Ex Parte Walling et al

Patent Trial and Appeal Board

Mar 2, 2017

11517735 (P.T.A.B. Mar. 2, 2017)

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.
11/517,735 09/08/2006 David William Walling 9565MR 2800
27752 7590 03/06/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
HOLT, ANDRIAE M
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID WILLIAM WALLING and ERIC SHANE HENLEY1
Appeal 2016-005323
Application 11/517,735
Technology Center 1600
Before JEFFREY N. FREDMAN, RYAN H. FLAX,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for making a solid cosmetic composition, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ “invention relates to cosmetic products, and more
particularly to deodorant and antiperspirant compositions and processes for
making the same.” (Spec. 1:9—10.) According to the Specification, “[i]t has
1 Appellants identify the Real Party in Interest as The Proctor & Gamble
Company. (Br. 1.)
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Application 11/517,735
now been discovered that a process for making solid cosmetic compositions,
that includes direct contact-quench crystallization by a cooling media
provides the benefits of smaller, more uniform crystal size of the resultant
composition.” (Id. at 3:20—22.)
Claims 1 and 16—26 are on appeal. Claim 1 is illustrative:
1. A process for making a solid cosmetic composition, the
process comprising the steps of:
(a) forming a first process stream comprising a solvent
and a gellant, the first process stream having a first temperature
sufficiently high to melt the gellant;
(b) forming a second process stream comprising an
antiperspirant active and a liquid emollient, the second process
stream having a second temperature that is lower than the first
temperature; and
(c) forming a mixed process stream by combining the first
process stream and the second process stream in a mixing
chamber comprising no moving mechanical parts, wherein the
first process stream and the second process stream are mixed in
the mixing chamber to direct quench the gellant of the first
process stream.
(Br. 5 (Claims App’x).)
Claims 1 and 16—26 stand rejected under 35 U.S.C. § 103(a) over
Bibby,2 Colwell,3 Kasat,4 Koch,5 and Kenics.6
2 Bibby et al., WO 02/053109 A2, published July 11, 2002.
3 Colwell et al., US 6,752,982 B2, issued June 22, 2004.
4 Kasat et al., US 5,490,979, issued Feb. 13, 1996.
5 Koch, Static Mixing, Product Information, Engineering Company Inc.
(“Koch”).
6 Press Release, Kenics® Static Mixers Offers Complete Mixing and Flow
Division, (Jan. 26, 2004) (“Kenics”).
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Application 11/517,735
In the Non-Final Action dated April 20, 2015, claims 1, 18, 21, 22,
and 23 were rejected for nonstatutory double patenting over US 7,452,526.
(Non-Final Act. 3.) In that Action, the Examiner indicated that the “terminal
disclaimer filed on July 10, 2014 ... is NOT accepted” because it “does not
comply with 37 CFR 1.321.” {Id. at 2—3; see also 7/12/14 Terminal
Disclaimer Review Decision.) Based on Patent Office records, Appellants
later refiled the terminal disclaimer along with a Statement Under 37 CFR
§ 3.73(b) (“Statement”) attesting to the assignment and ownership of the
present application. (See Terminal Disclaimer and Statement filed July 14,
2015.) The Terminal Disclaimer filed on July 14, 2015 was then accepted.
{See 12/16/15 Terminal Disclaimer Review Decision.)
Although the Examiner did not formally withdraw the double­
patenting rejection in the Examiner’s Answer, we understand the rejection to
be moot in view of the records discussed above. If it is not moot, because
Appellants provided no argument on the rejection, we summarily affirm.
DISCUSSION
Issue
Has the Examiner established by a preponderance of the evidence that
claims 1 and 16—26 would have been obvious over Bibby, Colwell, Kasat,
Koch, and Kenics?
Findings of Fact (FF)
FF 1. The Examiner’s findings of fact and statement of the rejection
are provided at pages 2—8 of the Examiner’s Answer. We adopt those
findings and provide the following for emphasis.
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FF 2. Bibby teaches a process for manufacturing solid cosmetic
compositions. (Bibby Abstract.)
FF 3. Bibby’s Figure 2 is provided below:
(Id. at Fig. 2.) As depicted, “a first component 201 for an antiperspirant
composition comprising a waxy solidifying agent melting at between 70 and
75°C, and a fraction of the carrier liquid ... is kept in a holding tank 203 . . .
at a temperature of 75°C.” (Id. at 29:3—7.) Bibby teaches “second
component 202 comprising the remaining ingredients of the antiperspirant
composition ... is stored in a reservoir 204 ... at a temperature of ambient,
about 20 to 25°C.” (Id. at 29:9—13.) Bibby teaches
components 201 and 203 [sic 202] are pumped... into an intense
mixer 207, a Sonolator, to form a pumpable antiperspirant
composition . . . [and] resultant mixture 208, having a
temperature of about 10°C below its normal solidification
temperature, is fed immediately (within about 5 seconds) via a
short line 209 through inlet 210 into a cooled pipe.
(Id. at 29:13—21.)
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FF 4. Bibby teaches
[preferably, in this improved method, the mixing of the two
components is carried out in an intense manner, so that it can
occur rapidly, for example using a Sonolator available from
Sonic Corporation. Alternative apparatus to achieve intense and
rapid mixing of the two components can also be used.
{Id. at 12:23-28.)
FF 5. Colwell teaches the manufacture of antiperspirant compositions
having a marbled appearance. (Colwell Abstract.) Colwell teaches the
components (e.g., a white portion and a blue portion) are mixed via a “static
mixer [that] may be, for example, from 2—12 Kenics-type elements available
from Chemineer, Inc. or 2—8 Koch SMX-type elements available from
Koch-Glitsch, Inc.” {Id. at 7:57—60; see also id. at Fig. 2.)
FF 6. Kasat teaches clear antiperspirant gel-stick compositions.
(Kasat Abstract.) Kasat teaches a “combined stream [of ingredients] is
mixed, e.g., via a static mixer, and then is pumped to a filler, where
dispensing containers are filled . . ., and the composition cooled to form
solid gel sticks.” {Id. at 11:13—16.)
FF 7. Koch teaches
[t]he Koch static mixing unit, an in-line mixer with no moving
parts, is a simple, cost-effective solution to [] mixing and
contacting problems. It consists of a series of stationary, rigid
elements placed lengthwise in a pipe. These elements form
intersecting channels that split, rearrange, and recombine
component streams into smaller and smaller layers until one
homogeneous stream exists.
(Koch 1 (emphasis added).) Koch teaches the “static mixing unit uses much
less power and since it has no moving parts and no electrical hookup, . . .
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Appeal 2016-005323
Application 11/517,735
requires no maintenance.” (Id.) Koch further teaches the unit’s “three-
dimensional mixing ensures uniformity in composition.” (Id. at 2.)
FF 8. Kenics teaches “Kenics® Static Mixers Offer[] Complete
Mixing and Flow Division.” (Kenics 1.) Kenics teaches “a patented helical
mixing element which produces complete radial mixing ... for any
combination of liquids, gases or solids.” (Id. at 2.) Kenics further teaches
“Kenics KM Series Static Mixers have no moving parts and require no
external power or regular maintenance.” (Id.)
Analysis
Appellants argue the patentability of claims 1 and 16—26 as a group.
We select claim 1 as representative, noting that claims 16—26 will stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bibby expressly teaches the method of claim
1, with the exception of the step of “forming a mixed process stream by
combining the first process stream and the second process stream in a
mixing chamber comprising no moving mechanicalpartsT (Br. 5 (Claims
App’x) (emphasis added); see also Ans. 2—5.) More specifically, although
the Examiner finds that Bibby teaches forming a mixed process stream by
combining the first and second streams in a mixing chamber, the Examiner
finds “Bibby [] do[es] not specifically disclose that the mixing chamber has
no moving mechanical parts or comprises static baffles to produce sufficient
turbulence for thorough mixing.”7 (Ans. 5.)
7 Claim 19 recites that “the mixing chamber comprises static baffles to
produce sufficient turbulence for thorough mixing of the first process stream
and the second process stream.” (Br. 6 (Claims App’x).)
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The Examiner turns to Colwell, Kasat, Koch, and Kenics as teaching
the use of static mixers having no moving parts, and the use of such mixers
for preparing antiperspirants and other cosmetic compositions. {Id. at 5—6.)
The Examiner concludes it would have been obvious to combine the
teachings of the cited art “and use a mixing chamber that has no moving
mechanical parts.” {Id. at 7.) The Examiner reasons the skilled person
“would have been motivated to use a mixing chamber that has no moving
mechanical parts, as in a static mix[er], because static mixers, which are
intense mixers, are known to be used in the cosmetic mixing, particularly
mixing to form antiperspirants.” {Id.) The Examiner further reasons that
because “Bibby [] does not indicate that a specific intense mixer has to be
used the skilled artisan would have been motivated to substitute or use any
intense mixer that is traditionally used to make solid antiperspirant.” {Id.)
We agree with and adopt the Examiner’s findings of fact, reasoning,
and conclusion that claim 1 would have been obvious. Although Bibby
discloses a preferred mixing chamber — the Sonolator — Bibby teaches that
alternative mixers may be used. (FF 3—4.) The preponderance of the
evidence shows that static mixers having no moving mechanical parts were
routinely used in the art for mixing components to form solid-antiperspirant
compositions. (FF 5—8.) The evidence further shows that such mixers
provide “complete mixing” and form homogeneous and uniform
compositions, while also providing other advantages (e.g., less
maintenance). (FF 7—8.) The ability of these static mixers to provide
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complete—homogeneous mixtures suggests their suitability in Bibby’s
process.8
Appellants argue “the Colwell static baffles are used to create a
product with a marbled appearance” and thus “tends to indicate that there is
not an intense mixing of the portions of the composition as the resulting
product is not homogeneous in appearance.” (Br. 2.) In contrast, Appellants
contend Bibby employs a Sonolator, which the manufacturer Sonic Corp.
describes as “‘an in-line, continuous, high pressure homogenizer that
subjects fluids to high pressure, extreme acceleration, and ultrasonic
cavitation’ (http://www.sonicmixing.como/homogenizer).” (Id. (quoting
from Sonic Corp.’s website).) Because “Bibby repeatedly refers to the
composition as being homogenized,” Appellants contend Colwell’s mixer
“appears to be the opposite” of the type of mixer preferred in Bibby and so
would not be combined in the manner proposed by the Examiner. (Br. 3.)
Appellants’ arguments are unpersuasive.
First, we observe that the Sonic Corp. website identified by
Appellants in support of its argument states expressly that “[b]y itself, the
Sonolator is actually quite small with no moving parts"9 Accordingly,
8 The cited prior art also suggests that the particular geometries of the static
mixer, as well as variables like flow and fill rates, influence the turbulence
and the intensity of the mixing in the chamber, and that these variables can
be controlled by the skilled artisan depending on the desired application.
(See, e.g., Colwell 7:57-8:7; Koch 3.)
9 (See http://www.sonicmixing.como/homogenizer (emphasis added) (last
visited Feb. 21, 2017).) The Sonolator Homogenizer video linked at the
website (at approx. 55—59 seconds into the video) similarly states that
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based on the evidence Appellants introduced, Bibby alone would appear to
teach the method of claim 1. But even setting aside that Bibby’s preferred
mixing chamber appears to use no moving mechanical parts, just as recited
in claim 1, the Examiner has identified alternative prior art mixing chambers
without moving parts. (FF 5—8.)
Second, like the Examiner, we note that claim 1 “do[es] not indicate
the composition is a homogeneous mixture.” (Ans. 10.) In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[F]imitations are not to be read into
the claims from the specification.”) (citation omitted).
With respect to the mixing chamber recited in the claim, the
Specification describes it in broad structural and functional terms.
Appellants disclose the “mixing chamber [] may comprise a pipe, and any
other suitable arrangement capable of receiving both the hot process stream
[] and the cold process stream [] therein so that the streams ... are combined
therein with sufficient turbulence to cause thorough mixing and heat
transfer.” (Spec. 9:5—8.) Similarly, the Specification indicates the “mixing
chamber [] may be a small void space containing static baffles or other
physical structure arranged to enable thorough mixing and heat transfer”
between the streams. (Id. at 9:8—10.) The prior-art mixing chambers
identified by the Examiner include physical structures such as baffles and
helical elements that would have predictably provided complete and
homogeneous mixtures (see, e.g., FF 7—8), and thus thorough mixing of
streams entering the chamber when used in Bibby’s process.
Sonolator “has no moving parts, is simple, easy to clean, and easy to use.”
(Id.)
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Third, in pointing out that Colwell used a static mixing chamber to
produce an alleged non-homogeneous antiperspirant composition,
Appellants are reading the combination of the applied art too narrowly
without considering Colwell’s teachings in combination with Koch and
Kenics. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”). Colwell produced an antiperspirant stick having a marbled
appearance because that was the appearance desired for Colwell’s particular
application. (FF 5.) Colwell tailored the mixing of the compositions to meet
its objective — selecting the number of elements and fill rate to maintain a
laminar flow and minimize turbulence. (See, e.g., Colwell 7:57—8:7.) It is,
however, equally clear that the static mixers of Koch and Kenics can provide
“complete r [a] dial mixing” and produce a “homogeneous stream” of the
mixed components when a more intense mixing is desired, such as in
Bibby’s method. (Ans. 9—10; FF 7—8.) Appellants have not provided
persuasive evidence or argument that the skilled person would have
considered art-recognized alternative mixers — such as those in Koch or
Kenics — to be unsuitable for use in Bibby’s method. (Ans. 11.)
Conclusion of Law
We conclude that the Examiner established by a preponderance of the
evidence that claim 1 would have been obvious over Bibby, Colwell, Kasat,
Koch, and Kenics.
Claims 16—26 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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SUMMARY
We affirm the rejection of claims 1 and 16—26 under 35 U.S.C.
§ 103(a) over Bibby, Colwell, Kasat, Koch, and Kenics.
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
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