Ex Parte Ford

Board of Patent Appeals and Interferences

Mar 21, 2011

11599858 (B.P.A.I. Mar. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANCIS CORNELIO FORD
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Appeal 2010-003127
Application 11/599,858
Technology Center 1700
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003127
Application 11/599,858

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C. § 6.

We AFFIRM.

Appellant claims a liquid detergent composition comprising "mid-
chain branched amine oxide comprising one alkyl moiety having n1 carbon
atoms and an alkyl branch having n2 carbon atoms, wherein the alkyl branch
is located on the α or β carbon from the nitrogen" (claim 1).

Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A liquid detergent composition comprising:
(a) naturally derived C10-20 alkyl or hydroxyalkyl sulphate or
sulphonate surfactant;
(b) mid-chain branched amine oxide comprising one alkyl moiety having
nl carbon atoms and an alkyl branch having n2 carbon atoms, wherein the alkyl
branch is located on the α or β carbon from the nitrogen; and
(c) a liquid carrier.
The references set forth below are relied upon by the Examiner as
evidence of obviousness:

Cripe 5,376,310 Dec. 27, 1994
Bodet EP 0 855 438 A1 Jul. 29, 1998

Appeal 2010-003127
Application 11/599,858

3
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-10 and 12-19
as unpatentable over Bodet and rejects claim 11 as unpatentable over Bodet
in view of Cripe.

We will sustain these rejections for the reasons expressed in the
Answer and below.

As an initial matter, we note that Appellant presents no separate
arguments regarding the dependent claims under rejection including
separately rejected claim 11. Accordingly, the dependent claims will stand
or fall with independent claim 1.

It is undisputed that Bodet discloses a liquid detergent composition
comprising an amine oxide having a branched alkyl group with 10 to 16
carbon atoms attached to the nitrogen and that this branched alkyl group
generically encompasses the alkyl moiety and alkyl branch arrangement
defined by claim 1. In support of an obviousness conclusion, the Examiner
finds that Bodet's generically disclosed branched alkyl group would have
suggested the alkyl moiety and branch arrangement of claim 1 (Ans. 3).

Appellant contests the Examiner's rejections with the following
argument:
[N]othing in Bodet teaches or suggest[s] any benefit based upon
the structural configuration of the surfactant relating to branch
location, symmetry, or other elements taught by Appellants
[sic]. Therefore, among the myriad of surfactant types taught
by Bodet, there is nothing which teaches or suggests for one of
Appeal 2010-003127
Application 11/599,858

4
skill in the art to formulate the mid-chain branched surfactants
of Appellants' [sic] claims.

(Br. 3). As support for this argument, Appellant relies on In re Baird,
16 F.3d 380, 382 (Fed. Cir. 1994) for the proposition that "[t]he fact
that a claimed species or subgenus is encompassed by a prior art
genus is not sufficient by itself to establish a prima facie case of
obviousness" (id.).

Appellant's argument is unpersuasive.

Appellant's reliance on In re Baird is misplaced. The Baird case
involved a claim to a flash fusible toner comprising a bisphenol A polyester.
The court reversed the rejection of this claim because the prior art "appears
to teach away from the selection of bisphenol A by focusing on more
complex diphenols . . ." (In re Baird, 16 F.3d at 382). The court stated that
"[a] disclosure of millions of compounds does not render obvious a claim to
three compounds, particularly when that disclosure indicates a preference
leading away from the claimed compounds" (id. at 383).

Here, the Bodet disclosure does not teach away from the alkyl
arrangement of claim 1, and Appellant does not argue otherwise. Rather, the
teaching in Bodet of a branched alkyl group having 10 to 16 carbon atoms
defines a finite number of amine oxide surfactants including the claim 1
amine oxide. Based on this prior art teaching, an artisan would have had a
reasonable expectation that each of the amine oxides enbraced by Bodet's
generic disclosure would perform successfully as a surfactant.
Appeal 2010-003127
Application 11/599,858

5
These circumstances support a conclusion of obviousness for the
reasons more fully detailed in Ex parte Fu, 89 USPQ2d 1115, 1122 (BPAI
2008).

Finally, we emphasize the Examiner's point that, contrary to
Appellant's apparent belief, Bodet need not suggest the specific benefits
which are allegedly possessed by the amine oxide surfactants of claim 1
(Ans. para. bridging 6-7). See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996) (the prior art motivation does not have to be identical to that of the
applicant to establish obviousness).

For the reasons stated above and in the Answer, we sustain the
Examiner's § 103 rejections of the appealed claims.

The decision of the Examiner is affirmed.
AFFIRMED

sld

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