Ex Parte Stella et al

Patent Trial and Appeal Board

Jul 9, 2018

13585890 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/585,890 08/15/2012
27752 7590 07/11/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Qing Stella
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.
12221M 5530
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
07/11/2018 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QING STELLA and JASON EDWARD COOK
Appeal2017-009272
Application 13/585,890 1
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LA VIER,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1-5, 7-11, and 13-15. We have jurisdiction
under 35 U.S.C. § 6(b ). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to methods of enhancing skin hydration in
non-diseased, dry skin. See Spec. 1: 15-18.
Claim 1 is illustrative, and recites:
1. A method of enhancing skin hydration, the method
comprising applying a rinse-off personal care composition
1 Appellants state the real party in interest is The Procter & Gamble Company.
Appeal Br. 1.
Appeal2017-009272
Application 13/585,890
comprising a) a cleansing phase; and b) a benefit phase,
wherein the benefit phase comprises petrolatum and at least one
of a zinc containing material and a pyrithione material, to non-
diseased skin of an individual.
Appeal Br. 6 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1, 2, 4, 7, 8, 11, and 15 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Focht2 in view of Morrison3 and
Bailey, 4 as evidenced by Vaseline. 5 Ans. 2.
2. Claims 3, 5, 9, and 10 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Focht in view of Morrison and Bailey, as
evidenced by Vaseline, further in view of Cutler6 and Vaseline.
Ans. 2-3.
3. Claim 13 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Focht in view of Morrison and Bailey, as evidenced by
Vaseline, further in view of Frantz. 7 Ans. 3.
4. Claim 14 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Focht in view of Morrison and Bailey, as evidenced by
2 Focht et al., US 2004/0057920 Al, published Mar. 25, 2004.
3 Morrison, Petrolatum: A Useful Classic, 111 COSMETICS & TOILETRIES 59
(1996).
4 Bailey et al., US 2003/0068289 Al, published Apr. 10, 2003.
5 Vaseline, Understanding and Overview of Dry Skin, published online Oct.
6, 2008 (of record).
6 Cutler, How to avoid dry skin from frequent hand washing (2008), available
at http://www.integrativehealthcare.org/mt/archives/
2008/05/5_solutions_how.html (last accessed Mar. 9, 2016).
7 Frantz et al., US 2005/0020468 Al, published Jan. 27, 2005.
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Application 13/585,890
Vaseline, further in view of Frantz, further in view of Cutler and
Puvvada. 8 Ans. 3--4.
DISCUSSION
The Examiner relies primarily on Focht, which teaches a rinse-off
cleansing composition comprising a cleansing phase of surfactant and water,
and a benefit phase containing hydrophobic material. Non-Final Act. 4. The
hydrophobic material may be petrolatum (id. ( citing Focht ,r,r 13, 79, 89, 99,
claim 9) ), and the benefit phase may include antimicrobial actives such as
zinc pyrithione (id. (citing Focht ,r,r 100, 123, 124)). The Examiner finds
that "Focht do[es] not specifically teach or exemplify an embodiment
wherein the benefit phase comprising at least one of a zinc containing
material and a pyrithione material is applied to non-diseased skin of an
individual as required by claim 1," for which the Examiner turns to the other
references. Non-Final Action 5. The Examiner finds "Morrison teaches
petrolatum was found to be the best material for relieving ordinary xerosis
( dry skin)," even in small amounts. Id. at 6 ( citing Morrison 59).
Furthermore:
Bailey teach zinc pyrithione can be used to increase the level of
lipids in the stratum comeum of the skin ( abstract; claims 1, 3
and 8). As evidenced by Vaseline, a loss of barrier (stratum
comeum) lipids correlates with increased skin dryness (What
happens when skin dries out). Bailey further teach increasing
the level of lipids strengthens the skin, meaning the resistance
of the skin to penetration by water is increased (paragraph
[0011 ]). The metal pyrithione may be applied to the skin in the
8 Puvvada et al., US 6,150,312, issued Nov. 21, 2000.
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Application 13/585,890
form of any composition suitable for topical application such as
rinse-off compositions (paragraphs [0026] and [0029]).
Non-Final Action 6.
As to the combination of references, the Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to specifically formulate a
rinse-off personal cleansing composition according to Focht
with a benefit phase comprising petrolatum and zinc pyrithione
for application to dry skin because Morrison petrolatum
produces a noticeable improvement in dry-skin symptoms and
because Bailey teach zinc pyrithione can be used to increase the
level of lipids in the stratum comeum in the skin. There would
be a reasonable expectation of success because Focht teach the
embodiment of a benefit phase comprising petrolatum and zinc
pyrithione, because Focht place no delimits [sic] on the type of
skin onto which the composition may be applied and because
Focht as a whole is drawn to compositions that provide
improved deposition of conditioning agents on skin.
Non-Final Act. 6-7.
Appellants offer three arguments, none of which persuades us of any
reversible error by the Examiner. First, Appellants assert that the Examiner
misreads Bailey insofar as "[ a ]n increase in skin hydration is not
necessitated by an improvement in a lipid barrier, especially in non-diseased
skin." Appeal Br. 2. This, as well as Appellants' related assertion that the
data in Bailey are only "directional" and not statistically significant (id.; see
also Reply Br. 1-3),9 is not persuasive, because "[o]bviousness does not
9 This assertion is not supported by the record. See Bailey ,r,r 123, 125
( discussing statistical significance of results after zinc pyrithione treatment).
In any event, as the Examiner notes, "Appellant[s'] broadest claims do not
require a measureable increase in skin hydration" (Ans. 6). We have
considered the Declaration submitted as Exhibit 1, and are not persuaded to
the contrary. As the Examiner notes (see Ans. 6), it is not clear that the
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Application 13/585,890
require absolute predictability," In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Indeed, it must be remembered that "[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton," KSR
International Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). Moreover, the
Examiner does not rely on Bailey directly for teaching increased hydration,
but instead on Morrison and Vaseline. See In re Keller, 642 F.2d 413,426
(CCP A 1981) ("But one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.").
Second, Appellants argue that the data of Bailey cannot be used to
show a reasonable expectation of success. See Appeal Br. 3. This argument
relies on the same premise as Appellants' first argument, and is equally
unpersuasive for the reasons discussed above.
Third, Appellants argue that the data in Example 1 of their
Specification constitute unexpected results. "Appellant has found that the
combination of zinc pyrithione and petrolatum in the benefit phase of a rinse
off composition (Composition C in Example 1) provides a greater
experimental conditions of the "internal" experiments were the same as those
in Bailey. Despite disagreeing on certain details with the Examiner,
Appellants admit as much in the Reply Brief. See Reply Br. 3 ("Although
Appellant's test composition utilized a lower amount of ZPT, it was applied
more often than Bailey."). Appellants' response that they "provided the data
[they] had at hand" (Reply Br. 4) cannot excuse these inadequacies, as
Appellants bear the burden to establish unexpected results. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). Even if the Declaration were correct
in that Bailey's data are not statistically significant, we would still not be
persuaded by Appellants' reliance on the Declaration, for the reasons
discussed above.
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improvement in skin hydration than a similar rinse-off personal care
composition including only petrolatum ( Composition B in Example 1 ). "
Appeal Br. 3. 10 The characterization of these results as "unexpected" is
unsupported attorney argument. See In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) ("Geisler made no such assertion [that results were
unexpected] in his application. Nor did Geisler submit any such statement
through other evidentiary submissions, such as an affidavit or declaration
under Rule 132 .... Instead, the only reference to unexpected results was a
statement by Geisler's counsel ... that Geisler's results were 'surprising."').
Furthermore, establishing unexpected results requires evidence of
"substantially improved results." Id. at 14 71 ( quoting In re Soni, 54 F .3d
7 46, 7 51 (Fed. Cir. 1995) ). Here, the record is devoid of evidence or
analysis supporting the conclusion that the results of Example 1 are
unexpected rather than the expected, additive effect of using two
components in the benefit phase, i.e., zinc pyrithione and petrolatum, instead
of just one.
For these reasons, Appellants have not persuaded us of any reversible
error in the Examiner's rejection of claim 1. Accordingly, we affirm the
rejection of claim 1. Appellants do not separately argue claims 2, 4, 7, 8, 11,
and 15; these fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Appellants
argue Rejections 2--4 only by reference to their arguments for claim 1. See
10 At the end of this paragraph, Appellants characterize Focht as "provid[ing]
zinc pyrithione in a laundry list of antimicrobials." Appeal Br. 3. To the
extent this amounts to a separate argument that the selection of zinc pyrithione
from Focht would not have been reasonable, it is not persuasive because we
discern no error in the Examiner's reliance on Bailey.
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Appeal Br. 3--4. Accordingly, we affirm these rejections for the same
reasons.
CONCLUSION
The rejections of claims 1-5, 7-11, and 13-15 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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