Michael URBAN et al.

Patent Trials and Appeals Board

Mar 25, 2021

2020002701 (P.T.A.B. Mar. 25, 2021)

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.
14/073,320 11/06/2013 Michael URBAN 3321-P50049 6987
13897 7590 03/25/2021
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
FRITCHMAN, REBECCA M
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/25/2021 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 MICHAEL URBAN, HEIKE MIERTSCH, STEFAN BIEL,
SABINE KUEHNE, STEFAN BRUENING, and ROLF KAWA
Appeal 2020-002701
Application 14/073,320
Technology Center 1700
Before ADRIENE LEPIANE. HANLON, CATHERINE Q. TIMM, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Beiersdorf AG. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for testing clothing for staining by
antiperspirant-containing cosmetic or dermatological preparations. See, e.g.,
claims 1 and 14. The test method involves applying the cosmetic or
dermatological preparation along with sebum to a location of the clothing,
washing and drying the clothing, and then determining whether a stain
remains. The determination step involves comparing a colormetric measure
in a CIE L*a*b color space of a treated area against that of an untreated area.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of gauging stains on or in clothing which are
caused at least in part by a cosmetic or dermatological
preparation that comprises antiperspirant substances, wherein
the method comprises
(i) successively applying to an identical location of the
clothing (a) from 10 mg/cm2 to 50 mg/cm2 of the preparation,
(c) from 2 mg/cm2 to 15 mg/cm2 of sebum, and (b) optionally,
from 5 mg/cm2 to 40 mg/cm2 of human sweat,
(ii) optionally, storing the clothing at 38°C and 80 %
relative humidity,
(iii) washing the clothing,
(iv) optionally, rinsing the clothing with cold tap water,
(v) drying the clothing, and
(vi) subjecting the dried clothing to a photometrical
measurement by means of colorimetric measures in a CIE
L*a*b color space and comparing an obtained value to a value
obtained with an untreated area of the clothing.
Appeal Br. 25 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Siegal US 3,018,223 Jan. 23, 1962
Geria US 4,511,554 Apr. 16, 1985
Paloheimo US 2006/0063246 A1 Mar. 23, 2006
Kamiya US 2010/0196515 A1 Aug. 5, 2010

REJECTIONS
The Examiner maintains the following two rejections on appeal.2
Claims 1, 2, 4–6, 9, 10, 13–15, 18, and 20 are rejected under
35 U.S.C. § 103(a) as being obvious over Siegal in view of Paloheimo and
Geria. Final Act. 5; Ans. 3.
Claims 3, 7, 8, 11, 12, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as being obvious over Siegal in view of Paloheimo, Geria and
Kamiya. Final Act. 7–8; Ans. 5.
OPINION
Obviousness of Claims 1, 2, 4–6, 9, 10, 13–15, 18, and 20 over Siegal,
Paloheimo, and Geria
In arguing against the Examiner’s rejection of claims 1, 2, 4–6, 9, 10,
13–15, 18, and 20 as obvious over Siegal in view of Paloheimo and Geria,
Appellant first argues the rejection without specifically directing the
arguments to any particular claim. Appeal Br. 14–20. We select claim 1 as
representative to address this first set of arguments. Appellant argues various
groups of claims under separate headings. We consider those groups

2 The rejections under 35 U.S.C. § 112 were withdrawn. Ans. 7.
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separately. Our discussion of representative claim 1 and each of the
separately argued groups follows.
Claim 1
Turning first to the rejection of representative claim 1, we note that
Appellant questions several of the Examiner’s findings: (1) the Examiner’s
finding of a reason to use Paloheimo’s testing method to determine staining
by Siegal’s antiperspirant composition, (2) the Examiner’s finding that
Siegal teaches washing, and (3) the Examiner’s finding of a reason to apply
sebum along with the antiperspirant to the clothing based on the teachings of
Geria. Appeal Br. 14–20; Reply Br. 2–4. For the reasons that follow, we
determine that Appellant has not identified a reversible error in the
Examiner’s findings.
To properly evaluate the questioned findings, we must step back and
view the prior art as a whole for what it would have taught or suggested to
the ordinary artisan. When we do that, the evidence shows that it was known
in the art to test clothing for staining by antiperspirant compositions. Siegal
and Geria are both directed to antiperspirant compositions and seek to solve
the staining problems that result when these compositions are applied to
clothing. Siegal col. 1, ll. 10–22; Geria col. 1, ll. 10–20. Both seek to
formulate an antiperspirant that does not stain clothing. Siegal col. 1, ll. 63–
66; Geria col. 1, ll. 40–42. Both Siegal and Geria test fabric to determine the
staining potential of various antiperspirant compositions. Siegal col. 6, ll.
53–61; Geria col. 5, l. 65–col. 7, l. 11. These references provide evidence
that it was known in the art to test for antiperspirant staining on clothing.
There can be no question that some method must be used to determine
if staining has occurred. To be sure, neither Siegal nor Geria teaches using a
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photometrical measurement in their testing. As pointed out by Appellant,
Siegal is not particularly concerned with the details of the testing method,
but is more concerned with demonstrating that the antiperspirant
compositions Siegal discloses do not stain and, thus, Siegal only cursorily
discusses the testing regime. Appeal Br. 17; Siegal col. 6, ll. 53–62. Geria
discloses a more detailed standard staining study protocol, which provides
evidence that standard testing protocols were known in the art. Geria col. 5,
l. 49– col. 7, l. 11.
Because Siegal does not disclose subjecting the dried clothing to a
photometrical measurement by means of colorimetric measures in a CIE
L*a*b color space, the Examiner turns to Paloheimo. Final Act. 6. Based on
the teachings of Paloheimo, the Examiner concludes it would have been
obvious to one of ordinary skill in the art to inspect Siegal’s cloth samples
using the technique of Paloheimo “due to the need in the art for a method
which can detect if the cloth has desired characteristics.” Id.
This brings us to the issue of whether Appellant has identified a
reversible error in the Examiner’s finding of a reason to use Paloheimo’s
testing method to determine staining by Siegal’s antiperspirant composition.
We are not persuaded of such an error.
Paloheimo discloses a novel laccase enzyme useful in, for instance,
bleaching denim and removing stains. Paloheimo ¶¶ 3, 31. Paloheimo
measures bleaching, i.e., the increase in lightness, of the denim as by
measuring the color as reflectance values with a spectrophotometer using
L*a*b color space coordinates as described in Examples 7–10. Paloheimo
¶ 72. The increase in lightness is measured as lightness unit L* of the fabric
after treatment minus lightness unit L* before treatment using L*a*b* color
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space coordinates. Paloheimo ¶¶ 72, 181. Paloheimo also discloses testing
DeniLite II Base laccase preparations for the ability to remove stains as
described in Example 11. Paloheimo ¶¶ 131. Paloheimo uses both
photometrical measurement in a L*a*b color space and visual inspection to
evaluate staining. Paloheimo ¶¶ 198–199.
Appellant contends that Siegal inspects the samples visually and there
would have been no reason to use Paloheimo’s more sophisticated
inspection method for detecting staining by Siegal’s compositions because:
(1) Siegal’s compositions are highly water-soluble and thus highly
removable; (2) Siegal is not disclosing that the test method is an aspect of
the Siegal invention, but merely discloses testing as proof that the inventive
antisperspirants of Siegal are free from the tendency to stain or otherwise
damage clothes; (3) and there is evidence that the staining of fabrics by a
cosmetic composition is usually determined visually as demonstrated by
Geria and Kamiya. Appeal Br. 15–18.
Appellant’s arguments are not persuasive because the prior art
provides evidence that both visual viewing and photometrical measurement
were known methods of testing for color changes including those due to
staining. “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); see also In
re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.”). Use of either visual or photometrical measurement would have
been recognized as providing the predictable result of determining color
changes due to staining. Thus, a preponderance of the evidence supports the
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Examiner’s finding of a reason within the prior art to use the photometrical
measurement method of Paloheimo when testing Siegal’s antiperspirant
composition for staining.
This brings us to Appellant’s second argument: that the Examiner’s
finding that Siegal teaches washing is in error. Appeal Br. 18–19. We
determine that the Examiner did not make a reversible error in finding that
Siegal’s rinsing is washing. Final Act. 6; Ans. 9. Rinsing with water is a
form of washing. Appellant offers no persuasive evidence to the contrary.
What’s more, Geria’s protocol includes washing and drying before rating the
fabrics for staining. Thus, adding detergent would have been viewed as a
normal step in a testing protocol for determining if staining remains after
washing.
Turning to Appellant’s last argument that the ordinary artisan would
not have added sebum when testing the antiperspirant compositions of
Siegal, we disagree. As the Examiner points out, sebum is commonly known
in the art to be present when humans perspire. Ans. 10. This is not disputed
by Appellant. Reply Br. 3–4. Geria specifically adds sebum when testing
antiperspirant compositions for staining per the protocol set forth in that
reference. Geria col. 6, ll. 34–57. Siegal is also concerned with staining by
antiperspirant compositions. Siegal col. 6, ll. 53–60. Using sebum in such
testing follows from the teachings of Geria and the fact that humans produce
sebum and, thus, antiperspirant applied to skin will mix with sebum.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 1.

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Claims 4 and 14
Claims 4 and 14 further limit the concentration of sebum applied to
the clothing. They require from 5 mg/cm2 to 10 mg/cm2 of sebum.
Appellant contends that Geria fails to disclose the amount of sebum
used in the test of that reference and the Examiner has failed to explain why
one of ordinary skill in the art would have found it obvious to use amounts
within the range of claims 4 and 14. Appeal Br. 20–21.
We agree with the Examiner’s response to this argument. Ans. 10–11.
The purpose of applying sebum is to mimic normal perspiration/wear of
clothes to determine staining under conditions mimicking real world wear.
Ans. 11. Geria discloses the general conditions of the testing protocol
including applying sebum and the ordinary artisan using that protocol would
have to determine what sebum concentration to use. That determination
would be a matter of routine experimentation and, as such, the burden shifts
to Appellant to show that the concentration range of the claim is unobvious
such as by showing it provides unexpected results. See In re Aller, 220 F.2d
454, 456 (CCPA 1955) (explaining that where the general conditions of a
claim are disclosed in the prior art, and the evidence supports a
determination that discovery of the optimum or workable ranges would
result from routine experimentation, the burden shifts to the applicant to
show that the particular range values recited in the claim produce an
unexpected result). As pointed out by the Examiner, Appellant has provided
no persuasive evidence of unexpected results. Ans. 10.
Appellant has not identified a reversible error in the Examiner’s
rejection of claims 4 and 14.

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Claims 5, 6, and 15
Claims 5, 6, and 15, require that the ratio of preparation to sebum be
within particular ranges. Appellant points out that Geria does not disclose
concentrations of sebum so it is impossible to know the ratio of
antiperspirant to sebum. Appeal Br. 21. But, again, the evidence supports a
determination that the ordinary artisan would have arrived at concentrations
meeting the ratios of the claims after performing routine experimentation.
Again, Appellant offers no persuasive evidence of unexpected results or
other evidence showing that their ranges are outside the workable or optimal
ranges the ordinary artisan would have arrived at through routine
experimentation.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 5, 6, and 15.

Claim 9
Claim 9 requires step (ii) of claim 1, which was optional in claim 1, be
employed and requires the step be carried out for at least 12 hours. In other
words, claim 9 requires storing the clothing at 38°C (about 100°F) and 80 %
relative humidity for at least 12 hours.
Appellant contends that the steps recited in claim 1 are successive and
Siegal fails to disclose the storing of step (ii) for 12 hours. Appeal Br. 22.
The Examiner responds that the storing of step (ii) is merely mimicking
what occurs with a normal laundry washing process, i.e., that after clothes
are stained, they sometimes sit for a while before they are washed. This
sitting sometimes occurs at 100°F and 80 % humidity, i.e., a rainy day in
Alexandria, Virginia. Ans. 11.
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First, we point out that step (ii) of claim, while required by claim 9, is
not required to take place after applying the antiperspirant preparation and
sebum. The step merely requires “the clothing” be stored, it does not require
the treated clothing be stored.
Second, in response to Appellant’s contention that “the Examiner has
not provided any evidence that conditions such as 38°C and 80 % relative
humidity have ever been encountered (let alone are frequently encountered)
for at least 12 hours in a place like Alexandria, Virginia” (Reply Br. 4), these
conditions are of such notorious nature that they are capable of such instant
and unquestionable demonstration as to defy dispute and, thus, evidence is
not required. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). For instance,
those of us that have raised soccer-playing children with August training
schedules have discovered stained, sweaty, sebum covered soccer clothes
stuffed into the bottom of a soccer bag that has survived (barely) an August
thunderstorm and a 38°C (100°F) day. That the ordinary artisan would want
to mimic those conditions in testing would have been obvious to those
testing antiperspirant staining as one would want to use the harshest possible
conditions to set any possible stain and see if the clothes manage to become
stain-free after normal washing. Appellant has not provided evidence to
traverse the finding.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 9.

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Obviousness of Claims 3, 7, 8, 11, 12, 16, 17, and 19 over Siegal,
Paloheimo, Geria, and Kamiya
In arguing against the rejection of claims 3, 7, 8, 11, 12, 16, 17, and
19 as obvious over Siegal in view of Paloheimo, Geria and Kamiya,
Appellant argues the claims as a group and argues claims 8, 16, and 17 as a
separate group. Appeal Br. 23–24. We select claim 3 as representative and
review claims 8, 16, and 17 as a separate group.

Claim 3
Claim 3 requires the composition applied in step (i) of claim 1
additionally contain from 7 mg/cm2 to 30 mg/cm2 of human sweat.
The Examiner adds Kamiya to the rejection as evidence that it was
known in the art to add sweat to fabric being tested for antiperspirant
staining. Final Act. 9. Based on this evidence, the Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art to use sweat
to artificially stain clothes to investigate staining of a material due to the
need in the art to investigate better stain removal techniques from clothes.”
Id.
Appellant contends that an apparent reason for one of ordinary skill in
the art to use sweat, let alone sebum, in the method of Siegal is lacking.
Appeal Br. 23. But the reason is evident from the teachings of the
references. Siegal, Geria, and Kamiya all seek to test clothing for staining by
antiperspirant compositions. Geria adds artificial sebum. Kamiya adds
artificial sweat. In each case, the fabric is tested to determine the degree of
staining. The references provide evidence that adding sebum and sweat to
fabric containing antiperspirant compositions and testing the treated fabric
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for staining was known in the art. That in itself is enough to provide
evidence of the obviousness of the combination. What’s more, the reason is
to add sweat and sebum is because those compositions will be present when
the wearer of clothes perspires.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 3.

Claims 8, 16, and 17
Claims 8, 16, and 17 require the sweat be present in a particular range
of ratios, i.e., a ratio of preparation to human sweat of from 1:1 to 1:4.
Appellant calculates the ratio of preparation to human sweat in
Kamiya as 5:1 and argues that the Examiner has not explained why the
ordinary artisan would change the ratio. Appeal Br. 24. But Kamiya’s ratio
is found in an example. Kamiya ¶ 91. Suffice it to say that the ratio used in
any particular testing protocol would have been optimized through routine
experimentation and Appellant has not provided persuasive evidence that the
ratio of the claim would have been outside the workable or optimal ratios
arrived at through such routine experimentation or that the results in the
range of the claim were found to produce unexpected results.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 8, 16, and 17.

CONCLUSION
The Examiner’s decision to reject claims 1–20 is AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 9,
10, 13–15,
18, 20
103(a) 1, 2, 4–6, 9,
10, 13–15,
18, 20

3, 7, 8, 11,
12, 16, 17,
19
103(a) 3, 7, 8, 11,
12, 16, 17,
19

Overall
Outcome
1–20

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