Ex Parte Banowski et al

Patent Trial and Appeal Board

Oct 16, 2012

11960348 (P.T.A.B. Oct. 16, 2012)

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.
11/960,348 12/19/2007 Bernhard BANOWSKI H 06606 US 4326
79525 7590 10/16/2012
Henkel Corporation
Patent Department
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
KARPINSKI, LUKE E
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
10/16/2012 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
__________

Ex parte BERNHARD BANOWSKI, ARMIN WADLE,
and MARCUS CLAAS
__________

Appeal 2011-012754
Application 11/960,348
Technology Center 1600
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a deodorant or
antiperspirant stick composition. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“The invention relates to deodorant or antiperspirant sticks based on
an ethanol-containing oil-in-water dispersion/emulsion for the application of
active ingredients, in particular water-soluble active ingredients, to the skin”
(Spec. 1 ¶ 0002).
The Claims
Claims 1-10 and 12-27 are on appeal. Claim 1 is representative and
reads as follows:
1. A deodorant or antiperspirant stick composition comprising:
a) one or more lipid or wax components with a melting point
> 50°C, which is not to be apportioned to components b) or c);
b) one or more non-ionic oil-in-water emulsifiers, wherein the
average HLB value of the one or more non-ionic oil-in-water
emulsifiers is in the range of 10-19;
c) one or more non-ionic water-in-oil emulsifiers having an
HLB value from 1.0 to 7.0, which can form liquid crystalline
structures with water alone or with water in the presence of a
hydrophilic emulsifier, as consistency regulator and/or water binder;
d) 3% to 20% by weight, relative to total weight of the
composition, of one or more oils which is liquid at 20°C and is not a
fragrance component or essential oil, wherein the difference in
average solubility parameters of the one or more oils and the
one or more water-in-oil emulsifiers is from -0.7 (cal/cm3)0.5 to +0.7
(cal/cm3)0.5 in the presence of linear saturated fatty alcohols with a
chain length of at least 8 carbon atoms, and -0.4 (cal/cm3)0.5 to +0.7
(cal/cm3)0.5 in the presence of water-in-oil emulsifiers other than linear
saturated fatty alcohols with a chain length of at least 8 carbon atoms,
linear saturated fatty alcohols with a chain length of at least 8 carbon
atoms being absent, and wherein the share of silicon oils and/or
hydrocarbons is not more than 20% based on total weight of the one
or more oils which are liquid at 20°C;
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e) one or more water-soluble polyhydric C2-C9-alkanols having
2-6 hydroxyl groups and/or one or more water-soluble polyethylene
glycols having 3-20 ethylene oxide units;
f) 5% up to less than 50 % by weight of water, relative to the
total composition;
g) 1 % to 15% by weight of ethanol and/or isopropanol, relative
to the overall composition; and
h) at least one deodorant or antiperspirant active substance,
wherein the composition is in the form of an oil-in-water
dispersion/emulsion and a stick.

The Issues
A. The Examiner rejected claims 1-7, 9-15, and 18-27 under 35 U.S.C. §
103(a) as obvious over Schamper1 and Banowski2 (Ans. 4-9).
B. The Examiner rejected claim 8 under 35 U.S.C § 103(a) as obvious
over Schamper, Banowski, and Riedel3 (Ans. 9-11).
C. The Examiner rejected claims 16 and 17 under 35 U.S.C § 103(a) as
obvious over Schamper, Banowski, and Yu4 (Ans. 11-12).
D. The Examiner rejected claims 1-7, 9-15, and 18-27 under 35 U.S.C §
103(a) as obvious over Schamper, Banowski, and Brucks5 (Ans. 12-
17).
E. The Examiner rejected claim 8 under 35 U.S.C § 103(a) as obvious
over Schamper, Banowski, Brucks, and Riedel (Ans. 18-19).
F. The Examiner rejected claims 16 and 17 under 35 U.S.C § 103(a) as
obvious over Schamper, Banowski, Brucks, and Yu (Ans. 19-21).

1 Schamper et al., US 5,989,531, issued Nov. 23, 1999.
2 Banowski et al., US 6,849,251 B2, issued Feb. 1, 2005.
3 Riedel et al., US 2002/0182234 A1, published Dec. 5, 2002.
4 Yu et al., US 6,358,498 B1, issued Mar. 19, 2002.
5 Brucks et al., WO 02/083091 A1, published Oct. 24, 2002. 
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A. and D. 35 U.S.C. § 103(a) over Schamper, Banowski and/or Brucks
The Examiner finds Schamper teaches
antiperspirant formulations comprising and emulsion (entire
disclosure especially col. 9, lines 5-10), a non-ionic O/W
emulsifier with an HLB of more than 7 (col. 3, steareth 20),
a non-ionic W/O emulsifier with an HLB from 1-7 (col. 6,
lines 51-58, glyceryl stearate), a liquid oil at 20 degrees (col.
7, lines 14-63, diisopropyl adipate), a polyhydric alkanol or
PEG (col. 3, lines 5-9 propylene glycol), 10% water (col. 5,
lines 46), 0-20% ethanol or isopropanol (col. 15, example
11), and an antiperspirant active (col. 4, lines 15-67)

(Ans. 5). The Examiner finds that Brucks also teaches antiperspirant
formulations with these components (Ans. 13). The Examiner finds that
Banowski teaches “antiperspirant compositions comprising a lipid or wax
component with a melting point of 30-150 degrees present at 1-20% . . . and
that said components have structuring properties and provide said
compositions with required consistencies and a pleasant skin feel” (Ans. 6).

The Examiner finds it would have been obvious “to utilize the waxes
of Banowski et al, in the formulations of Schamper et al. in order to provide
said compositions with structure as desired and a pleasant skin feel” (Ans.
7).
Appellants contend that “Banowski, like Schamper, fails to teach or
suggest limiting the difference in average solubility parameters of the one or
more oils and the one or more water-in-oil emulsifiers in order to form stick
compositions with satisfactory performance-related hardness” (App. Br. 6).
Appellants contend that “the present invention has discovered that the ‘oil
components and the water-in-oil emulsifier mixture have to be matched to
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one another with regard to their solubility parameters in order to form stick
compositions with satisfactory performance-related hardness’” (App. Br. 5).
Appellants contend that “even combining Schamper with Banowski, one
skilled in the art is still left without a teaching for achieving solid O/W
emulsion stick deodorant compositions according to the present invention”
(App. Br. 6). Appellants contend that “Brucks, like Banowski, does not
teach or suggest matching the oil and water-in-oil emulsifier components to
each other according to solubility parameters” (App. Br. 9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Schamper and Banowski render
Claim 1 obvious?
Findings of Fact
1. Schamper teaches that a “large variety of antiperspirant and/or
deodorant formulations have been described in the patent literature and/or
have been made commercially available. These products have included
solids (for example, wax and gel sticks)” (Schamper, col. 1, ll. 23-26).
2. The Specification teaches that “[p]referred deodorant or
antiperspirant sticks according to the invention are characterized in that the
nonionic oil-in-water emulsifiers b) are chosen from among ethoxylated C8-
C24-alkanols . . . Particular preference is given to … Steareth-20” (Spec. 24
¶ 0049 to 25 ¶ 0052).
3. Schamper teaches that for “the active phase the high HLB
(greater than 8, particularly in the range of 8-12) nonionic emulsifier (or
mixtures thereof) used in this invention . . . include . . . Steareth-20”
(Schamper, col. 3, ll. 44-57).
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4. The Specification teaches that “[w]ater-in-oil emulsifiers which
can be used particularly advantageously are . . . glyceryl monostearate, in
particular, in the form of the commercial products . . . glyceryl distearate”
(Spec. 29 ¶ 0061).
5. Schamper teaches that for “the silicone phase examples of the
non-ionic emulsifier having an HLB value less than 7 include . . . glyceryl
esters such as . . . glyceryl stearate” (Schamper, col. 6, ll. 51-58).
6. The Specification teaches that “particularly preferred oils
according to the invention are chosen from the dicarboxylic acid esters of
linear or branched C2-C10-alkanols, in particular, di-isopropyladipate” (Spec.
39 ¶ 0072).
7. Schamper teaches that examples “of chemical classes from
which suitable emollients can be found include . . . esters which chemically,
are the covalent compounds formed between acids and alcohols. . . . Specific
examples include . . . diisopropyl adipate” (Schamper, col. 7, ll. 18-62).
8. The Specification teaches that the “stick compounds according
to the invention further contain at least one water soluble polyhydric C2-C9-
alkanol with 2-6 hydroxyl groups and/or at least one water soluble
polyethylene glycol with 3-20 ethylene oxide units” (Spec. 42 ¶ 0088).
9. Schamper teaches combining “10-70% of a glycol selected
from the group consisting of . . . low molecular weight polyethylene glycol”
(Schamper, col. 3, ll. 5-8).
10. The Specification teaches that the “total content of water in the
composition according to the invention is 5% to less than 50% by weight”
(Spec. 44 ¶ 0092).
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11. Schamper teaches that “up to 10% added water (for example,
5-10%) can be included” (Schamper, col. 5, ll. 46-47).
12. The Specification teaches that the “total content of ethanol
and/or isopropanol in the compositions according to the invention is 1% to
15% by weight” (Spec. 44 ¶ 0094).
13. Schamper teaches that the active phase may include “0-20%
(for example, 5-20%) of an alcohol selected from the group consisting of
ethanol and isopropanol” (Schamper. 3, ll. 17-18).
14. The Specification teaches that “[d]eodorant actives preferred
according to the invention are odor absorbers, de-odorizing ionic
exchangers, germ inhibiting agents, prebiotic components as well as enzyme
inhibitors or, particularly preferred, combinations of the named substances”
(Spec. 44 ¶ 0097).
15. Schamper teaches that the “antiperspirant active materials
disclosed therein, including the acidic antiperspirant materials, can be
incorporated in the compositions of the present invention if they are soluble
in the active phase” (Schamper, col. 4, ll. 25-29).
16. The Specification teaches that a “particularly preferred
embodiment of the invention comprises a C20-C40-alkyl stearate as wax
component. This ester is known under the name Kesterwachs® K82H . . . It
is the synthetic imitation of the monoester fraction of beeswax and is
characterized by its hardness, its oil gelability and its broad compatibility
with lipid components” (Spec. 22 ¶ 0040).
17. Banowski teaches “antiperspirant compositions for applying
antiperspirant agents to the skin” (Banowski, col. 1, ll. 14-15).
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18. Banowski teaches that “any fats and fat-like substances which
melt at 30 to 150° C. may be used as lipid components . . . These lipid
components have structuring properties and provide the composition with
the required consistency and with a particularly pleasant skin feel”
(Banowski, col. 4, ll. 4-15).
19. Banowski teaches that the “wax component may also be
selected . . . Wax components such as these include, for example, C16-40 alkyl
stearates, C20-40 alkyl stearates (for example Kesterwachs® K82H)”
(Banowski, col. 5, ll. 54-66).
20. Banowski teaches that “[a]ntiperspirant compositions are
known to experts in many forms. . . . The compositions are marketed as
sprays, roll-on preparations, sticks or creams” (Banowski, col. 1, ll. 18-22).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Moreover, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person
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of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.

Analysis
Schamper teaches a deodorant and antiperspirant composition (FF 1)
which comprises non-ionic oil-in-water emulsifiers and non-ionic water-in-
oil emulsifiers with HLB values overlapping the claimed ranges (FF 2-5),
oils liquid at 20°C (FF 6-7), polyhydric alkanols and polyethylene glycols
(FF 8-9), water (FF 10-11), ethanol and/or isopropanol (FF 12-13) and
antiperspirant active substances (FF 14-15). Schamper teaches that
deodorant and antiperspirant in stick forms are known (FF 1).
Banowski teaches stick antiperspirant and deodorant compositions
(FF 17, 20) with the incorporation of wax components (FF 19) where
Banowski teaches that “[t]hese lipid components have structuring properties
and provide the composition with the required consistency and with a
particularly pleasant skin feel” (Banowski, col. 4, ll. 4-15; FF 18).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the person of ordinary creativity would have predictably
incorporated the wax components of Banowski into the deodorant
composition of Schamper in order to improve consistency and skin feel (FF
18). We also find that formulation in stick form would have been obvious
since the prior art teaches the routine use of a stick as one of several
alternative desired forms for deodorants and antiperspirants (FF 1, 20). Such
a combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
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Appellants contend that “Banowski, like Schamper, fails to teach or
suggest limiting the difference in average solubility parameters of the one or
more oils and the one or more water-in-oil emulsifiers in order to form stick
compositions with satisfactory performance-related hardness” (App. Br. 6).
We are not persuaded. Both Schamper and Banowski teach that stick
forms of deodorant and antiperspirant are well known in the art (FF 1, 20).
Appellants have provided no evidence of any difficulty in formulation of a
stick form of deodorant or antiperspirant. If Appellants are suggesting that
there is an unexpected result, Appellants have provided no evidence that the
results are unexpected relative to the closest prior art of Banowski and
Schamper. No comparison with the prior art is presented. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.”).
Appellants contend that “the present invention has discovered that the
‘oil components and the water-in-oil emulsifier mixture have to be matched
to one another with regard to their solubility parameters in order to form
stick compositions with satisfactory performance-related hardness’” (App.
Br. 5). Appellants contend that “even combining Schamper with Banowski,
one skilled in the art is still left without a teaching for achieving solid O/W
emulsion stick deodorant compositions according to the present invention”
(App. Br. 6).
We are not persuaded. Both Schamper and Banowski teach that solid
stick formulations are known (FF 1, 20). Appellants have not demonstrated
that the matching of components is anything other than routine optimization.
The extensive list of alternative reagents for each component disclosed in the
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Specification, in Schamper, and in Banowski (FF 2-19) demonstrate that
selection of components for deodorants and antiperspirants is a results
effective variable. “[W]here the general conditions of a claims are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA
1955) (citing In re Dreyfus, 73 F.2d 931 (CCPA 1934); In re Waite, 168
F.2d 104 (CCPA 1948)). Appellants have also provided no evidence that the
matching yields any unexpected results in the antiperspirant or deodorant
products.
The Examiner’s further rejection with Brucks, rejecting the same
claims, yields the same result since Brucks is cumulative to Schamper.
Conclusion of Law
The evidence of record support the Examiner’s conclusion that
Schamper and Banowski render Claim 1 obvious.
B. and E. 35 U.S.C § 103(a) over Schamper, Banowski, and Riedel
The Examiner relies upon Schamper and Banowski as discussed
above, and finds that “Riedel et al. teach cosmetic compositions comprising
either pentaerythrityl monostearate or glyceryl stearate as suitable
emulsifiers” (Ans. 10). The Examiner finds it obvious “to utilize the
pentaerythrityl monostearate of Riedel et al., in the combined formulations
of Schamper et al. and Banowski et al. in order to use known emulsifiers”
(Ans. 10).
The Examiner provides sound fact-based reasoning for combining
Riedel with Schamper and Banowski. We adopt the fact finding and analysis
of the Examiner as our own. Appellants argue the underlying obviousness
rejection over Schamper and Banowski, but Appellants do not identify any
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material defect in the Examiner's reasoning for combining Riedel with
Schamper and Banowski. Since Appellants only argue the underlying
rejection of Schamper and Banowski, which we affirmed above, we affirm
this rejection for the reasons stated by the Examiner.
C. and F. 35 U.S.C § 103(a) over Schamper, Banowski, and Yu
The Examiner relies upon Schamper and Banowski as discussed
above, and finds that “Yu et al. teach stick compositions which may
comprise emollients, such as shea butter and lanolin” (Ans. 11). The
Examiner finds it obvious “to utilize the shea butter of Yu et al., in the
combined antiperspirant compositions of Schamper et al. and Banowski et
al. in order to produce an antiperspirant composition with known emollient
components” (Ans. 12).
The Examiner provides sound fact-based reasoning for combining Yu
with Schamper and Banowski. We adopt the fact finding and analysis of the
Examiner as our own. Appellants argue the underlying obviousness rejection
over Schamper and Banowski, but Appellants do not identify any material
defect in the Examiner's reasoning for combining Yu with Schamper and
Banowski. Since Appellants only argue the underlying rejection of
Schamper and Banowski, which we affirmed above, we affirm this rejection
for the reasons stated by the Examiner.

SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Schamper and Banowski. Pursuant to 37 C.F.R.
§ 41.37(c)(1), we also affirm the rejection of claims 2-7, 9-15, and 18-27 as
these claims were not argued separately.
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We affirm the rejection of claim 8 under 35 U.S.C § 103(a) as obvious
over Schamper, Banowski, and Riedel.
We affirm the rejection of claims 16 and 17 under 35 U.S.C § 103(a)
as obvious over Schamper, Banowski, and Yu.
We affirm the rejection of claims 1-7, 9-15, and 18-27 under 35 U.S.C
§ 103(a) as obvious over Schamper, Banowski, and Brucks.
We affirm the rejection of claim 8 under 35 U.S.C § 103(a) as obvious
over Schamper, Banowski, Brucks, and Riedel.
We affirm the rejection of claims 16 and 17 under 35 U.S.C § 103(a)
as obvious over Schamper, Banowski, Brucks, and Yu.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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