Zelle, Dagmar et al.

Patent Trials and Appeals Board

Dec 17, 2019

12347241 - (D) (P.T.A.B. Dec. 17, 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.
12/347,241 12/31/2008 Dagmar Zelle 3321-P35783 1743
13897 7590 12/17/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
JUSTICE, GINA CHIEUN YU
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
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 DAGMAR ZELLE, ALEXANDER FILBRY, and
RAINER KROEPKE1
Appeal 2018-009072
Application 12/347,241
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
RACHEL H. TOWNSEND. Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
topical preparation, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Beiersdorf AG. Appeal
Br. 3. We use the word Appellant to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
Claims 21–30 and 32–41 are on appeal. Claims 21 and 37, reproduced
below, are illustrative:
21. A topical cosmetic or dermatological preparation,
wherein the preparation is effective for treating a pruritic
condition, is present as a non-ionic O/W emulsion, and
comprises (i) water, (ii) from 1 to 40 w/w % of one or more oil
phases, (iii) at least one of PEG 12 cetearylether and PEG 40
monostearate, (iv) from 0.5 to 10 w/w % of polidocanol, (v)
from 0.01 to 1 w/w % of an essential oil which comprises
menthol, and (vi) one or more O/W emulsifiers or co-
emulsifiers.
37. A topical cosmetic or dermatological preparation,
wherein the preparation is effective for treating a pruritic
condition, is present as a non-ionic O/W emulsion and
comprises (i) water, (ii) from 1 to 40 w/w % of one or more oil
phases, (iii) PEG 12 cetearylether, (iv) from 1 to 10 w/w % of
polidocanol, (v) menthol, (vi) glyceryl stearate, and (vii) at least
one of glycerin, sorbitol, butylene glycol and urea.
The claims stand rejected as follows:
Claims 21, 23–25, 27, 30, 32, 33, and 36 under 35 U.S.C. § 103(a) as
obvious based on Röder,2 Klein,3 Bazin,4 Cohen,5 and Lapidus6 (Final
Action7 3);

2 Röder et al., US 6,217,885 B1, issued Apr. 17, 2001.
3 Klein, US 4,305,936, issued Dec. 15, 1981.
4 Bazin et al., US 6,001,367, issued Dec. 14, 1999.
5 Cohen et al., US 5,558,914, issued Sept. 24, 1996.
6 Lapidus, US 5,543,148, issued Aug. 6, 1996.
7 Office Action mailed June 23, 2017.
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Claims 22, 34, 35, 37, 38, and 40 under 35 U.S.C. § 103(a) as obvious
based on Röder, Klein, Bazin, Cohen, Lapidus, and Flick8 (Final Action 6–
7);
Claims 39 and 41 under 35 U.S.C. § 103(a) as obvious based on
Röder, Klein, Bazin, Cohen, Lapidus, Flick, and Herstein9 (Final Action 8,
Ans. 3); and
Claims 26, 28, 29, and 41 under 35 U.S.C. § 103(a) as obvious based
on Röder, Klein, Bazin, Cohen, Lapidus, and Herstein (Final Action 9, Ans.
4).
OPINION
Obviousness: Röder, Klein, Bazin, Cohen, and Lapidus
The Examiner has rejected claims 21, 23–25, 27, 30, 32, 33, and 36 as
obvious based on Röder, Klein, Bazin, Cohen, and Lapidus. The Examiner
finds that “Röder teaches antipruritic compositions that alleviate itching and
also prevent reddening of skin after excessive sun exposure.” Final Action 3.
The Examiner finds that “the formulation may be in the form of O/W
emulsion,” comprising 0.01–30 wt% polidocanol (a.k.a. laureth-9). Id. The
Examiner also finds that Röder teaches that “[o]ils may be used in the
amount of 0.5–50 wt %. Emulsifiers such as glycerol sorbitan fatty acid
esters, polyoxyethylene fatty acid esters, . . . are used.” Id. at 4. The
Examiner finds that Röder also teaches “[u]sing humectants such as
glycerol.” Id.

8 Flick, E. W., Emulsifying agents – an industrial guide, William Andrews
Publishing/Noyes, pp. 104, 164 (1990).
9 Herstein, US 5,902,591, issued May 11, 1999.
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The Examiner finds that Röder does not specifically teach including
PEG 40 monostearate, glycerin stearate, or an essential oil comprising
menthol in its composition. Id. The Examiner finds that Klein teaches “a
topical corticosteroid formulation . . . using pharmaceutically acceptable,
non-toxic surfactants, . . . such as glyceryl stearate and polyethylene 40
stearate [a.k.a. PEG 40 monostearate].” Id. “Bazin also teaches using
conventional emulsifiers and co-emulsifiers . . . to make dermatological
emulsions. . . . Examples 4 and 5 illustrate oil-in-water emulsion cream
comprising PEG-40 stearate, glyceryl stearate.” Id.
The Examiner concludes that it would have been obvious to include
PEG 40 monostearate and glyceryl stearate in Röder’s composition “because
Klein teaches these are among the non-toxic surfactants suitable for anti-
inflammatory pharmaceutical formulations.” Id. at 5. The Examiner finds
that a skilled artisan would have had a reasonable expectation of success
because Röder teaches that its composition can be an oil-in-water (O/W)
emulsion and Bazin exemplifies O/W emulsions comprising PEG 40
monostearate and glyceryl stearate. Id.
Regarding the requirement for menthol in the claimed composition,
the Examiner finds that “Cohen discloses compositions for treating sunburn,
which include a local anesthetic and tea tree oil, and preferably, spearmint
oil” to provide an enhanced cooling effect. Id. The Examiner finds that
“Lapidus also teaches menthol is a preferred antipruritic agent when used at
a level of 0.9–1.1 wt% due to its medicinal odor.” Id. at 6. The Examiner
concludes that it would have been obvious “to modify the teachings of
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Röder by incorporating to the composition additional antipruritic agent such
as menthol as motivated by Cohen and Lapidus.” Id.
The skilled artisan would have been motivated to do so because
Cohen and Lapidus are directed to topical compositions for
similar purposes (treating itching conditions and/or treating
sunburn); Cohen teaches using mentholated products with
essential oils as a cooling agent; and Lapidus teaches menthol is
a preferred antipruritic agent due to its medicinal odor.
Id.
We agree with the Examiner that the composition of claim 21 would
have been obvious based on the cited references. Röder discloses
“antipruritic cosmetic and/or pharmaceutical compositions.” Röder 1:7–8.
Röder teaches that its compositions are “outstandingly suitable for
alleviating itching,” “counteract reddening of the skin,” and “display a
potent action against development of erythema after excessive UV
irradiation.” Id. at 2:6–15. Röder teaches that its composition comprises 0.1–
30% of a local anesthetic such as laureth-9 (polydocanol). Id. at 2:16–20,
2:54–55, 5:60–65.
Röder teaches that its compositions “can be in various forms, such as
are usually employed,” including oil-in-water (O/W) emulsions. Id. at 4:34–
39. Röder states that its compositions “are preferably in the form of a
solution or emulsion (cream or milk), which can be an oil-in-water or water-
in-oil emulsion.” Id. at 7:3–5.
Röder states that the compositions can comprise up to 70% water and
0.5–50% “fatty substances, such as mineral, animal, or vegetable oils.” Id. at
6:14–25. “If appropriate, the compositions according to the invention
comprise emulsifiers . . . such as are usually used in cosmetics.” Id. at 6:26–
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29. “Examples of these are glycerol sorbitan fatty acid esters [and]
polyoxyethylene fatty acid esters.” Id. at 6:34–35.
In light of Röder’s teachings, one of ordinary skill in the art would
have found a topical antipruritic composition in the form of an O/W
emulsion, comprising (i) water, (ii) 0.5–50% of an oil phase, (iii) an
emulsifier such as a polyoxyethylene fatty acid ester, (iv) 0.1–30% laureth-9
(polidocanol), and an additional emulsifier such as those that are usually
used in cosmetics to be obvious.
As the Examiner noted, Röder does not specifically suggest including
PEG 40 monostearate in its composition. Klein, however, discloses a topical
composition that contains, among other things, a surfactant. Klein 1:5–7,
3:1–2. Klein states that “pharmaceutically acceptable, nontoxic, non-ionic,
anionic and cationic surfactants” include glycerol monostearate and
“polyoxyethylene fatty acid esters such as polyoxyethylene (40) stearate,”
a.k.a. PEG 40 monostearate.10 Id. at 3:10–18.
Bazin also discloses a composition for application to skin;
specifically, an anti-wrinkle composition for cosmetic or dermatological use.
Bazin 1:6–12. Bazin states that, when its composition is an emulsion, “the
emulsifiers and the co-emulsifiers . . . are chosen from those used
conventionally in the field.” Id. at 6:18–24. Such emulsifiers and co-
emulsifiers include PEG-40 stearate and glyceryl stearate. Id. at 6:37–41.

10 Appellant’s Specification states that PEG-40 stearate is also referred to as
“monostearate polyoxyethylene (40),” among other names. Spec. 6:33 to
7:1. Appellant does not dispute that Klein’s polyoxyethylene (40) stearate is
the same compound as the PEG 40 monostearate recited in claim 21. See
Appeal Br. 19–20 (discussing Klein and Bazin).
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Bazin exemplifies two anti-wrinkle creams that include both PEG-40
stearate and glyceryl stearate. Id. at 7:42 to 8:12.
Based on these teachings, it would have been obvious to use PEG 40
monostearate and glyceryl stearate as emulsifiers in Röder’s composition.
Specifically, Röder teaches that an emulsion is a preferred form of its
composition, and suggests including emulsifiers when appropriate (e.g., for
an emulsion). Röder also suggests polyoxyethylene fatty acid esters as
emulsifiers, and Klein teaches that PEG 40 monostearate (polyoxyethylene
(40) stearate) is a pharmaceutically acceptable, nontoxic surfactant for use in
topical compositions. In addition, Bazin discloses that PEG-40 monostearate
and glyceryl stearate are among the emulsifiers and co-emulsifiers
conventionally used in the field of cosmetic and dermatological
compositions. PEG 40 monostearate and glyceryl stearate thus would have
been obvious choices to those skilled in the art for use in Röder’s O/W
emulsion composition.
Röder does not specifically suggest including menthol in its
composition. However, Cohen discloses a water-based composition
comprising a topical anesthetic and tea tree oil for treating sunburn. Cohen
1:61–67. Cohen discloses that its composition preferably contains a
fragrance-producing component, and that spearmint oil and peppermint oil
are preferred fragrance oils. Id. at 5:59–64. “The preferred fragrance-
producing component is spearmint oil. Not only does the spearmint oil tend
to mask the odor of tea tree oil, or of a tea tree oil blend, it also produces its
own characteristic pleasant odor.” Id. at 6:1–5.
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Lapidus discloses a “stick delivery system effective for the topical
application of a treatment agent selected from the group consisting of a
topical anesthetic, an antihistamine, an anti-inflammatory agent, an
antifungal agent, and mixtures thereof.” Lapidus 1:59–63. Lapidus discloses
that its system includes a solvent, a gelling agent, a treatment agent, and
water. Id. at 2:1–5. “In addition, an antipruritic agent, at a level of about
0.25% to about 5%, more preferably about 0.5% to about 1.5%, by weight,
can be included when its combination with the treatment agent employed is
acceptable.” Id. at 2:5–9.
Lapidus states that the antipruritic agent should be one that is effective
to relieve itching when topically applied, such as menthol. Id. at 2:60–66.
“Menthol is preferred . . . because, in addition to its antipruritic activity,
menthol imparts a desirable ‘medicinal’ odor to the stick delivery system.”
Id. at 2:67 to 3:5.
Based on the teachings of Cohen and Lapidus, it would have been
obvious to modify Röder’s composition to comprise spearmint oil (an
essential oil comprising menthol) or menthol. Röder suggests including
“cosmetic auxiliaries such as are usually used in such formulations,”
including perfumes, in its compositions. Röder 4:42–45; see also id. at 6:46–
47 (“perfume oils in amounts of 0.01 to 5.0%”). Thus, it would have been
obvious to include spearmint oil in Röder’s composition, because Cohen
teaches that it has a characteristic pleasant odor and is suitable for use in
topical compositions. Alternatively, it would have been obvious to include
menthol in Röder’s composition based on Lapidus’ teaching that menthol
has a desirable medicinal odor and additionally has antipruritic activity.
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In summary, Röder, Klein, Bazin, Cohen, and Lapidus disclose all of
the components of the composition of claim 21 and provide adequate reason
to combine those components in the manner claimed. Claim 21 therefore
would have been obvious based on the cited references.
Appellant argues that “none of the compositions which are
exemplified in RODER is an emulsion, which is an indication that emulsions
are not preferred embodiments of the antipruritic compositions of RODER.”
Appeal Br. 18. This argument is unpersuasive, because Röder expressly
states that emulsions are a preferred form of its compositions. Röder 7:3–5
(“The compositions . . . are preferably in the form of a solution or emulsion
(cream or milk), which can be an oil-in-water or water-in-oil emulsion.”).
Appellant also argues that “RODER already discloses emulsifiers that
may be used for making emulsions. . . . There is no indication in any of
RODER, KLEIN and BAZIN that any of the emulsifiers picked by the
Examiner from the disclosures of KLEIN and BAZIN would result in a
better product.” Appeal Br. 19. Appellant also argues that “KLEIN and
BAZIN are but two of probably thousands of documents which disclose a
host of O/W emulsifiers which may be expected to be successfully
employable in making an O/W emulsion of the type disclosed by RODER.”
Id.
These arguments are also unpersuasive. The fact that a host of known
emulsifiers would have been expected to work in Röder’s O/W emulsion
composition does not make the choice of any specific, known emulsifier any
less obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
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likely to be obvious when it does no more than yield predictable results.”);
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“[D]isclos[ing] a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose taught by the prior
art.”). And a modification of the prior art does not need to improve the prior
art’s function in order to be obvious; substitution of one known equivalent
for another is an obvious modification. See In re Omeprazole Patent Litig.,
483 F.3d 1364, 1374 (Fed. Cir. 2007) (“[T]his court finds no . . . error in
[the] conclusion that it would have been obvious to one skilled in the art to
substitute one ARC [alkaline reactive compound] for another.”). Thus, using
the known emulsifiers disclosed by Klein and Bazin, including PEG 40
monostearate and glyceryl stearate, would have been obvious to a person of
ordinary skill in the art.
Appellant also argues that it would not have been obvious to combine
Röder with either Cohen or Lapidus. Appeal Br. 8. Appellant argues that
“RODER relates to antipruritic cosmetic and/or pharmaceutical
compositions,” id. at 9, and “mentions merely in passing (i.e., in a single
sentence of the entire document) that these compositions can additionally
prevent or inhibit the development of erythema after excessive UV
irradiation, without providing any further discussion, let alone corresponding
experimental evidence.” Id. at 10.
Appellant argues that “COHEN, on the other hand, does not even
mention antipruritic compositions, let alone disclose[] compositions similar
to those taught by RODER, but is directed exclusively to a (water-based)
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formulation for the treatment and care of sunburn.” Id. Appellant argues that
“RODER discloses compositions for the prevention of erythema (sunburn)
. . . , whereas COHEN discloses compositions for the treatment of (already
developed) erythema.” Id. at 11. Appellant argues that Cohen’s suggestion to
add “other cooling or numbing agents, such as mentholated or camphor-
based products,” to its composition would not “have prompted one of
ordinary skill in the art to add menthol or an essential oil comprising
menthol to the compositions of RODER.” Id. Similarly, Appellant argues
that Röder teaches that the active agents in its composition do not have a
pronounced intrinsic smell, “which clearly is a disincentive rather than a
motivation to incorporate a compound with a pronounced intrinsic smell
such as menthol.” Id. at 12.
These arguments are unpersuasive. Röder expressly states that, in
addition to its antipruritic effect, its composition has a potent action against
the development of sunburn. Röder 2:14–15. Cohen discloses that its
formulation relieves pain and promotes healing of sunburned skin. Cohen
1:61–64. Appellant has not persuasively explained why these uses would be
considered mutually exclusive, and it would seem desirable to prevent
further sunburn (per Röder) when treating skin that has already been
sunburned (per Cohen).
In addition, Röder expressly suggests including perfumes or perfume
oils in its composition. Röder 4:45; 6:46–47. In addition to suggesting
mentholated cooling agents, Cohen also suggests including “fragrance oils
such as spearmint oil, peppermint oil,” etc. in its composition. Cohen 5:60–
63. Thus, it would have been obvious to use spearmint oil or peppermint oil
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as the perfume oil in Röder’s composition, because Cohen suggests using
them as fragrance oils in its skin-care composition.
Regarding Lapidus, Appellant argues that, “[w]hile LAPIDUS also
relates to antipruritic compositions for alleviating the itching caused by,
inter alia, insect bites and the like, the compositions of LAPIDUS which are
intended for this purpose do not contain menthol in combination with a
typical anesthetic such as lidocaine but instead contain an antihistamine.”
Appeal Br. 14–15. Appellant argues that “[m]enthol is mentioned in
LAPIDUS solely and exclusively in the context of compositions for
addressing razor burn (in combination with a typical anesthetic such as
lidocaine . . .).” Id. at 15–16. “[F]or relieving itching caused by insect bites,
allergic reactions and the like, . . . LAPIDUS recommends antihistamines
(not menthol).” Id. at 16.
These arguments are not persuasive. Lapidus describes its invention as
a stick delivery system for topical application of a treatment agent that can
be a topical anesthetic, an antihistamine, an anti-inflammatory agent, or an
antifungal agent. Lapidus 1:58–63. Lapidus states that, “[i]n addition, an
antipruritic agent . . . can be included when its combination with the
treatment agent employed is acceptable.” Id. at 2:5–9 (emphasis added).
Thus, Lapidus suggests combining an antipruritic agent with a “treatment
agent” generally, not solely with a topical anesthetic. See also id. at 4:5–8
(“[A] combination of components must be provided such that the antipruritic
agent and treatment agent are ‘carried’ in an aesthetically desirable, non-
messy vehicle.”); 5:50–63 (claim 1, which includes menthol and any of the
treatment agents described by Lapidus).
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It is true that Lapidus also specifically suggests including an
antipruritic agent “when the treatment agent is a typical [sic, topical]
anesthetic.” Id. at 2:58–59. However, when the reference is read as a whole,
its teachings are not limited to combining an antipruritic agent, such as
menthol (id. at 2:64–66), with topical anesthetics, but with any of the
treatment agents where alleviation of itching would be desirable.
Appellant also argues that “[t]he fact that menthol has a medicinal
odor . . . is also not indicative of an apparent reason for one of ordinary skill
in the art to include menthol in a composition according to RODER,”
because Röder discloses that the active compounds in its composition do not
have a pronounced intrinsic smell. Appeal Br. 17.
This argument is also unpersuasive because, as discussed above,
Röder expressly suggests including perfumes or perfume oils in its
composition. Thus, Lapidus’ disclosure that “menthol imparts a desirable
‘medicinal’ odor” to its composition would provide a reason for a skilled
artisan to include menthol as the perfume in Röder’s composition, where a
medicinal odor was considered desirable.
Obviousness: Röder, Klein, Bazin, Cohen, Lapidus, and Flick
Claims 22, 34, 35, 37, 38, and 40 stand rejected as obvious based on
Röder, Klein, Bazin, Cohen, Lapidus, and Flick. The Examiner relies on
Röder, Klein, Bazin, Cohen, and Lapidus for the disclosures discussed above
with regard to claim 21, and finds that Flick teaches that PEG 12
cetearylether, as recited in claim 22, is a known emulsifier for O/W lotions.
Final Action 7. The Examiner concludes that it would have been obvious to
modify Röder’s composition by including PEG 12 cetearylether for the
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desirable properties, as disclosed by Flick. Id. We agree with and adopt the
Examiner’s fact-finding and conclusion.
Appellant argues that “FLICK is unable to cure any of the deficiencies
of RODER, COHEN and LAPIDUS set forth above.” Appeal Br. 21. This
argument is unpersuasive because, for the reasons discussed above, we
conclude that Röder, Klein, Bazin, Cohen, and Lapidus would have made
obvious the composition of claim 21.
Appellant also argues that (a) “emulsions are less desirable
embodiments of the compositions of RODER,” (b) “[t]here is no indication
. . . that any of the emulsifiers picked by the Examiner from the disclosure of
FLICK would result in a better product than that which can be obtained by
using the emulsifiers disclosed in RODER,” and (c) “FLICK is but one of
probably thousands of documents which disclose a host of O/W emulsifiers
which may be expected to be successfully employable in making an O/W
emulsion of the type disclosed by RODER.” Appeal Br. 21.
These arguments are unpersuasive here for the reasons explained
above with respect to Klein and Bazin: The fact that a host of known
emulsifiers would have been expected to work in Röder’s O/W emulsion
composition does not make a specific choice from among the known
emulsifiers any less obvious, and substitution of known equivalents for each
other is an obvious modification even if it would not have been expected to
provide an improvement.
We therefore affirm the rejection of claim 22 under 35 U.S.C.
§ 103(a) based on Röder, Klein, Bazin, Cohen, Lapidus, and Flick. Claims
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34, 35, 37, 38, and 40 fall with claim 22 because they were not argued
separately. 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness: Röder, Klein, Bazin, Cohen, Lapidus, Flick, and Herstein
Claims 39 and 41 stand rejected as obvious based on Röder, Klein,
Bazin, Cohen, Lapidus, Flick, and Herstein. The Examiner relies on Röder,
Klein, Bazin, Cohen, Lapidus, and Flick for the disclosures discussed above,
and finds that Herstein teaches that octyldodecanol, as recited in claim 39, is
a known emollient for use in skin care compositions for treating sunburn.
Final Action 8. The Examiner concludes that it would have been obvious to
modify Röder’s composition, which is applied to the skin, by including
octyldodecanol as an emollient to condition the skin, in order to “produc[e]
an improved antipruritic composition with skin conditioning effects.” Id. at
8–9. We agree with and adopt the Examiner’s fact-finding and conclusion.
Appellant argues that “octyldodecanol is only one of hundreds of
useful emollients (according to HERSTEIN materials for the relief of
dryness, as well as for the protection of the skin) which may optionally be
present in the ascorbic acid containing compositions of HERSTEIN.”
Appeal Br. 22. Appellant argues that “[t]here is no statement in HERSTEIN
which would motivate one of ordinary skill in the art to incorporate an
emollient and, specifically, octyldodecanol, in a composition according to
RODER.” Id.
These arguments are unpersuasive. Herstein discloses topical cosmetic
or pharmaceutical emulsion compositions. Herstein 2:66–67. Herstein states
that emollients are used for “prevention or relief of dryness, as well as for
the protection of the skin.” Id. at 7:48–50. Herstein also states that “[a] wide
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variety of suitable emollients are known,” including 2-octyl dodecanol. Id. at
8:50–51, 9:21. Thus, as the Examiner found, it would have been obvious to
include octyldodecanol in Röder’s composition for its known functions of
preventing or relieving dryness and protecting skin. The fact that many other
emollients might also have been suitable for inclusion in Röder’s
composition does not make octyldodecanol a nonobvious choice.
With regard to claim 41, Appellant argues that the emollients
disclosed by Herstein include glycerol, which “appears to be the only
emollient which is employed in the Examples of HERSTEIN.” Reply Br.
5.11 Appellant points out that “claim 33, from which newly rejected claim 41
depends, already contains glycerin” and “it is not seen that [one of ordinary
skill in the art] would have added not only glycerin, i.e., one of the preferred
emollients of HERSTEIN, but additionally also a less preferred emollient
and in particular, octyldodecanol, to the compositions of RODER.” Id.
This argument is unpersuasive. Herstein suggests using “at least one
pharmaceutically/cosmetically acceptable emollient,” and thus expressly
contemplates using two or more emollients together. Herstein 7:43–44. In
addition, Appellant’s argument that glycerin is the only emollient used in
Herstein’s exemplary compositions does not appear to be supported by the
reference. Herstein discloses that emollients include dimethicone and
trimethicone, vegetable oils, C1–C20-alkyl esters of fatty acids having 10 to
20 carbons such as stearates, and lecithin. Id. at 7:66–67, 8:1–2, 8:7–8, 8:51.
Herstein’s Example 2 composition contains lecithin, octyl stearate,

11 The separate argument with respect to claim 41 in the Reply Brief is in
response to new grounds of rejection of claim 41 in the Answer.
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hydrogenated vegetable oil, phenyl trimethicone, and dimethicone 200. Id. at
12:30, 31, 33, 35, 36. Thus, Appellant’s position that Herstein would not
have made obvious the use of more than one emollient is unpersuasive.
Obviousness: Röder, Klein, Bazin, Cohen, Lapidus, and Herstein
Claims 26, 28, 29, and 41 stand rejected as obvious based on Röder,
Klein, Bazin, Cohen, Lapidus, and Herstein. The Examiner finds that
“Herstein teaches using antioxidants to treat various skin conditions
including sunburn. Herstein teaches coenzyme Q10 [as recited in claim 28]
is a preferred antioxidant. See Example 2, which is in the form of O/W
emulsion which also contains glycerin, butylene glycol, glyceryl stearate,
PEG-1000 stearate and UV filters [as recited in claim 29].” Final Action 9.
The Examiner concludes that it would have been obvious “to modify the
teachings of the references by incorporating to the antipruritic compositions
coenzyme Q10 and UV filters as motivated by Herstein.” Id. at 10.
Specifically, Herstein “teaches coenzyme Q10 is a well-known antioxidant
useful in topical skin protection compositions,” and suggests using UV
filters to protect the skin from sunburn. Id.
We agree with the Examiner’s fact-finding and conclusion. As the
Examiner found Herstein suggests including sunscreens (i.e., UV-A or
UV-B filters) in its composition, as well as antioxidants such as coenzyme
Q10. Herstein 9:19–35, 9:65 to 10:5. Herstein also exemplifies a
composition comprising coenzyme Q10 and the sunscreens benzophenone-3
and octyl methoxycinnamate. Id. at 12:10–50, 11:32–35. Therefore, it would
have been obvious to include coenzyme Q10 and a UV-A or UV-B filter in
Appeal 2018-009072
Application 12/347,241

18
the composition made obvious by Röder, Klein, Bazin, Cohen, and Lapidus
for their known functions in skin care compositions.
Appellant argues that “the Examiner has failed to provide any
explanation as to what would have prompted one of ordinary skill in the art
to include coenzyme Q10 and/or UV-A or UV-B filters and/or
octyldodecanol into an antipruritic composition according to RODER.”
Appeal Br. 23.
This argument is not persuasive. As discussed previously, Herstein
discloses that octyldodecanol is an emollient known to be suitable in skin
care compositions, and therefore it would have been obvious to include it in
Röder’s composition for its known function of preventing or treating skin
dryness. Likewise, Herstein discloses that coenzyme Q10 is an antioxidant
known to be useful in skin care compositions, making its inclusion in
Röder’s composition obvious for its known function of preventing oxidative
reactions.
In addition, while Appellant focuses on the antipruritic activity of
Röder’s composition, Röder discloses that its composition also prevents
development of erythema (sunburn) after UV exposure. Röder 2:14–15.
Thus, it would have been obvious to include a UV-A or UV-B filter (i.e.,
sunscreen) in Röder’s composition for its known property of preventing
sunburn after UV exposure.
Appellant argues that “[o]ne must also take into consideration here
that one of ordinary skill in the art would clearly not expect an acid such as
ascorbic acid to have any favorable effect on itching skin (but rather the
opposite).” Appeal Br. 24.
Appeal 2018-009072
Application 12/347,241

19
This argument is unpersuasive because the rejection is not based on
combining Herstein’s entire composition with Röder’s; rather the Examiner
cites Herstein as evidence that coenzyme Q10 and UV-A/UV-B filters were
known in the art for use in skin care compositions, and therefore would have
been obvious to include in Röder’s composition for their known functions.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 23–25,
27, 30, 32,
33, 36
103(a) Röder, Klein, Bazin,
Cohen, Lapidus
21, 23–25,
27, 30, 32,
33, 36

22, 34, 35,
37, 38, 40
103(a) Röder, Klein, Bazin,
Cohen, Lapidus, Flick
22, 34, 35,
37, 38, 40

26, 28, 29,
41
103(a) Röder, Klein, Bazin,
Cohen, Lapidus,
Herstein
26, 28, 29,
41

39, 41 103(a) Röder, Klein, Bazin,
Cohen, Lapidus, Flick,
Herstein
39, 41
Overall
Outcome
21–30, 32–
41

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