James Harrison et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019006090 (P.T.A.B. Sep. 2, 2020)

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.
12/586,198 09/18/2009 James Jeffries Harrison D-3298 8166
33197 7590 09/02/2020
STOUT, UXA & BUYAN, LLP
23461 South Pointe Drive
Suite 120
Laguna Hills, CA 92653
EXAMINER
OLADAPO, TAIWO
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
09/02/2020 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 JAMES JEFFRIES HARRISON and
GUILLERMO HERNANDEZ

Appeal 2019-006090
Application 12/586,198
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 43–66.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., the Inventors (Application Data Sheet filed
September 18, 2009). The Appellant identifies “Innospec, Inc.” as the real
party in interest (Amended (Substitute) Appeal Brief filed May 15, 2019
(“Appeal Br.”) at 1).
2 See Appeal Br. 5–47; Reply Brief filed August 13, 2019 (“Reply Br.”) at
5–23; Final Office Action entered March 5, 2018 (“Final Act.”) at 3–23;
Examiner’s Answer entered June 13, 2019 (“Ans.”) at 3–39.
Appeal 2019-006090
Application 12/586,198

2
I. BACKGROUND
The subject matter on appeal relates to clear, washable bi- or multi-
phasic lubricant compositions, such as personal lubricants, skin conditioners,
or shaving fluids (Specification filed September 18, 2009 (“Spec.”) at 1, ll.
15–18). Representative claim 43 is reproduced from the Claims Appendix
to the Appeal Brief, as follows:
43. A lubricant composition comprising two substantially
immiscible phases comprising:
a) a flowable aqueous phase, consisting of a
first volume containing water-miscible components, said
water miscible components comprising water, a viscous
hydrophilic polymer component, and a water-miscible
glycol refractive index adjusting agent; said aqueous
phase having a first refractive index resulting from the
combined refractive indices of each of the water-miscible
components; and
b) a flowable hydrophobic phase, consisting of
a second volume containing one or more hydrophobic
components, said one or more hydrophobic components
including a viscous hydrophobic silicone polymer
component, said flowable hydrophobic phase having a
second refractive index resulting from the combined
refractive indices of each of the one or more hydrophobic
components;
wherein sufficient amounts of water and the water-
miscible glycol refractive index adjusting agent are
present in the flowable aqueous phase to cause the first
refractive index to substantially match the second
refractive index;
wherein the composition is non-irritating to the skin, and when
said composition is tested by rubbing the composition into cotton
fabric, permitted to dry, then washed in warm water using a
standard laundry detergent on a normal cycle and air dried, said
composition is substantially non-staining as compared to an
otherwise identical composition lacking the at least one
hydrophilic component and tested in the same manner.
Appeal 2019-006090
Application 12/586,198

3
(Appeal Br. 48 (not paginated; emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected as follows:
A. Claims 46–66 under pre-AIA 35 U.S.C. § 112, ¶ 2, as
indefinite;3
B. Claims 43–45, 47–51, 53–58, 60–62, and 64–66 under 35
U.S.C. § 103(a) as unpatentable over Brown et al.4 (“Brown”)
in view of Lorant et al.5 (“Lorant”);
C. Claims 43–62 and 64–66 under 35 U.S.C. § 103(a) as
unpatentable over Brown in view of Rosevear et al.6
(“Rosevear”);
D. Claims 43, 44, 47–51, 53–58, 60–62, and 64–66 under 35
U.S.C. § 103(a) as unpatentable over Lorant; and

3 In the Answer, the Examiner withdraws the rejection of claim 43 and 58
under 35 U.S.C. § 112, ¶ 2, that were entered on the bases that “viscous” and
“one or more water miscible components,” respectively, make the claims
indefinite (Ans. 19). With respect to the remaining bases for maintaining the
rejection, the Appellant observes that the terms at issue, “normal” and
“standard,” do not appear in claim 46, which depends from claim 43, but
rather in claim 43 itself, and, therefore, presumes that claims 43–66 were
intended to be listed as the claims rejected on this ground (Appeal Br. 7).
The Examiner does not correct the rejection in the Answer (Ans. 3), but,
indeed, acknowledges that the terminology at issue is present in claim 43 (id.
at 20). Claim 46 depends from claim 43 and, therefore, incorporates the
allegedly offending limitations at issue. Consequently, indefiniteness as to
dependent claim 46, if proven, would necessarily implicate indefiniteness for
independent claim 43.
4 US 2008/0152681 A1, published June 26, 2008.
5 US 6,419,909 B1, issued July 16, 2002.
6 US 2005/0163730 A1, published July 28, 2005.
Appeal 2019-006090
Application 12/586,198

4
E. Claims 45, 46, 52, and 59 under 35 U.S.C. § 103(a) as
unpatentable over Lorant in view of Maes et al.7 (“Maes”).
(Ans. 3–39; Final Act. 3–23).
III. DISCUSSION
Rejection A (Indefiniteness: Claims 46–66). The Examiner states
that claims 46–66 are indefinite because the term “normal” or “standard” in
the recitations “normal cycle,” “normal laundry conditions,” or “standard
laundry detergent” is arbitrary (Ans. 3; Final Act. 3).
The Appellant contends that the phrase “normal cycle” in the context
of claim 43 (“washed in warm water using a standard laundry detergent on a
normal cycle”) has a specific meaning in the art, because “[a] person of
ordinary skill in the art is aware tha[t] most washing machines have a setting
in the controls labeled a ‘normal’ cycle (sometimes called a ‘standard’ or
‘cotton’ cycle)” and that it “has an objective meaning indicating that the
cycle is somewhat more harsh than the ‘delicate’ (i.e., low speed) cycle [or
permanent press cycle]” (Appeal Br. 7–8). The Appellant argues that,
similarly, “a person of ordinary skill in the art would clearly understand that
the phrase ‘standard laundry detergent’ clearly indicates that the detergent to
be used is any detergent that is ordinary, regular or typical” (id. at 8).
In the Response to Argument section of the Answer, the Examiner
adds:
[I]t is noted that the term “warm” is a relative
terminology that would vary from a person of ordinary skill in
the art to another. Appellant argues that “normal cycle” are [sic]
understood by persons of ordinary skill in the art as being any

7 US 2009/0035242 A1, published February 5, 2009.
Appeal 2019-006090
Application 12/586,198

5
cycle of washing that is different from “delicate cycle” or
“permanent press cycle” setting on typical washing machine.
The problem with appellant’s definition is that it is solely
directed to washing cycles of “washing machines” and
particularly “typical washing machines” for that matter. The
claims do not specifically require use of washing machines, nor
recite that “normal cycle” is specifically directed to washing
using washing machines and particularly washing using “typical
washing machines”. Thus, arguably, any non-conventional
means of washing are within the purview of the claim, and the
terms “warm”, “normal cycle” could be much different than
those of typical washing machines.
Appellant argues that term “standard” is defined as having
no special or unusual features, ordinary, regular or typical and
thus “standard laundry detergent” would be known ton [sic]
persons of ordinary skill in the art as being any typical laundry
detergent. However, the term is vague because any laundry
detergent could be considered by some persons of ordinary skill
in the art as being non-special, usual, regular or typical thus
making the term vague. Also, laundry detergents that are
standard or typical or usual or ordinary in one region or locality
could be non-standard, unusual, or atypical in another region or
locality or to other persons of ordinary skill in the art practicing
the invention.
(Ans. 20–21 (emphases added)).
It is well-settled that claims are not to be read in a vacuum but, rather,
limitations therein must be interpreted in light of the remainder of the
specification in giving them their broadest reasonable interpretations. See,
e.g., In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983).
Because the rejection does not apply this principle, we concur with the
Appellant that the rejection cannot stand. When read in light of the
Specification (e.g., Spec. at 55, ll. 13–15 (“The fabric was then washed with
warm water using a standard laundry detergent on a normal cycle setting.”),
we conclude that the terms “normal” and “standard,” in their current
Appeal 2019-006090
Application 12/586,198

6
contexts of the claimed subject matter as whole, would not have rendered the
claims to be indefinite because a person of ordinary skill in the art would
have understood that the Inventors were referring to common washing
machines and ordinary detergents. Hearing Components, Inc. v. Shure Inc.,
600 F.3d 1357, 1367 (Fed. Cir. 2010) (“Not all terms of degree are
indefinite. However, the specification must ‘provide[] some standard for
measuring that degree.’”) (internal citation omitted).
To the extent that variations may exist in “normal cycle[s]” or
“standard laundry detergent[s]” in the art, 35 U.S.C. § 112, ¶ 2, does not
demand the type of precision that the Examiner appears to require. In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“This requirement [in 35
U.S.C. § 112, ¶ 2,] is not a demand for unreasonable precision.”). That is,
the fact that a claim may cover many variations within its scope does not, in
and of itself, warrant an indefiniteness rejection. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (“The
patent law does not require that all possible lengths corresponding to the
spaces in hundreds of different automobiles be listed in the patent, let alone
that they be listed in the claims.”); In re Gardner, 427 F.2d 786, 788 (CCPA
1970) (“Breadth is not indefiniteness.”).
For these reasons, we do not sustain Rejection A.
Rejection B (Obviousness Over Brown in View of Lorant: Claims
43–45, 47–51, 53–58, 60–62, & 64–66). Unless separately argued within
the meaning of 37 C.F.R. § 41.37(c)(1)(iv), all claims subject to Rejection B
stand or fall with claim 43, which we select as representative pursuant to the
rule. In this regard, merely pointing out what a claim recites or arguing
skeletally that a prior art reference does not disclose or suggest a claim
Appeal 2019-006090
Application 12/586,198

7
limitation is not an argument in support of separate patentability. In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Turning to the merits with respect to claim 43, the Examiner finds that
Brown describes a cosmetic composition in the form of an oil-in-water
emulsion (i.e., an emulsion having two immiscible phases) containing a
fractal particle-based gel and refractive index-matching polymers to form a
composition with optical blurring and space-filling properties for improving
the surface appearance of biological substrates such as skin and lips (Ans. 4–
5; Final Act. 5–6). According to the Examiner, Brown teaches these
compositions as transparent and/or translucent, and, therefore, the refractive
indices of the compositions’ components would be similar (i.e., matched)
(Ans. 5). Additionally, the Examiner finds that “all of the silicone
hydrophobic polymers and glycol hydrophilic polymers have refractive
indices that are matching as shown in [Brown’s] [T]able 2” (id. (bolding
removed)). As to whether the composition is washable in the manner as
recited in claim 43, the Examiner finds that the prior art composition would
be expected to be washable from fabrics using standard laundry detergents
under a normal cycle because the composition comprises similar ingredients
as those disclosed for the claimed composition (id. at 6).
The Examiner relies on Lorant to demonstrate that the specific
hydrophilic polymers disclosed in the current Specification are known
thickeners for cosmetic compositions similar to those disclosed in Brown,
and that, therefore, a person having ordinary skill in the art would have
Appeal 2019-006090
Application 12/586,198

8
found it obvious to incorporate them in Brown because Brown allows for the
use of hydrophilic thickeners (Ans. 8; Final Act. 7).
The Appellant’s principal argument is that the Examiner’s rejection
lacks an articulated reasoning with some rational underpinning because it
“fail[s] entirely to distinguish between the ‘components of the composition’
such as the fractal particles and RIMPs [refractive index matching polymers]
of Brown and the flowable hydrophobic phase and the flowable aqueous
phase of Claim 43” (Appeal Br. 12–13). According to the Appellant, Brown
teaches using a RIMP having the same refractive index as the fractal
particles rather than matching the refractive index of a flowable hydrophobic
phase containing a silicone polymer with a hydrophilic phase containing a
hydrophilic polymer by adding sufficient amounts of water and a water-
miscible glycol adjusting agent to the hydrophilic phase, as required by
claim 43 (id. at 13).
We have fully considered the Appellant’s argument but find that the
argument fails to identify reversible error in the Examiner’s rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As the Examiner correctly finds, Brown describes a cosmetic
composition for providing optical blurring and space filling effects on
biological substrates such as skin and lips to improve surface appearance
(Brown ¶ 1). Brown teaches that the cosmetic composition may be in the
form of an oil-in-water emulsion, which would include two immiscible
aqueous and oil phases, comprising a fractal particle-based gel and refractive
index matching polymers with respect to the fractal particles such that the
refractive index matched particles become “invisible” or “optically
transparent” (id. ¶¶ 11–12, 66, 76; Abstract). According to Brown, the
Appeal 2019-006090
Application 12/586,198

9
composition “fills in fine lines and wrinkles and diffuses reflected and
transmitted light while maintaining high transparency” (id. ¶ 67 (emphasis
added)). Brown further teaches that one or more refractive index matching
polymers may be distributed between the fractal gel phase and another phase
in an emulsion system and may be selected from, e.g., methyl phenyl
silicone fluid (F-5w 100 cs) (refractive index = 1.427) or phenyl
trimethicone (refractive index = 1.460) and diethylene glycol mono ethyl
ether (refractive index = 1.427), propylene glycol (refractive index = 1.441),
or glycerol (refractive index = 1.472) (id. ¶¶ 71–72 (Table 2)), respectively.8
Thus, Brown discloses hydrophilic components including glycol compounds
having refractive indices that are “[s]ubstantially identical,” as defined in the
current Specification (Spec. at 23, ll. 23–28; dependent claim 44 (Appeal Br.
48)), to the refractive indices of the hydrophobic components including
hydrophobic silicone polymers.
As stated above, the Appellant argues that Brown teaches using a
RIMP having the same refractive index as the fractal particles rather than
matching the refractive index of a flowable hydrophobic phase containing a
silicone polymer with a hydrophilic phase containing a hydrophilic polymer
by adding sufficient amounts of water and a water-miscible glycol adjusting
agent to the hydrophilic phase, as required by claim 43 (id. at 13). But
Brown also teaches that amounts of water and a glycol are present in or
added to the formulation to provide, in combination with an oil
(hydrophobic) phase, a highly transparent composition in which the
refractive indices must necessarily be substantially matched for high

8 Compare with, e.g., Specification at 8, ll. 4–12; 11, l. 25–12, l. 2; 14, ll. 6–
10; dependent claims 45, 47, and 48 (Appeal Br. 48–49).
Appeal 2019-006090
Application 12/586,198

10
transparency (Brown ¶¶ 11–12, 66–67, 71–72 (Table 2), 76). Thus, Brown
teaches the limitations “wherein sufficient amounts of water and the water-
miscible glycol refractive index adjusting agent are present in the flowable
aqueous phase to cause the first refractive index to substantially match the
second refractive index,” as recited in claim 43. The fact that Brown teaches
matching the refractive indices of the fractal particles and the RIMP is of no
moment, because claim 43 does not exclude fractal particles that are also
matched with the RIMP in terms of refractive index. Cf. In re Baxter, 656
F.2d 679, 686 (CCPA 1981) (“As long as one of the monomers in the
reaction is propylene, any other monomer may be present, because the term
‘compris[ing]’ permits the inclusion of other steps, elements, or materials.”).
Under these circumstances, we discern no reversible error in the
Examiner’s articulated reasoning that a person having ordinary skill in the
art would have been prompted to formulate an aqueous phase that includes a
glycol component that has the same or substantially identical refractive
index as that of the oil phase that contains a hydrophobic silicone polymer-
containing component, thus resulting in a composition with “high
transparency” as explicitly disclosed in Brown (Brown ¶ 67). Again, the
fact that Brown teaches a highly transparent composition supports the
Examiner’s determination (Ans. 5) that the refractive indices of all phases in
the composition would be matched, as required in claim 43. In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
Additionally, in view of the structural similarities between Brown’s
compositions and the claimed composition, it would reasonably appear that
Brown’s composition would be washable in the manner as required by claim
43, especially given the fact that claim 43 reads on compositions that meet
Appeal 2019-006090
Application 12/586,198

11
this limitation when tested using any conventional washing machine,
including those with relatively vigorous “normal cycles” operated with
relatively superior standard laundry detergents for tough dirt or stain
removal. The Appellant fails to direct us to persuasive evidence to show the
contrary.9 Id. See also In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en
banc) (explaining that, in certain circumstances, it is not necessary that both
a structural similarity between a claimed and prior art composition be shown
and that there be a suggestion or expectation from the prior art that the
claimed composition will have the same or a similar property as one newly
discovered by the applicant).
The Appellant argues that Brown’s fractal particles are insoluble in
the oil-in-water emulsion (Appeal Br. 14). But, consistent with the
Examiner’s position (Ans. 22–23), that does not negate Brown’s teaching
that the overall composition is highly transparent, as we found above.
Again, claim 43 does not exclude the presence of fractal particles in addition
to the aqueous phase and the hydrophobic phase. Cf. Baxter, 656 F.2d at
686.

9 The Appellant argues that “the present [S]pecification provides evidence
in Example 2, pages 54–56, belying the Examiner[’s] assertions that the
presently claimed compositions containing a silicone hydrophobic phase
‘would be’ washable from fabric under normal washing conditions” (Appeal
Br. 22–23). As the Examiner correctly finds (Ans. 28), Example 2 of the
Specification does not compare the claimed invention against the closest
prior art, which is either Brown or Lorant and, therefore, is ineffective. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art. . . . Mere
recognition of latent properties in the prior art does not render nonobvious
an otherwise known invention.”).
Appeal 2019-006090
Application 12/586,198

12
The Appellant also argues that “there is no indication that [Brown’s]
composition itself is transparent as a flowable emulsion” but “rather, [that] it
is when the composition forms a thin film on the skin that the word
‘transparency’ is used” (Appeal Br. 18). But as the Appellant concedes
(Appeal Br. 18), the claims do not require the compositions to be transparent
or translucent. Here, Brown teaches that the refractive index of the fractal
particles are matched to the refractive index matching polymers such that the
particles are “less optically apparent to the observer,” which would indicate
that all phases of the composition, including the solid phase, are matched in
terms of refractive index (Brown ¶¶ 66–67). That satisfies the limitations
recited in claim 43. Although the Appellant argues that Brown’s disclosure
of transparency is unique to its placement on the underlying skin substrate
and not that the composition itself is transparent (Appeal Brief 18), the
Appellant’s proffered technical explanation is insufficient to support such an
allegation. If a composition is highly transparent with respect to skin, as
explicitly disclosed in Brown, it would reasonably appear that the
composition would be transparent when applied to any substrate or to itself.
The Appellant argues that Lorant teaches away from the claimed
subject matter because it discourages a person having ordinary skill in the art
from using glycols or glycerol to increase the refractive index of an aqueous
phase so as to bring its refractive index closer to the fatty phase (Appeal Br.
19–20). This argument is unpersuasive.
In discussing earlier prior art, Lorant teaches that “[a] process has . . .
been proposed which consists in increasing the refractive index of the
aqueous phase by adding glycol or glycerol, so as to bring its refractive
index closer to that of the fatty phase” (Lorant col. 1, ll. 46–49), which is the
Appeal 2019-006090
Application 12/586,198

13
same technique used to produce the claimed composition. Lorant states,
however, that “this process requires the addition of an often large proportion
of glycol or glycerol and the emulsions thus obtained have genuinely
unpleasant aspects such as a sticky cosmetic feel, as well as problems of
discomfort when they are applied” (id. at col. 1, ll. 49–53). Thus, to the
extent that such a technique results in a composition that has a “sticky
cosmetic feel” and “problems of discomfort when they are applied,” the
Appellant fails to direct us to evidence that the invention recited in claim 43
is free from such disadvantages. In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (“Even reading [the prior art]’s description as discouraging use of
epoxy for this purpose, Gurley asserted no discovery beyond what was
known to the art.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(“[C]ase law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation [or reason] for the current invention.”).
Moreover, although Lorant teaches overcoming the problems of the
prior art by reducing the refractive index of the fatty phase to be
substantially equal to that of the aqueous phase by using a miscible volatile
fluoro compound with a refractive index of less than or equal to 1.3 (Lorant
col. 1, l. 66–col. 2, l. 4), which claim 43 does not exclude, it also teaches
using glycols (id. at col. 8, l. 44–col. 9, l. 7 (Example 3)), as the Examiner
points out (Ans. 16–17). By their presence in the aqueous phase, the glycols
would necessarily function as a “refractive index adjusting agent,” as recited
in claim 43. Dillon, 919 F.2d at 697 (“[A] compound and all of its
properties are inseparable.”) (citing In re Papesch, 315 F.2d 381, 391
(CCPA 1963)).
Appeal 2019-006090
Application 12/586,198

14
For these reasons, we uphold the Examiner’s rejection as maintained
against claim 43.
With respect to claim 49, which recites that the composition is
“effective as a sexual lubricant” and “has a coefficient of friction less than
that of water and greater than that of glass” (Appeal Br. 49–50), the
Appellant argues further that “[a] sexual lubricant must, by definition, be
sufficiently lubricious to cushion skin surfaces from frictional irritation,
particularly over a period of time during which surfaces may be in contact”
and “must be non-irritating to an extent far beyond that of, for example, a
simple facial cosmetic” (id. at 27). But even if the Appellant’s alleged
definitions are supported by objective evidence, which they are not, the
Appellant offers no comparative experimental evidence that Brown’s or
Lorant’s compositions, which contain the same ingredients disclosed for the
claimed composition and may be formulated into various creams, gels,
pastes, and lotions (Brown ¶ 83; Lorant at col. 1, ll. 22–25), would be
unsuitable as a sexual lubricant or have a coefficient of friction outside the
range recited in claim 49. The fairness in shifting the burden of production
to the Appellant is evidenced by the PTO’s inability to manufacture or
obtain products, let alone compare products. Best, 562 F.2d at 1255.
The Appellant’s arguments in support of the other claims subject to
Rejection B have already been addressed above. Accordingly, we sustain
Rejection B.
Rejection C (Obviousness Over Brown in View of Rosevear:
Claims 43–62 & 64–66). The Appellant’s arguments against Rejection C
are substantially the same as that offered against Rejections B (Appeal Br.
30–36), supplemented by the further assertion that “[t]he mere addition of a
Appeal 2019-006090
Application 12/586,198

15
Markush group of specified hydrophilic polymers disclosed by Rosevear
(which describes a completely different type of composition than the
claimed lubricant composition) does not cause the combination of Brown
and Rosevear to render this lubricant composition obvious” (id. at 35).
Therefore, we uphold Rejection C for the substantially the same reasons
discussed above for Rejection B. Regarding Rosevear, the Appellant’s
attack on Rosevear fails to consider the collective teachings of Brown and
Rosevear, as the Examiner points out (Ans. 32). In re Keller, 642 F.2d 413,
425 (CCPA 1981).
As for the Appellant’s argument that the Examiner’s rationale for
combining Brown and Rosevear is conclusory (Appeal Br. 35), we disagree.
The rationale is properly rooted in the principle that “[w]hen a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
Regarding claim 49, the Appellant notes that “the Examiner simply
repeats his grounds of rejection of Claim 49 over Brown and Lorant”
(Appeal Br. 33). Although the Examiner does not include Lorant in the
statement of the rejection (Ans. 10; Final Act. 9), we discern no reversible
error in the Examiner’s analysis as far as Brown’s teachings are concerned
(Ans. 15; Final Act. 13).
Rejection D (Obviousness Over Lorant: Claims 43, 44, 47–51, 53–
58, 60–62, & 64–66). The Appellant’s arguments against Rejection D have
already been addressed above (Appeal Br. 37–42). Therefore, we sustain
Rejection D for many of the same reasons discussed above in Rejection B.
Appeal 2019-006090
Application 12/586,198

16
Rejection E (Obviousness Over Lorant in View of Maes: Claims
45, 46, 52, & 59). Again, the Appellant’s arguments against Rejection E are
substantially the same as that offered against Lorant above (Appeal Br. 42–
46), adding only that “Maes does not discuss adjusting the refractive indices
of an aqueous or silicone phase” (id. at 43). As discussed above, however,
Lorant teaches the same or substantially similar composition as recited in the
claims. Therefore, we also uphold Rejection E.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
46–66 112, ¶ 2 Indefiniteness 46–66
43–45, 47–51,
53–58, 60–62,
64–66
103(a) Brown, Lorant 43–45, 47–
51, 53–58,
60–62, 64–
66

43–62, 64–66 103(a) Brown, Rosevear 43–62, 64–
66

43, 44, 47–51,
53–58, 60–62,
64–66
103(a) Lorant 43, 44, 47–
51, 53–58,
60–62, 64–
66

45, 46, 52, 59 103(a) Lorant, Maes 45, 46, 52,
59

Overall
Outcome
43–62, 64–
66
63

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART