Ex Parte McOsker et al

Board of Patent Appeals and Interferences

Aug 23, 2012

10059614 (B.P.A.I. Aug. 23, 2012)

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.
10/059,614 01/29/2002 Jocelyn Elaine McOsker 7041C 7726
27752 7590 08/23/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
08/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOCELYN ELAINE MCOSKER, DONALD CARROLL ROE,
JAMES JOSEPH FRANXMAN, THOMAS JAMES KLOFTA,
RONALD WAYNE BERG, and RAPHAEL WARREN
__________

Appeal 2011-009816
Application 10/059,614
Technology Center 3700
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to an absorbent article and a method for reducing skin pH.
The Patent Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2011-009816
Application 10/059,614

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STATEMENT OF THE CASE
Claims 29, 35, 41, and 47 are on appeal. Claim 29 is representative
and reads as follows:
29. An absorbent article to be worn adjacent the skin of a wearer for
maintaining the wearer‟s skin pH at an acidic level, the absorbent article
comprising a topsheet having a skin care composition disposed on at least a
portion thereof resulting in a crotch region of the article having open areas
not covered by the skin care composition from about 35% to about 65% of
the total surface area of the region, wherein at least about 0.016 mg/cm
2
of
the skin care composition is transferred from the body contacting surface to
the wearer‟s skin by contact, normal wearer motion and/or body heat over
three hours of wear; and the skin care composition comprises a continuous
phase of substantially oleaginous materials and at least one proton donating
active having the formula:

wherein R1, R2 and R3 are independently hydrogen, an alkyl group, an
alkenyl group, or a hydroxyalkyl group with from 1 to 4 carbon atoms, and
wherein the amount of the proton donating active is effective to lower the
wearer's skin pH by at least about 1.3.

The Examiner rejected claims 29, 35, 41, and 47 under 35 U.S.C.
§ 103(a) as unpatentable over Chen et al. (US 5,990,377, Nov. 23, 1999) and
Dow et al. (US 5,061,700, Oct. 29, 1991).

Appeal 2011-009816
Application 10/059,614

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OBVIOUSNESS
The Issues
The Examiner found that Chen described an absorbent article having a
skin care composition comprising substantially oleaginous material and a
plasticizer, and that Chen‟s article differed from Appellants‟ article only
because Chen did not indicate the plasticizer was triacetin. (Ans. 4.) The
Examiner found that Dow taught the use of triacetin in combination with
oleaginous material for topical application to the skin for treatment of skin
disorders; that “the substitution of one type of plasticizer for another is
within the ordinary skill in the art;” and that “one of ordinary skill in the art
would be motivated to substitute the plasticizer of Chen with the triacetin
taught by Dow because the triacetin provides an enhanced efficacy of the
medicament as taught by Dow in col. 1, lines 45 - 53 and in col. 2, lines 42 -
47.” (Id. at 4-5.)
Appellants raise three issues. Appellants contend the Office Action
(1) “has not shown where the combination of Chen and Dow teaches or
suggests each and every element of the claimed invention;” (2) “has not
shown why one skilled in the art would have a motivation to combine Chen
with Dow or have a reasonable and predictable expectation of success;” and
(3) “uses hindsight bias to construct its rejection.” (App. Br. 4-5.)

Findings of Fact
1. Chen disclosed that “[i]n addition to hydrophobic matter, other agents
may be suitably added to the basesheet in accordance with this
invention. . . . Such chemical agents include . . . plasticizers for high
yield fibers . . . .” (Chen, col. 36, ll. 7-25.)
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2. “Triacetin (1,2,3 propanetriol triacetate; glyceryl triacetate), is listed
as a pharmaceutical plasticizer.” (Dow, col. 2, ll. 12-13.)
3. Appellants‟ Specification states:
In order that the proton donating active be effective in helping
maintain skin at an acidic pH the proton donating active should be
provided at a level of at least 0.01 % of the skin care composition;
typically at least about 0.5%; preferably at least about 3%. Such
suitable proton donating actives may be used as a component of the
skin care compositions of the present invention at a level of between
about 0.01 % and about 40%, depending on the specific proton
donating active chosen. Preferably, the proton donating actives are
used at a level of between about 0.5% and about 20% of the skin care
composition of the present invention. In particularly preferred
embodiments of the present invention, the proton donating actives are
provided at a level of between about 3% and about 7%.

(Spec. 16.)

Principles of Law
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of
the patentee controls. What matters is the objective reach of the claim.
If the claim extends to what is obvious, it is invalid under § 103.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 419-20 (2007).

Analysis
Issue (1)
Appellants contend the rejection failed to show “how the composition
of Dow or Chen is effective to lower the wearer's skin pH by at least about
1.3.” (App. Br. 6.) Appellants note that “[n]either Dow or Chen discuss the
effect of their compositions on pH.” (Id.)
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The Examiner responds:
Page 16, lines 1 - 13 of the instant specification states that
triacetin is effective in providing pH reduction and that the proton
donating active is used at a level between 0.5% and about 20%.
As noted by the arguments presented on page 6 of the Appeal
Brief, Dow uses triacetin in amounts greater than 10% as set forth in
col. 3. As such, the use of the preferred material (triacetin) by Dow in
the amounts disclosed (0.5%-20%) to reduce pH would result in an
effective pH reduction as claimed.

(Ans. 5.)
The evidence shows that the claimed pH effect flows from the use of
triacetin in the amounts Dow described. This evidence supports the
rejection and refutes Appellants‟ contention.
Issue (2)
Appellants contend that “when each of the references is considered as
a whole, they fail to suggest the desirability of making a combination that
would arrive at Applicants‟ invention as claimed. Further, there is no
motivation provided to combine the references.” (App. Br. 7.) According to
Appellants, although Chen listed chemicals that could be added to the web,
including a plasticizer, “no specific chemical or other purpose besides its
effect on the fiber is given.” (Id.) According to Appellants, Dow used
triacetin as a carrier for the benefit of antifungal properties. (Id.) Per
Appellants, neither reference addressed the problem Appellants address, i.e.,
“the need to counteract the effects of ammonia and fecal enzymes on the
skin of those wearing absorbent articles.” (Id.) Thus, “Applicants submit
that a skilled person looking for a way to prevent diaper rash and dermatitis
by controlling the pH of the skin through the use of proton donating actives
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as claimed by Applicants would not be directed by the teaching of Chen or
Dow.” (Id.)
The Examiner responds that “both prior art inventions are concerned
with treating the skin and that one of ordinary skill in the art would be
motivated to substitute the plasticizer of Chen with the triacetin taught by
Dow because the triacetin provides an enhanced efficacy of the medicament
as taught by Dow.” (Ans.5- 6.) The Examiner further “contends that Chen
provides a substantially oleaginous material (waxes, mineral oil, petrolatum)
in col. 34, lines 4 - 19 in combination with a plasticizer (col. 36, lines 7-25)
which results in the claimed proton donating active.” (Id. at 6, emphasis
added.) There is no evidence to support finding that all plasticizers (none is
named by Chen) would be a proton donating active, but this error is
remedied by combining Chen with Dow. The Examiner continues:
The substitution of a specific plasticizer (triacetin) for the one
disclosed by Chen is within the level or ordinary skill in the art and
would also be beneficial due to Dow‟s acknowledgement that the
triacetin provides an enhanced efficacy of the medicament.
The fact that applicant has recognized another advantage which
would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would
otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd.
Pat. App. & Inter. 1985).

(Id.)
We agree with the Examiner that a person of ordinary skill in the art
wishing to follow Chen‟s teaching to use a plasticizer would have to choose
a plasticizer known in the art. Dow identified triacetin as a plasticizer
suitable for skin contacting compositions, and thus triacetin would have been
known as a suitable plasticizer for use in Chen‟s composition.
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Appellants also contend that there is no “showing that one skilled in
the art would have a reasonable and predictable expectation of success.”
(App. Br. 7.) We disagree. A person of ordinary skill would have expected
Dow‟s triacetin to function as a plasticizer if used in the composition on
Chen‟s article.
Issue (3)
Appellants contend that “the Office Action relies on hindsight bias
based on the mere inclusion of a plasticizer in Chen and triacetin in Dow”
(App. Br. 8), and the “Office Action selected one possible use of a preferred
proton donating active (triacetin), i.e. use as a „plasticizer‟ and has
improperly extrapolated this back to Applicants‟ claims” (id. at 9).
One of ordinary skill in the art would find no motivation from the
teachings of Chen to choose one element from a larger list, equate it to
a carrier in Dow used for antifungal purposes when delivering
medication through a topical ointment, and use that material to control
the pH of skin when placed on an absorbent article. Applicants submit
that the Office Action has merely pointed to the presence of claim
elements in the prior art to justify unfounded assumptions.

(Id.)
A person of ordinary skill wishing to follow Chen‟s teaching to use a
plasticizer would have had to pick one from among the known plasticizers.
Dow described triacetin as a plasticizer suitable for use in skin contacting
compositions. The composition would have been obvious, even if prepared
for reasons other than the particular purpose Appellants have in mind.

Appeal 2011-009816
Application 10/059,614

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CONCLUSION OF LAW
We affirm the rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Chen and Dow. Claims 35, 41, and 47 are not separately
argued and fall together with claim 29. 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the rejection of claims 29, 35, 41, and 47 under 35 U.S.C.
§ 103(a) as unpatentable over Chen and Dow.
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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