Ex Parte Miertsch et al

Patent Trials and Appeals BoardApr 30, 2019

13125316 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/125,316 05/20/2011 13897 7590 05/02/2019 Abel Schillinger, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 FIRST NAMED INVENTOR Heike Miertsch 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. 3321-P39641 4110 EXAMINER LIU,SUEXU ART UNIT PAPER NUMBER 1616 NOTIFICATION DATE DELIVERY MODE 05/02/2019 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): mail@Abel-IP.com hmuensterer@abel-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEIKE MIER TSCH and STEP AN BIEL 1 Appeal 2018-003 831 Application 13/125,316 Technology Center 1600 Before JEFFREY N. FREDMAN, JOHN G. NEW, and, RYAN H. FLAX, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Beiersdorf Ag as the real party-in-interest. App. Br. 3. Appeal 2018-003 831 Application 13/125,316 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 32-51. Specifically, claims 47 and 50 stand rejected as unpatentable under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Claims 32, 38-45, and 49-51 stand rejected as unpatentable under 35 U.S.C. Â§ 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as being obvious over, Parekh (US 6,024,945, February 15, 2000) ("Parekh"). Claims 32-51 also stand rejected as unpatentable under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Lemoine et al. (US 2005/0163737 Al, July 28, 2005) ("Lemoine") and Yamamoto et al. (JP 2003286146 (A), October 7, 2003) ("Yamamoto"). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to anti-perspiration preparation containing hydrotalcite, which helps prevent changes in the scent and color of the antiperspirant preparation. Abstr. REPRESENTATIVE CLAIM Claim 32 is representative of the claims on appeal and recites: 32. An antiperspirant preparation, wherein the preparation comprises one or more antiperspirant active ingredients, hydrotalcite, and added water in an amount of not more than 5 % by weight, based on a total weight of the preparation, the 2 Appeal 2018-003 831 Application 13/125,316 preparation being free of 2-alkyl-branched carboxylic acids comprising from 4 to 3 8 carbon atoms. App. Br. 23. ISSUES AND ANALYSES We decline to adopt the Examiner's findings and conclusion that claims 47 and 50 are indefinite. However, we adopt the Examiner's findings, reasoning and conclusion that claims 32, 38-45, and 49-51 are anticipated by, and obvious over, Parekh. Similarly, we adopt the Examiner's findings, reasoning, and conclusion that the claims are prima facie obvious over Lemoine and Yamamoto. We address the arguments raised by Appellants below. A. Rejection of claims 47 and 50 under 35. U.S.C. Â§ 112, second paragraph Issue Appellants argue that the Examiner erred in finding that the claims are indefinite because the rejected claims do not recite an upper limit of the percentage range for hydrotalcite. App. Br. 9. Analysis Appellants argue that claims 4 7 and 50 both depend from independent claims 46 and 49, respectively, which recite the maximum concentration of added water and a range for the weight ratio of water and hydrotalcite. App. Br. 10. Appellants contend that the maximum concentration of hydrotalcite 3 Appeal 2018-003 831 Application 13/125,316 is recited in the independent claims and, therefore, also in their dependent claims. We agree with Appellants. Independent claim 46, from which claim 4 7 depends, recites, in relevant part: "An antiperspirant preparation ... comprises one or more antiperspirant active ingredients, hydrotalcite, and added water in an amount of not more than 5% by weight, based on a total weight of the preparation, a weight ratio of hydrotalcite and water being of from 1: 10 to 10: l." App. Br. 25. Independent claim 49 makes the same recitation. Id. Claims 47 and 50 recite: "wherein the preparation comprises at least 0.5% [0.050% for claim 50] by weight of hydrotalcite." Id. "A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers." 35 U.S.C. Â§ 112, fourth paragraph; see also Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1357 (Fed. Cir. 2007). Taking claim 47 as an example, then, the claim recites, by reference to claim 46, "water in an amount of not more than 5% by weight. .. [ and] a weight ratio of hydrotalcite and water being of from 1: 10 to 10: l." The claim thus recites hydrotalcite in concentrations of, at maximum, 50% (i.e., a hydrotalcite:water ratio of 10: 1) and, at minimum, 0.5%. Claim 47 then places an additional limitation of "at least 0.5%" of hydrotalcite, which sets a minimum concentration of hydrotalcite, regardless of the concentration of water, which remains "not more than 5%" as recited in independent claim 46. Nevertheless, the maximum concentration of hydrotalcite permissible in claim 47 is the same as that recited in claim 46, i.e., 50%. Identical reasoning applies to claims 49 and 50. 4 Appeal 2018-003 831 Application 13/125,316 We therefore decline to adopt the Examiner's findings that claims 4 7 and 50 do not recite an upper limit for the concentration of hydrotalcite, and we reverse the Examiner's rejection upon this ground. B. Rejection of claims 32, 38-45, and 49-51 under 35. U.S.C. Â§Â§ 102(b) and/or 103(a) Issue Appellants argue that the Examiner erred because the compositions taught by Parekh do not contain any added water, as expressly required by the claims. App. Br. 10. Analysis The Examiner finds that Parekh does not expressly require the incorporation of water added solely as a water component, however, the Examiner finds, Parekh teaches that water may be incorporated as a buffering agent. Final Act. 5 (citing claims). The Examiner also finds that Parekh teaches the incorporation of water as coordinated with 5/6 basic aluminum chloride2 ("ACH") and with hydrotalcite and provides chemical 2 Parekh explains that: In general, basic aluminum halides and nitrates are complex structures comprised of mixtures of polymeric and monomeric compounds having various sizes and molecular structures, together with varying amounts of bound or coordinated water. They can be represented by the empirical formula Ab(OH)c6-x)Yx, wherein x is between O and 6 and need not be an integer, and y 5 Appeal 2018-003 831 Application 13/125,316 formulas disclosing the amount of water that may be coordinated. Id. ( citing Parekh ( citing cols. 3, 4). The Examiner finds that, because Parekh does not teach the addition of a significant amount of water, and provides examples of anhydrous compositions, it would have been obvious to produce a formulation with water, if present, only at an amount considered to be an impurity, and the Examiner notes, concentrations of less than 5% correspond to such an impurity. Id. at 5-6. Appellants point out that the claims require, in relevant part, comprises, in addition to one or more antiperspirant active ingredients and hydrotalcite, added water in an amount of not more than 5% by weight. App. Br. 10-11. Appellants argue that Parekh neither teaches nor suggests added water. Id. Appellants particularly point to column 2, lines 40-57 and column 3, lines 7-15, and column 4, lines 22-36 of Parekh, which, Appellants contend, each teach that the presence of free water (including added water) in the compositions disclosed therein should be avoided as much as possible. App. Br. 11-12 (also citing Parekh Ex. 4.) is one or more of the group including chloride, bromide, iodide or nitrate ions.... Particularly preferred compounds are aluminum chlorohydrates in which x is about 1 to 2, and most preferably x is about 1, the latter being referred to as 5/6 basic aluminum chloride. Such compounds have an Al:Cl mol ratio of about 1:1 to 2.1:1, and preferably a mol ratio of from 1.9:1 to 2.1:1. Parekh col. 1, 11. 18-34 6 Appeal 2018-003 831 Application 13/125,316 Appellants contend that the passages of Parekh cited by the Examiner, and by Appellants supra, are explicit that the presence of water in any amount is to be avoided. App. Br. 12. At the very least, argue Appellants, Parekh provides no motivation for one of ordinary skill in the art to add water to the compositions of Parekh. Id. at 12-13. According to Appellants, the invention of Parekh, i.e., the addition of certain substances such as, e.g., hydrotalcite to aluminum chlorohydrate, is based on the finding that ACH contains water as an unavoidable impurity, which leads to a reaction between 1, 1-difluoroethane and ACH that produces toxic compounds such as monochlorofluoroethane and acetaldehyde. Id. at 13. Consequently, Appellants assert, Parekh teaches that water must be scavenged if this reaction is to be avoided. Id. at 13. Appellants argue further that the claim term "added water" requires that water be deliberately added, i.e., not just as an impurity which may have present in any of the materials employed. App. Br. 13. In support of this contention, Appellants point to [0019] of their Specification, which discloses that: "In order for the hydrotalcite to be able to act as an acid scavenger in the formulation, the addition of water is necessary." Id. With respect to the Examiner's finding that Parekh teaches the addition of water as a buffering agent, Appellants point to claim 13, which Appellants believe is relied upon by the Examiner, and which recites that the complex aluminum buffering agent mentioned in claim 1 of Parekh is: "is selected from the group consisting of aluminum hydroxy carbonate, magnesium hydroxide and aluminum compounds containing two or more of the group consisting of magnesium, calcium, nickel, carbonate, sulfate, hydroxy and water." App. Br. 13 (quoting claim 13). Appellants assert that 7 Appeal 2018-003 831 Application 13/125,316 claim 13 does not recite that water as such may be incorporated as buffering agent in the compositions of Parekh, but rather recites that one type of the complex buffering agents may be aluminum compounds containing two or more of the group consisting of magnesium, calcium, nickel, carbonate, sulfate, hydroxyl, and water. Id. at 13-14. With respect to dependent claim 39 and independent claim 49, Appellants dispute the Examiner's finding that that Parekh: "provides a chemical formula for said hydrotalcite coordinated to water and said formula reads on said claimed ratio range." App. Br. 14 (quoting Final Act. 6). Appellants argue that the chemical formula of hydrotalcite shows water that is a part of the hydrotalcite. Id. (citing Parekh col. 4). Appellants argue that it is not evident from the teachings of Parekh that a person of ordinary skill could have calculated a weight ratio of the coordinated water which is a part of hydrotalcite, and hydrotalcite as an independent substance (which includes the water). Id. We are not persuaded by Appellants' reasoning. Claim 32 recites, in relevant part: "added water in an amount of not more than 5% by weight, based on a total weight of the preparation." (Emphasis added). The claim term "not more than 5%" includes within its scope all concentrations of added water less than 5%, including 0%. Parekh teaches, as Appellants expressly argue, compositions lacking added water, or water other than that which is bound to, or complexed with, ACH. See App. Br. 10. We agree with the Examiner that a person of ordinary skill would understand that Parekh therefore teaches including 0% adding water, which is within the scope of the claims, and we affirm the Examiner's rejection with respect to both Section 102(b) and Section 103(a). 8 Appeal 2018-003 831 Application 13/125,316 C. Rejection of claims 32-51 under 35. U.S.C. Â§ 103(a) Issue 1: Claims 32-51 Appellants argue that the Examiner erred because a person of ordinary skill in the art would not have been motivated to combine the teachings of Lemoine and Yamamoto. App. Br. 15. Analysis Appellants acknowledge that Lemoine teaches that, in addition to zinc pidolate, at least one additional deodorant active agent may optionally be present in the compositions it teaches, there is neither teaching nor suggestion in Lemoine that would have motivated a person one of ordinary skill in the art to use hydrotalcite. App. Br. 15-16. Appellants acknowledge that hydrotalcite is a deodorant active agent, it is neither taught by Lemoine, nor in any way related to the examples of additional deodorant active agents provided in paragraph [0036] of the reference. Id. at 16. Similarly, Appellants argue, Yamamoto does not teach that hydrotalcite is a particularly desirable and/or advantageous deodorant active agent. App. Br. 16. Rather, Appellants contend, Yamamoto teaches hydrotalcite as merely one of several examples of deodorant active agents that may be optionally included in its compositions. Id. Appellants further assert that, although some of the compositions exemplified in Yamamoto contain an additional deodorant active agent, none of these compositions contain hydrotalcite. Id. Appellants argue that this omission would have indicated to a person of ordinary skill in the art that hydrotalcite is not particularly recommended by Yamamoto, even for use as an optional additional deodorant active agent. Id. 9 Appeal 2018-003 831 Application 13/125,316 Appellants contend, therefore, that could have been only with the benefit of hindsight that the Examiner could have concluded that the teachings of Yamamoto would have motivated a skilled artisan to incorporate hydrotalcite as additional deodorant active agent (i.e., in addition to zinc pidolate) in the compositions of Lemoine. Id. at 16-17. We are not persuaded by Appellants' arguments. Lemoine expressly teaches that additional deodorant active agents may be added to its disclosed deodorant composition. Lemoine ,-J 3 6. Yamamoto, which also teaches deodorant compositions, expressly teaches the use of hydrotalcite as an active agent. Yamamoto ,-J,-J 16-18. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). In the present appeal, both Lemoine and Yamamoto teach deodorant compositions. Lemoine teaches multiple active agents may be used, and Yamamoto teaches hydrotalcite as an active deodorant agent. We agree with the Examiner that a person of ordinary skill would recognize that the combination of the elements would yield a predictable result, viz., deodorant activity. Appellants make no argument that the combination of the two references results produces unexpected, or even unusual, results. Furthermore, although Yamamoto does not teach the use of hydrotalcite in any of its exemplary embodiments: "' all disclosures of the prior art, including unpreferred embodiments, must be considered."' Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)). 10 Appeal 2018-003 831 Application 13/125,316 Appellants argue further that, contrary to the findings in a previous appeal of this application to the Board3, paragraph [0070] of Lemoine does not disclose the addition of a second deodorant (triclosan) to the required deodorant of Lemoine, i.e., zinc pidolate. App. Br. 17. Appellants assert that Formulation 1, shown in the table of paragraph [0070] of Lemoine, contains only zinc picolate (1 % weight) and Formulation 2 (prior art) contains only triclosan (0.1 % weight).4 Id. Furthermore, Appellants contend, Lemoine discourages the use of triclosan in combination with zinc pidolate, noting in paragraph [0072] thereof that zinc pico late "had a substantially narrower spectrum of bactericidal activity than that of Triclosan and showed greater respect for the cutaneous flora." Id. Nevertheless, Lemoine expressly teaches: The deodorant cosmetic composition according to the present disclosure may comprise at least one additional deodorant active agent chosen from, for example, bacteriostatic agents and bactericidal agents such as 2,4,4'-trichloro-2'-hydroxydiphenyl ether (Triclosan), 2,4-dichloro-2'-hydroxydiphenyl ether, 3',4',5'-trichlorosalicylanilide, l-(3',4'-dichlorophenyl)-3-( 4' chlorophenyl) urea (Triclocarban) and 3,7,11-trimethyldodeca- 2,5, 10-trienol (Famesol); quaternary ammonium salts, for example, cetyltrimethylammonium salts and cetylpyridinium salts; chlorhexidine and salts; diglyceryl monocaprate, diglyceryl monolaurate and glyceryl monolaurate; and polyhexamethylene biguanide salts. 3 Appeal No. 2014-008438, July 1, 2016. 4 We note that Appellants neither timely appealed the Board's July 1, 2016 Decision, nor requested reconsideration of that Decision by the Board. We consequently decline to address the Board's prior reasoning or conclusion with respect to Appellants' argument upon this matter. 11 Appeal 2018-003 831 Application 13/125,316 Lemoine ,i 36 (emphasis added). Lemoine thus expressly contemplates the addition of at least one additional deodorant active agent. Although Lemoine does not teach using hydrotalcite as an additional active deodorant agent, Yamamoto teaches, as we have explained, the use of hydrotalcite as an active deodorant agent. We consequently affirm the Examiner's rejection upon this ground. Issue 2: Claims 45, 48, and 51 Appellants argue these dependent claims separately together. App. Br. 18. Claim 45 is representative and recites: "The preparation of claim 32, wherein hydrotalcite is the only deodorant present in the preparation." Id. at 24. Appellants argue that the Examiner erred because there is no teaching or suggestion of the prior art that would cause a person of ordinary skill in the art to replace an organic compound like zinc pidolate with an inorganic substance like hydrotalcite. Id. at 18. Analysis The Examiner finds that Lemoine teaches cosmetic deodorant compositions and further teaches that additional deodorant actives may be incorporated into its composition. See Ans. 10. The Examiner concludes that the incorporation of any other deodorant active agent known for use in cosmetic formulations would have been obvious, absent a showing of unexpected results. Id. The Examiner finds that Yamamoto teaches that hydrotalcite was well known in the art as a deodorant active agent and concludes that it would therefore have been obvious to a person of ordinary skill in the art to incorporate into the formulations of Lemoine. Id. 12 Appeal 2018-003 831 Application 13/125,316 Appellants argue that Examiner has not explained why one of ordinary skill in the art would allegedly have been motivated to replace the deodorant that is a required component of the compositions of Lemoine, i.e., zinc pidolate, with a deodorant that is mentioned as merely an optionally- present deodorant in the compositions of Yamamoto. App. Br. 19. We are not persuaded by Appellants' arguments. As the Examiner has previously explained, the function of the deodorant active agents in Lemoine and Yamamoto were all well known in the art to be deodorant actives agents. See Ans., June 5, 2014, at 9. The Examiner finds that Lemoine provides no teaching or suggestion that any certain class or type of additional deodorant active must be used or that any certain class or type will not work or be detrimental to the inventive compositions. Id. at 9-10. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. Furthermore, "[i]f a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability." Id. at 417. Both zinc pi do late ( the active agent of Lemoine) and hydrotalcite ( as taught by Yamamoto) were well known in the prior art as deodorant active agents. The substitute of one known deodorant active agent for another to yield a predictable result, viz., a deodorant composition is, absent evidence of an unpredictable result or unexpected result, obvious. Appellants make no such argument, and we affirm the Examiner's rejection. Issue 3: Claims 39, 46, 49 Appellants argue these claims separately together. App. Br. 20. Claim 39 is representative and recites: "The preparation of claim 32, 13 Appeal 2018-003 831 Application 13/125,316 wherein the preparation comprises a weight ratio of hydrotalcite and water of from 1:10 to 10:1." Id. at 24. Appellants argue that the Examiner erred in finding that the combination of the references teaches or suggests the limitation of claim 39. Id. at 20. Analysis Appellants argue that the Examiner has not explained why: "Lemoine et al. teach water percentages and deodorant component percentages which read on the claimed ratios." App. Br. 20 (quoting Final Act. 9). Appellants argue that it is not apparent that Lemoine teaches water percentages and deodorant component percentages which read on the claimed ratios. Id. Appellants argue further that the percentages of hydrotalcite which are added to the compositions taught by Lemoine would necessarily be the same as the percentages of the zinc pidolate already present in the composition of Lemoine. App. Br. 20. Appellants further assert that Yamamoto does not teach or suggest any percentages of hydrotalcite in the compositions disclosed therein. Id. Finally, Appellants contend that has not explained why a person of ordinary skill in the art would have recognized the weight ratio of hydrotalcite as a result-effective variable. App. Br. 20. According to Appellants, both Lemoine and Yamamoto teach that water is only an optional component in their compositions and that hydrotalcite is similarly optional in the compositions of Yamamoto. Id. at 20-21. Appellants contend that it would not have been obvious that the weight ratio of two optional components would be recognized as result-effective variable by one of ordinary skill in the art. Id. at 21. 14 Appeal 2018-003 831 Application 13/125,316 We are not persuaded by Appellants' arguments. As we have explained supra, hydrotalcite was a deodorant active agent well known in the prior art, and it would have been obvious to a person of ordinary skill to substitute hydrotalcite for another deodorant active agent to achieve the entirely predictable result of obtaining a deodorant composition. Lemoine is directed to: "a deodorant cosmetic composition." Lemoine Abstr. Similarly, Yamamoto is directed to an: "antiperspiration deodorization cosmetic." Yamamoto ,-J 1. Contrary to Appellants' assertions, we find it self-evident that the amount of a deodorant active agent would be a result-effective variable in a deodorant composition. "[D]iscovery of an optimum value of a result effective variable ... is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980). Appellants do not dispute that Lemoine teaches the claimed ratio of deodorant active agent to water, recited in claim 32 (from which claim 3 6 ultimately depends). Because we find that it would have been well within the skill of the art to optimize weight ratio of hydrotalcite (a known deodorant active agent) and water, we affirm the Examiner's rejection of the claims. DECISION The Examiner's rejection of claims 47 and 50 under 35 U.S.C. Â§ 112, second paragraph is reversed. The Examiner's rejection of claims 32, 38-45, and 49-51 under 35 U.S.C. Â§ 102(b) is affirmed. The Examiner's rejection of claims 32-51 under 35 U.S.C. Â§ 103(a) is affirmed. 15 Appeal 2018-003 831 Application 13/125,316 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 16