Ex Parte D et al

Patent Trial and Appeal Board

Jun 24, 2016

13505669 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/505,669 05/02/2012
23909 7590 06/28/2016
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Robert D'Ambrogio
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.
8861-00-HC 4101
EXAMINER
DELCOTTO, GREGORYR
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D' AMBROGIO and JOAN ETHEL GAMBOGI
Appeal2015-000393
Application 13/505,669
Technology Center 1700
Before BRADLEY R. GARRIS, JACQUELINE WRIGHT BONILLA, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 5-9, and 11 of Application
13/505,669 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 28,
2014). Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Colgate-Palmolive Company is identified as the real party in interest. App.
Br. 2.
Appeal2015-000393
Application 13/505,669
BACKGROUND
The specification of the application at issue describes an aqueous
liquid composition that is structured such that it may suspend materials
having a density greater or less than the composition. The composition
comprises at least one surfactant and microfibrous cellulose ("MFC"), as
well as calcium ions, which increase the yield stress of the composition.
Spec. 2.
Claim 1 is representative of the Appellants' claims and is reproduced
below:
1. An aqueous composition comprising
a) at least one surfactant;
b) a suspending agent comprising microfibrous cellulose;
c) 10 to 600 ppm of a calcium ion; and
d) water,
wherein the composition has a yield stress of at least 0. 7 Pa.
App. Br. 5 (Claims App.).
REJECTIONS
Claims 1 and 5-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of either Swazey2 or Canto3 in view of
Lang.4 Final Act. 4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
2 US 2008/0108541 Al, published May 8, 2008.
3 US 2010/0009891 Al, published Jan. 14, 2010.
4 U.S. Patent No. 7, 101,612 B2, issued Sept. 5, 2006.
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Application 13/505,669
unpatentable over the combination of either Swazey or Canto in view of
Lang and further in view of Lehigh. 5 Id. at 7.
STATEMENT OF THE CASE
In the Final Rejection of claims 1 and 5-9, the Examiner enumerates
the teachings of the primary references, Swazey and Canto, and notes that
they "do not teach the use of an alkaline earth metal ion in the specific
amounts as recited by the instant claims" and further that they do not
disclose a composition "in the specific amounts as recited by the instant
claims." Final Act. 5. The Examiner contends that Lang "teaches that
relatively hard water has up to 200 ppm Ca2+ and/or Mg2+ ions contained
within," which provides the limitation missing from Swazey or Canto. Id.
The Examiner determines that one of ordinary skill in the art would
have been motivated to combine the primary references with Lang "because
Lang et al teaches that relatively hard water has up to 200 ppm Ca2+ and/or
~v1g2+ ions contained within and further, the detergent and cleaning products
as taught by Swazey or Canto et al may [be] and are typically formulated
using hard water." Final Act. 6. The Examiner further concludes that it
would have been obvious to combine the elements of the composition in the
specific amounts required by the claims at issue because the references
suggest a composition containing the "components of the composition in the
specific amounts as recited by the instant claims." Id. In regard to the
required yield stress, the Examiner determines that the teachings of Swazey
5 Lehigh River Watershed Explorations - Calcium and Water Hardness,
http://www.ei.lehigh.edu/ envirosci/watershed/wq/wq background/ calciumbg.
html (last visited Mar. 24 2014).
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Application 13/505,669
or Canto in conjunction with Lang "would suggest compositions having the
same yield stress as recited by instant claim 1" because they "teach
compositions containing the same components in the same amounts as
recited by the instant claims." Id.
In regard to claim 11, which concerns the source of the calcium ions,
the Examiner notes that Lehigh teaches that calcium ions in hard water may
originate from the dissociation of salts such as calcium chloride or calcium
sulfate. Id. at 7. The Examiner then determines that use of water having
calcium ions derived from such sources would have been obvious "because
Lehigh teaches that calcium ions present in hard water are derived from salts
such as calcium chloride" and the cited references "suggest products
containing water with calcium ions present." Id.
In response, Appellants argue that neither of the primary references
suggests inclusion of calcium ions in their compositions and that "there is no
motivation to use the hard water from Lang '612 in Swazey '541 or Canto
'891." App. Br. 2. Appellants assert that it is the practice in the art to use
deionized water in making cleansing compositions and point out that two of
the exemplary compositions of Swazey use deionized water. Id. at 2-3.
Appellants further argue that the cited references do not teach the
claimed yield stress of at least 0.7 Pa. Appellants assert that yield stress "is
based on the selection of the amounts of the surfactant, the microfibrous
cellulose, the calcium ions, and the water" and that even if hard water is
used, "there is no suggestion to select the amounts of each of these materials
in combination to provide the yield stress of at least 0.7 Pa." Id. at 3.
Finally, Appellants argue that the Examiner has not shown any
motivation to use hard water having the particular calcium salts required by
claim 11.
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Application 13/505,669
ANALYSIS
The Examiner bears the initial burden of establishing a prima facie
case of obviousness by a preponderance of the evidence. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992); Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) ("a preponderance of the evidence must show
nonpatentability before the PTO may reject the claims of a patent
application.").
In order to show that the rejected claims are obvious, the Examiner
must demonstrate that a skilled artisan would have had reason to combine
the teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success
from doing so. Redline Detection, LLC v. Star Envirotech, Inc., 811 F .3d
435, 449 (Fed. Cir. 2015).
The Examiner does not find that the primary references explicitly
teach the use of water containing calcium ions. Final Act. 5. Rather, the
Examiner finds that it is industry practice to use tap water which contains
such ions. Id. at 8 ("normal tap water is commonly used ... where a slight
contamination ... is not critical"). The Examiner then relies upon secondary
references to show the content and origin of calcium ions in hard water.
Though unstated, it appears that the Examiner relies upon a theory of
inherency to support a determination that the cleansing compositions of the
primary references would possess the claimed amount of calcium ions when
made with tap water containing calcium ions. Specifically, the Examiner
infers that each of Swazey and Canto necessarily and inherently disclose
using tap water, which itself necessarily is hard water, which Lang teaches
comprises the amount of calcium ion recited in the claims.
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A reference inherently discloses an element of a claim "if that missing
characteristic is necessarily present, or inherent, in the single anticipating
reference." Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed.
Cir. 2003) (citation omitted) (emphasis added). In this regard, the Federal
Circuit has held as follows:
A party must ... meet a high standard in order to rely on
inherency to establish the existence of a claim limitation in the
prior art in an obviousness analysis-the limitation at issue
necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.
PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir.
2014).
Each of Swazey and Canto explicitly discloses certain aqueous
compositions. The record contains no evidence, however, that the water
used in making such aqueous compositions necessarily has the requisite
calcium ion content needed to result in compositions having the claimed
amount of calcium ions. The Examiner provides no evidence to support the
finding that cleansing compositions are formulated using tap water. Indeed,
the Appellants note that several exemplary compositions described in
Swazey employ deionized water. App. Br. 3. Even if tap water were used,
one may not be certain that such water was hard water or that its calcium ion
content necessarily or inherently would have yielded a composition having a
calcium ion content falling within the specified range. "Inherency ... may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
PAR Pharm., Inc., 773 F.3d at 1195.
We do not sustain the Examiner's rejections because the Examiner
provides ( 1) no evidence that it would have been obvious to make the
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compositions of Swayze or Canto using the calcium-containing water
described in Lang or Lehigh and (2) no evidence or rationale that
compositions made with such water necessarily or inherently would possess
the calcium ion amounts required by claim 1.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1,
5-9, and 11 as obvious.
REVERSED
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