Douglas Robert. Hoffman et al.Download PDFPatent Trials and Appeals BoardSep 4, 201912022328 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. 12/022,328 01/30/2008 Douglas Robert Hoffman 64397833US01 (27839-1703) 5506 45736 7590 09/04/2019 Christopher M. Goff (27839) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER GREENE, IVAN A ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): uspatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS ROBERT HOFFMAN, SCOTT W. WENZEL, DAVID WILLIAM KOENIG, and LISA FLUGGE-BERENDES ____________ Appeal 2018-003132 Application 12/022,3281 Technology Center 1600 ____________ Before JOHN G. NEW, RACHEL H. TOWNSEND and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a hand health and hygiene system. The Examiner rejected the claims on appeal under 35 U.S.C. § 103(a) as obvious. We reverse. 1 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. App. Br. 1. Appeal 2018-003132 Application 12/022,328 2 STATEMENT OF THE CASE The Specification discloses: “The present disclosure is directed to a system and method for maintaining or improving hand health and hygiene.” Spec. ¶ 1. According to the Specification, “[t]he hand health and hygiene system comprises an article, such as an elastomeric glove, that has a coating on the skin-contacting surface of the article that delivers a skin health benefit to the skin, a non-irritating hand cleanser capable of moisturizing the skin, and a moisturizing hand sanitizer.” Id. Claims 1–3, 6, 7, 10–14, 17, 18, 27, and 28 are on appeal. Claim 1 is illustrative and reads as follows: 1. A hand health and hygiene system comprising: a glove comprising an elastomeric substrate having a skin- contacting surface, and a moisturizing liquid liner composition applied to at least a portion of the skin contacting surface, the moisturizing liquid liner composition comprising cetyl dimethicone, from about 30% to about 50% by weight of the composition cyclomethicone, a cationic quaternary ammonium compound and an emulsifier, wherein the emulsifier comprises polyglyceryl-4 isostearate, cetyl PEG/PPG- 10/1 dimethicone and hexyl laurate, Appeal 2018-003132 Application 12/022,328 3 wherein the moisturizing liquid liner composition is substantially anhydrous comprising about 5% or less by weight water, and further wherein the moisturizing liquid liner composition is present on the skin-contacting surface in an add-on amount of from about 0.015 grams of the composition per grams of the glove (g/g) to about 0.045 g/g; and a hand sanitizer comprising a moisturizer. App. Br. 16 (claim formatted for clarity). During prosecution, in response to requirement for an election of species, Appellants elected “a lower chain alcohol such as ethanol” as the species of hand sanitizer, and “a cationic quaternary ammonium salt such as dimethyl ditallow ammonium methylsulfate” as the species of cationic moiety.2 May 31, 2011 Response to Restriction/Election Requirement, 2. We limit discussion and consideration to the elected species, and take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). 2 Appellants also elected “a moisturizer such as dimethicone” as the species of skin benefit agent recited in claims 11 and 14. Appeal 2018-003132 Application 12/022,328 4 The Examiner rejected claims 1–3, 6, 7, 10–14, 17, 18, 27, and 28 under 35 U.S.C. § 103(a) as obvious over the combination of Johnson,3 Beerse,4 Sine,5 Reeth,6 Dobkowski,7 and Clark.8 ANALYSIS The same issue is dispositive with respect to all of the pending claims. Accordingly, we analyze all of the claims together. Johnson discloses: [A]n elastomeric article, such as an elastomeric glove, for example, that includes a coating on the skincontacting surface of the article. The coating includes a carrier which may separate from the article at expected use conditions and may help to lubricate the skin. The coating also includes an additive which may provide a clinical benefit to the skin. Johnson Abstract. In finding the pending claims obvious, the Examiner conceded that Johnson does not disclose: 1) cetyl dimethicone; 2) the emulsifier, polyglyceryl-4-isostearate cetyl PEG/PPG-10/1-dimethicone and hexyl laurate; 3) the elected cationic moiety, ditallow dimethyl ammonium methyl sulfate; and 4) the elected species of hand sanitizer, ethanol. Final Act.9 6. 3 Johnson et al., US Patent Publication No. 2004/0122382 A1, published June 24, 2004 (“Johnson”). 4 Beerse et al., US Patent Publication No. 2002/0006886 A1, published Jan. 17, 2002 (“Beerse”). 5 Sine, et al., US Patent No. 6,183,766 B1, issued Feb. 6, 2001. 6 Reeth, et al., Silicones: Enhanced Protection Across Personal Care Applications, Dow Corning S.A. Belgium, Form No. 22-1712-01 (1998) (“Reeth”). 7 Dobkowski et al., US Patent No. 5,849,314, issued Dec. 15, 1998 (“Dobkowski”). 8 Clark et al., US Patent No. 6,103,245, issued Aug. 15, 2000 (“Clark”). 9 Office Action mailed June 29, 2017 (“Final Act.”). Appeal 2018-003132 Application 12/022,328 5 In addition, the Examiner did not identify a teaching in Johnson of 5) cyclomethicone. However, the Examiner found that these elements were known in the art. With respect to the first claim element not taught by Johnson, the Examiner found that Reeth taught that “alkylmethylsiloxanes provide a number of benefits to the skin including moisturization, protection against waterborne irritants by making the formulation more resistant to removal by water while maintaining the positive sensory attributes associated with silicones” and disclosed the use of the claimed alkymethylsilocane, cetyl dimethicone. Id. at 8. With respect to the second and third claim elements not taught by Johnson, the Examiner found that Beerse disclosed a substantially dry, disposable personal care article comprising the emulsifier component, ABIL WE-09® (which comprises polyglyceryl-4-isostearate cetyl PEG/PPG-10/1- dimethicone and hexyl laurate), as well as the elected cationic moiety, ditallow dimethyl ammonium methyl sulfate. Id. at 7. With respect to the fourth claim element not taught by Johnson, the Examiner found that Sine disclosed a hand sanitizer composition including ethanol (as well as two additional components recited in dependent claim 27). Id. at 6–7. Finally, with respect to the fifth claim element not identified as being taught by Johnson, the Examiner found that Dobkowski disclosed “anhydrous skin treatment cosmetic compositions . . . including . . . a volatile siloxane[,] preferably cyclomethicone[] in an amount of from 10% to 80%.” Id. at 9. Dobkowski teaches that upon application to the skin, the volatile siloxane evaporates leaving behind functional materials “deposited Appeal 2018-003132 Application 12/022,328 6 in a very uniform layer on the skin.” Id. The Examiner also found that Clark disclosed the inclusion of cyclomethicone as “an ideal carrier” because it provides “excellent application and spreading characteristics and has excellent tactile feel.” Id. Based on the combined disclosures of these references, the Examiner concluded: It would have been prima facie obvious to one of ordinary skill in the art at the time the claimed invention was made to produce elastomeric articles, such as laboratory gloves, with beneficial coating on a surface[,] the coating including a carrier which may separate from the article at expected use conditions and may help to lubricate the skin, the beneficial coating including beneficial additives such as . . . cetyl dimethicone . . . the emulsifier component ABIL WE-09® [polyglyceryl-4 isostearate, cetyl PEG/PPG-10/1 dimethicone and hexyl laurate], ditallow dimethyl ammonium methyl sulfate . . . , ethanol, and cyclomethicone in an amount of 30 to 65% by weight . . . because the moisturizer would have provided suitable comfort to the user and the sanitizer (and/or cleanser) would have provided suitable control of microbial vectors, and the inclusion of conventional skin benefit ingredients would have provided the benefits of those ingredients, such as, improved skin-feel after removing the glove (i.e. [o]ne of ordinary skill in the art would have recognized that the skin benefit agent would have merely performed the same function of a skin benefit agent (i.e. benefiting the skin) as it performed separately.). . . . [O]ne of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention because producing the skin benefit composition and applying said composition to a nonwoven glove substrate would have required no more than an ordinary level of skill in the art, for example, mixing the constituent ingredients and applying to a glove. Id. at 10–11. Appeal 2018-003132 Application 12/022,328 7 Appellants argue, that “there is simply nothing in the combination of cited references that provides a reason and/or motivation for one having ordinary skill in the art to arrive at Appellant’s claimed combination.” App. Br. 9. Appellants contend that “[a]ny modification/combination of the cited references to arrive at the claimed compositions and add-on amount can only be done . . . using Appellant’s composition as a roadmap to pick and choose elements to try and make the combination without any guidance for one having ordinary skill in the art to do so.” App. Br. 11–12. As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): “[T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability.” Appellant has persuaded us that the Examiner has not carried the burden of establishing that the claimed invention would have been obvious over the cited art. We acknowledge that the Examiner has identified all of the components of the claimed health and hygiene system as present in the prior art. Final Act. 3–10. We further acknowledge that the Examiner has identified benefits of including certain of these components in a health and hygiene system. Id. at 8 (finding that Reeth disclosed that alkylmethylsilocanes, like cetyl dimethicone, provide moisturization and “protection against waterborne irritants . . . while maintaining the positive sensory attributes associated with silicones”); id. at 9 (finding that Dobkowski and Clark taught that volatile siloxanes like cyclomethicone evaporate and leave functional materials “deposited in a very uniform layer on the skin” and serve as “an ideal carrier” since they provide “excellent application and spreading characteristics and has excellent tactile feel”); id. at 6–7 (identifying Sine as teaching the use of ethanol as a hand sanitizer). Appeal 2018-003132 Application 12/022,328 8 However, the Examiner has not articulated a persuasive reason why the skilled artisan would have included the specifically claimed emulsifier component, or the elected cationic moiety. See id. at 7–8; Ans. 11–12 (identifying these components as being disclosed in Beerse but not articulating a reason to include them in a composition like that claimed). The Examiner must articulate some reason to select the specific emulsifier and elected cationic moiety and include them in a health and hygiene system as claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). We find that the Examiner has not met this burden. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (explaining that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”); Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (“Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.”); Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361, 1375 (Fed. Cir. 2000) (explaining that “particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed”). Accordingly, we Appeal 2018-003132 Application 12/022,328 9 reverse the Examiner’s rejection of claims 1–3, 6, 7, 10–14, 17, 18, 27, and 28. SUMMARY In summary, we reverse the Examiner’s rejection of claims 1–3, 6, 7, 10–14, 17, 18, 27, and 28 under 35 U.S.C. § 103(a) as obvious over the combination of Johnson, Beerse, Reeth, Dobkowski, and Clark. REVERSED Copy with citationCopy as parenthetical citation