Ex Parte Myers

Board of Patent Appeals and Interferences

Jul 12, 2010

11284542 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte E. GARY MYERS
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Appeal 2009-011241
Application 11/284,542
Technology Center 1700
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Decided:
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Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011241
Application 11/284,542

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claim 9 (Final Office Action, mailed Feb. 19, 2008,
1), the sole claim pending in the application. (Appeal Brief (“App. Br.”),
filed Jul. 2, 2008, 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Feb. 3,
2009, 3-4), and Appellant requests review of (App. Br. 8 (as corrected in the
Response filed Aug. 12, 2008)) the sole ground of rejection: claim 9 as
unpatentable under 35 U.S.C. § 103(a) over Agrawal (US 2001/0046949 A1,
pub. Nov. 29, 2001).
Appellant’s “invention is directed to a personal cleansing composition
in solid or bar form which is mild to the skin and very effective in removing
dirt and grime from the body, particularly the hands.” (Spec. [0004].)
According to the Specification, the inventive bar composition does not have
a noticeable abrasive feel when in contact with the skin and exhibits a so-
called “drag effect” which enhances the removal of dirt and grime. (Id.)
These advantages are achieved where the size of the particles falls within the
specific set of parameters recited in claim 9 (see Spec. [0005]), which is
reproduced below from the Claims Appendix to the Appeal Brief:
9. A personal care cleansing bar composition having enhanced
ability to remove dirt and grime from the skin, particularly the hands, said
cleansing bar comprising about 58% by weight of a water soluble soap as the
principal surfactant, about 9% by weight of water, about 2% by weight of
synthetic surfactant, about 0.10% by weight by weight [sic] of borax and
about 29% by weight of a water insoluble particle selected from the group
consisting of a water insoluble particle selected from the group consisting of
limestone, dolomite or mixtures thereof having a hardness ranging from
about 2 to about 3 on the Mohs Hardness Scale, said particles being
dispersed throughout said bar composition and being of a size such that
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Appeal 2009-011241
Application 11/284,542

about 100% will pass through a 60 U.S. standard mesh sieve, about 98% will
pass through a 100 U.S. standard mesh sieve, and about 81% will pass
through a 200 U.S. standard mesh sieve, the presence of said particles in said
bar composition creating a drag effect when the composition is used in
bathing the skin which drag effect aids in removing dirt and grime from the
skin.

The Examiner find that Agrawal discloses a cleansing bar
composition as claimed with the exception of explicit teachings that the
water insoluble particles have (1) the claimed size and (2) “a hardness
ranging from about 2 to about 3 on the Mohs Hardness Scale” (claim 9).
(Final 2 and Ans. 3-4, citing, inter alia, Agrawal [0001] and [0064-0066].)
With respect to the claimed particle size, the Examiner maintains “it would
have been within the purview of the artisan of ordinary skill to optimize the
particles size through routine experimentation” to achieve the recognized
result of increased or decreased coarseness of the bars. (Final 2; see also,
Ans. 3-4.)
The rationale for determining the optimal parameters for prior art
result-effective variables “flows from the ‘normal desire of scientists or
artisans to improve upon what is already generally known.’” Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003)). Thus, a particular parameter must
first be recognized as a result-effective variable, i.e., a variable which
achieves a recognized result, before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
Appellant concedes that Agrawal discloses exemplary compositions
containing abrasives such as calcium carbonate and dolomite. (App. Br. 12.)
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Appeal 2009-011241
Application 11/284,542

However, Appellant contends that the evidence of record fails to support the
Examiner’s determination that it would have been obvious to have optimized
Agrawal’s particle size to achieve Appellant’s claimed particle size range.
(App. Br. 18-19.) We agree.
The Examiner’s findings, at best, establish that it is known to adjust
the sizes of particles in a composition such that they are above or below a
certain value to achieve more or less abrasiveness. However, the Examiner
has not identified any teaching or suggestion of varying the sizes of particles
in a cleaning composition to fall within the more particularized set of
requirements recited in claim 9. See In re Widmer, 102 F.2d 409, 414-15
(CCPA 1939) (reversing the Board’s decision to affirm the Examiner’s
rejection of claims directed to cleaning compositions containing limestone
particles of definite proportions and sizes).
Accordingly, we do not sustain the rejection of claim 9 as
unpatentable under 35 U.S.C. § 103(a) over Agrawal.

REVERSED

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