Ex Parte Rajaiah et al

Patent Trial and Appeal Board

Aug 24, 2016

12476352 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/476,352 0610212009
27752 7590 08/26/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jayanth Rajaiah
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.
11072MR 5280
EXAMINER
YOON,TAEH
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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 JAY ANTH RAJAIAH,
FRANCO SILVA MEDEIROS, LUISA NAVARRO CERDA,
ROBERT SCOTT LEONARD, STEVEN DARYL SMITH,
MARK WILLIAM HAMERSKY, and
RAFAEL EDMUNDO BRAS 1
Appeal2015-006158
Application 12/476,352
Technology Center 1700
Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellants identify the real party in interest as The Procter & Gamble
Company. Br. 1.
2 In our opinion below, we reference the Final Office Action mailed Oct. 17,
2012, Non-Final Office Action mailed Feb. 27, 2013, the Appeal Brief filed
January 15, 2015 (Br.), and the Examiner's Answer mailed April 1, 2015
(Ans.).
Appeal2015-006158
Application 12/476,352
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 15 and 22-24 under 35 U.S.C. § 103(a) as obvious over
Rajaiah 3 in view of Homan, 4 Chang, 5 and Wikipedia. 6 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a denture adhesive composition comprising
a denture adhesive component, a viscosity index improver, a water insoluble
component comprising mineral oil, and a colloidal silicon dioxide. The
viscosity index improver comprises a microcrystalline wax.
Appellants do not argue any claim apart from the others. We select
claim 15 as representative for resolving the issue on appeal. Claim 15 is
reproduced below, with the limitations that are the focus of the dispute
highlighted:
15. A denture adhesive composition, comprising:
a) from about 40.0% to about 60.0 % by weight of a
denture adhesive component comprising a combination of salts
of alkyl vinyl ether-maleic acid or anhydride copolymer
(AVE/MA) and sodium carboxymethylcellulose;
b) from about 2 % to about 15. 0 %, by weight of the
composition, of a viscosity index improver comprising
3 Rajaiah et al., US 6,475,498 Bl, patented Nov. 5, 2002.
4 Homan et al., US 4,880,702, patented Nov. 14, 1989.
5 Chang et al., US 5,753,723 A, patented May 19, 1998.
6 Microcrystalline wax, Wikipedia, the free encyclopedia 1-3 (retrieved
10/5/2012), http://en.wikipedia.org/wiki/Microcrystalline_wax.
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Application 12/476,352
microcrystalline wax having a melting point ranging from
about 60°C to about 95°C,
c) from about 20.0 % to about 60.0% by weight of the
composition of a water insoluble component; and
d) colloidal silicon dioxide;
wherein the composition has an instant viscosity ratio of
from about 0.25 to about 0.8;
wherein the water insoluble component is free of added
petrolatum and comprises a natural oil comprising mineral oil;
and
wherein the denture adhesive composition is a cream
applied to a denture by being dispensed from a tube.
Claims Appendix, Br. 8 (emphasis added).
OPINION
Considering the Examiner's findings of fact and conclusions of law
along with the evidence supporting the arguments of Appellants, we
determine a preponderance of the evidence supports the Examiner's
conclusion of obviousness.
There is no dispute that Rajaiah suggests forming a denture adhesive
including denture adhesive components such as those of claim 15, clause (a),
(see Rajaiah, col. 3, 11. 15-60), a non-aqueous carrier that can include
mineral oil (col. 5, 1. 65---col. 6, 1. 23), and colloidal silicon dioxide (col. 7, 1.
12; Example I). Rajaiah also discloses including wax, but does not list
microcrystalline wax in the list of exemplified waxes. Col. 6, 11. 14--1 7
(listing natural and synthetic waxes such as animal waxes like beeswax,
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lanolin and shellac, hydrocarbons, hydrocarbon derivatives, vegetable oil
waxes such as camauba, candelilla and bayberry wax).
The Examiner finds that "the microcrystalline wax is one of the well-
known synthetic waxes used in denture adhesive compositions." Non-Final
mailed Feb. 27, 2013 at 3. Chang supports this finding. Chang teaches a
denture adhesive incorporating wax, and exemplifies microcrystalline wax in
a list similar to the list of Rajaiah. Compare Chang, col. 4, 11. 44--49 with
Rajaiah, col. 6, 11. 14--17.
The Examiner further finds that the microcrystalline wax would
inherently function as a viscosity index modifier. Final mailed Oct. 17, 2012
at 4 as relied on by Non-Final mailed Feb. 27, 2013 at 3. The Wikipedia
document cited by the Examiner, the use of which was not objected to by
Appellants, supports the Examiner's finding. According to Wikipedia,
Microcrystalline waxes are a type of wax produced by de-
oiling petrolatum, as part of the petroleum refining process. In
contrast to the more familiar paraffin \~1ax \~1hich contains
mostly unbranched alkanes, microcrystalline wax contains a
higher percentage of isoparaffinic (branched) hydrocarbons and
naphthenic hydrocarbons. It is characterized by the fineness of
its crystals in contrast to the larger crystal of paraffin wax. It
consists of high molecular weight saturated aliphatic
hydrocarbons. It is generally darker, more viscous, denser,
tackier and more elastic than paraffin waxes, and has a higher
molecular weight and melting point.
Microcrystalline wax, Wikipedia 1.
Wikipedia indicates that microcrystalline waxes are produced to meet
a number of ASTM specifications including viscosity. Thus, it is reasonable
to presume that microcrystalline wax would inherently have an instant
viscosity ratio within the range of from about 0.25 to about 0.8. We note
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Application 12/476,352
that a material and its properties are inseparable. In re Papesch, 315 F.2d
381, 391(CCPA1963).
Appellants contend that the Examiner relied upon impermissible
hindsight, arguing that "[t]here is no disclosure in Rajaiah et al. of using
microcrystalline wax in a denture adhesive composition having an instant
viscosity ratio of from about 0.25 to about 0.8," and "[t]he addition of
Wikipedia encyclopedia, Homan et al. and Chang et al. does not cure the
deficiencies of Rajaiah et al." Br. 6-7. But the evidence supports the
Examiner's finding that the prior art would have suggested the use of
microcrystalline wax to one of ordinary skill in the art based on at least the
teachings of Chang. Moreover, the Examiner's finding of inherency is
reasonable such that the burden shifted to Appellants to show that the instant
viscosity ratio is not, in fact, an inherent property of the microcrystalline
waxes normally used in denture adhesives.
Appellants contend that the Rajaiah Declaration shows that
microcrystalline wax is a viscosity index improver, while paraffin wax is
not. Br. 5-6. This evidence supports the finding that the viscosity index is
an inherent property. Labelling the microcrystalline wax a viscosity index
improver does not transform the composition into a patentability different
composition.
Although the Examiner characterizes Appellants' declaratory
evidence as presenting an issue of whether Appellants have shown an
unexpected result commensurate in scope with the breath of the claims, 7 we
note that Appellants, in fact, do not rely upon the Rajaiah Declaration to
support a showing of unexpected results. Br. 5---6. Appellants only rely
7 Ans. 3-5.
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upon the Rajaiah Dclaration to provide evidence that microcrystalline wax is
a viscosity index improver, while paraffin wax is not. Id. Nor does Rajaiah
declare in the Declaration that the result would have been unexpected to the
ordinary artisan. Rajaiah Deel. Nevertheless, we agree with the Examiner
that Appellants comparison is not commensurate in scope with the breath of
the claim. Ans. 3--4. See In re Greenfield, 571F.2d1185, 1189 (CCPA
1978) (concluding that evidence of secondary considerations was not
commensurate with the scope of the claims where that evidence related to a
single compound and there was no adequate basis to conclude that other
compounds included within the scope of the claims would exhibit the same
behavior).
CONCLUSION
We sustain the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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