Ex Parte Mundschau et al

Patent Trial and Appeal Board

Feb 11, 2019

12172039 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/172,039 07/11/2008
45736 7590 02/13/2019
Christopher M. Goff (27839)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Stacy A veric Mundschau
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.
64408785US01
(27839-2906)
CONFIRMATION NO.
4113
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STACY A VERIC MUNDSCHAU, SCOTT W. WENZEL,
LISA ANN FLUGGE-BERENDES, DEBRA HARTLEY DURRANCE,
JONATHAN KYLE ARENDT, and KROY DONALD JOHNSON
Appeal2018-000891
Application 12/172,039
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000891
Application 12/172,039
Appellants 1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 15, 18-20, 24, 26, and 27. (See Appeal
Brief filed May 11, 2017 ("App. Br.") 2.)
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appellants' Specification relates to laminates incorporating nonwoven
substrates carrying skin health formulations. (See Specification ("Spec.")
,r,r 5, 6.) Appellants' Specification reports that oily substances in the lotion
formulations may interfere with the mechanical and elastic properties of the
nonwoven substrates. (See id.) In particular, oily substances, characterized
by lower dielectric constants, are "known to substantially reduce the strength
and overall integrity of the substrates or webs to which the formulations are
applied." (Spec. ,r 68.) In contrast, components with higher dielectric
constants increase the compatibility between formulation and substrate. (See
Spec. ,r 68.) To address this problem, Appellants claim substrates
incorporating formulations with low dielectric constants and increased
compatibility defined as retaining "at least about 40% of the tension of the
untreated substrate at a typical target elongation of 30% of the original
length of the substrate." (See Spec. ,r 73.)
Appellants' claim 15 recites:
A laminated article comprising:
a first substrate; and
a second substrate, wherein at least one of the first and
second substrates comprises a formulation,
the formulation comprising about 25% to about
57% (by weight formulation) of at least one
1 Appellants report that the real party in interest is Kimberly-Clark
Worldwide, Inc.
2
Appeal2018-000891
Application 12/172,039
cosmetic carrier and greater than 5% (by
weight formulation) water,
wherein the cosmetic carrier is a silicone
derivative and the formulation is a water-in-
silicone emulsion,
wherein the formulation has a dielectric constant
of less than 40.0, and wherein the laminated
article retains at least about 40% of the
tension of the untreated article at 30%
elongation.
(App. Br. 15, Claims App'x.)
The Examiner rejects claims 15, 18-20, 24, 26, and 27 under 35
U.S.C. § I03(a) as being obvious over the combination ofYang2 and
Elliott. 3 (Final Office Action mailed December 20, 2016 ("Final Act.") 5-
8.)
The Examiner finds Yang teaches a laminate ( e.g., glove) having a
barrier layer reinforced with a nonwoven fiber layer which remains elastic
after being bonded to the barrier layer. (See Final Act. 5.) The Examiner
finds that Yang teaches treating the nonwoven layer with therapeutic
additives to provide skin benefits, including moisturizing agents, in the form
of non-aqueous solutions (e.g., oil), lotions, and suspensions. (See id.) The
Examiner finds that Yang teaches the additives may range from less than
about 1 % to less than about 50% by weight of the glove. (See Final Act. 5-
6.) The Examiner further finds that Yang teaches using nonwoven webs and
polymeric films to form an elastic sheet that will retract to its original length
2 Yang et al., US 2006/0143767 Al, published July 6, 2006.
3 Elliott et al., US 2005/0260147 Al, published November 24, 2005
3
Appeal2018-000891
Application 12/172,039
after being elongated. (See Final Act. 6.) The Examiner acknowledges that
Yang "fails to specify the silicon derivative is a water-in-silicone emulsion
or the formulation has a dielectric constant of less than 40.0." (See Final
Act. 7.)
The Examiner finds that Elliott teaches a cosmetic formulation
including a dispersant having a dielectric constant from about 3 .5 to about
5.0 to prevent agglomeration of metal oxide particles. (See Final Act. 7.)
The Examiner finds that Elliott teaches the cosmetic formulation may
include a water-in-silicone emulsion, specifically incorporating dimethicone
or cyclopentasiloxane as silicones. (See id.) The Examiner determines that
it would have been obvious to incorporate a cosmetic as a moisturizing agent
into the non woven layer of Yang. (See id.) The Examiner further concludes
that the claimed dielectric constant and elongation properties depend on the
compounds and their relative amounts, which are not defined in the claims
and are considered obvious over the silicone formulation and nonwoven
substrate of the prior art. (See Final Act. 8.)
Appellants argue "the combination of cited references fails to disclose
or suggest a formulation comprising from about 25% to about 57% (by
weight formulation) of at least one silicon derivative." (App. Br. 6.) More
specifically, Appellants distinguish between Yang's teaching of an additive
by weight of the glove as a whole and the claimed amount of silicone
derivative by weight of a water-in-silicone emulsion. (See App. Br. 7.) To
support their argument, Appellants cite Ineos v. Berry for the proposition
that "the prior art is only anticipatory if it describes the claimed range with
4
Appeal2018-000891
Application 12/172,039
sufficient specificity .... " Ineos USA LLC v. Berry Plastics Corp., 783
F.3d 865,869 (Fed. Cir. 2015).
We are not persuaded by Appellants' argument because it addresses
only Yang, and not the combination of the prior art. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attaching references individually where the rejection is based
upon the teachings of a combination references.") The Examiner's rejection
is not based on anticipation, thus Appellants' reference to Ineos is inapposite
and not persuasive. In addition to citing Yang for a moisturizing additive
being about 50% by weight of the glove, the Examiner cites Elliott for a
cosmetic water-in-silicon emulsion. (See Final Act. 7, see also Ans. 9.) We
find Elliot teaches water-in-silicone emulsions containing preferably from
5% to 40% water and from 1 % to 80% silicone. (See Elliott ,r,r 73, 74, 83,
84.) Therefore, we find the combination of Yang and Elliott teaches a
substrate that comprises a water-in-silicone emulsion comprising from 1 % to
80% silicon derivative and greater than 5% water. Because "[a] primafacie
case of obviousness typically exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art," we determine that
the claimed range of about 25% to about 57% silicon derivative is prima
facie obvious over the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003).
Appellants further argue "criticality of the claimed formulation
components and concentration ranges" rebuts the "obviousness rejection
based upon overlapping ranges of the prior art's components." (App. Br.
10.) In particular, Appellants argue "Example 1, Tables 1-2 and Example
5
Appeal2018-000891
Application 12/172,039
16, Tables 17-18" show formulations including from about 25% to about
57% of silicon derivatives achieve greater load retention as well as greater
elongation as compared to formulations with silicone derivatives outside of
Appellants' claimed range. (See id.) According to Appellants, "[t]his has
surprisingly been achieved while keeping a low dielectric constant within
the formulation." (Id.)
We are not persuaded by this argument because Appellants do not
provide persuasive evidence that the claimed range achieves unexpected
results relative to the prior art range, or that the unexpected results are
commensurate in scope with the claimed range. See In re Peterson, 315
F.3d at 1330. For example, Table 2 of the Specification lists 55.48%
retained elongation for a "Water/Silicone Emulsion" containing 50%
dimethicone and 7.0% NET-WO (silicon derivative mixture). (See Spec. 33,
37.) However, formulations that appear to contain 100% silicone derivative,
e.g., PEG-8 Dimethicone and Dimethicone 100 est, are also characterized by
at least 40% retained elongation. (See Spec. 38.) Likewise, Table 18 of the
Specification lists solution "K158-044" containing 15% silicone
characterized by 79.65% retained elongation. (See Spec. 81.) According to
the Appellants' presented evidence, formulations outside the claimed range
show the same load retention and elongation as those within the claimed
range. Therefore, we do not find Appellants' evidence persuasive of
criticality commensurate with the claimed range.
Appellants additionally argue that Yang teaches cross-linked silicone
derivatives that are "markedly different" from Appellants' claimed silicone
derivatives. (See App. Br. 11-12.) In particular, Appellants argue that
6
Appeal2018-000891
Application 12/172,039
Yang's cross-linked silicon elastomers are used to protect the base sheet from
chemical solvents, as opposed to the claimed silicon derivatives used for
cosmetic benefit. (See App. Br. 12.)
We are not persuaded by Appellants' argument, as it does not address
the combination of the prior art. As discussed above, the Examiner cites
Yang in combination with Elliott for teaching a water-in-silicone emulsion.
(See Ans. 9.) More specifically, the Examiner finds Elliott teaches a water-
in-silicone emulsion for cosmetic use, including silicones such as
dimethicone and cyclopentasiloxane. (See Final Act. 7; see also Elliot
,r,r 7 6, 81.) Because the combination of the prior art teaches a cosmetic
water-in-silicon emulsion, containing the same silicon derivatives as the
claimed formulations, we are not persuaded that the Examiner erred in the
rejection.
Conclusion
Upon consideration of the record and the reasons given, the rejection
of claims 15, 18-20, 24, 26, and 27 is sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6.
AFFIRMED
7