Ex Parte Catalfamo et al

Patent Trial and Appeal Board

Feb 26, 2013

11177657 (P.T.A.B. Feb. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VINCENZO CATALFAMO,
JEFFREY DONALD PAINTER,
ZAIYOU LIU,
GEORGE KAVIN MORGAN, III,
TRACE WENDELL DE GUZMAN TRAJANO,
MELISSA JANE WENE,
CYNTHIA MARIA BEDELL,
HIROTAKA UCHIYAMA, and
TOAN TRINH
____________________

Appeal 2010-012379
Application 11/177,657
Technology Center 3700
____________________

Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
NEIL A. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012379
Application 11/177,657

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Invention
Appellants’ claimed invention relates to hand-held rollers which can
provide benefits to fabric, by transferring the benefit, such as a perfume,
between the roller and the fabric. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A hand-held roller for providing benefits to fabrics,
said hand-held roller comprising:
a) a substrate formed into a roll, said substrate having a
first side and a second side opposite said first side;
b) an adhesive on said first side of said substrate; and
c) a benefit agent on said first side of said substrate said
benefit agent present on said substrate in an amount of about
0.1 gram/m2 to about 15 grams/m2 wherein said benefit agent
comprises a perfume composition, said perfume composition
comprising at least about 25% by weight of blooming perfume
ingredients and at least about 25% by weight of substantive
perfume ingredients.

Evidence Relied Upon
Childs WO 02/083834 A1 Oct. 24, 20021
Aalbers US 6,865,765 B2 Mar. 15, 2005

The Rejection

1Sometimes referred to herein as “'834.”
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The rejection before us on appeal is of claims 1-20 under
35 U.S.C. § 103(a) as being unpatentable over Aalbers in combination with
Childs.

OPINION
Claims 1, 3, 8, and 16-202
For claim 1 and all the other claims on appeal, Appellants argue a
secondary consideration of commercial success as evidenced by “an
exclusive license that identifies the present application as part of the
license.” App. Br. 33; see also Reply Br. 1-2. Appellants included portions
of the license in the Evidence Appendix for this Appeal Brief, consisting of
two pages: one, an apparent first page of a document labeled as a license
agreement having an unspecified number of pages; and, two, a page labeled
as an Appendix, presumably to the agreement. Id. at 8-9. Both pages have
portions redacted.
In response, the Examiner issued a Notice of Non-Compliant Appeal
Brief (hereinafter “Notice”) stating that “[a]ll other affidavits or other
evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1)
through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1).” See 37 C.F.R. § 41.33(d)(2). See also
37 C.F.R. § 41.37(c)(1)(ix) (“Reference to unentered evidence is not
permitted in the brief.”). Appellants submitted a second Appeal Brief
pursuant to that Notice, which maintains the arguments as to secondary

2 Appellants argue claims 1, 3, 8, and 16-20 as a group. We select claim 1 as
representative. App. Br. 3-4, Reply Br. 1-4.
3 Appeal Brief dated October 19, 2009.
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Application 11/177,657

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considerations but omits the copy of the two pages of the license agreement
from the Evidence Appendix. App. Br. 1.4 The Reply Brief repeats the
secondary considerations argument, but also does not include the two pages
of evidence. Therefore, pages 8 and 9 of the non-compliant brief were not
entered by the Examiner and are not before us. See 37 C.F.R. § 41.37.
Appellants’ secondary considerations argument is unpersuasive
because it is not supported by any evidence of commercial success.5 We
affirm the rejection of claim 1, and claims 3, 8, and 16-20.

Claims 2, 12, and 13
Claim 2 recites "... c) a barrier agent on said first side of said substrate
wherein said barrier agent is flexographically applied to said first side of
said substrate in discrete locations; [and] d) a benefit agent wherein said
benefit agent is flexographically applied to said barrier agent on said first
side of said substrate .... "
The Examiner has failed to identify a barrier agent on said first side of
said substrate wherein said barrier agent is in discrete locations on the
substrate. The Examiner states:
Aalbers provides a hand-held roller 50 ... comprising: a
substrate formed into a roll 10 (Col. 11, lines 5-14), said
substrate including a first side 15 and a second side 17 opposite
the first side; and adhesive 16 on said first side of said
substrate; a barrier agent 15 on said first side of said substrate
... in discrete locations Figure 4B; a benefit agent ... on said
first side of said substrate; and an optional release coating 18
on said second side of said substrate ... Aalbers teaches:

4 Appeal Brief dated January 15, 2010. All subsequent references to the
Appeal Brief are to this brief unless otherwise noted.
5 This argument is also not persuasive with regard to the remaining claims.
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"Numerous other layers can be added to the tape, such as
primers, to increase the adhesion of adhesive layer 16 to
backing 14; and, the tape could contain deodorants, perfumes,
antistatic materials, and encapsulated cleaning chemicals",
i.e., "a benefit agent" (Col. 10, lines 3-10).
Ans. 4-5. Aalbers explicitly states that the "backing 14 of the contaminant
removal tape 12 includes a first side 15 and a second side 17 opposite the
first side" (Aalbers, col. 9, ll. 21-25). We agree with Appellants (Reply Br.
2) that element 15 of Aalbers is not both the first side of the substrate and
the barrier agent. The Examiner has failed to show where Aalbers discloses
the claimed barrier agent applied to the first side of the substrate in discrete
locations. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011), citing Chester
v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (the Examiner has failed to
make a prima facie case when a rejection is so uninformative that it prevents
Appellant from recognizing and seeking to counter that rejection).
Accordingly, we reverse the rejection under 35 U.S.C. § 103(a) of
claim 2, and claims 12 and 13 dependent therefrom.

Claims 4-7, 14, and 15
Claim 4, which is dependent on claim 1, recites that the benefit agent
is “separated from said adhesive.” Claim 14 depends from claim 1 and
similarly calls for the benefit agent to be applied so that it overlaps the
barrier agent. The Examiner determined that Childs:
states that the perfume (i.e., benefit agent) is preferably
uniformly distributed on the substrate, but states that in some
embodiments of [Childs], it can be preferred to distribute the
perfume (i.e., benefit agent) and/or additive material (i.e.,
adhesive) non-uniformly on the substrate. It can be preferred
to have "targeted" or "zoned" application of the perfume and/or
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additive material, especially when high levels of perfume
and/or additive material are desired in concentrated areas.
[Citing p.] 8, lines 4-8 of [Childs]. Thus, [Childs] appears to at
least suggest or imply that the perfume is separated from the
additive material.
Ans. 5.
We do not agree that such application of the benefit agent/perfume,
teaches separation of the benefit agent from the adhesive, so as to make the
invention of claim 4 unobvious. Childs states that “[t]he perfume odor
imparted to the treated surface is relatively long-lasting, due to the unique
mixture of perfume and additive material affixed to the substrate.” Childs 2,
ll. 32-34. Childs also states that “[i]f the type of additive material and
perfume on the substrate of the cleaning sheet are not carefully selected, the
sheet will not exhibit long-lasting perfume odor and will tend to leave a
residue on the surface being cleaned ... ” (Childs 3, ll. 30-33).
Accordingly we reverse the rejection of claims 4 and 14 and their
respective dependent claims 5-7 and 15.

Claims 9-116
Independent claim 9 is directed to a hand-held roller that includes a
release coating on the second side of the substrate. Appellants argue only
that “[t]he Examiner fails to make a prima facie case of obviousness by
failing to show where this limitation is disclosed in the cited references.”
App. Br. 4; Reply Br. 4.

6 Appellants argue claims 9-11 as a group, and we select claim 9 as
representative. App. Br. 4; Reply Br. 4.
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Contrary to Appellants’ assertion, the Examiner has shown where this
limitation is disclosed by finding that Aalbers’s release coating 18
corresponds to a release coating as claimed. Ans. 7.
Therefore, Appellants’ argument is unconvincing. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (“all that is required of the office to meet
its prima facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132”). The Examiner provided a discussion of the theory of invalidity, the
prior art basis for the rejection, and the identification of where the limitation
of the rejected claim is shown in the prior art reference by specific column
and line number. This is sufficient to meet the Examiner's burden. Jung,
supra.
As such, we affirm the rejection of claims 9-11.

DECISION
We affirm the Examiner’s decision to reject claims 1, 3, 8-11 and 16-
20 under 35 U.S.C. § 103(a) as unpatentable over Aalbers and Childs.
We reverse the Examiner’s decision to reject claims 2, 4-7, and 12-15
under 35 U.S.C. § 103(a) as unpatentable over Aalbers and Childs.
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 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Appeal 2010-012379
Application 11/177,657

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