Ex parte Mazzola

Board of Patent Appeals and Interferences

Nov 16, 2000

08522164 (B.P.A.I. Nov. 16, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LOUIS R. MAZZOLA
____________
Appeal No. 1997-3350
Application No. 08/522,164
____________
ON BRIEF
____________
Before CAROFF, WARREN, and WALTZ, Administrative Patent
Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the examiner's final rejection of
claims 1-14. Subsequent to the final rejection, appellant
elected to amend claim 1 and cancel claim 9. Accordingly, the
claims before us are claims 1-8 and 10-14.
Appeal No. 1997-3350
Application No. 08/522,164
2
Similar claims are under appeal in related applications
08/436,182 (Appeal No. 97-3332) and 08/449,956 (Appeal No. 97-
3389).
The instant claims, like those in the related
applications, are directed to a laundry detergent composition
which includes, inter alia, a nonionic ethoxylated alcohol
surfactant and an anionic ethoxylated alcohol sulfate salt as
a second surfactant. In addition, the present claims call for
the inclusion of a polyethylene glycol (PEG). Claim 1 is
representative:
1. A powder laundry detergent composition with improved cold
water residue properties, which is a granulated blend of
ingredients consisting essentially of (1) between about 40-90
weight percent of a water-soluble detergent builder ingredient
wherein at least 72 weight percent of the detergent builder
ingredient is sodium carbonate; and (2) between about 5-40
weight percent of a detergent active ingredient which is a
surfactant blend comprising (a) between about 40-80 weight
percent, based on the surfactant weight, of an anionic salt
compound corresponding to the formula:
R-O-(CH CH O) -SO M2 2 n 3
where R is a C -C alkyl group, n is an average number of10 15
ethoxylate groups between about 1-9, and M is an alkali metal
or ammonium cation, (b) between about 20-60 weight percent,
based on surfactant weight, of a nonionic compound
corresponding to the formula:
R-O-(CH CH O) -H2 2 n
where R is a C -C alkyl group, and n is an average number of10 15
ethoxylate groups between about 1-9; and (c) between about 5-
Appeal No. 1997-3350
Application No. 08/522,164
3
30 weight percent, based on the surfactant weight, of a
polyethylene glycol constituent corresponding to the formula:
H-(OCH CH ) -OH2 2 n
where n is an average number of ethoxylate groups between
about 20-240; (3) between about 0.5-10 weight percent of
water-soluble inorganic potassium salt; and (4) less than
about 5 weight percent of phosphate salt.
The prior art references relied upon by the examiner on
appeal are:
Boucher et al. (Boucher) 5,180,515 Jan. 19, 1993
Mazzola 5,482,646 Jan. 9, 1996
(effective filing date: Mar. 5, 1993)
Pepe et al. (Pepe) 5,415,806 May 16, 1995
All of the appealed claims stand rejected for obviousness
under 35 USC § 103 in view of either Boucher alone or,
alternatively, in view of Mazzola taken in combination with
Pepe.
Upon careful consideration of the entire record in light
of the opposing positions advanced on appeal, we find that the
issues presented are not ripe for a decision on the merits.
Accordingly, we shall remand this application to the examiner
to address the following matters.
First, with regard to the rejection based upon the
Boucher reference, we note that at least some of appellant's
Appeal No. 1997-3350
Application No. 08/522,164
Claims 12-14 do not require that the weight percent of1
PEG be based upon surfactant weight.
4
claims require that the subject composition include PEG in an
amount of "between about 5-30 weight percent, based on the
surfactant weight" (underlining added for emphasis).1
Boucher includes PEG as an additive in exemplified
compositions (Examples I-VI), but the Boucher disclosure
apparently does not indicate its intended function in the
laundry detergent composition.
Before we can determine the question of obviousness with
regard to PEG content, an apparent inconsistency between the
positions of the examiner and the appellant needs to be
resolved. Appellant states in his brief (p. 11-12) that "the
Examples I-IV detergent compositions in Boucher et al. have a
polyethylene glycol weight percent content of 1.4%,
respectively, and Examples V-VI have a polyethylene glycol
weight percent content of 3.4 and 1.7, respectively, based on
the weight of surfactant". Appellant does not explain how he
arrived at these figures.
On the other hand, according to the examiner's answer
Appeal No. 1997-3350
Application No. 08/522,164
5
(p. 10), appellant's claims require inclusion of PEG in an
amount of 0.25-12% by weight based on the composition as a
whole. The examiner then goes on to conclude that "Boucher
has a polyethylene [sic:PEG] content of 0.58-3.4% by weight
which is within the range of the polyethylene glycol required
by the instant application". The examiner does not explain
where he obtained these figures in Boucher or how he derived
them. Moreover, the examiner has failed to explain why any of
the specific PEG percentages given in the Boucher examples
would fall within the scope of appellant's claimed range,
based on surfactant weight, even if the Boucher percentages
happen to fall within a range calculated based upon the
composition as a whole.
In view of the foregoing, we remand the application to
the examiner and require that he take appropriate action
consistent with current examining practice and procedure to
resolve the deficiencies noted above with respect to the
question of obviousness relating to PEG content. The examiner
is further required to communicate his findings on this issue
to appellant for appropriate response, and if appellant
responds, to further respond as necessary via a supplemental
Appeal No. 1997-3350
Application No. 08/522,164
6
examiner's answer, as permitted under 37 CFR §
1.193(b)(1)(1997), with a view toward placing this application
in a condition appropriate for a decision on appeal.
Second, with regard to the rejection based upon the
combination of Mazzola and Pepe, we note that both the instant
application and the Mazzola reference appear to have the same
inventive entity; that is to say Louis R. Mazzola is the sole
inventor in both instances. Under these circumstances, the
Mazzola reference does not appear to qualify as "prior art"
under any of the provisions of 35 USC § 102 and, therefore,
does not constitute a proper basis for rejection under 35 USC
§ 103. However, the claims of the reference may, in
combination with the Pepe reference, constitute a basis for
rejection under the judicially-created doctrine of
obviousness-type double patenting.
Accordingly, the Mazzola-Pepe rejection is reversed to
the extent that it is based upon 35 USC § 103, and we remand
the application to the examiner to consider whether an
obviousness-type double patenting rejection would be
appropriate in this case.
Appeal No. 1997-3350
Application No. 08/522,164
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For the foregoing reasons, we hereby remand this
application to the examiner, via the Office of a Director of
the involved Technology Center, for appropriate action in view
of the above comments.
This application, by virtue of its "special status",
requires immediate action on the part of the examiner. See
MPEP § 708.01 (7th ed., Rev. 1, Feb. 2000). It is important
that the Board of Patent Appeals and Interferences be promptly
informed of any action affecting the appeal in this case.
REMANDED
Appeal No. 1997-3350
Application No. 08/522,164
8
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
lp
Appeal No. 1997-3350
Application No. 08/522,164
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CHARLES B BARRIS
CHURCH AND DWIGHT COMPANY INC
469 NORTH HARRISON STREET
PRINCETON NJ 08543
Leticia
Appeal No. 1997-3350
Application No. 08/522,164
APJ CAROFF
APJ WARREN
APJ WALTZ
DECISION: REMANDED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: September 24, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT