Douglas Robert. Hoffman et al.

Patent Trials and Appeals Board

Sep 4, 2019

12022328 - (D) (P.T.A.B. Sep. 4, 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.
12/022,328 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