Ex Parte BREYFOGLE

Patent Trials and Appeals Board

Feb 27, 2019

13744722 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/744,722 01/18/2013
27752 7590 03/01/2019
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.
12335M2 6707
EXAMINER
LIU, TRACY
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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 LAURIE ELLEN BREYFOGLE 1
Appeal2018-000145
Application 13/744,722
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method for improving the
condition of skin. The Examiner rejected the claims as obvious under
35 U.S.C. § 103. Pursuant to 35 U.S.C. § 134, Appellant appeals the
Examiner's determination that the claims are unpatentable. We have
jurisdiction under 35 U.S.C. § 6(b ).
The Examiner's decision is AFFIRMED.
1 The Appeal Brief ("Br." entered Nov. 11, 2015; claims entered Aug. 8,
2016 in response to Notice of Defective Appeal Brief) lists The Procter &
Gamble Company as the real party in interest. Br. 1.
Appeal2018-000145
Application 13/7 44,722
STATEMENT OF THE CASE
The Examiner finally rejected the claims as follows:
1. Claims 21-24, 26-33, 36, and 37 under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Kligman (EP 0244859 A2, pub. Nov. 11,
1987) and Fujino et al. (US 2010/0022665 Al, pub. Jan. 28, 2010)
("Fujino"), as evidenced by British Geological Survey (BRITISH
GEOLOGICAL SURVEY, Kaolin 1-7 (2009) ("British Geological Survey)").
Ans. 2. 2
2. Claim 25 under pre-AIA 35 U.S.C. § I03(a) as unpatentable over
Kligman, Fujino, and Gillespie (US 4,255,416, issued Mar. 10, 1981).
Ans. 2.
3. Claims 34, 35, and 38--42 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Kligman, Fujino, and Pinsky (US 2007 /0077292 Al, pub.
Apr. 5, 2007). Ans. 2-3.
4. Claims 21--42 on the ground of non-statutory double patenting as
unpatentable over claims 34--65, 69, and 70 of co-pending Application
No. 13/744,708 (Breyfogle, US 2013/0195783, pub. Aug. 1, 2013). Ans. 3.
A Notice of Abandonment in the co-pending Application was entered
November 28, 2018. The rejection is therefore moot.
For rejections 2 and 3, Appellant argues that the additionally cited
publications do "not make up for any of the failings of' Kligman. Br. 6.
The claims in these rejections, therefore, stand or fall with the claims in
rejection 1.
2 Two Examiner Answers were entered, the second apparently in response to
Appellant's filing of a corrected Claims Appendix. The Answer ("Ans."),
entered December 13, 2016, is referenced herein.
2
Appeal2018-000145
Application 13/7 44,722
Independent claim 21, which is reproduced below, is representative of
the claimed subject matter:
21. A method for improving the condition of skin comprising
the steps of:
i) applying a first 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 second
silicate which is 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 greater than 0.7; and
ii) applying a second composition that contains water, oil
or both and is selected from the group consisting of an oil-in-
water emulsion, water-in-oil emulsion, thickened water gel,
thickened oil phase, encapsulated oil phase, solid oil phase, and
mixtures thereof.
REJECTION BASED ON KLIGMAN AND FUJINO
Claim 21 is directed to a method for improving the condition of skin.
The method comprises a step of applying a first composition to the skin, and
then a step of applying a second composition to the skin. The first
composition comprises a) sodium silicate, b) polyvalent silicate, and c)
water, where the silicates are present in specifically recited weight ranges
and in a weight ratio of a) to b) which is greater than O. 7. The second
composition is an "oil-in-water emulsion, water-in-oil emulsion, thickened
water gel, thickened oil phase, encapsulated oil phase, solid oil phase, and
mixtures thereof."
The Examiner found that Kligman describes applying a composition
comprising serum albumin and sodium silicate to the skin to smooth the skin
and remove of temporary wrinkles. Final Act. 3. The sodium silicate
3
Appeal2018-000145
Application 13/7 44,722
corresponds to component a) of claim 21. The Examiner found that the
sodium silicate is present in Kligman's composition in an amount of 1-10%
by weight of the composition as compared to the claimed amount of
"about 0.5 to about 4% sodium silicate as measured by silica content." Final
Act. 3.
For the b) polyvalent silicate of claim 21, the Examiner cited
Kligman's description of an example of an anti-wrinkle composition
comprising sodium silicate in an amount of 5% (Kligman 3 :29) and kaolin
2457 in an amount of 3.8% of the color base of the composition (Kligman
4:34). Final Act. 3. The Examiner found that kaolin comprises kaolinite,
which is a polyvalent silicate, meeting the corresponding limitation b) of
claim 21. Final Act. 3; see also Spec. 3 ("The polyvalent silicate can be a
silicate clay selected from the group consisting of bentonite, laponite,
smectite, and kaolinite.")
Based on evidence from a publication about the content of kaolin by
the British Geological Survey, the Examiner calculated the amount of the
polyvalent silicate in Kligman's example to be in the range of 2.85-3.57%
as compared to the claimed amount of "about 0.1 % to about 4.0%." Final
Act. 3--4.
From the amounts of sodium silicate and polyvalent silicate
(kaolinite) present in Kligman' s example, the Examiner calculated the ratio
of the weight of the sodium silicate to the polyvalent silicate to be greater
than O. 7 as required by claim 21. Final Act. 5.
The Examiner found that Kligman also discloses applying a second
composition to the skin as required by claim 21, but does not teach it to be in
the form of an oil-in-water emulsion as recited in the claim. Final Act. 4.
4
Appeal2018-000145
Application 13/7 44,722
The Examiner, however, found this form to be obvious based on the
disclosure in Fujino which teaches that oil-in-water emulsions have high
stability, providing a reason to have used such emulsion for Kligman's
second composition. Final Act. 4--5.
DISCUSSION
Appellant contends that the Kligman is "devoted" to the combination
of sodium silicate and human albumin, and is "inoperative" without the
albumin. Br. 4. This argument is unavailing because the claimed first
composition uses the term "comprising" which is open-ended and permits
the addition of components not expressly recited in the claim. See MPEP
§ 2111.03 (9th ed., Rev. 08.2017, Jan. 2018); Final Act. 6. Therefore,
albumin is not excluded from the claimed first composition.
Appellant also attempts to distinguish Kligman based on the amount
of sodium silicate present in the first applied composition of claim 21.
Appellant states that Kligman utilizes 5% in its example, while the upper
limit in the claim is 4% sodium silicate. Br. 4. This argument is not
persuasive. As found by the Examiner, Kligman discloses sodium silicate in
the range of about 1-10% by weight of its anti-wrinkle composition.
Kligman 2:35-37. Appellant did not dispute that this range overlaps with
the claimed range. While Kligman exemplifies a composition with 5%
sodium silicate, Kligman is not limited to its working examples. It is well-
established that disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442 (CCPA 1971); Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered.");
5
Appeal2018-000145
Application 13/7 44,722
see also Final Act 6-7. Appellant does not identify a defect in the
Examiner's reasoning that claimed amount of sodium silicate in the first
composition would have been obvious based on the broader range disclosed
in Kligman. 3
Appellant argues that the "inert color composition of Klingman [sic]
[ comprising kaolinite] is simply not a teaching of the polyvalent silicate
active of the present invention" and without polyvalent silicate and sodium
silicate "the present invention does not work." Br. 4.
This argument does not persuade us that the Examiner erred in
rejecting the claims as obvious. Example 2 of Kligman comprises sodium
silicate and kaolin. Kligman 3--4. The Examiner found that kaolin contains
kaolinite which is a polyvalent silicate. Final Act. 3--4. Appellant has not
identified a factual basis to dispute this finding. Thus, a composition
comprising sodium silicate and polyvalent silicate, the same two ingredients
required by claim 22, would necessarily result when following the guidance
in Kligman's examples of making an anti-wrinkle cream comprising sodium
silicate and kaolin.
Appellant also states that "the Examiner still does not show any
teaching of the two different silicate claimed (in all of the appealed claims),
and the ratio of their addition." Br. 5. Appellant's argument is without
merit. As discussed above, the Examiner made explicit findings as to the
content of Kligman's anti-wrinkle composition comprising both sodium
3 When there is a range disclosed in the prior art, and the claimed invention
overlaps or falls within that range, as there is here, there is a presumption of
obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); Iron
Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
6
Appeal2018-000145
Application 13/7 44,722
silicate and polyvalent silicate. The Examiner also found that the ratio of the
two silicates in Kligman's example fall within the claimed range. Final
Act. 5. The Examiner identified explicit disclosure in Kligman where the
disputed ratio limitation can be found, meeting the burden that the disputed
ratio is described by Kligman. Appellant did not identify a deficiency in this
disclosure.
Appellant also contends that the Examiner "ignores all of the data in
the present [S]pecification showing the benefits of this combination of two
different silicates in the claimed ratio." Br. 5.
Appellant's remarks filed on October 2, 2014 did not direct the
Examiner to the data in Specification. The Examiner, therefore, did not
consider the data in making the subsequent Final Rejection entered
December 9, 2014. In the Appeal Brief filed November 11, 2015, Appellant
states that the Examiner ignored the Specification data, but Appellant had
not brought it to the Examiner's attention in the previous remarks. In the
Answer, the Examiner reviewed the data in the Specification (Spec. 23-24).
The Examiner found that two compositions, said to be within the scope of
the claim, having silicate ratios of 2 and 1, respectively, were prepared and
tested for their firming or tightening benefit to the skin. Ans. 6; Spec. 23-24
(Tables 1 and 2). The Examiner did not find the showing sufficient to
overcome the rejection because no comparison was made with compositions
having ratios outside the claimed range. Ans. 6.
We agree with the Examiner that the showing is not sufficient to
overcome the rejection.
7
Appeal2018-000145
Application 13/7 44,722
As held in In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(internal citations omitted):
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. . . . These cases have consistently
held that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range.
Appellant has not established the criticality of the claimed amounts by
showing that a silicate ratio less than the claimed value of "greater than O. 7"
does not possess the claimed skin benefit.
Nor has Appellant compared the compositions to the one in Kligman
which possesses a silicate ratio within the scope of claim 21. To establish
unexpected results, the claimed subject matter must be compared with the
closest prior art. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995); Iron Grip
Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)
(A showing of "new and unexpected results" must be "relative to the prior
art."); 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.").
Furthermore to the extent "unexpected results" are asserted, there is
no statement that the results described in the Specification were surprising or
unexpected to one of ordinary skill in the art as required to establish
unexpected results.
One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of "unexpected results," i.e.,
to show that the claimed invention exhibits some superior
8
Appeal2018-000145
Application 13/7 44,722
property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected.
Soni, 54 F.3d at 750.
SUMMARY
For the foregoing reasons, the rejection of claim 21 as obvious in view
of Greenwald and Zhao is affirmed. Claims 22--42 were not argued
separately and, therefore, fall with claim 21. 37 C.F.R. § 4I.37(c)(iv)(l).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9