Ex Parte WEI et al

Patent Trials and Appeals Board

Mar 27, 2019

13707108 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/707, 108 12/06/2012
27752 7590 03/29/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Karl Shiqing WEI
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.
12313M 4828
EXAMINER
VU, JAKE MINH
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
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 KARL SHIQING WEI, WEI JI
and VICTOR MANUEL ARREDONDO
Appeal2018-007005
Application 13/707,108
Technology Center 1600
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.
VALEK, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants submit this appeal under
35 U.S.C. § 134(a) involving claims to a personal care composition. 1
Examiner rejected claims 1, 2, 4--13, 15-18, and 21-24 as obvious. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify The Proctor & Gamble Company as the real party in
interest. App. Br. 1. Herein we refer to the Non-Final Office Action mailed
June 30, 2017 ("Non-Final Act."); Appeal Brief filed Dec. 12, 2017 ("App.
Br."); and Examiner's Answer, mailed April 23, 2018 ("Ans.").
Appeal2018-007005
Application 13/707,108
STATEMENT OF THE CASE
Claims 1, 2, 4--13, 15-18, and 21-24 are on appeal and can be found
in the Claims Appendix of the Appeal Brief. App. Br. 9-12. Claim 1 is the
only independent claim and representative of the claims on appeal. It reads
as follows:
1. A personal care composition comprising:
a) a structured cleansing phase comprising:
i) from about 5% to about 20%, by weight of the personal
care composition, of sodium trideceth (n) sulfate where n
defines the average number of ethylene oxide per molecule and
is between about 0.5 and about 2.7;
ii) an amphoteric surfactant, a zwitterionic surfactant, or
a combination thereof; and
iii) a structuring system comprising from about 0.001 %
to 0.03%, by weight of the personal care composition, of a
hydrophobically modified associative polymer and from about
0.01 % to 0.3%, by weight of the personal care composition, of
a non-associative polymer; and
b) a benefit phase comprising from about O .1 % to about
50%, by weight of the personal care composition, of a benefit
agent; wherein the structured cleansing phase and the benefit
phase are in physical contact; the benefit phase comprises
sucrose polyesters as a benefit agent; and the percentage of
hydrophobic modification is up to 2%.
App. Br. 9 (Claims Appendix).
Appellants seeks review of Examiner's rejection of claims 1, 2, 4--13,
15-18, and 21-24 under 35 U.S.C. § 103 as unpatentable over Wagner,2 in
view of McAtee3 and Wei. 4 App. Br. 3. Because Appellants do not argue
2 Wagner et al., US 2006/0079417 Al; published Apr. 13, 2006
("Wagner").
3 McAtee et al., US 5,916,575; issued June 29, 1999 ("McAtee").
4 Wei et al., US 2011/0117225 Al; published May 19, 2011 ("Wei").
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Application 13/707,108
the claims separately, we focus our analysis on claim 1 and claims 2, 4--13,
15-18, and 21-24 stand or fall with that claim. 37 C.F.R. § 41.37 (c)(l)(iv).
The issue is: Has Examiner established a prima facie case of
obviousness, and if so have Appellants provided evidence of unexpected
results that, upon reweighing the entire merits of the case, demonstrates that
the preponderance of the evidence does not support Examiner's
determination that the claims are obvious over the cited prior art?
Findings of Fact
FF 1. Wagner teaches "[ m ]ulti-phase personal cleansing compositions"
comprising the "combination of a structured surfactant phase and a benefit
phase for moisturization" and to "provide a conditioning benefit to the skin."
Wagner ,r 3.
FF2. Wagner teaches that the structured cleansing phase of its compositions
preferably includes a mixture of surfactants, including sodium trideceth
sulfate with "a high level of branching, with over 80% of surfactant
molecules comprising at least 2 branches and having an average of about 2. 7
branches per molecule in some sodium trideceth sulfates," Wagner ,r,r 35-36,
as well as amphoteric and zwitterionic surfactants. Id. ,r 28.
FF3. Wagner teaches that the cleansing phase may further include
"hydrophilic polymers" and "hydrophobically modified polymers" as
structurants that comprise "from about 0.05% to about 10% ... by weight of
the phase." Wagner ,r 76. For example, Wagner provides preferred
embodiments comprising mixtures of a hydrophobically modified associative
polymer (Stabylen 30) and a non-associative polymer (xanthum gum). 5 Id.
5 Appellants' Specification states that Stabylen 30 is a hydrophobically
modified associative polymer with "branched isodecanoate hydrophobic
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Application 13/707,108
,r 129 (Examples 2-7, 21, 22 and 30). Wagner teaches that such structurants
"enhance stability of the composition." Id. ,r 77.
FF 4. Wagner teaches that the benefit phase of its compositions may
comprise a wide variety of hydrophobic material such as oils and waxes,
lanolin and various types of hydrophobic esters. Wagner ,r,r 50, 55. Wagner
further provides specific examples of such materials, including petrolatum,
mineral oil and soy bean oil. Wagner ,r 64.
FF5. McAtee teaches personal cleaning compositions comprising an
insoluble conditioning component that "is useful for providing a conditioning
benefit to the skin or hair following the use of the product." McAtee col. 8,
11. 56-61. The conditioning component includes a conditioning agent such as
petrolatum, mineral oil, vegetable oil, and "polyesters of sugars." Id. at col.
9, 11. 32--45. McAtee teaches that sucrose polyester is a "preferred"
conditioning agent and that the "octaester of sucrose" is "particularly
preferred." Id. at col. 12, 11. 1---6.
FF6. Wei teaches multi-phase personal care compositions with a structuring
system comprising an associative polymer. Wei Abstract. Wei teaches that
preferred associative polymers for such compositions comprise "C 16 ( cetyl)
alkyl hydrophobic side chains with about 0.7% hydrophobic modification."
Id. ,I 63.
Analysis
Examiner determines it would be obvious to incorporate sucrose
polyesters into the benefit phase of Wagner's multi-phase composition
because McAtee teaches that they are the "functional equivalent" of
associative side chains" and that xanthum gum is a non-associative polymer
suitable for use in the claimed invention. Spec. 12, 11. 13-19.
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Application 13/707,108
petrolatum and doing so "would give additive conditioning effect." Final
Act. 5. Moreover, Examiner finds that it would be obvious to use a
hydrophobically modified associative polymer with about 0.7% hydrophobic
modification, as taught in Wei because Wagner teaches that such polymers
"enhance stability." Id. As for the claimed amounts of polymers, Examiner
finds that Wagner discloses overlapping amounts and that optimization of
such "parameters is a routine practice that would be obvious for a person of
ordinary skill in the art." Id. at 6; see also Ans. 6-7.
Appellants do not dispute Examiner's rationale for combining the
references on appeal, but raise three other arguments for reversing the
rejection. First, Appellants contend that Examiner has not made out a prima
facie case of obviousness because Wagner does not teach the claimed
amounts of associative and non-associative polymers. App. Br. 4--5.
Second, Appellants argue that the data in Tables 1 and 2 of the Specification
demonstrates unexpectedly improved stability from the claimed combination
of an associative with a non-associative polymer. Id. at 6-7. Third,
Appellants rely on the data in Tables 4 and 5 to argue that the claimed use of
sucrose polyesters in the benefit phase offers unexpected advantages over
other benefit agents. Id. at 7-8. Thus, Appellants contend that even if
Examiner has made out a prima facie showing of obviousness, there is
sufficient evidence of unexpected results to overcome it. Id.
We are not persuaded by Appellants' arguments and agree with
Examiner's statement of the rejection and responses to Appellants'
arguments in both the Answer and Non-Final Action, which we adopt and
incorporate by reference. In addition, we address Appellants' arguments in
tum below.
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Regarding Examiner's prima facie case, we determine that Wagner
teaches amounts of associative and non-associative polymers that overlap or
at least very nearly overlap with the claimed ranges. See FF3. Wagner
teaches preferred embodiments containing an amount of non-associative
polymer within the claimed range of 0.01 to 0.3%. See Wagner ,r 129
(Examples 5 and 21 containing 0.26% and 0.13% xanthum gum
respectively). The lower end of the general structurant polymer range, i.e.,
"about 0.05%," taught in Wagner also overlaps with the claimed non-
associative polymer range. FF3. While "0.05%" is above the "0.01 to
0.03%" range claimed for the associative polymer, both Wagner and claim 1
use the term "about" to indicate that these are approximate values.
Moreover, the range in claim 1 is calculated as the percentage "by weight of
the personal care composition," whereas Wagner's "about 0.05%" is the
percentage "by weight of the phase." FF3. One of skill would therefore
understand that the lower limit of Wagner's range is, in fact, less than 0.05%
when calculated as percentage of the multi-phase composition as a whole as
specified in claim 1.
Moreover, even if Wagner were viewed as disclosing amounts that
merely come very close as opposed to actually overlapping with the claimed
range, the record here is sufficient to support a prima facie case that the
claimed ranges are obvious. Our reviewing court has "consistently held that
even a slight overlap in range establishes a prima facie case" and that a
prima face case also "exists when the claimed range and the prior at range
do not overlap but are close enough such that one skilled in the art would
have expected them to have the same properties. " In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). The evidence here supports Examiner's
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Application 13/707,108
determination that one of skill would expect compositions containing the
polymer amounts taught in Wagner to exhibit the same properties as those
within the claimed ranges.
We are not persuaded by Appellants' argument that the viscosity
change data in Tables 1 and 2 demonstrates unexpected results from the
claimed combination of associative and non-associative polymers. "[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)."). As
explained above, Wagner teaches both associative and non-associative
polymer structurants to "enhance stability" and specifically combines the
two in several examples. FF2, FF3. Thus, it would not be surprising to one
of skill in the art that the combination of the two in the examples in Table 2
showed increased stability. Moreover, this data does not show that there is
anything critical about the claimed ranges as compared to those taught in
Wagner because all of the examples in Table 2 are within the claimed
ranges. Accordingly, there is no evidence to suggest that the same effect
would not also be observed if the amounts of associative and non-associative
polymers in the composition exceeded the claimed ranges. To the contrary,
the Specification provides much broader ranges ofup to "about 5%" for both
the associative and non-associative polymers, which evidences that similar
properties will be observed even at polymer levels exceeding the amounts
taught in Wagner. Spec. 9, 1. 28 - 10, 1. 4.
Moreover, even if the data in Table 2 did show an unexpected result
for the three examples there, that result would not be reasonably
commensurate with the scope of claim 1. See In re Harris, 409 F.3d 1339,
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1344 (Fed. Cir. 2005) (Evidence of unexpected results must also be
"commensurate in scope with the degree of protection sought by the claims"
on appeal to demonstrate non-obviousness). All three of the examples
Appellants rely upon concern a combination of the same associative polymer
(AQUPEC® SER 300C) with the same non-associative polymer (xanthan
gum). Spec 26, Table 2. Claim 1, however, is significantly broader than the
combination in these examples and encompasses a broad genus of
associative polymers in combination with any associative polymer.
Accordingly, Appellants' evidence is insufficient to demonstrate unexpected
results in light of the numerous polymer combinations its claims encompass.
We are also unpersuaded by Appellants' unexpected result argument
relating to the use of sucrose polyesters as a benefit agent. Like the data
relating to the polymer combinations above, the data Appellants rely on in
Tables 4 and 5 is not commensurate with the scope of the claims in that it
only compares one type of sucrose polyester (Sefa Soyate) at a concentration
of about 1 % by weight, whereas claim 1 encompasses a much broader range
of "about 0.1 % to about 50% by weight" for the benefit phase. Cf Peterson,
315 F.3d at 1331 (affirming finding that data showing improvement at a
concentration of 2 % did not demonstrate unexpected results "commensurate
in scope with the claimed range" of 1-3%).
In addition, even for the few examples that were tested, the data do
not show that the Sefa Soyate (Examples A, D, and E) provided
unexpectedly enhanced hydration relative to the petrolatum (Example C).
Like the Sefa Soyate examples, Example C also demonstrated improvement
versus the no treatment control after 3 hours. See Spec. 28, Table 4. Indeed,
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the data shows that after 24 hours Example C actually outperformed
Example A and was nearly the same as Example D. See id. at Table 5.
Reweighing "the entire merits of the matter" in light of Appellants'
unexpected results evidence, we determine that Appellants' evidence is
insufficient to overcome the evidence demonstrating that it would be
obvious to use the sucrose polyesters taught in McAtee as a benefit agent in
Wagner's compositions. See In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir.
1986). With respect to the polymer weight percentage limitations, we
likewise determine that the record does not show that the claimed ranges are
in anyway critical or that they provide an unexpected benefit as compared to
the polymer ranges taught in Wagner. For all these reasons, Appellants have
failed to persuade us that Examiner erred in rejecting the claims.
Accordingly, we affirm.
SUMMARY
We affirm the rejection of claims 1, 2, 4--13, 15-18, and 21-24 under
35 U.S.C. § 103 over Wagner, McAtee, and Wei.
AFFIRMED
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