CASTRO, Mauricio

Patent Trials and Appeals Board

Sep 18, 2019

14959310 - (D) (P.T.A.B. Sep. 18, 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.
14/959,310 12/04/2015 Mauricio CASTRO MKAY.P0678US/1000209339 6307
32425 7590 09/18/2019
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
EXAMINER
MILLER, DALE R
ART UNIT PAPER NUMBER
1623
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MAURICIO CASTRO
__________

Appeal 2019-004137
Application 14/959,310
Technology Center 1600
__________

BEFORE RYAN H. FLAX, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 9–23. Final Act. 2. 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 “Mary Kay
Inc.” Appeal Br. 3.
Appeal 2019-004137
Application 14/959,310

2
STATEMENT OF THE CASE
The claims are directed to a gel-based sugar scrub. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A gel comprising:
(a) a gel matrix comprising polyethylene glycol and
surface treated silica, wherein the gel matrix is formed with the
polyethylene glycol and surface treated silica; and
(b) particulate sugar dispersed throughout the gel matrix,
wherein the particulate sugar is sucrose, wherein the gel further
comprises 20 to 30 wt. % glycerol, and wherein the gel has less
than 5 wt. % oil.
Appeal Br. 8 (Claims Appendix).
Claims 1–4 and 9–23 are on appeal. Final Act. 2. The claims stand
rejected as follows:
Claims 1–4, 9, 10, 13, 14, and 16–23 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Hawkins2 and Tanner.3 Id. at 4.
Claims 11, 12, and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hawkins, Tanner, Riddle,4 and Gombart.5 Id. at 13.
ANALYSIS
Because the same issues are dispositive of both rejections, we address
the rejections together. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv).
According to the Examiner, Hawkins teaches that there are drawbacks
to oil-based sugar scrub formulations, and therefore discloses compositions

2 Hawkins, US 2009/0197785 A1, published Aug. 6, 2009 (“Hawkins”).
3 Tanner, US 2006/0246027 A1, published Nov. 2, 2006 (“Tanner”).
4 Riddle, US 2007/0280898 A1, published Dec. 6, 2007 (“Riddle”).
5 Gombart et al., US 9,526,685 B2, issued Dec. 27, 2016 (“Gombart”).
Appeal 2019-004137
Application 14/959,310

3
having particulate, solid sugar suspended in a saturated aqueous solution of
said sugar. Final Act. 4–5. The Examiner additionally found that Tanner
discloses a personal care composition comprising hydrophobic modified
silica, a carrier comprising about 70% or greater, by weight of the carrier, of
at least one water-soluble polyol such as glycerol or polyethylene glycols,
and a particulate material for promoting exfoliation. Id. at 5–6. The polyols
have a solubility parameter of from about 11 to about 17. Id. at 7. The
Examiner found that:
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
formulate a sugar scrub based on the teachings of Hawkins
wherein granulated sugar is present in a non-oil-based, stable
dispersion . . . selected from those described by Hawkins or
other non-oil-based, stable dispersions effective for particulate
active agents known in the analogous art. Since Tanner teaches
a non-oil-based, stable dispersion useful for cosmetic
formulations with particulate materials, in general, and
particulate exfoliants, in specific, it would have been prima
facie obvious to substitute the base formulation of Hawkins
with that of Tanner, to yield a non-oil-based, stable sugar
dispersion where the base comprised surface treated silica,
specifically Aerosil, polyethylene glycol, specifically PEG-8,
less than 5 wt% water and less than 5 wt% oil, thereby arriving
at the instant invention.
Id. at 8. The Examiner further found that Tanner “suggests glycerol as a
polyol alternative,” and thus “a composition comprising PEG and glycerol at
20–30%, as per the instant claims, is a prima facie obvious modification, by
routine experimentation, of the composition of Tanner.” Id. at 10.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (id. at 4–14; Ans. 4–16), and agree that the
Appeal 2019-004137
Application 14/959,310

4
claims would have been obvious over the identified prior art for the reasons
the Examiner articulated. We address Appellant’s arguments below.
Appellant argues that a person of ordinary skill in the art would have
been dissuaded from employing sucrose as the particulate material in the
composition of Tanner, based on an expectation that Tanner’s base of water-
soluble polyols would dissolve “related polyols” such as sucrose. Appeal
Br. 4; Reply Br. 5. More specifically, Appellant argues that because Tanner
teaches that both sucrose and polyethylene glycol have “an overall solubility
parameter of from about 11 to about 17,” “one of skill in the art would
expect the carrier to dissolve the particulate sucrose,” leading to an “undue
amount of experimentation” to “create[] a composition that maintains
sucrose in solid form.” Appeal Br. 4–5; Reply Br. 4.
We are not persuaded by this argument. As an initial matter, Tanner
teaches using a substantially anhydrous carrier, in which water-soluble
particulates “remain[] substantially uniformly suspended throughout the
exfoliating composition under reasonable transport, storage and use
conditions.” Tanner ¶¶ 7, 8. In other words, Tanner expressly teaches that
water-soluble particulates will remain undissolved in the base compositions
taught by Tanner. Sucrose is a water-soluble particulate and, thus, the
expectation would be that it would remain undissolved in Tanner’s
anhydrous base.
As support for its argument that sucrose would dissolve in Tanner’s
base, Appellant relies solely on Tanner’s teaching that sucrose and
polyethylene glycol are “suitable polyols” that have similar “solubility
parameters.” See, e.g., Appeal Br. 4–5; Reply Br. 4–5. However, as stated
by the Examiner, “similar solubility parameters do not guarantee
Appeal 2019-004137
Application 14/959,310

5
miscibility.” Ans. 14 (emphasis omitted). Tanner also identifies glycerol as
a suitable polyol. Tanner ¶ 57. Citing Bubník,6 the Examiner established
that sucrose does not necessarily dissolve into glycerol, but rather has
varying levels of solubility in different glycerol-water solutions. Bubník
teaches that the solubility of sucrose in glycerol decreases as the amount of
water in the glycerol-water solution decreases. See Bubník 121 (Table
5.12). As explained by the Examiner, given Tanner’s teaching of using a
substantially anhydrous base (see, e.g., Tanner ¶ 7), a person of ordinary
skill in the art would have looked to the 95% or 99.95% rows in Bubník
Table 5.12 to assess sucrose solubility in a substantially anhydrous system
comprising glycerol. Final Act. 12. These rows indicate that at 25 ºC, 95%
glycerol and 99.95% glycerol respectively dissolve 12.6 g and 7.2 g sucrose
per 100 ml glycerol. Bubník Table 5.12. Based on this data, we agree with
the Examiner that:
one of ordinary skill in the art would not expect substantially
anhydrous systems containing glycerol to dissolve sucrose to
such an extent that would preclude the presence of particulate
sucrose provided that sucrose was present in amounts in excess
of 12.6 g/ml. Amounts in excess of 12.6 g/ml are prima facie
obvious given the teaching of Hawkins that particulate sucrose
should present in a sugar scrub in an amount ranging from 3–
50%.
Id. In view of the above, the Appellant has not demonstrated that similar
solubility parameters alone would have created an expectation that sucrose
would dissolve such that no particulate sucrose remained in the base
composition taught in Tanner.

6 Z. Bubník and P. Kadlec, Sucrose Solubility, in SUCROSE PROPERTIES AND
APPLICATIONS 101–25, 121 (M. Mathlouthi et al. eds., 1995) (“Bubník”).
Appeal 2019-004137
Application 14/959,310

6
Appellant does not directly address Bubník, but rather argues that “it
is improper to assume that the solid sucrose of Hawkins will not dissolve in
all formulations of Tanner.” Reply Br. 3–4. However, to demonstrate
obviousness, the Examiner need not establish that all of the formulations
disclosed in Tanner will maintain sucrose in solid form. As discussed
above, the Examiner has provided a sound rationale for why it would have
been obvious to use the granulated sucrose exfoliant taught in Hawkins in a
base similar to that taught in, e.g., Tanner Sample IX, the base of which is
comprised of the polyols PEG-8 and glycerol, surface-treated silica, and less
than 5% by weight of oil, reading on claim 1. See, e.g., Final Act. 8–10;
Ans. 9–10. As further discussed above, the Examiner has provided a sound
rationale for why a person of ordinary skill in the art would have expected at
least a portion of the sucrose in this composition to remain particulate.
Appellant additionally argues that “[o]ne of skill in the art would
avoid incorporating the solid particulate of Hawkins into the base
composition of Tanner, because to do so would modify the particulate-
carrier principle of operation of both prior art teachings.” Appeal Br. 5. We
are not persuaded by this argument, because it misconstrues the Examiner’s
rejection. As stated by the Examiner,
the position of the Office is to substitute the solid organic
particulate exfoliant of Tanner with the solid sucrose exfoliant
of Hawkins, not to substitute the saturated aqueous sucrose
composition of Hawkins for the particulate exfoliant of Tanner.
. . . In so doing, said substitution would not modify the
principle of operation of Tanner because one would not be
introducing water in to what is taught to be a substantially
anhydrous system.
Ans. 13; see also Final Act. 11. Appellant also asserts that “[i]ncluding
particulate materials that are soluble in the carrier would result in a situation
Appeal 2019-004137
Application 14/959,310

7
where the particulate materials would dissolve in the carrier and cease to
remain in solid form.” Appeal Br. 6. This argument is not persuasive,
because as discussed above, Appellant has not established that all of the
sucrose would necessarily dissolve in Tanner’s anhydrous carrier.
In the Reply Brief, Appellant for the first time argues that Hawkins
“teaches away from the use of polymeric thickeners” such as PEG-8, and
thus “one of skill in the art would not modify Hawkins to incorporate the
polymeric PEG-8 of Tanner.” Reply Br. 2–3. This argument is deemed
waived. 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the [present]
appeal, unless good cause is shown.”). However, even if we were to
consider this argument, we find that it is not persuasive, because it again
misconstrues the Examiner’s rejection. The rejection does not require the
modification of Hawkins’ base to add PEG-8, but rather posits the
substitution of the solid organic particulate in Tanner’s composition with the
sucrose particulates of Hawkins. See, e.g., Ans. 13; Final Act. 11.

Appeal 2019-004137
Application 14/959,310

8
CONCLUSION
We affirm the rejection of claims 1–4, 9, 10, 13, 14, and 16–23 under
35 U.S.C. § 103 as being unpatentable over Hawkins and Tanner.
We affirm the rejection of claims 11, 12, and 15 under 35 U.S.C.
§ 103 as being unpatentable over Hawkins, Tanner, Riddle, and Gombart.
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–4, 9, 10, 13,
14, and 16–23
§ 103 over Hawkins
and Tanner
1–4, 9, 10, 13,
14, and 16–23

11, 12, 15 § 103 over Hawkins,
Tanner, Riddle, and
Gombart
11, 12, 15
Outcome 1−4, 9−23
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