KIMBERLY-CLARK WORLDWIDE, INC.

Patent Trials and Appeals Board

Feb 11, 2020

15533777 - (D) (P.T.A.B. Feb. 11, 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.
15/533,777 06/07/2017 Stacy A. Mundschau 64943120US08 3612
23556 7590 02/11/2020
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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):
Kimberlyclark.docketing@kcc.com
Tisha.Sutherland@kcc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STACY A. MUNDSCHAU, SANGHA PARK and
COREY T. CUNNINGHAM1
Appeal 2019-006565
Application 15/533,777
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
cosmetic emulsion, which have been rejected as indefinite. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Kimberly-Clark
Worldwide, Inc. Appeal Br. 1. We use the word Appellant to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
“The hydrophobic or occlusive properties of a particular formulation
may be determined by measuring water vapor transport rate (wVTR) and
contact angle. Substances with a low wVTR and a high contact angle are
highly occlusive and protective against excessive hydration when the skin is
exposed to water-based materials for an extended period.” Spec. 1:23–26.
“The present disclosure relates to cosmetic oil-in-water emulsions that are
breathable, have a relatively low wVTR, and have a low solids content.” Id.
at 2:22–23.
Claims 1–20 are on appeal. Claims 1, 2, and 5, reproduced below, are
illustrative (emphasis added):
1. A cosmetic oil-in-water emulsion comprising:
water at a concentration of at least about 70% by total
weight of the cosmetic oil-in-water emulsion;
a plurality of water-in-oil emulsifiers;
a base oil; the base oil having a pre-immersion wVTR of
1.0 to 30 g/m2/hr according to a Pre-immersion Water
Vapor Transport Rate Test Method and being at a
concentration of no more than 15% by total weight of the
cosmetic oil-in-water emulsion;
an oil-in-water emulsifier; and
a film-forming polymer.

2. The cosmetic oil-in-water emulsion of claim 1, wherein
the cosmetic oil-in-water emulsion has a post-immersion
wVTR value of between 1.0 to 40 g/m2/hr according to a
Post-Immersion Water Vapor Transport Rate Test
Method and an oxygen permeability of at least 1.0 cc/100
in2 per day according to an Oxygen Permeability Test
Method.

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5. The cosmetic oil-in-water emulsion of claim 1, wherein
the cosmetic oil-in-water emulsion has a contact angle
greater than 60° according to a Contact Angle Test
Method.

OPINION
Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as indefinite, for
several reasons. Final Action 2–3. First, the Examiner finds that the claims
are indefinite because they “recite a wVTR measurement without defining
the terms of this measurement. Nowhere in the specification as filed is there
a clearly set forth definition of this claim term.” Id. at 3.
Second, the Examiner finds that the claims are indefinite because
“they recite a ‘base oil’ without definition of what is included or excluded by
this term. As such, to interpret the claims, one must import limitations from
the specification as filed into the claims.” Id. The Examiner finds that it is
“unclear what components are required to meet the limitation ‘base oil.’” Id.
Third, the Examiner finds that
the oxygen permeability parameter . . . is unclear since this test
is referenced without reciting the parameters of this term. These
measurements may vary from one person or circumstance to
another since the conditions such as temperature and humidity
gradient under which the measurement is made influences the
result.
Id.
Finally, the Examiner finds that “claim 5 is unclear since claim 5
recites a contact angle without defining the solid surface on which the
measurement is taken, thereby leaving the claim open to variable results
depending on the testing.” Id. at 3–4.
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Appellant argues that the claim meaning “would be understood by one
of ordinary skill in the art when reading the specification” because “each of
the four specified test methods used in Appellant’s claims . . . are described
on pages 25–28 in the section of Appellant’s specification entitled ‘Test
Methods.’” Appeal Br. 4. Specifically, “claims 1, 4, 18, and 20 specify a
Pre-immersion Water Vapor Transport Rate Test Method. This test method
is fully defined and supported in Appellant’s original specification on page
25 under the sub-heading ‘Water Vapor Transport Rate (wVTR) – Pre-
Immersion.’” Id.
“[C]laims 2 and 19 specify a Post-immersion Water Vapor Transport
Rate Test Method. This test method is fully defined and supported in
Appellant’s original specification on pages 25–26 under the sub-heading
‘Water Vapor Transport Rate (wVTR) – Post Immersion.’” Id. “[C]laims 2
and 19 . . . also specify an Oxygen Permeability Test Method. . . . The
oxygen permeability parameters would be measured according to the
specified Oxygen Permeability Test Method defined on page 26.” Id. at 5–6.
“[C]laim 5 also specifies a Contact Angle Test Method. . . . Appellant
respectfully asserts that one of ordinary skill in the art, when reading the
Contact Angle Test Method on pages 27 and 28 of Appellant’s original
specification would understand the test parameters and equipment used in
such test method.” Id. at 6.
Finally, Appellant argues that the “specification provides an express
definition for the term ‘base oil.’ . . . [T]he term ‘base oil’ is defined on page
3 under the sub-heading ‘Base Oil’, which states, ‘[t]he base oil can be any
oil with a wVTR less than 30.0 g/m2/hr.’” Id. at 4–5. As the Examiner has
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pointed out, however, the “wVTR” used to define “base oil” is itself a term
the Examiner finds to be indefinite. Ans. 5.
We agree with the Examiner that the claims as written are indefinite.
“[A] patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014).
“Nautilus emphasizes ‘the definiteness requirement’s public-notice
function.’” Dow Chem. Co. v. Nova Chems. Corp. (Canada), 803 F.3d 620,
630 (Fed. Cir. 2015). “Although the Court recognized that ‘[s]ome modicum
of uncertainty’ may be tolerated, . . . the patent and prosecution history must
disclose a single known approach or establish that, where multiple known
approaches exist, a person having ordinary skill in the art would know which
approach to select.” Id. (The Dow court’s reference to prosecution history
was in the context of an infringement case; before a patent is issued,
“[a]bsent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).)
Dow addressed an issue similar to the one on appeal here. In that case,
“[t]he claim term at issue . . . provide[d] for ‘a slope of strain hardening
coefficient greater than or equal to 1.3.’” Dow, 803 F.3d at 631. The record
showed that at least four methods could be used to measure the relevant
slope, and “each of these four methods may produce different results, i.e., a
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different slope.” Id. at 633. “Because the methods do not always produce the
same results, the method chosen for calculating the slope of strain hardening
could affect whether or not a given product infringes the claims.” Id. at 634.
Similar to the multiple tests in Dow, here Appellant has not pointed to
evidence, or even asserted, that those skilled in the art would have
recognized, for example, “an Oxygen Permeability Test Method” or “a
Contact Angle Test Method” as referring to a single, art-recognized test
method carried out under specific, standardized conditions. Nor has
Appellant pointed to evidence, or even asserted, that every method of
measuring the parameters recited in the claims will provide the same result.
Thus, the claim language, even read in light of the Specification, fails to
apprise those skilled in the art of the scope of the claims, because it does not
make clear which assays and assay conditions define whether or not a
composition is encompassed by the claims.
Appellant correctly notes that “an Applicant has the ability to be their
own lexicographer and can define aspects of their invention in the claims in
whatever terms or language they choose.” Appeal Br. 3. To act as its own
lexicographer, however, an applicant must “clearly set forth a definition of
the disputed claim term.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
1359, 1366 (Fed. Cir. 2002).
Here, as the Examiner has noted, “the specification as filed does not
clearly present a special definition of the terms at hand.” Ans. 3. That is, the
Specification does not define the parameters recited in the claims as being
determined according to a specific test, under specific conditions, nor does
the Specification define the “Test Method[s]” recited in the claims as those
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described under “Testing Methods” in the Specification. Cf. Spec. 3:9–15
(expressly defining “water-in-oil emulsions,” “oil-in-water emulsions,” and
a “stable” emulsion). Rather, the “Testing Methods” section of the
Specification appears to describe the testing methods that were used in the
Specification’s working examples, rather than prescribing those methods for
use in defining the invention.
In addition, the claims themselves do not specify the steps and
conditions of the testing methods used to determine the parameters defining
the scope of the claims. Compare the instant claims, for example, to one of
the claims on appeal in In re Kao, 639 F.3d 1057 (Fed. Cir. 2011), which
recited:
a controlled release delivery system comprising at least one
pharmaceutical excipient, wherein upon placement of the
composition in an in vitro dissolution test comprising USP
Paddle Method at 50 rpm in 500 ml media having a pH of 1.2
to 6.8 at 37° C, about 15% to about 50%, by weight, of the
oxymorphone or salt thereof is released from the tablet at about
1 hour in the test.
Id. at 1061–62 (emphasis in original). Claim definiteness was not at issue in
Kao; it is cited here only to show the lack of specificity in Appellant’s
claims regarding the procedures and conditions for measuring the recited
parameters.
In summary, the claims do not recite the test methods required to
determine the scope of the claims, and the Specification does not define the
claim terms with sufficient clarity to allow those skilled in the art to
determine, with reasonable certainty, the test methods and conditions that
define the scope of the claims. We therefore conclude that the claims, even
read in light of the Specification, “fail to inform, with reasonable certainty,
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those skilled in the art about the scope of the invention.” Nautilus, 572 U.S.
at 901. The rejection of claims 1–20 under 35 U.S.C. § 112(b) is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–20 112(b) Indefiniteness 1–20

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