Ex Parte Bradford et al

Patent Trial and Appeal BoardFeb 15, 2019

13586427 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/586,427 08/15/2012 27752 7590 02/20/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Valerie Jean Bradford 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. Z-8609 2699 EXAMINER BABSON, NICOLE PLOURDE ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 02/20/2019 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VALERIE JEAN BRADFORD, MICHAEL JOSEPH KWIECIEN, TIMOTHY WOODROW COFFINDAFFER, KAREN MARIE LAMMERS, EDWARD DEWEY SMITH III, JASON EDWARD COOK, and BRIAN JOSEPH LIMBERG Appeal2017-004470 Application 13/586,427 Technology Center 1600 Before JEFFREY N. FREDMAN, ROBERT A. POLLOCK, and RYAN H. FLAX, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2 under 35 U.S.C. Â§ 134 involving claims to a skin engaging member for use on a hair removal device. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as The Gillette Company (App. Br. 1 ). 2 We have considered and refer to the Specification of Aug. 15, 2012 ("Spec."); Final Office Action of Apr. 23, 2015 ("Final Act."); Appeal Brief of July 22, 2016 ("App. Br."); and Examiner's Answer of Oct. 31, 2016 ("Ans."). Appeal2017-004470 Application 13/586,427 Statement of the Case Background "The use of shaving aids on razor blades to provide lubrication benefits during the shave is known. . . . These shaving aids are also commonly referred to as lubrication strips" (Spec. 1: 10-13). "The delivery of additional benefits has also been attempted. For example, it has been described that cooling agents and/or essential oils can be included in the shaving aid to deliver a fresh and cool feel after contact" (Spec. 1:12-16). The Claims Claims 1, 2, 5-9, 11, 12, and 18-20 are on appeal. 3 Claim 1 is representative and reads as follows: 1. A skin engaging member for use on a hair removal device, said skin engaging member comprising: a. a solid polymeric matrix comprising a water-soluble polymer material comprising polyethylene oxide, and a water-insoluble polymer material comprising polyethylene, polypropylene, polystyrene, butadienestyrene copolymer, polyacetal, acrylonitrile- butadienestyrene copolymer, ethylene vinyl acetate copolymer, polyurethane, and blends thereof, said solid polymeric matrix having a melting point of from about 120 Â°C to about 200 Â°C; and b. from about 0.01 % to 5% of an anti-irritation agent comprising zinc pyrithione. 3 We note that the Examiner objected to claim 1 (see Final Act. 3) and that Appellants are not appealing this objection (see App. Br. 2). We therefore do not address this issue. 2 Appeal2017-004470 Application 13/586,427 The Rejection The Examiner rejected claims 1, 2, 5-9, 11, 12, and 18-20 under 35 U.S.C. Â§ I03(a) as being obvious over Coope-Epstein4 and Bailey5 (Final Act. 4---6). The Examiner finds Coope-Epstein teaches "a shaving aid material that includes a water-soluble lubricious shaving aid in combination with a water-insoluble erodable medium" where the "water-soluble polymers include polyethylene oxide" (Final Act. 4). The Examiner finds that Coope- Epstein teaches "the melting temperature of the erodable medium is above 45 Â°C ... and that temperatures below 200 Â°C are desirable" (id.). The Examiner finds Coope-Epstein teaches "the composition may include skin conditioners or medicinal agents for killing bacteria or repairing skin damage and abrasions" but acknowledges that Coope-Epstein does not teach "an anti-irritation agent comprising a polyvalent metal salt of pyrithione" (Final Act. 4--5). The Examiner finds Bailey teaches "metal pyrithiones, including zinc pyrithione, can be used for increasing the level of lipids in the skin ... This in tum strengthens the skin and increases the ability of the surface of the skin to act as a barrier in repelling irritants" (Final Act. 5). The Examiner also finds that "[ z ]inc pyrithione is also known to be an antimicrobial agent" and "is present at 0.001-5%" (id.). The Examiner finds it obvious to include Bailey's zinc pyrithione into Coope-Epstein's shaving aid in order "to obtain the skin conditioning and antimicrobial properties" (Final Act. 6). The issue with respect to this rejection is: Does a preponderance of 4 Coope-Epstein et al., US 2009/0223057 Al, published Sept. 10, 2009. 5 Bailey et al., US 2003/0068289 Al, published Apr. 10, 2003. 3 Appeal2017-004470 Application 13/586,427 the evidence of record support the Examiner's conclusion that Coope- Epstein and Bailey render the claims obvious? Findings of Fact 1. Coope-Epstein teaches "a shaving aid material is provided that includes a water-soluble lubricious shaving aid in combination with a water- insoluble erodible medium" (Coope-Epstein ,r 11 ). 2. Coope-Epstein teaches "[a]n acceptable water-soluble shaving aid is polyethylene oxide" (Coope-Epstein ,r 20). 3. Coope-Epstein teaches "[ e ]xamples of acceptable water- insoluble erodable mediums include ... and polyethyle[ne] waxes" (Coope- Epstein ,r 25). 4. Coope-Epstein teaches "[a]n acceptable erodable medium ... has a melting point above approximately 45Â° C" and "[ c ]ommon processing temperatures for the extrusion of prior art shaving strips are often approximately 200Â° C" (Coope-Epstein ,r,r 8, 21 ). 5. Coope-Epstein teaches "the water-soluble shaving aid may include ... a medicinal agent for killing bacteria, or repairing skin damage and abrasions" (Coope-Epstein ,r 20). 6. Bailey teaches "zinc pyrithione (ZnPTO) ... acts as an antimicrobial agent" (Bailey ,r 2). 7. Bailey teaches "a method of increasing the level of lipids in skin which comprises applying a metal pyrithione to the skin" (Bailey ,r 5). Bailey teaches "[b ]y increasing the level of lipids in the stratum comeum of the skin, the present invention has the effect of strengthening the skin" (Bailey ,r 11 ). 8. Bailey teaches "hair treatment compositions including 4 Appeal2017-004470 Application 13/586,427 shampoos and conditioners" and teaches a "preferred amount of pyrithione is from about 0.001 % to about 5% by weight of the total composition, more preferably from about 0.05% to about 3% by weight, most preferably between 0.1 % and 1 % by weight" (Bailey ,r,r 26-27). Principles of Law "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'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Final Act. 4---6; FF 1-8) and agree that the claims are rendered obvious by Coope-Epstein and Bailey. We address Appellants' arguments below. Appellants contend: that the combination of Coope-Epstein with Bailey, though seemingly a simple combination for one of skill in the art according to the Office Action, is actually quite a complicated an unlikely combination. At best Coope-Epstein discusses skin related benefits. Coope-Epstein does not suggest the presence of pyrithiones or even zinc pyrithiones, much less those recited in platelet form as articulated in the present claim set. To arrive at the addition of Bailey, one of ordinary skill would have to scour through tens of thousands, perhaps even hundreds of thousands of different personal care related disclosures .... To somehow magically arrive at one reference that focuses on metal pyrithiones for use in shampoos and conditioners. (App. Br. 5). We are not persuaded. First, Coope-Epstein expressly teaches a desire to include anti-microbial and skin repair agents in the shaving aid material (FF 5). This teaching directs the ordinary artisan to identify prior art 5 Appeal2017-004470 Application 13/586,427 compositions that will satisfy those requirements. Bailey teaches zinc pyrithione is both an antimicrobial agent (FF 6) and improves lipids in skin (FF 7), satisfying both of the requirements of Coope-Epstein. Thus, the ordinary artisan would have had good reason to select the zinc-pyrithione of Bailey in the shaving aid of Coope-Epstein in order to function as Coope- Epstein' s desired anti-bacterial and skin damage repair agents. Second, simply because there may be "a multitude of effective combinations does not render any particular formulation less obvious." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). For example, in Corkill, an obviousness rejection was affirmed in light of prior art teaching that "hydrated zeolites will work" in detergent formulations, even though "the inventors selected the zeolites of the claims from among 'thousands' of compounds." In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985). Here, the zinc pyrithione compound of Bailey specifically addresses a goal recited for the shaving aid material of Coope-Epstein (FF 1-8). Appellants contend the "reconstruction of the claims would not be possible but for hindsight reconstruction; hindsight reconstruction is not permissible" (App. Br. 6). While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 ( 1966), we are also mindful that the Supreme Court has clearly stated that the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. Here, the Examiner has provided a reason to modify the shaving aid of Coope-Epstein with the zinc pyrithione of Bailey, specifically finding that the ordinary artisan "would have been motivated to include the 6 Appeal2017-004470 Application 13/586,427 zinc pyrithione [into the shaving aid of Coope-Epstein] to obtain the skin conditioning and antimicrobial properties provided therein" (Ans. 4). Coope-Epstein explicitly expresses a desire to include bacteria-killing or skin-damage-repairing components with its shaving aid, but is not specific about what materials to use; Bailey provides a teaching for such materials. Appellants "disagree with the conclusion that one of ordinary skill would have looked to combine these references and come away with a feeling of predicted success" (App. Br. 6). Appellants contend that: Coope-Epstein relates specifically to shaving aid materials for use on hair removal razors. Bailey relates specifically to hair treatment compositions (shampoos) that can provide added skin benefits. Appellants are surprised that it is now obvious for those of ordinary skill in the art to be able to selectively combine a razor related teaching with a shampoo technology in such a manner while circumventing all the other thousands of potential combinations of references in these fields. (App. Br. 6-7). We find these arguments unpersuasive because there would have been a reasonable expectation of success in selecting a known antimicrobial and skin benefit agent, zinc pyrithione (FF 6-7) as the antimicrobial agent and the skin damage repair agent desired by Coope-Epstein for use in the shaving aid (FF 5). "Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009). Here, there is a reasonable expectation of success in incorporating a known antimicrobial and benefit agent into a prior art shaving aid in order for the antimicrobial and benefit agent to operate on skin as expected by Bailey (FF 6-7). 7 Appeal2017-004470 Application 13/586,427 As to the combination of shampoo technology and razors, we agree with the Examiner that both references are not limited to particular skin locations (see Ans. 6) (moreover, both razors and shampoos are commonly used on the scalp). If Appellants intend to suggest that these are not analogous arts, we are not persuaded because both Coope-Epstein and Bailey are both in the field of endeavor of treating skin, Coope-Epstein with the shaving aid material and Bailey with the skin benefit agents in, among other things, a shampoo (FF 1, 8). Even ifwe treated these as being from different fields of endeavor, Bailey's antimicrobial and skin benefit agent is clearly pertinent to Coope-Epstein's shaving aid because Coope-Epstein expressly teaches the need for antimicrobial and skin benefit agents (FF 5). "Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve." Circuit Check Inc. v. QXQ!nc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Conclusion of Law A preponderance of the evidence of record supports the Examiner's conclusion that Coope-Epstein and Bailey render the claims obvious. SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as being obvious over Coope-Epstein and Bailey. Claims 2, 5-9, 11, 12, and 18-20 fall with claim 1. 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 8