Ex Parte Mitra et al

Board of Patent Appeals and Interferences

Mar 31, 2010

10457179 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte SHUMAN MITRA
and SUDHAKAR PUVVADA
______________

Appeal 2009-004952
Application 10/457,179
Technology Center 1700
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Decided: March 31, 2010
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Before CHARLES F. WARREN, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 6-18, and 20-24 in the Office Action
mailed March 17, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
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Application 10/457,179
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Claim 1 illustrates Appellants’ invention of a packaged product of a
stable, extrudable, multiphase aqueous liquid cleansing composition, and is
representative of the claims on appeal:
1. A packaged product of a stable, extrudable, multiphase aqueous
liquid cleansing composition, consisting essentially of:
a) a container having an outlet for dispensing the composition;
b) an acid phase including at least one acid held within the container;
c) a soap phase including at least one soap held within the container;
d) wherein the acid and soap phases are present in distinct macro
phases whose average dimension is about 2.0 mm or greater, and are mixed
with each other within the container; and
e) wherein substantial reaction of the acid and soap phases with each
other does not occur when the composition is stored for 50ºC for 30 days.
The Examiner relies upon the evidence in these references (Ans. 3):
Meine US 6,689,223 B1 Feb. 10, 2004
Appellants request review of the following grounds of rejection
advanced on appeal by the Examiner (Br.1 6):2
claim 1 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement (Ans. 3); and
claims 1, 6-18, and 20-24 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as being obvious over Meine (Ans.
4).
Appellants argue the claims in the second ground of rejection as a
group. Br. 9-10. Thus, we decide this appeal based on claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).

1 We consider the Appeal Brief filed June 23, 2008 and the Supplemental
Appeal Brief filed July 2, 2008. We refer to the Appeal Brief below.
Appeal 2009-004952
Application 10/457,179
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Opinion
The issues raised in this appeal require the interpretation of clauses
d) and e) of claim 1. In doing so, we give 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
Appellants as established therein, and without reading into the claim 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).
The subject language of claim 1 specifies
d) wherein the acid and soap phases are present in distinct macro
phases whose average dimension is about 2.0 mm or greater, and are mixed
with each other within the container; and
e) wherein substantial reaction of the acid and soap phases with each
other does not occur when the composition is stored for 50ºC for 30 days.
We determine that when the plain language of these clauses is
considered in light of the claim as a whole and the written description in the
Specification, claim 1 specifies a cleansing composition consisting
essentially of an acid macro phase, having a dimension of at least about
2.00 mm, and a soap macro phase, having a dimension of at least about
2.00 mm, mixed together within a container, thus forming a packaged
product. The respective macro phases of the composition must be

2 The Examiner withdrew the grounds of rejection under 35 U.S.C. § 102(b)
or, in the alternative, under 35 U.S.C. § 103(a) over Chambers and over
Puvvada. Ans. 2-3; see Br. 6.
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Application 10/457,179
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constituted such that “substantial reaction” of the mixed acid and soap macro
phases with each other does not occur when the composition of the mixed
macro phases is stored within the container for 30 days at 50ºC. Spec., e.g.,
2:17-32, 3:23-25, 4:11-13, and 6:21-23.
Claim 1: § 112, first paragraph, written description requirement
Appellants submit that the Specification as filed provides an adequate
written of the claimed invention encompassed by claim 1. We agree with
Appellants in view of our interpretation of claim 1. This is because the
disclosure in the Specification makes clear that the mixed acid and soap
macro phases, each having a dimension of 2.0 mm, of the composition can
be separated in this state such that “substantial reaction does not occur” in
the container as specified in claim 1. In other words, we determine that the
disclosure in the Specification is not limited to a packaged product wherein
the macro phases of the composition are constituted such that the macro
phases must be separated by a “partition” to avoid “substantial reaction,” as
the Examiner contends. Id. See Br. 4 and 6-7; Ans. 3-4 and 5. See, e.g.,
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)
(‘“[T]he test for sufficiency of support . . . is whether the disclosure of the
application relied upon ‘reasonably conveys to the artisan that the inventor
had possession at the time of the later claimed subject matter.”’) (quoting
Ralston Purina Co. v. Far-Mar-Co., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
Thus, we reverse the ground of rejection of claim 1 under 35 U.S.C.
§ 112, first paragraph, written description requirement.
Claim 1: Meine
With respect to the grounds of rejection Meine under § 102(b) or
Appeal 2009-004952
Application 10/457,179
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§ 103(a),3 the Examiner relies on Meine’s disclosure of cleaning
compositions having a lower continuous phase composition and an upper
continuous phase composition, wherein the upper phase is immiscible with
the lower phase and the composition “can be temporarily converted into an
emulsion by shaking.” Ans. 4, citing Meine col. 2, ll. 10-21. The Examiner
finds that Meine further discloses surfactants, fatty acid soaps, and other
ingredients for such compositions, thus anticipating the claimed packaged
composition encompassed by claim 1. Ans. 4. The Examiner further
contends that while Meine does not disclose the dimension of at least about
2.0 mm for an acid macro phase and a soap macro phase, it would have been
obvious to one of ordinary skill in the art that Meine’s compositions have
macro phases of such dimension because the reference discloses two distinct
macro phases, and this person would have optimized the dimensions of such
macro phases by routine experimentation. Ans. 4-5. The Examiner
concludes that Meine’s compositions thus appear to meet the claim
limitation that the mixed macro phases would not substantially react when
the composition is stored at 50ºC for 30 days when the macro phases reside
together in the container. Ans. 6.
Appellants submit that Meine does not anticipate or render obvious
the claimed product. Br. 9-10. Appellants point out that Meine teaches that
when the two immiscible phases are mixed, they form a temporary emulsion
that separates into separate phases over a period of time which can be up to
50 hours at about 20ºC to about 40ºC. Br. 9-10, citing Meine col. 2,

3 The alternative grounds of rejection under §§ 102(b) and 103(a) require
separate consideration under each statutory provision. See, e.g., In re Spada,
Appeal 2009-004952
Application 10/457,179
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ll. 33-40. Appellants contend that one of ordinary skill in the art would
understand that the emulsion would have domains smaller than 2.0 mm
which would accelerate the reaction between the reactive materials in the
domains. Br. 9-10. The Examiner does not adduce scientific reasoning or
evidence to the contrary in reply. Ans. 6.
On this record, we agree with Appellants. The Examiner does not
point out how the evidence in Meine describes to one of ordinary skill in the
art the claimed invention encompassed by claim 1, including the limitations
of clauses d) and e) as we interpreted this claim language, within the
meaning of § 102(b). See above pp. 3-4. See, e.g., Spada, 911 F.2d at 708
(anticipation requires that the reference describes all elements of the claimed
invention sufficiently to place a person of ordinary skill in the art in
possession thereof).
The Examiner also does not explain why the teachings of Meine
would have led one of ordinary skill in the art to modify Meine’s emulsions
to obtain acid and soap macro phases with a dimension of 2.00 such that
“substantial reaction” of the mixed acid and soap macro phases does not
occur when the composition is stored within the container for 50ºC for 30
days. See, e.g., B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d
1577, 1582 (Fed. Cir. 1996) (“When obviousness is based on a particular
prior art reference, there must be a showing of a suggestion or motivation to
modify the teachings of that reference. This suggestion or motivation need
not be expressly stated.” (citation omitted)).

911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
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Application 10/457,179
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Accordingly, we reverse the grounds of rejection of claims 1, 6-18,
and 20-24 under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a) over
Meine.
The Primary Examiner’s decision is reversed.
REVERSED

PL Initial:
sld

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