Qing Stella et al.

Patent Trials and Appeals Board

Aug 19, 2019

13865588 - (D) (P.T.A.B. Aug. 19, 2019)

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.
13/865,588 04/18/2013 Qing STELLA 12376M2 9528
27752 7590 08/19/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
CORNET, JEAN P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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 QING STELLA, GERALD JOHN GUSKEY,
CYNTHIA ANN GARZA,
TIMOTHY WOODROW COFFINDAFFER,
JOHN DAVID CARTER, and
KENNETH EUGENE KYTE III1
____________

Appeal 2018-008442
Application 13/865,588
Technology Center 1600
____________

Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
DAVID COTTA, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The clams in this appeal are directed to a method of enhancing
deposition of a hydrophobic benefit agent on skin from a multi-phase rinse-
off personal cleansing composition. The Examiner rejected the claims under
35 U.S.C. § 103 as obvious. Appellant appeals the Examiner’s
determination that the claims are unpatentable. 35 U.S.C. § 134(a). We
have jurisdiction for the appeal under 35 U.S.C. § 6(b). The Examiner’s
decision is affirmed.

1 The Appeal Brief (“Br.” entered July 19, 2017) lists The Procter & Gamble
Company as the real-party-in-interest. Br. 1.
Appeal 2018-008442
Application 13/865,588

2
STATEMENT OF THE CASE
The Examiner finally rejected the claims as follows:
Claims 1–9 and 11–20 under 35 U.S.C. § 103 as obvious in view of
Starch, M., June 15, 2007, “New Ingredients Based on Soybean Oil,”
IPCOM00015102D (“Starch”) as evidenced by “Cocamidopropyl betaine
(CAPB),” Human and Environmental Risk Assessment on ingredients of
household cleaning products, Edition 1.0, June 2005 (“Cocamidopropyl
betaine product specification”). Final Act. 3; Ans. 4.
Appellants stated in the Appeal Brief that the claims are also rejected
under 35 U.S.C. § 102 as anticipated by Starch (Br. 2), but the Examiner
explained in the Answer that this was inadvertently stated in the Final Office
Action. It is evident from the previous Office Action and Advisory Action,
that the rejection is withdrawn. Ans. 8.
Claim 1, which is illustrative of the appealed claims, is reproduced
below:
1. A method of enhancing deposition of a hydrophobic benefit
agent on skin from a multi-phase rinse-off personal cleansing
composition, comprising:
(a) making the rinse-off personal cleansing composition
by combining a structured cleansing phase and a benefit phase,
the structured cleansing phase comprising about 5.0% to about
25%, by weight of the composition, of a surfactant and water,
and the benefit phase comprising a benefit agent and 1% to
about 15%, by weight of the benefit phase, of an oligomer
derived from metathesis of unsaturated polyol esters; and
(b) applying the composition to the skin.

Appeal 2018-008442
Application 13/865,588

3
REJECTION
Claim 1 is directed to a method of enhancing deposition of a
hydrophobic benefit agent on skin. The deposition is enhanced from a
“multi-phase rinse-off personal composition.”
The Specification does not define “benefit agent,” but it discloses that
“oils” are benefit agents (Spec. 1:15–16) and states that benefit agents can
improve skin hydration (id.). Consistently, claim 11, which depends from
claim 1, recites that “the hydrophobic benefit agent comprises unsaturated
soybean oil.”
The first step of claim 1 is making the multi-phase rinse-off personal
composition “by combining a structured cleansing phase and a benefit
phase,” where
(1) “the structured cleansing phase compris[es] about 5.0% to about
25%, by weight of the composition, of a surfactant and water,” and
(2) “the benefit phase compris[es] a benefit agent and 1% to about
15%, by weight of the benefit phase, of an oligomer derived from metathesis
of unsaturated polyol esters.”
The Examiner found that Starch describes a body wash formulation
comprising Phases A, B, and C. Final Act. 4.
The Examiner found that Starch’s body wash is suitable as the
claimed rinse-off personal composition. Final Act. 4. Phase B of it
comprises cocamidopropyl betaine in an amount of 7.0%, which the
Examiner found is a surfactant. Id. at 5. The Examiner found that Phase B
meets the requirements of the claimed (1) “structured cleansing phase
comprising about 5.0% to about 25%, by weight of the composition, of a
surfactant and water.” Id.
Appeal 2018-008442
Application 13/865,588

4
The Examiner further found that Phase A of Starch meets the
requirements of the claimed (2) “benefit phase,” where the “benefit agent” is
soybean oil and the “oligomer derived from metathesis of unsaturated polyol
esters” is a soy oligomer. Final Act. 5. Specifically, the Examiner found
these components are present in “Dow Corning HY 3051 Soy Wax Blend”
listed in Phase A of the Body Wash formulation of Starch. Id.
Claim 1 requires that the recited oligomer is present in an amount of
“1% to about 15%, by weight of the benefit phase.” The Examiner
recognized that Starch does not teach that the oligomer is present in HY
3051 in the claimed amount, but found that it would have been obvious to
one of ordinary skill in the art to use a sufficient amount of HY 3051 to meet
the claimed amount to “increase the emollient or moisturizing effect of the
body wash formulation.” Final Act. 6–7.

DISCUSSION
Structured cleansing phase
Appellants contend that the Examiner incorrectly found that Starch
teaches a “structured cleansing phase” as required by the claims. Appellants
state that the “inclusion of a surfactant and water does not necessarily result
in a structured cleansing phase.” Br. 3. Appellants contend that
“cocamidopropyl betaine is not a structuring surfactant, found by the
Examiner to be the surfactant of the claimed structured cleansing phase, and,
thus, would not result in a structured cleansing phase without additional
ingredients to structure the phase, contrary to what is stated in the Office
Action.” Id. Appellants state that “a teaching of a surfactant, even one that
Appeal 2018-008442
Application 13/865,588

5
is included in Appellant’s specification as a suitable surfactant, does not
inherently or necessarily disclose a structured cleansing phase.” Id.
This argument is not persuasive. As found by the Examiner, the
Specification (at 7:29) discloses cocamidopropyl betaine as a surfactant
present in the cleaning phase, the same surfactant disclosed in Phase B of
Starch. The claimed structured cleansing phase does not recite any
ingredient other than the surfactant and water, the same ingredients
described by Starch in Phase B. Appellants state that these ingredients are
insufficient to produce a “structured cleaning phase,” but do not provide
evidence to support this contention. Br. 3. Appellants do not even identify
what component is necessary to impart a structured phase. Accordingly,
Appellants did not provide sufficient evidence to support their contention
that the Examiner erred in finding that Phase B of Starch meets all the
limitations of the claimed structural phase. See Ans. 9–10.

Separate and/or distinct
Appellants state that the body wash formulation cited in Starch is an
emulsion, and that “[t]here is nothing in the Office Action supporting that
Phases A and B and C remain separate and/or distinct after their
combination.” Br. 3.
This argument does not persuade us that the Examiner erred.
Appellants have not identified language in the claim that would require the
recited structured cleansing and benefit phases to remain separate and/or
distinct. The claim recites that the composition is made “by combining” the
two phases. Appellants did not point to a definition of this phrase that would
Appeal 2018-008442
Application 13/865,588

6
exclude emulsification and require the phases to remain separate and/or
distinct.
For the foregoing reasons, the rejection of claim 1 as obvious under
35 U.S.C. § 103 is affirmed. Claims 2–9 and 11–20 fall with claim 1
because separate arguments were not provided for their patentability. 37
C.F.R. § 41.37(c)(1)(iv).

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED