12454646 (P.T.A.B. Oct. 9, 2014)

Ex Parte Otterson et al

Patent Trial and Appeal BoardOct 9, 2014

12454646 (P.T.A.B. Oct. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/454,646 05/21/2009 Richard J. Otterson MCI-009.1 7603 2387 7590 10/10/2014 Olson & Cepuritis, LTD. 20 NORTH WACKER DRIVE 36TH FLOOR CHICAGO, IL 60606 EXAMINER KASSA, TIGABU ART UNIT PAPER NUMBER 1619 MAIL DATE DELIVERY MODE 10/10/2014 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 RICHARD J. OTTERSON and KENNETH E. VISEK ____________ Appeal 2012-010562 Application 12/454,646 Technology Center 1600 ____________ Before DONALD E. ADAMS, ULRIKE W. JENKS, and ROBERT A. POLLOCK, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims directed to a low-odor dimethicone copolyol sulfosuccinate. The Examiner has rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE “Sulfosuccinate surfactants have been used in the cosmetic industry . . . One factor which has limited the use of dimethicone copolyol sulfosuccinates in cosmetics is that such surfactants typically exhibit a characteristic odor, which can be objectionable in some personal care and cosmetic products” (Spec. 1, ll. 12–31.) 1 Appellants identify Rhodia Operations as the Real Party in Interest. (App. Br. 1.) Appeal 2012-010562 Application 12/454,646 2 Claims 1–6 are on appeal, and can be found in the Claims Appendix of the Appeal Brief (App. Br. 7–8). Claims 1–6 are rejected under 35 U.S.C. § 102(b) as being anticipated by Maxon2 as evidenced by the product data sheet of Dow Corning ® 193 Surfactant3 (dimethicone copolyol with PEG-12 as the R group). The Issue Does the preponderance of the evidence of record support the Examiner’s finding that Maxon’s product anticipates the claims? Findings of Fact FF1. The Specification provides: As used herein, the term “substantially free from”, when used in reference to propionaldehyde and acid-releasable precursors thereof means a level of propionaldehyde in the head space above a liquid sample of the product that is low enough to be essentially free of objectionable odor sensorially discernible to a human observer. (Spec. 14, ll. 24–28.) FF2. The Specification provides: [D]imethicone copolyol sulfosuccinate surfactant of this invention prepared from DOW CORNING® UP-1005 was substantially free of objectionable odor and had a head space concentration of propionaldehyde of about 16 parts per million (ppm) as determined by head-space gas chromatography. (Id. at ll. 28–31 (emphasis added).) FF3. The Specification provides: [C]onventional dimethicone copolyol sulfosuccinate surfactant prepared with the typical, non-purified commercial dimethicone 2 Bartley D. Maxon, US 4,849,127, issued July 18, 1989. 3 DOW CORNING, DOW CORNING® 193C FLUID, PRODUCT INFORMATION SHEET (2006). Appeal 2012-010562 Application 12/454,646 3 copolyol product, DOW CORNING® 193, had propionaldehyde levels in the range of about 2000 to about 4500 ppm and had readily discernible, objectionable propionaldehyde odors. (Id. at 14, ll. 32–15, ll. 3.) Analysis The Examiner finds that Maxon discloses the process steps as recited in claim 1 and concludes that the product must be the same (Ans. 5–6). Appellants, however, contend that Maxon cannot anticipate the claims because “the dimethicone copolyol starting material used to prepare the sulfosuccinate composition” differs in that it contains more contaminant that is carried over into the final product (App. Br. 3; Reply Br. 2; see also FF3). The claims are directed to “[a] low-odor composition that is substantially free from propionaldehyde and acid-releasable precursors of propionaldehyde,” and requires that the starting material is also free of these undesirable compounds (Claim 1 (emphasis added)). The Specification defines “substantially free from” to mean that the propionaldehyde and acid- releasable precursors thereof are not discernable to the human observer (FF1), this amounts to a level of about 16 ppm in the headspace above the liquid (FF2). The Examiner’s reliance on inherency based on the disclosure of the process steps in Maxon is unavailing on the present facts because Specification disclosed that dimethicone copolyol sulfosuccinate surfactant prepared with commercially available dimethicone copolyol product contains the objectionable odor compounds (FF3). Accordingly, we find that the preponderance of evidence on this record fails to support Examiner’s finding that Maxon in view of the product information sheet disclosed Appellants’ claimed product. Appeal 2012-010562 Application 12/454,646 4 SUMMARY We reverse the anticipation rejection of claims 1–6. REVERSED bar