Ex Parte Yang et al

Patent Trials and Appeals Board

Oct 23, 2014

12138795 - (D) (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LIN YAN, CHANDRA SHEKAR PALLA-VENKATA, YUNTAO
THOMAS HU, PRABHJYOT SINGH, MARTIN SWANSON
VETHAMUTHU, ALEXANDER LIPS, and ANTHONY JOHN WEIR

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Appeal 2012-011878
Application 12/138,795
Technology Center 1700
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Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims to a method of using perfume to enhance
viscosity. The Examiner has rejected the claims as anticipated under 35
U.S.C. § 102(b) and obvious under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 134. The Examiner’s rejections are affirmed.

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Application 12/138,795

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STATEMENT OF CASE
The claimed method of using perfume to enhance viscosity of a low
surfactant liquid composition is stated in the above-identified application
(“the ’795 Application”) to be useful in low active liquid cleansers. ’795
Application 1.
Claims 1–4, 6, and 7 are pending and stand rejected by the Examiner
as follows:
1. Claims 1, 2, 4, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by
Yang.1 Answer 3.
2. Claims 1, 2, 4, 6, and 7 under 35 U.S.C. § 102(e) as anticipated by
Brogden.2 Answer 4.
3. Claims 1–4, 6, and 7 under 35 U.S.C. § 103(a) as obvious in view
of Yang. Answer 3.
Claim 1 is representative and reads as follows:
1. A method of using perfume or mixture of perfumes of defined volume and
polarity to enhance viscosity of low surfactant liquid compositions
containing substantially no perfume, wherein said low surfactant liquid
compositions require control of structure and theology, from zero shear
viscosity of 1 Pa.s to >25 - 500 Pa.s; wherein: the individual perfume
component used to enhance the viscosity of the low surfactant liquid
composition has a molecular volume (V) >400 A3 and polarity >1 MPa½ or
the mixture of perfumes used to enhance the viscosity of the low surfactant
liquid composition comprise >50% of the perfume mixture with volume
>400 A3 and polarity >1 MPa½; wherein said low suffactant liquid
compositions comprise a blend of alkali metal or ammonium alkyl sulfate
and alkylamido alkylbetaine, the total blend comprising 15% by wt. or less
of the composition.

1 Yang et al, US 2003/0166498 A1, published Sept. 4, 2003.
2 Brogden et al., US 2009/0130032 A1, published May 21, 2009.
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ANTICIPATION REJECTIONS
The Examiner found that Yang describes a composition comprising
surfactant and perfume in the recited amounts, and having the recited
properties. Answer 3. The Examiner found that Yang teaches selecting its
perfume to provide a “perfume burst” upon dilution, not to increase viscosity
as claimed. Id. However, since the compositions were found to be identical,
the Examiner determined that “any effect observed for the presently claimed
composition will also be realized by the composition of” Yang. Id.
The Examiner found that Brogden describes a composition
comprising surfactant and perfume (butylated hydroxyl toluene) in the
recited amounts and having the recited properties. Answer 4. Although the
Examiner found that butylated hydroxyl toluene is selected by Brogden for
its antioxidant properties, the Examiner concluded “the compositions are
identical” and “any effect observed for the presently claimed composition
will also be realized by the composition of the reference.” Id.
Appellants contend that the claims are directed to “a novel and
unexpected use of the compositions,” not to a composition by itself. Appeal
Br. 8. Appellants do not dispute that the compositions are the same as those
described in Yang and Brogden, but argue that the method is patentable
because it had not been recognized that “use of perfumes (>1 MPa½) in
specifically defined, low surfactant systems would lead to substantial
increase in viscosity.” Id. at 11. Appellants contend that the “claims, as
amended, do compromise a selection.” Id.

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Discussion
The claim preamble recites a “method of using perfume or mixture of
perfumes of defined volume and polarity to enhance viscosity of low
surfactant liquid compositions containing substantially no perfume.” The
application states that “[u]nexpectedly, applicants have now found that
perfume components themselves . . . can be used to help structure
compositions, specifically low active liquid cleanser compositions.” ’795
Application 3:20–25. The discovery that a perfume having the recited
characteristics enhances the viscosity of a low surfactant liquid composition
as recited in the preamble of the claim is insufficient to distinguish over
Yang and Brogden because Yang and Brogden – as found by the Examiner –
disclose all the limitations recited in the body of the claim.
It is well established by case precedent that merely recognizing
something that was not known before is insufficient to render an old process
again patentable. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1352 (Fed.
Cir. 2002). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990);
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999); In re Omeprazole Patent Litig., 483 F.3d 1364, 1373 (Fed. Cir.
2007).
In MEHL, the patentee claimed a “method of hair depilation” utilizing
steps which had been described in a prior art publication. The prior art
method did not perform the steps for the purpose of hair depilation, but it
was determined that hair depilation would have been a necessary, albeit
unrecognized and inherent, consequence of carrying out the steps. MEHL,
192 F.3d at 1366. Although the claim preamble expressly required the
method to be performed for the purpose of hair depilation, the court did not
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find it necessary that the publication’s authors “appreciate[d] the results” of
their process to constitute an anticipation of the claimed process. Id. Thus,
the purpose for which the method was accomplished was insufficient to
distinguish it from the prior art.
Similarly, in Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,
1378–79 (Fed. Cir. 2005), a method claim preamble, which required
“preventing sunburn damage to exposed skin surfaces,” was found satisfied
by a prior art process which applied the same composition as claimed to
exposed skin surfaces, but for a different purpose. “[T]he new realization
alone [that the old composition would prevent sunburn damage] does not
render the old invention patentable.” Perricone, 432 F.3d at 1377.
In this case, like in MEHL and Perricone, Appellants have simply
recognized a new result of using a perfume in a surfactant composition, but
have not otherwise distinguished the claimed method over the methods
described in the Yang and Brogden publications.
Appellants contend that with regard to anticipation by Yang and
Brogden, “these references simply do not disclose a method to enhance
viscosity of low surfactant compositions by, for example, adding specifically
selected perfumes to the compositions.” Reply Brief 5. Appellants contend:
“No one of ordinary skill could possibly know it is required to select specific
perfume in specific compositions in order to proactively enhance viscosity.”
Id.
These arguments are not persuasive because Appellants have not
identified a step in the claimed subject matter that involves “adding”
perfume to the low viscosity surfactant or “selecting” a perfume to increase
the surfactant’s viscosity. In Bristol-Myers Squibb Co. v. Ben Venue
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Laboratories, 246 F.3d 1368, 1375–76 (Fed. Cir. 2001), the court found the
claim preamble inadequate to distinguish the claim from the cited prior art
because “[t]he [preamble] expression does not result in a manipulative
difference in the steps of the claim.” Appellants have not pointed to a
positive step or manipulative difference in the claimed method that
distinguishes it from Yang and Brogden. Appellants’ reference to another
patent with “analogous” claims is unavailing because Appellants have not
directed us to a manipulative step in the claimed method which sets the
method apart from the processes described in Yang and Brogden of making
compositions identical to those recited in the body of the claim.
Appellants also argue that the claim is an advertising claim. Reply Br.
6. As far as we are aware, “advertising claims” are not a category of patent-
eligible subject matter. M.P.E.P. (9th ed., March 2014) 706.03(a), 2106.01,
and 2173.05(q) (“Use” claims).
For the foregoing reasons, we affirm the anticipation rejections of
claim 1. Claims 2, 4, 6, and 7 were not separately argued and fall with claim
1.

OBVIOUSNESS REJECTION
Claim 3 depends on claim 1 and further recites additional specific
additives and amounts. The Examiner determined that the addition of the
cationic polymer additive of claim 3 would have been obvious to one of
ordinary skill in the art based on Yang’s teachings. Answer 4. Appellants
stated that the same arguments made in the anticipation rejections are
applicable to the obviousness rejection. Appeal Br. 12. As we did not find
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these arguments persuasive, we affirm the rejection for the reasons given by
the Examiner.
The rejection of claims 1–4, 6, and 7 as obvious in view of Yang is
affirmed for the reasons given by the Examiner.

TIME PERIOD
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)(iv).

AFFIRMED

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