Ex Parte Fry

Patent Trial and Appeal Board

Aug 21, 2014

12554563 (P.T.A.B. Aug. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/554,563 09/04/2009 Julia Fry V0151.0026 8788
32172 7590 08/21/2014
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
08/21/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JULIA FRY
____________

Appeal 2013-001384
Application 12/554,5631
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and ELIZABETH M.
ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 3–13, 23, and 24. We have jurisdiction under
35 U.S.C. § 6.

1 According to Appellant, the Real Party in Interest is VASKA, LLC. App.
Br. 2.
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STATEMENT OF THE CASE
Claims 1 and 23 are representative of the subject matter on appeal and
are set forth below:
1. An unscented laundry detergent composition comprising an
amount of an essential oil comprising 30 weight % or more of linalol,
wherein amount of the essential oil greater than 0.2% and is not sufficient to
impart a fragrance to the laundry, wherein the linalol is present in an amount
effective for conditioning a fabric during a washing program, and wherein
the composition is unscented.

23. An unscented laundry detergent composition comprising an
amount of linalol which does not impart a fragrance to the laundry and
which is effective for conditioning a fabric during a washing program,
wherein said amount ranges from 0.008% to 0.012%, and wherein the
composition is unscented.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yeung et al. US 6,864,314 B1 Mar. 8, 2005
Arata et al. US 2006/0051430 Al Mar. 9, 2006

Sophie Hanneguelle, Jean-Noël Thibault, Norbert Naulet &
Gérard J. Martin, Authentication of Essential Oils Containing Linalool and
Linalyl Acetate by Isotopic Methods, 40 J. AGRIC. FOOD CHEM. 81–87 (1992)
(“Hanneguelle”).

THE REJECTIONS
1. Claims 1, 3–6, 12–13, and 23 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Yeung, as evidenced by Hanneguelle.
2. Claims 7–10 and 24 are rejected under 35 U.S.C. § 103(a) as being
obvious over Yeung, as evidenced by Hanneguelle.
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as being obvious
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over Yeung, as applied to claim 1, and further in view of Arata.

ANALYSIS
The Examiner finds that Yeung discloses a detergent composition
comprising 0.01-2% of an essential oil, such as lavender oil, Answer 5,
citing Yeung 40:22, 25–26, and cites Hanneguelle as evidence that lavender
oil comprises more than about 30% linalool (also known as linalol). Id.,
citing Hanneguelle, abstract, introduction; see also id. at 8. Multiplying the
endpoints of Yeung’s range by 30%, the Examiner finds that, in Yeung’s
composition, “the linalool is in the range of 0.003-0.6%.” Id. at 5. On this
basis, the Examiner finds that the composition disclosed in Yeung “has the
linalol in the claimed range which is construed as insignificant enough for
being considered unscented.” Id. The Examiner characterizes the remaining
limitations of claim 1 as a function or property of the composition, which he
finds anticipated under principles of inherency. Id.
Anticipation under Section 102 requires that “‘each and every element
as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). “[When] relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Inherency “may not be established by
probabilities or possibilities,” but must instead be established by disclosure
“sufficient to show that the natural result flowing from the operation as
taught would result in the performance of the questioned function.” In re
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Oelrich, 666 F.2d 578, 581 (CCPA 1981). We agree with Appellant that the
Examiner’s rejection of claims 1 and 23 does not establish a prima facie case
of anticipation, nor provide an adequate factual basis to invoke the inherency
doctrine. App. Br. 6–12.
Appellant’s claim 1 requires a detergent composition comprising an
essential oil in an amount “greater than 0.2%” and “not sufficient to impart a
fragrance to the laundry” and further requires that “the composition is
unscented.” App. Br. 14. We find that these limitations are not disclosed by
Yeung, either expressly or inherently.
First, Yeung discloses lavender as a “perfume[] and perfumery
ingredient[].” Yeung, 40:15, 40:22. It is self-evident that the purpose of
adding perfume to a detergent composition is to impart a scent or fragrance,
either to the articles to be washed or to the composition itself or both.
Yeung reinforces this point by teaching that perfume materials that “provide
the largest odor improvements” are particularly preferred. Id. at 40:60–61.
The Examiner has not pointed to any disclosure in Yeung that teaches
adding lavender or other essential oil to a detergent composition for any
purpose, other than as a perfume. Nor do we find any such disclosure.
Because Yeung teaches the addition of lavender solely as a perfume, there is
no sufficient factual basis for the Examiner’s finding that Yeung’s
composition inherently possesses the characteristics recited in Appellant’s
claims. Stated differently, it is improbable that the essential oil in Yeung’s
composition imparts no fragrance or that the composition is unscented,
because these claimed characteristics are the opposite of the objective
disclosed by Yeung. See Ex parte Levy, 17 USPQ2d at 1464; In re Oelrich,
666 F.2d at 581.
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Second, Yeung discloses that perfumes, such as lavender, “typically
comprise from about 0.01% to about 2%, by weight, of the detergent
composition[].” Yeung, 40:25–26. The Examiner has not pointed to any
more specific disclosure in Yeung regarding the amount of essential oil in a
detergent composition. On the lower end, Yeung’s disclosed limit (0.01%
by weight) is one-twentieth of that claimed by Appellant (0.2%). On the
upper end, Yeung teaches a numerical limit of about 2% by weight, but also
teaches that lavender functions as a perfume. Yeung, 40:15, 40:22. Yeung’s
teaching is just the opposite of that claimed by Appellant, i.e., an amount
that “is not sufficient to impart a fragrance to the laundry” and that results in
a composition that is “unscented.” We find that, at best, Yeung fails to
disclose the amount of lavender or other essential oil with sufficient
specificity to anticipate Appellant’s claim. Atofina v. Great Lakes Chemical
Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (where prior art range is “broader
than and fully encompasses” the claimed range, “no reasonable fact finder
could conclude that the prior art describes the claimed range with sufficient
specificity to anticipate this limitation of the claim”). Moreover, a fair
reading of Yeung is that a perfume such as lavender can be added in an
amount sufficient to confer a fragrance or scent, which is wholly outside of
the scope of Appellant’s claim.
Appellant’s claim 23 requires a detergent composition comprising “an
amount of linalol which does not impart a fragrance to the laundry,” where
“the composition is unscented.” App. Br. 15–16. These limitations are
similar to those in claim 1, and are not anticipated by Yeung for the reasons
just discussed. Claim 23 further requires that the amount of linalool ranges
from 0.008% to 0.012%. Even if we credit the Examiner’s finding that
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Yeung discloses a detergent composition containing linalool in an amount of
0.003-0.6%, Answer 5, that disclosure is not sufficiently specific to
anticipate the range required by Appellant’s claim 23. Atofina, 441 F.3d at
999. Although Appellant’s claimed range is wholly encompassed by the
range disclosed by Yeung, the claimed range is only a tiny fraction of
Yeung’s disclosed range, and Yeung’s upper limit is 500 times that claimed
by Appellant. Because Yeung fails to disclose Appellant’s claimed amount
of linalool with sufficient specificity, there is no sufficient factual basis to
conclude that the composition disclosed in Yeung would necessarily possess
the characteristics set forth in Appellant’s claims. See Ex parte Levy, 17
USPQ2d at 1464.
NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Claims 1, 3, 7–10, 12, and 13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kamiya, US 6,136,778, patented Oct. 24, 2000 (“Kamiya
’778”).
Claims 4–6 and 23-24 are rejected under 35 U.S.C. § 103 as
unpatentable over Kamiya ’778, with or without Hanneguelle.
Claim 11 is rejected under 35 U.S.C. § 102(b) as anticipated by
Kamiya, US 6,333,301 B1, patented Dec. 25, 2001 (“Kamiya ’301”).
Before turning to the references, we address claim construction.
Appellant’s claim 1 requires a detergent composition containing essential oil
in an amount greater than 0.2%, where the essential oil contains 30 weight %
or more of linalool. App. Br. 14. The amount of the essential oil used also
must be effective for conditioning a fabric, but must not impart a fragrance.
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Id. When given their “broadest reasonable construction consistent with the
specification,” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007), these limitations encompass a detergent composition
comprising at least 0.2% by weight of linalool. In other words, the essential
oil can be 100% linalool so long as it is sufficient for conditioning a fabric
and does not impart a fragrance. Support for this construction is found in the
claim language, which specifies that the essential oil contains 30 weight %
or more of linalool, with no upper limit. This construction is further
supported by Appellant’s Specification, which likewise teaches no upper
limit on the amount of linalool in the essential oil, which can vary depending
on the type of essential oil used. Spec. ¶¶ 33, 34, 42, 45. Moreover, absent
compelling evidence to the contrary, claim 1 should be construed so as not
to exclude Appellant’s Examples 1-6, which contain 0.1-3 parts linalool per
100 parts detergent, with no other essential oil or essential oil components.
Id. ¶¶ 67-110. Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008)
(“We normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification.”).
Regarding Appellant’s claims 1, 3, 7–10, 12, and 13, Kamiya ’778
discloses a composition useful as “laundry detergents for clothes,” Kamiya
’778, 1:18, where the detergent composition comprises as one of its “chief
ingredients” one or more essential oils or essential oil components, such as
linalool, which has been isolated from essential oil or synthesized. Id. at
5:34-39, 7:1. Example 1 of Kamiya ’778 discloses a composition containing
1 g of linalool per 100 ml of aqueous (liquid) detergent, which is
approximately equivalent to 1 g of linalool per 100 g of detergent or 1% by
weight of linalool. Kamiya ’778, 10:58–65, Table 1. We find that Example
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1 of Kamiya ’778 discloses a detergent composition that is sufficiently
specific in terms of its ingredients and their respective amounts to anticipate
the corresponding limitations of Appellant’s claims 1, 3, 12, and 13.
Kamiya ’778 contains no express teaching regarding whether the
disclosed detergent compositions are scented or unscented, whether they
impart a fragrance, or whether they are effective for conditioning a fabric, as
recited in Appellant’s claim 1 or for providing the improvements recited in
Appellant’s claims 7–10. Nevertheless, Appellant’s claimed properties
would necessarily or inherently be exhibited by the detergent composition
disclosed in Example 1 of Kamiya ’778 because that composition contains
the same ingredients in the same amounts that Appellant’s Specification
teaches result in the claimed properties.
Significantly, Appellant’s Specification teaches that “linalol by itself
is essentially odor free.” Spec. ¶ 34. Appellant’s Specification further
teaches that linalool is the component of essential oil that improves the
conditioning of a fabric. Spec. ¶¶ 37, 170–183. These teachings are
sufficient to support a finding that the detergent composition disclosed in
Example 1 of Kamiya ’778, which contains linalool in an amount within the
range set forth in Appellant’s Examples 1–6, would necessarily or inherently
exhibit Appellant’s claimed properties. We find the disclosure of Kamiya
’778 is sufficient to shift the burden to Appellant to demonstrate that its
disclosed composition does not inherently possess Appellant’s claimed
characteristics. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where . . .
the claimed and prior art products are identical or substantially identical . . .
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
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product.”).
Regarding Appellant’s claim 13, Kamiya ’778 contains no express
teaching regarding whether the essential oils or essential oil components
should be deposited on a carrier, encapsulated or embedded in compounds to
control their evaporation rate. Nevertheless, the absence of such treatments
is implicit in Kamiya’s objective of using the essential oils or essential oil
components to enhance the enzymatic dissolution and dispersion of fats, oil,
proteins and starches from the articles to be washed. Kamiya ’778, 3:43–49.
Regarding Appellant’s claims 4–6, Kamiya ’778 teaches lavender and
linalool as examples of the essential oils and essential oil components useful
in its detergent compositions. Kamiya ’778, 6:53, 7:1, 10:58–65, 11:42–45
and Table 1. Example 6 of Kamiya ’778 discloses a composition containing
1 g of lavender per 100 ml of aqueous detergent, which is approximately
equivalent to 1 g of lavender per 100 g of detergent or 1% by weight of
lavender. Kamiya ’778, 11:42–45, Table 1. As noted by the Examiner,
Hanneguelle teaches a number of lavender products containing 30% or more
of linalool. See Hanneguelle, Table I, sample nos. 1–3, 7–8, and 10–11. It
would have been obvious to select an appropriate amount of one of the
lavender products disclosed in Hanneguelle, with or without additional
linalool, for use in the detergent composition taught by Kamiya ’778. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976))(“[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”); In re Kerkhoven, 626 F.2d 846,
850 (CCPA 1980)(“It is prima facie obvious to combine two compositions
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each of which is taught by the prior art to be useful for the same purpose, in
order to form a third composition which is to be used for the very same
purpose.”)
Regarding Appellant’s claims 4–6, 23, and 24, Kamiya ’778 teaches
that its detergent compositions can be “diluted with water at a dilution ratio
of 2 or more.” Kamiya ’778, 6:1–4. For example, when a detergent
composition is used in a washing machine, it is diluted when the machine
fills with water. It would have been obvious to one of ordinary skill in the
art to dilute any one of the linalool-containing detergent compositions of
Kamiya ’778 such that the resulting composition has a concentration of
linalool within the range specified in Appellant’s claim 23, for the amount of
dilution is dependent on the amount of laundry to be washed and the size of
the washing machine. In re Boesch, 617 F.2d 272, 276 (CCPA
1980)(“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”) As our reviewing court in In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) stated:
The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held
that in such a situation, the applicant must show that the
particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior
art range. [Citation omitted.]

Likewise, it would have been obvious to one of ordinary skill in the
art to dilute any one of the lavender-containing detergent compositions of
Kamiya ’778 such that the resulting composition has a sufficiently low
concentration of lavender (e.g., 0.2%) that the lavender imparts no fragrance
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and the composition is unscented. See Spec. ¶¶ 13, 143–149 (Example 3,
Product A contains 0.20 percent lavender oil). A 15 ml sample of the
resulting composition would contain 0.03 g of lavender, within the scope of
Appellant’s claims 5 and 6. Moreover, one of ordinary skill in the art
interested in scent free detergents for those who are allergic to a fragrance
would have been led to employ an appropriate amount of lavender, with or
without additional linalool, for use in the detergent composition taught by
Kamiya ’778 as indicated supra. KSR, 550 U.S. at 417; Kerkhoven, 626
F.2d at 850.
Regarding Appellant’s claim 11, Kamiya ’301 discloses a particulate
(powder) detergent composition useful as a “fabric detergent[],” Kamiya
’301, 1:16–17, 1:39–40, where the detergent composition comprises one or
more essential oils or essential oil components, such as linalool. Id. at 4:15–
21, 5:8–10. Example 1 of Kamiya ’301 discloses a composition containing
1 g of linalool per 100 g of particulate detergent, which is approximately
equivalent to 1% by weight of linalool. Kamiya ’301, 7:39–40, 7:50–52,
Table 1. We find that Example 1 of Kamiya ’301 discloses a powder
detergent composition that is sufficiently specific in terms of its ingredients
and their respective amounts to anticipate the corresponding limitations of
Appellant’s claim 11. For the same reasons discussed above with respect to
Kamiya ’778, we find that the disclosure of Kamiya ’301 is sufficient to
shift the burden to Appellant to demonstrate that its disclosed composition
does not inherently possess Appellant’s claimed characteristics. In re Best,
562 F.2d at 1255.

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CONCLUSION OF LAW AND DECISION
We conclude that Appellant has shown error in the Examiner’s
rejections of claims 1, 3–13, 23, and 24, and we therefore reverse the
rejections. We have, however, newly rejected claims 1, 3–13, 23, and 24
under 35 U.S.C. §§ 102(b) or 103(a) as anticipated or rendered obvious by
one or more of Kamiya ’778, Kamiya ’301 and/or Hanneguelle pursuant to
37 C.F.R. § 41.50(b) as indicated above.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)

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