Ex Parte George et al

Patent Trial and Appeal Board

Apr 12, 2016

11673119 (P.T.A.B. Apr. 12, 2016)

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.
11/673,119 02/09/2007 Liliana Sophie George 04.33 2066
23487 7590 04/13/2016
THE ESTEE LAUDER COS, INC
155 PINELAWN ROAD
STE 345 S
MELVILLE, NY 11747
EXAMINER
ZISKA, SUZANNE E
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
04/13/2016 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 LILIANA SOPHIE GEORGE, GEORGE CIOCA, IONITA-
MANZATU VASILE, KRETZSCHMAR-DOVI KATHLEEN MARY,
and MIRELA CRISTINA IONITA-MANZATU1
__________

Appeal 2014-000420
Application 11/673,119
Technology Center 1600
__________

Before LORA M. GREEN, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
compositions of structured water, which the Examiner rejected as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as The Estée Lauder
Companies, Inc. (Br. 1.)
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STATEMENT OF THE CASE
Background
According to the Specification,
the invention relates to enhanced structured water containing
mineral ions released by water-insoluble minerals, which are
integrated into water clusters of the enhanced structured water
to form cluster complexes. The mineral ions in such cluster
complexes exhibit significantly improved biological activities
(such as collagenase-inhibiting activity, collagen-synthesis-
enhancing activity, free-oxygen-radical-inhibiting activity, etc.),
in comparison with mineral ions in un-structured waters.

(Spec. 1.)
Claims
Claims 1–3, 5–17, and 27–37 are on appeal. Claim 1, the only
independent claim, is illustrative and reads as follows:
1. A composition comprising structured water selected from the group
consisting of I water, S water, and a combination thereof, wherein said
structured water comprises at least one charged cluster of water
molecules having at least one mineral ion bound therewith to form a
cluster complex wherein said at least one mineral ion is released into
said structured water by at least one water-insoluble mineral selected
from the group consisting of malachite, azurite, chrysocolla,
rhodocherosite, and rhodonite.

(Br. 4 (Claims App’x).)

Rejections
Claims 1–3 and 5–7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Vainshelboim.2

2 Vainshelboim et al., U.S. 2004/0177453, published Sept. 16, 2004.
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Claims 1–3 and 5–7 are further rejected as obvious under 35 U.S.C.
§ 103(a) based on Vainshelboim.
Claims 8–17 and 30–37 are rejected as obvious under 35 U.S.C.
§ 103(a) based on Vainshelboim in further view of Mayer,3 Steed,4 and
Ionita-Manzatu.5
Claims 27–30 are rejected as obvious under 35 U.S.C. § 103(a) based
on Vainshelboim, Mayer, Steed, and Ionita-Manzatu, in further view of
Cioca.6
DISCUSSION
Issues
This appeal turns on resolution of a central issue: whether the clause
“wherein said at least one mineral ion is released into said structured water
by at least one water-insoluble mineral selected from the group consisting of
malachite, azurite, chrysocolla, rhodocherosite, and rhodonite” limits the
structure of the claimed composition.
The Examiner interpreted claim 1 as “directed to a composition
comprising I water, S water or a combination thereof, wherein the I water,
S water or combination thereof comprises at least one mineral ion bound
therewith to form a cluster complex.” (Ans. 9.) For the “wherein” clause
emphasized above, the Examiner determined it “is an implicit process
limitation in a composition claim” that does not restrict the claims — the

3 Mayer et al., U.S. 6,648,925, issued Nov. 18, 2003.
4 Steed, U.S. 3,429,646, issued Feb. 25, 1969;
5 Ionita-Manzatu et al., U.S. 6,958,163, issued Oct. 25, 2005
6 Cioca et al., GB 2335142, issued May 17, 2000
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claimed composition, thus, does “not require specific minerals including
malachite, azurite,” etc. (Ans. 9–10; Final Act. 2–3.)
Appellants argue that the claims are not anticipated or obvious
because the cited art “does not disclose any of these minerals.” (Br. 2.) But
Appellants do not address the central question related to the “wherein”
clause: must the claimed composition actually comprise one or more of these
water-insoluble minerals?
If we interpret the “wherein” clause as structurally limiting, such that
the claim requires at least one of the specific water-insoluble minerals in the
composition, the Examiner has not identified the disclosure of those
minerals in the cited art. If, on the other hand, we construe the claim such
that “wherein” clause is not limiting, Appellants have not presented evidence
or argument that the prior art relied upon by the Examiner does not teach the
claimed structured water.
Analysis
Claims 1–3 and 5–7: Anticipation
We begin with claim construction because it is a necessary
prerequisite to comparing the claims to the prior art. During prosecution, we
give claim terms the broadest reasonable interpretation as understood by a
person of ordinary skill in the art in light of the specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Appellants and the Examiner do
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not dispute the content of the cited art here, so claim construction is
dispositive.
The key language for construction is the final “wherein” clause of
claim 1, from which all the other claims depend. Claim 1 reads:
A composition comprising structured water selected from the group
consisting of I water, S water, and a combination thereof, wherein said
structured water comprises at least one charged cluster of water
molecules having at least one mineral ion bound therewith to form a
cluster complex wherein said at least one mineral ion is released into
said structured water by at least one water-insoluble mineral selected
from the group consisting of malachite, azurite, chrysocolla,
rhodocherosite, and rhodonite.

(Br. 4 (Claims App’x) (emphasis added).) To resolve the challenged
rejections of claims 1–3 and 5–7 as anticipated by Vainshelboim, we must
decide whether this final wherein clause is a structural limitation of the
claimed composition.
The Examiner argues that claim 1, properly interpreted, does not
require the specific water-insoluble minerals. More specifically, the
Examiner finds:
Claim 1 is directed to a composition comprising I water, S
water or a combination thereof, wherein the I water, S water or
combination thereof comprises at least one mineral ion bound
therewith to form a cluster complex. Claim 1 is not drawn to a
composition comprising I water, S water or combination thereof
and a mineral selected from malachite, azurite, chrysocolla,
rhodocherosite, and rhodonite. Thus, Appellants’ claims do not
require the presence of specific minerals including malachite,
azurite, chrysocolla, dtodocluosite [sic], and rhodonite.

Appellants’ reliance on the use of malachite, for example, to
release the mineral ion thereby producing the claimed cluster
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complex is not persuasive because Appellants are claiming a
composition and not a process.

***

While it is acknowledged that mixing malachite with water is a
process that will produce Appellants’ claimed composition
(claim 1), Appellants claimed composition is a mineral ion
complex with water (e.g., a cluster complex), irrespective of
how it is produced.

(Ans. 10–11 (emphasis added); see also, Final Act. 2–3.)
As for the final “wherein” clause, the Examiner finds that the clause
does not structurally limit the claim. The Examiner states that “[t]he
‘wherein’ clause is an implicit process limitation in the composition claim.”
(Id. at 10.) The Examiner, accordingly, finds that the clause does not add
distinction over the “mineral ion complex with water (e.g., a cluster
complex)” disclosed in the prior art. (Id. at 11.)
Based on this interpretation, the Examiner maintains the rejection that
Vainshelboim includes all the elements of, and anticipates, claims 1–3 and
5–7:
Vainshelboim discloses cluster modified water which can
be I water or S water (Abstract) and that additional ions are
introduced into the system of cluster structures by replacing the
ion which stabilizes the structure with ions that have the same
or similar ionic radius [0018]. Vainshelboim discloses that the
cluster modified water is combined with a mordanting salt
([0022]). Vainshelboim discloses the mordanting salts can be
polyvalent ions metal ions and that the mordant, present in the
cluster modified water, can chelate with a dye to form a large
metal dye complex ([0022]) (claim 1).

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Vainshelboim discloses the mordants have a valence of at
least 2 and include cations such as magnesium and copper
([0023]) (claims 2 and 3). Because Vainshelboim discloses that
the mordanting salts can chelate once in water without a dye
molecule, Vainshelboim inherently discloses a colorless
composition; alternatively, the metal ion-dye complex can be
colorless, lacking evidence to the contrary (claim 5).

Vainshelboim discloses other mordants can be aluminum
citrate ([0024]), thus disclosing the claimed bridging agent
(claim 6) which is citrate (claim 7).

(Ans. 3–4, 10–11.)
Appellants argue that the Examiner failed to establish anticipation
because the water-insoluble minerals are not disclosed in the prior art. In
particular, Appellants argue:
The Office Action recognizes that Appellants’ claims require
specific minerals, including malachite, azurite, chrysocolla,
rhodochrosite [sic], and rhodonite. The Office Action seems to
recognize that Vainshelboim does not disclose any of these
minerals. But the Office Action disregards this fact, and
instead, asserts that anticipation is established because
Vainshelboim discloses ions which are asserted to be released
by the claimed minerals. While a species may anticipate a
genus (MPEP §2131.02), the ions released by the claimed
minerals do not share a species/genus relationship.

(Br. 2.)
Appellants’ argument is not persuasive because it does not address the
key claim construction issue regarding the final “wherein” clause.
Appellants have not shown that the Examiner’s construction is incorrect or
unreasonable.
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Moreover, Appellants do not definitively state that the “wherein”
clause requires that the insoluble minerals actually be present as structure
within the claimed composition. That may be the meaning Appellants
intend, but we decline to find that unclear statements in briefing here
override the broadest reasonable interpretation of the claim as written. In re
Am. Acad. Of Sci. Tech. Ctr., 367 F.1359, 1364 (Fed. Cir. 2004)
(“Construing claims broadly during prosecution is not unfair to the applicant
. . . because the applicant has the opportunity to amend the claims to obtain
more precise claim coverage.”).
We agree with the Examiner that the “wherein” clause should be
construed as not requiring that the claimed composition includes the
specifically recited minerals [e.g., malachite]; rather, the wherein clause is
construed as requiring only that those minerals dissociate in water to supply
the mineral ions which form the cluster complexes (e.g., water bound to
mineral ions) of the composition.” (Ans. 11.) Thus, the final “wherein”
clause is non-limiting — it describes a source of the mineral ions for the
production of the claimed composition, rather than imparting any actual or
apparently meaningful structural limitation to the claims themselves. MPEP
§ 2110.04; see generally Griffin v. Bertina, 285 F.3d 1029, 1034 (Fed. Cir.
2002) (affirming interpretation that a wherein clause was limiting because it
provided “meaning and purpose to the manipulative steps” of the claim).
In support, we consider the language of claim 1. Claim 1 states that
the composition comprises structured water, which itself comprises charged
water molecules and at least one mineral ion that together form a “cluster
complex.” Yet the specific water-insoluble minerals are not introduced with
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the word “comprises” or other transition that could make clear whether the
composition actually includes them. To the contrary, the claim language can
be reasonably read as merely indicating that at least one mineral ion making
up the cluster complex is released by the minerals in some indeterminate-
preceding step.
We conclude also that Specification supports the Examiner’s claim
construction. For example, the Specification repeatedly refers to the
composition as including the structured water and mineral ion “cluster
complex” — in none of these embodiments is the composition itself
described as including the insoluble minerals of malachite, azurite, etc.
(Spec. 4–5.) These minerals are instead described in the context of the
“method of forming a composition” as the source of the mineral ions. (Spec.
5 (“a method of forming a composition, comprising mixing particles of a
water-insoluble mineral with I water . . .”). Furthermore, the Specification
consistently describes efforts to remove the mineral particles from mixtures
used in the preparation of the composition. (Id. (“un-dissolved particles of
the water-insoluble mineral is removed from the mixture by filtration”); see,
e.g., id. at 15 (“Un-dissolved malachite powder was removed from the
solution by filtration using a filter having a retention threshold of about 0.22
micron.”).)
For the reasons above, we affirm the Examiner’s rejections of
claims 13 and 57 as anticipated by Vainshelboim. As discussed, the claimed
compositions do not require the specific minerals (malachite, azurite, etc.).
Absent these specific minerals recited in the non-limiting “wherein” clause,
the Examiner identified the disclosures of Vainshelboim that satisfy the
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elements of claims 1–3 and 5–7, and we adopt those findings here. (Ans. 3–
4; 9–11.) Appellants do not separately challenge these findings. (Br. 23.)
Claims 1–3 and 5–7: Obviousness
Claims 1–3 and 5–7 stand further rejected as obvious under 35 U.S.C.
§ 103(a) based on Vainshelboim. Appellants did not separately argue these
rejections, instead relying on the lack of disclosure of “the specific minerals,
including malachite, azurite, chrysocolla, rhodochrosite [sic], and rhodonite”
in Vainshelboim (Br. 2), which we have determined are not required in the
claim 1 or the dependent claims. We, therefore, adopt the Examiner’s
findings with respect to claims 1–3 and 5–7 (Ans. 3–4, 8) and further affirm
for the reasons set forth above.
Claims 8–17 and 30–37: Obviousness
Claims 8–17 and 30–37 are rejected as obvious under 35 U.S.C.
§ 103(a) based on Vainshelboim in further view of Mayer, Steed, and Ionita-
Manzatu. Appellants did not separately argue these rejections, contending
only that “[n]one of the additionally cited references teach or suggest the
minerals recited in Appellants’ claims. Therefore, it is believed that the
further rejections as to obviousness are moot.” (Br. 3.) As discussed, the
specific minerals are not required in the claims. We therefore adopt the
Examiner’s findings with respect to claims 8–17 and 30–37 (Ans. 4–8) and
further affirm for the reasons set forth above.
Claims 27–30: Obviousness
Claims 27–30 are rejected as obvious under 35 U.S.C. § 103(a) based
on Vainshelboim, Mayer, Steed, Ionita-Manzatu, and in further view of
Cioca. Appellants did not separately argue these rejections, contending only
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that “[n]one of the additionally cited references teach or suggest the minerals
recited in Appellants’ claims. Therefore, it is believed that the further
rejections as to obviousness are moot.” (Br. 3.) As discussed, the specific
minerals are not required in the claims. We therefore adopt the Examiner’s
findings with respect to claims 27-30 (Ans. 8–9) and further affirm for the
reasons set forth above.
SUMMARY
We affirm the rejections on appeal: Claims 1–3 and 5–7 as
anticipated under 35 U.S.C. § 102(b) by Vainshelboim; Claims 1–3 and 5–7
as obvious under 35 U.S.C. § 103(a) based on Vainshelboim; Claims 8–17
and 30–37 as obvious under 35 U.S.C. § 103(a) based on Vainshelboim in
further view of Mayer, Steed, and Ionita-Manzatu; and Claims 27–30 as
obvious under 35 U.S.C. § 103(a) based on Vainshelboim, Mayer, Steed,
Ionita-Manzatu, and Cioca.
TIME PERIOD FOR RESPONSE
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