Ex Parte Ostendorf et al

Patent Trial and Appeal Board

May 27, 2016

13479591 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/479,591 05/24/2012
27752 7590 06/01/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Ward William Ostendorf
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.
10620MDD 7275
EXAMINER
LONEY, DONALD J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARD WILLIAM OSTENDORF and
REBECCA HOWLAND SPITZER1
Appeal2015-001554
Application 13/479,591
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1 and 2. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is The Procter &
Gamble Company. Br. 1.
Appeal2015-001554
Application 13/479,591
CLAHvIED SUBJECT ivIATTER
Appellants' claimed invention is directed to a cellulosic fibrous
structure product. Spec. Abstract.
Independent claim 1 is illustrative:
1. A cellulosic fibrous structure product comprising three or
more macroscopic surfaces and a Dry Tensile Index of from 1
Nm/g to 20 Nm/g and a RWV of less than 0.04 g.
REJECTIONS
The Examiner maintains the following grounds of rejection:
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
by, or alternatively under 35 U.S.C. § 103(a) as unpatentable for
obviousness over, Runge et al. (US 2006/0070712 Al, published April 6,
2006) ("Runge").
Claims 1 and 2 stand rejected for non-statutory, obviousness-type
double patenting over claims 9 and 14 of U.S. Patent 7,799,411 B2 ("the
'411 Patent") in view of Runge.
DISCUSSION
Having carefully reviewed the Examiner's rejections in light of
arguments advanced by Appellants in their Appeal Brief, we are not
persuaded that the Examiner has erred reversibly in concluding that the
claims are unpatentable for anticipation and/or obviousness, and for
obviousness-type double patenting. We add the following for emphasis. 2
2 Rather than reiterate all arguments of Appellants and the Examiner, we
refer to the Final Office Action (mailed December 5, 2013), the Appeal
Brief (filed May 8, 2014; supplemented June 10, 2014), and the Examiner's
Answer (mailed September 10, 2014).
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Application 13/479,591
Rejection of claims land 2 under 35 U.S.C. § 102(b) or 35 U.S.C. § 103(a)
Appellants argue claims 1 and 2 together on the basis of claim 1, to
which we limit our discussion. Br. 2--4. Claim 1 requires, inter alia, a
cellulosic fibrous structure product to have a residual water value (R WV) of
less than 0.04 g.
The Examiner finds that Runge discloses a cellulosic structure
embossed with a design, and determines that the top, bottom, and wall
portions of the embossment correspond to three macroscopic surfaces, which
Appellants do not dispute. Compare Ans. 5 with Br. 2--4. The Examiner
also finds that Runge discloses that such cellulosic structures were known to
have dry tensile indexes of 13.0, 13.5, 16.9, and 19.5 Nm/g, which
Appellants also do not dispute. Compare Ans. 3, 5 with Br. 2--4.
The Examiner acknowledges that Runge does not explicitly disclose
the residual water value (R WV) of the cellulosic structures, but finds that
Runge discloses a cellulosic sheet that was dried to absolute dryness, and
determines that the residual water value of this sheet would inherently be
zero. Ans. 5. The Examiner determines alternatively that one of ordinary
skill in the art at the time of the invention would have been motivated to
produce a cellulosic product having superior properties, and therefore would
have found it obvious to form a cellulosic sheet having a low residual water
value to meet this objective. Id.
Appellants argue that a connection does not exist between the dryness
of a cellulosic sheet and its residual water value as this term is defined in
Appellants' Specification. 3 Br. 2-3 citing Spec 25, 11. 21-25. Appellants
3 According to page 25, lines 22-25, of the Specification, "[t]he amount of
liquid that remains on a surface after being absorbed by a cellulosic fibrous
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Appeal2015-001554
Application 13/479,591
contend that the Examiner therefore errs in determmmg that the residual
water value of Runge's cellulosic sheet would be zero -inherently or
otherwise-because the sheet is "absolutely dry." Br. 2-3.
On the record before us, we are not persuaded the Examiner has erred
reversibly in rejecting claims 1 and 2 over Runge. As discussed above,
Appellants do not question the Examiner's finding that Runge discloses a
cellulosic structure having three or more macroscopic surfaces and a dry
tensile index within the range recited in claim 1. Br. 2--4. Runge's pulp
fiber products with the cellulosic structure are not distinguishable over those
set forth in the Specification. Compare Spec. 6, 11. 4-9 with Runge,
Examples 1 and 11. Because Runge discloses a cellulosic structure that
appears to be the same as, or substantially similar to, the cellulosic fibrous
structure product recited in claim 1, the Examiner has a reasonable basis for
determining that Runge's cellulosic structure and the claimed cellulosic
fibrous structure would both possess the same characteristics or attributes,
including the same residual water value (RWV). See, e.g., In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and
its properties are inseparable.); In re Best, 562 F.2d 1252, 1255 (CCPA
1977) ("Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product."); In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
("[W]hen the prior art evidence reasonably allows the PTO to conclude that
structure product after a fixed amount of time may be expressed in terms of
a Residual Water Value (g)."
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Application 13/479,591
a claimed feature is present in the prior art, the evidence 'compels such a
conclusion if the applicant produces no evidence or argument to rebut it."'
(quoting Spada, 911 F.2d at n.3)). Alternatively, we agree with the
Examiner that one of ordinary skill in the art interested in forming a
cellulosic structure having absolute dryness, as taught by Runge, would have
been led to a cellulosic structure having a residual water value (R WV)
within the range recited in claim 1. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Appellants do not direct us to persuasive evidence or reasoning
demonstrating that Runge's cellulosic structure having three or more
macroscopic surface and a dry tensile index within the range recited in claim
1 would not have a residual water value (RWV) within the range recited in
claim 1. Br. 2--4. Nor do Appellants persuasively explain why one of
ordinary skill in the art interested in producing a cellulosic structure dried to
absolute dryness, as disclosed in Runge, would not have been led to form a
cellulosic structure having a residual water value within the recited range.
Id. Appellants have therefore failed to rebut the Examiner's reasonable
determination that Runge discloses or would have suggested a product that
meets the limitations set forth in claim 1, including the recited residual water
value.
Accordingly, under these circumstances, it cannot be said that
Appellants have identified reversible error in the Examiner's finding of
anticipation, or the Examiner's alternative conclusion of obviousness. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Therefore, we sustain the
rejection of claims 1and2 under§ 102(b) and§ 103(a).
Rejection of claims 1 and 2 for Obviousness-type Double Patenting
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Application 13/479,591
Appellants argue that the rejection of claims l and 2 for non-statutory,
obviousness-type double patenting over claims 9 and 14 of the '411 Patent
in view of Runge is unsubstantiated and inappropriate because Runge and
the present application do not have a common inventor and are not
commonly owned. Br. 2; Response filed August 22, 2013, 3--4.
Appellants' argument is without persuasive merit. We are not aware
of any prohibition against reliance on a secondary reference in a non-
statutory, obviousness-type double patenting rejection, as the Examiner does
in the present case with Runge to show that claims 1 and 2 of the present
application is an obvious variation of claims 9 and 14 of the '411 patent
having a common inventor and/or common assignee/owner as the present
application. In re Eyck, 48 F.2d 665, 666 (CCPA 1931) (explaining that, in
view of the prior art and Byck' s earlier patent, the pending claims were
drawn not to a second, distinct invention "but only ... an obvious use of the
composition there patented."). Nor do Appellants point us to any authority
that supports Appellants' position that the secondary prior art reference
cannot be relied upon unless it and the present application also have a
common inventor and/or are commonly owned. Br. 2; Response filed
August 22, 2013, 3--4. Non-statutory, obviousness-type double patenting
prohibits extending the right to exclude through claims in a later patent that
are merely obvious modifications in light of the prior art. Gilead Sciences,
Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1212-13 (Fed. Cir. 2014). In
addition, Appellants fail to address the substance of the non-statutory
obviousness-type double-patenting rejection, and therefore do not establish
why claims 1 and 2 are patentably distinct from claims 9 and 14 of the '411
Patent in view of Runge. Br. 2; Response filed August 22, 2013 at 3--4.
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Accordingly, Appellants have not shown reversible error in the
Examiner's non-statutory, obviousness-type double patenting rejection of
claims 1 and 2 which, it follows, we sustain.
DECISION
The Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 102(b)
or 35 U.S.C. § 103(a), and rejection of claims 1 and 2 for non-statutory,
obviousness-type double patenting, are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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