Ex Parte Dihora et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612777318 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121777,318 05/11/2010 27752 7590 07/05/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Jiten Odhavji Dihora 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. 11702 4115 EXAMINER VU, JAKE MINH ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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 JITEN ODHA VJI DIHORA, JOHAN SMETS, TODD ARLIN SCHWANTES, and PEGGY DOROTHY SANDS 1 Appeal2014-008758 Application 12/777,318 Technology Center 1600 Before ERIC B. GRIMES, RY ANH. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a microcapsule composition, which have been rejected as anticipated, obvious and unpatentable under the judicially created doctrine of obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the double patenting rejections. 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company. (Appeal Br. 1.) Appeal2014-008758 Application 12/777,318 STATEMENT OF THE CASE The invention relates to compositions that include microcapsules with permeability characteristics that arise from the interfacial polymerization of certain compounds to make the wall material of the microcapsules. (See, e.g., Spec. 1-3.) Claims 1-18 are on appeal. Claim 1 is representative and reads as follows: 1. A composition comprising an adjunct ingredient and a population of microcapsules particles comprising an oil soluble or dispersible core material and a wall material at least partially surrounding the core material, the microcapsule wall material compnsmg: the reaction product of a first composition in the presence of a second composition comprising an anionic emulsifier, the first composition comprising a reaction product of i) an oil soluble or dispersible amine with ii) a multifunctional acrylate or methacrylate monomer or oligomer, an oil soluble acid and an initiator; the anionic emulsifier comprising a water soluble or water dispersible acrylic acid alkyl acid copolymer, an alkali or alkali salt, and optionally a water phase initiator, wherein the first composition initiator and/or the water phase initiator is an energy-activated initiator; whereby the reaction product of the first composition and second composition results in the formation of a population of microcapsules having a microcapsule wall of low permeance to the core material; said composition being a consumer product; wherein said oil soluble or dispersible amine comprises an aminoalkyl acrylate or an aminoalkyl methacrylate. (Br. 8.) 2 Appeal2014-008758 Application 12/777,318 The following grounds of rejection by the Examiner are before us on review: 1. Claims 1-7 and 10-12 under 35 U.S.C. § 102(a)/(e) as anticipated by Schwantes. 2 2. Claims 1-8, 10-13, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Schwantes. 3. Claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over Schwantes in view of Smets. 3 4. Claims 1-18 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 8,071,214 B2 (issued Dec. 6, 2011). 5. Claims 1-18 under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 8,067,089 B2 (issued Nov. 29, 2011) in view of US 2007/0123442 Al (published May 31, 2007). 6. Claims 1-18, provisionally, under the judicially created doctrine of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of copending Application Nos. 12/777,301; 12/777,304; 12/777,314, and 12/777,417. 2 Schwantes et al., US 2006/0263518 Al, published Nov. 23, 2006. 3 Smets et al., US 2008/0200363 Al, published Aug. 21, 2008. 3 Appeal2014-008758 Application 12/777,318 Anticipation and Obviousness DISCUSSION Claim 1 requires a microcapsule wall material that arises from a reaction product of "an oil soluble or dispersible amine [that] comprises an aminoalkyl acrylate or an aminoalkyl methacrylate" with "a multifunctional acrylate or methacrylate monomer or oligomer, an oil soluble acid and an initiator." (Br. 8.) A foundational position of the Examiner's anticipation and obviousness rejections is the Examiner's contention that Schwantes teaches a low permeability capsule whose wall material is a reaction product "using amine modified polyether acrylate (see [0050] and [0089]), which reads on aminoalkyl acrylate, wherein the alkyl is at least a methyl" (emphasis added). (Non-Final 9, 11 and 12; Final 5 and 6). According to the Examiner, the "amine modified polyether acrylate [disclosed in Schwantes] ... read[ s] on the broader genus of aminoalkyl acrylate" because a "Wikipedia google search ... reveals that an ether group contains an oxygen atom connected to two alkyl groups of the general formula R-0-R', wherein Rand R' are alkyl groups; thus, ethers contain[] alkyl," and the "amine in 'amine modified polyether acrylate' reads on amino in 'aminoalkyl acrylate' and acrylate obviously reads on acrylate." (Ans. 4 (emphasis in the original).) We find there is insufficient evidence to support the Examiner's conclusion that an amine modified polyether acrylate "read[ s] on the broader genus of aminoalkyl acrylate" (Ans. 4). In particular, regardless of the fact that an ether group structure contains two alkyl groups separated by an oxygen atom, as Appellants explain, "in general, an aminoalkyl acrylate will 4 Appeal2014-008758 Application 12/777,318 have a structure with a single R-0-R group in its main chain in contrast to an amine modified polyether acrylate which will have at least two R-0-R groups in its main chain." (Br. 3.) In other words, as Appellants point out, "an aminoalkyl acrylate does not have a repeating R-0-R group in its main chain," whereas an amine modified polyether acrylate does. (Id.) Thus, an amine modified polyether acrylate will have, minimally, at least one additional ether linkage than an aminoalkyl acrylate. Consequently, we agree with Appellants (Br. 2) that an amine modified polyether acrylate is a different structure than an aminoalkyl acrylate. On the record before us, the Examiner has failed to establish a foundational fact on which each of the Examiner's anticipation and obviousness rejections rests, i.e., that Schwantes' disclosed use of an "amine modified polyetheracrylate" is a disclosure of an aminoalkyl acrylate. Where the Examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). For the reasons discussed, we reverse the Examiner's rejection of (a) claims 1-7 and 10-12 under 35 U.S.C. § 102(a)/(e) as anticipated by Schwantes, (b) claims 1-8, 10-13, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Schwantes, and claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over Schwantes in view of Smets. Obviousness-Type Double Patenting Appellants do not mention on appeal any of the obviousness-type double patenting rejections made by the Examiner. (See, e.g., Appeal Br. 1- 7.) These rejections are reviewable on appeal. 5 Appeal2014-008758 Application 12/777,318 Ordinarily, in view of the lack of response from Appellants, we would summarily affirm each of the obviousness-type double patenting rejections. However, we cannot with respect to the provisional rejection of claims 1-18 as being unpatentable over claims 1-18 of copending Application 12/777,417, because the '417 application (now issued U.S. Patent 8,361,792) does not share an assignee or a common inventor with the application on appeal. Therefore, we reverse the provisional obviousness-type double patenting rejection over 12/777,417. We summarily sustain the obviousness-type double patenting rejections over U.S. Patent 8,071,214, and over U.S. Patent No. 8,067,089 in view of US 2007 /0123442 in view of the lack of response from Appellants. We note that application 12/777,301, over which the Examiner has provisionally rejected claims 1-18, is now US Patent 9, 186,642, issued Nov. 17, 2015. We summarily sustain the Examiner's obviousness-type double patenting rejection over the now issued patent in view of the lack of response from Appellants regarding any differences between the claims on appeal and the claims that were pending in application 12/777,301 and that have now issued in US Patent 9,186,642. We also summarily sustain the provisional obviousness-type double patenting rejections over pending applications 12/777,304 and 12/777,314 in view of the lack of response from Appellants. Our affirmance of these obviousness-type double patenting rejections is only provisional, and "might be obviated by future events." See In re Wetterau, 356 F.2d 556, 558 (CCP A 1966). 6 Appeal2014-008758 Application 12/777,318 SUMMARY We reverse the rejection of claims 1-7 and 10-12 under 35 U.S.C. § 102(a)/(e) as anticipated by Schwantes. We reverse the rejection of claims 1-8, 10-13, and 18 under 35 U.S.C. § 103(a) as obvious over Schwantes. We reverse the rejection of claims 1-18 under 35 U.S.C. § 103(a) as obvious over Schwantes and Smets. We reverse the rejection of claims 1-18 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-18 of Application No. 12/777,417. We affirm the following non-statutory obviousness-type double patenting rejections: a. claims 1-18 as being unpatentable over U.S. Patent No. 8,071,214; b. claims 1-18 as being unpatentable over U.S. Patent No. 8,067,089 and US 2007/0123442; c. claims 1-18 as being unpatentable over claims 1-18 of Application No. 12/777,301, now U.S. Patent 9,186,642; and, d. claims 1-18, provisionally, as being unpatentable over claims 1-18 of Application No. 12/777,304 and 12/777,314. 7 Appeal2014-008758 Application 12/777,318 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation