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.
17/195,752 03/09/2021 Min LI 13282-00-US-01-PC 1152
23909 7590 09/03/2025
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
LEE, SIN J
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
09/03/2025 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MIN LI, AIXING FAN, THOMAS BOYD, VINAY BHARDWAJ, and JASON NESTA
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Appeal 2024-003988
Application 17/195,752
Technology Center 1600
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Before CHRISTOPHER G. PAULRAJ, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1appeals from the Examiner's decision to reject claims 1 and 10-14. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
The claims are directed to personal care compositions. Claim 1, reproduced below, illustrates the claimed subject matter:
1. A personal care composition comprising:
a blend of short chain fatty acids; and a cosmetically acceptable carrier; wherein the blend of short chain fatty acids comprises:
a first short chain fatty acid comprising lactic acid; and a second short chain fatty acid comprising pyruvic acid, a derivative thereof or a salt thereof;
wherein a weight ratio of the first short chain fatty acid to the second short chain fatty acid is about 4:1. Appeal Br. 18 (Claims App.).
REFERENCES
The Examiner relies on the following references to reject the claims:
Name Reference Date
Hinz US 5,785,962 July 28, 1998 Wu US 2017/0181950 A1 June 29, 2017 Betsuchina JP 9-110650 April 28, 1997 E.V.E. Essential Vital Elements Serum Source, Mintel Database (GNPD AN: 1666406), available at www.gnpd.com
Nov. 2011
'715 Appl. US Appl. No. 17/195,715 filed Mar. 9,
2021
'990 Appl. US Appl. No. 17/310,990 filed Sept. 3,
2021
'710 Appl. US Appl. No. 17/901,710 filed Sept. 1,
2022
'746 Appl. US Appl. No. 18/305,746 filed Apr. 24,
2023
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REJECTIONS
The Examiner maintains the following rejections:
I. Claims 1 and 10-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Wu.
II. Claims 1, 10, 13 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Hinz.
III. Claims 1 and 10-14 are rejected under 35 U.S.C. § 103 as being unpatentable over Betsuchina.
IV. Claims 1 and 10-14 are rejected under 35 U.S.C. § 103 as being unpatentable over E.V.E.
V. Claims 1 and 10-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 44 and 46-48 of copending '990 Appl.
VI. Claims 1 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 46, 58-60 and 62 of copending '715 Appl.
VII. Claims 1, 10, 13 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8-11 and 19 of copending '710 Appl.
VIII. Claims 1, 13 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 10, 15 and 16 of copending '746 Appl.
ANALYSIS
Obviousness Rejection Based on Betsuchina (Rejection III) The Examiner rejects claims 1 and 10-14 as obvious based on Betsuchina. In particular, the Examiner points to Example 2 of Betsuchina as teaching a formulation that includes 0.25 wt. % lactic acid (the claimed first short chain fatty acid) and 0.05 wt. % pyruvic acid (the claimed second short chain fatty acid). Final Rej. 6. Although this formulation only has a weight ratio of 5:1 for these two fatty acids, the Examiner contends that the claimed
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ratio of "about 4:1" covers a range of 3.6 to 4.4 (based on the Specification's definition of "about" to cover a range of 10%), and that Betsuchina's ratio of 5:1 in Example 2 is "so close" to the upper end of the claimed range such that it would be prima facie obvious. Id. at 7 (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)).
Alternatively, the Examiner points to Betsuchina's general teaching that the organic acid component of the composition, such as pyruvic acid, can be in an amount that ranges from 0.05 wt. % to 2.5 wt. %. Id. (citing Betsuchina ¶ 7). Based on this disclosed range, the Examiner calculates the weight ratio of lactic acid to pyruvic acid taught by Betsuchina to be in the range of 0.1-5, which overlaps with the claimed "about 4:1" ratio. Id. The Examiner contends that this overlap renders the claims prima facie obvious. Id. (citing In re Wertheim, 541 F.2d 257 (CCPA 1976)). In response to this rejection, Appellant points out that Betsuchina describes the amount of organic aid in the composition to be "0.01% by weight or more, particularly 0.05% by weight or more," and "[t]he upper limit of the content of the organic acid is not particularly limited." Appeal Br.11. Based on the Examiner's reasoning, Appellant contends "if a person of skill in the art selected pyruvic acid from the list of organic acids in paragraph [0007], the ratio of lactic acid to pyruvic acid could range from as low as 1:0.1 to as high as 19:1." Id. Accordingly, Appellant argues that the claimed ratio of "about 4:1" is not obvious in view of this overly broad range taught in Betsuchina. Id.
Appellant additionally argues that the claimed parameter was not recognized as "result-effective." Id. at 11-12. Appellant points to the data from Tables 1-3 in the specification as showing that the recited fatty acids
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exhibit synergistic effects on tyrosinase inhibition, collagenase inhibition, and elastase inhibition. Id. at 12.
We find that the Examiner has the better position with regard to this rejection. We are not persuaded that the 5:1 ratio taught in Betscuhina's Example 2 is, by itself, "so close" to the claimed "about 4:1" ratio that would render the claims prima facie obvious. The Specification defines
"about" to allow for a range of ± 10%, and it is not clear why a 25% deviation would still be considered sufficiently "close" to the claimed ratio so as to render the claims prima facie obvious under the rationale of Titanium Metal. As explained recently by the Federal Circuit, although a strict overlap between the claimed range and the prior art range is not required for obviousness, the Examiner must still provide a showing that the ranges are "close enough that one skilled in the art would have expected the them to have the same properties." Janssen Pharms., Inc. v. Teva Pharms. USA, Inc., 141 F.4th 1367, 1375 (Fed. Cir. 2025) (emphasis in original). Nonetheless, as noted in the Examiner's alternative rationale, Betsuchina is not limited to only the specific amounts disclosed in Example 2, and instead teaches a range of amounts for the pyruvic acid component. See Betsuchina ¶ 7 (teaching that the "upper limit of the organic acid content is preferably about 5% by weight, particularly 2.5% by weight," and the
"lower limit of the organic acid content is preferably 0.05% by weight, particularly 0.25% by weight"). Betsuchina further teaches that "lactic acid, is contained in the total composition in an amount of 0.01% by weight or more, particularly 0.05 to 2% by weight, and more preferably 0.1 to 1% by weight." Id. ¶ 6. The selection of amounts for the pyruvic acid and lactic acid components within those disclosed ranges would result in a range for
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the ratio of those components that encompasses the claimed ratio of "about 4:1." We agree with the Examiner that this selection would be a matter of routine optimization that renders the claims prima facie obvious. See In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."). Indeed, as is the case here, an obviousness conclusion is even more compelling when "the claimed ranges are completely encompassed by the prior art." Id. at 1330. We have considered, but are not persuaded by, Appellant's argument that Betsuchina discloses an "overly broad range" that negates the prima facie case of obviousness. It is not clear how Appellant arrives at a "ratio of lactic acid to pyruvic acid that could range from as low as 1:0.1 to as high as 19:1" (Appeal Br. 11), but to the extent that Appellant relies upon Betsuchina's disclosure that the organic acid component could be as low as 0.01% with no particular upper limit, Appellant ignores Betsuchina's teaching that the preferred lower limit for the organic acid is "particularly 0.25%" and the preferred upper limit is "particularly 2.5%." Betsuchina ¶ 7. We do not find that Betsuchina discloses such an overly broad or unbounded range of amounts for the acid components that would not invite the skilled artisan to conduct routine optimization within the more preferred ranges. Cf. Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed. Cir. 2011) (holding that ordinary motivation to optimize did not apply where disclosure was 68,000 protein variants including 2,332 amino acids).
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We are also not persuaded by Appellant's argument that the claimed parameter was not recognized as "result-effective." Although Betsuchina does not specifically discuss the ratio of lactic acid to pyruvic acid, it does recognize that the specific components used in the composition and amounts thereof can be relevant to imparting a desirable "hair conditioning effect."
See Betsuchina ¶ 4 (noting that the inventor discovered that "an aqueous hair treatment composition containing a certain amount of lactic acid, citric acid, and pyrrolidone carboxylic acid is sufficient" and "has a hair conditioning effect"); id. ¶ 7 (noting that "[t]he hair treatment composition of the present invention may further contain an organic acid in order to further increase the hair conditioning effect"). Accordingly, we find that the amounts of both the lactic acid and pyruvic acid components in the composition would have been recognized as result effective variables that the skilled artisan would have optimized to achieve a desirable hair conditioning effect. Finally, we are unpersuaded by Appellant's argument that the alleged synergistic effects on tyrosinase inhibition, collagenase inhibition, and elastase inhibition shown in Tables 1-3 of the Specification is evidence of unexpected results that rebuts the prima facie case of obviousness. Even assuming that the data presented in these tables shows true synergism for those particular assays, the data does not demonstrate that the synergistic effects are specifically due to the claimed ratio of "about 4:1" or that any such synergism would not have been expected for other ratios encompassed by Betsuchina's disclosed amounts. See In re Kollman, 595 F.2d 48, 55 n.6 (CCPA 1979) ("Synergism, in and of itself, is not conclusive of unobviousness in that synergism might be expected."); In re Huellmantel,
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324 F.2d 998, 1003 (CCPA 1963) ("[W]e attribute no magic status to synergism per se since it may be expected or unexpected."). Accordingly, we affirm the obviousness rejection of claim 1 based on Betsuchina. Appellant does not raise any separate arguments with regard to dependent claims 10-14, and those claims therefore fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2023).
Remaining Obviousness Rejections (Rejections I, II, and IV) The Examiner further rejects the claims as obvious based independently on Wu, Hinz, or E.V.E. Unlike Betsuchina, we do not find any disclosure in Wu, Hinz, or E.V.E. regarding a specific ratio or amounts of lactic acid and pyruvic acid that is sufficiently close to or otherwise overlaps with the claimed ratio of about 4:1 to render the claims prima facie obvious. For example, Wu's Example 1 only discloses a 3.2:1 ratio of lactic acid to sodium pyruvate, and it is not clear why a skilled artisan would have adjusted or optimized the amounts of the fatty acid components in the composition based on the broad range of the pyruvic acid to antioxidant ratio disclosed elsewhere in the reference. Hinz's Example 2 only discloses a 2:1 ratio of the lactic acid to pyruvic acid, and it is not clear why a skilled artisan would have adjusted or optimized the amounts of the fatty acid components in the composition based on the broad recitation in claim 1 of Hinz that the composition includes "at least 0.1% by wt. lactic acid." E.V.E. fails to disclose any specific amounts for the lactic acid or sodium pyruvate in the composition.
Accordingly, we reverse the obviousness rejections based on these references.
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Nonstatutory Double Patenting Rejections (Rejections V-VIII) The Examiner has also provisionally rejected the claims based on nonstatutory double patenting grounds in view co pending applications 17/310,990; 17/195,715; 17/901,710; and 18/305,746. Appellant acknowledges the outstanding obviousness-type double patenting rejections, but has elected to defer addressing those rejections until there is otherwise allowable subject matter in the present application. Appeal Br. 15-16. Thus, we summarily affirm the provisional rejections on the ground of nonstatutory obviousness-type double patenting based upon the Examiner's explanation and reasoning.
CONCLUSION
For the reasons stated, we affirm the Examiner's obviousness rejection based on Betsuchina. We also summarily affirm the Examiner's nonstatutory double patenting rejections.
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DECISION SUMMARY
The following table summarizes our decision:
Claim(s) Rejected
35 U.S.C. § Reference(s)/ Basis Affirmed Reversed
1, 10-14 103 Wu 1, 10-14 1, 10, 13, 14 103 Hinz 1, 10, 13, 14 1, 10-14 103 Betsuchina 1, 10-14 1, 10-14 103 E.V.E. 1, 10-14 1, 10-14
Provisional Nonstatutory
Double Patenting
'990 Appl.
1, 10-14
1, 11-14
Provisional Nonstatutory
Double Patenting
'715 Appl.
1, 11-14
1, 10, 13, 14
Provisional Nonstatutory Double Patenting
'710 Appl.
1, 10, 13,
14
1, 13, 14
Provisional Nonstatutory Double Patenting
'746 Appl.
1, 13, 14
Overall Outcome
1, 10-14
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). See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
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