Heike Miertsch et al.

Patent Trials and Appeals Board

Jul 23, 2019

13125316 - (R) (P.T.A.B. Jul. 23, 2019)

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.
13/125,316 05/20/2011 Heike Miertsch 3321-P39641 4110
13897 7590 07/23/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HEIKE MIERTSCH and STEFAN BIEL1

________________

Appeal 2018-003831
Application 13/125,316
Technology Center 1600
________________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Appellants identify Beiersdorf AG as the real party-in-interest. App. Br.
3.
Appeal 2018-003831
Application 13/125,316

2
Appellants have filed a Request for Rehearing (the “Request”) under
37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision of May 2, 2019
(the “Decision”).
The Decision reversed the Examiner’s rejection of claims 47 and 50
as unpatentable under 35 U.S.C. § 112, second paragraph, as being
indefinite, but affirmed the Examiner’s rejection of claims 32–51 as
unpatentable under 35 U.S.C. §§ 102(b) and/or 103(a) as follows:
1. Claims 32, 38–45, and 49–51 stand rejected as unpatentable
under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being obvious over,
Parekh (US 6,024,945, February 15, 2000) (“Parekh”).
2. Claims 32–51 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lemoine et
al. (US 2005/0163737 A1, July 28, 2005) (“Lemoine”) and
Yamamoto et al. (JP 2003286146 (A), October 7, 2003)
(“Yamamoto”).
In the Request, Appellants seek reconsideration of our Decision
affirming the Examiner’s rejection of claims 32–51 under 35 U.S.C.
§§ 102(b) and/or 103(a).

ANALYSIS
A. Claims 32, 38–45 and 49–51
Appellants first point to the passage of the Board’s Decision stating
that
Claim 32 recites, in relevant part: “added water in an amount of
not more than 5% by weight, based on a total weight of the
preparation.” (Emphasis added). The claim term “not more than
Appeal 2018-003831
Application 13/125,316

3
5%” includes within its scope all concentrations of added water
less than 5%, including 0%. Parekh teaches, as Appellants
expressly argue, compositions lacking added water, or water
other than that which is bound to, or complexed with, ACH. See
App. Br. 10. We agree with the Examiner that a person of
ordinary skill in the art would understand that Parekh therefore
teaches including 0% water, which is within the scope of the
claims, and we affirm the rejection with respect to both Section
102(b) and Section 103(a).

Request 2 (quoting Decision 8). Appellants contend that this portion of the
Decision misapprehends the meaning of the claim term: “added water in an
amount of not more than 5% by weight.” Id.
According to Appellants, the claim term “added water in an amount of
not more than 5% by weight” cannot include the “addition” of no water at all
(i.e., 0% water): Appellants contend that one cannot reasonably add nothing
to something. Appellants invoke the definition of “to add” as meaning “to
join (something) to a mass, quantity, or number so as to bring about an
overall increase,” and note that synonyms for “add” are “adjoin, annex,
append, subjoin, tack (on).” Id. (quoting Merriam-Webster, available at:
https://www.merriam-webster.com/thesaurus/add (last visited July 12,
2018)).
Appellants argue that all of these terms imply an activity, and assert
that adding nothing is the same as doing nothing, i.e., not engaging in any
activity and, therefore, it is not surprising that it apparently did not occur to
the Examiner that claim 32 could be interpreted in the way proposed by the
Board. Request 2. Appellants therefore contend that the Board’s Decision
appears in this respect to be a new ground of rejection and should have been
designated as such. Id.
Appeal 2018-003831
Application 13/125,316

4
Appellants argue further that Board overlooked the fact that paragraph
[0019] of Appellants’ Specification discloses that “[i]n order for the
hydrotalcite to be able to act as an acid scavenger in the formulation, the
addition of water is necessary.” Request 2–3 (citing App. Br. 13). In other
words, argue Appellants, the Specification clearly discloses that the
“addition” of 0% water is not sufficient. Id. at 3. Appellants point out that:
“[a]lthough the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach,” and further note that the Specification “is
always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.”
Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999); Phillips
v. AWH Corp., 415 F.3d 1303, 1315, 1316 (Fed. Cir. 2005) (en banc)).
We do not find Appellants’ arguments persuasive. We do not agree
with Appellants’ contention that the claim term “added water in an amount
of not more than 5% by weight” means that some, unspecified, minimum
amount of water must be added to the composition.
First, in the language of the claim, the adjective “added” modifies the
noun “water,” qualifying the water as being that which is extrinsic to the
remaining constituents (i.e., not bound to the other constituents, but in
addition to them). Because this is a composition claim, and not a method
claim, there is no recited step of “adding” the water, rather “added” merely
qualifies and defines the properties of the noun “water.”
Second, the claim language reciting: “an amount of not more than 5%
by weight” defines an upper boundary to the amount of water that may be
present (i.e., 5%), but sets no lower boundary or minimum weight
Appeal 2018-003831
Application 13/125,316

5
percentage of added water. Zero percent by weight added water is
undeniably less than 5 percent by weight. We thus interpreted the plain
language of the claim to mean that, in Appellants’ composition, a maximum
of 5% by weight of added water could be present, but that 0% added water
(which is of course less than 5%) would fall within the scope of the claim.
We stand by that reasoning.
With respect to the disclosure of paragraph [0019] of Appellants’
Specification, whereas it may be true that: “[i]n order for the hydrotalcite to
be able to act as an acid scavenger in the formulation, the addition of water
is necessary,” Appellants do not functionally claim hydrotalcite, nor is the
function of hydrotalcite (or the composition as a whole) as an acid
scavenger, otherwise recited in the claims. Spec. ¶ 19. Appellants are
reminded that: “Although the claims are interpreted in light of the
specification, limitations from the specification may not be read into the
claims.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
consequently do not find Appellants’ arguments persuasive.

B. Claims 39 and 49
Claim 39 is exemplary and recites: “The preparation of claim 32,
wherein the preparation comprises a weight ratio of hydrotalcite and water
of from 1:10 to 10:1.” App. Br. 24.
With respect to these claims, Appellants point out that even if one
were to take the position that the phrase “added water in an amount of not
more than 5% by weight” encompasses within its scope no added water, the
Board has not explained why Parekh nevertheless allegedly anticipates or
Appeal 2018-003831
Application 13/125,316

6
renders obvious the subject matter of these claims, which clearly do not
make any sense if no water is present. Request 3.
We are not persuaded by Appellants’ argument. Claims 39 and 49
recite a hydrotalcite to water ratio, but do not specify that the water in that
ratio is “added water.” As we expressly noted in the Decision, the Examiner
found that Parekh: “provides a chemical formula for said hydrotalcite
coordinated to water and said formula reads on said claimed ratio range.”
Decision 8. Specifically, the formula disclosed by Parekh for synthetic
hydrotalcite is (Mg6Al2(OH)16CO34H2O), which expressly contains water
within the recited range of ratios. Parekh col. 4, l. 29.
Appellants argued that it is not evident from the teachings of Parekh
that a person of ordinary skill could have calculated a weight ratio of the
coordinated water which is a part of hydrotalcite, and hydrotalcite as an
independent substance (which includes the water). This conclusory
assertion by Appellants is without evidentiary support, and we consequently
accord it little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (holding that attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value).

C. Claims 45, 48, and 51
Appellants dispute what they characterize as the Board’s conclusion
that it would not only have been obvious to one of ordinary skill in the art to
add any known deodorant active agent to a composition according to
Lemoine, which contains zinc pidolate as the primary and required
deodorant active agent, but that it would also have been obvious to one of
ordinary skill in the art to replace the zinc pidolate in the composition of
Appeal 2018-003831
Application 13/125,316

7
Lemoine by hydrotalcite, another known deodorant active agent. Request 5
(citing Decision 18–19). Appellants assert that the Board has not explained
how this position can be reconciled with the fact that “obviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed invention.” Id. Nor, argue Appellants, has the Board explained
why a person of ordinary skill in the art would have been prompted to
replace the required deodorant active agent in the composition of Lemoine
with another deodorant active agent, and specifically, a deodorant active
agent that is mentioned in another document only in passing, to not add any
other known deodorant active agent to the resultant composition. Id.
Appellants argue further that the Board overlooked Lemoine’s
disclosure that a person of ordinary skill in the art would have understood
that there is more than one reason why the required deodorant active agent in
the compositions disclosed therein is zinc pidolate and not another known
deodorant active agent. Request 6. Appellants argue that Lemoine discloses
the advantages of zinc pidolate as a deodorant active agent compared to
other deodorant active agents. Id. (citing Lemoine ¶¶ 11, 13, 14, 61, 62
(synergism with aluminum salt), 72, 95).
Finally, Appellants argue that Lemoine discloses zinc pidolate in
combination with an antiperspirant aluminum salt, whereas Yamamoto does
not mention any antiperspirants, let alone antiperspirant aluminum salts. A
person of ordinary skill in the art, Appellants argue, would therefore not be
able to predict if an inorganic compound such as hydrotalcite performs at
least nearly as well as zinc pidolate (a predominantly organic compound)
when used in combination with antiperspirant aluminum salts. Request 6.
Appeal 2018-003831
Application 13/125,316

8
We are not persuaded by Appellants’ arguments. The Examiner
expressly concluded that:
One of ordinary skill in the art would have been motivated to do
this because both references are drawn to
antiperspirant/deodorant formulations comprising aluminum
antiperspirant salts and deodorant compounds, Lemoine et al.
teach percentages of said deodorant compounds and percentages
of water and [Yamamoto] teach[es] hydrotalcite as a deodorant
compound.

Final Act. 9. We agreed and, as we explained in our Decision:
Lemoine expressly teaches that additional deodorant active
agents may be added to its disclosed deodorant composition.
Lemoine ¶ 36. Yamamoto, which also teaches deodorant
compositions, expressly teaches the use of hydrotalcite as an
active agent. Yamamoto ¶¶ 16–18.

“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’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). In the present appeal, both Lemoine and Yamamoto
teach deodorant compositions. Lemoine teaches multiple active
agents may be used, and Yamamoto teaches hydrotalcite as an
active deodorant agent. We agree with the Examiner that a
person of ordinary skill would recognize that the combination of
the elements would yield a predictable result, viz., deodorant
activity. Appellants make no argument that the combination of
the two references results produces unexpected, or even unusual,
results.

Decision 10.
We repeat the holding of KSR, quoted in the passage above, that states
that combining familiar elements to achieve an expected or predictable result
is obvious. Furthermore, we note that claim 45 depends from claim 32, and
that claim 48 depends from independent claim 45 both of which are directed
Appeal 2018-003831
Application 13/125,316

9
to antiperspirant compositions that comprise, inter alia, one or more
antiperspirant active ingredients, hydrotalcite, and added water.
Consequently, the scope of the claim includes the presence of other
antiperspirant active ingredients, e.g., zinc pidolate, in addition to
hydrotalcite. See Crystal Semiconductor Corp. v. TriTech Microelectronics
Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (holding that: “Use of the
transition ‘comprising’ in the language of a claim creates a presumption ...
that the claim does not exclude additional, unrecited elements”). In other
words, it is not necessary, as Appellants argue, to replace the zinc pidolate of
Lemoine with another antiperspirant agent, when the scope of Appellants’
claims includes the potential presence of zinc pidolate, a known active
antiperspirant agent, as taught by Lemoine, and hydrotalcite, as taught by
Yamamoto.

D. Claims 39, 46, and 49
Appellants point to the Decision’s finding that: “[c]ontrary to
Appellants’ assertions, we find it self-evident that the deodorant active agent
would be a result-effective variable in deodorant composition.[...]
Appellants do not dispute the fact that Lemoine teaches the claimed ratio of
deodorant active agent to water….” Request 6–7 (quoting Decision 5).
Appellants assert that, in their Appeal Brief, they argued that: “the Examiner
has not explained why ‘Lemoine et al. teach water percentages and
deodorant component percentages which read on the claimed ratios,’ and
neither is it apparent that LEMOINE teaches water percentages and
deodorant component percentages which read on the claimed ratios.” Id. at
7 (quoting App. Br. 20).
Appeal 2018-003831
Application 13/125,316

10
Appellants further dispute the Decision’s holding that:
“Appellants argue further that the percentages of hydrotalcite which are
added to the compositions taught by Lemoine would necessarily be the same
as the percentages of zinc pidolate already present in the composition of
Lemoine.” Request 7 (quoting Decision 14). Appellants point to page 20 of
their Appeal Brief, which argues that: “it is not seen that the percentages of
hydrotalcite which are added to a composition according to LEMOINE
would necessarily be the same as the percentages of the zinc pidolate already
present in the composition of LEMOINE (considering that zinc pidolate and
hydrotalcite have virtually nothing in common).” Request 7.
We do not find Appellants’ arguments persuasive. Appellants do not
dispute the Board’s finding that the deodorant active agent would be a
result-effective variable in a deodorant composition. As we concluded in
our Decision:
“[D]iscovery of an optimum value of a result effective variable
... is ordinarily within the skill of the art.” In re Boesch, 617 F.2d
272, 276 (C.C.P.A. 1980). Appellants do not dispute that
Lemoine teaches the claimed ratio of deodorant active agent to
water, recited in claim 32 (from which claim 36 ultimately
depends). Because we find that it would have been well within
the skill of the art to optimize weight ratio of hydrotalcite (a
known deodorant active agent) and water, we affirm the
Examiner’s rejection of the claims.

Decision 15. The passages of the Appeal Brief quoted by Appellants supra
do not rely on any evidence of record to dispute the Examiner’s findings, or
demonstrate that the Examiner’s findings are in error. Appellants merely
gainsay the Examiner’s findings, stating that “it is not seen” why the
Examiner so found. That is not enough to persuade us the Examiner erred.
Appeal 2018-003831
Application 13/125,316

11
Such attorney argument, unsupported by any evidence, carries no probative
value in our analysis. See Geisler, 116 F.3d at 1470.
Furthermore, Appellants’ arguments do not address the gravamen of
the Board’s conclusion, which expressly relies upon In re Boesch in
concluding that: “[D]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art.” Decision 15 (quoting
Boesch, 617 F.2d at 276).
Consequently, we are not persuaded by Appellants’ arguments that the
Board overlooked or misapprehended Appellants’ arguments on appeal, and
we deny the relief sought by Appellants in their Request

DECISION
We have granted Appellants’ Request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
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). See also
37 C.F.R. § 41.52(b).
ORDER
REHEARING DENIED