Ex Parte Peters et al

Patent Trial and Appeal Board

Mar 23, 2017

13745433 (P.T.A.B. Mar. 23, 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.
13/745,433 01/18/2013 Ann-Sophie PETERS 3321-P50034 4713
13897 7590 (
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
AKHOON, KAUSER M
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
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 ANN-SOPHIE PETERS and HEINER GERS-BARLAG
Appeal 2016-003577
Application 13/745,4331
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for producing a cosmetic preparation. The Examiner rejected the claims on
appeal as obvious under 35 U.S.C. § 103(a).
We affirm-in-part.
1 According to Appellants, the real party in interest is Beiersdorf AG. App.
Br. 3.
Appeal 2016-003577
Application 13/745,433
STATEMENT OF THE CASE
Claims 1—19 and 21 are on appeal. Claim 1, the only independent
claim, is illustrative and reads as follows:
1. A process for producing a cosmetic preparation, wherein
the process comprises combining a cosmetic base with one or
more cosmetic partial preparations or active ingredient
concentrates, and thereafter centrifuging it in a package
intended for an end user in a dually asymmetric centrifuge to
distribute the one or more cosmetic partial preparations or
active ingredient concentrates uniformly within the cosmetic
base.
App. Br. 16.
The claims stand rejected as follows:
Claims 1—6, 9, 12, and 14—19 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shana’a2 and Massing;3
Claims 7—11 and 13 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Shana’a, Massing, and Pfluecker;4 and
Claim 21 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Shana’a, Massing, and Downs.5
OBVIOUSNESS OVER SHANA’A AND MASSING
Appellants argue claims 1—6, 9, 12 and 14—19 together as a group.
We designate claim 1 as representative of the group.
2 Shana’a et al., US Patent Publication No. 2002/0131985 Al, published
Sept. 19, 2002 (“Shana’a”).
3 Massing, US Patent Publication No. 2008/0193511 Al, published Aug. 14,
2008 (“Massing”).
4 Pfluecker et al., US Patent Publication No. 2010/0209463 Al, published
Aug. 19, 2010 (“Pfluecker”).
5 Downs et al., US Patent Publication No. 2002/0132354 Al, published Sept.
19, 2002 (“Downs”).
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Application 13/745,433
The Examiner found that Shana’a disclosed “a process for producing a
cosmetic preparation by combining a personal care base composition
(cosmetic base) with a second class of performance agents (one or more
active ingredients concentrate) (page 1, paragraph [0014]) and mixing until
the product is uniform (page 2, paragraph [0015]).” Ans. 4. The Examiner
concluded that Shana’a disclosed all of the elements of claim 1 with the
exception that it did not disclose “the step of centrifuging it in a package for
[an] end user in a dually asymmetric centrifuge.” Id.
The Examiner found that Massing disclosed a “process of producing
lipid-based nanoparticles using a dual asymmetrical centrifuge.” Id. The
Examiner concluded:
[I]t would have been obvious to one having ordinary skill in the
art at the time of the instant invention to have produced a
cosmetic preparation using the process of combining a cosmetic
base with an active agent concentrate as taught by Shana’a by
centrifugation using the dual asymmetric centrifuge [DAC]
taught by Massing with a reasonable expectation of success.
One having ordinary skill in the art would have been motivated
to combine the teaching of Shana’a and Massing because
Massing teaches that the use [of a] dual asymmetric
centrifugation process as a mixer is well suited to prepare
compositions because DAC is better, more flexible, allows for
sterile work and prevents incorporation of air (page 13,
paragraph [0190]).
Id. at 5.
Appellants argue that there would have been no motivation to
combine the disclosures of Shana’a and Massing because Massing is non-
analogous art with respect to Shana’a and with respect to the present
invention. App. Br. 6. Appellants argue that there is “no apparent
relationship between a system for providing a customized personal care
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Application 13/745,433
product to a consumer at a location that is remote from a second location in
which a personal care product base composition is prepared [as disclosed in
Shana’a]. . . and a process for manufacturing of lipid based nanoparticles
[as disclosed in Massing].” Id. at 6—7.
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). “Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). “A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d at
659.
Here, we find that Massing is from the same field of endeavor as the
inventor’s — i.e., the preparation of cosmetics. Massing expressly states that
its method has application to the preparation of cosmetics. Massing 1190
(“Further fields of application of the process according to (1) in addition to
the preparation of nanoparticles include the preparation of creams,
ointments, pastes and other semisolid formulations of medicaments and
cosmetics . . . .”). In addition, the Massing disclosure includes multiple
references to cosmetic compositions and methods of making the same. See
e.g., Massing | 5 (stating that “a use in cosmetics is possible” for its lipid-
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Application 13/745,433
based nanoparticles); 135 (indicating that Massing’s invention relates to the
use of its lipid-based nanoparticles “for manufacturing pharmaceutical,
cosmetic, diagnostic compositions and compositions useful in plant
protection or as food stuff’); 1 62 (defining active compounds “within the
meaning of the present invention” to include “the active substances used in
cosmetics, plant protection and therapy”); 1182 (teaching that “[f]or the use
(8) in cosmetics, the lipid-based nanoparticles preferably include SiC>2
particles”). Accordingly, we find that Massing and the process claimed by
Appellants relate to the same field of endeavor.
Appellants argue that Shana’a does not disclose that its mixing device
is inadequate and thus the person of ordinary skill would not have been
motivated to replace it. App. Br. 8. We are not persuaded. Massing clearly
teaches the benefits of using a dual asymmetric centrifuge, stating:
[W]ith respect to the preparation of creams etc., the process
according to the invention including a DAC [dual asymmetric
centrifuge] is better, more flexible (use of different vessels
including upside-down-filled collapsible tubes and syringes),
allows for sterile work and prevents the incorporation of air, as
compared to the Unguator®, which is frequently employed
today.
Massing 1190. These benefits provide sufficient reason for a person of
ordinary skill to use a dual asymmetric centrifuge in place of the mixing
device disclosed in Shana’a.
Appellants contend that the benefits of using a dual asymmetric
centrifuge are not relevant to preparation of a “(conventional) cosmetic
composition (i.e., a composition which does not have to be sterile and does
not have to be entirely free of gas bubbles therein).” App. Br. 8. But the
claims are not limited to “conventional cosmetic compositions.” Moreover,
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Massing teaches that its method has significant benefits and, as discussed
above, teaches the applicability of its method to cosmetics. In addition,
Appellants do not provide persuasive evidence that the benefits disclosed in
Massing would not have applicability to cosmetics. See, Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no
substitute for evidence.”); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). Accordingly, we affirm the Examiner’s rejection of claim 1.
Because they were not argued separately claims 2—6, 9, 12, and 14—19 fall
with claim 1.
OBVIOUSNESS OVER SHANA’A, MASSING AND PFLUECKER
Appellants argue that dependent claims 7—11 and 13 are patentable
because Pfluecker does not cure the deficiencies in the combination of
Shana’a and Massing discussed in connection with claim 1. App. Br. 11.
Accordingly, we affirm the Examiner rejection of claims 7—11 and 13 for the
reasons discussed in connection with claim 1.
OBVIOUSNESS OVER SHANA’A, MASSING, AND DOWNS
Claim 21 depends from claim 1 and adds the requirement “wherein an
intelligent label provides information regarding at least one of appropriate
centrifuging speed and appropriate centrifuging time and this information is
read by the dually asymmetric centrifuge.” App. Br. 19. The Examiner
found that Downs disclosed that “automated programmable centrifuge[s]”
were known in which a barcode — i.e. an “intelligent label” — is incorporated
“with a bar code reading system[ ].” Final Act. 13. The Examiner
concluded that “it would have been obvious to one having ordinary skill in
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Application 13/745,433
the art at the time of the instant invention to use the process taught by
Shana’a and Massing with an intelligent label (barcode or RFID) as taught
by Downs.” Id. The Examiner concluded that the content of the intelligent
label — centrifuge speed and time — did not distinguish the claimed method
over the art because the content of the label was non-functional printed
matter. Id. (citing In reNgai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Appellants argue, inter alia, that the passage of Downs relied upon by
the Examiner “does not even indicate that the barcode or color is to be read
by the centrifuge.” App. Br. 14. The passage relied upon by the Examiner
reads as follows:
The systems, devices and methods of the present invention
optionally include means or steps for recognizing specific tubes
or vessels, or groups of tubes or vessels, as they are placed into
the centrifuge and/or mechanisms or steps for indexing or
tracking one or more tubes or vessels as they are transferred
from the centrifuge to another system, device or method, for
example a fermentor. For example, the system, device or
method may incorporate barcodes or colors to achieve the
above, either manually or robotically.
Downs 193. We agree with Appellants that there is nothing in this passage
that suggests that the centrifuge reads the barcode or recognizes the color.
Indeed, this passage suggests that the centrifuge does not read the intelligent
label. If the centrifuge was intended to read the label, Downs likely would
have simply said so. Instead, Downs references “means or steps for
recognizing specific tubes or vessels” and describes a “system, device or
method” that recognizes tubes or vessels “manually or robotically.” Id.
Neither the Final Action nor the Answer provides any explanation of
how the limitation “this information is read by the dually asymmetric
centrifuge” is met by, or obvious in view of, Downs. Absent such an
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Application 13/745,433
explanation, we find that the Examiner has not met the burden of
establishing that claim 21 is obvious over the combination of Shana’a,
Massing, and Downs. Because this limitation is separate from the content of
the intelligent label, we need not reach the issue of whether the label
constitutes non-functional printed material. We similarly need not reach the
issue of whether it would have been obvious to include information
regarding centrifuge speed and/or time on the label. Accordingly, we
reverse the Examiner’s decision to reject claim 21.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, and
the Final Office Action, the Examiner’s decision to reject claims 1—19 is
affirmed.
For the reasons set forth herein, the Examiner’s decision to reject
claim 21 is reversed.
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).
AFFIRMED IN PART
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