Ex Parte Mitra et alDownload PDFBoard of Patent Appeals and InterferencesMar 31, 201010457179 (B.P.A.I. Mar. 31, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ 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 _______________ Decided: March 31, 2010 _______________ 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. Appeal 2009-004952 Application 10/457,179 2 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 3 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. Appeal 2009-004952 Application 10/457,179 4 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 5 § 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 6 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). Appeal 2009-004952 Application 10/457,179 7 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 UNILEVER PATENT GROUP 800 SYLVAN AVENUE AG WEST S. WING ENGLEWOOD CLIFFS, NJ 07632-3100 Copy with citationCopy as parenthetical citation