Ex Parte Perring et al

Board of Patent Appeals and Interferences

Jun 22, 2012

11886293 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/886,293 06/26/2008 Keith Douglas Perring 056222-5125 4157
9629 7590 06/22/2012
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
HOFFMAN, SUSAN COE
ART UNIT PAPER NUMBER
1655
MAIL DATE DELIVERY MODE
06/22/2012 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 KEITH DOUGLAS PERRING, JOHN MARTIN BEHAN,
DAVID JONATHAN BRADSHAW, and BRIONY CARE
__________

Appeal 2011-006412
Application 11/886,293
Technology Center 1600
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
DEMETRA J. MILLS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 12 and 21-23.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Claims 16, 17, and 19 are also pending, but stand withdrawn from
consideration (App. Br. 3).
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STATEMENT OF THE CASE
According to the Specification, the “invention is . . . concerned with
perfume compositions that have the ability to down-regulate arousal and
promote stress relief through olfactory stimulation” (Spec. 1). The
Specification teaches that the invention provides a perfume composition
comprising one or more materials from Group A: the essential oils lavender,
lavandin, bergamot, chamomile, clary sage; and one or more materials from
Group B: 2-phenoxyethanol, 1-(2,3,8,8-tetramethyl-l,2,3,4,5,6,7,8-
octahydronaphthalen-2-yl)ethanone, benzophenone, cyc1opentadecanolide,
alpha-ionone, beta-ionone, para methyl acetophenone, [4
isopropylcyc1ohexyl]methanol (also known by the semi-trivial name para-
menthane-7-01) (id. at 5). The Specification teaches further that the “weight
ratio of group A to group B materials may lie anywhere in the range 9:1 to
1:9 but is preferably 3:1 to 1:3, more preferably 2:1 to 1:2” (id. at 6). In
testing the composition, the Specification teaches measurement of salivary
cortisol levels as an indicator of stress relief (id. at 12).
Claim 12 is representative of the claims on appeal, and reads as
follows:
12. A method of reducing stress in a subject under stress, comprising the
inhalation by the subject of a perfume composition or a consumer product
comprising one or more materials from each of the following groups:
Group A: the essential oils lavender, lavandin, bergamot, chamomile,
clary sage;
Group B: 2-phenoxyethanol, 1-(2,3,8,8-tetramethyl-l,2,3,4,5,6,7,8-
octahydronaphthalen-2-yl)ethanone, benzophenone, cyclopentadecanolide,
alphaionone, beta-ionone, para-methylacetophenone, [4-
isopropylcyclohexyl] methanol;
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and wherein the ratio of the weight percentage of Group A materials
to Group B materials based on the total weight of the composition lies within
the range 2: 1 to 1:2.

The claims have been subject to an election of species, and thus have
been examined in regard to the elected species of lavender as the Group A
component, and 2-phenoxyethanol as the Group B component (Ans. 2).
The following grounds of rejection are before us for review:
Claims 12 and 21-23 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Librizzi.2
We affirm.

ANALYSIS
We agree with the Examiner’s finding and conclusions, and adopt
them as our own.
Appellants argue that the scope of odiferous compounds disclosed by
Librizzi “is very large, unlike the group of eight specific compounds recited
as belonging to Group B of Appellants’ claim” (App. Br. 9). Appellants
assert that even if one were to consider claims 2 and 18 of Librizzi together,
the result is “thousands of possible combinations of an essential oil
component with an odoriferous component” (Reply Br. 3). Appellants point
to Table 2 of the Specification that presents four comparative examples that
are outside the scope of the claimed invention, but are within the scope of
the compositions taught by Librizzi (App. Br. 10-15). According to

2 Librizzi et al., US 2003/0064120 A1, published Apr. 3, 2003.
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Appellants:
[A]t least in view of the fact that Librizzi does not distinguish
between subject matter that may possibly be encompassed by
Appellants’ claim 12 and subject matter which is definitely not
encompassed by claim 12 (such as, for example, the above-
discussed comparative examples Cl through C4), Librizzi
clearly cannot render claim 12 obvious. Simply stated, a person
of ordinary skill in the art would have no motivation or
rationale for deciding which portions of the Librizzi
specification to focus on and which portions to ignore in
attempting to achieve Appellants' claimed invention.

(Id. at 15).
Appellants argue further that Librizzi fails to teach the claimed ratio
of essential oil to the odiferous portion, teaching, at best, that the preferred
“sensory fragrance comprises from about 0.01 % to about 30% by weight of
the essential oil component and from about 70% to about 99.99% by weight
of the odiferous component” (id. at 10). Appellants thus assert that the
rejection is based on improper hindsight (id. at 15-16).
Appellants’ arguments have been carefully considered, but are not
convincing. Librizzi teaches fragrance compositions that are capable of
reducing stress (Librizzi at 1, ¶7). Librizzi teaches further that the
compositions are capable of reducing cortisol levels from 0.1 to 75% (id. at
1, ¶8). The compositions of Librizzi are comprised of an essential oil and an
odiferous portion (id. at 1, ¶8). As taught by Librizzi, the “preferred sensory
fragrance is comprised of essential oils selected from one or more members
of the group consisting of chamomile, rose, orange, tuberose, sandalwood,
lavender, cedarwood, bergamot, and benzoin resin” (id. at 2, ¶16; see also
Librizzi, claim 2). Librizzi teaches further:
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The other odoriferous components of the sensory
fragrance include but are not limited to benzenoid materials,
alcohol materials, ester materials, aldehyde materials, ketone
materials, and mixtures thereof. The benzenoid materials are
selected from benzyl benzoate, benzyl carbinol, benzyl
salicylate, benzyl cinnamate, diethyl phthalate, phenoxy
ethanol, hexahydro-4,6,6,7,8,8-hexamethylcyclopenta-y-2-
benzopyran, 7 -acetyl-1,1,3,4,4,6-hexamethyltetralin, 3-(3,4-
methylene dioxyphenol)-2-methyl propanol, methyl-iso-
eugenol, eugenol, and mixtures thereof. The alcohol materials
are selected from citronellol, alcohol C-8, alcohol C-10; alcohol
C-11, alcohol C12, dipropylene glycol, linalool, geraniol,
benzyl alcohol, 2-ethyl-4-(2,2,3-trimethyl-3-cyclopentene-1-
yl)-2-buten-1-ol, dihydromyrcenol, and mixtures thereof. The
aldehyde materials are selected from 4-(4-hydroxy-4-
methylpentyl)-3-cyclohexene 1-carboxoaldehyde, p-t -buty l-a-
methyidihydrocinnamic aldehyde, aldehyde C-10, aldehyde C-
11, aldehyde C-12, laurinal, heliotropine, anisic aldehyde,
benzyl aldehyde, and mixtures thereof. The esters materials are
selected from benzyl acetate, dimethyl benzyl carbinyl acetate,
ethylene brassylate, cyclopentadecanolide, linalyl acetate,
benzyl proprionate, citronellyl acetate, hexyl butyrate, neryl
acetate, prenyl acetate, hexyl cinnamate, oxacyclohexadecen-2-
one, and mixtures thereof. The ketones materials are selected
from methyl ionone, ambretone, methyl dihydrojasmonate,
muscone, allyl ionone, and mixtures thereof.

(Id. at 2, ¶18; see also Librizzi, claim 18(emphasis added)). In the fragrance
composition of Example 1, Librizzi discloses a composition comprising 50%
benzenoid material and 5% essential oils, but does not specify which ones
were used (id. at 3, ¶33). Librizzi also teaches salivary cortisol testing to
look at the effect of the composition on reducing cortisol level (id. at 5,
Example 8).
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Thus, we agree with the Examiner (Ans. 4) that it would have been
well within the level of skill of the ordinary artisan to combine lavender oil
and 2-phenoxyethanol to arrive at a composition for promoting relaxation in
view of the teachings of Librizzi. While Librizzi teaches a number of
different compounds that may be used as the odiferous component, the
ordinary artisan would understand that any of the odiferous components
could be used in a composition with any of the essential oils. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). “What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid
under § 103.” Id. at 419. See also Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985) (affirming obviousness rejection of claims in light of prior art teaching
that “hydrated zeolites will work” in detergent formulations, even though
“the inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”).
Moreover, the fact that Librizzi teaches compositions that fall outside
the scope of Appellants claims is not relevant to the obviousness analysis.
All the prior art need do is render obvious a composition that falls within the
scope of Appellants’ claimed composition. KSR, 550 U.S. 419.
As to the claimed ratio of that “the weight percentage of Group A
materials to Group B materials based on the total weight of the composition
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lie[ ] within the range 2: 1 to 1 :2,” as acknowledged by Appellants, Librizzi
teaches compositions wherein sensory fragrance comprises from about
0.01 % to about 30% by weight of the essential oil component and from
about 70% to about 99.99% by weight of the odiferous component. Librizzi
also teaches that the compositions are to be used to reduce stress and are
capable of reducing cortisol levels. Thus, we again agree with the Examiner
(Ans. 4-5) that it would have been well within the level of skill of the
ordinary artisan to optimize the ratio of essential oil, i.e., lavender oil, to the
odiferous component, i.e., the 2-phenoxyethanol, to obtain a composition
that reduces stress and is also capable of reducing cortisol levels. See, e.g.,
In re Boesch 17 F.2d 272, 276 (CCPA 1980) (noting that determining the
optimum values of result effective variables is ordinarily within the skill of
the art); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Appellants also argue that “Librizzi does not hint at or suggest the
advantages associated with the improved stress-relieving compositions
encompassed by Appellants’ claim 12 as described in, for example,
paragraph [0055] of Appellants’ published specification” (App. Br. 15).
Appellants’ arguments are not convincing. Paragraph 55 discloses the
results of Example 2 (Spec. 12). According to the Specification, “[t]ypical
cortisol levels in the control group were in the range 1 ng/ml to 2 ng/ml.
Cortisol levels for group A were typically above 3 ng/ml, whilst those for
group B were typically lower than 3, indicating a stress reduction” (id. at
13). But as noted above, Librizzi also teaches reduction in stress and
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cortisol levels. And to the extent that Appellants are arguing unexpected
results, it is well settled that results must be established by factual evidence,
such as evidence that the results are unexpected when compared to the
closest prior art. In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991). Mere argument or conclusory statements in the specification does
not suffice. In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants further assert that “the sensorial effect of perfumes and the
particular effects they have on mood is highly complex and not easily
predicted” (App. Br. 16). Appellants cite Example 4 of U.S. Patent
6,835,709, which Appellants argue discloses a stimulating composition that
has lavender as a component, asserting that “a relaxing ingredient can
nevertheless form part of an overall stimulating composition” (id.).
Appellants arguments are not convincing as Appellants have not
demonstrated how Example 4 of Shoji is encompassed by the teachings of
Librizzi other than noting that both Shoji and Librizzi use lavender oil. And
as noted by the Examiner (Ans. 9), Shoji teaches the use of other ingredients
that are not taught by Librizzi. Moreover, Librizzi specifically teaches
relaxing compositions, and teaches methods to test the compositions to
determine if they reduce cortisol levels, thus providing a reasonable
expectation of success of obtaining a composition that is relaxing. See In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)
(noting that all that is required is a reasonable expectation of success, not
absolute predictability of success).

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As to claims 21-23, Appellants reiterate the arguments made with
respect to claim 12 (App. Br. 17). Those arguments are not persuasive for
the reasons set forth above. Appellants also recite the limitations of each of
the dependent claims (id. at 17), but merely pointing out differences in what
the claims cover is not an argument as to why the claims are separately
patentable. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
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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