Ex Parte Miertsch et al

Patent Trial and Appeal Board

Jun 29, 2016

13125316 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/125,316 05/20/2011
13897 7590 07/01/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Heike Miertsch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3321-P39641 4110
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKE MIER TSCH and STEP AN BIEL 1
Appeal2014-008438
Application 13/125,316
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
RYAN H. FLAX, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is Beiersdorf AG. App. Br. 3.
Appeal2014-008438
Application 13/125,316
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 6-19 and 26-31.2 Specifically, claims
6-19 and 26-31 stand rejected as unpatentable under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 6, 12, 16, 17, 19, 28, and 30 stand rejected as unpatentable
under 35 U.S.C. § 102(b) as being anticipated by Parekh (US 6,024,945,
February 15, 2000) ("Parekh"). 3
Claims 6-19 and 26-31 also stand rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Lemoine et al.
(US 2005/0163737 Al, July 28, 2005) ("Lemoine") and Yamamoto et al. (JP
2003286146 (A), January 7, 2003) ("Yamamoto").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to anti-perspiration preparation
containing hydrotalcite, which helps prevent changes in the scent and color
of the antiperspirant preparation. Abstract.
2 Claims 1-5 and 20-25 are canceled. Final Act. 2.
3 These claims were originally rejected by the Examiner as unpatentable
under 35 U.S.C. § 102(b) as being anticipated by Parekh. See Ans. 6. This
rejection has been withdrawn and a New Ground of Rejection of the claims
as unpatentable under 35 U.S.C. § 102(b), pursuant to 37 C.F.R.
§ 41.39(a)(2), has been entered by the Examiner over the same reference.
Id. at 7. Appellants have responded to the New Ground of Rejection in their
Reply Brief. See 37 C.F.R. § 41.39(b )(2).
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REPRESENTATIVE CLAIM
Claim 6 is representative of the claims on appeal, and recites:
An antiperspirant preparation, wherein the preparation
comprises one or more antiperspirant active ingredients,
hydrotalcite, and water in an amount of not more than 5 % by
weight, based on a total weight of the preparation, the preparation
being free of 2-alkyl-branched carboxylic acids comprising from
4 to 38 carbon atoms and derivatives thereof.
App. Br. 22.
ISSUES AND ANALYSES
A. Rejection of claims 6-19 and 26-31 as indefinite under 35 U.S.C. § 112,
second paragraph
Issue 1
Appellants argue the Examiner erred in finding independent claim 6
indefinite. App. Br. 8.
Analysis
Appellants argue a person of ordinary skill in the art (which they
characterize as a person having at least a bachelor's degree in chemistry)
would understand the meaning of a derivative of a carboxylic acid. App. Br.
7. Appellants point to their Specification, which, they argue, "describes
antiperspirant preparations comprising, in addition to mixed oxides, also 2-
alkyl-branched acids and/or derivatives thereof, in which the 2-alkyl-
branched acid has 4 to 38 carbon atoms." App. Br. 7-8 (citing, e.g., Spec.
i-fi-132--42). Appellants also point to the disclosure in their Specification that
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their claim 7 recites a number of examples of derivatives of 2-alkyl-
branched carboxylic acids having 4 to 38 carbon atoms. Id. at 8.
Appellants point out that that the issue on appeal is not whether the
Specification or the claims as originally filed provide a definition for said
derivatives, but is rather whether one of ordinary skill in the art would be
able to determine the metes and bounds of the instant claims. App. Br. 8.
The Examiner responds that Appellants' claim 6 also recites the
limitation that the carboxylic acids contain 4 to 38 carbon atoms. Ans. 6.
However, the Examiner finds it is unclear if the undefined derivatives of the
carboxylic acids also contain only 4 to 38 carbon atoms or may contain more
or less. Id. The Examiner therefore finds the claim is ambiguous as to what
constitutes a "derivative" and is further ambiguous with respect to whether
the "derivatives" of the carboxylic acids must also meet the limitation of 4 to
38 carbon atoms. Id.
Appellants reply that claim 6 unambiguously recites "2-alkylbranched
carboxylic acids comprising from 4 to 38 carbon atoms and derivatives
thereof." Reply Br. 3. In other words, Appellants contend, regardless of
what exactly the derivative might be, the carboxylic acid part of the
derivative contains 4 to 38 carbon atoms. Consequently, Appellants argue,
one of ordinary skill in the art will understand that any carbon atoms which
belong to a group that is not part of the carboxylic acid itself (e.g., in the
case of an alkyl ester, the alkyl group) are not included in the number of
carbon atoms recited in claim 6. Id.
We do not agree with Appellants. The standard for determining
indefiniteness, set forth by our reviewing court, is whether "one skilled in
the art would understand the bounds of the claim when read in light of the
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Application 13/125,316
specification." Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed.
Cir. 1993).
Neither claim 6, nor Appellants' Specification, defines the claim term
"derivative," nor do they unambiguously define the scope of what may or
may not be a "derivative," nor do they provide any examples or evidence of
what might constitute (to a skilled artisan) such a derivative of the "2-alkyl-
branched carboxylic acids." "Derivatives" of such compounds could
comprise an almost unlimited number of compounds with various
substitutions. Moreover, addition of, e.g., alkyl groups could increase the
number of carbon atoms beyond the claimed 4 to 38 carbons. A person of
ordinary skill in the art may reasonably ask: would substitution of a methyl
group for a hydrogen atom on a 38-carbon 2-alkyl-branched carboxylic acids
(thus resulting in a 39-carbon molecule) be a derivative of the claimed
carboxylic acid? The answer is not determinable based on the claims and
Specification. We consequently agree with the Examiner that a person of
ordinary skill, reading the language of the claim in light of the Specification,
would not be able to identify the bounds of the claim and we affirm the
Examiner's rejection.
B. Rejection of claims 6, 12, 16, 17, 19, 28, and 30 under 35 U.S.C.
§ 102(b)
Issue
In their Reply Brief, Appellants argue the Examiner's New Ground of
Rejection erred in finding Parekh's disclosure of aluminum chlorohydrate
("ACH")-bound or -coordinated water, reads on the claims' requirement that
water being present "in an amount of not more than 5 % by weight."
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Analysis
Appellants argue that the Examiner finds:
Parekh teach[ es] ACH bound or coordinated to water and the
water cannot be removed completely (e.g., col. 1, lines 20+,
claim 13), and thus water are [sic] present in an 'impurity level'
amount in example 4 of the reference, which would inherently be
less than 5%. In addition, the Parekh reference claims a
composition comprising antiperspirant active ingredients,
hydrotalcite and water (see claims 1 and 13).
Reply Br. 3 (quoting Ans. 5).
Appellants argue that paragraph [0019] of their Specification discloses
that the "water" recited in claim 6 is exclusively added ("free") water, i.e.,
not water that may be present in either bound or coordinated form in the
antiperspirant active ingredients of Parekh. Id. Appellants also argue claim
13 of Parekh, relied upon by the Examiner, refers exclusively to water that is
bound or coordinated to aluminum compounds.
We are not persuaded by Appellants' arguments. Paragraph 19 of
Appellants' Specification discloses: "[i]n order for the hydrotalcite to be
able to act as an acid scavenger in the formulation, the addition of water is
necessary. However, the addition of water is limited to a maximum of 5%
by weight, based on the total mass of the stick." Nevertheless, the addition
of water is not recited in claim 6, rather the claim recites: "water in an
amount of not more than 5 % by weight, based on a total weight of the
preparation." This does not recite that the water must be "free" as
Appellants argue and, so, Appellants' respective argument is without merit.
Further, Parekh teaches:
In general, basic aluminum halides and nitrates are complex
structures comprised of mixtures of polymeric and monomeric
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compounds having various sizes and molecular structures,
together with varying amounts of bound or coordinated water.
They can be represented by the empirical formula Ab(OH)c6-x)Yx,
wherein xis between 0 and 6 and need not be an integer, and y
is one or more of the group including chloride, bromide, iodide
or nitrate ions. The empirical formula is simplified and is
intended to include basic aluminum chlorides containing
coordinated or bound molecules of water, as well as basic
aluminum chloride polymers, complexes and mixtures thereof.
Parekh col. 1, 11. 18-29.
Furthermore, claim 13 of Parekh recites: "A composition according to
claim 1 wherein the complex aluminum buffering agent is selected from the
group consisting of aluminum hydroxy carbonate, magnesium hydroxide and
aluminum compounds containing two or more of the group consisting of
magnesium, calcium, nickel, carbonate, sulfate, hydroxy and water."
(emphasis added).
Both passages of Parekh thus teach that the composition contains
water; at column 1 the reference states that the water may be bound or
coordinated to the aluminum-based compound, however Parekh claim 13 is
less specific. Appellants' claim 6 recites: "the preparation comprises ...
water in an amount of not more than 5 % by weight." Claim 6 thus does not
specify whether the water was added or is bound or coordinated in the
composition. Although Appellants' Specification teaches that water may be
added, Appellants may not attempt to import this limitation, i.e., the addition
of water, into the product claim. See CollegeNet, Inc. v. Apply Yourself, Inc.,
418 F.3d 1225, 1231 (Fed. Cir. 2005). We consequently affirm the
Examiner's rejection of the claims.
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C. Claims 28 and 30
Issue
Appellants argue the Examiner erred in finding Parekh anticipates the
limitation reciting "wherein the hydrotalcite is present in an amount that is
sufficient to reduce or prevent changes in scent and/or color of the
preparation." App. Br. 10.
Analysis
Appellants argue that, in addition to the reasons presented supra,
Example 4 of Parekh does not disclose that hydrotalcite is necessarily
present in an amount that is sufficient to reduce or prevent changes in scent
and/or color of the preparation. App. Br. 10. Appellants dispute the
Examiner's finding that that Parekh discloses "the exact same compositions
as claimed." Id. at 11 (citing Advisory Act, November 20, 2013).
Appellants contend that the fact that the composition of Example 4 of
Parekh consists of aluminum chlorohydrate and hydrotalcite (without water)
one cannot reasonably conclude that the hydrotalcite is present in an amount
that is sufficient to reduce or prevent changes in scent and/or color of this
composition. Id.
The Examiner responds that Parekh teaches all structural limitations
provided in the instant claims, including examples in which 7.87% and
3.31 % hydrotalcite are used. Ans. 7. The Examiner further also finds
Appellants' Specification filed does not provide a percentage range for what
amount is considered to be sufficient to reduce or prevent changes in color
and/or scent, however, the Examiner finds the Specification discloses that
not more than 5% water is present and a hydrotalcite:water ratio is within the
prescribed range of 1: 10 to 10: 1 ratio. Id. at 7-8. The Examiner finds this
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Application 13/125,316
would result in a percentage range of 0.05-50% hydrotalcite, and that the
weight percentages of 3 .31 % and 7. 87% disclosed by Parekh falls within
this range. Id. at 8. The Examiner finds Parekh teaches the same
components as the claimed composition and would therefore necessarily
possess all of the properties recited in the claims, absent any showing to the
contrary. Id.
We are not persuaded by Appellants' arguments. Appellants'
Specification recites:
H ydrotalcite is reduced by free chloride released from the
antiperspirant active ingredients (AP active agents). The
antiperspirant formulations [are] then no longer yellow and the
unpleasant odor formation is avoided. This leads to a better
perfume release, a better perfume stability and to white products.
Although hydrotalcite makes the product itself whiter, the white
residues are not intensified.
Hydrotalcite thus serves to avoid changes in scent and color in
antiperspirant preparations that comprise one or more
antiperspirant and/or deodorant active ingredients and a
maximum of 5% by weight of water, based on the total mass of
the preparation.
Spec. iTiT 34--35.
Appellants' Specification provides no further guidance or disclosure
concerning the "amount that is sufficient to reduce or prevent changes in
scent and/or color of the preparation." We agree with the Examiner that
Parekh discloses concentrations of hydrotalcite that fall within the range
disclosed by the Specification and we further agree that a person of ordinary
skill in the art, upon reading the disclosures of Parekh and Appellants'
Specification, would realize that concentrations of hydrotalcite within the
ranges disclosed would likely reduce or prevent changes in scent and/or
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color of the preparation, or could optimize the concentration within the
disclosed range so as to optimize the desired effect. See In re Brown, 459
F.2d 531, 535 (C.C.P.A. 1972) ("As a practical matter, the Patent Office is
not equipped to manufacture products by the myriad of processes put before
it and then obtain prior art products and make physical comparisons
therewith"). We therefore affirm the Examiner's rejection of claims 28 and
30.
D. Rejection of claims 6-19 and 26-31under35 U.S.C. § 103(a)
Issue
Appellants argue neither Lemoine nor Yamamoto contains any
teaching or suggestion that would lead a person of ordinary skill in the art to
add hydrotalcite to Lemoine' s deodorant compositions, which contains zinc
pidolate as the required and essential deodorant component. App. Br. 12.
Appellants admit paragraph [0036] of Lemoine teaches its deodorant
compositions may also comprise at least one additional deodorant active
agent; however, Appellants argue, the examples in the teachings of Lemoine
do not bear any resemblance to hydrotalcite. Id. Furthermore, Appellants
argue, none of the exemplary compositions of Lemoine (Formulations 1-9)
contain any active deodorant agent in addition to zinc pidolate. Id.
Appellants therefore assert that a person of ordinary skill in the art would
find no teaching or suggestion in Lemoine that would suggest incorporating
an additional deodorant active agent in the compositions. Id.
However, argue Appellants, even assuming, arguendo, that the
teachings of Lemoine provide a reason for an ordinary artisan to include an
additional active deodorant agent, that Yamamoto neither teaches nor
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suggests that hydrotalcite should be used as an additional deodorant active
agent. App. Br. 12-13. Appellants admit that, although Yamamoto
mentions hydrotalcite as one of several examples of active deodorant agents
which may be included in its compositions, there is no teaching in
Yamamoto that hydrotalcite would be a particularly desirable additional
active agent. Id. at 13. On the contrary, Appellants argue, whereas some of
the compositions exemplified in Yamamoto contain additional deodorant
active agents none of these compositions appears to contain hydrotalcite. Id.
Appellants argue further that all of the examples of additional
deodorant active agents taught in Lemoine's in paragraph [0036] are organic
compounds, conveying the impression that, like zinc pidolate (zinc
pyrrolidine carboxylate ), any additional active agent should also be an
organic compound, thereby discouraging a person of ordinary skill from
considering an inorganic agent, such as hydrotalcite. App. Br. 13.
Similarly, Appellants argue, all of the active agents taught in Yamamoto are
inorganic compounds. Id. at 13-14. Consequently, Appellants allege, the
Examiner could only have arrived at the proposed combination of Lemoine
and Yamamoto through the impermissible use of hindsight analysis. Id. at
14.
Finally, Appellants argue, all of the exemplary compositions of
Lemoine are either anhydrous or contain water in a concentration that is
significantly higher than 5 % by weight. App. Br. 15 (citing, e.g., Lemoine
Formulations 7, 8). Appellants therefore contend that a person of ordinary
skill in the art would not be directed by the teachings of either Lemoine or
Yamamoto to include water in the compositions, or to include water only in
an amount that exceeds 5 % by weight. Id.
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The Examiner finds Lemoine explicitly teaches additional active
deodorant agents may be incorporated, and provides no limitations on which
agents may be used. Ans. 8. The Examiner finds Yamamoto teaches
hydrotalcite as a known active deodorant agent and, therefore, it would have
been obvious to one of ordinary skill in the art to add the hydrotalcite
deodorant active of Yamamoto to the deodorant formulations of Lemoine.
Id.
The Examiner finds a person of ordinary skill in the art would have
been motivated to combine the teachings of Lemoine and Yamamoto
because both references are drawn to antiperspirant/deodorant formulations
comprising aluminum antiperspirant salts and deodorant compounds. See
Final Act. 6. The Examiner concludes it would therefore have been obvious
to utilize the hydrotalcite taught by Yamamoto in the antiperspirant
compositions of Lemoine to provide an additional deodorant compound at
standard deodorant compound percentages. Id. at 6-7.
The Examiner also finds Lemoine teaches less than 3 %, and
preferably less than 1 % water and also provides examples of suggested
additional active deodorant agents present at 0.1 %, which percentages falls
within the claimed range of water to agent ratios.
We agree with the Examiner. Lemoine explicitly teaches that
additional deodorant active agents may be added to its disclosed deodorant
composition. Lemoine ,-r 36. Yamamoto, which also teaches deodorant
compositions, explicitly teaches the use of hydrotalcite as an active agent.
Yamamoto i-fi-1 16-18.
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
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KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In the present
appeal, both Lemoine and Yamamoto teach deodorant compositions.
Lemoine teaches multiple active agents may be used, and Yamamoto teaches
hydrotalcite as an active deodorant agent. We agree with the Examiner that
a person of ordinary skill would recognize that the combination of the
elements would yield a predictable result, viz., deodorant activity.
Appellants make no argument that the combination of the two references
results produces unexpected, or even unusual, results.
Nor are we persuaded by Appellants' argument that a person of
ordinary skill would not be motivated to combine organic- and inorganic-
based active deodorant agents. Appellants adduce no evidence in support of
this assertion, nor do they point to any teaching in either Lemoine or
Yamamoto that would deter or discourage a person of ordinary skill from
combining organic- and inorganic-based active agents. Lacking any
evidentiary basis to support their argument, we accord attorney argument
such as this little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997) (Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value).
We also reject Appellants' allegation that the Examiner improperly
employed hindsight analysis. In one sense, any conclusion of obviousness is
necessarily a reconstruction based upon hindsight reasoning, "but so long as
it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper." In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971).
Appellants point to no finding of the Examiner that would not have ben
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within the knowledge of an artisan of ordinary skill, or which could have
only been gleaned from the disclosures of Appellants' Specification. We
therefore find the Examiner did not improperly employ hindsight in making
the findings or conclusions.
Finally, Lemoine explicitly teaches: "[f]or the purposes of the
disclosure, the term 'anhydrous' means a composition whose content of free
or added water is less than 3 % and for example, whose content of added
water is less than 1 %, by weight relative to the total weight of the
composition." Lemoine i-f 29. The 3% limit taught by Lemoine reasonably
falls within the range of "not more than 5 % by weight" recited by claim 1.
We consequently affirm the Examiner's rejection of claims 6-19 and 26-31.
E. Claim 13
Issue
Appellants argue dependent claim 13 separately. App. Br. 15. Claim
13 recites: "[t]he preparation of claim 6, wherein the preparation comprises a
weight ratio of hydrotalcite and water of from 1: 10 to 10: 1." Id. at 19.
Appellants contend the Examiner erred in finding the combined cited prior
art references teach or suggest the limitation of claim 13. Id. at 15.
Analysis
Appellants argue that, in view of the teachings of Yamamoto, a person
of ordinary skill would pay little attention to the weight ratio of hydrotalcite
and water in the deodorant compositions taught by Lemoine. App. Br. 15.
Appellants point out that Lemoine teaches that water may even be absent
from its compositions. Id. (citing Lemoine i-f 28). Appellants further
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observe that Yamamoto also teaches that water is an optional component.
Id. (citing Yamamoto i-f 23). Appellants therefore contend there would be no
reason for a person of ordinary skill to be concerned with the ratios of two
optional additions to the compositions taught by Lemoine. Id.
The Examiner finds Lemoine teaches less than 3%, and preferably
less than 1 % water, and provides exemplary percentages of a suggested
additional active deodorant agents (e.g., triclosan) at a concentration of
0.1 %. Ans. 10 (citing Lemoine i-fi-136, 70). The Examiner finds these
percentages fall within the claimed range of deodorant:water ratios. Id.
We are not persuaded by Appellants' arguments. We agree with the
Examiner's findings that Lemoine teaches embodiments containing
concentrations of water that are less than 3% (and preferably less than 1 %).
See Lemoine i-f 29. Lemoine also teaches addition of a second deodorant
agent and provides an embodiment of one such additional agent at a
concentration of 0.1 % that provides effective antibacterial (and hence,
deodorant) activity. See Lemoine i-f 70. We find these teachings would be
sufficient to guide a person of ordinary skill to the claimed deodorant:water
range. We consequently affirm the Examiner's rejection of the claims.
F. Claims 28-30
Appellants repeat their arguments, presented supra, that the cited prior
art references fail to teach or suggest the limitation reciting "in an amount
that is sufficient to reduce or prevent changes in scent and/or color of the
preparation." We have related our reasoning as to why we find Appellants'
arguments are not persuasive and we incorporate by reference that reasoning
here. We consequently affirm the Examiner's rejection of claims 28-30.
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DECISION
The Examiner's rejection of claims 6-19 and 26-31 as unpatentable
under 35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejection of claims 6, 12, 16, 17, 19, 28, and 30 as
unpatentable under 35 U.S.C. § 102(b) is affirmed
The Examiner's rejection of claims 6-19 and 26-31 as unpatentable
under 35 U.S.C. § 103(a) 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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