Ex Parte Olsen et al

Patent Trial and Appeal Board

Nov 19, 2012

11470635 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte AMY LYNN OLSEN and PHILIP EDWARD MINER
__________

Appeal 2011-013268
Application 11/470,635
Technology Center 1600
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a cosmetic composition. The Patent Examiner rejected
the claims for lack of written description and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
Claims 1, 3-5, and 7-11 are on appeal. Independent claims 1 and 9 are
representative and read as follows (emphases added):
1. A cosmetic composition comprising:
(i) from about 0.5 to about 5% of tapioca starch by weight of the
composition, the tapioca starch being a partially hydrated
granular substance having an average particle size ranging
from about 500 to about 10,000 nm;
(ii) from about 0.001 to about 5% of ethylene brassylate by weight
of the composition;
(iii) from about 0.01 to about 10% of an emulsifier by weight of the
composition;
(iv) optionally, an effective amount to provide an initial silky feel
upon skin contact of a polysiloxane;
(v) optionally, from about 0.1 to about 40% of polyhydric alcohol
by weight of the composition;
(vi) optionally, an effective amount to preserve of a preservative;
and
(vii) a cosmetically acceptable carrier.

9. A cosmetic composition comprising:
(i) tapioca starch;
(ii) ethylene brassylate: and
(iii) a cosmetically acceptable carrier;
wherein the ethylene brassylate and tapioca starch are present in a relative
weight ratio from about 1:1 to about 1:3.

The Examiner rejected the claims as follows:
I. claims 9 and 11 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement because they contain
new matter; and
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II. claims 1, 3-5, and 7-11 under 35 U.S.C. § 103(a) as unpatentable over
Randall
1
and Vanonou.
2

I
Issue
The Examiner‟s position is:
Claim 9 recites a weight ratio of ethylene brassylate to tapioca
starch of “about” 1:1 to “about” 1:3. There is insufficient
support for this limitation in the originally filed disclosure. The
specification discloses ratios of ethylene brassylate to tapioca
starch of 1:1 and 1:3 (table VIII). However, these values are not
modified by the term “about,” whereas in the claims [9 and 11]
as presented the values are modified by the term “about.” The
term “about” expands the scope of the subject matter claimed to
include values that are both above and below the originally
disclosed values, and this expanded scope is not supported by
the originally filed disclosure.

(Ans. 5.)
Appellants contend that Specification page 4, paragraph [00014] lists
a number of relative weight amount ranges, and there is disclosure of an
upper range that recites “about 3.1” and “about 1:1,” thus providing
“[l]iteral support is present for the word „about.‟” (App. Br. 7.)
In response, the Examiner acknowledges that “[t]he specification
modifies some of the values disclosed by the term „about,‟” but finds that
“[n]ot all values in the specification are modified by the term „about,‟ and
there is no teaching in the originally filed disclosure that all terms are to be
treated as modified by the term „about.‟” (Ans. 9.)

1
William B. Randall et al., US 5,945,090, issued Aug. 31, 1999.
2
Ilana Vanonou, US 5,587,168, issued Dec. 24, 1996.
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The issue with respect to this rejection is whether a person of ordinary
skill in the art would have found that Appellants‟ originally filed disclosure
demonstrated possession of the ratio range “from about 1:1 to about 1:3.”
Findings of Fact
1. Specification Table VIII is reproduced here:

(Spec. 27.)
2. The Specification provides:
Advantageously the relative weight amounts of ethylene
brassylate to tapioca starch may respectively range from about
1:200 to about 5:1, preferably from about 1:100 to about 3:1,
more preferably from about 1:10 to about 1:1, optimally from
about 1:5 to about 1:2 by weight of the composition.

(Spec. 4, [00014].)
Principles of Law
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.

In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).

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Analysis
After considering the evidence, including the weight data for samples
D and E in Table VIII and the broadness of disclosure in Specification
paragraph [00014], we agree with Appellants that a person of ordinary skill
in the art would have understood Appellants to have been in possession of
the ratio range “from about 1:1 to about 1:3” at the time the Specification
was originally filed. The new matter rejection is reversed.

II
Issues
The Examiner‟s position is that Randall described a sunscreen
composition, i.e., a cosmetic composition, comprising finely ground tapioca
powder for a soft feeling, a solvent, and emulsifier, a silicone, and a
fragrance. (Ans. 5-6, citing Randall, col. 2.) Noting that the percentages in
Appellants‟ composition are encompassed by, or overlap, the percentages
Randall disclosed, the Examiner concluded that the percentages listed in
Appellants‟ claims would have been obvious. (Id.) Although Randall did
not teach ethylene brassylate, the Examiner found that Vanonou described
using ethylene brassylate as a fragrance for cosmetics. (Id. at 6.) The
Examiner concluded that it would have been obvious to use ethylene
brassylate as Randall‟s fragrance, reasoning that “[g]enerally, it is prima
facie obvious to select a known material (such as ethylene brassylate) for
incorporation into a composition, based on its recognized suitability for its
intended use (as a fragrance for cosmetic compositions).” (Id.)
The Examiner considered claim 1‟s requirements for tapioca starch
that is (i) “partially hydrated,” and (ii) a “granular substance having an
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average particle size ranging from about 500 to about 10,000 nm.” (Id. at 6-
8.) The Examiner found Randall “silent as to the hydration state of the
tapioca.” (Id. at 8.) However, the Examiner noted that Randall taught
adding the tapioca starch to an oil-in-water emulsion at 30 °C, and
Appellants‟ Specification teaches in Example 14 “that keeping the
temperature less than 40 °C ensures that the starch is only partially
hydrated.” (Id.) On these facts, the Examiner reasoned:
it appears reasonable to conclude that the tapioca starch in the
composition disclosed by Randall et al. is partially hydrated as
the instant specification teaches that the addition of starch to an
oil-in-water mixture at a temperature of no more than 40°C
leads to partial hydration, and Randall et al. adds the starch at a
very similar temperature (28 and 30°C).

(Id.)
The Examiner took two approaches to claim 1‟s requirement that the
“average particle size rang[e] from about 500 to about 10,000 nm.” First,
the Examiner found that Randall‟s 20 micron (20,000 nm) particle size is
“about” 10,000 nm. (Id. at 6.) The Examiner reasoned that because
Appellants‟ Specification “discloses that the invention may use tapioca
starch with a median particle size of from about 1 to 100 microns (paragraph
[9]),” the 20 micron size Randall disclosed “will be useful and have the
same function as the rest of the range recited.” (Id. at 7.) Second, the
Examiner found that Randall disclosed a second type of tapioca, “sold under
the trade designation Tapioca Pure by National Starch and Chemical
Company.” According to the Examiner, “[t]his is the same tapioca,
source[d] from the same company and sold under the same trade name, as
used in examples of the instant application (table 1, examples 1-8). Thus,
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this tapioca starch disclosed by Randall et al. possesses the same average
particle size as the tapioca starch used in the working examples of the instant
specification.” (Id. at 7-8.)
Appellants present three issues, and contend that the Examiner erred
by:
(1) finding that Randall‟s Tapioca Pure starch had an average particle
size ranging from about 500 to about 10,000 nm (App. Br. 7-8);
(2) finding that Randall disclosed partially hydrated tapioca starch
(App. Br. 8-9); and
(3) concluding that there would have been an expectation of success
in using ethylene brassylate to modify tapioca starch and thereby improve
afterfeel (App. Br. 9-10).

Findings of Fact
3. Randall disclosed a sunscreen composition that comprised:
. . .
(b) about 1 to about 11.26 percent of a solvent such as
alcohol;
. . .
(d) about 1 to about 16.89 percent of tapioca flour;
In addition, the described sunscreen composition may include by
weight:
(o) about 0 to 1.5 percent silicone;
(p) about 0 to 1.5 percent silicone emulsifier;
(s) about 0 to 0.5 percent fragrance;
. . . .

(Randall, col. 2, ll. 7-52.)
4. Randall disclosed:
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The tapioca is ground to a particle size of 20 microns and
can be used in either a powdered product, or in an emulsion
system which is the preferred form here. The powder provides a
dry powdery soft skin feel in either powders or emulsions. An
excellent powder form of tapioca is sold under the trade
designation Tapioca Pure by National Starch and Chemical
Company of Bridgewater, N.J.

(Randall, col. 3, ll. 34-40.)
5. Randall‟s Example 1 described mixing tapioca starch into a water-oil
emulsion: “With the batch just described at a temperature not higher
than 30° C., the tapioca flour is added and mixed for at least 30
minutes until the final formulation is smooth.” (Id. at col. 4, ll. 31-
33.)
6. Randall‟s Example 2 described mixing tapioca starch into a water-oil
emulsion: “The final step consists of slowly adding the tapioca flour
and mixing for at least 30 minutes with batch temperature at not more
than 28° C.” (Id. at col. 5, ll. 29-31.)
7. Appellants‟ Specification states:
Tapioca starch is a first component of the present invention. . .
. This starch is recovered by wet grinding the washed roots and
continuous re-washing, resulting in a pure carbohydrate.
Particularly preferred is a powder source with a median particle
size ranging from about 1 to about 100 micron, (1000 nm to
100,000 nm) preferably from about 5 to about 15 micron,
optimally from about 10 to about 30 micron.

The starch is commercially available under the tradename
TAPIOCA PURE (28-1810) from the National Starch &
Chemical Company, Division of ICI. An alternative source is
TIStar Tapioca Starch sold by the Multi-Kem Corporation.

(Spec. 3, [0009] and [00010].)
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8. Appellants‟ Specification describes examples using tapioca starch
sold under the trademark “Tapioca Pure.” (Spec. 18, Table 1.)
9. Appellants‟ Specification states: “the tapioca starch is added last to
the oil and water phases at a temperature no higher than 40°C. This
ensures that the tapioca starch becomes only partially hydrated.”
(Spec. 25, [00065].)
10. Appellants‟ Specification states:
Ethylene brassylate is a second component of the present
invention. This material is available from many sources
including Takasago International Corporation. Amounts of
ethylene brassylate may range from about 0.001 to about 5%,
preferably from about 0.01 to about 1 %, and more preferably
from about 0.1 to about 0.5% by weight of the composition.

(Spec. 4, [00013].)
11. Appellants‟ Specification discloses “slip work load” results as
follows:

12. According to Appellants‟ Specification:
The results shown in Table IX demonstrate that a combination
of ethylene brassylate and tapioca starch (Samples D and E)
provide better slip results (lower friction) than either of the
separate materials (Samples A and C). Further, the results of
ethylene brassylate with tapioca are much better than the
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ethylene brassylate combination with corn starch. Compare
Sample C to Sample F.

(Spec. 27, [00068].)
Principles of Law
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product. . . . Whether the rejection is based on “inherency”
under 35 U.S.C. § 102, on “prima facie obviousness” under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

Analysis
We begin with claim 9 because it defines a composition comprising
tapioca starch without regard to particle size or hydration. Of the issues
presented, only issue (3), reasonable expectation of success, is pertinent to
claim 9. Appellants contend that Vanonou mentioned ethylene brassylate
among 70 fragrance chemicals, and “[a] skilled chemist seeking to improve
silky afterfeel in a chemical composition would have no reasonable
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expectation of success that ethylene brassylate (a fragrance component)
could modify tapioca starch and thereby improve afterfeel.” (App. Br. 9.)
First, the art is cosmetic compositions, not chemical compositions
generally as Appellants contend. Accordingly, the person of ordinary skill
in formulating cosmetic compositions would be a person informed in this
art, not merely a general chemist as Appellants contend. The person of
ordinary skill in cosmetic formulations would have been aware that Randall
taught a composition comprising tapioca starch and a fragrance. As Randall
did not specify the fragrance, and the person of ordinary skill in the cosmetic
composition art would have been aware of Vanonou‟s teaching that ethylene
brassylate was a known fragrance suitable for use in cosmetic compositions,
the evidence supports the Examiner‟s reasoning. That 70 suitable fragrances
were known for the same purpose does not make the choice of any one of
them any less obvious. See, e.g., Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art‟s disclosure of
a multitude of combinations failed to render any particular formulation less
obvious).
Second, Appellants‟ argument assumes that ethylene brassylate
modifies tapioca starch and improves afterfeel. Appellants do not identify
evidence to support this assumption. In our review of the Specification, we
note evidence that combinations of tapioca starch and ethylene brassylate
show apparently lower slip work load than compositions missing one or the
other. (FF 11 and 12; see FF 1 for sample compositions.) Assuming this is
the evidence Appellants rely on for their argument, it is not evidence of
nonobviousness because it does not make a comparative showing to the
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closest prior art of record, Randall‟s formulation of tapioca starch and
fragrance. See Baxter Travenol, 952 F.2d at 392.
As the arguments pertinent to claim 9 are unpersuasive, we affirm the
obviousness rejection of claim 9. Dependent claim 10 has not been argued
separately and therefore falls with claim 9. 37 C.F.R. § 41.37(c)(1)(vii). As
dependent claim 11 contains limitations regarding starch particle size and
hydration, we turn to those arguments next.
Claim 11 and claim 1 have similar limitations of particle size and
hydration, the subject of issues (1) and (2). Issue (3) is also applicable to
claims 11 and 1, but we apply the reasoning above and decide issue (3) in
the Examiner‟s favor for claims 11 and 1.
As to issue (1), particle size, Appellants first contend the Examiner
erred in finding 20 microns to read on “about” 10 microns (10,000 nm).
(App. Br. 7-8.) Like Appellants, we find the Examiner‟s reasoning on that
point unpersuasive. However, the Examiner made an alternative finding that
Randall taught using another tapioca starch “sold under the trade designation
Tapioca Pure by National Starch and Chemical Company.” (Ans. 7, citing
Randall at col. 3; see FF 4.) The Examiner found that because Appellants‟
Specification described using the same “Tapioca Pure” starch, Randall‟s
starch is the same, necessarily having the same particle size distribution. (Id.
at 8.)
Appellants‟ Specification discloses that starch of the requisite size “is
commercially available under the tradename TAPIOCA PURE (28-1810)
from the National Starch & Chemical Company.” (FF 7.) Also as found by
the Examiner, Appellants‟ Specification discloses example compositions
formulated with “Tapioca Pure” starch. (FF 8.) Appellants contend that the
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preferred particle size from about 500 to about 10,000 nm “is not the same
as TAPIOCA PURE (28-1810).” (App. Br. 8.) This argument is not
persuasive because it is not consistent with the Specification‟s plainly
opposite statement. Appellants offer no factual evidence about the particle
size of TAPIOCA PURE, and no evidence that TAPIOCA PURE and
TAPIOCA PURE (28-1810) identify different products. On this record, we
conclude that the Examiner has produced sufficient evidence to shift the
burden to Appellants to provide evidence that Randall‟s Tapioca Pure did
not have the requisite particle size. See Spada, 911 F.2d at 708; Best,
562 F.2d at 1255.
As to issue (2), Appellants contend “it does not appear reasonable to
conclude that Randall et al. possessed . . . a partially hydrated starch.” (App.
Br. 9.) We disagree. The Examiner noted that Randall mixed its starch into
the water oil emulsion at temperatures no higher than 30°, and in an example
at 28°. Appellants‟ Specification instructs that the mixing be done at “no
higher than 40°C. This ensures that the tapioca starch becomes only partially
hydrated.” (FF 9.) On this record, we conclude that the Examiner provided
sufficient evidence and sound technical explanation to shift the burden to
Appellants to show that Randall‟s composition did not include partially
hydrated tapioca starch. See Spada, 911 F.2d at 708; Best, 562 F.2d at 1255.
We acknowledge Appellants‟ contentions that the Examiner
“conjectures a partial hydrolysis of the starch” and “[a]pparently Randall at
al. seeks to avoid any hydrolysis.” (App. Br. 8.) We find these contentions
unpersuasive because the Examiner made findings concerning hydration, not
hydrolysis, because Appellants have not shown that hydrolysis (the
hydrolytic degradation of starch) is relevant to the partial hydration of
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starch, and because the evidence supports finding that Randall described
partially hydrated tapioca starch.
We affirm the obviousness rejections of claims 11 and 1. Claims 3-5,
7, and 8 have not been argued separately and therefore fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We reverse the rejection of claims 9 and 11 under 35 U.S.C. § 1112,
first paragraph.
We affirm the rejection of claims 1, 3-5, and 7-11 under 35 U.S.C.
§ 103(a) as unpatentable over Randall and Vanonou.
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

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