Ex Parte Araki et al

Patent Trial and Appeal Board

Apr 21, 2016

12670410 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/670,410 01125/2010
7609 7590 04/21/2016
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
FIRST NAMED INVENTOR
Hidefumi Araki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IWI-19646 2500
EXAMINER
PIPIC,ALMA
ART UNIT PAPER NUMBER
1617
MAILDATE DELIVERY MODE
04/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HIDEFUMI ARAKI, KEI WATANABE,
Y ASUNARI NAKAMA, TERUHIKO HINENO,
TOMOHIRO IIMURA, and TADASHI OKAW A
Appeal2013-010596
Application 12/670,410
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a gel
composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify the Real Parties in Interest as SHISEIDO
COMP ANY, LTD. and DOW CORNING TORAY CO., LTD. (see
Br. 3).
Appeal2013-010596
Application 12/670,410
Statement of the Case
Background
"Cosmetics provided with excellent texture in use by the collapse of
the gel structure, etc., are being developed .... use of the silicone-based
surfactants is expected to produce the effect of further improving texture in
use such as skin penetration and stickiness" (Spec. i-f 5).
The Claims
Claims 1, 2, 4--7, 9-11, 13, 14, and 16 are on appeal.2 Independent
claim 1 is representative and reads as follows:
1. A gel composition comprising:
an organosiloxane compound of the following formula (1) or
(3), a monohydric aliphatic alcohol having 10 to 30 carbon atoms, and
water;
R~
I
R1-Si-fCH~)·?-A-COOM (·."') I , "- -· '
R:.1
in the formula ( 1 ), at least one of R i to R3 is a functional group of -0-
Si(R 4)3 in which R4 is an alkyl group having 1 to 6 carbon atoms or a
phenyl group, or a functional group of -O-Si(R5)2-X1 in which R5 is
an alkyl group having 1 to 6 carbon atoms or a phenyl group, and X 1
is a functional group of the following formula (2) when i=l; and the
remaining R 1 to R3 may be the same or different and each may be a
substituted or unsubstituted monovalent hydrocarbon group; Mis a
hydrogen atom, a metal atom, or an organic cation; A is a linear or
branched alkylene group of CqH2q in which q is any integer of 0 to 20;
and the organosiloxane compound of the formula ( 1) contains a total
of 2 to 20 silicon atoms (Si) on average per molecule;
2 Claims 3 and 12 were cancelled, claims 8 and 15 were objected
to, and claims 17 and 18 were allowed (see Br. 5).
2
Appeal2013-010596
Application 12/670,410
{O~R6\_ R' ) '· ! '<$; .· I ..
' $'" 0 . ·n x·= -s-··- J ·.···t. -~
1
~x· · .
. • . ·3.,~t
(2)
in the formula (2), R6 is a hydrogen atom, an alkyl group having 1 to 6
carbon atoms, or a phenyl group; R7 and R8 are selected from an alkyl
group having 1 to 6 carbon atoms or a phenyl group; Bis a linear or
branched alkylene group of CrH2r which may be partially branched in
which r is any integer of 2 to 20; and i specifies the generation of a
silylalkyl group of Xi and is any integer of 1 to n when the generation
number is n, wherein the generation number n is any integer of 1 to
1 O; ai is any integer of 0 to 2 when i is 1, or ai is an integer smaller
than 3 when i is 2 or larger; and xi+ 1 is the silylalkyl group when i is
smaller than n, and is a methyl group when i=n;
MOQC-Q-{CH2h-tS:.i.~0 Qt.-··· [ (CH,),-Q-·· COOM (3) R · 0 R" . m
the formula (3), R9 to R 12 may be the same or different and are
selected from a substituted or unsubstituted monovalent hydrocarbon
group; Mis a hydrogen atom, a metal atom, or an organic cation; Q is
a linear or branched alkylene group of CqH2q in which q is any integer
of 0 to 20; and p is any number of 0 to 20,
wherein a molar ratio of the organosiloxane compound: the
monohydric aliphatic alcohol is in the range of 1 :0.1 to 1 :30,
an amount of water is in the range of 100 to 10000 parts by
mass with respect to 100 parts by mass of the mixture of the
organosiloxane compound and the monohydric aliphatic alcohol, and
the gel composition contains crystal structure characterized in
that bilayer membranes of the organosiloxane compound and the
monohydric aliphatic alcohol are arranged in a layer form in a long-
period structure and the hydrophobic groups of the organosiloxane
compound and the monohydric aliphatic alcohol are arranged in a
hexagonal form on the short-plane side.
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Appeal2013-010596
Application 12/670,410
The Issue
The Examiner rejected claims 1, 2, 4--7, 9-11, 13, 14, and 16 under 35
U.S.C. § 103(a) as obvious over Sabatelli3 and Katsoulis4 (Final Act. 3-9).
The Examiner finds that Sabatelli teaches deodorant sticks with
aluminum and zirconium salts but acknowledges that "Sabatelli does not
teach organosiloxane compounds of formula (1) or (3)" (Id.).
The Examiner finds that Katsoulis teaches "deodorant compositions
comprising encapsulated aluminum and aluminum-zirconium salt
compositions ... [that] are contained in a shell comprised of a silicone
carboxy acid" (Id.). The Examiner finds that Katsoulis teaches the
encapsulating shell may be composed of organosiloxane compounds that
correspond to formulas (1) and (3) (Id. at 5).
The Examiner finds it obvious to "have modified the antiperspirant
gel composition of Sabatelli by adding to it encapsulated antiperspirant in an
amount of 1-25% w/w with a reasonable expectation of success because
Katsoulis et al. taught addition of encapsulated antiperspirant actives to
antiperspirant compositions" (Id. at 5---6).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that the ordinary artisan would have had
reason to combine the encapsulated gel compositions of Katsoulis with the
deodorant composition of Sabatelli?
3 Sabatelli, A., US 4,822,602, issued Apr. 18, 1989.
4 Katsoulis et al., US 5,160,732, issued Nov. 3, 1992.
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Appeal2013-010596
Application 12/670,410
Findings of Fact
1. Sabatelli teaches "cosmetic stick compositions useful as
deodorants or antiperspirants, comprising: (a) from about 0.1 % to about
50% of at least one water-soluble active" (Sabatelli, col. 1, 11. 65----67).
2. Sabatelli teaches that "[a]ntiperspirant actives useful as water-
soluble actives in the present invention are well known in the art ...
Antiperspirant actives include, for example, aluminum chlorohydrates ...
and aluminum zirconium chlorohydrates" (Sabatelli, col. 3, 11. 3-13).
3. Sabatelli teaches that a "further essential component of the
present invention is water. Water is typically present at a level of from about
10% to about 50%, preferably from about 10% to about 40%, and most
preferably from about 15% to about 25%" (Sabatelli, col. 6, 11. 48-52).
4. Katsoulis teaches "encapsulated aluminum and aluminum-
zirconium salt compositions .... The aluminum and aluminum-zirconium
salts are released from the encapsulant in the presence of moisture and are
useful in deodorant and antiperspirant compositions" (Katsoulis, col. 1, 11. 8-
15).
5. Katsoulis teaches "aluminum-zirconium salts contained in a
shell comprised of a silicone carboxy acid or a silicone carboxy acid
derivative" (Katsoulis, col. 2, 11. 40-42).
6. The Examiner finds that Katsoulis teaches silicone shells for
encapsulation that satisfy the requirements of formula (1) and formula (3) of
the claims (see Ans. 5).
7. Katsoulis teaches that the "encapsulated salts of the instant
invention are useful in deodorant and antiperspirant compositions such as
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Application 12/670,410
aerosols, roll-ons, and sticks. It is preferable for the deodorant and
antiperspirant compositions to be anhydrous, however, it is not necessary"
(Katsoulis, col. 7, 11. 38--42; emphasis added).
8. Katsoulis teaches that the "roll-on compositions are typically
comprised of 1 to 25% by weight of the encapsulated aluminum salt or 1 to
20% by weight of the encapsulated aluminum-zirconium salt; 60 to 95% by
weight of a carrier liquid, such as water ... " (Katsoulis, col. 7, 11. 58-62).
9. Katsoulis teaches that encapsulated salts "are produced by
combining together, with agitation, an aqueous aluminum salt or an aqueous
aluminum-zirconium salt, anon-water miscible hydrophobic liquid ... and
a silicon carboxy acid ... and heating the mixture to a temperature sufficient
to remove substantially all of the free water" (Katsoulis, col. 2, 11. 48-56).
Principles of Law
"[R]ejections 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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Appellants contend that "the Examiner fails to provide any articulated
reasoning to add the encapsulated antiperspirant of Katsoulis to the
antiperspirant gel composition of Sabatelli to arrive at the claimed
invention" (Br. 16). Appellants contend that "[i]fthe encapsulated
antiperspirant salts are combined with moisture or the alleged aqueous
composition, the encapsulants open up releasing the aluminum salts and
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Application 12/670,410
there would be no encapsulated antiperspirant salts any more before using
the encapsulants" (Br. 17).
The Examiner responds that "Katsoulis "taught that it is preferable for
the deodorant and antiperspirant compositions to be anhydrous, but it is not
necessary ... and they taught water as a carrier component in roll-on
compositions" (Ans. 3). The Examiner finds that Katsoulis does "not
specify how much water is required to release the salts from the capsule,
thus Appellant's argument that encapsulants would be released if combined
with water to form a roll-on composition has not been found persuasive
because it has not been supported by evidence" (Id.).
However, we are not persuaded by Examiner's reliance on the
rationale that "selection of a known material for its intended purpose is
prima facie obvious." (Final Act. 6). We find that Appellants have the better
position because the intended purpose of the encapsulated material of
Katsoulis is to release the salts when contacted with sweat, not when
contacted with other components of the deodorant composition itself (FF 4).
Appellants' argument is not founded on whether, in some
circumstances, it might be possible to identify conditions where the
encapsulated salts of Katsoulis would not be released by the 10 to 50% water
essential to Sabatelli's deodorant compositions (FF 3, 5, 6). Rather,
Appellants' contention is that the ordinary artisan would not have had reason
to substitute a salt containing encapsulant that is released by moisture into a
deodorant composition where an "essential component ... is water" (FF 3).
We find this argument persuasive because the ordinary artisan
forming a stick deodorant as taught by Sabatelli would not have had any
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Application 12/670,410
reason to use the encapsulant of Katsoulis because the water required by
Sabatelli would have been expected to release Katsoulis encapsulated salts
(FF 4), rendering the encapsulation material superfluous.
We also agree with Appellants that Katsoulis teaches removal of free
water to form the encapsulated salts (FF 9; Br. 18), further evidencing that
the addition of water to the encapsulated salts would render the
encapsulation unnecessary, by releasing the salts from the encapsulating
material.
That Katsoulis mentions that it is not necessary for the compositions
to be anhydrous (FF 7) and that some roll-on compositions may comprise
water as a carrier liquid (FF 8), does not provide a reason to add salts that
"are released from the encapsulant in the presence of moisture" to Sabatelli' s
composition that requires 10 to 50% water (FF 3). At best, this teaches that
the combination may not be an immediate failure, but that does not provide
the necessary "articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR, 550 at 418.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that the ordinary artisan would have had reason to combine the encapsulated
gel compositions of Katsoulis with the deodorant composition of Sabatelli.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 4--7, 9-11, 13, 14,
and 16 under 35 U.S.C. § 103(a) as obvious over Sabatelli and Katsoulis.
REVERSED
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