Ex Parte BREYFOGLE

Patent Trial and Appeal Board

Sep 13, 2018

13744708 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/744,708 01/18/2013
27752 7590 09/17/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Laurie Ellen BREYFOGLE
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.
12335M 7409
EXAMINER
YOUNG, MICAH PAUL
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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):
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 LAURIE ELLEN BREYFOGEL 1
Appeal2017-008648
Application 13/744,708
Technology Center 1600
Before TONI R. SCHEINER, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to skin
smoothing compositions, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the Proctor and Gamble Company as the real party in
interest. Br. 1.
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Application 13/744,708
STATEMENT OF THE CASE
"Visible wrinkles, particularly those on the face and around the eyes,
are one of the most prevalent and undesirable signs of aging. Many
consumer products and procedures are devoted to hiding or reducing
wrinkles." Spec. 1. Products sold to reduce wrinkles have many drawbacks
including limited effect, and length of time before an effect is noticed. Id.
"Plastic surgery and injections of chemicals have a more pronounced,
immediate and dramatic effect on the look of a consumer's skin, but these
procedures can be very expensive and come with many risks. Plastic surgery
has the same risk of failure as any other surgical procedure, including
disfigurement." Id. The Specification describes a skin smoothing
composition which reduces "the appearance of wrinkles on skin, while
balancing the correct amount of skin contraction, film flexibility, lack of
film whiteness, contraction resiliency, compatibility with other cosmetic
products, and lack of skin irritation." Id. at 2.
Claims 34, 36-48, and 63-71 are on appeal. Claim 34 and 66 are
illustrative and read as follows:
34. A skin smoothing composition comprising:
a) From about 0.5 to about 4% sodium silicate as
measured by silica content (Si02);
b) from about 0.1 % to about 4.0% of a polyvalent
silicate;
c) from about 10 to 98% water; and
wherein the ratio of the weight of the sodium silicate to
the polyvalent silicate is equal to or greater than 0. 7 and the
composition is in the form of an aqueous solution, an organic
solvent solution, an oil based solution, an emulsion, a
suspension, an aqueous gel, or an oil-in-water emulsion.
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Application 13/744,708
66. A skin smoothing composition comprising from
about 0.5 to about 4% sodium silicate as measured by silica
content (Si02) and one or more polymers or copolymers of
acryloyldimethyltaurate and the composition is in the form of
an aqueous solution, an organic solvent solution, an oil based
solution, an emulsion, a suspension, an aqueous gel, or an oil-
in-water emulsion.
REJECTION
The claims have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Kligman2 in view of Guiramand. 3
DISCUSSION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
the claims would have been obvious over Kligman combined with
Guiramand.
The Examiner finds that Kligman discloses an aqueous formulation
for treating wrinkles comprising about 1-20% sodium silicate, about 1 %
polyvalent silicate and about 16.5% water. Final Act. 3. The Examiner
finds that the ratio of sodium silicate to polyvalent silicate in Kligman is
greater than 7, more preferably about 5. Id. The Examiner finds that while
Kligman does not teach the use of acryloyldimethyltaurate polymer, the use
of that polymer in a composition for treating wrinkles is taught by
Guiramand. Id. The Examiner concludes that
2 Kligman, EP 0244859 A2; published Nov. 11, 1987.
3 Guiramand, US 2006/0057170 Al; published Mar. 16, 2006.
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Application 13/744,708
it would have been obvious to combine the prior art in
order to provide an improved anti-wrinkle formulation.
It would have been obvious to include the compounds
and auxiliary agents of the 170 patent [(Guiramand)] into
the formulation of the 859 [patent (Kligman)] in order to
improve the skin properties of the formulation. It would
have been obvious to include the antiaging agents such as
vitamins and salicylic acid compounds found in the 170
in order to enhance the wrinkle treating properties of the
859 compound. The thickeners of the 170 would
enhance the viscosity of the formulation allowing for
better application to the skin and feel. These
combinations would have been obvious to one of
ordinary skill in the art since both formulations solve the
same problem.
Id. at 4--5.
Appellant contends that Kligman does not teach the present invention
in that Kligman teaches a composition which comprises 24% color base and
71 % human serum albumin. Br. 2. Appellant contends that at those levels
of base and albumin, the present invention would not work for its intended
purpose. Id. Appellant also points to the fact that the amount of sodium
silicate in Example 2 of Kligman is 5% whereas the claims call for a
maximum level of 4% sodium silicate. Id. Petitioner also argues that the
amount of silicon in the kaolin used in Kligman is not the same as recited in
the claims. Br. 2-3. Appellant concludes by arguing that there is no
motivation to combine the references. Id. at 3--4. Appellant contends that
Kligman teaches away from the suggested combination. Id. at 4.
Principles of Law
[T]he [E]xaminer bears the initial burden, on review of the
prior art or on any other ground, of presenting a prim a f acie
case ofunpatentability. If that burden is met, the burden of
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Application 13/744,708
coming forward with evidence or argument shifts to the
[ A ]pplicant.
After evidence or argument is submitted by the [ A ]pplicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due
consideration to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, motivation to combine and conclusions set out in the
Final Action and Answer regarding this rejection. Final Act. 3-5, Ans, 2--4.
We find the Examiner has established that the subject matter of the claims
would have been obvious to one of ordinary skill in the art at the time the
invention was made over Kligman combined with Guiramand. Appellant
has not produced evidence showing, or persuasively argued, that the
Examiner's determinations on obviousness are incorrect. Only those
arguments made by Appellant in the Brief have been considered in this
Decision. Arguments not presented in the Brief are waived. See 3 7 C.F .R. §
4I.37(c)(l)(iv) (2015). We have identified claim 34 as representative;
therefore, all claims fall with claim 34. We address Appellant's arguments
below.
Many of Appellant's arguments focus on the examples of Kligman,
especially Example 2. See, e.g., Br. 3. Appellant ignores the broader
teachings of Kligman which support the Examiner's conclusion. The test of
obviousness is "whether the teachings of the prior art, taken as a whole,
would have made obvious the claimed invention." In re Gorman, 933 F.2d
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Application 13/744,708
982, 986 (Fed. Cir. 1991). For example, while Example 2 of Kligman
teaches a sodium silicate concentration of 5%, elsewhere Kligman teaches a
range of from 1 to 10%. Kligman 2. This range overlaps with the range
cited in claim 34. "A prima facie case of obviousness typically exists when
the ranges of a claimed composition overlap the ranges disclosed in the prior
art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Appellant argues that Kligman requires the presence of Human
Albumin and, given the concentrations cited in Example 2, the invention of
Kligman could not be modified to make the claimed invention. Br. 2. We
are not persuaded.
Claim 34 uses the transitional phrase comprising which permits the
presence of other ingredients. "'Comprising' is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim." Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997). Thus, the presence of constituents such as Human Albumin are not
precluded.
In addition, as the Examiner points out, the composition in Example 2
of Kligman contains kaolin and water in amounts within the ranges cited in
claim 34. Final Act. 3. While the amount of sodium silicate listed in
Example 2 is just outside the range recited in Example 2, as noted above,
Kligman teaches a range of sodium silicate which overlaps with the range
cited in claim 34. Thus Kligman teaches a composition with all of the
elements of claim 34 in amounts falling within the ranges recited in the
claims.
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Appellant contends that kaolin, which comprises only 3.8% of the
color base, only contains 45% Si02. Br. 2. Appellant contends that this is
not the same as the polyvalent silicate called for in the claims. Id. at 3. We
have considered this argument and find it unpersuasive.
The present Specification teaches "the polyvalent silicate is a silicate
clay selected from the group consisting of bentonite, laponite, smectite, and
kaolinite." Spec. 3. Therefore, the kaolin in Kligman meets the definition a
polyvalent silicate. Moreover, the limitation for kaolin does not call for the
percentage of kaolin present in the composition be measured based on the
silica content, in contrast with the limitation for sodium silicates which does
refer to the silica content. See Claim 34 above. Thus the silica content of
kaolin is irrelevant.
With respect to the motivation to modify the teachings of Kligman,
we note that Kligman specifically teaches the composition of claim 34 and
does not require further modification. As to the combination of Kligman
and Guiramand, both references relate to cosmetic compositions for treating
wrinkles. We agree with the Examiner that one skilled in the art would have
been motivated to incorporate the antiaging agents of Guiramand into the
composition of Kligman to enhance the properties of the composition.
Ans. 6.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claim 34 would have been
obvious over Kligman combined with Guiramand.
Claims 36-48, and 63-71 have not been argued separately and
therefore fall with claim 34. 37 C.F.R. § 4I.37(c)(l)(iv).
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SUMMARY
We affirm the rejection under 35 U.S.C. § I03(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a).
AFFIRMED
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