Jorge Max. Sunkel

Patent Trials and Appeals Board

Feb 28, 2020

15425713 - (D) (P.T.A.B. Feb. 28, 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.
15/425,713 02/06/2017 Jorge Max SUNKEL 14712 3215
27752 7590 02/28/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
ROSENTHAL, ANDREW S
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE MAX SUNKEL
____________

Appeal 2019-000212
Application 15/425,713
Technology Center 1600
____________

Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–16 as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
STATEMENT OF THE CASE
According to the Specification, personal care compositions often
contain emulsions. “In a conventional two-phase emulsion system, a
discontinuous phase (sometimes referred to as the internal phase or
dispersed phase) is dispersed throughout a continuous phase as a multitude

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Procter &
Gamble Company, Cincinnati, Ohio. Appeal Br. 1.
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of droplets. In cosmetics, the two most common types of emulsions are oil-
in-water (O/W) emulsions and water-in-oil (W/O) emulsions.” Spec. 1:21–
25. “[S]kin care compositions in the form of a W/O HIPE can provide the
desirable light feel of a O/W emulsion and the perception of good
moisturizing associated with a W/O emulsion.” Id. at 2:30–32. The addition
of “relatively large superabsorbent polymer particles into the aqueous phase
of a W/O HIPE can provide an improved sensory experience to a user.”
Id. at 5:9–11. According to the Specification, high internal phase emulsions
(HIPEs) “include a dispersed phase present at an amount greater than the
continuous phase. For example, the volume fraction of the dispersed phase
of a HIPE may be greater than 0.74.” Id. at 2:28–30.
Claims 1–16 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A personal care composition in the form of a water-in-oil,
high internal phase emulsion, comprising:
a. more than about 74%, by volume, of an internal
aqueous phase;
b. about 0.01% to about 3%, by weight, of a
superabsorbent polymer (SAP) in the aqueous phase; and
c. less than about 26%, by volume, of a continuous oil
phase.
Appeal Br. 11 (Claims Appendix). Claim 16, the only other independent
claim, additionally recites the droplet size of the aqueous phase and the
particle size of the swollen SAP.

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REFERENCE(S)
The prior art relied upon by Examiner is:
Name Reference Date
Catalfamo et al.
(“Catalfamo”)
US 6,369,121 B1 Apr. 9, 2002
Finley et al. (“Finley”) US 2015/0023895 A1 Jan. 22, 2015
Labatut US 2015/0342864 A1 Dec. 3, 2015
REJECTION(S)
The following grounds of rejection are before us for review:
I. Claims 1–16 under 35 U.S.C. § 103 as unpatentable over Finley and
Catalfamo.
II. Claims 1 and 7–15 under 35 U.S.C. § 103 as unpatentable over Labatut.

I. Obviousness over Finley and Catalfamo
Does the preponderance of evidence of record support Examiner’s
conclusion that the claims are obvious?
Findings of Fact
FF1. Finley teaches that “[e]mulsion may be generally classified as having
a continuous aqueous phase (e.g., oil-in-water and water-in-oil-in-
water) or a continuous oil phase (e.g., water-in-oil and oil-in-water-in-
oil).” Finley ¶ 30. Finley teaches that water or water miscible solvent
can be present in the emulsion from about 1–95%. Id. Finley teaches
that oil based carriers can be present in the emulsion from about
1−95%. Id. ¶ 31.
FF2. Finley teaches that “[t]he superabsorbent polymer used in the
composition of the invention is preferably provided in the form of
particles which, once hydrated, swell with the formation of soft beads
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having a number-average diameter of 10 μm to 1000 μm.” Finley
¶ 43. Finley provides a list of suitable SAP polymers (see id. ¶¶ 44–
46) including Makimousse 12 and Makimousse 25 (id. ¶ 46). The
SAP polymer is present in the composition from about 0.01–10%. Id.
¶ 47. Finley teaches that the SAP is dissolved in the water phase prior
to forming an emulsion. See id. claim 9.
FF3. Finley teaches the incorporation of 0.1 % to about 20% of a non-
emulsifying crosslinked organopolysiloxane elastomer. Finley ¶ 49.
FF4. Finley teaches the incorporation of nonionic, anionic, or cationic
emulsifiers in the range of 0.01–2%. Finley ¶ 90.
FF5. Catalfamo teaches methods for producing HIPEs. Catalfamo 10:31–
36. Catalfamo teaches that in the production of HIPEs it is important
that “the distribution of the individual phases during the mixing
process must be kept uniform, not only for purposes of having a
uniform viscosity, but also to insure that the distribution of
components being mixed is uniform.” Id. at 10:45–49. “[U]niform cell
sizes can be used to uniformly contact relatively large surfaces with a
relatively small amount of an active carried in the continuous, external
phase.” Id. at 10:7–10.
FF6. Catalfamo teaches the “water-to-oil phase in the HIPE is at least about
2:1, and is typically in the range of from about 2:1 to about 250:1,
more typically from about 4:1 to about 250:1.” Catalfamo 3:10–12.
Principle of Law
“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).
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Analysis
Examiner finds that Finley teaches skin care compositions containing
water, SAP, and oil in overlapping ranges relative to the claimed ranges.
Ans. 5–9; FF1–FF4. Examiner acknowledges that “Finley does not
exemplify a water-in-oil emulsion” but notes that Finley’s claims “clearly
describe a w/o emulsion as being a suitable formation of [Finley’s]
invention.” Ans. 6. Examiner also acknowledges that “Finley does not teach
the droplets of the internal aqueous phase as being between 10-250
microns.” Id. Examiner relies on Catalfamo for teaching a method of making
HIPE containing similar components as those disclosed in Finley. Id.; FF5–
FF6. Examiner relies on Catalfamo
for its teaching that in forming HIPE, the shear rate can be
adjusted to achieve a desired droplet size. As such, droplet size
is a variable property of the emulsion that can be modified by
routine experimentation. Catalfamo further identifies that
increasing the shear rate decreases the mean droplet size from
about 121 microns to about 10 microns . . . . By decreasing the
droplet size and thus making it more uniform, Catalfamo
teaches, [that] the viscosity of the HIPE increases.
Ans. 13–14; FF5–FF6. Examiner identifies that the skilled artisan’s
motivation to make HIPE from the formulations contemplated in Finley is to
create products having “[u]niformity of the emulsion . . . to insure
distribution of components.” Id. at 14.
Appellant contends that Finley does not teach high internal phase
emulsions (HIPE) emulsions but instead teaches low-internal phase
emulsions (LIPE) (Appeal Br. 2–5); that there is no reason to “to modify the
LIPE system of Finley to provide a HIPE system as disclosed in Catalfamo”
(id. at 5–7); that Examiner is improperly relying on inherency (id. at 7–8);
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and that Examiner has not given weight to Appellant’s proffered unexpected
results (id. at 8–9).
We are not persuaded by Appellant’s contention that Finley is limited
to LIPE emulsions. Appellant contends that Finley “is directed to
conventional, low-internal phase emulsions (‘LIPEs’), i.e., emulsions in
which the continuous phase is present at a higher amount than the dispersed
phase.” Appeal Br. 3. Appellant contends that Finley is silent with respect to
the HIPE. Id. at 4. Appellant contends that one of skill in the art would
understand that “the phase that is present in the greater concentration will
tend to be the continuous phase.” Id. (citing
https://www.processingmagazine.com/emulsion-stability-basics/) (emphasis
omitted). According to Appellant
if oil were slowly added to the 40 percent O/W emulsion with
good agitation, the emulsion would gradually become more and
more viscous and then suddenly become quite fluid again. After
this point is reached, closer examination would show that the
emulsion was the W/O type. This process is known as
inversion, and the final product is sometimes called an invert
emulsion.
Id. (emphasis removed). Regardless of inversion, Appellant argues, the
product is still an LIPE. Id.
We are not persuaded by Appellant’s arguments because they address
the teachings in Finley separately, when Examiner’s rejection relies on a
combination to arrive at a conclusion of obviousness. The test for
obviousness is what the combined teachings of the references as a whole
would have suggested to those of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981). Here, Examiner acknowledges that Finley is
silent with respect to the formation of a particular emulsion (see Ans. 6) but
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finds that Finley teaches emulsions that contain SAP in the water phase. See
id. at 13 (“Finley clearly teaches including the SAP (Makimousse 25) in the
aqueous phase”). Examiner relies on Catalfamo for teaching methods of
making HIPE using similar components to those disclosed in Finley. See id.
at 6.
Catalfamo evidences that high internal phase emulsions (HIPE or
HIPEs), and the benefits of such, would have been known to one of ordinary
skill in the art. Catalfamo 1:14–2:28. The production of HIPEs, results in a
“relatively high dispersed phase to continuous phase ratios the continuous
(external) phase becomes essentially a thin film separating and coating the
droplet-like structures of the internal, dispersed phase.” Catalfamo 1:19–22.
Catalfamo further explains that after premixing the two immiscible fluids the
“premixed process stream [is processed] using at least one static mixer
segment in a single pass so as to provide sufficient shear to emulsify said
first phase in said second phase creating said high internal phase emulsion
having a[n] internal phase size distribution with a mean particle size.” Id. at
2:43–48. “Another typical component of the oil phase [as explained in
Catalfamo] is an emulsifier (or emulsifiers) that permits the formation of
stable HIPE emulsions. Suitable emulsifiers . . . include any of a number of
conventional emulsifiers.” Id. at 6:43–47. Catalfamo teaches that “[t]he
internal water phase of the HIPE is generally an aqueous solution containing
one or more dissolved components,” such as water-soluble electrolytes. Id.
at 9:24–26. Catalfamo teaches that the “dispersed liquid can contain an
active ingredient that is soluble (or insoluble) which, upon the
polymerization of the continuous (external) phase and evaporation of the
dispersed (internal) phase, coats (or is contained in) the polymerized cells
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form a polymer foam with various properties.” Id. at 10:11–15. Examples of
components that can be dispersed in the liquid aqueous phase are
“gelatinizing powders such as starch for cushions, and concrete for light
weight structural foams.” Id. at 10:26–28. Catalfamo explains that by
controlling particle size and selection of emulsifier one can create HIPE
emulsion. Catalfamo teaches that it is the processing of the components that
determines whether a composition forms an HIPE. See id. at 10:43–45 (“if
too much shear force is applied, the continuous phase will be ruptured
allowing the discontinuous phase droplets to re-combine”). We determine
that Examiner has provided sufficient evidence that, based on the
combination of Finley and Catalfamo, one of ordinary skill in the art would
have been motivated to produce HIPE emulsions using the components
taught in Finley and applying the process taught in Catalfamo.
We are also not persuaded by Appellant’s contention that there is no
reason “to modify the LIPE system of Finley to provide a HIPE system as
disclosed in Catalfamo.” Appeal Br. 5–7. Here, Examiner identifies that
HIPE emulsions, as disclosed in Catalfamo, are desirable to ensure
uniformity of the emulsion for distribution of components. See Ans. 14
(“Uniformity of the emulsion is desired to insure distribution of
components”), FF5. The law does not require that the teachings of the
reference be combined for the reason or advantage contemplated by the
inventor, as long as some suggestion to combine the elements is provided by
the prior art as a whole. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992);
In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976).
We are also not persuaded by Appellant’s contention that Examiner is
improperly relying on inherency. Here, Examiner is relying on Finley for
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teaching the inclusion of a SAP within the water phase before the
components are combined to form an emulsion. See Ans. 6 (Finley’s claims
“clearly describe a w/o emulsion as being a suitable formation of their
invention”). Examiner is relying on inherency with respect to the
components having a particular size and exhibiting a phase separation under
a particular level of stress. See Ans. 5 (“The ability of the SAP to alter or not
alter the viscosity and the particle sizes thereof are considered inherent
properties of the elected species of sodium polyacrylate starch”) (citing In re
Spada, 911 F.2d 705, 709 (Fed. Cir. 1990)). We find no error on this record
with Examiner’s reliance on inherency to establish that the same chemical
compounds would necessarily have the same properties.
We are also not persuaded by Appellant’s contention that Examiner
has not given weight to Appellant’s evidence of alleged unexpected results.
Specifically, cite to the alleged discovery that the inclusion of SAP in an
emulsion leads to products having improved sensory experiences. Appeal
Br. 8. Examiner explains, however, why the proffered evidence is not
sufficient. See Ans. 16–17. Examiner points out that “the data is not
commensurate in scope with the claims since the claims are broad to any oil
and water phases and to any SAP, but compositions C and D [as shown in
Table 2 of the Specification] only use one SAP and specific agents in the
two phases.” Ans. 16; In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“It is
well established that the objective evidence of nonobviousness must be
commensurate in scope with the claims.”). Examiner finds that Appellant
has not established a sufficient nexus between the evidence and the merits of
the claimed invention. Ans. 16 (citing Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010); Ormco Corp. v. Align Technology, Inc., 463
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F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the
commercial success was known in the prior art, the success is not
pertinent.”)). Examiner finds that “Appellant has shown that difference in
sensory [perception] exist[s] when variations in the amount of SAP are made
but have not shown that this is unexpected,” especially because the
components of the conventional cream (for the comparative testing) are not
disclosed. Ans. 16–17. The evidence of record, therefore, supports the
conclusion that Examiner considered Appellant’s proffered evidence of
unexpected results but found the evidence insufficient to overcome the
prima facie case.
The question before us is whether the evidence provided is
sufficiently probative of non-obviousness because they show unexpected
results that are “‘different in kind and not merely in degree from the results
of the prior art.’” See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731,
739 (Fed. Cir. 2013) (quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1322 (Fed. Cir. 2004)). Here, the Specification compares SAP-
containing O/W HIPE with a commercial product that is an O/W LIPE. See
Spec. 21. As Examiner points out, the Specification does not disclose the
composition of the commercial product used in the comparison studies.
Thus, Appellant’s evidence is insufficient to show whether the improved
skin feel is due to the structure of the emulsion (e.g., HIPE vs. LIPE) or a
feature present in the prior art (e.g., the inclusion of SAP in the formulation
as taught in Finley and Labatut). One of ordinary skill in the art would have
known that the inclusion of SAP in a skin formulation provides improved
sensory effect. See Labatut ¶ 191 (inclusion of SAP provides a feeling that is
thicker between the fingers, and that the observed “dragging effect is
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increased in the presence of superabsorbent polymer, which is also reflected
by a tendency to slow down the speed of penetration.”). Thus, an
improvement to the sensory experience resulting from the inclusion of a
SAP would have been expected. Accordingly, we find no error with
Examiner conclusion that the evidence relied on by Appellant is not
sufficient to overcome the evidence of obviousness.
We conclude, considering the totality of the cited evidence and
arguments, that the preponderance of the evidence supports Examiner’s
conclusion of obviousness with respect to claim 1, and Appellant has not
provided sufficient rebuttal evidence or evidence of secondary
considerations that outweighs the evidence supporting Examiner’s rejection.
As Appellant does not argue the claims separately, claims 2–16 fall with
claim 1. 37 C.F.R. § 41.37 (c)(1)(iv).

II. Obviousness over Labatut
Appellant contends that “Labatut is directed to conventional LIPE
systems and not HIPEs.” Appeal Br. 9. Appellant contends “there is no
disclosure in Labatut that the 80% – 97% aqueous phase is the internal phase
of the emulsions.” Reply Br. 4; Appeal Br. 9.
Examiner finds that Labatut recites many of the elements recited in
the claim but acknowledges that “Labatut does not embody a composition
comprising the elected species or an additional emulsifier nor does it
exemplify a water-in-oil emulsion.” Ans. 10. Examiner’s position is that
“[b]ecause the amount of aqueous internal phase [of Labatut] is greater than
the oil phase, the emulsion can be considered a HIPE based on the
Appellant’s definition.” Ans. 17.
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We find that, on this record, Appellant has the better position.
Example 1 of Labatut discloses a composition that contains a SAP in
the aqueous phase that is then mixed with the additional components
including the oil phase. Labatut ¶¶ 187–188. Labatut identifies the use of a
Rayneri mixer for processing the components (see id. ¶ 188) but is otherwise
silent with respect to the structure of the product produced by this mixer.
Identifying that the individual components are within the claimed range is
not enough to establish that when combined the product has the requisite
HIPE structure. What is missing from Examiner’s analysis for this rejection
is evidence that an artisan would have a reason to formulate Labatut’s
components into an HIPE as opposed to an LIPE.2 See KSR, 550 U.S. at 418
(obviousness rejections require “some articulated reasoning with some
rational underpinning”). Just because the composition can be processed in a
way that could result in an HIPE structure does not provide a sufficient
reason to show that the ordinarily skilled person would have done so. We are
not persuaded that Examiner has met the burden of setting out a prima facie
case of obviousness over Labatut.
Accordingly, we reverse the rejection over Labatut alone.

2 Notably, unlike the first rejection, Examiner does not cite Catalfamo, nor
rely on its teachings concerning HIPEs, for this rejection.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16 103 Finley, Catalfamo 1–16
1, 7–15 103 Labatut 1, 7–15
Overall
Outcome
1–16
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED