Michaela Kohut et al.

Patent Trials and Appeals Board

Sep 23, 2020

10830001 - (D) (P.T.A.B. Sep. 23, 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.
10/830,001 04/23/2004 Michaela Kohut 3321-P25129 7651
13897 7590 09/23/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
LIU, SUE XU
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
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 MICHAELA KOHUT, STEPHAN RUPPERT, JӦRG KÜTHER,
MARTIN KAUFFELDT, and OLAF ROHDE
Appeal 2019-000798
Application 10/830,001
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, 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 95–140.2 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(a). Appellant identifies the real party in interest as Beiersdorf AG.
Appeal Br. 3.
2 A prior decision on appeal affirmed the rejection of the then pending
claims. Appeal No. 2015-000021.
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CLAIMED SUBJECT MATTER
The present invention is directed to cosmetic and dermatological
cleansing preparations which contain sodium laureth sulfate and/or sodium
myreth sulfate, one or more polyacrylates and an oil phase. Spec. ¶ 12.
Claim 95, reproduced below, is illustrative of the claimed subject matter:
95. A cosmetic or dermatological cleansing emulsion
comprising:
(a) from 4 % to about 17 % by weight of at least one of sodium
laureth sulfate and sodium myreth sulfate;
(b) from about 0.20 % to 0.70 % by weight of one or more
polyacrylates selected from anionic homopolymers and anionic
copolymers of at least one of acrylic acid, an alkylated acrylic
acid and esters thereof;
(c) from 42 % to about 51 % by weight of an oil phase comprising
(i) from 30 % to about 45 % by weight of a paraffin oil,
(ii) from about 0.5 % to 20 % by weight of one or more
oils having a polarity of from about 5 to about 50 mN/m
and comprising at least one of soybean oil, almond oil, and
jojoba oil;
the emulsion having a viscosity of from about 500 to about 3,500
mPa s at 100 s-1.
The prior art relied upon by the Examiner is:
Name Reference Date
Ruppert et al. EP 1166722 A1 January 2, 2002

The Examiner has rejected the pending claims under 35 U.S.C.
§ 103(a) as unpatentable over Ruppert.
OPINION
Issue
In rejecting the pending claims the Examiner finds Ruppert is directed
to cosmetic or dermatological compositions containing (a) 1–30 wt. % wash-
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active-surfactant(s); (b) 35–50 wt.% oil component(s); and (c) 0.2–5 wt.%
polyacrylate(s) selected from anionic copolymers selected from homo- and
copolymers of acrylic acids, alkylated acrylic acid derivatives and/or their
salts. Final Act. 10–11. The Examiner also finds that Ruppert discloses that
the surfactant in the emulsion can be sodium laureth sulfate or sodium
myreth sulfate. Id. With respect to the oil component, the Examiner finds
that Ruppert teaches that praffin oil, soy oil, almond oil, or jojoba oil can be
used. Id. at 11. The Examiner finds that Ruppert teaches that shower bath
products typically have a viscosity of from 3,000 to 10,000 mPa·s. Id. at 12
Appellant contends that Ruppert neither teaches nor suggests which of
the many variables of the compositions disclosed therein should be adjusted
in which way in order to arrive at compositions having more desirable
properties than those achievable with the compositions specifically disclosed
by Ruppert. Appeal Br. 9. Appellant also argues that the exemplified
compositions of Ruppert differ significantly from the claimed compositions.
Id. at 11–13. Appellant argues that it is impossible to know what the
viscosities are for the compositions disclosed in Ruppert. Id. at 14.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 95–140 would
have been obvious to one of ordinary skill in the art at the time the invention
was made over Ruppert.

Findings of Fact
We adopt as our own the Examiner’s findings and analysis. The
following findings are included for emphasis and reference convenience.
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FF1. Ruppert discloses cosmetic cleaning compositions comprising: 1
to 30% by weight of one or several washing active tensides selected from the
group of tensides having an HLB value of more than 15, 35 to 50% by
weight of one or several oil components, 0.2 to 5% by weight of one or
several polyacrylates selected from the group formed by anionic
homopolymers and/or copolymers of acrylic acid and/or acrylated acrylic
acid derivatives as well as their esters, and 5 to 60% by weight of water.
Ruppert ¶ 27.
FF2. The tensides used in Ruppert may comprise sodium myreth
sulfate and sodium laureth sulfate. Ruppert ¶ 31.
FF3. Ruppert teaches that the oil components can be selected from
the group of
branched and straight hydrocarbons and hydrocarbon waxes,
silicon oils, dialkyl ethers, the group of saturated or
unsaturated, branched or straight alcohols, as well as fatty acid
triglycerides, namely triglyceride esters of saturated and/or
unsaturated, branched and/or straight alkane carboxylic acids
with a chain length of 6 to 24, in particular 12 to 18 C atoms.
The fatty acid triglycerides can be selected, for example, from
the group of synthetic, semi-synthetic and natural oils, for
example, olive oil, sunflower oil, soy oil, peanut oil, rapeseed
oil, almond oil, palm oil, coconut oil, palm kernel oil and the
like.

Ruppert ¶ 43.
FF4. Ruppert also teaches the use of jojoba oil in the oil phase.
Ruppert ¶ 42.
FF5. The present Specification teaches “Fatty acid triglycerides, in
particular soybean oil and/or almond oil, may particularly preferably be
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employed according to the invention as oils having a polarity of from about
5 to about 50 mN/m.” Spec. ¶ 61.
FF6. Paraffin oil is among the hydrocarbons that can be used in
composition disclosed in Ruppert. Ruppert ¶ 47.
FF7. Ruppert teaches that the amount of polyacrylate in the
composition should range from 0.5 to 2 % by weight with from 0.7 to 1.5 %
by weight preferred. Ruppert ¶ 57.
FF8. Ruppert teaches that “[w]ashes, and in particular shower baths,
have as a rule viscosities of about 3000 to 10,000 mPa·s.” Ruppert ¶ 18.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The test of obviousness is “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955).
“A prima facie case of obviousness typically exists when the ranges
of a claimed composition overlap the ranges disclosed in the prior art.” In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
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Analysis
Claim 95 is representative of the rejected claims. The subject matter
of claim 95 relates to a cosmetic cleansing composition comprising sodium
laureth sulfate and/or sodium myreth sulfate, polyacrylates and an oil phase
comprising paraffin oil and at least one of soybean oil, almond oil, and
jojoba oil.
We agree with the Examiner that the subject matter of claim 95 would
have been obvious to one skilled in the art at the time the invention was
made over Ruppert. Ruppert discloses a cosmetic cleanser which comprises
sodium laureth sulfate and/or sodium myreth sulfate, polyacrylates and an
oil phase that can comprise paraffin oil and natural oils such as jojoba oil,
almond oil, and soy oil. FF1–7. Ruppert also teaches that washes typically
have a viscosity of from 3000 to 10,000 mPa·s. FF8. Although Ruppert
does not teach the same ranges of components as recited in the present
claims, the ranges overlap. See Final Act. 10–12. For example, claim 95
calls for 4 to 17 % by weight of sodium laureth sulfate and sodium myreth
sulfate, Appeal Br. 21 (Claims App.) and Ruppert teaches 1 to 30% by
weight of one or several washing active tensides (sodium laureth sulfate and
sodium myreth sulfate.). FF1 and 2. We agree with the Examiner that it
would have been obvious to optimize the various percentages, and the
viscosity of the composition, to fit the need or design of one skilled in the
art. Final Act. 16.
Appellant argues Ruppert does not teach how one should adjust the
different variables of the compositions and does not teach the combination
of elements recited in the instant claims. Appeal Br. 9–11. We are
unpersuaded. As discussed above, Ruppert teaches all the components of
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the claimed composition and the ranges recited in Ruppert overlap with the
ranges recited in the instant claims. “[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d at 456.
Appellant next argues that there are significant differences in the
examples recited in Ruppert and the claimed compositions. Appeal Br. 11–
13. Again we are unpersuaded. The Examiner has not relied solely on the
examples of Ruppert in establishing a prima facie case of obviousness but
has relied on the teachings of Ruppert as a whole. Ans. 5. As shown above,
Ruppert teaches all the elements of the claims.
Appellant goes on to argue that merely demonstrating that various
elements of a claim are known in the prior art is insufficient to establish a
case of obviousness. Appeal Br. 13–14. Appellant’s argument is not
persuasive. Ruppert does not merely disclose the individual elements recited
in the instant claims but teaches putting them together in almost the identical
manner as the claimed composition. FF1–8. We agree with the Examiner
that
Modulating parameters of the formulation was and is a
routine practice that would have been obvious to a person of
ordinary skill in the art to employ in order to produce a
consumer-acceptable product. The ordinary artisan would
reasonably have expected success because it was known how to
adjust parameters such as viscosity and concentrations of
ingredients. Thus, it would have been obvious to one of
ordinary skill in the art at the time of the invention to engage in
routine experimentation to determine optimal or workable
ranges that produced expected results.

Ans. 7.
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Appellant contends that the viscosities of the examples in Ruppert are
not known and that one skilled in the art would not have been led to the
viscosities recited in the claims. Appeal Br. 14. We remain unpersuaded.
Ruppert teaches that washes typically have a viscosity of from 3000 to
10,000 mPa·s. FF8. This overlaps with the range recited in the claims.
Appellant contends that Ruppert discloses a large number of different
possible oils that can be used and that there is nothing in Ruppert which
would lead one skilled in the art to the specific oils recited in the claims.
Appeal Br. 16–18. Appellant points out that
with one exception, all of the eight exemplified emulsions of
RUPPERT (including those specifically relied upon by the
Examiner) contain not more than 20% by weight of mineral oil
(paraffin oil) and one of the exemplified emulsions contains
25% by weight of paraffin oil (and also 25% by weight of other
oils, significantly outside the corresponding range recited in the
instant claims).
Id. Appellant’s argument does not persuade us that the rejection is in error.
Ruppert explicitly teaches that the oil component may comprise a
combination of oils and specifically lists paraffin oil, jojoba oil, soy oil, and
almond oil as oils that can be used. FF3–6.
With respect to independent claim 122, Appellant argues that the
specific narrower ranges recited in this claim are not taught or suggested by
Ruppert. Appeal Br. 19–20. We are unpersuaded. While the ranges recited
in the claims are narrower that those taught in Ruppert, there is still
significant overlap rendering the claims obvious. In re Peterson, 315 F.3d at
1329. The discovery of the optimum ranges does not render the claimed
compositions patentable. In re Aller, 220 F.2d at 456.
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Claims 111, 112, 129 and 134 all include limitations calling for
specific ratio of polyacrylates to paraffin oil. Appeal Br. 25, 28, 29 (Claims
App.). Appellant contends that Ruppert does not disclose a specific range of
ratios and that the highest ratio derived from the examples in 1:31. Id. at 18,
21. Appellant contends that ratios calculated from Ruppert are significantly
different from those recited in the claims. Id.
We agree with Appellant that the subject matter of claims 111, 112,
129, and 134 would not have been obvious to one skilled in the art over
Ruppert. The calculated ratios of polyacrylates to paraffin oil in Ruppert
range from 1:15 to 1:31. Appeal Br. 18. The ratios recited in claims 111,
112, 129, and 134 range as low as 1:57 to 1:125. Appeal Br. 25, 28, 29. We
find that there is no overlap between these ranges and do not find the range
to have been prima facie obvious on that basis.
The Examiner contends that the recited ratios would have been arrived
at through routine optimization. Final Act. 17–18. The Examiner finds, “A
person of ordinary skill in the art would have found it obvious to adjust the
amount of the ratio of anionic polyacrylate thickener to paraffin oil in the
emulsion in the routine course of optimizing the composition. In particular,
the ratio would have been adjusted to modulate the thickness of the
formulation and to modulate the cleansing quality.” Id.
We are not persuaded by the Examiner’s reasoning. The Examiner
does not offer any support for the proposition that the polyacrylates used in
Ruppert act as a thickener nor do we discern any such teaching in Ruppert.
See Ruppert ¶¶ 52–56. Thus we do not agree that one skilled in the art
would have been lead to optimize the ratio of polyacrylate to paraffin oil in
the manner suggested by the Examiner.
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Claims 135–138 depend from claim 134 and would not have been
obvious for the same reasons as claim 134.
Appellant has not separately argued the remaining claims, therefore
they fall with claims 95 and 122. 37 C.F.R. § 42.37(c)(iv).
CONCLUSION
We conclude that the Examiner has established by a preponderance of
the evidence that the subject matter of claims 95–110, 113–128, 130–133,
139, and 140 would have been obvious over Ruppert under 35 U.S.C. §
103(a). We conclude that the Examiner has not established by a
preponderance of the evidence that the subject matter of claims 111, 112,
129, and 134–138 would have been obvious over Ruppert under 35 U.S.C. §
103(a).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
95–140 103(a) Ruppert 95–110,
113–128,
130–133,
139, 140
111, 112,
129, 134–
138

Appeal 2019-000798
Application 10/830,001

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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-IN-PART