Ex parte Uchida

July 11, 2011 – Blog Post

In Ex parte Uchida (Appeal 2011-000486 of Appl. Serial No. 11/731,595), the questions before the board were (1) the broadest reasonable interpretation of the claimed range of “about 0.01 μm to about 40 μm” and whether that overlapped with a range of “between about 50 and about 1000 μm” in the prior art and (2) whether the Declaration evidence showing an improved result for the claims was sufficient to overcome the prima facie case of obviousness.

The main claim, which was rejected as being obvious over a combination of three references, recited an anhydrous cosmetic composition comprising, inter alia, an inorganic agent which is magnesium sulfate having an average diameter of from about about 0.01 μm to about 40 μm and that generates a heat by mixing with water.

Regarding the first issue, the cited art disclosed “anhydrous skin cleansers in the form of gels comprising … a crystalline abrasive material,” “a preferred particle size in the range of about 50 microns to about 1000 microns,” and an anhydrous cosmetic composition comprising “a component that generates heat upon contact with water.” The Applicants’ specification did not characterize how much deviation beyond 40 μm was encompassed by “about 40 μm,”although the specification described that the size limitation was meant to reduce a feeling of grittiness imparted by larger particles sizes, and that the presence of polyoxyalkylene (also a claim element) reduced the feeling of grittiness.

The Board concluded that, interpreting the claim in light of the description, the broadest reasonable claim interpretation of a particle with about 40 μm particle size could be about 50 μm, given that the limitation was only defined by the tactile limitation also regulated by the presence of another claimed element (the polyoxyalkylene). Therefore, the ranges of the particle sizes were “close enough to the prior art range that the skilled artisan would expect them to have the same properties with respect to causing the gritty feeling.”

Having been satisfied that there was a sufficient prima facie case of obviousness, the Board then turned to the Declaration that had been filed during prosecution. That Declaration, as characterized by the Board, showed that MgSO4 with an average particle size of approximately 1 μm resulted in a high peak temperature (47.5°C) compared to MgSO4 with an average particle size of approximately 50 μm (46°C). According to the Board, there was no statement in the Declaration that this improvement was unexpected.

Therefore, while the Board noted the Declaration, they found that evidence to be lacking to rebut the prima facie case due to the limited number of comparative examples and the lack of a statement indicating that the improvement was unexpected. The Board relied in large part on In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011):“[i]f an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the similar manner, this will generally establish that the evidence is commensurate in scope with the claims;” andIn re Soni’s (54 F.3d 746, 751, Fed. Cir. 1995): “when an applicant demonstrates substantially improved results … and states that the results were unexpected, this should suffice to establish unexpected results …”