Ex Parte Baker et al

Board of Patent Appeals and Interferences

Jan 31, 2006

10227761 (B.P.A.I. Jan. 31, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KEITH HOMER BAKER, MICHAEL PETER SIKLOSKI,
HENRY CHENG NA, JANINE MORGENS STRANG, WILLIAM MICHAEL SCHEPER,
EUGENE STEVEN SADLOWSKI and VINCENT JOHN BECKS
_____________
Appeal No. 2005-1827
Application No. 10/227,761
______________
ON BRIEF
_______________
Before WALTZ, JEFFREY T. SMITH and FRANKLIN, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final rejection of claims 76
to 86, the only pending claims. (Brief, p. 2). We have jurisdiction under 35 U.S.C.
§ 134.
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BACKGROUND
The present invention relates to compositions that are disclosed to be
suitable for treating shoes. According to the specification page 8, treating
compositions is meant to encompass generally benefit agent compositions.
Benefit agents is meant to encompass any agent that can impart a consumer
recognizable and/or measurable benefit to an article. A copy of the claims on
appeal appears in the appendix attached to Appellants’ Brief.
The Examiner relies on the following references in rejecting the appealed
claims.
Murch et al. (Murch) H1513 Jan. 2, 1996
(U.S. Statutory Invention Registration)
Angell et al. (Angell) 5,795,854 Aug. 18, 1998
Lesko et al. (Lesko) 5,820,633 Oct. 13, 1998
Siegler et al. (Siegler) 4,784,664 Nov. 15, 1988
Hartshorn WO 95/32268 Nov. 30, 1995
(Published World Intell. Prop. Org. Patent Application)
Goderis et al. (Goderis) WO 98/00512 Jan. 8, 1998
(Published World Intell. Prop. Org. Patent Application)
The Examiner has entered the following grounds of rejection (Answer
pages 3 and 4) as presented below in roman numeral fashion:
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I. Claims 78-79 and 85 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Angell.
II. Claims 80 and 81 are rejected under 35 U.S.C. § 102(b) as anticipated
by Hartshorn.
III. Claims 82-84 are rejected under 35 U.S.C. § 102(b) as anticipated by
Murch.
IV. Claim 86 is rejected under 35 U.S.C. § 102(b) as anticipated by
Goderis.
V. Claims 76 and 77 are rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Siegler and Lesko.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above noted rejections, we make
reference to the Answer (mailed October 19, 2004) and the Brief (filed July 30,
2004) for the Appellants’ arguments there against.
Appellants have indicated that the claims as rejected should stand or fall
together. (Brief, p. 6). Accordingly, for each ground of rejection, all of the
claims will stand or fall together and we will select a representative claim and
limit our consideration thereto.
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OPINION
REJECTIONS UNDER 35 U.S.C. § 102
Upon careful review of the respective positions advanced by Appellants
and the Examiner, we affirm the rejections as presented by the Examiner.
The Examiner has rejected claims 78-79 and 85 over Angell under Section
102(b). According to the Examiner, Answer pages 3 to 5, each of the stated
references disclose detergent compositions that comprise the specifically
claimed benefit agent. For example, the Examiner asserts Angell discloses a
detergent composition which comprises disinfecting agents (i.e., benefit agent)
sodium nonanoyloxybenzenesulfonates (NOBS). The Examiner concludes that
Angell anticipates the claimed invention.
Appellants argue that Angell fails to teach compositions adapted for
treating shoes. Specifically, Appellants argue that the claim limitation
“formulated so that any damage as a result of washing the one or more shoes
with or in an aqueous medium with application of the treating composition is
reduced compared to washing the one or more shoes with or in an aqueous
medium without application of the treating composition” is not disclosed by the
reference. (Brief, p. 8).
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Appellants are free to recite features of a composition either structurally or
functionally. See In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed.
Cir. 1997). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971).
However, when describing the invention, the inventor must describe the
invention adequately and specifically to avoid the prior art. In the present case,
Angell discloses detergent compositions that comprise disinfecting agents which
are included in the stated Markush Group of disinfecting agents in the claimed
invention. The specification discloses that the benefit agent of the present
invention can be present in the treating compositions in amounts ranging from
about 0.01% to about 90% by weight of the treating composition. Appellants
have not argued that the reference does not comprise the benefit agent in
amounts which are disclosed by the specification to be suitable for providing
the desired effect.
Appellants argue that the phrase “‘decrease in wash related damage’”
acts to limit and distinguish the claimed invention. (Brief, p. 9). Appellants also
argue that Angell’s formulation comprises ingredients which act to inherently
increase wash related damage to shoes (Brief, p. 9). We are not persuaded by
Appellants’ arguments. As stated above the treating agent disclosed by Angell
is present in an amount which has been described by the specification as being
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suitable for producing the claimed effect. Appellants have not directed us to
evidence that the composition of Angell produces wash related damage to
shoes. Furthermore, Appellants have not specifically disclosed which
components of the Angell composition increase wash related damage to shoes.
Appellants’ discussion of bleach containing detergents appearing on page 10
of the brief have been considered. The Examiner has asserted on page 8 of the
Answer that Angell does not comprise chlorine containing bleach. Appellants
have not refuted the Examiner’s position in responsive briefing.
The Examiner rejected claims 80 and 81 under Section 102(b) over
Hartshorn. The Appellants present essentially the same arguments for
patentability of the claimed subject matter discussed above. Specifically
Appellants’ argue that the composition limitation “formulated so that any
damage as a result of washing one or more shoes with or in an aqueous
medium with application of the treating composition is reduced as compared
to washing the one or more shoes with or in an aqueous medium without
application of the treating composition” has not been afforded patentable
weight by the Examiner (Brief, p. 11). Appellants also argue, (Brief, p. 12) that
Hartshorn would not enable a practitioner to select ingredients to comport the
wash related damage reduction limitations of the claimed invention.
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We do not find Appellants’ arguments persuasive for the reasons stated
above. Appellants argue that a composition comprising one or more of the
enumerated disinfecting agents does not necessarily fall within the scope of the
claimed invention. Appellants have not argued that the compounds identified
by the examiner as meeting the present claim limitations are not present in
amounts which have been specified by the specification as producing the
claimed result. We note that Appellants argue that Hartshorn teaches
ingredients which are potentially damaging to materials. (Brief, p. 13).
Appellants’ discussion of these potentially damaging materials are not
persuasive because Appellants have not affirmatively established that these
components are present in amounts which necessarily produce damaging
effects in the compositions described by Hartshorn. A person of ordinary skill in
the art formulating the composition of Hartshorn would have suitable skill to
select the appropriate amounts and components for producing a laundry
composition which would not have damaging results.
The Examiner rejected claims 82-84 under Section 102(b) over Murch.
Here again the Examiner has determined that Murch discloses the claimed
benefit agent as required by the claimed invention. Appellants admit that the
ingredients of Murch overlap the claimed invention. (Brief, p. 15). However,
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Appellants argue that Murch fails to consider or address the wash related
damage limitation of the claimed invention. As state above, the limitation of the
claim to which Appellants direct their arguments are to a property resulting from
the components present in the composition. That is, the wash related damage
characteristic of the claimed invention is a result of the components present in
the composition. The recitation of the newly discovered property inherently
possessed by a prior art composition, does not cause a claim drawn to that
composition to distinguish over the prior art. See In re Best, 562 F.2d 1252, 1254,
195 USPQ 430, 433 (CCPA 1977).
The Appellants argue the present inventive compositions decrease wash
related damage to shoes. Specifically Appellants argue “[t]his is a
characteristic of the present composition as real and empirical as, for example,
pH, which is not an ‘ingredient’ per se, but the result of an ingredient selection,
and which is indisputably recognized as a genuine composition limitation and is
regularly afforded patent significance in formulation arts” (Brief, p. 15). We
agree with Appellants that in the formulation arts the selections of ingredients
affect compositional limitations such as pH. In the present case, Appellants
have identified specific benefit agents which produce the claimed wear
damage limitation. As stated above, the specification provides broad
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guidance on the amounts in which these benefit agents must be present in the
composition in order to produce the desired results. The cited reference by the
Examiner provides a benefit agent in the amounts required by the claimed
invention. Appellants have not directed us to evidence which establishes
otherwise.
The Examiner rejected claim 86 under Section 102(b) over Goderis. The
Appellants’ arguments concerning patentability of the claimed invention are
the same as presented in the previous rejections. The Examiner has determined
that the Goderis reference describes a composition that comprises the claimed
benefit agent. For the reasons presented above we affirm the Examiner’s
rejection of claim 86.
THE REJECTION UNDER 35 U.S.C. § 103
The Examiner rejected claim 76 and 77 over the combination of Siegler
and Lesko. We affirm. We select claim 76 as representative.
Claim 76 specifies that the treating composition contains conditioning
agents, in particular acrylic syntans.
Upon consideration of the respective positions presented by the Examiner
and the Appellants regrading this rejection we find ourselves in agreement with
the Examiner.
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The Examiner has found that both Siegler and Lesko disclose compositions
comprising acrylic syntans which are suitable for the treatment of leather.
(Answer, p. 5). Lesko discloses aqueous leather treating compositions
comprising acrylic syntans. The acrylic syntans fall within the scope of the
formula presented in claim 76. Lesko discloses that the compositions are
suitable for retanning leather.
Appellants argue that Lesko is directed to tanning methods and
compositions and not treating compositions adapted for treating shoes. (Brief,
p. 21).
We do not find Appellants’ arguments persuasive. Here again, Appellants
argue that the phrase "‘decrease in wash related damage'" acts to limit and
distinguish the claimed invention. It is not disputed that the acrylic syntans
disclosed by Lesko fall within the scope of the claimed invention. The
specification, page 55, discloses that the treatment compositions containing
conditioning agents (including acrylic syntans) can independently occur prior to
washing the shoes. The specification, page 56, further discloses “[o]ne of the
main advantages of the acrylic syntans is that, they both soften and retan the
leather.” Lesko discloses aqueous compositions suitable for retanning leather.
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Appellants further argue that Lesko does not teach a composition that is
formulated to reduce the wash related damage to shoes. (Brief, p. 22).
The “wash related damage” claim limitation describes a property resulting
from the components present in the composition. That is, the wash related
damage characteristic of the claimed invention is a result of the components
present in the composition. Lesko discloses aqueous compositions that comprise
acrylic syntans. As state above, the recitation of the newly discovered property
inherently possessed by a prior art composition, does not cause a claim drawn
to that composition to distinguish over the prior art. See In re Best, supra.
Appellants have not identified which components contained in the composition
of Lesko prevents the composition from providing the claimed property. We also
note that Appellants have not addressed which components in the composition
of Lesko prevents the compositions from being used to retan shoes.
To the extent that we rely on Lesko alone to establish the prima facie
case, we do not consider the rejection over Lesko alone to constitute a "new
ground" of rejection. The issue, in this respect, is whether Appellants have had a
fair opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Limiting the discussion to the
evidence contained in Lesko while using the same basis and teachings as the
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Examiner relied upon does not constitute a new ground of rejection. See Kronig,
539 F.2d at 1303, 190 USPQ at 427; In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
266-67 (CCPA 1961). As stated above both Lesko and Siegler disclose
compositions comprising acrylic syntans which are suitable for the treatment of
leather.
For the reasons and those presented by the Examiner the rejection under
35 U.S.C. § 103 is affirmed.
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CONCLUSION
The Examiner’s rejections under 35 U.S.C. §§ 102 and 103 are affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
JTS:hh
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