Ex Parte Spadini et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10730218 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALESSANDRO LUIGI SPADINI, MELISSA IVA KATZ,
DAVID ROBERT WILLIAMS, MARCINA SICILIANO,
EVAN HILLMAN, ANDRE PULEO, and MEGAN KATHLEEN HURLEY
__________

Appeal 2011-012817
Application 10/730,218
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a skin care or cleansing composition. The Patent
Examiner rejected the claims for anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-012817
Application 10/730,218

2
STATEMENT OF THE CASE
Claims 1, 3-6, 9, and 11-16 are on appeal. Claim 1 is representative
and reads as follows:
1. A skin care or cleansing composition, comprising:
(a) a dispersed phase including a first component, and a second
component that is different from the first, the first component
being capable of chemically reacting with the second
component;
(b) a continuous phase present in the composition composed of
a substantially anhydrous carrier;
(c) an organophilic particle stabilizer contained in the dispersed
phase;
(d) wherein the first component is substantially unsolvated in the
carrier;
(e) an anionic surfactant in a concentration of at least 2% by wt.
when the organophilic particle stabilizer consists solely of
waxy particles; and
(f) wherein the first and second components do not substantially
react with water or each other until dispersed or dissolved in
water during cleansing or skin treatment by a user.

The Examiner rejected the claims as follows:
 claims 1, 3, 5, 6, 9, and 11-13 under 35 U.S.C. § 102(b) as anticipated
by Farrell1 as evidenced by ChemBrief;2
 claims 1, 3-6, 9, 11-14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Farrell as evidenced by ChemBrief; and
 claim 15 under 35 U.S.C. § 103(a) as unpatentable over Farrell as
evidenced by ChemBrief, and further in view of Sun.3

1 Linda Farrell et al., US 6,063,390, issued May 16, 2000.
2 Optigel® SH Synthetic Silicate, 3 CHEMBRIEF issue 2 (published by
Southern Clay Products, Inc., June 2003.)
3 Ying Sun et al., US 2004/0062735 A1, filed Sept. 30, 2002.
Appeal 2011-012817
Application 10/730,218

3

DISCUSSION
One issue is dispositive for all the rejections.
The Examiner’s position is that Farrell’s Example 4 composition
anticipated most of Appellants’ claims (Ans. 5), and, by itself or in
combination with additional prior art, rendered all of the claims obvious.
Specifically, the Examiner found that Farrell’s composition comprised
(i) potassium carbonate and lactic acid, thus meeting claim elements 1a, 1b,
1d, and 1f; (ii) sodium sulfosuccinate, thus meeting element 1e; and
(iii) Optigel® SH, thus meeting element 1c. (Id.)
Appellants contend that Farrell did not disclose or suggest a
continuous phase and an organophilic particle stabilizer, claim elements 1b
and 1c, respectively. (App. Br. 6.) As to element 1b, Appellants contend
that Farrell disclosed a “simple powder blend,” but that “a continuous phase
is a liquid part of a disperse system that also contains a dispersed phase.”
(Id.)
The Examiner responds that “‘in any mixture’ of a dispersion or a
solution, the major component is called the continuous or external phase
wherein the ‘phases may be either solid, liquid or gaseous.’” (Ans. 9.) The
Examiner continues: “the term ‘continuous phase’ includes semi-solid, solid
and liquid phases. Farrell et al. teach a composition comprising anhydrous
lactic acid as the major component, thus constituting the continuous phase.”
(Id. at 10.) Put another way, the Examiner’s position is that the lactic acid in
Farrell’s composition does double duty: it is one component of Appellants’
dispersed phase and it is Appellants’ continuous phase. That is, in the
Appeal 2011-012817
Application 10/730,218

4
Examiner’s claim interpretation, claim elements 1a and 1b are not
necessarily distinct, and claim element 1a may subsume claim element 1b.
Claim 1 defines a composition comprising a dispersed phase (a) and a
continuous phase (b). The Specification describes these as separate entities:
it has been found that a skin care or cleansing composition can be
formulated which has a substantially solvated or continuous and a
substantially unsolvated, or discontinuous phase where at least the two
components of the discontinuous phase may either react with each
other when blended with water or ….

(Spec. 2, ll. 18-23.) We conclude that the broadest reasonable interpretation
of claim 1, read in light of the Specification, should not subsume element
(b), the continuous phase, into element (a), the dispersed phase. We
therefore agree with Appellants that Farrell did not describe a composition
anticipating claim 1. As all the rejections were based on an inappropriate
claim interpretation, they are reversed.

SUMMARY
We reverse the rejection of claims 1, 3, 5, 6, 9, and 11-13 under
35 U.S.C. § 102(b) as anticipated by Farrell as evidenced by ChemBrief.
We reverse the rejection of claims 1, 3-6, 9, 11-14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Farrell as evidenced by ChemBrief.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Farrell as evidenced by ChemBrief, and further in view of
Sun.

REVERSED

Appeal 2011-012817
Application 10/730,218

5

lp