12332048 (P.T.A.B. Mar. 20, 2014)

Ex Parte Oberlander

Patent Trial and Appeal BoardMar 20, 2014

12332048 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/332,048 12/10/2008 Michael Oberlander 39869 3770 23589 7590 03/20/2014 Hovey Williams LLP 10801 Mastin Blvd., Suite 1000 Overland Park, KS 66210 EXAMINER LEE, DOUGLAS ART UNIT PAPER NUMBER 1714 MAIL DATE DELIVERY MODE 03/20/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL OBERLANDER ____________ Appeal 2012-010185 Application 12/332,048 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-010185 Application 12/332,048 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a non-final rejection of claims 11 through 16 and 25 through 27. We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to a method of removing soils from a substrate surface. App. Br. 9. Claim 11 illustrates the subject matter on appeal and is reproduced below: 11. A method of removing soils from a substrate surface comprising: providing a substrate having a surface with soils thereon; dissolving or dispersing a solid detergent composition in water to form a wash solution, said detergent composition being in the form of a homogeneous, self-sustaining body and comprising: a copolymer of a quaternary ammonium compound and a comonomer selected from the group consisting of acids, acrylamides, and combinations thereof; a scale inhibiting agent; a non-phosphate builder; and a moisture content of from about 2 to about 40% by weight, based upon the total weight of the self-sustaining body taken as 100% by weight; contacting said substrate surface with said wash solution; removing the soils from said substrate surface; and rinsing said substrate without the use of a rinse additive. Appeal 2012-010185 Application 12/332,048 3 The Examiner relied on the following references in rejecting the appealed subject matter: Fernholtz US Re. 32,763 Oct. 11, 1988 Aubay ʼ288 US 6,593,288 B2 Jul. 15, 2003 Kessler US 7,026,276 B2 Apr. 11, 2006 Aubay ʼ579 US 2006/0270579 A1 Nov. 30, 2006 Lentsch US 2007/0149431 A1 Jun. 28, 2007 Appellant (App. Br. 10) requests review of the following rejections from the Examiner’s non-final office action of September 8, 2011. I. Claims 11, 16, 25, 26 and 27 rejected under 35 U.S.C. § 103(a) as unpatentable over Aubay ʼ579 and Fernholtz. II. Claims 12 and 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Aubay ʼ579, Fernholtz and Aubay ʼ288. III. Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Aubay ʼ579, Fernholtz and Lentsch. IV. Claim 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Aubay ʼ579, Fernholtz and Kessler. OPINION The dispositive issue on appeal is: Did the Examiner err in determining that the combined teachings of Aubay ʼ579 and Fernholtz would have led one skilled in the art to a method of removing soils from a substrate surface using a detergent composition comprising a moisture content of from about 2 to about 40% by weight as required by the subject matter of independent claim 11? 1, 2 1 We limit our discussion to independent claim 11. 2 A discussion of Aubay ʼ288, Lentsch and Kessler, cited by the Examiner in the separate rejections of claims 12-15 (Ans. 8-10) is unnecessary for Appeal 2012-010185 Application 12/332,048 4 We answer this question in the affirmative and, therefore, we REVERSE. We refer to the Examiner’s Answer for a statement of the prior art rejections (Ans. 5-10). Appellant argues that Aubay ʼ579 and Fernholtz are each concerned with two completely different and incompatible processes for making detergent, and thus result in fundamentally different detergent products. App. Br. 17. We agree with Appellant that the Examiner has not established a prima facie case of obviousness. According to the Examiner, Fernholtz is relied upon for the method of making detergent compositions into cast articles and using this method to make cast articles out of the detergent composition of Aubay ʼ579. Ans. 14. However, as correctly noted by Appellant, the chemistry of the compositions of Aubay ʼ579and Fernhold are different and the Examiner’s reasoning that adding moisture to Aubay ʼ579 composition would not affect the chemistry of the composition is unsupported by the cited prior art. App. Br. 17-19, 23-24. The Examiner has not presented an adequate technical explanation addressing Appellant’s contention that the chemistry is different and, thus, that one skilled in the art would not combined the processes of Fernholtz and Aubay as suggested. “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of disposition of the present appeal. The Examiner relied upon these references for features not related to the dispositive issue. Appeal 2012-010185 Application 12/332,048 5 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we reverse the prior art rejections of claims 11-16 and 25-27 for the reasons stated above and those presented by Appellant. In view of our reversal of prior rejections, we do not reach the declaration evidence submitted by Appellant because the Examiner has not presented a prima facie case of obviousness. ORDER The decision of the Examiner rejecting claims 11-16 and 25-27 under 35 U.S.C. § 103(a) is reversed. REVERSED tc