Kimberly-Clark Worldwide, Inc.

Patent Trials and Appeals Board

Dec 17, 2020

2020003391 (P.T.A.B. Dec. 17, 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.
14/281,532 05/19/2014 Jeffrey R. Seidling KCX1317CON2(64343334US10) 6895
111049 7590 12/17/2020
DORITY & MANNING, P.A. and KIMBERLY-CLARK
WORLDWIDE, INC.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
BROWE, DAVID
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEFFREY R. SEIDLING and COREY THOMAS CUNNINGHAM
__________

Appeal 2020-003391
Application 14/281,532
Technology Center 1600
__________

Before JEFFREY N. FREDMAN, TAWEN CHANG, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
foamable composition. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the Real Party in Interest as
Kimberly-Clark Worldwide, Inc. (see Appeal Br. 3). We have considered
the Specification of May 19, 2014 (“Spec.”); Final Office Action of Feb. 15,
2019 (“Final Action”); Appeal Brief of Sept. 17, 2019 (“Appeal Br.”); and
Examiner’s Answer of Dec. 19, 2019 (“Ans.”).
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Statement of the Case
Background
“Conventional hand cleansing formulations contain solvents and/or
surfactants capable of solubilizing or emulsifying soils present on the skin’s
surface” (Spec. 1:4–6). “Recently, consumer foamable cleansers have
appeared on the market . . . A liquid-gas foam can be considered an
emulsion with the liquid being the continuous phase and the dispersed phase
composed of gas bubbles. Surfactants are frequently used to form most
foams” (id. at 9–26). “One problem that has been experienced in the past in
formulating foamable cleansers is the ability to incorporate an alcohol into
the compositions” (id. at 2:16–17).
Alcohols, for instance, have very effective sanitizing properties.
Alcohols, however, are also known defoaming agents making
their incorporation into foamable cleansers somewhat
problematic. For example, alcohols reduce the surface tension
of water in surfactant/water solutions below that needed to
maintain the integrity of the lamellae of the foam bubble.
Alcohols also displace surfactant molecules at the air/water
interface disrupting the stabilization of any foam being formed
and causing collapse.
(id. at 2:17–24). The Specification teaches that as a result “alcohols have
been combined with expensive or complicated ingredients in order to
facilitate formation of a foam. For instance, those skilled in the art have
proposed in the past adding fluorinated surfactants, such as a
perfluoroalkylethyl phosphate, to sanitizing compositions containing
alcohol” (id. at 2:27–31).
The Specification teaches “a need exists for a foamable sanitizing
composition that contains an alcohol sanitizer” (Spec. 3:3–4).

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The Claims
Claims 24–28, 30, and 43 are on appeal. Independent claim 24 is
representative and reads as follows:
24. A foamable composition comprising:
(a) a derivatized dimethicone containing a linear
polyoxyethylene glycol dimethicone,
(b) at least one C1-4 alcohol in an amount of from about
30% to about 90% by weight,
(c) water in an amount of at least 10% by weight, and
(d) an amphoteric or zwitterionic surfactant comprising
surfactant molecules wherein at least 90 % of the molecules
have a hydrophobic carbon chain length of 18 carbon atoms or
greater wherein the surfactant comprises
meadowfoamamidopropyl betaine.
The issue
The Examiner rejected claims 24–28, 30, and 43 under 35 U.S.C.
§ 103(a) as obvious over Snyder2 and O’Lenick, Jr.3 (Final Act. 3–5).
The Examiner finds Snyder teaches foamable compositions with
overlapping amounts of a linear dimethicone copolyol ester, ethanol or other
C1-4 alcohol, water, and “betaine or other amphoteric or zwitterionic
surfactant” (Final Act. 3). The Examiner acknowledges Snyder does not
teach “the betaine comprises 0.01-10 wt% meadowfoamamidopropyl
betaine” (Final Act. 4).
The Examiner finds O’Lenick, Jr. teaches “meadowfoamamidopropyl
betaine can be employed in personal care compositions at an effective
concentration of about 1 ––50 wt% to provide a smooth feel on the skin as
well as improved stability of the composition” (Final Act. 4). The Examiner

2 Snyder et al., US 2007/0148101 A1, published June 28, 2007.
3 O’Lenick, Jr., Anthony, US 5,834,516, issued Nov. 10, 1998.
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finds it obvious to “employ specifically 1–50 wt%
meadowfoamamidopropyl betaine as the auxiliary betaine surfactant in the
composition of Snyder” because “the resulting composition will successfully
impart a stable foam as well as a smooth feel when applied to the skin”
(Final Act. 4–5).
The issues with respect to this rejection are:
(i) Does a preponderance of the evidence of record support the
Examiner’s conclusion that Snyder and O’Lenick, Jr. render the claims
obvious?
(ii) If so, has Appellant provided evidence of unexpected results that
when balanced with the prima facie case supports a finding of
unobviousness?
Findings of Fact
1. Snyder teaches “foamable alcoholic compositions that include a
foaming surfactant” (Snyder ¶ 2).
2. Snyder specifically teaches:
A skin disinfecting formulation has been described that
comprises: (a) an alcohol in an amount from about 50 to about
80 weight percent of the total composition . . . (c) from about 5
wt. % to about 25 wt. % of a foaming surfactant; . . . (h) from
about 0.5 wt. % to about 5 wt. % of a polyalkylene glycol . . .
from about 6 wt. % to about 30 wt. % of water.
(Snyder ¶ 8).
3. Snyder teaches, regarding component (a) of claim 1, the use of
siloxane polymers such as dimethicone polyols as the foaming surfactant,
where “[e]xamples of siloxane polymer surfactants include dimethicone
PEG-7 undecylenate” (Snyder ¶ 25).
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4. Snyder teaches, regarding component (b) of claim 1, that:
Foamable alcoholic compositions in accordance with this
invention include at least one alcohol and at least one foaming
surfactant. In one embodiment, the alcohol is a lower alkanol,
i.e. an alcohol containing 1 to 4 carbon atoms. . . . Examples of
lower alkanols include, but are not limited to, methanol,
ethanol.
(Snyder ¶ 19).
5. Snyder teaches, regarding component (c) of claim 1, that “the
balance of the alcoholic composition includes water . . . from about 11 wt. %
to about 25 wt. %, based upon the total weight of the alcoholic composition”
(Snyder ¶ 57).
6. Snyder teaches, regarding component (d) of claim 1, that the
foaming surfactant can be a mixutre of siloxane polymer surfactant and a
fluorosurfactant (Snyder ¶ 21) and that “the fluorosurfactant includes a . . .
betaine” (Snyder ¶ 23). Snyder teaches exemplary betaines inlcude
“polymethacryloyl ethyl betaine” (Snyder ¶ 39).
7. O’Lenick, Jr. teaches the
use of meadowfoam . . . to make an meadowfoam amidopropyl
dialkyl betaine results in unique, unexpected properties in
personal care applications. Specifically, the betaines of the
present invention provide a smooth feel on the skin, outstanding
viscosity in anionic systems, and are surprisingly oxidatively
stable in aqueous personal care formulations.
(O’Lenick, Jr. 1:65 to 2:4).
8. O’Lenick, Jr. teaches that the “use of fatty acids having more
tha[n] 12 carbon atoms to make betaines result in betaines which provide
better aqueous foam” and teaches the “availability of meadowfoam oil, with
it’s 20 to 22 carbon atoms” (O’Lenick, Jr. 1:29–32, 50–51).
Principles of Law
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“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).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472–
1473 (Fed. Cir. 1984).
Analysis
We adopt the Examiner’s findings of fact and conclusion of law (see
Final Act. 3–5, FF 1–8) and agree that Snyder and O’Lenick, Jr. render
claim 24 obvious. We address Appellant’s arguments below.
Prima Facie case
Appellant contends
O’Lenick, Jr. explicitly teaches that their meadowfoam betaines
provide improved liquidity. However, Snyder requires
formation of a foam that does not exhibit liquidity, i.e., remains
as a foam for as long as possible. Given the teachings of
O’Lenick, Jr. one of ordinary skill, upon reading the reference
would be discouraged from including a betaine having
improved liquidity in a foamable composition designed to avoid
liquid break-down for as long as possible, i.e., the very path that
was taken by the appellant.
(Appeal Br. 14).
We are not persuaded. Snyder does teach “the alcoholic composition
of these embodiments exhibits improved foam stability when compared to
an alcoholic composition without the foam stabilizer” (Snyder ¶ 34).
However, O’Lenick, Jr. teaches that the “use of fatty acids having more
tha[n] 12 carbon atoms to make betaines result in betaines which provide
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better aqueous foam” (FF 8). O’Lenick, Jr. explains that meadowfoam oil
has 20 to 22 carbons (FF 8).
Thus, contrary to Appellant’s position, O’Lenick, Jr. suggests that
betaines with more than 12 carbon atoms such as the 20 to 22 carbon
meadowfoam amidopropyl betaine improves foam, rather than reduced
foaming. Appellant also does not identify any specific teaching in
O’Lenick, Jr. or Snyder that criticizes, discredits or discourages the use of
meadowfoam amidopropyl betaine in a foaming surfactant. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed.”)
We also note that Appellant provides no evidence in support of the
attorney argument that selecting the 20–22 carbon meadowfoam
amidopropyl betaine for its expected improved foaming ability relative to
compounds with fatty acids with 12 or fewer carbons (FF 8), instead, would
result in increased liquidity when combined with Snyder. “[A]ttorney
argument [is] not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Appellant contends:
It has been previously determined that if a second reference is
cited to solve a problem that is already solved in the primary
reference, then there is no proper motivation to combine the
references. The BPAI has found that when the problem or
deficiency of the primary reference proffered by the Examiner
for the reason for modification/combination has already been
solved by the primary reference.
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(Appeal Br. 15; cf. Appeal Br. 17)).
We find this argument unpersuasive because “[w]e start from the self-
evident proposition that mankind, in particular, inventors, strive to improve
that which already exists.” Pro -Mold & Tool Co., Inc. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996).4 Thus, even if Snyder
has a functional foamable composition, that does not preclude the
obviousness of a further improvement. Here, O’Lenick Jr. provides specific
reasons why the ordinary artisan would select meadowfoam amidopropyl
betaine for use in Snyder’s composition including “a smooth feel on the skin
. . . [and being] surprisingly oxidatively stable in aqueous personal care
formulations” (FF 7). A “person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.” KSR, 550 U.S. at 421.
Unexpected Results
Appellant contends they
conducted tests that directly compared the foaming properties
of cocoamidopropyl betaine with meadowfoamamidopropyl
betaine in a composition containing a PEG-10 dimethicone,
ethanol, and water. More particularly, the following two
formulations were tested

4 With regard to Appellant’s citation of an unrelated, non-precedential PTAB
decision, we note that “[e]ach case must be decided on its own merits.” In
re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979).
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(Appeal Br. 9–10). Appellant’s Table shows Sample No. 1 testing 1%
cocoamidopropyl betaine and Sample No. 2 testing 1%
meadowfoamamidopropyl betaine and Appellant’s Graph shows two lines
for the two samples (see Appeal Br. 10). Appellant contends
the formulation containing meadowfoamamidopropyl betaine
produced consistently and significantly better foam volume.
The composition containing the meadowfoamamidopropyl
betaine also reached a greater foam volume peak and
maintained the foam for a greater lifetime in comparison to an
identical sanitizing composition containing cocoamidopropyl
betaine. Clearly, the presently claimed composition including
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meadowfoamamidopropyl betaine demonstrates synergism not
realized by the prior art references.
(Appeal Br. 11). Appellant contends “the present inventors have discovered
that providing such surfactant with the aforementioned components can be
quite effective and demonstrate a synergistic effect thereby rebutting any
prima facie case of obviousness” (id.).
We find these asserted unexpected results unpersuasive for several
reasons. First, neither the Specification nor any Declaration other than a
statement by the attorney asserts that the asserted improved properties are, in
fact, unexpected. “[A]ny superior property must be unexpected to be
considered as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1371 (Fed. Cir. 2007). This graph does not appear in the
Specification. The only indication that any of these properties constitutes an
unexpected result is attorney argument in the brief. The Specification never
states that these results are unexpected or surprising or are due to synergy.
Attorney argument cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Second, claim 24 encompasses a large number of different species and
Appellant’s only tested a single comparative compound and therefore the
single test is not commensurate in scope with the claim. Unexpected results
must be “commensurate in scope with the degree of protection sought by the
claimed subject matter.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Third, the results were not compared to the closest prior art of Snyder.
See 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.”).
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Fourth, the Examiner finds, and Appellant does not rebut, that:
Since meadowfoamamidopropyl betaine, but not
cocoamidopropyl betaine, employs fatty acids with more than
12 carbon atoms, it is no surprise at all that the
meadowfoamamidopropyl betaine produces better foam.
Appellant has merely confirmed the express teaching of
O’Lenick, and aptly demonstrated what would be fully
expected by one of ordinary skill in the art.
(Ans. 4). We note that the evidence of O’Lenick, Jr. appears to support the
Examiner’s position that longer chain fatty acids are expected to produce
superior foams and therefore Appellant’s result is expected (FF 7–8). See In
re Skoner, 517 F.2d 947, 950 (CCPA 1975) (“Expected beneficial results are
evidence of obviousness of a claimed invention. Just as unexpected
beneficial results are evidence of unobviousness.”)
Fifth and lastly, even if we agreed that the result were superior, the
Appellant provides no evidence that the changes shown in the Graph are
unexpectedly better. See In re Huang, 100 F.3d 135, 139 (Fed.Cir.1996)
(holding that claimed ranges must “produce a new and unexpected result
which is different in kind and not merely in degree from results of the prior
art”). The Court explained that a “32–43% increase in stress-rupture life,
however, does not represent a ‘difference in kind’ that is required to show
unexpected results.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Here, no evidence of the magnitude of the change is provided, and certainly
there is no showing of a “difference in kind.”
Conclusion of Law
(i) A preponderance of the evidence of record supports the Examiner’s
conclusion that Snyder and O’Lenick, Jr. render the claims obvious.
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(ii) Appellant has not provided evidence of unexpected results that
when balanced with the prima facie case supports a finding of
unobviousness.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
24–28, 30,
43
103(a) Snyder, O’Lenick, Jr. 24–28, 30,
43

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