Ex Parte Sakuta

Board of Patent Appeals and Interferences

Sep 30, 2010

10781710 (B.P.A.I. Sep. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KOJI SAKUTA
__________

Appeal 2010-002718
Application 10/781,710
Technology Center 1600
__________

Before ERIC GRIMES, CAROL A. SPIEGEL, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to non-
aqueous dermatic cosmetic materials. The Examiner has rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Specification discloses cosmetic materials comprising “a paste
composition comprising a three-dimensionally cross-linked silicone polymer
and a silicone oil” (Spec 1:2-5).
Claims 8-50 and 52-57 are on appeal. Claims 8 and 24 are
representative and read as follows:
8. A non-aqueous dermatic cosmetic material for perspiration control,
comprising:
(A) 100 parts by weight of a silicone composition paste comprising (i)
a crosslinked silicone polymer having hydrophilic polyoxyalkylene groups
wherein polyoxyethylene moieties are comprised and (ii) a silicone oil, and
(B) 50 to 500 parts by weight of an aluminum compound having a
perspiration control activity,
wherein said material is non-aqueous.

24. A non-aqueous dermatic cosmetic material, comprising:
(A) 100 parts by weight of a silicone composition paste comprising (i)
a crosslinked silicone polymer having hydrophilic polyoxyalkylene groups
wherein polyoxyethylene moieties are comprised and (ii) a silicone oil,
(C) [sic] 100 to 1,000 parts by weight of lower alcohol,
(E) [sic] 100 to 1,000 parts by weight of a silicone oil having a
viscosity of at most 100 mm2/s at 25°C, and
(F) 0.5 to 100 parts by weight of vitamin C,
wherein said material is non-aqueous.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 8-23 in view of Sakuta2 and Shin;3
• Claims 24-47, 50 and 52-57 in view of Sakuta and Powell;4 and
• Claims 8-50 and 52-57 in view of Sakuta and Kilgour.5

2 Sakuta, EP 0 501 791 A2, Feb. 27, 1991
3 Shin, US 4,937,069, June 26, 1990
4 Powell et al., US 6,060,546, May 9, 2000
5 Kilgour, US 6,262,170 B1, July 17, 2001
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I.
Issue
The Examiner has rejected claims 8-23 under 35 U.S.C. § 103(a) as
being obvious in view of Sakuta and Shin. Claims 9-23 have not been
argued separately and therefore stand or fall with claim 8. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner finds that Sakuta discloses the silicone composition
paste recited in part (A) of claim 8 and its use in cosmetics (Answer 3-4).
The Examiner further finds that Sakuta discloses nonaqueous compositions
as recited in claim 8 that are formed as intermediates in the process of
making an aqueous final product (id. at 10). The Examiner finds that Shin
“discloses anhydrous compositions comprising silicone oils” and
“antiperspirant actives such as aluminum compounds” (id. at 4). The
Examiner concludes that it “would have been obvious to one of ordinary
skill in the art to have used the aluminum compounds in conjunction with
the compositions of the primary reference” because Sakuta discloses the
paste composition as a base for cosmetic ingredients and aluminum
antiperspirant compounds are known cosmetic ingredients (id. at 5).
Appellant contends that Sakuta does not disclose or suggest a non-
aqueous cosmetic composition (Appeal Br. 5-6) and the Examiner has not
provided a reason to combine Sakuta’s composition with the antiperspirant
active agent disclosed by Shin (id. at 6-7). Appellant also contends that the
references do not suggest the recited relative amounts of paste composition
and aluminum compound (id. at 8).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that one of ordinary skill in the art
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would have considered it obvious to combine Sakuta’s paste with Shin’s
aluminum compound, in the recited relative amounts, to form a non-aqueous
composition?
Findings of Fact
1. Sakuta discloses “pasty silicone oil compositions which comprise
… silicone polymers and silicone oils and are able to stably and uniformly
disperse water therein” (Sakuta 2: 5-7).
2. Sakuta discloses that the “silicone polymer has wide utility in the
fields of cosmetics and medicines” (id., abstract).
3. Sakuta discloses that the pasty “composition is able to stably
disperse powders or pigments therein without settlement as would otherwise
be settled down in silicone oils owing to the difference in density between
the silicone oil and the powder or pigment” (id. at 5: 25-27).
4. Sakuta discloses that “water is also dispersable in the composition
without resorting to any surface active agent, so that the composition will be
useful as a base for creams and cake-shaped moldings for cosmetics” (id. at
5: 28-29).
5. Shin discloses a “substantially anhydrous semi-solid antiperspirant
composition” (Shin, abstract).
6. Shin discloses that the “principal active ingredient in the
antiperspirant stick compositions … is, of course, the antiperspirant material
in the powdered state. This will ordinarily take the form of astrigent [sic]
aluminum or zirconium compounds or complexes or mixtures thereof” (id. at
col. 2, ll. 51-55).
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Principles of Law
“It is not inventive to discover the optimum or workable ranges by
routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
Claim 8 is directed to a non-aqueous material that comprises 100 parts
by weight of a silicone paste and 50 to 500 parts by weight of an aluminum
compound with perspiration control activity.
Sakuta discloses a silicone paste for use as a cosmetic base. Sakuta
also discloses that its silicone paste can be used to stably disperse powders.
Shin discloses an antiperspirant composition that comprises powdered
aluminum compounds or complexes as the antiperspirant agent. In view of
these disclosures, it would have been obvious to combine Sakuta’s cosmetic
composition with the aluminum powder of Shin to form an antiperspirant
cosmetic composition, because the combination merely uses known
elements for their known functions.
Appellant argues that Sakuta “does not disclose or suggest a non-
aqueous cosmetic composition” (Appeal Br. 5). Appellant further argues
that “the disclosure of Sakuta is directed to aqueous cosmetic compositions
wherein water is dispersed in the pasty silicone composition” (id.).
This argument is not persuasive. Even though Sakuta discloses that
the pasty composition can contain dispersed water, Sakuta also discloses that
the pasty composition can be used to disperse powders. Thus, it would have
been obvious to one of ordinary skill in the art use Sakuta’s pasty
composition as a base for cosmetically active powders, including the
antiperspirant aluminum compound of Shin. As the Examiner pointed out
(Answer 10), the resulting nonaqueous composition would meet the
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limitations of the claims, even if it was intended to be mixed with water in a
later stage of manufacturing.
Appellant also argues that the Examiner has not provided a reason to
combine Sakuta’s composition with the antiperspirant active agent disclosed
by Shin (Appeal Br. 6-7). In particular, Appellant argues that “the rejection
presents no rationale as to why one would disperse an antiperspirant
compound in the intermediate non-aqueous composition rather than
dispersing the antiperspirant compound in the water which is to be mixed
with the nonaqueous composition to form the final product” (id. at 6).
This argument is not persuasive. Shin discloses that its antipersipirant
active agents are in a powdered state and Sakuta discloses that its paste
stably disperses powders, so it would have been obvious to a skilled artisan
to disperse the powder in the paste before adding water. Sakuta, in fact,
teaches mixing powdered components with its silicone paste before mixing
with water (see Sakuta 8: 30-58).
Finally, Appellant also argues that Sakuta does not suggest the
relative amounts of paste composition and aluminum compound that are
recited in claim 8 (Appeal Br. 8). However, one of skill in the art would
understand that the ratio of silicone paste to antiperspirant agent is a result
effective variable that would be optimized in the course of determining a
final antiperspirant formulation. Appellant has pointed to no evidence of
unexpected results for the relative amounts recited in the claims.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one
of ordinary skill in the art would have considered it obvious to combine
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Sakuta’s paste composition with Shin’s aluminum compound, in the recited
relative amounts, to form a non-aqueous composition.
II.
Issue
The Examiner has rejected claims 24-47, 50, and 52-57 under 35
U.S.C. § 103(a) as being obvious in view of Sakuta and Powell. Claims 25-
47, 50 and 52-57 have not been argued separately and therefore stand or fall
with claim 24. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Sakuta as discussed above. The Examiner
finds that Powell discloses non-aqueous silicone emulsions for use in
personal care compositions, including antiperspirant compositions, that
“may comprise ascorbic acid” (Answer 6). The Examiner concludes that it
“would have been obvious to one of ordinary skill in the art to have used the
aluminum compounds and the ascorbic acid in conjunction with the
compositions of the primary reference motivated by the desire to use
personal care actives for their known function” (id. at 7).
In addition to the arguments made with respect to the first
obviousness rejection, Appellant contends that the cited references would
not have suggested combining Powell’s vitamin C with Sakuta’s
composition with a reasonable expectation of success (Appeal Br. 11-12).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that one of ordinary skill in the art
would have considered it obvious to combine Sakuta’s paste with Powell’s
vitamin C, with a reasonable expectation of forming the claimed
composition?
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Additional Findings of Fact
7. Powell discloses a “non-aqueous silicone emulsion containing a
silicone phase and an organic phase [that] is useful as a component in
various personal care compositions” (Powell, abstract).
8. Powell discloses that the “personal care applications where the
emulsions of the present invention may be employed include … deodorants,
antiperspirants, skin care products,” etc. (Id. at col. 16, ll. 45-52.)
9. Powell discloses that “[i]n a preferred embodiment, a personal care
composition comprises non-aqueous emulsion of the present invention and
one or more water-sensitive dermatological active agents or cosmetic active
agents, such as for example, ascorbic acid” (id. at col. 16, l. 64-col. 17, l. 1).
Principles of Law
“Obviousness does not require absolute predictability of success…
For obviousness under § 103, all that is required is a reasonable expectation
of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988).
Analysis
Claim 24 is directed to a non-aqueous material, comprising a silicone
composition paste, a lower alcohol, a silicone oil, and vitamin C. Appellant
does not dispute that combining Sakuta’s silicone paste with a lower alcohol
and silicone oil would have been obvious, or that silicone oils with claimed
viscosity are suggested by the cited references. We agree with the Examiner
that it would have been obvious to one of ordinary skill in the art to combine
ascorbic acid (vitamin C) with Sakuta’s silicone paste cosmetic base because
Powell discloses that ascorbic acid is a known dermatological or cosmetic
active agent useful in silicone-based personal care compositions.
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Appellant argues that “the rejection presents no rationale as to why
one would disperse vitamin C in the intermediate non-aqueous composition
rather than dispersing the antiperspirant compound [sic, vitamin C] in the
water which is to be mixed with the non-aqueous composition to form the
final product” (Appeal Br. 11).
This argument is not persuasive. Powell discloses that ascorbic acid is
a “water-sensitive” dermatological or cosmetic active agent. Thus, one of
skill in the art would have considered it obvious to combine vitamin C with
Sakuta’s non-aqueous cosmetic base composition rather than water.
Appellant further argues that in view of the “problems associated with
stabilizing … vitamin C in skin care composition is described in applicants'
specification at pages 1-3[,]… one of ordinary skill in the art would have no
expectation that the silicone composition of Sakuta would be suitable for
stabilizing … vitamin C in skin care compositions” (Appeal Br. 11).
This argument is not persuasive. The Specification states that “the
water solution of vitamin C … is inferior in storage stability” (Spec. 3: 13-
15) and that “it is difficult to obtain homogeneous dispersions” when
vitamin C dispersed in alcohol is combined with silicone oil (id. at 3: 18-22).
However, Appellant has not explained why either of these factors would
have led a skilled worker to doubt the success of including vitamin C in
Sakuta’s composition, even if the composition might have less storage
stability or homogeneity than other vitamin C-containing compositions that
could be made. In accord with In re O’Farrell, obviousness only requires a
reasonable expectation of success.
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Appellant’s arguments regarding the “non-aqueous” limitation of
claim 24 (Appeal Br. 9-11) and the relative amounts recited in claim 24 (id.
at 13) are addressed above with respect to claim 8.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one
of ordinary skill in the art would have considered it obvious to combine
Sakuta’s paste with Powell’s vitamin C, with a reasonable expectation of
forming the claimed composition.
III.
Issue
The Examiner has rejected claims 8-50 and 52-57 under 35 U.S.C.
§ 103(a) as obvious in view of Sakuta and Kilgour. Claims 9-50 and 52-57
stand or fall with claim 8, and claims 25-47, 50 and 52-57 stand or fall with
claim 24. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Sakuta as discussed above. The Examiner
finds that Kilgour “discloses personal care compositions comprising silicone
elastomers” (Answer 7). The Examiner further finds that the Kilgour
compositions include aluminum antiperspirant compounds and vitamin C as
active ingredients (id. at 7-8). The Examiner concludes that it “would have
been obvious to one of ordinary skill in the art to have used the aluminum
compounds and vitamins C and E in conjunction with the compositions of
the primary reference motivated by the desire to use personal care actives for
their known function” (id. at 8).
In addition to the arguments made with respect to the first
obviousness rejection, Appellant contends that the silicone compositions of
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Sakuta and Kilgour are so different that one of skill in the art would not be
motivated to apply the active agents of Kilgour to the silicone paste
composition of Sakuta (Appeal Br. 14).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that one of skill in the art would
have considered it obvious to combine Sakuta’s paste with Kilgour’s
aluminum compounds and vitamin C active agents?
Additional Findings of Fact
10. Kilgour discloses “a cross-linked alkyl substituted silicone
elastomer” (Kilgour, col. 1, l. 25-31) that may be used in personal care
compositions (id. at col. 1, ll. 59-61).
11. Kilgour discloses that the “personal care applications where the
silicone elastomer of the present invention may be employed include, but are
not limited to, deodorants, antiperspirants,” etc. (id. at col. 7, l. 65 to col. 8,
l. 1).
12. Kilgour discloses that “[i]n a preferred embodiment, an
antiperspirant composition comprises one or more active antiperspirant
agents, such as, for example, aluminum halides … and the silicone elastomer
of the present invention.” (Id. at col. 8, ll. 19-26.)
13. Kilgour discloses that “[i]n a preferred embodiment, a personal
care composition comprises a non-aqueous emulsion of the silicone
elastomer of the present invention and one or more water-sensitive
dermatological active agents or cosmetic active agents, such as for example,
ascorbic acid” (id. at col. 8, ll. 39-43).
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Analysis
Claims 8 and 24 are set forth above. As discussed above, Sakuta
discloses a silicone paste, for use as a cosmetic base, that can be used to
stably disperse powders or pigments. Kilgour discloses silicone-based
compositions as a base for personal care compositions, including
compositions comprising ascorbic acid or aluminum antiperspirant active
agents. In view of these disclosures, it would have been obvious to one of
skill in the art to combine Sakuta’s paste composition with either ascorbic
acid or an aluminum antiperspirant compound to form cosmetic
compositions containing these active ingredients, because the combination
merely uses known elements for their known functions.
Appellant argues that the “silicone elastomer described in Kilgour is
hydrophobic since it does not have any hydrophilic groups.… [O]ne of
ordinary skill in the art would not modify the composition of Sakuta in view
of the Kilgour reference, since the oxyalkylene unit-containing silicone of
Sakuta is completely different physically.” (Appeal Br. 14.)
This argument is not persuasive. Appellant has pointed to no
disclosure in Kilgour to support the conclusion that Kilgour’s vitamin C and
antiperspirant active agents could not be combined with Sakuta’s silicone
paste composition which, like Kilgour’s composition, is silicone based and
disclosed for use with personal care active ingredients. Thus, the evidence
supports the Examiner’s position that one of skill in the art would reasonably
expect the Sakuta silicone-based composition to serve as a carrier for the
active ingredients disclosed in Kilgour.
Appellant’s argument regarding the relative amounts recited in claims
8 and 24 (Appeal Br. 14-15) is addressed above with respect to claim 8.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that one
of skill in the art would have considered it obvious to combine Sakuta’s
paste with Kilgour’s aluminum compounds and vitamin C active agents.
SUMMARY
We affirm the rejection of claims 8-50 and 52-57 under 35 U.S.C.
§ 103(a).
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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