Ex Parte Walling et alDownload PDFPatent Trial and Appeal BoardMar 2, 201711517735 (P.T.A.B. Mar. 2, 2017) Copy Citation 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 mayer.jk @ pg. com 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.) Appeal 2016-005323 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”). 2 Appeal 2016-005323 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. 3 Appeal 2016-005323 Application 11/517,735 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.) 4 Appeal 2016-005323 Application 11/517,735 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, . . . 5 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).) 6 Appeal 2016-005323 Application 11/517,735 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 7 Appeal 2016-005323 Application 11/517,735 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 8 Appeal 2016-005323 Application 11/517,735 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.) 9 Appeal 2016-005323 Application 11/517,735 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). 10 Appeal 2016-005323 Application 11/517,735 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 11 Copy with citationCopy as parenthetical citation