14124096 - (R) (P.T.A.B. Feb. 6, 2020)

Stefanie Von Thaden et al.

Patent Trials and Appeals BoardFeb 6, 2020

14124096 - (R) (P.T.A.B. Feb. 6, 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. 14/124,096 02/04/2014 Stefanie Von Thaden 3321-P50095 9394 13897 7590 02/06/2020 Abel Schillinger, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 EXAMINER CHUI, MEI PING ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 02/06/2020 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 STEFANIE VON THADEN and MANUELA KOEHLER ____________ Appeal 2018-007435 Application 14/124,096 Technology Center 1600 ____________ Before DONALD E. ADAMS, TAWEN CHANG, and MICHAEL A. VALEK, Administrative Patent Judges. VALEK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the Decision entered November 18, 2019. Appellant argues “that from the Decision it appears that the Board has overlooked and misapprehended several important facts.” Req. Reh’g 1. As explained below, we determine Appellant has not persuasively shown that the Board overlooked or misapprehended the matters alleged. Appellant contends the Board incorrectly determined that because claim 34 “‘is a comprising claim; it does not exclude urethane foam from the claimed preparation.’” Id. at 2 (quoting Decision 8). According to Appellant, “while it may be reasonable to consider [the] expanded 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Beiersdorf AG as the real party in interest. Appeal Br. 3. Appeal 2018-007435 Application 14/124,096 2 polyurethane foam which has been impregnated with the claimed preparation to ‘comprise’ the preparation, it clearly is not reasonable to consider the preparation which has been impregnated into the polyurethane foam to ‘comprise’ the polyurethane foam.” Id. We are not persuaded. As explained in the Decision, “Choi’s polyglycerol-10 stearate emulsion both alone, and when impregnated in expanded foam, reads on the preparation in claim 34.” Decision 8. Appellant has not persuasively shown that the broadest reasonable interpretation of “preparation,” as recited in claim 34, excludes a “cosmetic product” composed of a polyurethane foam impregnated with an emulsion as taught in Choi. Id. at FF3. Appellant next argues the Board overlooked that Choi “exclusively discloses UV-blocking W/O or OW compositions of low viscosity in impregnated form” and, therefore, Choi teaches away from providing “the compositions disclosed therein . . . in unimpregnated form.” See Req. Reh’g 2–3. This argument is unpersuasive. First, as explained above, claim 34 does not exclude urethane foam preparations. Second, Choi does not “criticize, discredit, or otherwise discourage” the use of its emulsions outside a urethane foam. Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quotations omitted). Instead, Choi acknowledges that UV blocking W/O and O/W emulsions are generally prepared as creams or lotions. See Decision 3 (FF1). While it is true Choi teaches that impregnating such emulsions into urethane foam provides certain advantages over other types of preparations, Choi’s expression of “a general preference” for the urethane foam preparation is not a teaching away. See Galderma, 737 F.3d at 738–39 (“A teaching that a composition may be Appeal 2018-007435 Application 14/124,096 3 optimal or standard does not criticize, discredit, or otherwise discourage investigation into other compositions.”). Finally, with respect to claims 35, 36, and 48, Appellant argues the Board misapprehended Knuppel’s teaching of foam stabilizers and, thus, there is no reason to combine a film former as taught in Knuppel with Choi’s emulsion. See Req. Reh’g 3–4. Specifically, Appellant contends “the foam stabilizers mentioned in Knuppel are stabilizers which may be used for stabilizing the foam of foaming cosmetic or dermatological compositions, i.e., not for solid, impregnatable foams like the expanded polyurethane foam of Choi.” Id. at 4. Again, we are not persuaded. The record lacks sufficient evidence to support the distinction Appellant draws regarding foam stabilizers. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). Moreover, as explained in the Decision, the record supports Examiner’s finding that a skilled artisan would be motivated to add a film- forming polymer to “‘improve the water-resistance property’ of an O/W or W/O emulsion” and that one “would reasonably expect the addition of a film former to improve water resistance of an O/W or W/O emulsion whether used in a lotion or cream as taught in Knuppel (FF5) or in a foam as taught in Choi (FF3).” Decision 11 (emphases added). Appellant provides no persuasive evidence or argument to support a different finding. In conclusion, Appellant has not identified an issue of fact or law that was overlooked or misunderstood. Therefore, the Request for Rehearing is denied. Appeal 2018-007435 Application 14/124,096 4 Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 34, 37–43, 45 103 Choi 34, 37– 43, 45 34–53 103 Choi, Knuppel, De La Poterie 34–53 Overall Outcome 34–53 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 34, 37–43, 45 103 Choi 34, 37– 43, 45 34–53 103 Choi, Knuppel, De La Poterie 34–53 Overall Outcome 34–53 REHEARING DENIED