Ex Parte Luu et al

Board of Patent Appeals and Interferences

Sep 22, 2006

10141442 (B.P.A.I. Sep. 22, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PHUNONG VAN LUU,
DAVID W. WHITE,
JACOB H. PROPP, and
BRIAN J. SCHUH
__________

Appeal No. 2006-1222
Application No. 10/141,442
__________

ON BRIEF
__________

Before ADAMS, MILLS and GREEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

VACATUR and REMAND TO THE EXAMINER

On consideration of the record we find this case is not in condition for a
decision on appeal. For the reasons that follow, we vacate1 the pending
rejections and remand the application to the examiner to consider the following
issues and to take appropriate action.

1 Lest there be any misunderstanding, the term “vacate” in this context means to set aside or to
void. When the Board vacates an examiner’s rejection, the rejection is set aside and no longer
exists.

Appeal No. 2006-1222 Page 2
Application No. 10/141,442
Claims 1 and 13 are illustrative of the subject matter on appeal and are
reproduced below:
1. A lotion comprising a micro-emulsion composition, which is liquid at
room temperature and undergoes a phase change to a semi-solid or
solid upon contact with a substrate.

13. A lotion comprising a micro-emulsion, which comprises a polar
emollient, a non-polar emollient, a non-ionic surfactant, and a co-
surfactant.

The references relied upon by the examiner are:
Warner et al. (Warner) 5,525,345 Jun. 11, 1996
Luu et al. (Luu) 5,871,763 Feb. 16, 1999

GROUNDS OF REJECTION
Claims 1-18, 20-30 and 32-36 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Warner.
Claims 19, 31 and 37-50 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Warner and Luu.
For the following reasons we vacate the rejections of record and remand
the application to the examiner for further consideration.

DISCUSSION
Anticipation:
The rational for rejecting claims 1-18, 20-30 and 32-36 under 35 U.S.C.
§ 102(b) as anticipated by Warner is missing from the Answer. As set forth in
Manual of Patent Examining Procedure (MPEP) § 1207.02, “[a]n examiner’s

Appeal No. 2006-1222 Page 3
Application No. 10/141,442
answer should not refer, either directly or indirectly, to any prior Office action with
out fully restating the point relied on in the answer.”
The examiner’s only statement with regard to the anticipation appears at
page 3 of the Answer and is reproduced in full below:
Appellant is further advised that the courts have sanctioned the
practice of nominally basing rejections on 35 USC 103 when, in
fact, the actual ground of rejection is that the claims are anticipated
by the prior art; justification for the sanction is the lack of novelty,
e.g. as evidenced by a complete disclosure of the invention in the
prior art, is the epitome of obviousness. In re Pearson, 181 USPQ
641. The examiner makes this statement of fact because the
original ground of rejection dated September 30, 2003 was made
over claims 1-50 in their entirety based solely on 35 USC 103 as
being unpatentable over Warner et al. USP 5,525,345 in view of
Luu et al. USP 5,871,763, both cited and supplied by applicant.
Upon reviewing said rejection as well as the arguments presented
by appellant in response to said action, the examiner realized that
claims 1-18, 20-30 and 32-36 were unpatentable and clearly
anticipated solely over Warner et al USP 5,525,345 under 35 USC
102.

What this statement has to do with setting forth the basis of the
anticipation rejection eludes this panel. “Under 35 U.S.C. § 102, every limitation
of a claim must identically appear in a single prior art reference for it to anticipate
the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997). “Every element of the claimed invention must be literally
present, arranged as in the claim.” Richardson v. Suzuki Motor Co., Ltd., 868
F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
After we performed a paper chase through this record to identify what
appears to be the basis for the anticipation rejection now before us on appeal, we
find the examiner’s statement at page 3 of the Answer even more baffling. See
the anticipation rejection set forth in at pages 2-3 of the Office Action, mailed

Appeal No. 2006-1222 Page 4
Application No. 10/141,442
April 21, 2004. The examiner’s discussion of the obviousness rejection as it is
set forth in the non-final Office Action dated September 30, 2003 is extremely
unclear, particularly when a subsequent non-final Office Action, mailed April 21,
2004, sets forth the basis for the anticipation rejection now before this panel for
review.
Nevertheless, for clarity we reproduce, in its entirety, the examiner’s
statement of the anticipation rejection as it is found at pages 2-3 of the Office
Action, mailed April 21, 2004, emphasis added:
Claims 1-18, 20-30 and 32-36 are rejected under 35 U.S .C.
102(b) as being anticipated by Warner et al USP 5,55,345.
Warner et al. disclose lotion compositions for imparting soft,
lubricious feel to tissue paper. Warner further discloses in claim 1
that the composition is semi-solid or solid at 20°C. In column 5,
Warner also discloses that emollients are present, specifically
isopropyl myristate. In column 9, Warner further discloses that said
composition is substantially free of water. In column 9, Warner
further discloses that other emollients are also present, specifically,
cetyl and stearyl alcohol, polyhydroxy emollients, aromatic or linear
esters, fatty alcohols with carbons between 12 and 18. In column
14, Warner also discloses that other additives are present, more
specifically, antibacterial agents, perfumes, solvents, etc. Warner
discloses each and every aspect of the invention as claimed by the
applicant in the instant case. Applicant is further advised that the
courts have sanctioned the practice of nominally basing rejections
on 35 USC 103 when, in fact, the actual ground of rejection is that
the claims are anticipated by the prior art; justification for the
sanction is that lack of novelty, e.g. as evidenced by a complete
disclosure of the invention in the prior art, is the epitome of
obviousness. In re Pearson, 181 USPQ 641.

As set forth above “[u]nder 35 U.S.C. § 102, every limitation of a claim
must identically appear in a single prior art reference for it to anticipate the
claim.” Gechter v. Davidson. Further, it is the examiner’s burden of setting forth
a fact-based analysis of the claim together with the prior art pointing out where

Appeal No. 2006-1222 Page 5
Application No. 10/141,442
the prior art teaches the limitations of the claims under rejection. This has not
happened on this record. For illustrative purposes, we make the following
observations:

1. Liquid at room temperature:
Claim 1 before us on appeal would appear to require that the composition be
a liquid at room temperature. From the examiner’s statement of the rejection
Warner discloses a composition that is a “semi-solid or solid at 20°C.”
The examiner provides no explanation as to why this disclosure anticipates
appellants’ claimed invention?

2. Is a lotion a liquid at room temperature?
Recognizing the examiner’s reliance on Warner to teach a composition
that is a “semi-solid or solid at 20°C,” appellants assert (Brief, page 6), this
teaching in Warner cannot anticipate claims 2-18 and 20-24, all of which depend
from claim 1.
Upon consideration of the Appendix of Claims attached to the Brief, we
find that claims 2-7 depend from claim 1 and as discussed above, require that
the composition be a liquid at room temperature. While claim 7 is an
independent claim, it also appears to require that the claimed composition be a
liquid at room temperature. Claims 8-12 depend from claim 7.

Appeal No. 2006-1222 Page 6
Application No. 10/141,442
Unlike claims 1-12, there is no express limitation in claim 13 or its
dependent claims 14-18 and 20-24 that requires the claimed composition be a
liquid at room temperature. Claims 13-18 and 20-24, however, are drawn to a
lotion. While it would seem reasonable that a lotion is a liquid at room
temperature, the examiner has rejected claims 13-18 and 20-24 over a reference
that teaches a composition that is a semi-solid or a solid at room temperature.
Other than this bear assertion, the examiner failed to favor this record with any
explanation or claim construction to support her position that a semi-solid or solid
anticipates a lotion.

3. The lotion of claim 13:
Claim 13 is drawn to a lotion comprising a micro-emulsion, which
comprises a polar emollient, a non-polar emollient, a non-ionic surfactant, and a
co-surfactant. As discussed above, the examiner finds that Warner discloses
that emollients are present. The examiner, however, does not identify which
emollients are polar and non-polar. The examiner does not, however, favor this
record by identifying where a lotion is taught in Warner, which comprises a micro-
emulsion, which in addition to both a polar emollient and a non-polar emollient,
comprises a non-ionic surfactant, and a co-surfactant, as is required by
appellants’ claim 13.

Appeal No. 2006-1222 Page 7
Application No. 10/141,442
Obviousness:

Claims 19, 31 and 37-50 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Warner and Luu. Upon review of the
record, we find similar problems with the obviousness rejection of record as we
observed with the anticipation rejection before us for review. For illustrative
purposes, we make the following observations:
1. Methyl glucose and benzoate esters as emollients:
By way of example, we direct attention to appellants’ claims 13 and 19.
As discussed above, claim 13 is drawn to “[a] lotion comprising a micro-emulsion,
which comprises a polar emollient, a non-polar emollient, a non-ionic surfactant,
and a co-surfactant.” We note that according to claim 13, the lotion comprises
emollients and surfactants. Claim 19 depends from and further limits the non-
ionic surfactant of claim 13 to one which comprises PEG-20 methyl glucose
sesquisterate, PPG-20 methyl glucose ether disterate, or combinations thereof.
According to the examiner (Answer, page 4, emphasis added), “Warner discloses
all aspects of the invention as claimed by the appellants in the instant case with
the exception of the presence of methyl glucose and benzoate esters as
emollients.” The examiner appears to have misunderstood the subject matter set
forth in appellants’ claimed invention. Claim 19 is drawn to a non-ionic
surfactant, not an emollient. To the extent that the examiner would assert that
the compounds set forth in claim 19 function as either an emollient or a non-ionic
surfactant, the examiner failed to articulate such an assertion on this record.

Appeal No. 2006-1222 Page 8
Application No. 10/141,442
2. Where are appellants’ specific formulations taught in the art?
By way of example, we direct attention to claim 39. Claim 39 is drawn to
“[a] lotion comprising, propylene glycol; C12 to C15 alkyl benzoate ester; tri-
octyldodecyl-citrate; a 50/50 mixture of cetyl alcohol and stearyl alcohol; and
PEG-20 methyl glucose distearate combined in proportions which result in a
stable micro-emulsion.” The examiner has failed to favor this record with a clear
explanation as to how the combination of prior art relied upon teaches this
formulation. The same is true of the other formulations set forth in appellants’
claims.

VACATUR and REMAND
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1033 (Fed. Cir. 1997), “[f]or an appellate court to fulfill its role of judicial
review it must have a clear understanding of the grounds for the decision being
reviewed,” which requires that “[n]ecessary findings must be expressed with
sufficient particularity to enable [the] court without resort to speculation, to
understand the reasoning of the board, and to determine whether it applied the
law correctly and whether the evidence supported the underlying and ultimate
fact-findings.” Like the Court of Appeals in Gechter, this board requires a clear
understanding of the grounds for the decision being reviewed. It is the
examiner’s burden to provide the evidence necessary to examine the application
and if a rejection is made provide an explanation of the basis for the rejection.
As illustrated by the foregoing examples this has not occurred on this record.

Appeal No. 2006-1222 Page 9
Application No. 10/141,442
Accordingly, we vacate the rejections and remand the application to the
examiner for further consideration. Upon receipt of the administrative file, we
encourage the examiner to take a step back and reconsider the claims together
with the prosecution history and relevant prior art. If, after having the opportunity
to reconsider the record, the examiner finds that a rejection is necessary, the
examiner should clearly articulate the basis for any ground of rejection on the
record being careful to insure that every limitation of each claim is accounted for.

VACATED & REMANDED

)
Donald E. Adams )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Demetra J. Mills ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Lora M. Green )
Administrative Patent Judge )

DEA/jlb

Appeal No. 2006-1222 Page 10
Application No. 10/141,442
Patent Group GA030-43
Georgia-Pacific Corporation
133 Peachtree Street, N.E.
Atlanta, GA 30303-1847