Ex Parte Huchel et al

Patent Trial and Appeal Board

Jun 7, 2017

13585926 (P.T.A.B. Jun. 7, 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.
13/585,926 08/15/2012 Ursula Huchel PT018273 6641
49641 7590 06/09/2017
THE DIAL CORPORATION
7201 E. Henkel Way
SCOTTSDALE, AZ 85255
EXAMINER
REUTHER, ARRIE L
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
US-STZ-PATENTS-UK-UW@us.henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URSULA HUCHEL, ANDREAS GERIGK, HUBERT SMYREK,
RALF BUNN, ANDREAS BAUER, MANUELA MATERNE,
MARC WEYHE, KLAUS INTEMANN, and
DAGMAR PREIS-AMBERGER
Appeal 2016-007661
Application 13/585,926
Technology Center 1700
Before ROMULO H. DELMENDO, AVELYN M. ROSS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4, and 6—12. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 We refer to the Specification (“Spec.”) filed August 15, 2012; Final Office
Action (“Final Act.”) dated May 12, 2015; Appellants’ Appeal Brief (“App.
Br.”) dated December 14, 2015; Examiner’s Answer (“Ans.”) dated June 8,
2016; and Appellants’ Reply Brief (“Reply Br.”) dated August 8, 2016.
2 Appellants identify Henkel AG & Co. KGaA as the real party in interest.
App. Br. 3.
Appeal 2016-007661
Application 13/585,926
BACKGROUND
The subject matter on appeal relates to perfume compositions and
methods for stabilizing fragrance compounds in a perfume composition.
Spec. 1. Claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief, with italics added to highlight the key recitation in dispute
1. A perfume composition comprising:
one or more fragrance compounds selected from the group
of compound classes consisting of terpenoids, pyrocatechol
derivatives, phenol derivatives, aromatics, aliphatics, alicycles,
and heterocycles;
amino alcohol(s) according to the formula (II)
wherein R1, R2, and R3 in formula (II), mutually
independently in each case, denote hydrogen or hydrocarbon
residues, or hydroxyalkyl residues in which the hydrocarbon or
hydroxyalkyl residues are optionally substituted; and
optionally one or more solvents selected from the group
consisting of benzyl alcohol, dipropylene glycol, Dowanol,
ethanol, isopropanol, isopropyl myristate, paraffin, propylene
glycol, castor oil, and triazine,
wherein the fragrance compound(s) and amino alcohol(s)
constitute at least 50 wt.% of the perfume composition.
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Appeal 2016-007661
Application 13/585,926
REJECTION3
Claims 1, 4, and 6—12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Fuji.4
DISCUSSION
Appellants do not contest the Examiner’s finding that Fuji describes a
perfume composition comprising the claimed amino alcohol and one or
more fragrance compounds. Compare Final Act. 3 with App. Br. 5—7.
However, Appellants argue that Fuji fails to describe those ingredients
present in an amount that is at least 50 wt. % of the perfume composition.
App. Br. 4—5.
The Examiner relies on the working examples reported in Table 1 of
Fuji, and finds that the at least 50 wt. % recitation is satisfied if the amino
alcohol and fragrance compounds are viewed together and in isolation of the
remaining ingredients of Fuji’s example compositions. See Final Act. 3,1 5
(“The mixture of the amino alcohols and the fragrance compounds are
considered to be the perfume composition, thereby the fragrance compounds
and the amino alcohol make up 100 wt% of the perfume composition.”).
That is, the Examiner isolates a hypothetical mixture of Fuji’s amino alcohol
and fragrance compound ingredients (compounds (a) and (b), respectively,
in Fuji’s Table 1), and finds that this hypothetical mixture meets the at least
50 wt. % recitation because it is formulated entirely of compound (a) and
compound (b).
3 Final Act. 3^4; Ans. 2—3.
4 JP 2007-300963 A, published November 22, 2007 (“Fuji”), as translated.
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Appeal 2016-007661
Application 13/585,926
Although Table 1 is only partly translated, Appellants contend that
Fuji’s Table 1 reports examples of compositions that contain 0.05 wt. %
compound (a) and 0.005 wt. % compound (b), with the balance being mainly
water and pH modifiers. App. Br. 5. Appellants’ characterization of Fuji’s
described examples is consistent with Fuji’s overall disclosure. See, e.g.,
Fuji 127 (explaining that the described compositions include component (a)
at a concentration from 0.001 to 10 mass %, component (b) at a
concentration from 0.001 to 1 mass %, with the remainder being water).
The Examiner does not expressly disagree with Appellants’ reading of Fuji’s
Table 1. Rather, the Examiner relies solely on a mixture of component (a)
and component (b), independent of the rest of the ingredients in Fuji’s
compositions, and reads that mixture on the claimed perfume composition,
such that components (a) and (b) are viewed as 100 % of the perfume
composition. Final Act. 3.
We agree with Appellants that the Examiner’s reading of Fuji’s Table
1 is in error. Fuji’s description of compositions containing 0.05 wt. %
component (a) and 0.005 wt. % component (b) fails to support the
Examiner’s finding that Fuji describes a perfume composition containing at
least 50 wt. % components (a) and (b).
The Examiner’s alternative rationale—that Fuji describes forming a
mixture of components (a) and (b) as a tangible intermediate composition—
also lacks sufficient evidentiary support. See Final Act. 5. As Appellants
persuasively point out (App. Br. 6), there is no disclosure in Fuji of a
manufacturing method in which a mixture only of components (a) and (b) is
formulated. Rather, in connection with the examples reported in Table 1,
Fuji generically states that “[t]he deodorizer composition of the combination
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Appeal 2016-007661
Application 13/585,926
formula shown in Table 1 was prepared.” Fuji 32. The Examiner’s
reliance on Fuji’s claim 2 (Ans. 3—4), also is inadequate to support a finding
that Fuji describes an intermediate mixture of only components (a) and (b).
We note that the machine translation of Fuji generally lacks grammatical
clarity. This lack of clarity applies also to the translation of Fuji’s claim 2.
The Examiner characterizes Fuji’s claim 2 as a “deodorant composition
[that] comprises a polyhydroxy amine (corresponding to the instant formula
II) and a perfume.” Id. (emphasis added). Under that reading, Fuji’s claim
2 plainly does not describe a composition formed only of those ingredients.
At best, Fuji’s claim 2, as translated, is ambiguous as to whether that claim
is directed to a composition containing or consisting of the recited
ingredients. That ambiguity precludes any reliance solely on Fuji’s claim 2
for evidentiary support of anticipation. See In re Turlay, 304 F.2d 893, 899
(CCPA 1962) (“It is well established that an anticipation rejection cannot be
predicated on an ambiguous reference.”).
For the foregoing reasons, we cannot sustain the Rejection.
DECISION
The Examiner’s decision rejecting claims 1, 4, and 6—12 is reversed.
REVERSED
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