Ex Parte Borup et al

Patent Trials and Appeals Board

Jun 25, 2019

12934877 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/934,877 09/27/2010
25908 7590 06/27/2019
NOVOZYMES NORTH AMERICA, INC.
US PATENT DEPARTMENT
77 PERRYS CHAPEL CHURCH ROAD
POBOX576
FRANKLINTON, NC 27525-0576
FIRST NAMED INVENTOR
Flemming Borup
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.
11003-US-PCT 1188
EXAMINER
NGUYEN, THUY-AI N
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
DOCKETING@novozymes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLEMMING BORUP, THOMAS HOENGER CALLISEN,
KIRK MATTHEW SCHNORR, OLE SIMONSEN, CHRISTIAN WIETH,
JUDITH MARIA BONSALL, ANDREW PAUL CHAPPLE,
ANTHONY HACKETT, CHRISTOPHER CLARKSON JONES,
DAVID RICHARD ARTHUR MEALING, and RAJESH AMRIT SALKAR
Appeal 2018-007 661
Application 12/934,877
Technology Center 1700
Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 3-11, 15-22, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Simonsen (US 2004/0254087 Al, published
Dec. 16, 2004) in view of Pieroni (US 6,462,007 Bl, issued Oct. 8, 2002)
1 Our Decision refers to the Specification ("Spec.") filed September 27,
2010, Appellants' Appeal Brief ("Br.") filed November 13, 2017, and the
Examiner's Answer ("Ans.") dated April 6, 2018.
2 Appellants identify Novozymes A/S as the real party in interest (Br. 1 ).
Appeal 2018-007 661
Application 12/934,877
and Wahl (US 2005/0020476 Al, published Jan. 27, 2005). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to detergent particles comprising a triggered
release system for a rinse benefit agent. Spec. 1 :3-4. Appellants disclose an
improved release system for detergent particles using a combination of an
enzyme substrate and an enzyme capable of accelerating the modification of
the substrate, such that the rinse benefit agent is retained during the wash
stage, but released during the subsequent rinse stage. Id. at 3 :22-26.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A particle for triggered release of a rinse benefit agent, said
particle comprising:
a) a first enzyme,
b) a rinse benefit agent selected from the group
consisting of perfumes, encapsulated perfumes, masking agents,
chemical malodor neutralizers, physical malodor neutralizers,
pro-fragrances, fiber lubricants, anti-static agents, anti-wrinkle
agents, antifoam, photo-protective agents, optical brighteners,
soil release polymers, soil repelling agents, stain repellent
agents, fabric softening compounds, anti-microbial agents,
insecticides, fungicides, insect repellents, moisture management
agents, shading dyes, dye fixing agents, a second enzyme and
mixtures thereof, and
c) a water-insoluble substrate for said first enzyme,
wherein the rinse benefit agent and the first enzyme are
surrounded by a barrier layer comprising a water-insoluble
continuous layer comprising the substrate,
and wherein the mean particle size is in the range of 0.1 to 2000
µm.
Br. 12.
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Appeal 2018-007 661
Application 12/934,877
ANALYSIS
The Examiner finds that Simonsen teaches a particle comprising a
core and a wax coating, wherein the coating includes fatty acid, glycerides,
and paraffin, and the core includes enzyme and other active compounds and
stabilizing agents, such as antioxidants, which correspond to Appellants'
disclosed rinse benefit agents. Ans. 3. The Examiner acknowledges that
Simonsen fails to teach that the particle comprises a first layer containing the
rinse benefit agent, but finds Pieroni teaches a multilayer detergent tablet
comprising a core having a first detergent active agent, a first encapsulating
layer surrounding the core and having a second detergent active agent, and a
second encapsulating layer surrounding the first layer, wherein the active
agents include perfumes and enzymes. Id. at 3-4. The Examiner concludes
that it would have been obvious to apply the teaching of Pieroni to
Simonsen's particle in order to achieve stability for each active component
while controlling their release. Id. at 4.
Although conceding that Simonsen, as modified in view of Pieroni,
fails to teach the particle size, the Examiner finds that Wahl teaches a
softening-through-the-wash ("STW") composition that can comprise a large
variety of functional agents, wherein the composition has a particle size of
less than 800 µm and can be coated with an insoluble material. Id. The
Examiner concludes that it would have been obvious to apply the teaching of
Wahl to Simonsen's particle to achieve the desired amount of active
ingredient in the size of a particle. Id.
Appellants argue that none of Simonsen, Pieroni, and Wahl teach or
suggest a particle for triggered release of a rinse benefit agent comprising an
enzyme surrounded by a barrier layer comprising a water-insoluble
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Appeal 2018-007 661
Application 12/934,877
continuous layer including a water-insoluble substrate for the enzyme.
Appeal Br. 5-7. Appellants contend that the Examiner fails to adequately
explain what would motivate the skilled artisan to modify the wax coating of
Simonsen or tablet of Pieroni to use the recited water-insoluble continuous
layer comprising a substrate for the enzyme in the particle, and asserts that
the skilled artisan would have had no expectation of success. Id. at 9-10.
Appellants urge that the only suggestion for combining the references is
based on impermissible hindsight. Id. at 10.
Appellants' arguments are persuasive of reversible error. The
Examiner correctly notes that within the general classes of compounds that
Simonsen teaches that may be combined together to yield particles lie a
number of compounds in both the category of the core materials and the
category of the coating materials that might meet the terms of the claims,
including enzymes that may be used in the core of the particle and wax
materials that may be used in the coating. However, the Examiner fails to
make any finding, nor direct our attention to any evidence that Simonsen
teaches, or that Pieroni or Wahl suggest, that the enzyme and coating
material be selected so that the coating material is the substrate for the
enzyme.
We note that Simonsen discloses the use of enzymes as an active
ingredient and as a detergent additive, rather than as a material that is
matched to a substrate in the particle coating. Simonsen ,-J,-J 198-200. In
addition, Simonsen discloses the use of wax coatings including fatty acid,
glycerides, and paraffin, but the Examiner fails to direct our attention to any
teaching or suggestion that the coating include a substrate for the selected
enzyme. Simonsen teaches two broad genuses of compounds for the particle
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Appeal 2018-007 661
Application 12/934,877
core and the particle coating with species within each that overlap those
recited in Appellants' claims, but does not teach or suggest choosing the
specific pairings of these two genuses so as to arrive at a combination of an
enzyme surrounded by a water-insoluble continuous coating comprising a
substrate for the enzyme as recited in these claims. As such, the combined
teachings of the references lacks the requisite guideposts to selecting an
enzyme from the active materials or detergent additives paired with a
substrate for the enzyme in a water-insoluble continuous coating with any
expectation of success absent reliance on Appellants' disclosure. Indeed,
Simonsen's mechanism of action is the use of wax materials having different
molecular weights, and therefore, different melting points, so as to control
the release of active materials and additives, while reducing "dust" from
fractured or sheered particles. Simonsen ,i 10. Accordingly, we cannot
sustain the Examiner's obviousness rejection of the claims based on the
combination of Simonsen, Pieroni, and Wahl.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal Brief, the decision of the Examiner rejecting claims 1, 3-11,
15-22, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Simonsen
in view of Pieroni and Wahl is reversed.
REVERSED
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