Ex Parte Midha et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10961719 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANJEEV MIDHA,
JAMES C. DUNBAR,
JEFFREY J. HOPKINS,
JAMES M. HEINRICH,
BRYAN G. COMSTOCK, and
KARL S. WEI
____________

Appeal 2009-0244
Application 10/961,719
Technology Center 1700
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Decided: January 29, 2009
____________

Before EDWARD C. KIMLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-17 and 19-22.

Appeal 2009-0244
Application 10/961,719

Claim 1 is illustrative:
1. A multi-phase personal care composition comprising:

a. at least one cleansing phase, and

b. at least one benefit phase selected from the group consisting of a
fatty compound gel network, a hydrophobic gel network, a hydrophobic gel
network in a fatty compound gel network, and a fatty compound gel network
in a hydrophobic gel network, wherein said cleansing phase and said benefit
phase are visually distinct phases that are packaged in physical contact and
maintain stability, and wherein said visually distinct phases form a pattern
selected from group consisting of striped, geometric, marbled, and
combinations thereof.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Hayward US 6,534,456 B2 Mar. 18, 2003
Focht US 2004/0092415 A1 May 13, 2004
Wei US 2004/0235693 A1 Nov. 25, 2004

Appellants' claimed invention is directed to a multi-phase personal
care composition comprising a cleansing phase and a benefit phase. The
benefit phase is selected from the group consisting of a fatty compound gel
network, a hydrophobic gel network, a hydrophobic gel network in a fatty
compound gel network, and a fatty compound gel network in a hydrophobic
gel network.
Appealed claims 1-17 and 19-22 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as being unpatentable over Wei. Claims 1-17 and 19-22 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by or, in the
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Appeal 2009-0244
Application 10/961,719

alternative, under 35 U.S.C. § 103(a) as being unpatentable over Focht.
Claims 1-5, 7-11, 13-17, and 19-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hayward. In addition, claims 1-17 and 19-22
stand provisionally rejected on the ground of non-statutory obviousness-type
double patenting over 18 separate applications.
Appellants do not present arguments that are reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 1.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we fully concur with the Examiner that the claimed
subject matter is unpatentable over the cited prior art. Accordingly, we will
sustain the Examiner's rejections for essentially those reasons expressed in
the Answer.
There is no dispute that each of Wei, Focht, and Hayward describes a
multi-phase personal care composition comprising at least one cleansing
phase and at least one benefit phase wherein the phases are visually distinct
and formed in a pattern. There is also no dispute that all the references
disclose that the benefit phase of the personal care composition may
comprise, like Appellants' benefit phase, oils, fatty acids, and fatty acid
derivatives (see Wei at [0073], Focht [0092], and Hayward at column 10,
lines 6-10, and Appellants' Specification at page 15). Hence, since the
benefit phase of Appellants' personal care composition and the benefit
phases of the prior art compositions comprise the same fatty acid materials,
we agree with the Examiner that there is no patentable distinction between
compositions within the scope of the appealed claims and those fairly
described by the applied references.
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Appeal 2009-0244
Application 10/961,719

The principal argument advanced by Appellants is that the applied
references fail to teach or suggest a hydrophobic gel network. For instance,
Appellants maintain that the aqueous phase of Wei's benefit phase "is
inconsistent with a hydrophobic network" (Br. 4, third para.). Appellants'
argument, however, is not commensurate in scope with the degree of
protection sought by claim 1 on appeal, with which all the appealed claims
stand or fall. Appealed claim 1 encompasses compositions wherein the
benefit phase need not comprise a hydrophobic gel network but, rather, "a
fatty compound gel network." The claimed embodiment directed to a fatty
compound gel network is disclosed at page 15 of the Specification as a
separate embodiment from the hydrophobic gel network disclosed at page 16
of the Specification. Moreover, although the benefit phase of Wei comprises
a discontinuous oil phase and a continuous aqueous phase, we find that the
discontinuous oil phase of Wei meets the requirement for the claimed "a
hydrophobic gel network." As alluded to by the Examiner, the broad
language "a hydrophobic gel network" does not exclude a benefit phase
comprising hydrophobic and hydrophilic networks.
Appellants make the argument that Hayward does not teach "with
sufficient specificity the density of the benefit phase" (Br. 11, first para.).
However, appealed claim 1 does not recite a density for the benefit phase.
In any event, we concur with the Examiner that, although Hayward is silent
with respect to the density of the benefit phase, it is reasonable to conclude
that Hayward's use of the same materials, such as esters and fatty alcohols,
would result in substantially the same density.
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Appeal 2009-0244
Application 10/961,719

As for the Examiner's obviousness-type double patenting rejections,
Appellants have not presented an argument in opposition thereto.
Consequently, we will also sustain these provisional rejections.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the applied
prior art.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(effective
Sept. 13, 2004).
AFFIRMED

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