Ex Parte Luu et al

Board of Patent Appeals and Interferences

Apr 28, 2011

11297201 (B.P.A.I. Apr. 28, 2011)

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.
11/297,201 12/08/2005 Phuong V. Luu 12216 P1 (GP-05-6-1) 2679
31743 7590 04/28/2011
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
FISHER, ABIGAIL L
ART UNIT PAPER NUMBER
1616
MAIL DATE DELIVERY MODE
04/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

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

Appeal 2011-000020
Application 11/297,201
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
lotion-treated substrate and a method of making a lotion-treated substrate.
The Patent Examiner rejected the claims on the grounds of indefiniteness,
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obviousness, and, provisionally, nonstatutory obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the
rejections for indefiniteness and obviousness, and do not reach the
provisional obviousness-type double patenting rejection.

STATEMENT OF THE CASE
Claims 1-32, which are all the pending claims, are on appeal. Claims
1 and 8 are representative and read as follows:
1. A lotion-treated substrate suitable for tissue or towel comprising:
(a) a cellulosic web; and
(b) a lotion emulsion disposed on the web,
the lotion emulsion including a polar emollient and a non-polar
emollient as well as a surfactant composition comprising a nonionic
surfactant, the polar emollient, nonpolar emollient and surfactant
composition being selected so as to be capable of forming a micro-
emulsion in the absence of water;
(c) wherein the lotion emulsion is liquid at room temperature;
(d) the emollients and surfactant composition are selected such that
the lotion emulsion is a stabilized micro-emulsion which undergoes a
phase change to a semi-solid or solid upon contact with the fibers of
the web and is thus immobilized on the web in a semi-solid or solid
state; and
(e) wherein the lotion emulsion is capable of forming an aqueous gel
upon contact with water.

8. The lotion-treated substrate according to Claim 1, wherein the lotion
emulsion is a waterless micro-emulsion.

The Examiner rejected the claims as follows:
• claims 8 and 16-22 under 35 U.S.C. § 112, second paragraph, as
vague and indefinite;
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• claims 1-32 under 35 U.S.C. § 103(a) as unpatentable over Klofta1
and Linn;2
• claims 1-7, 9-15 and 23-32 under 35 U.S.C. § 103(a) as
unpatentable over Bret3 and Linn; and
• claims 1-22 and 32, provisionally, on the ground of nonstatutory
obviousness-type double patenting over claims 36-69 of copending
Application No. 11/557,782.

DEFINITENESS
The Issue
Claim 8 further defines the lotion emulsion of claim 1 as “a waterless
micro-emulsion.” Claims 16-22 recite that “a waterless micro-emulsion” is
a component of the claimed lotion-treated substrate. The Examiner’s
position is that “waterless” is indefinite because “[i]t is unclear if appellants
are attempting to claim an anhydrous composition or if a certain amount of
water, such as that naturally in the atmosphere is acceptable.” (Ans. 4.)
Appellants contend that (1) “waterless” “is in the dictionary and there
is nothing ambiguous about it” (App. Br. 14); (2) “[o]nly a reasonable
degree of particularity is necessary” (id. at 15); and (3) the Examiner’s
“contention that ‘waterless’ could include up to about 10% water is
inconsistent with [Phuong Van Luu’s Third Declaration] evidence, the
dictionary definition and the examples in the case as filed” (id. at 17-18,
citing Examples 9-16 and Table 2).

1 Thomas James Klofta et al., US 6,238,682 B1, issued May 29, 2001.
2 Edwards E. Linn et al., US 4,797,273, issued Jan. 10, 1989.
3 Bruno Bret et al., US 2001/0006676 A1, published Jul. 5, 2001.
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Principles of Law
“A claim is indefinite if its legal scope is not clear enough that a
person of ordinary skill in the art could determine whether a particular
composition infringes or not.” Geneva Pharms., Inc. v. GlaxoSmithKline
PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003).
Analysis
Declarant Phuong Van Luu states: “[a]s to the term ‘waterless’, I
believe one of skill in the art reading the application would interpret this
term as having its ordinary meaning, for example, as it appears in the
Random House Dictionary: . . . devoid of water; dry . . . .” (Third
Declaration of Phuong Van Luu under 37 C.F.R. §1.132, p. 10, ¶ 14.)
We agree. The plain meaning of “waterless” is “devoid of water” or “dry,”
and the Examiner has not shown that the Specification imposed a different
meaning. The rejection provided no evidence that a person of ordinary skill
in the art, upon reading the claim and Specification, would understand
“waterless” to mean its opposite.
We acknowledge the Examiner’s concern with “the degree of water
that is acceptable,” a confusion the Examiner finds generated by Declaration
¶ 14. (Ans. 15-16.) After citing the dictionary meaning, Declaration ¶ 14
continued: “the ordinary meaning of ‘waterless’ does not exclude minor
amounts of moisture which may be sorbed from the atmosphere . . . .”
Definiteness is assessed by the plain meaning of “waterless,” in light of any
additional guidance the Specification provides. By that standard, the term
means “devoid of water” and is reasonably precise. We find the rejection
did not establish a reasonable foundation for its position that a person of
ordinary skill in the art would understand that “minor amounts of water
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sorbed from the atmosphere” (per the Declaration) means “substantial
amounts (which without a definition would be less than 50% water)” (per
Ans. 16.) Instead, we find Appellants’ arguments persuasive. (See Reply
Br. 16-17.) We therefore reverse this rejection.
OBVIOUSNESS
Principles of Law
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658-9 (Fed. Cir. 1992).
“The presence or absence of a motivation to combine references . . . is
a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). “The perspective from which these findings are made . . . is that of a
person of ordinary skill in the field of invention,” Glaverbel Societe
Anonyme v. Northlake Mktg. & Supply, Inc., 45 F. 3d 1550, 1555 (Fed. Cir.
1995), who is presumed to have knowledge of all “pertinent prior art,” In re
Carlson, 983 F.2d 1032, 1038 (Fed. Cir 1992).

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The Issues
The Examiner’s position is that Klofta described a lotion treated
substrate comprising the components listed in parts (a) and (b) of claim 1,
and that Klofta’s lotion emulsion was liquid at room temperature, as part (c)
of claim 1 requires. (Ans. 4-6.) Although Klofta did not describe its lotion
as a micro-emulsion having the phase change property described in part (d)
of claim 1, Linn taught that micro-emulsions had the ability to increase
moisturizing agent penetration rates, and the Examiner concluded it would
have been obvious to substitute Linn’s functionally equivalent surfactants
for Klofta’s to formulate a micro-emulsion (id. at 9-10).
The Examiner found that the surfactants taught by Linn would have
worked as well for Klofta’s lotion, i.e., that “substitution of the exemplified
surfactants of Klofta et al. with the functional equivalents taught by Linn et
al results in lotion that possess[es] the same claimed surfactants and
emollients.” (Ans. 9-10.) The Examiner reasoned that because the materials
would have been the same, Klofta’s lotion-treated substrate would have had
the same properties as Appellants’ lotion-treated substrate. (Id. at 10.)
Appellants contend that “the claim recitation requiring that the lotion
be capable of forming a micro-emulsion in the absence of water and/or the
claim language requiring a waterless lotion clearly distinguishes the art of
record.” (App. Br. 18.) Appellants explain: because Klofta described
exclusively anhydrous lotions, and Linn described water-containing
moisturizing lotions, a person of ordinary skill in the art would not have
been prompted to substitute Linn’s surfactants for Klofta’s. (Id.)
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Analysis
Claim 1 includes the limitations: “(b) a lotion emulsion disposed on
the web,” and “(e) wherein the lotion emulsion is capable of forming an
aqueous gel upon contact with water.” We interpret part (e) to mean that
water is absent from the lotion emulsion as it exists in the state claimed in
part (b). Put another way, in order to have the claimed capability of forming
a gel upon contact with water, the lotion is not in contact with water, i.e., the
lotion on the lotion-treated substrate is not already in the aqueous gel state.
For a dry lotion-treated substrate defined in the claims to have been obvious
at the time of the invention, there must have been a reason to substitute
Linn’s surfactants for Klofta’s.
There is no dispute that Klofta described an anhydrous lotion, and
taught advantages associated with the lotion’s anhydrous nature, or that Linn
described water-in-oil and oil-in-water micro-emulsions, and taught their
advantages for moisturizing. Based on the distinct nature of the two lotions,
Appellants contend that a person of ordinary skill in the art would not have
been motivated to substitute Linn’s surfactants for Klofta’s. We agree.
Although the rejection characterizes the surfactants as “functionally
equivalent,” Klofta’s surfactants functioned in a dry environment, whereas
Linn’s surfactants functioned in an aqueous environment. Evidence that the
different surfactants would have been considered functional equivalents is
missing on this record.
As in their arguments concerning Klofta and Linn, Appellants
emphasize the difference between the Bret and Linn lotions and contend that
(1) Bret “has nothing to do with waterless micro-emulsions,” (2) “the
Examiner has failed to articulate a reason as to why or how Bret et al. should
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be combined with Linn et al.,” (3) “the combined references still do not
relate to waterless-micro-emulsions,” and (4) “the references teach away.”
(App. Br. 22.) We agree with Appellant’s contention that the rejection did
not establish that a person of ordinary skill in the art would have replaced
Bret’s surfactants with Linn’s. Evidence that the different surfactants would
have been considered functional equivalents is missing on this record.

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
The Examiner’s position is that the claims in the copending ‘782
application are “directed to further functional limitations both applications
are claiming the same general type of lotion.” (Ans. 14, sic.) “Copending
‘782 does not claim a fragrance but it would be obvious to . . . add perfumes
or fragrances to lotions, as those are desirable attributes of lotions commonly
seen in the art.” (Id.)
Appellants do not dispute the facts found by the Examiner, nor the
correctness of the Examiner’s legal conclusion. Instead, Appellants request
relief on procedural grounds. Specifically, Appellants contend that the
copending ‘782 application (i) was unexamined as of Feb. 3, 2010, (ii) could
not be expected to issue before this Application, and (iii) therefore the
rejection should be reversed or vacated. (App. Br. 23-24.)
As purported authority for reversal or vacatur, Appellants cite the
MANUAL OF PATENT EXAMINING PROCEDURE § 804(I)(B)(1), which
discusses withdrawal of a provisional rejection when the provisional
rejection is the only rejection remaining in the application. The MPEP
indicates that the Examiner may withdraw the rejection under that
circumstance. Thus, the MPEP provides a regular procedure the Examiner
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may implement after the Examiner regains jurisdiction over the Application.
The timing of this kind of procedural relief is within the Examiner’s
discretion. Review of discretionary matters is ordinarily by petition to the
Director, not by appeal to the Board. E.g., In re Berger, 279 F.3d 975, 984
(Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971)). Appellants’ claim for procedural relief is therefore premature and
we do not reach it. See Ex parte Moncla, 2009-006448 (BPAI 2010)
(precedential) (available at
www.uspto.gov/ip/boards/bpai/decisions/prec/fd09006448.pdf).
SUMMARY
We reverse the rejection of claims 8 and 16-22 under 35 U.S.C. § 112,
second paragraph.
We reverse the rejection of claims 1-32 under 35 U.S.C. § 103(a) as
unpatentable over Klofta and Linn.
We reverse the rejection of claims 1-7, 9-15 and 23-32 under
35 U.S.C. § 103(a) as unpatentable over Bret and Linn.
We do not reach the provisional rejection of claims 1-22 and 32 on the
ground of nonstatutory obviousness-type double patenting over claims 36-69
of copending Application No. 11/557,782.

REVERSED

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