Rainer Kropke et al.

Patent Trials and Appeals Board

Jan 29, 2020

14293312 - (D) (P.T.A.B. Jan. 29, 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.
14/293,312 06/02/2014 Rainer KROPKE 3321-P50130 3927
13897 7590 01/29/2020
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
PIHONAK, SARAH
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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 RAINER KRÖPKE, JENS NIELSEN, and KATHRIN WOLTER
Appeal 2018-004457
Application 14/293,312
Technology Center 1600
BEFORE JOHN G. NEW, ELIZABETH A. LAVIER, and
TAWEN CHANG, Administrative Patent Judges.

LAVIER, 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 1–12, 14–16, and 21–25. 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(a). 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 cosmetic or dermatological formulations.
Claim 1, reproduced below, is illustrative:
1. A cosmetic or dermatological formulation, wherein the
formulation comprises

(a) one or more of glycerol, propylene glycol, and butylene
glycol in a total concentration of from 0.1 % to 20 % by
weight, based on a total weight of the formulation,

(b) 2-methyl-1,3-propanediol and, optionally, one or both
of pentanediol and hexanediol in a total concentration of
from 1 % to 25 % by weight, based on the total weight of
the formulation, 2-methyl-1,3-propanediol being present
in a concentration of from 1 % to 15 % by weight, and

(c) at least one substance selected from antioxidants,
alpha-lipoic acid, phytoene, D-biotin, coenzyme Q10, α-
glucosylrutin, carnitine, camosine, isoflavonoids, creatine,
taurine, and β-alanine,

and wherein a ratio of (a) to (b) is from 5:1 to 1:1.
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Kanga et al. US 5,798,111 Aug. 25, 1998
Siddiqui et al. US 6,015,548 Jan. 18, 2000
Stroud et al. US 6,231,837 B1 May 15, 2001
Kaddurah-Daouk US 6,242,491 B1 June 5, 2001
Castro et al. US 6,113,888 Sept. 5, 2000
Kröpke et al. ’007 US 8,779,007 B2 July 15, 2014

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REJECTIONS
1. Claims 1–4, 8–12, 14–16, and 21–25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kanga and Siddiqui. Final
Action 11.
2. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanga and Stroud. Final Action 13.
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kanga, Siddiqui, and Kaddurah-Daouk. Final Action 15.
4. Claims 1–5, 8–12, 14–16, and 21–25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Castro. Final Action 16.
5. Claims 1–12, 14–16, and 21–25 stand rejected for nonstatutory
double patenting as unpatentable over claims 1–25 of Kröpke ’007.
Final Action 9.
OPINION
Obviousness
The § 103 rejections fall into two groups: those with Kanga as the
primary reference (Rejections 1, 2, and 3), and the rejection based on Castro
(Rejection 4).
Rejection 1 (Kanga & Siddiqui)
Kanga describes clear emulsion cosmetic compositions in which the
aqueous phase includes 2-methyl-1,3-propanediol. Kanga Abstract. More
specifically:
An essential element of the aqueous phase will be the presence
of 2-methyl-1,3-propanediol, commercially available under the
trademark MP Diol glycol from the Arco Chemical Company.
Amounts of this diol will range from 1 to 70%, preferably from
10 to 50%, optimally from 20 to 40% by weight of the cosmetic
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composition. Other than water, this diol preferably is the
component of highest concentration in the aqueous phase, and
even in the total cosmetic composition.

Other polyhydric alcohols may be employed as adjunct in the
aqueous phase. These polyhydric alcohols may contain from 2
to 6 hydroxyl groups, preferably from 2 to 3 hydroxyl groups.
They may also contain from 2 to 6 carbon atoms, preferably from
2 to 3 carbon atoms. Suitable polyhydric alcohols include
ethylene glycol, propylene glycol, trimethylene glycol, glycerin
and sorbitol. Most preferred is glycerin. Amounts of the
polyhydric alcohol may range from 1 to 30%, preferably from 2
to 25%, optimally from 5 to 12% by weight of the cosmetic
composition.
Kanga 2:43–60. This passage from Kanga thus describes compositions
falling within the concentration ranges and ratios for parts (a) and (b) of
claim 1, “[f]or example, a compositions comprising 5% of polyols[2] and 5%
of 2-methyl-1,3-propanediol provides a 1:1 ratio and allows for the presence
of other components as instantly claimed.” Final Action 2. Indeed,
Appellant acknowledges that Kanga “does not expressly exclude a ratio
(a):(b) as recited in the instant claims (and also does not expressly exclude
the presence of 2-methyl-1,3-propanediol in a concentration of 15 % by
weight or less).” Appeal Br. 8.

2 Appellant notes that claim 1 “do[es] not merely recite ‘polyols’ as
component (a) . . . but recite[s] specific polyols,” whereas Kanga recites a
wider variety. Appeal Br. 9. To the extent Appellant suggests that this is an
additional aspect of the comparative breadth of Kanga relative to the claims,
this argument is not persuasive for the reasons described infra. In any event,
glycerin (i.e., glycerol (see, e.g., Final Action 11)) is “[m]ost preferred” by
Kanga (Kanga 2:57–58). Thus, even if Appellant’s emphasis on the
preferred or exemplary embodiments (over the totality of the disclosure)
were persuasive as a general matter on the present facts, it would not apply
to this particular point.
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Appellant describes the concentration ranges provided in Kanga as
“extremely broad” (id. at 7 (emphasis omitted)) and argues that achieving a
ratio of component (a) to component (b) within the claimed range requires
deviating from Kanga’s preferred and/or exemplary ranges (see id. at 7–9,
12–14; Reply Br. 3). According to Appellant, Kanga’s disclosure “as a
whole makes it apparent to one of ordinary skill in the art that (i) the ratio (a)
: (b) should be significantly lower than 1:1 and (ii) the concentration of 2-
methyl-1,3-propanediol should preferably be not lower than 20 % by
weight.” Appeal Br. 8.
Appellant’s arguments are not persuasive. Kanga is prior art for all
that it teaches, not merely its preferred embodiments. See In re Mills, 470
F.2d 649, 651 (CCPA 1972) (“All the disclosures in a reference must be
evaluated, including nonpreferred embodiments.” (citations omitted)); see
also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents
as references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain.”). Because Kanga
teaches concentration ranges of components (a) and (b) that fall within the
concentration and ratio ranges of claim 1, these aspects of claim 1 are
obvious over Kanga unless Appellant shows otherwise. See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” (citations omitted)). We agree with the Examiner
that Appellant “has supplied no evidence of unexpected benefit(s) to
particularly selecting [the] claimed ratio” (Ans. 15), for example. Nor has
Appellant offered any factual support for the assertions that an ordinarily-
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skilled artisan would have been required “to resort to the exemplified
embodiments” (Appeal Br. 13) in Kanga to develop other emulsions that
satisfy the allegedly “demanding requirements” (id.) necessary to achieve
properties such as clarity, high phase stability, and insensitivity to shear
decomposition. “[A]rguments of counsel cannot take the place of evidence
lacking in the record.” Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA
1982). Accordingly, we find that this is not an instance of impermissible
picking and choosing (contra Appeal Br. 10) so much as one of modest,
obvious modification of the prior art, specifically through “optimization of
the components within the clearly disclosed ranges taught by Kanga” (Ans.
18). Cf. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“[I]n
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”).
In addition to Kanga, the Examiner cites Siddiqui as teaching
panthenol as an antioxidant within the scope of part (c) of claim 1. See Final
Action 12. The Examiner finds that it would have been obvious for the
ordinarily skilled artisan to have combined the references as claimed through
routine experimentation “to obtain the desired clear composition with the
desired make-up removing/cleansing abilities.” Final Action 13. Appellant
presents no arguments specific to Siddiqui or to the combination of Siddiqui
with Kanga.
Having fully considered Appellant’s arguments regarding claim 1, we
are not persuaded of any reversible error by the Examiner in rejecting claim
1 under § 103 based on Kanga and Siddiqui. Accordingly, we affirm the
rejection of claim 1, for the reasons described herein and those already of
record.
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The only claims argued separately from claim 1 by Appellant with
respect to this rejection are claims 8, 10, and 24, which Appellant addresses
as a group. See Appeal Br. 14–15. These claims recite narrower ranges (see
id. at 26–27 (Claims Appendix)), and Appellant emphasizes this further
distinction from the examples in Kanga (see id. at 14). This argument is
different only in degree, not kind, than that presented with respect to claim
1, and is no more persuasive. Without evidence such as an unexpected result
to select these narrower ranges from the broader prior art ranges, Appellant
has not established a patentable distinction. Accordingly, we affirm the
rejection of claims 8, 10, and 24. Claims 2–4, 9, 11, 12, 14–16, 21–23, and
25 are not argued separately, and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Rejection 2 (Kanga & Stroud) and Rejection 3 (Kanga & Kaddurah-
Daouk)
Except to assert that Stroud and Kaddurah-Daouk fail to cure the
alleged deficiencies of Kanga addressed with respect to claim 1, Appellant
makes no additional arguments with respect to either of these rejections. See
Appeal Br. 15 (Rejection 2); id. at 16 (Rejection 3). As we are not
persuaded by Appellant’s arguments regarding claim 1, Appellant has not
shown any reversible error by the Examiner in rejecting claims 5 or 6
(Rejection 2) or claim 7 (Rejection 3). Accordingly, we affirm the rejections
of claims 5–7.
Rejection 4 (Castro)
Appellant’s arguments with respect to the rejection over Castro
partially recapitulate those made with respect to Kanga, insofar as Appellant
argues that the ordinarily skilled artisan would not have been motivated to
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optimize to the claimed ranges. See Appeal Br. 17, 19. And, similarly,
these arguments are not persuasive. Castro teaches compositions comprising
glycerin and 2-methyl-1,3-propanediol, with weight percentages falling
within the ranges recited in claim 1. See Final Action 16 (citing Castro
2:46–53). The Examiner finds that the concentration ranges disclosed in
Castro, “and thus ratios based on those concentration ranges, . . . overlap or
encompass the ranges/ratios as claimed.” Ans. 25. Again Appellant fails
to provide any evidence, of unexpected results or otherwise, to support the
patentability of the claimed narrower ranges over the broader prior art
ranges. Appellant argues that Castro’s examples teach amounts and ratios
outside those of claim 1, and further that the rejection relies on the use of
components characterized by Castro as optional. See Appeal Br. 16, 18. But
Castro is prior art for all that it discloses, including the teaching that:
[i]n a further embodiment, the mousse comprises about 0.001%
to about 20% of glycerin; about 0.001% to about 20% of 1,2,-
pentandiol; about 0.001% to about 20% of 2-methyl-1,3,-
propanediol; about 0.001% to about 5% of a paraben (e.g.,
methylparaben, ethylparaben, propylparaben, or butylparaben);
about 0.001 % to about 5% of fragrance; and about 0.001 % to
about 5% of PPG-5 Ceteth-20.
Castro 2:46–53 (emphasis added). We agree with the Examiner that this
embodiment of Castro “significantly overlaps with the claimed ranges for (a)
and (b)” (Ans. 24).3

3 As to part (c) of claim 1, the Examiner finds that Castro teaches the
inclusion of tocopherols (Vitamin E) as antioxidants and as dermatologically
active agents. Final Action 16–17 (citing Castro 4:22–34, 5:10–14).
Appellant does not appear to dispute this point, and we discern no reversible
error in regard thereto.
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Appellant also argues that Castro is directed to self-tanning mousses,
which Appellant asserts are “compositions whose moisturizing effects
apparently are of only marginal, if any, importance.” Appeal Br. 19. Thus,
according to Appellant, the Examiner’s rationale for optimizing toward the
claimed ratios and ranges, i.e., improved moisture retention, does not follow
from Castro. As to the moisture issue in particular, this is not persuasive
given the aforementioned embodiment described in the quotation supra from
column 2 of Castro. As the Examiner points out, this passage “is indicative
that combinations of specific humectants and their amounts were
contemplated by Castro.” Ans. 25. Additionally, we cannot agree with
Appellant’s characterization of moisturizing as only of “marginal”
importance to Castro (Appeal Br. 19), insofar as Castro includes a paragraph
discussing humectants as “agents which promote the retention of moisture,
e.g., moisturizers” (Castro 5:48–49), and listing examples including some of
the compounds recited in claim 1 (see id. at 5:49–55). Appellant’s emphasis
on Castro’s teaching of a mousse is further unpersuasive as to claim 1,
which is not so limited.
For these reasons and those already of record, the Examiner’s
rejection of claim 1 is not premised on impermissible hindsight as Appellant
alleges (Appeal Br. 20), but rather of routine optimization to achieve the
desired moisturizing properties (Final Action 18). Accordingly, we affirm
the rejection of claim 1. Claims 3–10 and 21–25 are not argued separately,
and fall with claim 1.
As to claim 2, Appellant maintains that this claim is limited to non-
foaming formulations, whereas Castro’s disclosed ranges apply to a foaming
formulation, i.e., a mousse. Appeal Br. 21. This argument is not persuasive.
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First, claim 2 does not recite “non-foaming” formulations, but rather states
that the formulation of claim 1 “is present as an ointment, a cream, a milk, a
lotion or a spray.” (Appeal Br. 24 (Claims Appendix)). The Examiner finds
(Ans. 31) the aerosol compositions contemplated by Castro (see Castro
2:10–134) to be “spray” formulations within the scope of claim 2, “since the
composition is applied by spraying the aerosol.” Ans. 31. Second, the
Examiner finds that it would have been “within the purview of the ordinary
artisan” (Ans. 30) to reformulate the composition. In the absence of some
evidence to the contrary from Appellant, we discern no error in the
Examiner’s finding. We affirm the rejection of claim 2.
As to claims 12, 14–16, and 24, Appellant again attempts to
distinguish Castro from the formulations of these claims insofar as Castro
describes mousses. See Appeal Br. 21. For the same reasons discussed
above with respect to claim 2, this argument is not persuasive with respect to
these claims. In addition to the mousse argument, Appellant makes a
distinct assertion with respect to these claims, which turns on the
requirement in independent claim 12 that the formulation comprises “one or
both of propylene glycol and butylene glycol” (Appeal Br. 26 (Claims
Appendix)). For claim 12 (unlike claim 1), glycerol is not one of the options
encompassed by the compulsory5 part (a) of the claim.
Appellant argues that “C[astro] does not even mention butylene glycol
and mentions propylene glycol only in passing, without providing any

4 The Examiner cites “claim 2, lines 10–13” rather than column 2 of Castro
on page 31 of the Answer. This appears to be a typographical error.
5 Glycerol is, however, recited as an optional additional component of part
(a) of claim 12. Appeal Br. 26 (Claims Appendix).
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suggested concentration or concentration range therefor.” Id. at 22. While
we agree with Appellant that Castro does not provide a concentration range
specifically for propylene glycol, this is not fatal to the rejection. As the
Examiner points out, propylene glycol is disclosed as a humectant by Castro,
and a range of acceptable humectant concentrations is claimed in Castro, one
which overlaps the claimed range. See Ans. 31–32 (citing Castro 5:53,
claim 18). Achieving the formulation of claim 12 and/or its dependents
based on Castro admittedly requires an additional step of picking and
choosing than with respect to the claims encompassing glycerol (e.g., claim
1), for which Castro provides express concentration ranges. Nonetheless,
and especially in light of the absence of evidence from Appellant regarding
any unexpected advantages of their selections from the broader prior art
disclosures, we are not convinced that this distinction is sufficient to confer
patentability over Castro on claim 12 and its dependents, as we continue to
agree with the Examiner that the optimization would have been a matter of
ordinary skill, not innovation. See In re Aller, 220 F.2d 454, 456–58 (CCPA
1955) (“[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”).
Nonstatutory Double Patenting
Appellant does not argue the nonstatutory double patenting rejection.
Appeal Br. 22. Accordingly, we summarily affirm this rejection. See 37
C.F.R. § 41.37(c)(1)(iv); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008); MPEP § 1205.02 (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, appellant has waived any challenge to
that ground of rejection and the Board may summarily sustain it.”).
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 8–12,
14–16, 21–
25
103 Kanga, Siddiqui 1–4, 8–12,
14–16, 21–
25

5, 6 103 Kanga, Stroud 5,6
7 103 Kanga, Siddiqui,
Kaddurah-Daouk
7
1–5, 8–12,
14–16, 21–
25
103 Castro 1–5, 8–12,
14–16, 21–
25

1–12, 14–
16, 21–25
Nonstatutory
Double Patenting
1–12, 14–
16, 21–25

Overall
Outcome
1–12, 14–
16, 21–25

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