Ex Parte Clapp et al

Patent Trial and Appeal Board

Nov 15, 2012

10841195 (P.T.A.B. Nov. 15, 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.
10/841,195 05/07/2004 Mannie Lee Clapp 9238M 8970
23368 7590 11/15/2012
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
JAVANMARD, SAHAR
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
11/15/2012 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 MANNIE LEE CLAPP and REBECCA ANN TAYLOR
__________

Appeal 2011-013226
Application 10/841,195
Technology Center 1600
__________

Before DONALD E. ADAMS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a method of depositing oils on a substrate. The Patent
Examiner rejected the claims for obviousness. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal 2011-013226
Application 10/841,195

2
STATEMENT OF THE CASE
Claims 9-28 are on appeal. Claim 9 is representative and reads as
follows (emphasis added):
9. A method of depositing oils on a substrate comprising applying an oil-
containing composition to said substrate and rinsing off said oil-containing
composition from said substrate, said oil-containing composition
comprising:
a) an aqueous phase;
b) from about 1 to about 80 weight percent of a structured oil
phase, said structured oil phase comprising an oil and no more than about
75 weight percent of a structurant having a viscosity of about 100 to about
200,000 poise;
c) a gel-network phase comprising a non-ionic hydrophilic
surfactant and hydrophobic structuring agent; and
d) an aqueous phase stability agent;
wherein said structured oil phase has a shear index of less than 0.8.

The Examiner rejected the claims as follows:
claims 9-14, 16-24, and 26-28 under 35 U.S.C. § 103(a) as
unpatentable over Deckner;
1
and
claims 15 and 25 under 35 U.S.C. § 103(a) as unpatentable over
Deckner and Knowlton.
2

Appellants address their arguments to independent claim 9, and state
that the same arguments are applicable to independent claims 16 and 21.
(App. Br. 6.) We treat claim 9 as representative. As claims 10-28 have not
been argued separately, they will stand or fall with representative claim 9.
37 C.F.R. § 41.37(c)(1)(vii).

1
George Endel Deckner et al., US 6,699,488 B2, application filed Nov. 18,
2002.
2
John Knowlton et al., HANDBOOK OF COSMETIC SCIENCE AND TECHNOLOGY
1
st
ed. 13-15 (Elsevier Advanced Technology 1993).
Appeal 2011-013226
Application 10/841,195

3
DISCUSSION
The Issues
Appellants contend that the rejection over Deckner failed to establish
a prima facie case of obviousness because two of the rejection‟s findings
were incorrect. (App. Br. 4.) The disputed findings, the only issues
presented, are:
(i) whether Deckner taught a “structured oil phase” (id.) and, if so,
(ii) whether Deckner‟s “structured oil phase” inherently had “a shear
index of 0.8” (id. at 5).

Findings of Fact
1. Appellants‟ Specification states: “Petrolatum . . . is more properly
regarded as either the „structured oil phase‟ when present by itself or
alternatively as the „structurant‟ when admixed with other skin
compatible oils.” (Spec. 5, ll. 3-7.)
2. The Examiner found that Deckner taught:
a rinsable skin conditioning composition wherein the composition
comprises (i) from about 20% to about 90% by weight of the oil;
(ii) from about 0.1 % to about 10% by weight of the stabilizer; (iii)
from about 9.5% to about 79.5% by weight of water; and (iv) from
about 0% to about 2% by weight of a perfume.

(Ans. 6, citing Deckner col. 3, ll. 18-24.)
3. The Examiner found that Deckner taught using petrolatum as the oil
in its composition. (Ans. 6, citing Deckner col. 5, ll. 13-17; see also
Deckner, cols. 21-22 (Examples 1-14, which all comprise
petrolatum).)

Appeal 2011-013226
Application 10/841,195

4
Principles of Law
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).

Analysis
It is undisputed that Deckner described a method comprising applying
a rinsable oil containing skin conditioning composition to a substrate and
rinsing off the composition. Appellants also do not dispute that Deckner‟s
oil containing composition had the features defined in paragraphs a, c, and d
of claim 9.
Appellants‟ Specification states that petrolatum when present by itself
is the “structured oil phase.” (FF 1.) Because the Specification says so,
petrolatum itself necessarily has the features listed in paragraph b of claim 9.
Further, the requirement in paragraph b of claim 9 that the structured oil
phase comprise “no more than about 75 weight percent of a structurant
having a viscosity of about 100 to about 200,000 poise” reads on the
absence, or zero weight percent, of a structurant. Appellants present no
evidence that Deckner‟s petrolatum is any different than the structured oil
phase of paragraph b of claim 9. Issue question (i) must therefore be
answered in the affirmative.
Because Deckner‟s petrolatum is a structured oil phase having the
features recited in paragraph b, that fact evidence is sufficient to shift the
burden to Appellants to show that Deckner‟s petrolatum does not have a
shear index of less than 0.8. See Spada, 911 F.2d at 708. Issue question (ii)
must therefore also be answered in the affirmative.
Appeal 2011-013226
Application 10/841,195

5
Appellants‟ arguments do not show error in the Examiner‟s findings.
We conclude that the obviousness rejection based on Deckner has a sound
foundation and affirm it.
Appellants do not contest the rejection of claims 15 and 25 as
unpatentable over Deckner and Knowlton (see Final Rej. 7-8; see also Ans.
8-9). We therefore summarily affirm that rejection. See MANUAL OF PATENT
EXAMINING PROCEDURE § 1205.02 (“If a ground of rejection stated by the
examiner is not addressed in the appellant‟s brief, that ground of rejection
will be summarily sustained by the Board.”).

SUMMARY
We affirm the rejection of claims 9-14, 16-24, and 26-28 under
35 U.S.C. § 103(a) as unpatentable over Deckner.
We affirm the rejection of claims 15 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Deckner and Knowlton.
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

cdc