Ex Parte Merces

Patent Trial and Appeal Board

Jul 20, 2017

13428459 (P.T.A.B. Jul. 20, 2017)

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.
13/428,459 03/23/2012 Alla Merces 752.14 3099
27019 7590
THE CLOROX COMPANY
P.O. BOX 24305
OAKLAND, CA 94623-1305
EXAMINER
DELCOTTO, GREGORY R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
patapps @ clorox. com
denise. whigham @ clorox .com
leslie.jennings@clorox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLA MERCES
Appeal 2016-006807
Application 13/428,459
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a liquid personal care cleansing composition and a
thickener for use in such a composition. App. Br. 7—9. Claim 1 illustrates
the subject matter on appeal and is reproduced below:
1 Appellant identifies the real party in interest as Burt’s Bees, Inc. Appeal
Brief filed January 9, 2015 (“App. Br.”), 3.
Appeal 2016-006807
Application 13/428,459
1. A liquid personal care cleansing composition
comprising:
a carrier;
a detergent surfactant for personal cleansing;
a thickening system comprising;
a gum;
a lactate; and
a lactylate;
wherein the cleansing composition is free of
ethanolamine thickener components.
App. Br. 19 (Claims Appendix).
Appellant requests review of the following grounds of rejection set
forth in the Final Office Action entered April 10, 2014 (“Final Act.”), which
the Examiner maintains in the Answer entered March 11, 2015 (“Ans.”):
I. Claim 14 under 35 U.S.C. § 112, second paragraph for being
indefinite;
II. Claims 1—12, 14, 15, and 18—20 under 35 U.S.C. § 103(a) as
unpatentable over Bernhardt et al. (US 2010/0183539 Al, published July 22,
2010);
III. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable
over Bernhardt in view of Me Manus et al. (US 2006/0089290 Al, published
April 27, 2006); and
IV. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Bernhardt in view of Hoffmann et al. (US 2009/0258807 Al, published
October 15, 2009).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of claim
14 under 35 U.S.C. § 112, second paragraph, and rejections of claims 1—20
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under 35 U.S.C. § 103(a), for the reasons set forth in the Final Action, the
Answer, and below.
Rejection I
Claim 14 depends from claim 1 and recites that the claimed liquid
personal care cleansing composition is substantially free of sulfates. The
Examiner finds that the phrase “substantially” is a relative term that renders
claim 14 indefinite because Appellant’s Specification does not provide
guidance as to the meaning of “substantially free of sulfates.” Final Act. 2—
3.
Appellant argues that “as in the present case, it is well established that
when the term ‘substantially’ serves reasonably to describe the subject
matter so that its scope would be understood by persons in the field of the
invention, and to distinguish the claimed subject matter from the prior art, it
is not indefinite.” App. Br. 11—12.
The use in a claim of an imprecise term of degree such as
“substantially” does not automatically render a claim invalid if the
Specification provides some standard or definition for determining the level
or degree, or evidence of record otherwise shows that one of ordinary skill
in the art would have understood the meaning or scope of the relative
expression. Seattle Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984). However, on this record, Appellant does not
direct us to any disclosure in the Specification that provides a definition of
“substantially free of sulfates,” or that describes the level of sulfates in a
personal care cleansing composition that renders the composition
“substantially free of sulfates.” App. Br. 11—12. Nor does Appellant point
to any other evidence that a person of skill in the art would interpret
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“substantially free of sulfates” to refer to any particular range of sulfate
levels that may be included in the claimed liquid personal care cleansing
composition. Therefore, Appellant has not persuasively shown reversible
error in the Examiner’s determination that claim 14 lacks the level of clarity
required under 35U.S.C. § 112, second paragraph, and we accordingly
sustain the Examiner’s rejection. See In re Packard, 751 F.3d 1307, 1312
(Fed. Cir. 2014).
Rejection II
Appellant argues claims 1—3, 14, 15, 18, and 20 as a group, and
although Appellant argues claims 4—12 and 19 separately, Appellant does
not provide substantive arguments for the patentability of these claims, and
relies on the arguments presented for claims 1—3, 14, 15, 18, and 20. App.
Br. 12—16. Therefore, for the purposes of this appeal, we select claim 1 as
representative, and decide the appeal as to claims 1—12, 14, 15, and 18—20
based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Bernhardt discloses a personal care composition comprising a sulfo-
estolide surfactant (detergent surfactant) and water (carrier). | 62.
Bernhardt discloses that the composition can include a combination of two
or more additional surfactants, and discloses that suitable additional
surfactants include acyl lactylates and alkyl lactyl lactates. 65—67, 70.
Bernhardt discloses that the composition can also comprise a thickener, and
discloses that suitable thickeners include guar gum. || 77—78. The
Examiner concludes that, in view of these disclosures in Bernhardt, it would
have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to formulate a personal care composition comprising a
water carrier, a surfactant, a gum, a lactate, and a lactylate, and the Examiner
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concludes that the skilled artisan would have had a reasonable expectation of
success in formulating such a composition, because the broad disclosures of
Bernhardt suggest such a composition. Final Act. 5—6.
Appellant argues that Bernhardt would not have suggested combining
lactylate and lactyl lactate surfactants, and would not have suggested
combining these surfactants with a gum. App. Br. 12—14. Appellant also
argues that although Bernhardt discloses that thickeners can be added to the
composition described in the reference, Bernhardt would not have suggested
a thickener system comprising a combination of a lactate, a lactylate, and a
gum. App. Br. 14. Appellant further argues that Bernhardt merely discloses
a very wide range of suitable materials that could be included in a
composition, including several hundred surfactant moieties, but does not
provide any guidance that would have directed a skilled artisan to develop a
composition comprising the specific combination of materials recited in
claim 1, including a thickening system that comprises at least a lactate, a
lactylate, and a gum. App. Br. 15.
However, as discussed above, Bernhardt explicitly discloses that the
personal care composition described in the reference that comprises a sulfo-
estolide surfactant can also include a combination of two or more additional
surfactants, and Bernhardt discloses that suitable additional surfactants
include acyl lactylate and akyl lactyl lactate. One of ordinary skill in the art
seeking to produce a personal care composition as disclosed in Bernhardt
would have found it obvious to include two or more of any of the suitable
additional surfactants disclosed in the reference in such a composition—
including as a combination of acyl lactylate and akyl lactyl lactate.
Bernhardt’s disclosure of a multitude of effective additional surfactants and
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combinations thereof does not render any particular combination of
additional surfactants less obvious. Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”) In addition, Bernhardt’s disclosure that the
personal care composition can include a thickener, and disclosure of
numerous suitable thickeners, does not render any of the disclosed
thickeners less obvious. Accordingly, Bernhardt’s disclosure that suitable
thickeners for inclusion in the personal care composition include guar gum
would have led one of ordinary skill in the art to include guar gum in the
suggested personal care composition (discussed above) comprising acyl
lactylate and akyl lactyl lactate.
Moreover, although Bernhardt does not disclose that a combination of
acyl lactylate, akyl lactyl lactate, and guar gum would act as a thickening
system in a personal care composition, Bernhardt nevertheless would have
suggested incorporating these three components into a personal care
composition comprising a water carrier and a sulfo-estolide surfactant, as
discussed above. Appellant’s arguments are therefore unpersuasive of
reversible error.
Appellant further argues that he or she discovered an unexpected
result, relying on paragraphs 38 and 39 of Appellant’s Specification. App.
Br. 15-16.
Although the relied-upon paragraphs in Appellant’s Specification
state that Appellant surprisingly found that adding a lactate and a lactylate to
natural gum results in a substantially homogenous thickened personal care
composition having characteristics similar to those provided by synthetic
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Application 13/428,459
ethanolamine components (Spec. 38—39), Appellant does not direct us to
any evidence whatsoever in support of this assertion of surprising results.
App. Br. 15—16. It is well established that Appellant’s mere arguments in
the Appeal Brief or conclusory statements in the Specification cannot take
the place of objective evidence. See, e.g., In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
Therefore, Appellant fails to meet his or her burden of establishing
that the thickening system recited in claim 1 imparts results that would have
been unexpected to one of ordinary skill in the art at the time of Appellant’s
invention relative to the closest prior art—Berhnardt. In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”); In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973) (to show unexpected results, applicant must establish: “(1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art,. . . and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention”) (citation omitted).
Therefore, on this record, the preponderance of the evidence supports
the Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of claims 1—12, 14, 15, and 18—20 under 35 U.S.C.
§ 103(a).
Rejections III and IV
In addressing these rejections, Appellant relies on the arguments made
for claim 1 (discussed above), and argues that the additional references
applied in these rejections fail to cure the deficiencies of Bernhardt. App.
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Br. 16—17. Because we are unpersuaded of reversible error in the
Examiner’s rejection of claim 1 for the reasons discussed above, Appellant’s
position as to these rejections is also without merit. We accordingly sustain
the rejections of claims 13, 16, and 17 under 35 U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejection of claim 14 under 35 U.S.C.
§ 112, second paragraph, and rejections of claims 1—20 under 35 U.S.C.
§ 103(a).
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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