Ex Parte Dodd et al

Board of Patent Appeals and Interferences

Mar 31, 2006

10101004 (B.P.A.I. Mar. 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for publication and is not binding precedent of the Board.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 KENNETH T. DODD, JOHN V. LAWLER,
and CHRISTOPHER S. COUGHLIN
__________

Appeal No. 2005-2046
Application No. 10/101,004
__________

ON BRIEF
__________

Before ELLIS, MILLS, and GREEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

REMAND TO THE EXAMINER

Our consideration of the record leads us to conclude that this case is not in
condition for a decision on appeal. Accordingly, we remand the application to the
examiner to consider the following issues and take appropriate action.
This is an appeal under 35 U.S.C. §134 from the examiner's final rejection of
claims 1-28, which are all of the claims on appeal in this application.
Representative claim 1 reads as follows:
1. A method of shaving comprising applying to an area of skin a shaving
composition and shaving said area of skin, wherein the shaving composition
comprises an aqueous polymer solution having a stress ratio in excess of 3.0 at a
shear rate of 800 sec -l .
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Application No. 10/101,004

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The prior art references cited by the examiner are:

Stoner et al. (Stoner) 5,902,574 May 11, 1999
Gold 5,342,617 Aug. 30, 1994
King 6,167,625B1 Jan. 2, 2001

References cited by the Merits Panel:
U.S. Pat. Application Publication US2003/0026775A1 (‘775) published Feb. 6, 2003,
filed April 30, 2001, the same date as the present application

U.S. Patent No. 6,682,726B2, issued Jan. 27, 2004 and filed April 30, 2001.

Background
The specification describes improved shaving compositions which contain a
water soluble polymer or a combination of water soluble polymers, such as, for
example, polyethylene oxide and natural or synthetic gums, to increase lubricity and
enhance shaving performance. Specification, page 1.
“It has been found that polyethylene oxide and natural or synthetic gum, as
described above, interact synergistically to substantially increase the stress ratio of a
shaving composition, thereby reducing the coefficient of friction between the razor
cartridge and the skin.” Specification, page 5.
Remand
Upon review of the record in the present case more relevant art has come to the
attention of this Merits panel. This application is remanded to the examiner to consider
whether a rejection under 35 U.S.C. §102 (f) should be made in the present application
in view of Marchesi et al, U.S. Pat. Application Publication US2003/0026775A1 (‘775)
published Feb. 6, 2003, filed April 30, 2001, the same date as the present application,
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Application No. 10/101,004

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and the U.S. patent issuing therefrom, U.S. Patent No. 6,682,726B2 (‘726), issued Jan.
27, 2004 and filed April 30, 2001. Appellants specification, page 6, states that the
“aqueous shaving compositions may include about 0.05 to 3 ... by weight polyethylene
oxide and about 0.1 to 5%...by weight polysaccharide gum.” The compositions of
Examples 1-5 of the ‘726 patent are within these ranges and thus inherently provide the
claimed stress ratio and shear rate. Claims 6, 7 and 15 of the ‘726 patent appear to
read on claim 1 of the present application. The ‘726 patent and ‘775 publication are to
the same assignee, The Gillette Company, and lists Jenifer T. Marchesi, Yun Xu and
Kenneth T. Dodd as inventors. The present application lists Kenneth T. Dodd, John v.
Lawler, and Christopher S. Coughlin as inventors. Since the inventors do not appear to
be the same, we recommend that the examiner consider whether a rejection of the
claims under 35 U.S.C. 102 (f) is appropriate. In addition, the examiner should
consider whether a double patenting rejection under 35 U.S.C. 101 is appropriate over
claims 6, 7 and 15 of the ‘726 patent.
With regard to the pending rejection of claims 1-28 under 35 U.S.C. §103(a)
over Stoner in view of Gold and King, the examiner should also consider the following
upon remand of the application.
1. The examiner should carefully review the disclosure of Stoner. It would
appear that Stoner exemplifies polyethylene glycol, PEG 14M (molecular weight
600,000) in Example 4, and PEG-150 distearate (molecular weight 6000) in Example 5.
Appellants argue that a polyethylene glycol with a molecular weight greater than
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Application No. 10/101,004

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1,000,000 in combination with a gum provides the composition having the appropriate
sheer rate and sheer stress, as claimed. The examiner should carefully consider
whether Stoner supports a disclosure of an appropriate polyethylene oxide together with
a natural or synthetic gum under the principles of In re Best, 562 F.2d 1252, 1254, 195
USPQ 430, 432 (CCPA 1977), to properly shift the burden to appellants to show that the
compositions of Stoner do not possess the claimed stress ratio and shear rate. Put
another way, is a polyethylene glycol having a molecular weight of 6000 or 600,000 the
same or substantially the same as a polyethylene glycol having a molecular weight of
1,000,000 (Brief, page 2) or more to shift the burden to appellant under In re Best to
show that such a composition resulting from the combination of a polyethylene glycol
together with a gum, does not possess the same sheer rate and stress ratio?
2. It is recommended that the Examiner take a step back and reevaluate the
shaving aid 21 disclosed in King at column 6, line 55 - column 7, line 4. It would
appear that King describes his shaving aid as referring equally to “either a shave-aiding
agent combined with a solid water soluble micro-encapsulating or microporous structure
which retains the agent, or to that agent itself being a water soluble solid.” In contrast,
the appellants characterized the shaving composition used in the claimed method as an
aqueous polymer solution (shave lotion, cream, foam or gel). Claim 1; Brief, page 2.
The examiner should carefully consider whether either of the shaving aids described in
King can be considered an aqueous solution or whether there is proper motivation to
combine them with an aqueous solution, as required by the claims.
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Application No. 10/101,004

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CONCLUSION
Therefore, the application is remanded to the examiner to review the
appropriateness of the pending rejection before us and to consider entering a new
ground of rejection under 35 U.S.C. 101 for double patenting over claims 6 and 7 of
U.S. Patent No. 6,682,726B2, issued Jan. 27, 2004 and filed April 30, 2001.
The examiner should also consider whether a rejection under 35 U.S.C. § 102 (f)
over U.S. Pat. Application Publication US2003/0026775A1 (‘775) published Feb. 6,
2003, filed April 30, 2001, the same date as the present application and U.S. Patent No.
6,682,726B2, issued Jan. 27, 2004 and filed April 30, 2001 is appropriate.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) (effective
September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office
21 (September 7, 2004)) is made for further consideration of a rejection. Accordingly,
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Application No. 10/101,004

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37 CFR § 41.50(a)(2) applies if a supplemental examiner's answer is written in
response to this remand by the Board.
REMANDED

)
JOAN ELLIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
DEMETRA J. MILLS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LORA M. GREEN )
Administrative Patent Judge )

Appeal No. 2005-2046
Application No. 10/101,004

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