Ex Parte Lemann

Board of Patent Appeals and Interferences

Jun 18, 2009

10312083 (B.P.A.I. Jun. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICIA LEMANN
____________

Appeal 2008-0054271
Application 10/312,083
Technology Center 1600
____________

Decided:2 June 19, 2009
____________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

1 Heard May 14, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as provided for in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005427
Application 10/312,083

This is a decision on appeal from the Patent Examiner’s final rejection
of claims 34, 35, 39, 40, 42-48, and 52. Jurisdiction for this appeal is under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims are directed to cosmetic compositions in the form of
emulsions with aqueous and non-aqueous phases. The non-aqueous phase of
the claimed cosmetic is recited to be gelled with a non-siloxane based
polyamide and an alkylene-oxide-containing emulsion stabilizer.
The claims stand rejected by the Examiner under 35 U.S.C. § 103(a)
as obvious over Ross et al. (U.S. Pat. No. 5,500,209, Mar. 19, 1996; also
referred to as “the ‘209 Patent”) or Bush Boake Allen Fragrances Technical
Services Brochure (“BBA”; Oct. 13, 1998) in view of Lorant et al. (U.S. Pat.
No. 5,993,832, Nov. 30, 1999; also referred to as “the ‘832 Patent”) (Ans.
3).
Claims 34, 39, and 40 are representative and read as follows:
34. A cosmetic composition comprising an emulsion
comprising an aqueous phase and a non-aqueous phase,
wherein the non-aqueous phase is gelled with at least one non-
siloxane based polyamide and at least one alkylene-oxide-
containing emulsion stabilizer,
wherein said composition further comprises at least one
color component present in an amount ranging from 0.5% to
30% by weight of the composition.

39. A cosmetic composition comprising an emulsion
comprising an aqueous phase and a non-aqueous phase,
wherein the non-aqueous phase is gelled with at least one non-
siloxane based polyamide and at least one alkylene-oxide-
containing emulsion stabilizer;
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wherein said at least one alkylene-oxide-containing
emulsion stabilizer is present in an amount ranging from 4.5%
to 6% by weight of the composition.

40. The composition of claim 39 wherein the at least one
alkylene-oxide-containing emulsion stabilizer has an HLB
greater than 7 and the emulsion is an oil-in-water emulsion.

STATEMENT OF THE ISSUES
The following issues are to be decided in this appeal:
Has Appellant established that the Examiner erred in finding the
claimed emulsion having aqueous and non-aqueous phases to have been
obvious in view of Ross, BBA, and Lorant?
Has Appellant established that the Examiner erred in concluding it
prima facie obvious to include a colorant in the Ross or BBA composition in
the amounts recited in claim 34?
Has Appellant established that the Examiner erred in finding it
obvious to have prepared a composition comprising 4.5% to 6% by weight
of an alkylene-oxide containing emulsion as recited in claim 39?

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966).
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
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variable within the claims. . . . These cases have consistently
held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
In re Woodruff, 919 F.2d 1575, 1578 (1990).

FACTS3
Scope and content of the prior art
The Ross patent
1. Ross describes an antiperspirant comprising a polyamide gelling agent
and a solvent for the gelling agent (Abstract; col. 5, ll. 40-43).
2. The gelling agent can form a continuous phase or it “can be dissolved in a
second, discontinuous phase which is emulsified in the continuous phase
(forming a solid emulsion . . .)” (col. 6, ll. 4-7).
3. “Preferably, when the composition . . . is in the form of a solid emulsion,
the composition includes a surfactant, to ensure that the discontinuous phase
stays dispersed . . . . Such surfactant is also preferred such that the
composition can be easily rinsed from the skin” (col. 9, ll. 32-37; see also
col. 16, ll. 55-57 & 64).
4. Surfactants (“surface active agents”) include PEG-10 polyglyceryl-2
laurate and PEG-100 stearate (col. 16, ll. 15-61).
5. Ross states that its compositions can include other ingredients and names
“colorants” among a list of “optional components” (col. 9, ll. 19-25).
6. “[T]he stick or gel composition . . . can have a same appearance as
currently marketed antiperspirant sticks, which appear as opaque, usually

3 The numbered paragraphs are findings and conclusions of fact (“FF”).
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white (unless colored with dyes) waxy solids which leave a white residue on
skin immediately after application” (col. 9, ll. 60-65).
7. Ross describes the addition of “color” after the polyamide gelling agent
and solvent are mixed together (col. 17, ll. 48).
8. Example I of Ross comprises 0.10 parts by weight of a colorant (col. 18,
l. 28); Example IV, 0.12 parts by weight of colorant (col. 20, l. 7); Example
V, 0.10 parts by weight of colorant (col. 20, l. 39); Examples VIII and IX,
0.20 parts by weight of colorant (col. 21, l. 32).
9. Ross discloses that the composition can comprise “from 0-30 weight
percent” of water (col. 11, ll. 3-4), but that water is not required (col. 17, ll.
24-27). Examples VIII, IX, XI, and XII comprise water (cols. 21-22).
10. Ross states:
It is a feature of the present invention that the
composition . . . can include water. As mentioned previously,
water desirably is not incorporated in clear or translucent
antiperspirant sticks gelled by dibenzylidene monosorbitol
acetal, since acid hydrolysis of the gelling agent occurs more
rapidly in aqueous solutions.
(Col. 11, ll. 5-10.)
11. Example XII comprises:
12. • 6 wt. % “Uni-Rez” 2621 (col. 21, l. 64) which is a polyamide (col. 14,
l. 55-57);
13. • 6 wt. % Laureth-4 (col. 21, l. 65); and
14. • 3 wt. % water (col. 22, l. 6).

The Bush Boake Allen Technical Services Brochure
The BBA brochure describes a replenishing lotion that comprises the
following components (BBA, 4):
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15. • 3.6% by weight Uniclear 80;
16. • 2.2% by weight glyceryl stearate and PEG100 Stearate;
17. • 70% by weight water; and
18. • 8.5% by weight mineral oil.

The Lorant patent
19. Lorant describes oil-in-water emulsions for cosmetic compositions (col.
1, ll. 5-7) with an aqueous and fatty phase (col. 7, ll. 46-49 & 56-57).
20. The emulsions can comprise pigments in amounts of 0-20% by weight,
preferably in amounts of 2-15% (col. 8, ll. 50-52).

Claims 34 and 39
21. Claims 34 and 39 are to a cosmetic composition comprising an emulsion
with “an aqueous phase and a non-aqueous phase.”
22. The non-aqueous phase is “gelled with”:
23. • “at least one non-siloxane based polyamide” and
24. • “at least one alkylene-oxide-containing emulsion stabilizer.”
25. In claim 34, the composition also comprises “at least one color
component” in an amount “ranging from 0.5% to 30% by weight.”
26. In claim 39, the alkylene-oxide is “present in an amount ranging from
4.5% to 6% by weight of the composition.”

Differences between the claimed invention and the prior art
27. It is undisputed that each of Ross and BBA describes a cosmetic
composition with a “non-siloxane based polyamide” as in claims 34 and 39
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(Ans. 3-4 & 9; F1, F12 & F16; Uni-Rez 2621 and Uniclear 80 are non-
siloxane polyamides).
28. Ross’s composition comprises “Laureth-4” (F13) which the Examiner
provided evidence to show is an “alkylene-oxide-containing emulsion
stabilizer” as recited in claims 34 and 39 and with an HLB greater than 7
(Ans. 12).
29. Ross’s Laureth-4 is present in an amount of 6 wt % which falls within
the range of 4.5% to 6% by weight recited in claim 39 (F26).
30. BBA’s composition comprises “PEG100 Stearate” (F16) which is an
“alkylene-oxide-containing emulsion stabilizer” as recited in claims 34 and
39 (Ans. 4).

Claim 34
31. Each of Ross and BBA describes a cosmetic with a polyamide and
alkylene-oxide-containing emulsion stabilizer as in claim 34.
32. Ross teaches compositions which comprise colorants (F5-8), but not in
the recited range of “0.5% to 30%” (see Ans. 4).
33. Neither Ross nor BBA expressly teaches that its composition is “an
emulsion comprising an aqueous phase and a non-aqueous phase” as
required by the claim.

Claim 39
34. Each of Ross and BBA describes a cosmetic with a polyamide and
alkylene-oxide-containing emulsion stabilizer as in claim 39, including a
teaching of the emulsion stabilizer within the claimed range (F29).
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35. Neither Ross nor BBA expressly teach that its composition is “an
emulsion comprising an aqueous phase and a non-aqueous phase” as
required by the claim.
Level of skill in the art
36. Lorant’s teaching that colorants (“pigments”) could be incorporated into
cosmetic emulsions in amounts of 0-20% by weight (F20) provides evidence
that it would have been routine for persons of ordinary skill in the art to
determine how much colorant to include in an emulsion.

ANALYSIS
Emulsions with aqueous and non-aqueous phases:
The issue with respect to the emulsion limitation recited in claims 34
and 39 is whether Appellant has established that the Examiner erred in
finding the claimed emulsion having aqueous and non-aqueous phases to
have been obvious in view of Ross, BBA, and Lorant.
The Examiner found that Ross’s compositions, which have both the
claimed polyamide and alkylene-oxide components, can be emulsions (F2-
3), but found that Ross doesn’t expressly state that the emulsion would have
aqueous and non-aqueous phases (F33, F35). However, the Examiner
established that emulsions with both phases were conventional (see F19;
Ans. 4-5), and given the presence of water (“aqueous”) in Ross’s cosmetic
(F9-10) and its teaching of discontinuous phases (F3-4), the Examiner
concluded that persons of ordinary skill would have found such a cosmetic
formulation obvious to make for its recognized advantages (Ans. 5).
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Appellant contends that the Examiner erred because Ross teaches that
water is not required and is “desirably” absent from its compositions (App.
Br. 16).
This argument is not supported by the evidence. While Ross states
that water is an optional ingredient (F9), it describes four examples of
compositions which contain water (id.). As to the teaching that water is
“desirably . . . not incorporated” into its gels, Ross qualifies this statement
by explaining that water is undesirable when “gelled by dibenzylidene
monosorbitol acetal” (F10). Thus, persons of ordinary skill would have
understood there is only a limited circumstance in which water would be
avoided.
Appellant also argues that the Examiner did not identify a reason why
a person of ordinary skill in the art would have combined Ross or BBA with
Lorant’s teachings of oil-in-water emulsions (Reply Br. 8).
The Examiner did provide a reason:
[I]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to prepare emulsions having
the non-siloxane polyamide and oxyethylene stabilizer, colorant
and active ingredient taught by patent ‘209 [Ross] and [BBA]
brochure and use it in the form of o/w [oil-in-water emulsion]
form and use these emulsions in the form of lipstick and
mascara taught by patent ‘832 [Lorant] in analogous cosmetic
emulsions.
(Ans. 5.) Appellant has not pointed to a flaw in the Examiner’s reasoning.
In addition to this, the Examiner also stated that Ross describes solid
emulsions which would be recognized as water-in-oil emulsions with
aqueous and non-aqueous phases (Ans. 7-8). This position is consistent with
Ross’s teachings about two phase emulsions (F2) and therefore factually
supported. Furthermore, the Examiner found that BBA’s replenishing
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lotion would be an emulsion “due to the presence of mineral oil and water”
(Ans. 4) and would have aqueous and non-aqueous phases (id. at 9-10). For
these reasons, it was unnecessary for the Examiner to have further relied on
Lorant’s teaching of oil-in-water emulsions.
Based on the express teaching in Ross that its compositions can exist
as emulsions with two phases (F2-3; “a second, discontinuous phase which
is emulsified in the continuous phase”), the presence of water in Ross (F9,
10, & 14), the knowledge that emulsions with aqueous and non-aqueous
phases were known (F19), and BBA’s teaching of an emulsion with oil and
water phases (F18), the Examiner had sufficient factual basis to establish
prima facie obviousness. Therefore, the burden shifted to Appellant to
provide rebuttal evidence or arguments. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Appellant has not provided sufficient reason supported by
factual evidence to rebut the prima facie case. Hyatt v. Dudas, 492 F.3d
1365, 1369-70 (Fed. Cir. 2007).

Colorant limitation:
Appellant contends that the Examiner erred in concluding it prima
facie obvious to include a colorant in the Ross or BBA compositions in the
amounts recited in claim 34 (App. Br. 16-17).
As to Ross, Appellant argues that colorants are described as optional
and that “one of ordinary skill in the art understands, it is extremely difficult
to stabilize a color cosmetic emulsion containing polyamides, which are
polar and tend to be too tacky to support the stability of an emulsion with
colorants” (id. at 16).
As to BBA, Appellant argues:
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there is no reason one of ordinary skill in the art would be
motivated to incorporate a colorant, let alone the optional
amounts of colorant of Lorant, into the lotion composition of
the BBA reference, even in view of the sports rub stick
composition separately disclosed therein, which notably is not
an emulsion. This is particularly true in view of the known
difficultly [sic] of stabilizing a color cosmetic emulsion
containing polyamides.
(Id. at 17.)
Ross expressly describes compositions comprising colorants (F8) and
generally teaches that colorants can be included in its polyamide
compositions (F5-7). Lorant describes colorants in cosmetic emulsions
(F19), the same type of composition described in Ross and BBA. Therefore,
the Examiner’s obviousness conclusion is based on factual evidence.
While the claimed amounts are not taught by Ross, prima facie
obviousness typically exists when the differences between the prior art and
the claimed invention is a range. Woodruff, 919 F.2d at 1578. Choosing a
particular colorant concentration was within the ordinary level of skill as
evidenced by Lorant’s teaching of a broad range of suitable colorant
amounts (F36). It is well-established that in such cases obviousness can be
rebutted by secondary considerations, such as a showing of “new and
unexpected results relative to the prior art.” Iron Grip Barbell Co. Inc. v.
USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). The showing must
be factual; argument or conclusory statements do not suffice. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997).
Appellant argues that it was difficult to stabilize a color cosmetic
emulsion containing polyamide (App. Br. 17), but did not present evidence
to establish the difficulty. Arguments of counsel do not suffice. Geisler,
116 F.3d at 1470.
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Alkylene-oxide containing limitation
Claim 39 recites that the alkylene-oxide-containing emulsion
stabilizer “is present in an amount ranging from 4.5% to 6% by weight of the
composition.” Claim 40 is directed to the composition of claim 39 where “at
least one alkylene-oxide-containing emulsion stabilizer has an HLB greater
than 7 and the emulsion is an oil-in-water emulsion.”
Appellant contends:
Moreover, Ross only generically teaches the presence of “from
0 to 50 weight percent, preferably 1 to 25 weight percent . . . of
a surface active agent to ensure rinsability of the
[antiperspirant] composition.” Col. 10, lns. 52-54, 64-67. One
of skill in the art would not be led to select “from 4.5% to 6%”
of an alkylene-oxide-containing emulsion stabilizer for use in a
cosmetic composition in view of that disclosure. Likewise,
Ross only generically teaches an HLB [hydrophilic/lipophilic
balance] value range of 3-18. See col. 16, lns. 59-60. This
disclosure would not lead one of ordinary skill in the art to
select an emulsifier with an HLB value greater than 7.
(App. Br. 19.)
Ross’s Example XII contains 6 wt. % of Laureth-4 (F13), an alkylene-
oxide (F28) which meets the limitations of claim 39 (F29), and has an HLB
greater than 7 as in claim 40 (F28). Appellant has not identified a defect in
the Examiner’s evidence (see Ans. 12).
Appellant states that “the Examiner’s allegation that Laureth-4 . . . is
the claimed ‘alkylene-oxide containing emulsion stabilizer’ is unfounded”
(Reply Br. 8). Appellant contends:
Ross clearly teaches, Laureth-4 disclosed in Example XII
serves to “ensure rinsability of the composition from the skin,”
and one of skill in the art would not be motivated to use it as an
emulsion stabilizer in the emulsions of the present invention, let
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alone in the presently claimed amount. Id. at col. 10, lines 64-
67; col. 16, lines 55-57.
(Reply Br. 8.)
We acknowledge that Ross teaches including surfactants for
rinsability, but Ross also states that the surfactants are used “to ensure that
the discontinuous phase stays dispersed” (F3). Thus, Appellant has not
correctly characterized Ross’s disclosure which clearly teaches that
surfactants have a dual purpose in its compositions, including one as an
emulsion stabilizer. Moreover, even were the emulsion stabilizing function
of surfactants not disclosed by Ross, Laureth-4 is present in the same
amount as claimed – and therefore would have been reasonably believed to
perform the same function (“emulsion stabilizer”) as recited in the claim.

CONCLUSION OF LAW
Appellant did not establish that the Examiner erred in finding the
claimed emulsion having aqueous and non-aqueous phases as in claims 34
and 39 to have been obvious in view of Ross, BBA, and Lorant.
Appellant did not establish that the Examiner erred in concluding it
prima facie obvious to include a colorant in the Ross or BBA composition in
the amounts recited in claim 34.
Appellant did not establish that the Examiner erred in finding it
obvious to have prepared a composition as in claim 39 comprising 4.5% to
6% by weight of an alkylene-oxide containing emulsion.

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SUMMARY
The obviousness rejection of claims 34, 39, and 40 is affirmed.
Claims 35, 42-48, and 52 were not separately argued and fall with claims 34
and 39. See App. Br. 13; 37 C.F.R. 41.37(c)(1)(vii).

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

cdc

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