Ex Parte Ghosh et al

Patent Trial and Appeal Board

Dec 15, 2016

14160807 (P.T.A.B. Dec. 15, 2016)

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.
14/160,807 01/22/2014 KAUSTAV GHOSH SUB-03684-U S-NP 1098
173 7590 12/19/2016
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
DELCOTTO, GREGORY R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WHIRLPOOL CORPORATION
Appeal 2015-007069
Application 14/160,807
Technology Center 1700
Before MARKNAGUMO, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
Opinion for the Board by HASTINGS, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—12 under 35 U.S.C. § 103(a) over at least
Cooper (US 6,492,322 Bl, Dec. 10, 2002).1 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1 The Examiner applies additional prior art references to dependent claims 6-
8 and 10 (Final 6, 7; Ans. 3-5).
Appeal 2015-007069
Application 14/160,807
1. A laundry treatment composition for reducing dye
transfer from laundry during a treating cycle of operation in a
laundry treating appliance, comprising:
a first dye transfer inhibitor (DTI) comprising a polymer
having cationic functional groups and having a weight average
molecular weight greater than 200 kDa;
a second DTI comprising a cationic polymer having a
weight average molecular weight less than 10 kDa and greater
than 1 kDa; and
a third DTI comprising at least one of a polymer or
monomer having a cationic functional group or a cationic
surfactant having a weight average molecular weight less than 1
kDa.
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
Appellants have not shown reversible error in the Examiner’s determination
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
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to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
Appellants’ main argument is that Cooper does not explicitly describe
that its composition is composed of three dye transfer inhibitors with the
recited tri-modal molecular weight distribution (Br. 7, 8), and that the
examiner is using an improper “obvious to try” rational (Br. 9-14). These
arguments are not persuasive for reasons articulated by the Examiner (Ans.
6—8) and because they fail to consider the prior art as a whole.
As pointed out by the Examiner, Cooper discloses as appropriate
components of a laundry treating composition mixtures of cationic polymers
(more than one polymer) having molecular weights that are encompassed by
claim 1 ’s first and second DTI since it encompasses a mixture of different
cationic polymers (one with a molecular weight at the lower side of the
range and another at the higher end of the molecular weight range), and also
teaches that its cationic polymers provide benefits such as dye transfer
inhibition (Cooper Abstract; e.g., col. 23,11. 47-58; Ans. 7). Indeed, Cooper
gives a reason for using a mixture of polymers with different properties in
the same composition in order to adjust the overall composition’s physical
properties. {Id. at col. 23,11. 47-53). Cooper also describes distinct benefits
to cationic polymers having molecular weights on the upper and lower ends
of the disclosed range (Cooper 7:7—16 (explaining that a lower molecular
weight generally allows greater substitution which is desirable, whereas
higher molecular weight is also desirable)).
Appeal 2015-007069
Application 14/160,807
The Examiner also points out that Cooper teaches the use of a cationic
surfactant that is encompassed by claim 1 ’s third DTI (Cooper col. 25,11. 1-
45; Ans. 7). Indeed, Appellants’ “non-limiting examples” of the third DTI
cationic surfactant are quaternary ammonium surfactants similar to those
disclosed by Cooper (compare Spec 1164 to Cooper col. 25,11. 1-42). Thus,
the Examiner’s de facto determination that Cooper’s cationic surfactants, as
well as its cationic polymers, would possess the dye transfer inhibiting
function and molecular weight as recited in claim 1 was reasonable. Cf. In
re Spada, 911 F.2d 705, 708 (Fed Cir. 1990) (when a claimed product
reasonably appears to be substantially the same as a product disclosed by the
prior art, the burden is on the applicant to prove that the prior art product
does not necessarily or inherently possess characteristics attributed to the
claimed product, and that it is of no moment whether the rejection is based
on § 102 or § 103 since the burden on the applicant is the same).
Appellants’ arguments that the list of cationic polymers in Cooper is
too long is not persuasive of error. The length of the list is not determinative
of obviousness. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming
obviousness rejection of claims in light of prior art teaching that “hydrated
zeolites will work” in detergent formulations, even though “the inventors
selected the zeolites of the claims from among ‘thousands’ of compounds”).
Furthermore, Appellants’ “non-limiting examples” for its first, second and
third dye inhibitors likewise encompass many cationic polymers (e.g., Spec.
H 162-164), and the claims require only a minor amount of each of the three
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Application 14/160,807
components. To render an invention obvious, the prior art does not have to
address the same problem addressed by a patent applicant. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007); see also, In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.”).
Thus, in our view, one of ordinary skill would have considered the use
of the three components of Appellants’ composition obvious from the
explicit teachings set out in Cooper. It is also noted that Appellants do not
rely upon any evidence of unexpected results (Br. generally). Thus, a
preponderance of the evidence supports the Examiner’s determination that
claim 1 encompasses Cooper’s laundry treatment composition that may
comprise polymers having the required functional groups and molecular
weights and a cationic surfactant as recited in claim 1.
Appellants similarly argue that the use of a nonionic fixative as
recited in dependent claims 6-8 is not rendered obvious by the combined
teachings of Cooper with either of Panandiker 165 (US 2008/0234165 Al,
Sep. 25, 2008) or Wahl (US 2009/0178212 Al, pub Jul. 16, 2009) (Br. 19-
25). This argument is unavailing as it fails to consider that both of these
references evinces the use of anionic polymers in laundry treating
compositions similar to Cooper (e.g., Ans. 4, 5, 8, 9; also, compare the
applied prior art’s anionic polymers to Appellants’ non-limiting examples of
anionic fixatives Spec. 1166). The properties recited in dependent claims 7
and 8 would have reasonably been expected from the use of similar cationic
and anionic polymers as encompassed by the claims. Appellants have not
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shown error in the Examiner’s de facto determination that the use of such an
anionic polymer would have been no more than the predictable use of a
known material for its known advantages in laundry treating compositions as
exemplified in the applied prior art. KSR, 550 U.S. at 417, 420; In re
Beattie, 974 F.2d at 1312.
Appellants do not provide any substantive additional argument
regarding the additional rejection of dependent claim 10 (Br. 25).
Accordingly, a preponderance of the evidence supports both of the
Examiner’s rejections, and we sustain the § 103 rejections of all the claims
on appeal.
DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WHIRLPOOL CORPORATION
Appeal 2015-007069
Application 14/160,807
Technology Center 1700
Before MARKNAGUMO, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
Opinion for the Board by HASTINGS, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
In my view, the evidence advanced by Appellants is far more
probative of non-obviousness than the evidence advanced by the Examiner
in favor of obviousness. Put another way, I would credit Appellants with
candor, having pointed specifically the best support in Cooper for the
rejection (“[o]f course, mixture of any of the above described cationic
polymers can be employed, and the selection of individual polymers or of
particular mixtures can be used to control the physical properties of the
compositions such as their viscosity and the stability of the aqueous
dispersions.” (Cooper, col. 23,11. 48—52.) This statement, however, merely
indicates that many mixtures are possible—it does not provide a positive
reason to make any mixtures, in particular mixtures of polymers having Mw
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Application 14/160,807
of about 1,000 to about 10,000 Da, and polymers having an Mw of more
than 200 kDa.
The Examiner builds on this disclosure (Ans. 6—8) and edges in the
direction of a prima facie case of obviousness.
While one might further strengthen the position for obviousness by
identifying certain high molecular weight polymers (ammoniated guar gum
(Cooper, col. 12,11. 5—10); and Eudragit E (id. at col. 13,11. 15—18)), as well
as the particularly preferred range of about 1,000 to about 10,000 (id. at
col. 7,1. 10; and col. 12,11. 33—36 (cationic dextrins as scavengers for
anionic surfactants)) disclosed by Cooper, there remains, in my view, no
good answer to Appellants’ criticism that Cooper fails to recognize a
problem or need in the art (Br. 10—12) for trimodal distributions of dye
transfer inhibitors, or even bimodal distributions of polymers meeting the
requirements of DTI and DT2. The Examiner has failed to demonstrate that
Cooper discloses a finite number of identified, predictable solutions to any
problem recognized by the prior art. (Id. at 12—14). The broad reasons
indicated by the Majority (Op. 3, last paragraph), lack, in my view, the
specificity to make up for the lack of a particular reason to modify the
compositions described by Cooper. Enablement is not a proxy for
obviousness.
Accordingly, on the present record, 1 find Appellants’ arguments
persuasive of harmful error in the appealed rejections, and 1 dissent,
respectfully, from the affirmance.
1 would reverse the rejections of record.
2