Ex Parte Maalouf et alDownload PDFPatent Trials and Appeals BoardFeb 25, 201914799227 - (D) (P.T.A.B. Feb. 25, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/799,227 07/14/2015 19407 7590 02/25/2019 Fitch, Even, Tabin & Flannery, LLP 120 South La Salle Street, Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Sharbel J. Maalouf 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. 9262-132035-US 2297 EXAMINER CONIGLIO, AUDREA JUNE BUCKLEY ART UNIT PAPER NUMBER 1617 MAIL DATE DELIVERY MODE 02/25/2019 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 SHARBEL J. MAALOUF, JOSEPH CECCOLI, ALANA CECO LA, MARIA MILLER, and JULIE FISCHER 1 Appeal 2018-002113 Application 14/799,227 Technology Center 1600 Before ELIZABETH A. LA VIER, JOHN E. SCHNEIDER, and DAVID COTTA, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal2 under 35 U.S.C. § 134(a) from the Examiner's rejection of claims to patient care wipes which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as Medline Industries, Inc. Appeal Br. 3. 2 We have considered and herein refer to the Specification of July 14, 2015 ("Spec."); Final Office Action of May 23, 2017 ("Final Act."); Appeal Brief of Sept. 18, 2017 ("Br."); Examiner's Answer of Oct. 20, 2017 ("Ans."); and Reply Brief of Dec. 19, 2017 ("Reply Br."). Appeal 2018-002113 Application 14/799,227 STATEMENT OF THE CASE Numerous types of patient care wipes are known in the art. These range generally from mass-marketed consumer wipes for cleansing, such as baby care products, to products intended for the medical industry, such as wipes infused with an antibiotic or other antimicrobial agent. In the production of such wipes, there are sometimes a number of competing purposes. For various reasons, it is desirable to fashion the wipe from a hydrophobic substrate such as a non-woven hydrophobic material. This can present challenges when the lotion to be applied to the skin of the patient is hydrophilic, because it can be difficult to prepare a lotion that has sufficient affinity for the hydrophobic substrate to permit sufficient stability for transport and storage of the wipe. Spec. ,r 2. The Specification describes a cleansing wipe or moisturizing wipe [which] may be prepared from a hydrophobic cloth substrate having an aqueous composition disposed thereon. The aqueous composition may be characterized as an aqueous cleansing composition, or an aqueous moisturizing composition, and in some embodiments, the composition may have both cleansing and moisturizing properties and may include ingredients suitable for each of those purposes. Spec. ,r 6. Claims 1-17, 45-53, 57, and 58 are on appeal. Claim 1 is representative and reads as follows: 1. A cleansing wipe comprising: a hydrophobic cloth; and an aqueous cleansing composition disposed on said cloth, said cleansing composition comprising a cleanser and a silicone emulsion, said emulsion including an emulsifier that comprises at least one emulsifying agent, said emulsifier being present in an amount effective to impart a cleansing composition affinity to the hydrophobic cloth sufficient to provide a stable cleansing 2 Appeal 2018-002113 Application 14/799,227 wipe, said cleansing wipe when applied to the skin releasing a lotion that comprises silicone in an amount effective to inhibit transepidermal water loss. The claims stand rejected as follows: Claims 1-9, 12-15, 17, 45-51, 57, and 58 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Masse. 3 Claims 10, 11, 16, 52, and 53 have been rejected under 35 U.S.C. § I03(a) as unpatentable over Masse in view of Bidamant. 4 DISCUSSION Obviousness Based on Masse Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner's conclusion that the subject matter of the claims would have been obvious over Masse. We note that Appellants elected disodium cocoaamphodipropionate as the emulsifier, CI2-22 alcohol as the surfactant, and shea butter as the nourishing agent. Final Act. 2. Our analysis is limited to these elected compositions. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. Int. 1987). The Examiner finds that Masse teaches a single use cosmetic article comprising a water-insoluble support impregnated with a lotion that 3 Masse, US 2007/0212401 Al, published Sept. 13, 2007 ("Masse"). 4 Bidamant et al., US 2011/0086060 Al, published Apr. 14, 2011 ("Bidamant"). 3 Appeal 2018-002113 Application 14/799,227 comprises water. Final Act. 7. The Examiner finds that Masse teaches the use of myristyl alcohol which can act as an emulsifier. Id. The Examiner also finds that Masse teaches that silicones may be used in amounts ranging from 0.01 to 20%. Id. at 7-8. The Examiner finds that the cosmetic articles of Masse may also comprise a surfactant and nourishing agents such as shea butter. Id. at 8. The Examiner concludes: Because Masse does not teach a single embodiment of the invention necessarily encompassing the particularly recited and elected components, this rejection is made using obviousness rationale. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the emulsifying agent, surfactant, nourishing agent, and/or humectant as instantly recited based on Masse's teaching. One would have been motivated to do so based on Masse's teaching of the particular advantages (i.e., humectant effects from known humectant agents) associated with each of these components, and further, it would have been obvious to substitute one known equivalent for another including those obvious to try species that are instantly elected from those groups taught by Masse, with a reasonable expectation of success. Id. at 9. Findings of Fact We adopt the Examiner's findings as our own, including with regard to the scope and content of, and motivation to modify or combine, the prior art. Final Act. 4--6. The following findings are included for emphasis and reference purposes. FF 1. Masse teaches a single use cosmetic article comprising a water- insoluble support impregnated with a lotion. 4 Appeal 2018-002113 Application 14/799,227 FF2. Masse teaches that the cosmetic article can be in the form of a wipe which can be used to clean hair and skin. Masse ,r,r 24, and 104--106. FF3. Masse teaches that the cosmetic article may comprise disodium cocoamphodipropionate. Masse ,r 62. FF4. Masse teaches using a surfactant in amounts ranging from 0.01 % to 20% by weight. Masse ,r 65. FF5. Masse teaches that the cosmetic article may contain myristyl alcohol. Masse ,r 77. FF6. Masse teaches that the cosmetic article may comprise silicones such as polydimethylsiloxanes and aminated polydimehtylsiloxanes. Masse ,r 78. FF7. Masse teaches that the silicones can be present in amounts ranging from 0.1 % to 10% by weight. Masse ,r 78. FF8. The Specification teaches using silicones in amounts ranging from 1---6%. Spec. ,r 14. FF9. The Specification teaches the use of emulsifiers in amounts ranging from 1-2%. Spec. 17. Principles of Law [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prim a f acie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 5 Appeal 2018-002113 Application 14/799,227 Analysis We find the Examiner has established that the subject matter of the claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Masse. Appellants have not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect. Only those arguments made by Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have identified claim 1 as representative; therefore, all claims fall with claim 1. 5 We address Appellants' arguments below. Appellants contend that Masse and the present invention are not within the same field of endeavor and that one skilled in the art would not look to Masse for guidance as to how to create a wipe which inhibits transdermal water loss. Appeal Br. 5---6. Appellants' argument is unpersuasive. As the Examiner noted in the Examiner's Answer, the claims are directed to a product and not a method for using the product. Ans. 3. Both 5 Appellants appear to present an argument with respect to the patentability of claims 4 and 49. Appeal Br. 7. However, this argument has not been presented separately as required by our rules. See 37 C.F .R. § 41.37 ( c )(iv). Instead, Appellants recite the additional limitations of these claims and state, without further analysis, that Masse does not teach or suggest these additional limitations. See Br. 7. This cursory argument fails to convince us of any reversible error in the Examiner's rejection of claims 4 (see Final Act. 7-8 (claim 4)) and 49 (see Final Act. 8-9 (claim 49)). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably interpreted Rule 41.3 7 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 6 Appeal 2018-002113 Application 14/799,227 the claimed product and Masse are directed to cleansing wipes which include lotions. Compare Masse Abstract with claim 1 above. As the Examiner points out, the products in Masse employ the same types of ingredients as the claimed invention. An. 3. Both the wipes of Masse and the wipes of the present invention can be applied to the skin. FF2; Spec. ,r 7. Based on the above analysis, we conclude that Masse and the present invention are within the same field of endeavor. Appellants argue that Masse fails to teach or suggest the present invention. Appeal Br. 6. Appellants contend that Masse does not teach or suggest the combination of silicone and an emulsifier nor does Masse disclose the effective ranges recited in the claims. Id. Again, we are unpersuaded. Masse teaches a wipe which can comprise silicone and the emulsifier elected by Appellants. FF3 and 6. The ranges recited in Masse for the amounts of emulsifier and silicone that can be used overlap with the ranges taught in the present Specification and recited in the dependent claims. FF4, 7, 8, 9, and Appeal Br. 9 (Claims App'x). "Aprimafacie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellants argue that the Examiner has engaged in the impermissible use of hindsight in making the rejection. Appeal Br. 7. Appellants contend "[ w ]ithout using the presently application as a guide, nobody would have attempted to modify Masse to solve the problem of trans-epidermal water loss in skin-compromised patients. Not even in retrospect is this rejection plausible." Id. We remain unpersuaded. 7 Appeal 2018-002113 Application 14/799,227 "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In the present case, the rejection is based entirely on information found within the teachings of Massey. FFl-7. Appellants have not convincingly demonstrated that the rejection is based on "knowledge gleaned only from [Appellants'] disclosure." Id. (emphasis added). Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claim 1 would have been obvious over Masse. Claims 2-9, 12-15, 17, 45-51, 57, and 58 have not been argued separately and therefore fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Masse Combined with Bidamant Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claims 10, 11, 16, 52, and 53 would have been obvious over Masse combined with Bidamant. Claim 10 is representative of this set of claims and reads: 10. A cleansing wipe according to claim 9, said skin nourisher comprising an algae extract. 8 Appeal 2018-002113 Application 14/799,227 The Examiner finds that Masse does not teach or suggest the use of an algae extract as recited in the claims. Final Act. 10. The Examiner finds that Bidamant teaches the use of algae extract in a cosmetic wipe. Id. The Examiner concludes: Both Masse and Bidamant are directed to topically applicable skin formulations. It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to include both shea butter and algae extract as taught by Bidamant in place of the shea butter agent generally taught by Masse, with a reasonable expectation of success. One would have been motivated to do so based on Bidament' s [sic] specific teaching of these agents as desirable skin benefitting agents as evidenced by Bidament's [sic] specify teaching of preference and preferred amounts of these agents (see [0065] and [0066]). Id. at 10-11. Findings of Fact FFlO. Masse teaches that the cleansing wipe may contain a plant oil such as shea butter. Masse ,r,r 70-71. FF 11. Bidamant teaches the preparation of a skin care preparation such as a facial or body cleanser. Bidamant ,r,r 56-57. FF12. The skin care preparation of Bidamant can be in the form of a wipe. Bidamant ,r 59. FF 13. Bidamant teaches that the skin care composition may contain cosmetically active ingredients. Bidamant ,r 62. FF14. Bidamant teaches that preferred cosmetically active ingredients include shea butter and algae extracts. Bidamant ,r,r 63, 65, and 66. 9 Appeal 2018-002113 Application 14/799,227 Analysis We find the Examiner has established that the subject matter of the claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Masse. Appellants have not produced evidence showing, or persuasively argued, that the Examiner's determinations on obviousness are incorrect. Only those arguments made by Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We have identified claim 10 as representative; therefore, all claims fall with claim 10. We address Appellants' arguments below. Appellants argue that one skilled in the art would not have looked to Bidamant to develop the claimed invention in that Bidamant is not related to the problem addressed by the present claims-reducing transdermal water loss. Appeal Br. 7. Appellants contend that Bidamant teaches the treatment of stretch marks, something unrelated to water loss. Id. We have considered Appellants' arguments and find them unpersuasive. As the Examiner points out Bidamant, Masse and the present invention all relate to topical application of skin care compositions. Ans. 4. We find that the references and the claimed invention are all with the same area of endeavor. With respect to the claimed composition, Masse teaches that the composition may contain such agents as shea butter. FFlO. Bidamant teaches that both shea butter and algae extract are cosmetically active ingredients. FF 14. We agree with the Examiner that it would have been obvious to one skilled in the art to substitute one cosmetically active ingredient for another. Final Act. 1 O; Ans. 4. 10 Appeal 2018-002113 Application 14/799,227 Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of claim 10 would have been obvious over Masse combined with Bidamant. Claims 11, 16, 52, and 53 have not been argued separately and therefore fall with claim 10. See 37 C.F.R. § 4I.37(c)(l)(iv). SUMMARY We affirm the rejections under 35 U.S.C. § 103(a). 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 11 Copy with citationCopy as parenthetical citation