Ex Parte Alberius et al

Patent Trial and Appeal Board

Sep 27, 2016

12228366 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/228,366 08/12/2008
27752 7590 09/29/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Peter Carl Anders Alberius
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.
CM03206UZL 5475
EXAMINER
JAVIER, MELISSA L
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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 PETER CARL ANDERS ALBERIUS,
ROBERT WILLIAM CORKERY, and ALISON FIONA STEPHENS 1
Appeal2014-008483
Application 12/228,366
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and TA WEN CHANG,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is The Procter & Gamble
Company of Cincinnati, Ohio. App. Br. 1.
Appeal2014-008483
Application 12/228,366
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. Specifically, claims 18-20
stand rejected as unpatentable under 35 U.S.C. § 112, second paragraph as
indefinite.
Claims 1-9 and 11-20 also stand rejected as unpatentable under 35
U.S.C. § 102(b) as being anticipated by Lapidot et al. (W02004/081222 A2,
September 23, 2004) ("Lapidot").
Claims 1-20 also stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Lapidot and Gunther
Schneider et al., SKIN COSMETICS (Wiley-VCR Verlag GmbH & Co. KGaA,
2005) ("Schneider").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a cosmetic composition
comprising amorphous particles composed of a homogeneous distribution of
one or more dyes in an encapsulating agent and a cosmetically acceptable
carrier. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A cosmetic composition comprising:
(a) amorphous particles, each amorphous particle comprising a
homogeneous distribution of one or more dyes encapsulated by
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Application 12/228,366
an amorphous, siliceous encapsulating agent, wherein the
amorphous particle comprises from about 3% to about 20% dye,
by weight of the particle, wherein the dye is homogeneously
dispersed throughout the particle; and
(b) a cosmetically acceptable carrier.
App. Br. 8.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are prima facie obvious over the cited prior art
references. We address the arguments raised by Appellants below.
A. Rejection of claims 18-20 under 35 U.S.C. § 112, second paragraph
Issue
Claim 18 is representative of these rejected claims and recites: "The
cosmetic composition according to claim 1, \"/herein the leakage of the
amorphous particle is less than 5% by weight of the total amount of dye
incorporated into the amorphous particle, as measured by the methodology
described herein." App. Br. 11 (emphasis added). Appellants argue the
Examiner erred in concluding that one of ordinary skill in the art would not
be reasonably apprised of the metes and bounds of the claims because of the
phrase "the methodology described herein." Id. at 2 (citing Final Act. 2).
Analysis
Appellants argue that our reviewing court has held that the
requirements of the second paragraph of 35 U.S.C. § 112 are satisfied when
a person of skill in the art would reasonably understand the claim when read
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in the context of the specification. App. Br. 2 (citing Union Pac. Res. Co. v.
Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001)). Appellants
assert, by way of example, that the definiteness requirement is satisfied
when the relevant values can be easily obtained. Id. (citing Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)).
Appellants argue further that it is well settled that a patentee's "freedom of
choice" in selecting the means to point out and define the invention "should
not be abridged." Id. (citing In re Chandler, 319 F.2d 211, 225 (C.C.P.A.
1963)).
Appellants point out that they have disclosed examples in their
Specification, in which they have calculated the leakage of particles. App.
Br. 2 (citing Spec. Exs. 4A &4B). Appellants therefore contend that one of
ordinary skill in the art would reasonably understand the claim when read in
the context of the Specification. Id. at 2-3.
Furthermore, argue Appellants, a claim may still comply with the
requirements of the second paragraph of§ 112, even when explicit
antecedent basis has not been provided, when the scope of the claim would
be reasonably ascertainable by those skilled in the art. App. Br. 3. (citing
MPEP § 2173.05(e)).
The Examiner responds that it is not clear that "the methodology
described herein" limitation refers to the method described in Examples 4A
and 4B. Ans. 9. The Examiner finds that if "the methodology described
herein" is intended to refer to the process described in Examples 4A and 4B
as Appellants argue, the claim should clearly recite the intended steps. Id.
We are not persuaded by Appellants' arguments. The second
paragraph of (pre-AIA) 35 U.S.C. § 112 sets out two distinct requirements:
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( 1) the claims must set forth the subject matter that the inventor or a joint
inventor regards as the invention; and (2) the claims must particularly point
out and distinctly define the metes and bounds of the subject matter to be
protected by the patent grant. MPEP § 2171. The latter requirement, which
is the basis of the Examiner's rejection, is an objective requirement because
it is not dependent on the views of the inventor or any particular individual,
but is evaluated in the context of whether the scope of the claim is clear to a
hypothetical person possessing the ordinary level of skill in the pertinent art.
Id.
Appellants point to Examples 4A and 4B of their Specification,
which, they contend, point out clearly the methods by which "leakage of the
amorphous particle" is determined. App. Br. 2. Example 4A of the
Specification discloses, in relevant part:
Example 4: Dye Release/Leakage Experiments
Example 4A
For the products of each of Examples 1, 2 and 3, 0.2 g of the
particles loaded with dye were placed into a centrifuge tube and
10 ml of a water/propanol ( 1: 1) mixture was added. The tube was
shaken for two minutes and centrifuged. The supernatant fluid
was separated from the sediment and collected in a bottle. This
operation was repeated five times. The supernatant fluid from all
five extractions was mixed and analysed using a UV
spectrometer.
In contrast, Example 4B of Appellants' Specification discloses:
Example 4B
The leakage of Tartrazine from silica loaded with different
amounts of dye was investigated as follows. In tum, 1 g of
particles loaded with 1 %, 5%, 10%, 12% and 15% respectively
of Tartrazine was placed into a bottle and 100 g of water was
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added. The mixture was left under stirring for 3 hours, after
which time, a 5 ml portion was extracted from every bottle using
a syringe. This portion was filtered with a membrane filter (0.45
µm) and analyzed in an UV-VIS spectrophotometer. The leakage
in wt% was calculated for every sample with help of the
calibration curve presented as Figure 3, which shows the
calibration for ion-exchanged Tartrazine in water at 423 nm.
(Spec. 32-33.)
Examples 4A and 4B explicitly set forth two different methods
measuring leakage of the dye. However, it is unclear as to precisely which
method the claim refers; that of Examples 4A, 4B, or both. The claims do
not specify which, nor do they themselves define the steps required to
determine leakage. Therefore, we agree with the Examiner that a person of
ordinary skill in the art would find that the claims do not clearly define the
metes and bounds of the invention and we consequently affirm the
Examiner's rejection of the claims on this ground.
B. Rejection of claims 1-9 and 11-20 under 35 U.S.C. §102(b)
Issue
Appellants argue the Examiner erred because Lapidot fails to teach
every element of independent claim 1. App. Br. 3.
Analysis
Appellants argue Lapidot fails to disclose the limitation of claim 1
reciting "each amorphous particle comprising a homogeneous distribution of
one or more dyes encapsulated by an amorphous, siliceous encapsulating
agent." App. Br. 3. Appellants point to their Specification, which defines
"homogeneous distribution" as meaning "that the dye ... is not visible or
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discernible via microscopic techniques down to a range or magnification of
2mm." Id. (citing Spec. 4, 11. 22-24).2
Appellants point to the Examiner's finding that Lapidot teaches
"agent-encapsulating sol-gel particles" and that the agent is a colorant. App.
Br. 3 (citing Final Act. 3). Appellants also point to the Examiner's finding
that:
[B]ecause the method used by the instant specification mixes the
dye and encapsulating agent in a liquid form before crosslinking
the encapsulation agent to form a homogenous product, and the
method used by Lapidot et al. also mixes the dye and
encapsulating agent in a liquid form before crosslinking the
encapsulation agent, the resulting product would be the same as
that produced by the method of the instant specification, i[.]e[.,]
a homogenous distribution of dye.
Id. at 4 (quoting Final Act. 4-5). Appellants contend that the Examiner thus
concludes that the resultant product of the Appellants' Specification and the
product of the process as disclosed by Lapidot are the same because the
processes are the same. Id.
Disputing this conclusion, Appellants contend, first, that the processes
disclosed by Appellants and Lapidot are not the same. App. Br. 4.
According to Appellants, whereas Lapidot discloses a method of making
particles using an emulsion technique, Appellants have disclosed an aerosol
procedure for producing the amorphous particles claimed, and have
produced particles using such a procedure. Id. (citing Spec. 14-18; Ex. 1 ).
2 The cited portion of the Specification actually states that "the dye ... is not
visible or discernible via microscopic techniques down to a range or
magnification of 2nm." (Spec. 4, 11. 22-24.) The difference in
magnifications stated in the Appeal Brief and in the Specification does not
change our analysis.
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Appellants contend the Examiner has not shown that Lapidot discloses an
equivalent aerosol procedure to Appellants' disclosed aerosol procedure and
that, without such a showing, the Examiner's conclusion that the resultant
products of Lapidot and of Appellants' claimed invention are the same is
without merit.
Appellants next point to the Declaration of Emiel Speets (the "Speets
Declaration"), which they contend demonstrates that the methods disclosed
by Lapidot do not result in particles with a homogenous distribution of dye
throughout the particle. App. Br. 4. Appellants argue the Declaration attests
that Dr. Speets conducted multiple experiments to reproduce the particles by
the methods disclosed in Example 1 of Lapidot. Id. According to
Appellants, Dr. Speets attests in his Declaration that, "[i]n neither case did
the experiment result in particles with a homogenous distribution of dye
throughout the particle." Id. at 5. Rather, Appellants argue, Dr. Speets
states that his results show "that particles have not been successfully
obtained from the experiment, merely what appears to be a fairly random
matrix of fused silica" and that the "holes throughout the silica ... indicate[ s]
structural inhomogeneity ... leading to inhomogeneity in dye distribution
within the particle." Id.
The Examiner responds that Example 1 of the Appellants'
Specification discloses that colored silica was prepared by blending a
mixture of tetraethyl orthosilicate ("TEOS,"), HCl, and ethanol with a
solution of Tartrazine in ethanol while stirring. Ans. 10 (citing Spec.
iii! 101-103). The Examiner finds it is only after the two solutions are mixed
that the blend is aerosolized and spray-dried. Id. (citing Spec. iJ 102).
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The Examiner finds the method disclosed by Lapidot includes
dissolving a water-soluble dye in an aqueous solvent, then adding in a sol-
gel reagent (such as TEOS) and stirring the solution before the formation of
the particles. Id. (citing Lapidot Ex. 1 ). Therefore, the Examiner finds, both
methods follow the same process of dissolving a water-soluble dye in an
aqueous solvent, then adding in the sol-gel reagent (TEOS) and stirring the
solution before the formation of the particles. Id. at 10-11. Furthermore,
the Examiner finds that Appellants' Specification discloses the release of the
dye from particles formed from this method was extremely low and that the
particles of the invention appear as homogenous. Id. at 11 (citing Spec. Ex.
3; ii 24).
With respect to the Speets Declaration, the Examiner finds the SEM
images of the particles produced by Dr. Speets according to the methods
disclosed by Lapidot demonstrate structural features indicative of structural
inhomogeneity, i.e., amorphous particles as recited in instant claim 1. Ans.
11. However, the Examiner finds, no other data is shown and no reasoning
is provided to go from the apparent structural inhomogeneity to the
Appellants' argument that there is inhomogeneity in dye distribution. Id.
The Examiner finds that the SEM images provided (Figs. 1 and 2) in the
Speets Declaration yield no clear data showing any distribution of dye
(either homogenous or inhomogeneous), as the SEM images are in gray
scale and no dye can be seen. Id.
We agree with the Examiner. Under 35 U.S.C. § 102, "a prior art
reference may anticipate without disclosing a feature of the claimed
invention if that missing characteristic is necessarily present, or inherent, in
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the single anticipating reference." See Schering Corp. v. Geneva
Pharmaceuticals, 339 F.3d 1373, 1377 (Fed. Cir. 2003).
Appellants argue that, because the Specification discloses making the
claimed amorphous particles by aerosolizing, and because Lapidot teaches
making them using an emulsion, Lapidot does not anticipate Appellants'
invention. However, Appellants are not claiming a method of making the
composition; rather, they are claiming the composition itself. Claim 1 does
not require synthesizing or incorporating the amorphous particles into an
aerosol, and Appellants may not import limitations from their Specification
into the claim. See CollegeNet, Inc. v. Apply Yourself, Inc., 418 F.3d 1225,
1231 (Fed. Cir. 2005). In this case, the Examiner has established a
reasonable basis for finding that Lapidot discloses the recited limitations of
claim 1 with respect to the homogeneous distribution of dye(s), namely that
both Lapidot and the Specification incorporate dye into the claimed
amorphous particle by substantially the same methods of "dissolving a water
soluble dye in an aqueous solvent, then adding in the sol gel reagent (TEOS)
and stirring the solution." (Ans. 10-11.) "When the PTO shows sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not." In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).
Nor do we find the Speets Declaration persuasive. Aside from a
single unsupported statement that "[i]n neither case did the experiment result
in particles with a homogeneous distribution of dye throughout the particle,"
(see Speets Deel. § 4b ), Dr. Speets provides no data or description as to how
he came to that conclusion other than to state that the structural
inhomogeneity of the particles dictates that the dye is not homogeneously
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distributed throughout the particles. Id. The figures provided in the Speets
Declaration are greyscale SEM images, and Dr. Speets provides no
explanation of how he was otherwise able to determine that the distribution
of dye throughout the particle was not homogeneous, especially considering
the Specification's definition of "homogeneously distributed" as "not visible
or discernible via microscopic techniques down to a range or magnification
of 2nm." See Spec. 4, 11. 22-24. Given this definition, it is impossible to
conclude from the SEM greyscale images whether or not the dye is
"homogeneously distributed" throughout the particles, as defined by
Appellants' Specification.
Furthermore, Dr. Speets' conclusion that "the presence of holes in the
particles which again indicate structural inhomogeneity" is not relevant to
the inquiry at hand. Id. (see also Speets Deel. § 4b ). Claim 1 does not
require that the particles be "structurally homogeneous," indeed, claim l's
express recital that the particles are "amorphous" militates against them
being structurally homogeneous. Rather, claim 1 requires that "the dye is
homogeneously dispersed throughout the particle," and the Speets
Declaration provides no data or explanation in support of Dr. Speets'
conclusion that the dye is not homogeneously distributed, as that term is
defined in Appellants' Specification. We therefore find the Speets
Declaration is not persuasive upon this issue.
We consequently affirm the Examiner's rejection of claims 1-9 and
11-20 on this ground.
C. Rejection of claims 1-20 under 35 U.S.C. § 103(a)
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Appellants rely upon the same arguments set forth supra, asserting
that Schneider does not cure the alleged deficiencies of Lapidot. We have
explained why we are not persuaded by Appellants' arguments, and we
consequently affirm the Examiner's rejection on this ground.
DECISION
The Examiner's rejection of claims 18-20 as unpatentable under 35
U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejection of claims 1-9 and 11-20 as unpatentable
under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejection of claims 1-20 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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