Ex Parte Mortillo et alDownload PDFPatent Trial and Appeal BoardMay 31, 201613519039 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/519,039 06/25/2012 23909 7590 06/02/2016 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 FIRST NAMED INVENTOR Susan Martillo 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 8991-00-PC 1040 EXAMINER SHABMAN, MARK A ART UNIT PAPER NUMBER 2856 NOTIFICATION DATE DELIVERY MODE 06/02/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUSAN MORTILLO, CHERYL KOZUBAL, and SUZANNE JOGUN 1 Appeal2015-001736 Application 13/519,039 Technology Center 2800 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. 1 Appellants identify Colgate-Palmolive Company as the real party in interest. Br. 2. Appeal2015-001736 Application 13/519,039 DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-9, all remaining claims of the application. 2 We have jurisdiction over the claims under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Introduction Appellants' invention is directed to a "method for assessing water resistance of an antiperspirant product." Spec. Title. Claims 1 and 4 are illustrative of the subject matter on appeal and are reproduced below with the disputed limitation emphasized in italics: 1. A method for assessing water resistance of an antiperspirant compnsmg: a) selecting a number of subjects; b) conditioning the subjects by not using any products or using non-antiperspirant containing products in axillae for a conditioning period of time; c) cleansing axillae of each subject, d) applying a desired amount of an antiperspirant product to one axilla and a placebo to the other axilla on each subject; 2 Appellants' Claim Appendix incorrectly includes claim language based on an amendment refused entry by the Examiner thereby rendering the Appeal Brief non-complaint under 37 C.F.R. § 41.37. Br. 3; Advisory Action dated April 25, 2014. The non-entered amendment purports to enter the limitation of claim 4 into claim 1 and cancels claim 4. Br. 2-3. To expedite consideration of the appeal, we treat Appellants' arguments directed to claim 1 as instead applicable to claim 4 as currently pending, which includes the argued subject matter. 2 Appeal2015-001736 Application 13/519,039 e) conducting step d) until a desired number of applications are completed if more than one application is selected; f) after the last application is completed, conducting a water challenge comprising having the subjects move around and/or swim for an activity period of time in a pool of water of sufficient depth such that the axillae are wetted; g) conducting a sweat evaluation; and h) determining if the antiperspirant product has at least standard antiperspirant efficacy. 4. The method of claim 1, wherein the number of applications is at least 4. The Examiner's Rejection Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Guidelines for Effectiveness Testing of OTC Antiperspirant Drug Products, 21 C.F.R. § 350.60 (2003) (the "Guidelines") and 21 C.F.R. § 352.76 (2008). Final Act. 2---6. ISSUES ON APPEAL Based on Appellants' arguments in the Appeal Brief (Br. 2--4), the issues presented on appeal are: Whether the rejection of claim 1 is improper because the Examiner refused to enter the after-final amendment dated April 25, 2014. Whether the Examiner erred in finding the Guidelines teach or suggest applying a desired amount of an antiperspirant product to one axilla and a placebo to the other axilla on each subject at least four times, as recited in claim 4. 3 Appeal2015-001736 Application 13/519,039 Whether the Examiner erred in combining references in rejecting the original claims under 35 U.S.C. § 103(a). ANALYSIS 3 We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred. Br. 2--4. We disagree with Appellants' conclusions. We adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2---6; Adv. Act.), and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants' Appeal Brief (Ans. 3--4). We highlight and address specific findings and arguments below. Non-Entry of Amendment After Final Rejection On April 25, 2014, Appellants filed a response to a Final Office Action, accompanied by a proposed amendments to the original claims. Appellants identify that "[ c ]laim 1 has been amended to include the element from claim 4." Response 4. On May 6, 2014, the Examiner issued an Advisory Action indicating, inter alia, the proposed amendments to the claims would not be entered because they raise new issues that would require further consideration and search. In particular, the Examiner found the proposed amendment to claim 1 "only recites that at least 4 applications is to be conducted which no longer comprises the selection of more than one application as previously presented." Adv. Act. 3 In this Opinion, we refer to Appellants' Appeal Brief ("Br.," filed July 10, 2014); the Final Office Action ("Final Act.," mailed February 26, 2014); the Advisory Action ("Adv. Act.," mailed May 6, 2014); and the Examiner's Answer ("Ans.," mailed on September 3, 2014). 4 Appeal2015-001736 Application 13/519,039 Appellants contend the Advisory Action is incorrect because "[n]o new search or consideration is needed." Br. 3. In particular, Appellants argue the only change in scope to original claim 1 "is to narrow from at least one to at least 4, which was from dependent [original] claim 4." Br. 3. The refusal of an examiner to enter an amendment after final rejection of claims is a matter of discretion. If there is an abuse of discretion, the matter may be remedied by a Rule 181 petition to the Commissioner of Patents [now Director of the U.S. Patent and Trademark Office]. Ultimate judicial review of such matters of practice and procedure may be had in District Court. This court, like the Board of Appeals [now PTAB], does not consider the issue of whether the examiner's refusal to enter the proposed amendment after final rejection constituted an abuse of discretion on his part. In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Mindick, 371 F.2d 892, 894 (CCPA 1967)). Accordingly, the discretionary decision of the Examiner to refuse to enter Appellants' declaration is a petitionable matter and is not subject to revie\v by the Board. Therefore, \Ve do not fhrther address the Examiner's refusal to enter the amendment. "At Least 4 Times " Appellants further contend the Examiner erred in finding the Guidelines teach or suggest applying a desired amount of an antiperspirant product to one axilla and a placebo to the other axilla on each subject at least four times, as recited in claim 4. Br. 3--4. In particular, Appellants argue the Guidelines' "at least two times" as applied by the Examiner is the number of times an evaluation test is conducted, and not the number of applications an antiperspirant product is applied to a subject. Br. 3--4 (citing Guidelines p. 3). 5 Appeal2015-001736 Application 13/519,039 We are not persuaded the Examiner erred. The Examiner finds the Guidelines teach applying a desired amount of antiperspirant product to one axilla and a placebo to the other axilla. Final Act. 3 (citing Guidelines p. 4). In particular, the Examiner finds "the application process should 'reflect the amount that a typical person would apply in normal conditions.' It is commonly known that a person would apply a product more than a single time to the axilla in a single use which would read on the at least 4 applications claimed." Ans. 3 (citing Guidelines p. 4). Appellants fail to address these findings or otherwise provide sufficient persuasive evidence or reasoning supporting an interpretation of the disputed limitation that would distinguish over the Guidelines' disclosure of applying a desired amount. Therefore, in the absence of sufficient substantive rebuttal, we agree with the Examiner's findings that the Guidelines disclose the disputed limitation. Improper Combination With respect to claims 4 and 9, we are also not persuaded of error by Appellants' contention alleging "[t]here is no suggestion in the references of selecting each of the elements and combining the elements as specified in the claim to arrive at the claimed combination of elements without the need for picking and choosing from among the elements." Br. 3. Instead, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. See Final Act. 3---6. For example, in connection with claim 1, the Examiner explains It would have been obvious to one of ordinary skill in the art at the time of invention to have combined the teachings of [the Guidelines and 21 C.F.R. § 352.76] to test an antiperspirant for effectiveness after contact with water since both sunscreen and 6 Appeal2015-001736 Application 13/519,039 antiperspirant are regularly subjected to water activity and it is generally undesirable to reapply both after water activity if possible. In combination, the axillae would be submerged in a sufficient depth pool to provide the immersion as described. Final Act. 4. Therefore, Appellants' generalized assertions the references were improperly combined are not persuasive of error and accordingly, the Examiner has properly relied upon the combination of the Guidelines and 21 C.F.R. § 352.76 in formulating the disputed rejection. For the reasons supra, Appellants' contentions are unpersuasive of Examiner error. Accordingly, we sustain the rejection of claims 4 and 9. Furthermore, we summarily sustain the rejections of non-argued claims 1-3 and 5-8. DECISION We affirm the Examiner's decision to reject claims 1-9. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation