Ex Parte Hodgdon

Patent Trial and Appeal Board

Nov 29, 2017

14311390 (P.T.A.B. Nov. 29, 2017)

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.
14/311,390 06/23/2014 Travis Kyle HODGDON 12189MC 2382
27752 7590 12/01/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
MRUK, BRIAN P
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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 TRAVIS KYLE HODGDON
Appeal 2017-003600
Application 14/311,390
Technology Center 1700
Before KAREN M. HASTINGS, JULIA HEANEY and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 8 and 9 under 35 U.S.C. § 102(e)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Leopold (US 2011/0275553 Al; Nov. 10, 2011). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Proctor & Gamble Company, which, according to the
Appeal Brief, is the real party in interest (Appeal Br. 3).
Appeal 2017-003600
Application 14/311,390
Claim 8 is illustrative of the claimed invention (emphasis added):
8. A consumer product made by a process comprising
adding a polymer to a two phase system, said two phase system
comprising a solvent phase and an active dispersed in said
solvent phase as discrete particles; wherein said polymer has a
substantially equal or neutral charge in relation to said discrete
particles and for the equation Y=bXa
X is the polymer concentration in the solvent polymer solution
Y is the polymer solvent solution viscosity at a shear rate of
0.01 1/s;
b is the extrapolated solvent polymer solution viscosity when X
is extrapolated to unity and the exponent a is, over the range of
the fit, greater than or equal to 4,
the polymer is selected such that the exponent a is from 4 to 5;
over at least 0.1% of the range of X equals 0.001 weight % to
25 weight % polymer.
Appellant’s arguments focus on claim 8. Accordingly, all of the
rejected claims stand or fall together.
ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner’s finding that the claimed subject matter of
representative claim 8 is anticipated within the meaning of § 102, or in the
alternative obvious, in view of the applied prior art of Leopold.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Examiner’s Response to the
Argument section, and we add the following primarily for emphasis.
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejections. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365—
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Application 14/311,390
66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make
a prima facie case of unpatentability, it has long been the Board’s practice to
require Appellants to identify the alleged error in the Examiner’s rejections).
The main limitation in dispute for independent claim 8 is whether “the
polymer is selected such that exponent a is from 4 to 5” as recited in claim 8
encompasses Leopold’s Rheovis CDE polymer (Ans. 4; Appeal Br. 7).
Appellant’s position is that since they disclosed that Rheovis CDE has a
value of a that equals 5.55, it is outside the claimed range. This argument is
not persuasive of reversible error for several reasons. Appellant does not
directly address the Examiner’s position that because the claim states that
the polymer has “substantially equal or neutral charge” this softens the
endpoints of the range of “4 to 5” (see, e.g., Ans. 4). “[T]he PTO must give
claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) “[A]s
applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” Id.
Notably, Appellant’s Specification states “[t]he dimensions and values
herein are not to be understood as being strictly limited to the exact
numerical values recited” (Spec. 32:23—24; emphasis added).
Furthermore, Appellant does not address the Examiner’s alternative
basis that the cationic starches disclosed in Leopold would also satisfy the
claimed equation (Ans. 4; generally Appeal Br.), or sufficiently explain any
alleged error in the Examiner’s alternative obviousness position. Appellant
has not presented any scientific rationale or sufficient evidence that the use
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Appeal 2017-003600
Application 14/311,390
of a polymer where “a” equals 5 versus 5.55 would have resulted in
patentably distinct different properties.2 It has been established when the
difference between the claimed invention and the prior art is a range, a prima
facie case of obviousness exists where the prior art and claimed ranges
overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one skilled in the
art would have expected them to have the same properties. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.
1985).
As pointed out by the Examiner, claim 8 is directed to a product and
Appellant has not shown that the product of Leopold (containing Rheovis
CDE) is patentably distinct from the claimed product because of the recited
process step of adding a polymer to a two phase system (e.g., Ans. 3).
Appellant’s statement that Leopold’s examples are not phase stable (e.g.,
after 42, 56, or 63 weeks depending on % MgCf therein) as evidenced by
Table 1 of Leopold (Appeal Br. 8), does not adequately establish or explain
how the recited process step results in a different product, as the claimed
product is not limited to those that are phase stable after, e.g., 42, 56, or 63
weeks.
In light of the above, Appellant does not sufficiently point out any
error to dispute the Examiner’s position that the claimed consumer product
2 Indeed, the present Specification indicates that Rheovis CDE has a value of
“a” of 5.55 and is appropriate for the invention described therein (Spec.
23:13-14; Spec. 29:3-10, Table 2).
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Appeal 2017-003600
Application 14/311,390
(e.g., fabric softener composition) encompasses the liquid fabric softening
composition of Leopold which may have Rheovis CDE® or a cationic starch
as a polymer therein, which are described in Appellant’s Specification to be
suitable polymers for the claimed invention.
Appellant then relies upon Dr. Hodgdon’s Declaration to evince
unexpected results (Appeal Br. 8). First, it is well established that evidence
of unexpected results may not overcome a rejection based on anticipation.
To the extent the rejection is alternately based on obviousness, it is also well
established that the burden of showing unexpected results rests on the person
who asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of
unexpected results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). Appellant has not
shown reversible error in the Examiner’s determination that the evidence
relied upon by Appellant is not commensurate in scope with the limitations
of claim 8 and, therefore, is not persuasive evidence of nonobviousness
(Ans. 5, 6). It is also noted that Appellant’s Specification states solutions
with “polymer lots with an exponent ‘a’ greater than 4 are stable and persist
as a single phase” (Spec. 32:15—16), and does not appear to indicate in any
way that an “a” value of 5 is a critical upper limit. Appellant has not
explained how the evidence of Dr. Hodgdon’s Declaration sufficiently
indicates that 5 is a critical upper limit for “a”. Appellant has also not
adequately shown that the alleged unexpected result of phase stability is
indeed an unexpected result to those of skill in the art, since obtaining phase
stability is a known desirable characteristic for such a consumer product.
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Application 14/311,390
Thus, a preponderance of the evidence supports the Examiner’s position
(Ans. generally).
Accordingly, we affirm the Examiner’s anticipation rejection, and we
also affirm the § 103 rejection for the reasons set out.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
DECISION
AFFIRMED
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