Ex Parte Yoshida et al

Patent Trial and Appeal Board

Sep 7, 2017

10540041 (P.T.A.B. Sep. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
IWI-16045 8816
EXAMINER
GREENE, IVAN A
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
10/540,041 07/16/2007
7609 7590 09/07/2017
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
Susumu Yoshida
09/07/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSUMU YOSHIDA, TADASHI NAKAMURA, KEIKO
NAKAMURA-SOLE HEIR, AKIRA ISHIKUBO, and AKIO NASU
Appeal 2017-000135
Application 10/540,041
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS,
and ULRIKH W. JENKS, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for claim indefiniteness and obviousness. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse the claim indefiniteness rejection and affirm the
obviousness rejections.
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STATEMENT OF CASE
The Specification states that “[t]he present invention relates to an oil-in
water emulsion cosmetic composition, and in particular, the oil-in water
emulsion cosmetic composition containing hydrophobicized powder.” Spec.
1. An objective is of the invention is “to provide an oil-in water emulsion
cosmetic composition that has comfortable sense of use without sticky
feeling and does not occur twisting upon drying.” Spec. 2. The oil in water
emulsion preferably includes a succinoglycan thickener. Spec. 10-11.
The following claims are representative:.
10. An oil-in-water emulsion cosmetic
composition comprising:
a water phase,
an oil phase dispersed in the water phase,
a hydrophobized powder dispersed in the oil phase,
0.05 to 2 wt% of succinoglycan, and
1 to 40 wt% of at least one plasticizer selected from the group
consisting of glycerin, polyoxyethylene methyl glucoside and polyethylene
glycol 20000,
wherein the oil phase contains 50 wt% or more of silicone oil in the
total amount of the oil phase,
wherein the oil phase contains at least one of polyoxyalkylene-
modified polysiloxane and isostearic acid as a dispersant of the
hydrophobized powder, and
wherein the succinoglycan comprises a galactose unit, a glucose unit, a
succinic acid unit, a pyruvic acid unit, and optionally an acetic acid unit, the
succinoglycan comprising the galactose unit: 1, glucose unit: 7, succinic acid
unit: 0.8, and pyruvic acid unit: 1.
23. An oil-in-water emulsion cosmetic composition comprising:
a water phase,
an oil phase dispersed in the water phase,
a hydrophobized powder dispersed in the oil phase, wherein the
hydrophobized powder is at least one of hydrophobized titanium oxide and
hydrophobized zinc oxide,
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0.05 to 2 wt% of succinoglycan, and
1 to 40 wt% of at least one plasticizer selected from the group
consisting of glycerin, polyoxyethylene methyl glucoside and polyethylene
glycol 20000,
at least one co-emulsifier selected from the group consisting of
carboxymethylcellulose, hydroxyethyl cellulose, hydroxy methyl cellulose
and gelatin,
wherein the oil phase contains 50 wt% or more of silicone oil in the
total amount of the oil phase,
wherein the oil phase contains at least one of polyoxyalkylene-
modified polysiloxane and isostearic acid as a dispersant of the
hydrophobized powder, and
wherein the succinoglycan comprises a galactose unit, a glucose unit, a
succinic acid unit, a pyruvic acid unit, and optionally an acetic acid unit, the
succinoglycan comprising the galactose unit: 1, glucose unit: 7,
succinic acid unit: 0.8, and pyruvic acid unit: 1.
Cited References
Suzuki US 4,675,179 Jun. 23, 1987
Strobridge US 5,041,281 Aug. 20, 1991
Brieva US 5,066,485 Nov. 19, 1991
Picard US 5,510,100 Apr. 23, 1996
Knipper US 5,514,792 May 7, 1996
Ikemoto US 6,497,898 B1 Dec. 24, 2002
Dietz US 2001/0046507 A1 Nov. 29, 2001
Omura US 2003/0064046 A1 Apr. 3, 2003
D.V. Kinsman, Isostearic and other Branched Acides, Journal of American
Oil Chemists Society, Vol. 56, pp. 823A-827A, 1979.
Grounds of Rejection
1. Claims 10-19, 23, 24, and 27—31 are rejected under 35 U.S.C.
§112(b), as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 10-14, 23, 27, and 28 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brieva, Knipper, and Picard.
3. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Brieva, Knipper, Picard, and Suzuki.
4. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Brieva, Knipper, Picard, and Omura.
5. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Brieva, Knipper, Picard, Ikemoto, and Kinsman.
6. Claims 15—19 and 24 are rejected under pre-AIA 35 U.S.C.
§103 (a) as being unpatentable over Brieva, Knipper, Picard, Dietz,
and Strobridge.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 3^4.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Indefiniteness Rejection
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The Examiner finds that claims 10 and 23 are unclear because, “[i]t is
unclear what exactly the claimed subject matter is limiting because ‘the
succinoglycan’ is equivocal in that it can refer to both the chemical
composition and the molecular compound.” Final Act. 3.
Section 112(b) requires the Specification to “conclude with one or
more claims particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the invention.” As
our reviewing court has explained, § 112(b) requires the claims “to be cast in
clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014). The rationale for requiring such
“reasonable precision” in claim language is because “[i]t is the claims that
notify the public of what is within the protections of the patent, and what is
not.” Id.
Accordingly, the language of the claims, when read in light of the
Specification, must allow skilled artisans to distinguish, as clearly as
possible, between activities which are covered by the claims, and activities
which fall outside the claims. See Miles Laboratories, Inc. v. Shandon Inc.,
997 F.2d 870, 875 (Fed. Cir. 1993) (“The test for definiteness is whether one
skilled in the art would understand the bounds of the claim when read in
light of the specification.”). Thus, “[a] claim is indefinite if, when read in
light of the specification, it does not reasonably apprise those skilled in the
art of the scope of the invention.” Amgen Inc. v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003).
We are not persuaded by the Examiner’s claim indefmiteness
arguments. Claim 1 specifies the particular nature of the succinoglycan in
the “wherein clause” of the claim. More particularly, the claims require a
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succinoglycan “wherein the succinoglycan comprises a galactose unit, a
glucose unit, a succinic acid unit, a pyruvic acid unit, and optionally an
acetic acid unit, the succinoglycan comprising the galactose unit: 1, glucose
unit: 7, succinic acid unit: 0.8, and pyruvic acid unit: 1.” Since
succinoglycan is known to those of ordinary skill in the art to be a water
soluble polymer (Spec. |44; App. Br. 13-14), we find that the claim
language is clear on its face what Appellants’ intend to be the scope of their
succinoglycan. Thus, one skilled in the art would understand the bounds of
the claim when read in light of the specification. The claim indefmiteness
rejection is reversed.
Obviousness Rejection - Brieva, Knipper, and Picard
The Examiner finds that
BRIEVA teaches oil-in-water emulsion compositions (instant claims
10, 15, 23 & 24, lines 1-3) comprising: a pigment coated with
polysiloxane (instant claims 10, 15, 23); a silicone phase; a water
phase and a polydiorganoslioxane-polyalkylene copolymeric
smfactant (abstract). BRIEVA further teaches the coated pigment
consists essentially of finely divided particles of pigment whose
surfaces are chemically bonded to, and physically completely coated
by, polysiloxane which coating renders the particles hydrophobic
(col. 1, lines 19-24). BRIEVA further teaches suitable pigments
included titanium dioxide and zinc oxide, inter alia (col. 3, lines
20-24) (instant claims 10, 13-15, 18, 19, 23 & 24, hydrophobized
titanium and/or zinc oxide). BRIEVA teaches the inclusion of
glycerol as part of the water phase (which is about 25-80 wt. % of
the emulsions) but does not expressly teach the amount (col. 6, line
60) (instant claims 10, 11, 15, 23 & 24, glycerin). BRIEVA further
teaches the oil phase comprises 10 to 80 weight percent of the
composition (col. 2, lines 25-27) (instant claims 10, 15, 23 and 24).
BREVIA teaches the polar oil species castor oil as a component
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typically used in personal care products (col. 4, lines 11-16) (instant
claims 15 & 24).
RRIF VA teaches thickeners are useful for their oil-in-water
emulsion, and specifically sodium carboxymethyl cellulose and/or
hydroxyethyl cellulose can be used (col. 7, lines 3-15) (instant claims
12, 17, 23 & 24, co-emulsifier). BRIEVA discloses the example
containing 0.5% by weight of the thickener xanthan gum (col. 8,
Example 4).
Ans. 6.
The Examiner finds that, “BRIEVA does not expressly teach
succinoglycan or the amount of glycerol.” Final Act. 7. The Examiner
further finds, however, that,
[t]he deficiency in the succinoglycan is cured by the teachings of
KNIPPER (US 5,541,792).
KNIPPER teaches chemically modified succinoglycan
polysaccharides as well suited for use as thickening, stabilizing or
suspending agents in cosmetics (abstract). KNIPPER further teaches
succinoglycans exhibit rheological properties comparable to those of
xanthan gum and are characterized by increased stability to
temperature, to acidic and basic pH’s and strongly saline media; thus
provides an attractive substitute for xanthan gum (1:29-36). KNIPPER
teaches a suitable amount of succinoglycan.
Final Act. 7-8. Picard teaches oil-in-water emulsions containing glycerin in
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amounts of 3% (Examples 1-5) (instant claims 10, 11, 15, 16, 23 & 24;
amount of glycerin). Final Act. 8. The Examiner concludes that
It would have been prima facie obvious to one of ordinary skill in the
art at the time the claimed invention was made to produce an oil-in­
water cosmetic emulsion comprising hydrophobized dispersed powder
particles (such as zinc or titanium dioxide) dispersed in the oil phase,
a humectant such as glycerin (glycerol), and thickeners such as
succinoglycan and carboxymethyl cellulose because the particles
would have provided protection from harmful UV radiation and the
hydrophobic treatment would have maintained dispersion of the
particles in the oil phase; and the thickeners would have improved the
properties such as viscosity, stability and/or after-feel of the
composition. And in particular the succinoglycan is suggested to be
superior to xanthan gum by having increased stability to temperature,
to acidic and basic pH’s and strongly saline media. Regarding the
amount of the succinoglycan, KNIPPER teaches an amount of
approximately 0.1 % to approximately 5% as a suitable range. In the
case where the claimed ranges “overlap or lie inside ranges disclosed
by the prior art” a prima facie case of obviousness exists (MPEP
§ 2144.05).
Final Act. 9.
Appellants contend that, “the Examiner fails to address each and
every claim recitation, including the claim recitation that the oil phase
contains 50 wt% or more of silicone oil in the total amount of the oil phase,
the rejection should be reversed for failing to establish a prima facie case of
obviousness.” App. Br. 17. Appellants further argue that
Knipper discloses the ratios of only one chemically modified
succinoglycan derived from Agrobacterium tumefaciens 1-736
bacteria, which has for each galactose unit, “approximately 8.6
glucose structural units and only approximately 0.26 succinic acid
structural unit and approximately 0.32 pyruvic acid structural unit are
present.” (See Knipper, Col. 2, lines 43-50). In contrast, claims 10 and
23 recite a very different succinoglycan, which comprises molar ratios
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of a galactose unit: 1, a glucose unit: 7, a succinic acid unit: 0.8, a
pyruvic acid unit: 1. Accordingly, Knipper fails to disclose the
claimed succinoglycan having the specific molar ratios and the
rejection should be reversed.
App. Br. 18. Appellants argue that
The disclosed amount of chemically modified succinoglycan used to
form a gel in Knipper does not translate to a relevant teaching that can
be applied to arrive at a proper amount of succinoglycan to include in
an oil-in-water emulsion as a thickener. That is, one having ordinary
skill in the art would not use the disclosed amount of 0.1- 5 wt% from
Knipper as a basis to arrive at the claimed amount of 0.05-2 wt% to
include as a thickener in an oil-in-water emulsion. This is because
Knipper relates to an entirely different purpose and use for
succinoglycan.
App. Br. 19.
The dispositive issues for each of the obviousness rejections 2—6 is
whether the combination of Brieva, Knipper, and Picard, discloses the
claimed succinoglycan, and the claimed 50% or more of silicone in the oil
phase.
ANALYSIS
While Appellants have grouped claims 10 and 23 together, they do not
argue any limitations in claim 23 other than the succinoglycan compound.
Therefore, we select claim 10 as the representative claim. With respect to the
Examiner’s obviousness rejection, we agree with the Examiner’s fact
finding, statement of the rejection and responses to Appellants’ arguments as
set forth in the Answer. We find that the Examiner has provided evidence to
support a prima facie case of obviousness. We provide the following
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additional comment to the Examiner’s argument set forth in the Final
Rejection and Answer.
We agree with the Examiner that Brieva discloses a cosmetic
composition “wherein the oil phase contains 50 wt% or more of silicone oil
in the total amount of the oil phase,” as claimed. The Examiner finds that
BREVIA teaches a silicone component such as cyclomethicone is
present in an amount of about 10 to 90 percent of the emulsion (col. 2,
lines 25-43), and by example that the oil phase contains more than
50 wt.% silicone oil. Example 1 includes an oil phase consisting of:
15.0 wt.% dimethicone, 5.0 wt.% cyclomethicone, 1 wt.% surfactant,
and 15 wt. % pigment totaling 36 wt. % of the total emulsion. The
silicone oil components of the oil phase in Example 1 are dimethicone
and cyclomethicone totaling 20 wt.% of the 36 wt.%) which clearly is
more than 50 wt.%> of silicone oil as now claimed. A similar argument
can be made for the remaining examples clearly leading one of
ordinary skill in the art to a cosmetic oil-in-water emulsion including
an oil phase that contains more than 50 wt.% silcione [sic] oil.
Ans. 7; emphasis added. We agree that the Examiner’s calculations above
from Example 1 of Brieva, evidences a cosmetic composition “wherein the
oil phase contains 50 wt% or more of silicone oil in the total amount of the
oil phase,” as claimed. Furthermore, Example 2 of Brieva (cols. 7-8), also
supports this claim limitation. Example 2 of Brieva shows an oil-in-water
composition where in the oil phase is 44.5% of the emulsion and the
aqueous phase is approx. 56% of the emulsion. In Example 2, the phenyl
dimethicone is 15% by weight, the dimethicone is 8% by weight, and
includes 1.5% of Silwet (organosilicone) surfactant, totaling 24.5% wt.
silicones in the oil phase of the Example 2 emulsion (24.5% silicone +
44.5% oil phase = 55% of oil phase is silicone oils). Example 2 of Brieva
also includes 0.5% xanthan gum.
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We also find that the Examiner has provided evidence in the cited
prior art that succinoglycan thickeners were known in the art at the time of
the present invention to be included in cosmetic compositions. Knipper, col.
1.
Appellants argue that Knipper discloses modified succinoglycans and
not succinoglycans having the composition claimed (App. Br. 18; Reply Br.
15), (i.e., a galactose unit, a glucose unit, a succinic acid unit, a pyruvic acid
unit, and optionally an acetic acid unit, the succinoglycan comprising the
galactose unit: 1, glucose unit: 7, succinic acid unit: 0.8, and pyruvic acid
unit: 1). We are not convinced by Appellants’ arguments. The Examiner
responds that Knipper “specifically teaches succinoglycan as a suitable
cosmetic thickener as an improved alternative to xanthan gum (col. 1, lines
20—36).” Ans. 9. More specifically, the “Backgound of the Invention”
Section of Knipper indicates that succinoglycans “includes the family of
polysaccharides of bacterial origin which contain, in addition to structural
units derived from galactose and from glucose, structural units derived from
succinic, pyruvic and, optionally, acetic acids, or from the salts of such
acids.” Col. 1,11. 14—19. The “Description of the Prior Art” section of
Knipper states that succinoglycans are known and that, “these
succinoglycans exhibit rheological properties comparable to those of
xanthan gum and are, furthermore, characterized by an increased stability to
temperature, to acid and basic pHs and in strongly saline media.” Col. 1,11.
28—33. In addition, the Examiner finds that Knipper teaches that
succinoglycans produced by specific microorganisms are known in the art
and are known “to be an attractive substitute for xanthan gum in industrial
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fields as varied as, for example, agrochemistry, the farm produce industry,
the petroleum industry and cosmetics.” Col. 1,11. 32—26.
The Examiner also finds that
KNIPPER clearly teaches the succinoglycan derived from
Agrobacterium tumefaciens 1-736 as a suitable succinoglycan known
in the prior art (KNIPPER: col. 2), and while they may include a
modified version in their preferred/exemplified compositions it is well
accepted that nonpreferred and alternate embodiments constitute prior
art (MPEP § 2123).
Ans. 8. Knipper discusses the structure of a modified succinoglycan
composition as compared to a starting (unmodified) succinoglycan. Col. 2,
11. 43—50. The starting succinoglycan is indicated to have a structure which
includes “0.8 succinic acid structural unit and 1 pyruvic acid structural unit
present in the starting succinoglycan.” Id. At the same time, Appellants’
Specification describes a “succinoglycan is known as a water-soluble
polymer represented by the following structural formula, containing
galactose unit: 1, glucose unit: 7, succinic acid unit: 0.8, pyruvic acid unit:
1.” Spec. 11144. The Specification indicates that “a supply source for this
succinoglycan” includes bacteria belonging to the genus Agrobacterium
tumefaciens 1-736. Spec. 11 145. Thus, it is reasonably to conclude that
the starting succinoglycan of Knipper which includes succinoglycan derived
from Agrobacterium tumefaciens 1—736 (col. 2,11. 29-32) includes the same
succinic acid structural unit and pyruvic acid structural unit as presently
claimed.
Where ... 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
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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) (emphasis added.) Thus, the
Examiner has established that Knipper discloses that succinoglycans are
known generally to be rheological agents or thickeners for cosmetics, and
that the known succinoglycan “starting material” of Knipper, may be the
same or substantially the same as the succinoglycan in the claimed oil-in­
water emulsion. The starting material succinoglycan, being a succinoglycan,
can thus, be used as a rheological agents or thickeners for cosmetics. The
burden of proof shifts to Appellants to show that this starting material
succinoglycan is not the same or substantially the same as that claimed in the
oil-in-water emulsion of claim 10. Appellants have not established on this
record that the starting material succinoglycan of Knipper is not the same or
substantially the same as that claimed.
The Examiner found that it would have been obvious to one of
ordinary skill in the art to substitute a succinoglycan cosmetic thickener
disclosed in Knipper for a xanthan gum cosmetic thickener disclosed in the
oil-in-water cosmetic emulsion of Brieva (Ans. 9), because Brieva teaches
that thickeners may be present to achieve desired properties such as
viscosity, stability or after feel (col. 7, lines 3—15); and Knipper discloses
that succinoglycan rheological agents are “attractive substitutes for xanthan
gum” in cosmetics. Col. 1,11. 33-34.
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In response, Appellants proffer two Declarations of Susumo Yoshida.
The first Declaration is dated Sept. 4, 2013 (Declaration 1) and the second
Declaration is dated Sept. 17, 2014 (Declaration 2). Appellants rely on
Declaration 1 to demonstrate
that it would NOT have been obvious to replace the 0.5 % xanthan
gum of Brieva with succinoglycan to arrive at the claimed invention.
As the Rule 132 Declaration filed September 4, 2013 demonstrates,
the replacement of the 0.5 % xanthan gum of Brieva with
succinoglycan would cause patchiness or unevenness. As the Rule 132
Declaration shows, when the composition includes even 0.05 % of
succinoglycan, the composition exhibits patchiness or unevenness.
The proposed replacement is in conflict with the object of Brieva, i.e.,
avoiding the problem known as “setting.” See column 2, line 17 of
Brieva.
Reply. Br. 18, see also App. Br. 21.
The Examiner however, found that
it is not clear what applicants have reproduced from the
specification in the table (item 7 on page 2 of the declaration [1]). And
this clearly does not constitute a side-by-side showing of results
comparing prior art examples to the inventive examples. Applicant’s
appear to be arguing that the intension of KNIPPER is different from
the intension of the instant inventors based upon the desired properties
of thickening and patchiness.
Final Act. dated Dec. 4, 2013. With respect to Declaration 2, the Examiner
found that Appellants’ declaration 2 filed 09/17/2014 is not
of sufficient weight to overcome the obviousness rejection
because (1) the examiner sees no explanation that one of ordinary skill
in the art would have clearly recognized applicants results as both
unexpected and significant, and (2) the results are clearly not
commensurate with the instantly rejected subject matter, for example,
applicants only show compositions including the plasticizer glycerin
in a specific amount but claims include the plasticizers
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polyoxyethylene methyl glucoside and polyethylene glycol 20,000 in
the alternative (see, e.g., claims 29 & 30) (see MPEP § 716.02-d).
Final Act. 17. We agree with the Examiner and find that Appellants have
not made a proper comparison of the closest prior art (e.g., a comparison of
the oil in water composition of Brieva substituted with the unmodified
succinoglycan starting material of Knipper, as compared to the composition
claimed).
Appellants argue that the combination of Brieva and Knipper does not
solve the problem of patchiness. App. Br. 19. The motivation to combine
references does not have to be identical to the applicants to establish
obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Moreover,
“The fact that the motivating benefit comes at the expense of another benefit
. . . should not nullity its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits, both lost and
gained, should be weighed against one another.” Medichem S.A. v. Rolabo
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In the present case, the
Examiner finds motivation in the prior art to substitute succinoglycan
thickener for xanthan gum in cosmetics because succinoglycans exhibit
rheological properties comparable to those of xanthan gum and are
characterized by increased stability to temperature, to acidic and basic pH’s
and strongly saline media; and thus provides an attractive substitute for
xanthan gum. Final Act. 7-8. Therefore, the fact that the benefit of increased
stability to temperature may come at the expense of product patchiness, does
not, in and of itself, nullify the disclosed basis in Knipper to substitute
succinoglycans for the xanthan gum of Brieva.
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Finally, Appellants’ argue that “[t]he disclosed amount of chemically
modified succinoglycan used to form a gel in Knipper does not translate to a
relevant teaching that can be applied to arrive at a proper amount of
succinoglycan to include in an oil-in-water emulsion as a thickener.” App.
Br. 19. We are not persuaded. Knipper states that, “The compositions
according to the invention can either be in the form of an aqueous gel or in
the form of solids of the fibrous or powder type, which solids may be
formulated into a gel in aqueous medium.” Col. 2,11. 22-25. The Examiner
relies on Brieva for the amount of thickener in its composition. See Brieva
examples 2 and 4 including 0.5% by wt. xanthan gum thickener. While
Appellants have argued in both Declarations 1 and 2 that there is no direct
substitution of succinoglycan for xanthan gum due to resulting product
patchiness, this argument has been addressed above with respect to the
motivating benefit for combination of the cited references.
Obviousness rejection 2 is reversed, for the reasons of record.
Obviousness Rejections 3—6
Appellants present no additional arguments for obviousness rejections
3—6 other than those presented for obviousness rejection 2. App. Br. 22—28.
Having found Appellants’ arguments for rejection 2 unconvincing,
Rejections 3—6 are affirmed for the same reasons as rejection 2.
CONCLUSION OF LAW
We reverse the claim indefmiteness rejection and affirm the
obviousness rejections 2-6.
AFFIRMED
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