Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE JOHN R. WITTPENN, JR. AND RICHARD L. GIOVANONI
Appeal No. 03-4,043
July 17, 1990
HEARD: June 27, 1990
Application for Patent filed April 3, 1987, Serial No. 034,043. Surfactant Compositions.
Walter D. Ames et al. for appellants
Supervisory Primary Examiner--Paul Lieberman
Examiner--Hoa Van Le
Before Pellman, Steiner and W. Smith
Pellman
Examiner-in-Chief
This is an appeal from the examiner's decision finally rejecting claims 1 through 7, 16 and 17, remaining claims 8 through 15 having been withdrawn from consideration by the examiner.
The subject matter on appeal involves a composition having good foaming features and exhibiting non-irritating characteristics with respect to tissues of the eyes and surrounding areas. The composition comprises an anionic surfactant, a nonionic surfactant and an induced nonionic surfactant, the induced nonionic surfactant being present in an amount sufficient to enhance the foaming properties of the anionic surfactant, said composition being maintained at a substantially neutral pH. To describe the invention in greater detail, claims 1 and 2 are reproduced as follows:
1. A mild surfactant composition having good foaming characteristics and such non-irritating characteristics that it is suitable for use on periocular surface tissues, comprising:
(a) an anionic surfactant having high foaming properties and being mildly irritating to human tissues; said surfactant being present in cleansing quantities;
(b) a nonionic surfactant in an amount capable of reducing the irritant properties of said anionic surfactant and capable of emulsifying or solubilizing body surface physiologic debris; and
(c) an induced nonionic surfactant in an amount sufficient to enhance the foaming properties of the anionic and nonionic surfactants while further reducing the irritating characteristics of the anionic surfactant,
(d) the pH of said composition being maintained substantially in neutrality, at which said last-named surfactant is induced to act as a nonionic surfactant rather than shown the ionic properties it exhibits in an acid medium.
2. A surfactant composition as claimed in claim 1, in which said induced nonionic surfactant is an amine oxide.
For evidence of obviousness, the reference identified below is cited by the examiner:
Roggenkamp 3,943,234 March 9, 1976
Reference cited by the Board of Appeals:
Verdicchio et al. (Verdicchio) 3,950,417 April 13, 1976
All the claims stand rejected for being unpatentable (35 U.S.C. 103) in view of Roggenkamp. It is the examiner's position that Roggenkamp discloses a substantially neutral pH detergent composition comprising each of the surfactants recited in appellants' claim 1. At page 3 of the answer, the examiner points to column 5, lines 62-68 for the nonionic surfactant, column 5, lines 11 through 61 for the anionic surfactant and column 2, lines 24-29 for the amine oxide. We are then directed to column 4, line 17 and claims 1 and 7 for the pH range of from 4 to 6.9. At page 4 of the answer, the examiner concludes that:
*2 Since patentee's composition contains each of the requisite chemical ingredients as disclosed in the instant claims and its pH solution is within that of applicants (patentee's pH solution of about 6.9 and applicants' pH solution of about 6.7-7.5), the instantly appealed claims are found to be rendered prima facie obvious over Roggenkamp.
The examiner also relies upon the ingredients shown in the compositions of Examples I and III. The patentee discloses 3.5% by weight of an amine oxide in Example I and 4.5% by weight of an amine oxide in Example III. Additionally, in Example I, 25% by weight of alkyl ether sulfate and 15% by weight of alkyl sulfate are shown and in Example III, 8% of olefin sulfonate and 25% of alkyl ether sulfate, both by weight, are disclosed. The examiner then points out that each of the examples may also contain .5 to 10% by weight of a nonionic surfactant.
We shall not sustain the rejection before us. At claim 1 of Roggenkamp, the patentee defines a composition containing about 1 to about 10% by weight of an amine oxide and 5 to about 50% by weight of a non-interfering auxiliary anionic surfactant. Although the patent, at column 5, discloses that the composition may also contain a nonionic surfactant, the reference further teaches that the composition may contain cationic and amphoteric surfactants. However, no preference is indicated for any particular component. Thus, there is no apparent basis for the examiner's conclusion that the claimed composition would have been prima facie obvious. It will be appreciated that the present situation does not involve the mere combination of components for the same purpose that each would individually be used. Compare In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980).
Turning to the preamble to claim 1, we observe that the claim is limited to a composition that is non-irritating to perioccular surface tissues. Apparently recognizing the criticality of the pH in a composition designated to be non-irritating to eye tissue, the examiner holds that it would have been obvious to select the pH value of 6.9 from Roggenkamp's disclosed range of 4 to about 6.9. However, in the absence of some motivation to select a neutral pH, the examiner's conclusion lacks any logical foundation. In the examples, Roggenkamp employs a pH of 6 (Examples I and III) or about 5.5 (Example III). The noted limitation in the instant claims cannot be ignored. In addition to the decision in Ex parte Conner, 215 USPQ 384 (BPAI 1981), cited in appellants' reply brief, attention is invited to the decision in In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982), wherein both the majority opinion and the dissent treat the term "a physiologically acceptable carrier suitable for topical use."
Accordingly, since we have been apprised of no disclosure within the Roggenkamp reference that would have led the routineer to make the critical selections to arrive at the claimed surfactant composition, we find that no prima facie case of obviousness has been established and that the rejection before us cannot be sustained.
*3 Under the provisions of 37 C.F.R. 1.196(b), we exercise our discretion and set forth a new ground of rejection as to claims 1, 6, 16 and 17 in light of the teachings in the newly cited Verdicchio patent. [FNa1] Comparing claim 1 of Verdicchio with appellants' claim 1, we find that both require an anionic surfactant and a nonionic surfactant in a composition having low occular irritation. Also note that the pH range disclosed by Verdicchio at column 6, lines 38 and 39 is 7.2 plus and minus 0.3, well within the range disclosed in appellants' specification at page 8, second full paragraph, lines 5 and 6. Accordingly, insofar as claim 1 is concerned, items (a), (b) and (d) are all clearly disclosed. With respect to item (c), i.e., "an induced nonionic surfactant", the reference reveals the inclusion of a surfactant betaine, as disclosed at column 2. At column 5 of the patent, beginning at line 20, Verdicchio suggests that the anionic and the amphoteric surfactant betaine from a 1:1 complex in the detergent composition. In the same column, beginning at line 66, the patentee discloses that his compositions may be used to clean hair and "produce high foam volume and good foam stability while also having low occular irritation." Therefore, since the indicated language, i.e., "induced nonionic surfactant", does not appear to be a recognized term of art and is merely described as including amine oxides, we find that this term may reasonably include the betaines of the cited reference. To buttress our position, we point to the reference, at column 1, lines 6-10, wherein the composition is said to exhibit the same good foaming properties and non-irritating characteristics specifically recited in appellants' preamble to claim 1.
With respect to the dependent claims, at column 3, line 65, Verdicchio discloses an alkyl sulfosuccinate, which satisfies the limitation of claim 6. Regarding claim 16, at column 6, line 16, the patentee states that the shampoo may also contain pH adjusters. The selection of disodium EDTA as the particular adjuster would have been prima facie obvious. Likewise, regarding claim 17, at page 4 of the brief, appellants state that they do not independently rely for patentability on the presence of benzyl alcohol as an antiseptic in the claimed composition. Consequently, the rejection of the dependent claims, like claim 1, is believed to be justified by the teachings in the reference.
Claims 2 through 5 and 7 were not included in the rejection under 37 C.F.R. 1.196(b) because these claims require the inclusion of an amine oxide, which Verdicchio does not disclose. Accordingly, under the provisions of 37 C.F.R. 1.196(c), we include the explicit statement that the indicated rejection of the claims may be avoided by limiting the claimed composition by reciting the amine oxide as component (c) in claim 1.
*4 The rejection of all the claims for being unpatentable in light of Roggenkamp has been reversed and a new rejection of claims 1, 6, 16 and 17 has been set forth under the provisions of 37 C.F.R. 1.196(b). Additionally, a statement under 37 C.F.R. 1.196(c) has been made as to overcoming said new rejection.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based uon the same record must be filed within one month from the date of the decision (37 C.F.R. 1.197). Should appellants elect to have further prosecution before the examiner in response to the new rejection under 37 C.F.R. 1.196(b) by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision.
A recommendation has been made in accordance with 37 C.F.R. 1.196(c). Should appellants elect to adopt the recommendation, the time within which they may file an amendment for that purpose is hereby set to expire two months from the date of this decision.
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 the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
REVERSED 37 C.F.R. 1.196(b) and (c)
BOARD OF PATENT APPEALS AND INTERFERENCES
Irving R. Pellman
Examiner-in-Chief
Arthur J. Steiner
Examiner-in-Chief
William F. Smith
Examiner-in-Chief
FNa1. This patent appears to be related to the Lindemann reference upon which the examiner previously relied.
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