Ex Parte Argembeaux et al

Patent Trial and Appeal BoardJun 18, 2018

14650709 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/650,709 06/09/2015 13897 7590 06/20/2018 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 FIRST NAMED INVENTOR Horst ARGEMBEAUX 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. 3321-P50226 5698 EXAMINER MRUK,BRIANP ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 06/20/2018 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, ANDREAS B. KUMMER, KATRIN COUNRADI, and THOMAS RASCHKE 1 Appeal2017-009218 Application 14/650,709 Technology Center 1700 Before BRADLEY R. GARRIS, A VEL YN M. ROSS, and LILAN REN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals from the Examiner's decision rejecting claims 45- 65. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. 1 Appellant is the applicant, Beiersdorf AG, which is identified as the real party in interest (App. Br. 3). Appeal2017-009218 Application 14/650,709 Appellant claims an aqueous cosmetic preparation comprising AMA- X polymers and having a pH value of 4 to :S 5.5 (independent claim 45) or having a polymer concentration from 0.1 % to 1.6% by weight (independent claim 55) or having a pH value of 4.0 to less than 6.4 and a polymer concentration from 0.1 % to 2% by weight (independent claim 61 ). The preparation may further comprises from 0.1 % to 3.0% by weight of one or more salts ( dependent claims 51, 58, and 63). A copy of representative claims 45, 51, 55, and 61, taken from the Claims Appendix of the Appeal Brief, appears below. 45. An aqueous cosmetic preparation, wherein the preparation comprises one or more surfactants and one or more AMA-X polymers and has a pH value offrom 4 to :S 5.5. 51. The preparation of claim 45, wherein the preparation further comprises from 0.1 % to 3.0 % by weight of one or more salts, based on a total weight of the preparation. 55. An aqueous cosmetic preparation, wherein the preparation is present as a shower gel and comprises one or more surfactants and from 0.1 % to 1.6 % by weight of one or more AMA-X polymers, based on an active content and a total weight of the preparation. 61. An aqueous cosmetic preparation, wherein the preparation is present as a shampoo, has a pH value of from 4.0 to < 6.4 and comprises from 1.0 to< 12 % by weight of one or more anionic surfactants and from 0.1 % to 2 % by weight of one or more AMA-X polymers, based on an active content and a total weight of the preparation. The Examiner provisionally rejects claims 45-65 on the ground of obviousness-type nonstatutory double patenting as unpatentable over claims 39-58 of copending Application No. 14/432, 813 (Final Action 8). 2 Appeal2017-009218 Application 14/650,709 We summarily sustain this provisional rejection because it has not been contested by Appellant in the record of this appeal (see, e.g., App. Br. 16). The Examiner also rejects claims 45---65 under 35 U.S.C. Â§ 103(a) as unpatentable over Aleksandrovic-Bondzic et al. (DE 10 2010 022 063 Al, published Dec. 1, 2011, with US 2013/0203866 Al, published Aug. 8, 2013, being cited as the English language equivalent) (Final Action 4--5). 2 The Examiner finds that Aleksandrovic-Bondzic discloses an aqueous cosmetic preparation, such as a shower gel, comprising AMA-X polymers and having a pH of below 6.5 with a polymer concentration from 2 to 3% by weight (id. at 4--5). The Examiner concludes that it would have been obvious to provide this cosmetic preparation with the formulations including the concentrations and pH values claimed by Appellant (id. at 5). Regarding independent claim 45, Appellant argues that "[o]ne of ordinary skill in the art will not consider ... it obvious to use a pH from 4 to :S 5.5 [as claimed] merely because the pH [of Aleksandrovic-Bondzic] is to be less than 6.5" (App. Br. 8). Appellant points out that the pH values of Aleksandrovic-Bondzic's shower gel preparations of Examples 1-52 range from 6.38 to 5.86 and argues that such a range would not have suggested the 5.5 pH encompassed by claim 45 (id. at 9). Appellant's argument lacks convincing merit. This is primarily because Appellant does not embellish the argument with any explanation why Aleksandrovic-Bondzic's broad teaching of pH values less than 6.5 would not have suggested a pH value within the claimed range such as a pH 2 The other prior art rejections in the Final Office Action (Final Action 4--6) have been withdrawn by the Examiner (Ans. 4). 3 Appeal2017-009218 Application 14/650,709 of 5.5. In this regard, we emphasize that Appellant similarly fails to explain why any of the various cosmetic preparations of Aleksandrovic-Bondzic would be limited to the 6.38 to 5.86 pH range of the specific shower gel preparations in Examples 1-52. With respect to independent claim 61, Appellant points out that this claim is directed to a shampoo and argues that "a shampoo clearly is not the same as (and is significantly different from) a shower gel [as disclosed by Aleksandrovic-Bondzic]" (App. Br. 11). In response, the Examiner determines that the claim term "shampoo" lacks patentable weight in terms of patentably distinguishing from the shower gel of Aleksandrovic-Bondzic (Ans. 6). Appellant replies by stating "[ s ]ince the Examiner's assertion is clearly incorrect Appellants refrain from commenting thereon" (Reply Br. 4). In the record before us, Appellant fails to show error in the Examiner's determination that Aleksandrovic-Bondzic's shower gel satisfies the "shampoo" recitation of claim 61. For example, Appellant does not present any evidence that the claimed shampoo is compositionally distinguishable from the prior art shower gel. Similarly, Appellant does not even allege, much less prove with evidence, that the shower gel is not capable of performing a shampooing function. Concerning claims 51 and 63 which depend from claims 45 and 61 respectively, Appellant argues that Aleksandrovic-Bondzic contains no teaching or suggestion of the claim requirement that the preparation further comprises from 0.1 % to 3% by weight of one or more salts (App. Br. 9, 12). 4 Appeal2017-009218 Application 14/650,709 The Examiner responds by explaining that the claim requirement is satisfied by Aleksandrovic-Bondzic' s disclosure of a preparation comprising 2-3% by weight of AMA-X polymer containing a salt (Ans. 5 (citing Aleksandrovic-Bondzic ,r 17 which discloses an AMA-X polymer obtained from an acidic vinyl monomer salt)). In the Reply Brief, Appellant argues "there is a difference between a salt and an AMA-X polymer that has been prepared from a monomer in salt form" and in support of this argument refers to the Specification disclosures of various inorganic salts (Reply Br. 3). However, dependent claims 51 and 63 are not limited to inorganic salts. Moreover, we observe that Appellant, like Aleksandrovic-Bondzic, discloses AMA-X polymers derived from acidic vinyl monomer salts (Spec. 2:6). These circumstances reflect that the dependent claims encompass salt in the form of an AMA-X polymer containing a salt as disclosed by Aleksandrovic-Bondzic. 3 Appellant does not present additional arguments specifically directed to the other claims depending from independent claims 45 and 61 (App. Br. 8-9 and 11-12). Under these circumstances, we sustain the Examiner's Â§ 103 rejection of claims 45-54 and 61---65 as being unpatentable over Aleksandrovic-Bondzic. 3 We also observe that the salt requirement of claims 51 and 63 appears to be satisfied by the 0.50% by weight of sodium cocoyl glutamate in Aleksandrovic-Bondzic's shower gel preparation (see Table 3 and compare Spec. 13: 10 ( disclosing sodium cocoyl glutamate as an anionic surfactant salt)). This issue should be explored in any further prosecution that may occur. 5 Appeal2017-009218 Application 14/650,709 However, we do not sustain the Examiner's correspondingÂ§ 103 rejection of claims 55---60. As correctly argued by Appellant, the Examiner's rejection does not explain why the polymer concentration of 0.1 % to 1.6% by weight required by independent claim 55 would have been obvious over the 2-3% by weight concentration disclosed by Aleksandrovic-Bondzic (App. Br. 10). In response, the Examiner states that Aleksandrovic-Bondzic's 2% by weight polymer would contain an inactive ingredient such as water and accordingly that "the active content of the polymer taught by Aleksandrovic- Bondzic et al would be substantially less than the 2% by weight of the polymer, and would meet [A]ppellant's limitation of0.1-1.6% by weight of an AMA-X polymer, based on an active content of the polymer, as required in instant claim 55" (Ans. 5---6). We agree completely with Appellant's argument that the Examiner's above statement is merely unsupported speculation (Reply Br. 3--4). For these reasons, the Examiner fails to establish a prima facie case of unpatentability in rejecting independent claim 55 and claims 56---60 which depend therefrom. In summary, we have sustained the provisional obviousness-type double patenting rejection of claims 45---65 and theÂ§ 103 rejection of claims 45-54 and 61---65, but we have not sustained theÂ§ 103 rejection of claims 55---60. The decision of the Examiner is affirmed. 6 Appeal2017-009218 Application 14/650,709 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7