Ex Parte Scala et al

Patent Trial and Appeal Board

Oct 13, 2016

11465525 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111465,525 08/18/2006
23909 7590 10/17/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Diana Scala
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.
7585-00-PC 1402
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANA SCALA, LIEM VU,
THOMAS J. BOYD, REGINA HOURIGAN,
SAYED IBRAHIM, and ARIEL HASKEL
Appeal2015-004088
Application 11/465,525
Technology Center 1600
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving a composition
comprising a transparent or translucent solid cleanser base. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as the Colgate-Palmolive
Company (see Br. 2).
Appeal2015-004088
Application 11/465,525
Statement of the Case
Background
"The compositions of the invention comprise a cleanser base (e.g.,
soap) (also referred to as 'cleansing material') containing film in desired
fragment sizes and shapes. The film fragments or pieces may be of a desired
thickness. The film preferably includes a film-forming material and a
functional material." (Spec. i-f 5).
The Claims
Claims 1, 5, 10, and 11 are on appeal. 2 Claim 1 is representative and
reads as follows:
1. A composition comprising a transparent or translucent
solid cleanser base comprising 10 to 98% soap, a humectant,
and optionally a surfactant, and a plurality of film pieces,
wherein the composition has a moisture content of 22% or less
and a softness/hardness rating of :S 2, wherein the film pieces
and the cleanser base differ in their respective refractive
indices, the film pieces comprise a water-soluble polymer
selected from the group consisting of methyl cellulose, ethyl
methyl cellulose, hydroxyalkyl celluloses, hydroxyalkyl alkyl
celluloses, carboxyalkyl celluloses, and combinations thereof,
the film pieces comprise a layer having a first additive and at
least one more layer having another additive different from the
first additive, wherein the first additive is selected from the
group consisting of a pigment, a dye, a pearlescent colorant, or
a water-soluble dye contained within a water-insoluble material,
and wherein the film pieces have an aspect ratio of at least
about 5:1.
2 Claims 20 and 21 were withdrawn (see Br. 6).
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Appeal2015-004088
Application 11/465,525
The Issue
The Examiner rejected claims 1, 5, 10, and 11under35 U.S.C.
§ 103(a) as obvious over Demson3 and Boyd4 (Final Act. 2--4).
The Examiner finds Demson teaches "a translucent soap bar
comprised of a soap mixture, the humectant glycerin, and water" where the
"soap mixture is present from about 65 to about 80 wt% and the water is
present in from about 12 to about 16%" (Final Act. 2). The Examiner finds
that Demson teaches "further inclusion of one or more conventional
additives such as dyes" (id.).
The Examiner acknowledges that Demson "does not teach the further
inclusion of the film pieces" or "the softness/hardness ratio" (id.).
The Examiner finds that Boyd teaches "personal care compositions
that comprise a film or film fragment" and that "the films can comprise more
than one layer, where for example the polymeric film can have a first layer
comprising a polymer and one or more additional coating layers like a
shellac coating" (Final Act. 3). The Examiner finds that Boyd teaches
"colorants taught as useful in the films include pigments" and "the polymer
used is a film forming polymer such as hydroxypropyl methyl cellulose"
(id.).
The Examiner finds it obvious to "have used the film fragments taught
by Boyd et al. in the soap disclosed by Demson et al. The inclusion of these
3 Demson et al., US 6,706,675 Bl, issued Mar. 16, 2004
("Demson").
4 Boyd et al., US 2004/0136924 Al, published July 15, 2004
("Boyd").
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Appeal2015-004088
Application 11/465,525
colored film fragments would improve the aesthetic appeal of the personal
care item" (Final Act. 3). The Examiner further finds that "the
softness/hardness ratio is a result of the fragments used in the soap. And
while neither Demson et al. nor Boyd et al. disclose this value, it appears
reasonable to conclude that the film fragments taught by Boyd et al. would
afford this property" (id. at 4).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Demson and Boyd render the
composition of claim 1 obvious?
Findings of Fact
1. Demson teaches "[ t ]ranslucent soap bars are popular among
consumers for their aesthetic appeal and their connotation of purity and high
moisture content" (Demson 1: 19--21 ).
2. Demson teaches that the "soap bar includes, by weight, about
65 to about 80% of a soap mixture," "about 4.5 to about 8.5% glycerin," and
"about 12 to about 16% water" (Demson 2: 1-5).
3. The Specification teaches the "cleansing material may also
include ... a humectant. Exemplary of these materials are ... glycerin"
(Spec. if 39).
4. Demson teaches that the "translucent soap bar composition may
comprise one or more other conventional processing aids and conventional
additives, including ... dyes" (Demson 3:54--57).
5. Boyd teaches "personal care compositions, and more
particularly to compositions comprising a film entrained in a carrier" and
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Appeal2015-004088
Application 11/465,525
that "the composition can be suitable for use as ... a skin care composition"
(Boyd ifif 2, 7).
6. Boyd teaches "the aesthetic appeal of all such compositions is
important, and can have significant effects on consumer acceptance and
usage" (Boyd if 5).
7. Boyd teaches "a film comprises at least one film forming
material. In certain embodiments, a film forming material is a polymer" and
that polymers include "hydroxyalkyl cellulose polymers such as
hydroxypropyl methyl cellulose (HPMC), hydroxypropyl cellulose,
hyrdoxyethyl cellulose, methyl cellulose, carboxymethyl cellulose, and
mixtures thereof' (Boyd iii! 19, 20).
8. Boyd teaches that the "fragments exhibit perceivable contrast
with the carrier. The perceivable contrast can be sensory contrast, such as
optical contrast ... , optical contrast can be color contrast, or a difference in
refractive index or reflective index" (Boyd if 25).
9. Boyd teaches in "various embodiments, the film comprises a
formulation colorant, that imparts a color to the film, the composition, or
both" including "water soluble dyes or pigment" (Boyd if 33).
10. Boyd teaches that in "one embodiment, the film comprises
more than one layer. For example, a film can comprise a first layer
comprising a polymer, one or more additional layers that provide a coating"
(Boyd if 42).
11. Boyd teaches that the "compositions of the present invention
comprise fragments having an aspect ratio of at least about 5: 1" (Boyd if 31 ).
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Appeal2015-004088
Application 11/465,525
12. The Specification teaches that hydroxypropyhnethyl cellulose
films were rated with softness/hardness of 0 to 1 (see Spec. i-f 61 ).
Principles of Law
Such picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art.
In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972).
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
... Whether the rejection is based on "inherency" under 35
U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C.
§ 103,jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnotes
omitted).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2--4; FF 1-12) and agree that
the claims are obvious over Demson and Boyd.
Appellants contend that "[ t ]here is no disclosure or suggestion of
making the selections for all 10 elements together such that the combination
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Application 11/465,525
is in the possession of the public without the need for picking and choosing
from among all of the variables" and that "too much picking and choosing is
needed to select and combine all 10 elements from among all of the
variables" (Br. 3).
We do not find this argument persuasive because the Examiner
provides specific reasons for incorporating Boyd's entrained film into
Demson's translucent soap including improved aesthetic appeal, a concern
of both Boyd and Demson (FF 1, 6; cf Final Act. 3). "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'! Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). Here, modifying Demson's translucent soap
using Boyd's films designed for skin care compositions (FF 1, 5) while
selecting specific options disclosed by Boyd falls squarely within KSR's
guidance that predictable combination of known elements are likely obvious.
Appellants provide no evidence of secondary considerations or other
arguments rebutting the Examiner's prima facie obviousness determination.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Demson and Boyd render the composition of claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Demson and Boyd. Claims 5, 10, and 11 fall with
claim 1.
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Appeal2015-004088
Application 11/465,525
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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