Ex Parte Joffre

Patent Trial and Appeal BoardSep 28, 2012

11885092 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ERIC JUDE JOFFRE __________ Appeal 2011-010461 Application 11/885,092 Technology Center 1600 __________ Before ERIC GRIMES, LORA M. GREEN, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a silicone emulsion. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-010461 Application 11/885,092 2 STATEMENT OF THE CASE Claims 1-8 and 15 are on appeal (App. Br. 3). 1 The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative and reads as follows: 1. A silicone emulsion, comprising: (A) a polyorganosiloxane containing not greater than 10% (w/w) of cyclic organosiloxane tetramer; (B) a surfactant having the formula: wherein each R 2 is independently -H or -F, R 3 is -H, hydrocarbyl, or substituted hydrocarbyl, each R 4 is independently R 3 or -(CH2CH2O)mR 3 , wherein m is from 1 to 20, and M is a metal ion or an ammonium ion; and (C) water. Claims 1-8 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over Hamachi et al. (US 2004/0138373 A1, Jul. 15, 2004) in view of Pate et al. (US 6,783,766 B2, Aug. 31, 2004) (Ans. 3). The Examiner relies on Hamachi for teaching “a polyorganosiloxane emulsion comprising a polyorganosiloxane and water . . . and a cosmetic material made therefrom” (id.). The Examiner finds that the “content of cyclic organosiloxane is no more than 3.5% by weight” (id.). The Examiner 1 Claims 9-14 are also pending but have been withdrawn from consideration (App. Br. 3). Appeal 2011-010461 Application 11/885,092 3 also finds that Hamachi teaches “that component (b) is an N-acylalkyl taurine and/or salt thereof that is an anionic surface-active agent used for emulsification and dispersion of the polyorganosiloxane in water” and “used as a dehydration and polycondensation reaction catalyst” (id. at 4). The Examiner relies on Pate for teaching “a cosmetic silicone emulsion wherein sodium taurocholate may be used as an ionic surfactant suitable for stabilizing the emulsion” (id.). The Examiner concludes that it would have been obvious “to use sodium taurocholate as an ionic surfactant in [Hamachi’s] silicone emulsion . . . because sodium taurocholate is a known ionic surfactant used in cosmetic silicone emulsions and is thus a known substitution for another ionic surfactant used in cosmetic silicone emulsions” (id.). ANALYSIS As noted by Appellant, Hamachi is directed to a cosmetic emulsion composition comprising, as component B, particular anionic surface-active agents (Hamachi, ¶¶ [0010] & [0017]). We agree with Appellant that the Examiner has not adequately explained why one of ordinary skill in the art would have replaced these particular anionic surface-active agents with sodium taurocholate. However, as noted by the Examiner (Ans. 9), Hamachi teaches that “anionic surface active agents other than component (B) can be added to the emulsion composition . . . in order to maintain its stability” (Hamachi, ¶ [0039]). In addition, Pate, in the context of a cosmetic formulation, discloses sodium taurocholate as a suitable ionic surfactant to stabilize a silicone emulsion (Pate, col. 1, ll. 6-8 & 47, col. 3, ll. 41-42, & col. 4, ll. 8- Appeal 2011-010461 Application 11/885,092 4 11). We conclude that it would have been prima facie obvious to include sodium taurocholate in Hamachi’s emulsion composition to maintain its stability. Appellant argues, however, that “Pate[]’s process to prepare its HIPR emulsions are unique and therefore may have different surfactant requirements from other emulsions in the art” (App. Br. 10 (emphasis added)). We are not persuaded. As pointed out by the Examiner, both Hamachi and Pate are directed to cosmetic emulsion compositions (Ans. 3 & 4). Appellant has not adequately explained why one of ordinary skill in the art would not have had a reasonable expectation for success. Appellant also argues that the “rejection fails to provide sufficient rationale as to why one skilled in the art would be motivated to choose sodium taurocholate from the long listing of surfactant options taught by Pate” (App. Br. 7). We are not persuaded. We recognize that Pate includes sodium taurocholate in a list of suitable surfactants (Pate, col. 4, ll. 8-19). However, given the broad disclosure in Hamachi of anionic surfactants suitable for use in its composition (Hamachi, ¶¶ [0039]-[0040] & [0049]), Appellant has not adequately explained why it would not have been prima facie obvious to include any of Pate’s anionic surfactants in Hamachi’s composition. CONCLUSION The evidence supports the Examiner’s conclusion that representative claim 1 would have been obvious. We therefore affirm the obviousness rejection. However, because our reasoning differs from that the Examiner, we designate the affirmance as a new ground of rejection. Appeal 2011-010461 Application 11/885,092 5 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . AFFIRMED, 37 C.F.R. § 41.50(b) alw