Ex Parte Levy

Board of Patent Appeals and Interferences

Mar 30, 2009

08943125 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RICHARD LEVY
______________

Appeal 2008-2981
Application 08/943,125
Technology Center 1700
_______________

Decided:1 March 30, 2009
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 43 through 58 in the

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the “Decided” date

Appeal 2008-2981
Application 08/943,125
Office Action mailed May 24, 2006. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
Claim 43 illustrates Appellant’s invention of a method of lubricating a
first surface that frictionally engages a second surface, and is representative
of the claims on appeal:
43. A method of lubricating a first surface that frictionally engages a
second surface by coating said first surface with a lubricating composition
having a superabsorbent polymer which absorbs greater than 100 times its
weight in water combined with a material for decreasing friction between
moving surfaces.
The Examiner relies upon the evidence in this reference (Ans. 3): 2
Rogers 5,626,154 May 6, 1997
Appellant requests review of the following grounds of rejection
advanced on appeal (App. Br. 3a-4):
claims 43 through 58 under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 119 through 134 of
co-pending Application 10/733,419, and claims 85 through 110 of co-
pending Application 10/781,240 (Ans. 4);3 and
claims 43, 47, 49, and 58 under 35 U.S.C. § 102(e) as unpatentable over
Rogers (Ans. 5).4

shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
2 We consider these documents: Appeal Brief filed April 26, 2007;
Examiner’s Answer mailed July 25, 2007; and Reply Brief filed September
24, 2007.
3 The Applications matured into US 7,358,216, issued April 15, 2008, and
US 7,338,926, issued March 4, 2008, respectively. Ans. 4.
4 The Examiner withdrew the ground of rejection of claim 57 under
35 U.S.C. § 102(b). Ans. 6.
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The first ground of rejection is moot in view of the Terminal
Disclaimer with respect to both Applications filed on September 24, 2007
with the Reply Brief, which was entered by the Examiner in the
Communication mailed October 25, 2007. The Terminal Disclaimer was
accepted by the USPTO on January 16, 2008. See Reply Br. 1.
Accordingly, only claims 43, 47, 49, and 58 remain for consideration
on appeal.
Appellant argues claims 43, 47, 49, and 58 individually with respect
to the ground of rejection under § 102(e). Reply Br. 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
Issue
The issue in this appeal is whether Appellant has shown that Rogers
does not anticipate the claimed invention encompassed by claims 43, 47, 49,
and 58.
Claim Interpretation
The issue entails the interpretation of claims 43, 47, 49, and 58 by
giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary
skill in the art in light of the written description in the Specification unless
another meaning is intended by Appellant as established therein, and without
reading into the claims any disclosed limitation or particular embodiment.
See, e.g., In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997).
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The claims are drawn to methods of lubricating a first surface that
frictionally engages a second surface which in independent claim 43
involves the step of “coating” the first surface with “a lubricating
composition having a superabsorbent polymer . . . and combined with a
material for decreasing friction between moving surfaces,” without
limitation other than the material for decreasing friction must be capable of
decreasing friction to any extent between any two moving surfaces.
Dependent claims 47 and 49 limit this method by specifying “a lubricating
composition consisting essentially of” particular superabsorbent polymers
and a specified material for decreasing friction, and further can optionally
contains a specified lubricant additive. In claim 47, the material for
decreasing friction is any “solid organic lubricant,” and in claim 49, it is
“water.” In both claims, the lubricant additive is “an antioxidant, rust
inhibitor, antiwear compound, extreme pressure additive, detergent,
dispersant, pour point depressant, viscosity-index improver, or foam
inhibitor.” Multiply dependent claim 58 specifies that in each of claims 43
and 47, “said lubricating composition is substantially anhydrous.”
Findings of Fact
We find Rogers would have described to one skilled in this art a
composite containing a water-insoluble polymer, a lubricant shaving aid, and
a water-swellable polymer, and optionally small quantities of a colorant and
an antioxidant as well as polyethylene glycol. When the composite is
contacted with water, the water-swellable polymer acts, that is, swells, to
release the lubricant from the composite. Rogers, e.g., abstract and col. 1,
ll. 34-57, col. 2, ll. 13-16 and 59-63, and Examples 1-6. Rogers discloses
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Application 08/943,125
the water-insoluble polymer maintains the general structure of the composite
and can be, among other things, polystyrene, polyethylene, polypropylene,
polystyrene and polyacetal. Rogers, e.g., col. 2, ll. 10-12, col. 2, l. 64 to col.
3, l. 7, and the Examples. The lubricant can be, among other things, high
molecular weight polyethylene oxide, polyvinyl pyrrolidone,
polyacrylamide, hydroxpropyl cellulose, polyvinyl imiadozoline,
polyhydroxyethylmethacrylate, and silicone. Rogers, e.g., col. 1, l. 66 to col.
2, l. 3, col. 2, ll. 10-12, col. 3, ll. 8-19, and the Examples. The composite
can be formed by extrusion and molding. Rogers, e.g., col. 3, l. 57 to col. 4,
l. 2, and the Examples. The composite is coated on the surface of a shaver
which frictionally engages skin when pressed thereagainst and releases
lubricant when contacted with water during shaving. Rogers, e.g., abstract,
col. 1, ll. 5-47, and the Examples.
Discussion
We determine the Examiner’s findings of fact are adequately
supported by the evidence in Rogers. Ans. 5-6.
We reconsidered the record as a whole in light of Appellant’s
contentions, and are of the opinion that Appellant has not successfully
shown that Rogers would not have described a method as claimed to one
skilled in this art.
We note Appellant presents no specific argument directed to claim 43.
App. Br. 6; Reply Br. 1-2. In any event, and in light of the arguments
advanced with respect to claims 47 and 49, we determine that the term
“having” used in claim 43 would have its ordinary meaning in claim
construction of opening this claim to encompass lubricating compositions
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which include any additional material(s), including the water-insoluble
polymers of Roger’s composition. Indeed, we find no basis in the language
of claim 43 or in the written description in the Specification to interpret the
term “having” in a limiting manner. Compare University of California v. Eli
Lilly and Co., 119 F.3d 1559, 1573 (Fed. Cir. 1997) (in a claim
encompassing a “‘cDNA having’” an unspecified sequence, “[t]he word
‘having’ still permitted inclusion of other moieties.”) with In re Deuel, 51
F.3d 1552, 1555, 1558 (Fed. Cir. 1995) (a claim to a “‘cDNA . . . having
the’” recited sequence defined “the precise cDNA molecules”).
Appellant contends Rogers does not anticipate claims 47 and 49
because these claims do not encompass Rogers’s water insoluble polymers
by reason of the language “consisting essentially of” that limits the
lubricating composition to the specified ingredients and ingredients which
do not materially affect the basic and novel characteristics of the claimed
invention. Reply Br. 3-5; App. Br. 5. Appellant contends Rogers’s
compositions require water-swellable polymers to release a lubricant from
the composition and thus, function differently from the claimed
compositions which possess microsponging properties and release or
reabsorb lubricants with changes in pressure. Reply Br. 3-4, citing Spec. 29-
30.
The claim term “consisting essentially of” is used in claim
construction to indicate, for example, that “the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
materially affect the basic and novel properties of the invention.” PPG
Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998).
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Thus, the interpretation of this term in this instance requires a determination
of whether water-insoluble polymers used by Rogers to provide structure to
the disclosed anti-friction composition would materially affect the basic and
novel characteristics of the claimed lubricating composition. See In re Herz,
537 F.2d 549, 551-52 (CCPA 1976) (explaining Ex parte Davis, 80 USPQ
448 (Pat. Off. Bd. App. 1948)). In arriving at this determination, the written
description in Appellant’s Specification must be considered. Herz, 537 F.2d
at 551-52 (“[I]t is necessary and proper to determine whether [the]
specification reasonably supports a construction” that would exclude or
include particular ingredients.); see also PPG Indus., 156 F.3d at 1354-57
(Patentees “could have defined the scope of the phrase ‘consisting
essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel
characteristics of the invention. The question for our decision is whether
PPG did so.”).
We find the written description in the Specification discloses that the
solid or particulate organic lubricants can include alkylene homopolymers
including, among other things, ethylene and propylene. The solid or
particulate organic lubricants can be combined with room temperature liquid
materials for decreasing friction between moving surfaces, such as, among
other things, water. Spec. 26. The lubricant can be, among other things, a
solid, whether rigid, semi-rigid or flexible at room temperature. Spec. 27.
The lubricant composition “can be shaped by any conventional molding or
extruding process to form discs, sheets, rods, blocks, powders, or filaments,
and especially solid lubricant compositions that can be formed to the
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contours of the surface or surfaces that are being lubricated.” Spec. 27-28;
see also 29. The lubricant compositions can be formed into dry films layers
that can be from about 2 to about 25 mils thick and used in a laminar
structure. Spec. 28. “Other solid fillers, adjutants and diluents can be used
in combination with the lubricants employed in the lubricating
compositions.” Spec. 30. “Another outstanding feature of the lubricant
compositions is their ability, under pressure to release the lubricant as film
or drop, or droplets, such as microdroplets and to recapture the released
lubricant after pressure is released or ceases.” Spec. 29.
Our review of the written description in the Specification, summarized
above, reveals no teachings which preclude the presence of water-insoluble
polymers, such as polyethylene and polypropylene polymers, as well as solid
fillers in the lubricating composition because they materially effect the basic
and novel characteristics of the claimed lubricating composition. Indeed,
polyethylene and polypropylene homopolymers are specifically disclosed in
the Specification as appropriate additives for solid organic lubricant
containing compositions which can be combined with water, and the
lubricating compositions can be extruded and molded. In the same manner,
Rogers employs polyethylene and polypropylene polymers along with other
water-insoluble polymers to provide shape to the described lubricating
composites which can include solid organic lubricants, such as polyethylene
oxide, and are extruded into the desired shape. Rogers’s compositions are
further combined with water during the shaving processes in which the
lubricating composite on the razor is applied under pressure to the surface of
skin. See above pp. 4-5.
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We point out here with respect to claims 49 and 58, which require the
presence of water and substantially the absence of water in the claimed
lubricating composition, that the combination of Rogers’s compositions with
water during the shaving process satisfies the requirement for water as a
lubricating material in claim 49. See, e.g., Exxon Chem. Pats., Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1556-58 (Fed. Cir. 1995) (“Consequently, as
properly interpreted, Exxon’s claims are to a composition that contains the
specified ingredients at any time from the moment at which the ingredients
are mixed together.”). Thus, prior to combining with water in the shaving
process, Rogers’s lubricating compositions are at least substantially
anhydrous, which is all that claim 58 requires in modifying claims 43 and
47.
In view of the disclosure of common ingredients for lubricating
compositions in the Specification and in Rogers, we find it reasonably
appears that the claimed compositions encompassed by claims 47, 49, and
58 are identical to those described by Rogers. Thus, both the claimed and
prior art lubricating compositions would reasonably appear to release and
reabsorb lubricant under pressure even though Rogers is silent with respect
to this property. Therefore, the burden shifts to Appellant to patentably
distinguish the claimed method of lubricating a first surface with a
lubricating composition encompassed by claims 47, 49, and 58 by argument
and/or objective evidence. See, e.g., In re Spada, 911 F.2d 705, 708-09
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977); In re
Skoner, 517 F.2d 947, 950-51 (CCPA 1975). We find no such argument or
evidence in the record.
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Conclusion of Fact
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in Rogers
with Appellant’s countervailing evidence of and argument for non-
anticipation and conclude, by a preponderance of the evidence and weight of
argument, that the claimed invention encompassed by appealed claims 43,
47, 49, and 58 through would have been anticipated as a matter of fact under
35 U.S.C. § 102(e).
The Primary Examiner’s decision 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)(iv).
AFFIRMED

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