiperspirant active ingredient, (b) at least one
α-hydroxycarboxylic acid, and (c) at least 60 % by weight of water, based on
a total weight of the preparation, and wherein the preparation further
comprises a plurality of suspended liquid particles, at least 80 % of the
suspended particles having a size of from about 0.5 mm to about 5 mm.
The Examiner relies on the following evidence:
Yamada et al. US 3,920,883 Nov. 18, 1975
Ding et al. US 2004/0228886 A1 Nov. 18, 2004
Schulz et al. US 2007/0218025 A1 Sept. 20, 2007
Banowski et al. US 7,294,330 B2 Nov. 13, 2007
Eckers et al. DE 100 47 448 A1 May 2, 2002
The claims stand rejected under 35 U.S.C. § 103(a) as follows:2
Claims 43, 46, 49-59, 61-68, and 70-82 as unpatentable over Schulz,
Yamada, and Ding.
Claims 60 and 69 as unpatentable over Schulz, Yamada, Ding, and
Banowski.
Claims 83 and 84 as unpatentable over Schulz, Yamada, Ding,
Banowski, and Eckers.
We reverse the rejections.

2 The Examiner withdrew the rejection of claims 43, 46, and 49-82 under
35 U.S.C. § 103(a) as unpatentable over Banowski, Yamada, and Ding in the
Advisory Action dated December 6, 2010.

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FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence of record.
1. Schulz discloses an “aqueous cosmetic antiperspirant”
composition comprising an activated aluminum compound effective as an
antiperspirant, an α-hydroxycarboxylic acid, and water (Schulz ¶¶ 1, 26).
2. In one embodiment, Schulz’s composition is “in the form of a
[transparent] gel or hydrogel” (Schulz ¶¶ 26, 59, 61).
3. In another embodiment, Schulz’s composition is a transparent
or translucent oil-in-water microemulsion gel (Schulz ¶¶ 66-68), wherein the
diameter of the oil droplets is in the range of about 10-2 μm to about 10-1 μm
(id. at ¶¶ 80-82).
4. Yamada discloses “a two-phase type liquid cosmetic
composition which . . . readily form[s] a substantially homogeneous mixture
by shaking, although the . . . composition contains no surface active
compound, and [is] also . . . readily restored to the original state after the
use” (Yamada, col. 1, l. 68 - col. 2, l. 6).
5. Yamada teaches that the two-phase liquid cosmetic composition
is composed of oil, an organic liquid miscible with water, and finely-divided
insoluble solid particles (Yamada, col. 2, ll. 18-19), and water can be mixed
with the organic liquid as needed to balance the relative specific gravities of
the two phases (id. at col. 5, ll. 9-11). The oil is dispersed in the organic
liquid phase in the form of spheres coated with finely-divided solid particles,
which are adsorbed on the interface between the oil and the mixture of
organic liquid and water (id. at col. 2, ll. 23-26).

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6. Yamada teaches that:
The number and size of oil spheres dispersed in the aqueous
phase can be easily varied by controlling the amount of finely
divided solid particles and oil employed. The size of oil
spheres may be varied within the range of 0.1 mm to 1.0 cm or
more, preferably 1.0 mm to 5.0 mm, as expressed in diameter.
(Yamada, col. 8, ll. 52-57.)
7. Figures 9 and 10 of Yamada are reproduced below:

Figures 9 and 10 of Yamada depict two-phase liquid compositions
with “relatively small pearl-like spheres of liquid paraffin” (Yamada, col.
10, ll. 56-58), and “relatively large pearl-like spheres of squalane” (id. at col.
11, ll. 2-3), respectively.
8. Yamada teaches that:
The dispersibility [of the oil spheres] when shaken
depends upon the interfacial tension between the oil and the
aqueous mixture, the viscosity of the oil and the shaking force.
Reproducibility of the dispersion after shaking is stopped
depends upon the joining speed of oil spheres dispersed, the
polarity of oil, the miscibility between oil and the aqueous
mixture, and the solubility between oils when two or more oils
are employed. Reproduction speed of the dispersion after
shaking is stopped depends upon the joining speed of oil
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spheres, the difference in specific gravity between oil and the
aqueous mixture, the temperature, and the viscosity of the
aqueous mixture.
(Id. at col. 5, ll. 42-54.)
DISCUSSION
All three rejections of the claims are premised on the Examiner’s
proposed combination of the teachings of Schulz and Yamada, so we will
address all three rejections together.
The Examiner finds that Schulz discloses an antiperspirant comprising
“an antiperspirant active, an alpha-hydroxycarboxylic acid, and at least 60%
water . . . and disperse droplets . . . which read on suspended liquid
particles” (Ans. 5). The Examiner acknowledges that Schulz does not teach
that “a percentage of said particles have a diameter from 0.5-5mm” (id. at 6),
as required by claim 43, the broadest claim on appeal. However, the
Examiner finds that Yamada discloses “cosmetic compositions comprising
liquid spheres [with diameters of 1-5 mm] dispersed in a mixture to provide
an attractive appearance” (id.).
Based on these teachings, the Examiner concludes that it would have
been obvious for one of ordinary skill in the art to produce Schulz’s
formulations “with suspended liquid particles with the claimed size range”
(id. at 7), “in order to produce an antiperspirant formulation with an
attractive appearance” (id.).
Appellants contend, in relevant part, that the compositions and
objectives disclosed by Schulz and Yamada are too different to prompt one
of ordinary skill in the art to consider including Yamada’s oil spheres in
Schulz’s composition (App. Br. 8). Specifically, Appellants contend that
Yamada’s “two-phase liquid cosmetic composition which comprises oil . . .
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dispersed in the form of spheres in a homogeneous mixture of an organic
liquid and water” (id. at 9) “has nothing at all to do with [Schulz’s] gel or
hydrogel” (id.), or Schulz’s microemulsions (Reply Br. 5).
Appellants contend that one of ordinary skill in the art “would have
[no] reason to expect that oil spheres can stably be dispersed in a
composition (gel) according to SCHULZ, even if solid particles were
employed” (App. Br. 11), or that “a corresponding composition can
reasonably be expected to form a substantially homogeneous mixture
(i.e., the oil spheres disappear) by simply shaking the composition by hand
at the time of use” (id.). Moreover, Appellants contend that Schulz “favors
emulsions wherein the droplet size is (considerably) smaller than the droplet
size of customary emulsions, thereby providing a disincentive . . . to increase
the droplet size of a customary emulsion” by orders of magnitude (Reply Br.
5), “even if one were to assume, arguendo, that this is possible at all without
arriving at something that can no longer reasonably be termed an
‘emulsion’” (id.).
We agree. Schulz discloses two embodiments, the first of which is a
gel or hydrogel comprising an antiperspirant active ingredient, an α-
hydroxycarboxylic acid, and water (FFs 1, 2). Schulz’s second embodiment
is a transparent or translucent microemulsion gel, comprising the same
ingredients, and further comprising drops of oil, ranging from about 10-2 μm
to about 10-1 μm in diameter, suspended in a water phase (FF 3).
Yamada, however, discloses a two-phase liquid composition in which
oil spheres (on the order of 0.1 mm to 5 mm) are stabilized in an organic
liquid/water mixture by a coating of finely divided solid particles, wherein
the size of the oil spheres is determined by various permutations of the two
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immiscible phases and the finely divided solid particles (FFs 5, 6). Upon
shaking, the oil spheres break up in the aqueous/solvent mixture to yield a
homogeneous mixture, ready for use, but the oil spheres readily reform upon
resting (FFs 4, 8).
The mere fact that Yamada is directed to a “cosmetic composition of
an attractive appearance” (Yamada, col. 1, ll. 5-6), while Schulz is directed
to an antiperspirant cosmetic composition, is not an adequate reason for one
of ordinary skill in the art to modify Schulz’s gels and microemulsion gels
by incorporating the relatively large oil spheres of Yamada, given the lack of
similarity between the preparations. In particular, the Examiner has not
explained what reason one of ordinary skill in the art would have had to
include Yamada’s particle-coated oil spheres - which are designed to break
up in an immiscible liquid phase upon agitation, and readily reform upon
resting - in Schulz’s gels or microemulsion gels.
None of the remaining references cited by the Examiner cure the
underlying deficiency in the proposed combination of Schulz and Yamada.
SUMMARY
The rejection of claims 43, 46, 49-59, 61-68, and 70-82 as
unpatentable over Schulz, Yamada, and Ding is reversed.
The rejection of claims 60 and 69 as unpatentable over Schulz,
Yamada, Ding, and Banowski is reversed.
The rejection of claims 83 and 84 as unpatentable over Schulz,
Yamada, Ding, Banowski, and Eckers is reversed.

REVERSED
cdc