Ex Parte Ribble et al

Board of Patent Appeals and Interferences

Jan 5, 2010

10236017 - (D) (B.P.A.I. Jan. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRENDON F. RIBBLE,
SARAH L. CHRISTOFFEL,
CATHERINE M. HANCOCK-COOKE,
ROBERT C. HOCHHOLZER,
JOHN E. KERINS, MICHAEL J. NELSON,
TIMOTHY J. PROBST, JOSEPH R. RIEGERT,
MARCI E. SOJKA, EMIL STAVINOHA, SR.,
and VICKIE M. THOMACK
____________

Appeal 2009-005106
Application 10/236,017
Technology Center 1700
____________

Decided: January 5, 2010
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-36 and 50-53. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE CASE
Claims 1, 28, and 29 are representative of the subject matter on appeal
and are set forth below1:
1. An extruded foam cleansing product for washing hands
comprising an extruded foam structure that is configured to disintegrate
during hand washing, the foam structure being formed by expanding a
mixture together through an extruder, the mixture including:

a water soluble disintegrant;

a natural starch;

a soap base;

a nucleating agent;

a water soluble polymer being present in the extruded foam structure
in an amount from about 5% to about 10% by weight; and

wherein said foam structure disintegrates when the foam structure is
in contact with water such that the soap base is released from the foam
structure as the foam structure disintegrates.

28. The cleansing product of claim 21, wherein the blowing agent
comprises an alcohol.

29. The cleansing product of claim 28, wherein the alcohol comprises
ethanol.

1 We use the revised Claims Appendix of Appellants’ Response to
Notification of Non-compliant Appeal Brief mailed November 14, 2007.
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rau 5,756,438 May 26, 1998
Corrand WO 01/25390 A2 Dec. 4, 2001

THE REJECTIONS
1. Claims 1, 2, 6-8, 11-14, 16-18, 21-29, 33-36, 50, and 51 are rejected
under 35 U.S.C. § 103(a) in view of Corrand.
2. Claims 1, 3, 4, 8-10, 13-16, 18-23, 30-34, 36, 52, and 53 are rejected
under 35 U.S.C. § 103(a) in view of Rau.
3. Claims 1-36 and 50-53 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting in view of claims 1-29 and
1-20 of co-pending Application Nos. 11/303,009 and 11/155,353,
respectively.
ISSUES
Rejection 1
Have Appellants shown reversible error in the Examiner’s
determination that Corrand’s teachings suggest Appellants’ claimed
extruded foam cleansing product, including the ingredients of the claimed
mixture? We answer this question in the negative.

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Rejection 2
Have Appellants shown reversible error in the Examiner’s
determination that Rau teaches Appellants’ claimed extruded foam cleansing
product? We answer this question in the affirmative.
Rejection 3
Have Appellants shown reversible error in the Examiner’s provisional
rejection under non-statutory obviousness-type double patenting of claims 1-
36 and 50-53? We answer this question in the negative.

FINDINGS OF FACT
Rejection 1
We refer to the Examiner’s findings made on page 3 of the Answer.
Additionally, Corrand teaches that mixtures of polymeric materials can be
used, as pointed out by the Examiner on pages 6-7 of the Answer. Corrand,
p. 10, l. 24. Also, Corrand teaches that ethanol, an alcohol, can be included
as an ingredient. Corrand, p. 21, l. 16.

Rejection 2
The Examiner does not make findings that Rau teaches an extruded
foam product. See Answer generally. Rather, the Examiner makes findings
that Rau teaches a product having foaming characteristics (lathering
characteristics). Ans. 7. Claim 1 is directed to an extruded foam product.

Rejection 3
Appellants have agreed to consider filing terminal disclaimers
directed to both co-pending applications. Br. 9. Appellants did not raise any
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substantive objections to the provisional rejection under non-statutory
obviousness-type double patenting of claims 1-36 and 50-53 in their Brief.

PRINCIPLES OF LAW
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court set aside any
“rigid” application of the teaching, suggestion, motivation (“TSM”) test,
advising that: “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. 398, 421 (2007). The Supreme
Court clarified that while “it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does,” Id. at 418, “the
analysis need not seek out precise teachings [in the prior art] directed to the
specific subject matter of the challenged claim” Id. “For obviousness under
§ 103, all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (citations omitted).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When assessing whether a claimed invention would have been
obvious, a court must ask “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

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ANALYSIS
As an initial matter, to the extent that Appellants have presented
substantive arguments for the separate patentability of any individual claims
on appeal, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(1)(vii). Accordingly, we address claim 1 (claim 1 is
representative of the independent claims (claims 1, 21, 52, and 53)), and
dependent claims 28, 29, 50, and 51.

Rejection 1
Claim 1
Appellants assert that the Examiner failed to articulate any reason why
one would have been motivated to modify Corrand to arrive at Appellants’
claimed invention. Br. 6. Appellants also argue that Corrand fails to
provide any reason to assemble Appellants’ particular list of components as
claimed in claims 1, 21, 52, and 53 and for the mixture into an expanded
extruded foam structure. Br. 6. Appellants assert that Corrand does not
provide any reason to combine a natural starch with a water soluble polymer,
and does not provide any reason to also incorporate into the mixture the
other claimed components. Br. 7. We are not convinced by Appellants'
arguments for the following reasons.
Corrand teaches, under the heading “Polymeric Material,” on pages 9-
11, that mixtures of polymeric materials can be used (p. 10, l. 24), and
Corrand teaches that such polymeric materials include polyvinyl alcohols (p.
10, l. 16), starch (p. 10, l. 20), dextrin (p. 11, l.12), and maltodextrin (p. 11,
l. 14), as pointed out by the Examiner on pages 3 and 6-7 of the Answer.
The amount of polymeric material is set forth on page 10, lines 6-8, as being
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at least 1% by weight, more preferably from 10% or 20% or 25% to 99%,
more preferably from 30% to 90% or 35% to 90% or to 80% by weight.2
Corrand also teaches to include a soap base (p. 12, ll. 5-31) and a
nucleating agent (p. 21, ll. 21-36), as pointed out by the Examiner on page 3
of the Answer.
In view of the above teachings of Corrand, we do not agree that these
teachings are from “a long list” of ingredients (as alleged by Appellants on
page 7 of the Brief) such that one skilled in the art would have not been led
to Appellants’ claimed list of ingredients. Hence, Appellants have not
convinced us that one skilled in the art, charged with these teachings of
Corrand, would not have been led to Appellants’ claimed invention. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. at 416. When assessing whether a claimed
invention would have been obvious, a court must ask “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417. Hence, we agree with the
Examiner’s position as set forth in paragraph 12 bridging pages 5-6 of the
Answer.
In view of the above, we affirm the rejection of claims 1, 2, 6-8, 11-
14, 16-18, 21-27, and 33-36 under 35 U.S.C. § 103(a) in view of Corrand.

2 Appellant's claim 1 recites from 5% to 10% by weight water soluble
polymer, which is suggested by these disclosed amounts in Corrand.
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Claims 28, 29, 50, and 51
Appellants argue that Corrand uses water as a blowing agent as
opposed to alcohol. However, as correctly pointed out by the Examiner on
page 7 of the Answer, Corrand teaches that ethanol can be included as an
ingredient. Corrand, p. 21, l. 16. Hence, Corrand teaches a mixture
including an alcohol (ethanol).
In view of the above, we affirm the rejection of claims 28, 29, 50, and
51 under 35 U.S.C. § 103(a) in view of Corrand.

Rejection 2
The Examiner does not make findings that Rau teaches an extruded
foam product. See Answer generally. Rather, the Examiner makes findings
that Rau teaches a product having foaming characteristics (the Examiner
states that Rau teaches “foaming structures”). Ans. 7. Hence, Appellants
correctly argue that Rau fails to disclose a “foam structure” as recited in
their claims. Br. 8. Indeed, claim 1 is directed to an extruded foam product,
and therefore the Examiner erred in his conclusion of obviousness.
We therefore reverse the rejection of claims 1, 3, 4, 8-10, 13-16, 18-
23, 30-34, 36, 52, and 53 are rejected under 35 U.S.C. § 103(a) in view of
Rau.
Rejection 3
Claims 1-36 and 50-53 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting in view of claims 1-29 and
1-20 of co-pending Application Nos. 11/303,009 and 11/155,353,
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respectively. Appellants have agreed to consider filing terminal disclaimers
directed to both co-pending applications. Br. 9. In effect, Appellants did not
raise any substantive objections to the provisional rejection under non-
statutory obviousness-type double patenting of claims 1-36 and 50-53 in
their Brief.
In view of Appellants’ failure to raise any substantive objections
regarding the patentability of any claims vis-à-vis this rejection, we affirm
the provisional obviousness-type double patenting rejection.

CONCLUSIONS OF LAW
Rejection 1
Appellants have not shown reversible error in the Examiner’s
determination that Corrand’s teachings suggest Appellants’ claimed
extruded foam cleansing product, including the ingredients of the claimed
mixture.

Rejection 2
Appellants have shown reversible error in the Examiner’s
determination that Rau teaches Appellants’ claimed extruded foam cleansing
product.

Rejection 3
Appellants have not shown reversible error in the Examiner’s
provisional rejection under non-statutory obviousness-type double patenting
of claims 1-36 and 50-53.

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DECISION
We affirm the rejection of claims 1, 2, 6-8, 11-14, 16-18, 21-29,
33-36, and 50-51 under 35 U.S.C. § 103(a) in view of Corrand.
We reverse the rejection of claims 1, 3, 4, 8-10, 13-16, 18-23, 30-34,
36, 52, and 53 under 35 U.S.C. § 103(a) in view of Rau.
We affirm the provisional rejection of claims 1-36 and 50-53 on the
ground of nonstatutory obvious-type double patenting in view of claims 1-29
and 1-20 of co-pending Application Nos. 11/303,009 and 11/155,353,
respectively.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

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CHRISTINA L. MANGELSEN – PATENT AGENT
DORITY & MANNING, ATTORNEYS AT LAW, P.A.
P O BOX 1449
GREENVILLE, SC 29602