Ex Parte Kuhlman et al

Patent Trial and Appeal Board

Aug 19, 2013

11726456 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/726,456 03/22/2007 Dennis Eugene Kuhlman 10760 8697
23368 7590 08/19/2013
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
08/19/2013 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 DENNIS EUGENE KUHLMAN and
TIMOTHY WOODROW COFFINDAFFER
____________

Appeal 2012-005219
Application 11/726,456
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
DEBORAH KATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005219
Application 11/726,456

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3-9, 11-17, 19-21, 23-29, 31-38, 40-42, 44-50,
52-58, and 61. We have jurisdiction under 35 U.S.C. § 6.

We AFFIRM-IN-PART.

Appellants claim an aerosol product comprising a foaming
concentrate composition and a propellant contained in a package wherein the
composition includes polymeric beads having a size range of at least about
150 µm (independent claim 1; see also remaining independent claims 21 and
42).

A copy of representative independent claim 1, taken from the Claims
Appendix of the Appeal Brief, is set forth below.
1. An aerosol product comprising:

(a) a foaming concentrate composition comprising:

(i) at least 1%, by weight of said foaming concentrate
composition, of a surfactant;

(ii) from about 0.1% to about 10%, by weight of said
foaming concentrate composition, of polymeric beads selected
from the group consisting of polyethylene, polypropylene,
oxidized polyethylene, and mixtures thereof; wherein the
polymeric beads have a size of at least about 150 µm; and

(iii) from about 0.01% to about 10%, by weight of said
foaming concentrate composition, of an anti-foaming agent;

Appeal 2012-005219
Application 11/726,456

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(b) a propellant; and

(c) a package containing said foaming concentrate composition
and said propellant; wherein said package comprises a container and a
powder valve comprising an orifice having an orifice diameter of at
least about 508 µm;

wherein a ratio of a maximum size of said polymeric beads to said
orifice diameter of said orifice is less than about 0.75.

The Examiner provisionally rejects claims 1, 3-7, 11-14, and 16 under
the doctrine of obviousness-type double patenting as being unpatentable
over certain claims of related co-pending application no. 11/726,457.

Under 35 U.S.C. § 103(a), the Examiner rejects all appealed claims as
unpatentable over Sugai (6,063,366, issued May 16, 2000) in view of Spitzer
(4,019,657, issued Apr. 26, 1977), Puvvada (6,764,991 B2, issued Jul. 20,
2004 ), LeGrow (7,235,230 B2, issued Jun. 26, 2007, filed Oct. 24, 2001),
and Lewis (6,482,783 B1, issued Nov. 19, 2002).

We summarily sustain the provisional obviousness-type double
patenting rejection since it has not been contested by Appellants in the
record of this appeal.

Concerning the independent claim feature of polymeric beads having
a size of at least 150 µm, the Examiner finds that the polymer particles of
Sugai are not taught to be in bead form having the claimed size range but
that Puvvada teaches a skin care product comprising polymeric beads within
Appeal 2012-005219
Application 11/726,456

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the size range of 100-600 µm (Ans. para. bridging 5-6). The Examiner
concludes that it would have been obvious "to include (or utilize) the
particles of bead form [of Puvvada] with the motivation of enhancing the
exfoliating properties of the composition [of Sugai]" (id.).

Appellants correctly point out that Sugai discloses a composition
comprising disintegrating granules composed of water-insoluble primary
particles and a binder wherein the disintegrating granules have a particle size
of 100-2000 µm and the primary particles have an average particle size of at
most 100 µm (App. Br. 15). Appellants also correctly point out that Sugai
discloses average primary particle sizes exceeding 100 µm give users an
irritated feeling after disintegration of the granules (id.). In light of these
disclosures, Appellants argue that Sugai teaches away from their claimed
polymeric beads having a size of at least about 150 µm and accordingly that
"one of ordinary skill in the art would not modify Sugai to incorporate the
large exfoliating particles of Puvvada" (id.).

The Examiner responds to this argument as follows:
II)- In response to appellant's argument (pages 14-15) that:
"Sugai teaches a disintegrating particles with the size of 100-2000 µm,
and the primary particles have an average particle size of at most 100
µm", it is noted that: the features upon which applicant relies (i.e.,
disintegrable or non-disintegrable particles) are not recited in the
rejected claim(s). Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the
claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993). Furthermore, appellant's claim(s) are limited by particles
of certain size, wherein the future destiny (i.e. water solubility,
Appeal 2012-005219
Application 11/726,456

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disintegrating...etc.) of claimed particles have no bearing on their
presence in the claimed aerosol product, and thus on the claimed
limitation.

(Ans. 16).

In the reply, Appellants state that the Examiner's response is
misplaced because, in making the above argument, "Appellants do not rely
on disintegrable or non-disintegrable particles as taught in Sugai" (Reply Br.
2).

We agree with Appellants. The Examiner's response fails to address
Appellants' fundamental argument that one with ordinary skill in this art
would not have provided Sugai with polymeric beads having the claimed
size of at least about 150 µm as proposed by the Examiner because Sugai
teaches average primary particle sizes exceeding 100 µm give users an
irritated feeling. It follows that the Examiner has failed to rebut Appellants'
argument in the appeal record.

For this reason, we will not sustain the Examiner's § 103 rejection of
the appealed claims.

The decision of the Examiner is affirmed-in-part.

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) (2011).
Appeal 2012-005219
Application 11/726,456

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AFFIRMED-IN-PART

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