Ex Parte Haskel et al

Patent Trial and Appeal Board

Dec 30, 2016

13488952 (P.T.A.B. Dec. 30, 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.
13/488,952 06/05/2012 Ariel Haskel 7682-01-US-Dl-PC 1048
23909 7590 01/04/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
GREENE, IVAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIEL HASKEL and PALOMA PIMENTA1
Appeal 2016-000395
Application 13/488,952
Technology Center 1600
Before ERICA A. FRANKLIN, JOHN G. NEW, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellants state the real party-in-interest is the Colgate-Palmolive Co.
App. Br. 2.
Appeal 2016-000395
Application 13/488,952
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 and 3—9, which stand rejected as
unpatentable under U.S.C. § 103(a) as being obvious over the combination
of Seiji (JP 2005-220117, August 18, 2005) (“Seiji”), Potechin et al. (WO
2006/012372 Al, February 2, 2006) (“Potechin”), Schmucker-Castner et al.
(US 2005/0158268 Al, July 21, 2005) (“Schmucker-Castner”), and Gupta
(US 2006/0110415 Al, May 25, 2006) (“Gupta”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to a method for incorporating a
hydrophobic material into a skin care composition. Abstr.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for incorporating a hydrophobic material
into a skin care composition comprising:
a. forming a base comprising mixing an acrylate polymer
and a surfactant;
b. forming a hydrophobic material premix comprising
mixing a hydrophobic material and a cationically modified
guar gum; and
c. combining the hydrophobic material premix with the
base, wherein the method is carried out at a temperature of
no greater than 50°C, wherein the hydrophobic material is
at least one material chosen from mineral oil, vegetable
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Application 13/488,952
oil, hydrogenated vegetable oil, partially hydrogenated
vegetable oil, petrolatum, isodedecane, isohexadecane,
hydrogenated polydecene, polydecene, beeswax,
triacontanol hexadecanoate, hexacosanol hexacosanoate,
myricyl palmitate, fatty acid triglyceride, animal fat,
lanolin, sunflower oil, hydrogenated or partially
hydrogenated sunflower oil, safflower oil, soybean oil,
rapeseed oil, grape seed oil, com oil, olive oil, sweet
almond oil, coconut oil, palm kernel oil, soybean oil,
castoryl maleate, shea butter, cocoa butter, cinnamate,
octinoxate, benzophene, and benzophenone, oxybenzone,
salicylate, octisalate, anthranilate, and p-aminobenzoic
acid ester, vitamin A, vitamin D2, vitamin D3, vitamin E,
and vitamin E acetate.
App. Br. 7.
ISSUE AND ANALYSIS
We agree with, and adopt, the Examiner’s findings and conclusion
that the appealed claims are obvious over the combined teachings of the
cited prior art references. We address the arguments raised on appeal by
Appellants below.
Issue
Appellants argue the Examiner erred because the combination of the
cited prior art elements neither teaches nor suggests premixing a modified
cationic guar gum with a hydrophobic material to form a hydrophobic
material premix, as required by claim 1. App. Br. 3.
Analysis
Appellants contend that their claimed method “involves a complex
interaction between the cationically modified guar gum and the carboxyl
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groups on the acrylate polymer.” App. Br. 3. According to Appellants,
“[t]he protonation and deprotonation of these ionic moieties affects the
specific rheology of the product, as the charged moieties attract or repel one
another.” Id. Appellants assert that the order of mixing is important,
because during different stages in the process and with different
combinations of ingredients, the components will have different viscosity,
shear stress and shear rate. Id. Appellants argue “[t]he final products are
non-Newtonian, meaning that a constant coefficient of viscosity cannot be
defined and may be dependent on shear rate or shear rate history” (which,
Appellants contend, can, e.g., be influenced by prior mixing of the material).
Id. Optimizing a method as claimed in view of these complex factors,
Appellants argue, “requires trial and error and cannot be derived simply
from mixing and matching elements of the cited references.” Id.
Appellants argue the Examiner’s reliance on Gupta is inapposite
because Gupta neither teaches nor suggests premixing a modified cationic
guar gum and a hydrophobic material at a temperature of no greater than
50°C. App. Br. 3. To the contrary, Appellants argue, Gupta teaches away
from such mixing. Id. Appellants assert that the only teaching of mixing in
Gupta is in Examples 1 and 2, in which the mixing is at room temperature,
however, Appellants argue, Gupta does not teach mixing a modified cationic
guar gum. Id. at 4. Appellants assert that the hydroxypropyl guar taught
that is mixed with ethyl lactate in Examples 1 and 2 is, rather, nonionic. Id.
Appellants admit Gupta teaches a modified cationic guar gum (guar
hydroxypropyltrimonium chloride) in Example 4, however, Appellants point
out, the guar hydroxypropyltrimonium chloride is premixed with water and
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not a hydrophobic material, as required by the claim. Id. (citing Gupta
1110).
Appellants argue further that combining Gupta with the other
references would also require mixing the modified cationic guar gum with
water rather than with a hydrophobic material, which, Appellants argue,
teaches away from the claimed method. App. Br. 4. Appellants contend
that, although hydroxypropyl guar and guar hydroxypropyltrimonium
chloride may be obvious variants as rheology-modifying agents as applied to
the final composition of Gupta, this does not make them obvious variants for
all purposes. Id. (citing Gupta 134). Appellants assert that there is no
general teaching in Gupta for the method of incorporating each of the
rheology-modifying agents, although Appellants admit that the final
composition may contain either polymer. Id. Appellants argue that different
agents can have different requirements for how to add them to a
composition. Id. Appellants maintain that when the teachings of Gupta are
combined with the other references, the express teaching of premixing a
modified cationic guar gum with water must be followed and, therefore, the
combination of references teaches away from the claimed method. Id.
Appellants next argue that, although Seiji teaches an oil phase
containing a cationic polymer, Seiji does not teach or suggest any
temperature for mixing. App. Br. 4. Appellants argue Seiji does not teach
modified cationic guar gum, nor is there presented any evidence that the
mixing of the cationic silicones taught by Seiji could be applied to modified
cationic guar gums. Id. at 5.
With respect to the teachings of Potechin, Appellants argue the
reference does not teach forming a premix of the selected hydrophobic
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material and a modified cationic guar gum, then mixing this premix into a
base containing an acrylate polymer and a surfactant at a temperature no
greater than 50°C. App. Br. 5. Appellants assert that the mixing
temperature taught by Potechin for mixing acrylate copolymer, surfactant,
and water is 20-25°C. Id. Nevertheless, Appellants contend, Potechin does
not provide any teaching with respect to a temperature at which a premix of
a hydrophobic material and a modified cationic guar gum can be mixed into
an acrylate polymer and surfactant mixture. Id.
Next, Appellants argue Schmucker-Castner does not teach mixing
temperatures or combining hydrophobic materials with modified cationic
guar gum to form a premix that is subsequently added to a base containing a
surfactant and an acrylate polymer. App. Br. 5.
Appellants conclude that the combination of Potechin, Schmucker-
Castner, Seiji, and Gupta neither teaches nor suggests “combining the
hydrophobic material premix with the base, wherein the method is carried
out at a temperature of no greater than 50°C,” as required by claim 1. App.
Br. 5. Appellants contend Seiji is silent with respect to temperature and does
not teach mixing of modified cationic guar gum, whereas Potechin,
Schmucker-Castner, and Gupta neither teach nor suggest combining
hydrophobic materials with modified cationic guar gum to form a premix.
Id. Appellants assert that, although Gupta teaches the addition of
modified guar gum to water, there is no teaching in any of the combined
references to modify the addition of mixing a modified cationic guar gum
into a hydrophobic material. Id.
The Examiner responds that Appellants improperly attack the
references individually when the Examiner relied upon what the combined
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references would teach a person of ordinary skill in the art. Ans. 2. By way
of example, the Examiner finds Appellants argue Gupta does not teach
premixing a modified cationic guar gum and a hydrophobic material at a
temperature of no greater than 50°C, however, the Examiner relies upon
Seiji as teaching forming premix of hydrophobic material and a cationic
polymer. Id.
With respect to Appellants’ argument that the mixture of the elements
in the claim would require undue experimentation, the Examiner finds that
mixing such elements is well known in the art, as exemplified by the
teachings of Seiji, as well as Appellants’ Specification, which provide only
routine descriptions of the procedure. Ans. 3.
The Examiner finds Seiji teaches:
The oil-in-water emulsifying compositions of the present
invention can be adjusted by adding and then mixing an oily
composition into which the cationic polymer has been dissolved
or uniformly dispersed (heated to around 70°C as needed) into a
separately prepared aqueous composition into which the anionic
polymers has been dissolved (sometimes heated).
Ans. 4 (citing Seiji 132). The Examiner finds a person of ordinary skill in
the art would have realized it was not necessary to add heat where heat was
not needed, which would require additional energy input and costs. The
Examiner also finds that Potechin teaches the method of making its
compositions includes preparing the products at ambient temperature
(approximately 20-25°C). Ans. 4—5 (citing Potechin 4).
In response to Appellants’ argument that Seiji does not teach that the
mixing of cationic silicones could be modified to apply to cationic guar
gums, the Examiner finds Seiji teaches: “[t]he cationic polymer used in the
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invention is not particularly limited if dissolved in or uniformly dispersed in
the oil phase.” Ans. 5 (quoting Seiji 111). The Examiner finds that there is
no evidence of record to suggest that an ordinary artisan would have realized
that a cationic guar gum could not be mixed with a hydrophobic material.
Id. Rather, the Examiner finds, such person of ordinary would have realized
it was possible and likely to succeed because Seiji teaches that:
[B]y mixing an oil phase containing a cationic polymer with an
aqueous phase containing an anionic polymer to form a polyion
complex in the interface between the oil phase and the aqueous
phase, an oil-in-water emulsifying composition with excellent
emulsifying stability that gives a good feeling when used without
being sticky and the like can be obtained without the need to
include a surfactant.
Id. (quoting Seiji 1 8).
Finally, the Examiner finds that Seiji teaches an essential aspect of
their invention includes adding an oily constituent containing a cationic
polymer to an aqueous phase containing an anionic polymer. Ans. 6. The
Examiner finds that Seiji also teaches that an oil-in-water type emulsion
composition which has excellent emulsion stability, is not sticky, exerts a
refreshing, favorable impression at use and can be used even by a person
with sensitive skin, all of which properties make it desirable. Id. The
Examiner finds Schmucker-Castner and Gupta each teach modified cationic
guar gum species. Id. The Examiner concludes that a person of ordinary
skill in the art would have found it obvious to form a premix of guar
hydroxypropyltrimonium chloride and a hydrophobic material in
formulating a topical cosmetic or personal care composition in order to
derive the desirable properties disclosed by Seiji. Id.
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We are not persuaded by Appellants’ arguments. As an initial matter,
we remind Appellants that it is impermissible to attack references singly
when the Examiner relies upon the combined teachings of the references,
nor may they attack a reference for not teaching a limitation of the claim
when the Examiner has explicitly relied upon another reference as teaching
that limitation. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
Appellants suggest that the difficulties of mixing the elements of their
claim requires excessive experimentation to achieve the unusual result of a
non-Newtonian fluid. See App. Br. 3. However, they adduce no evidence in
support of this contention, nor does their Specification disclose any such
requirements. Unsupported by evidence, Appellants’ contentions constitute
little more than attorney argument, to which we accord little probative
weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
We agree with the Examiner that Seiji teaches a cationic polymer can
be combined with a hydrophobic material, which may then be combined
with an acrylate polymer, as required by claim 1. See generally Seiji,
especially 132. Although Seiji suggests that heat may be added to the
mixture process, Potechin describes similar reactions that can be run at
ambient temperatures, i.e., less than 50°C. See Potechin 4. Finally, both
Gupta and Schmucker-Castner teach the use of modified cationic guar gum,
i.e., a cationic polymer, in the composition of stable aqueous surfactant
cosmetic compositions. See Gupta 134; Schmucker-Castner 192. We agree
with the Examiner that it would have been obvious to combine the teachings
of the cited prior art references to arrive at Appellants’ claimed invention
and that those combined teachings would have motivated a person of
ordinary skill to prepare a guar hydropropyltrimonium chloride-based
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composition, or other modified cationic guar gums, to provide a personal
care product more acceptable to consumers seeking silicone-free personal
care products. See Final Act. 7; see also Seiji ]Hf 7—25.
DECISION
The Examiner’s rejection of claims 1 and 3—9 as unpatentable under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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