Ex Parte Argembeaux et al

Patent Trial and Appeal Board

Dec 18, 2017

14355618 (P.T.A.B. Dec. 18, 2017)

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.
14/355,618 05/01/2014 Horst Argembeaux 3321-P50128 3773
13897 7590 ]
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
CABRAL, ROBERT S
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST ARGEMBEAUX, STEFAN BIEL,
KATRIN COUNRADI, KATJA MAETZOLD, HEIKE MIERTSCH,
SVENJA LENA MOELLGAARD, and INA SCHORNSTEIN1
Appeal 2017-004295
Application 14/355,618
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LaVIER,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
cosmetic compositions, which have been rejected as anticipated and as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Beiersdorf AG. Appeal Br.
3.
Appeal 2017-004295
Application 14/355,618
STATEMENT OF THE CASE
To be effective, cosmetic active ingredients must be homogenously
distributed in a cosmetic formulation. Spec. 1. This is most often
accomplished by using emulsifiers. Id. Emulsifiers, however, increase the
cost of the cosmetic formulation and present a high irritation potential and
can change the sensory properties of the product. Id. The Specification
describes a cosmetic composition containing powdery materials comprising
hydrophilic materials. Spec. 4.
Claims 24-43 are on appeal. Claim 24 is illustrative and reads as
follows:
24. A cosmetic or dermatological preparation, wherein
the preparation is anhydrous and comprises an organic medium
which has incorporated therein one or more powdery materials
comprising or consisting of
(i) one or more hydrophilic substances or substance
mixtures which are liquid or pasty at room temperature and/or
meltable up to a temperature of 150°C and on their own are
insoluble or sparingly soluble in a remainder of the preparation,
bound by at least one of adhesion, impregnation, agglomeration
to
(ii) one or more particulate carriers having an average
particle size in a range of from 5 nm to 2 mm and a tamped
density of from 50 kg/m3 to 1400 kg/m3, and being of a
spherical, fibrous, flocculated and/or sponge-like form.
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Application 14/355,618
The claims stand rejected as follows:
Claims 24, 25, 31, 33, 34, 37, and 43 have been rejected under
35 U.S.C. § 102(e) as anticipated by Aubran.2
Claims 24—29, 31—38, and 40-43 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kolly-Hemandez3 in view of Aubrun.
Claim 30 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Kolly-Hemandez in view of Aubmn in further view of Rauckhorst.4
Claim 39 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Kolly-Hemandez in view of Aubmn in further view of Maloney.5
ANTICIPATION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 24, 25, 31, 33,
34, 37, and 43 are anticipated by Aubmn.
The Examiner finds that
Aubmn discloses a scented anhydrous deodorant stick in
Example 3. Absent evidence to the contrary, the composition is
presumed to comprise the claimed powdery materials and
organic medium as recited in claims 24, 25, 31, 33, 34, 37 and
43.
Final Act. 2.
2 Aubmn et al., US 8,636,990 B2, issued Jan. 28, 2014 (“Aubmn”).
3 Kolly-Hemandez et al., US 2008/0089856 Al, published Apr. 17, 2008
(“Kolly-Hemandez”).
4 Rauckhorst et al., US 2012/0258150 Al, published Oct. 11, 2012
(“Rauckhorst”).
5 Maloney et al., US 2010/0183528 Al, published July 22, 2010
(“Maloney”).
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Application 14/355,618
Appellants contend that the Examiner has not set forth a prima facie
case of anticipation. Appeal Br. 7. Specifically, Appellants argue that the
Examiner has not identified which elements in Example 3 of Aubrun
correspond to the organic medium or the hydrophilic substances. Appeal Br.
8. Appellants argue that the Examiner has not shown that the particles in
Example 3 of Aubrun would have the density and particle size required by
the instant claims. Appeal Br. 7—8. Appellants contend that the Examiner
has not shown where in Aubrun it teaches that the hydrophilic substances are
bound to the pearlite particles. Id. Appellants argue that the Examiner has
not shown that the composition in Aubrun would inherently meet the instant
claim limitations. Appeal Br. 9.
Principles of Law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[UJnless a [prior art] reference discloses within the four comers of
the document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Net Money IN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
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Application 14/355,618
Analysis
Appellants have the better position. The Examiner has not established
that the product described in Aubrun meets all of the limitations recited in
the instant claims. The Examiner has not identified which of the ingredients
used to make the deodorant stick in Example 3 of Aubrun correspond to the
hydrophilic substances recited in the instant claims. The Examiner has also
not shown that the hydrophilic substances, if present, are bound to the
particle carriers.
The Examiner contends that one skilled in the art would know which
of the ingredients in Example 3 of Aubrun correspond to the different
elements of Aubrun. Ans. 2—3. We are not persuaded. It is up to the
Examiner to show that Aubrun recites all of the elements of the claims
arranged in the same manner as recited in the claims. Only then does the
burden shift to Appellants. The Examiner has not made the required
showing.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that the claims are anticipated by Aubrun.
OBVIOUSNESS
Kolly-Hernandez Combined with Aubrun
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 24—29, 31—38,
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Application 14/355,618
and 40-43 would have been obvious over Kolly-Hemandez combined with
Aubrun.
The Examiner finds that Kolly-Hemandez is related to hair
conditioning products containing a fluid hair conditioning product absorbed
onto a solid carrier. Final Act. 3. The Examiner finds that the solid carrier
can comprise such materials as microcrystalline cellulose and starch which
have a powder density of 0.26-0.3 g/cm3. Id. The Examiner finds that
Aubmn teaches a scenting composition comprising a cosmetically
acceptable medium and particles of expanded amorphous mineral material.
Final Act. 4. The Examiner finds that Aubmn teaches the use of certain
hydrophilic materials and a material which can be used as an organic
medium. Id. The Examiner concludes that
It would have been prima facie obvious to one of
ordinary skill in the art at the time of the invention to combine
the teachings of Kolly-Hemandez et al. and Aubmn et al. and
arrive at the instant invention. “The strongest rationale for
combining references is a recognition, expressly or impliedly in
the prior art or drawn from a convincing line of reasoning based
on established scientific principles or legal precedent, that some
advantage or expected beneficial result would have been
produced by their combination.” In re Sernaker, 702 F.2d 989,
994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). In particular, where
one reference teaches the use expanded amorphous mineral
particles for increasing the tenacity of a fragrance in cosmetic
scenting compositions that include anhydrous cosmetic medium
and the other reference is directed to cosmetic hair care
compositions comprising similar, if not the same, type of
particles, i.e., concentrated powder forms, an advantage or
expected beneficial result from the combination of references
would have been the preparation of a cosmetic hair care
composition having improved fragrance tenacity. Furthermore,
it would have been prima facie obvious to one of ordinary skill
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Application 14/355,618
in the art to combine the teachings cited references because they
both teach incorporation of saturated particles to incorporate
active substances in cosmetic compositions. In re Kerkhoven,
626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (“It is
prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose, in order to form a third composition to be used for the
very same purpose.... [T]he idea of combining them flows
logically from their having been individually taught in the prior
art.
“)
Final Act. 4—5.
Appellants contend that the references do not teach or suggest the use
of an organic medium as required by the claims. Appeal Br. 12. Appellants
also argue that Kolly-Hemandez does not teach or suggest the inclusion of
hydrophilic materials such as those specified in the claims. Id. at. 13.
Appellants contend that the Kolly-Hemandez and Aubmn references are
directed to different products and that there would be no reason to use the
particles or Aubmn in the conditioner of Kolly-Hemandez. Id. at. 14—15.
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
A proper § 103 analysis requires “a searching comparison of the
claimed invention—including all its limitations—with the teachings of the
prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
Analysis
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We find that the Examiner has not established a prima facie case of
obviousness, as the Examiner has not shown that all elements of the claims
are taught or suggested in the prior art. Specifically, the Examiner has not
cited to any teaching or suggestion in either reference to show that the
hydrophilic substances are bound to the particulate carrier by adhesion,
agglomeration or impregnation.
The Examiner argues that the references teach the incorporation of
saturated particles containing active substances. Final Act. 4. While this
may be so, the Examiner has not shown that the active substances
incorporated into the carrier are hydrophilic substances meeting the physical
characteristics of the claims. For example, Kolly-Hemandez teaches a hair
conditioning composition is absorbed onto the solid carrier. Kolly-
Hemandez 14. The Examiner has not pointed outwhich of the hair
conditioning compositions of Kolly-Hemandez are hydrophilic. Similarly,
Aubmn teaches combining a scenting substance with a mineral material.
Aubmn Abstract. Again, the Examiner has not shown which of the scenting
materials recited in Aubmn are hydrophilic.
Conclusion of Law
We conclude that a preponderance of the evidence does not support
the Examiner’s conclusion that claims 24—29, 31—38, and 40-43 would have
been obvious over Kolly-Hemandez combined with Aubmn.
Kolly-Hernandez Combined with Aubrun and Rauckhorst or Maloney
The remaining rejections are based on the combination of Kolly-
Hemandez and Aubmn discussed above. We concluded that the
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combination of Kolly-Hemandez and Aubrundo not teach or suggest all the
limitations of the claims. We find nothing in the additional references,
Rauckhorst or Maloney, which remedy the deficiencies of the primary
references. We therefore reverse the rejections of claims 30 and 39.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
REVERSED
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