Ex Parte RobertsDownload PDFBoard of Patent Appeals and InterferencesJun 15, 201212190605 (B.P.A.I. Jun. 15, 2012) Copy Citation 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. 12/190,605 08/13/2008 Nigel Patrick Somerville Roberts CM-3210 9114 27752 7590 06/18/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER MRUK, BRIAN P ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 06/18/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte NIGEL PATRICK SOMERVILLE ROBERTS ____________ Appeal 2011-002934 Application 12/190,605 Technology Center 1700 ____________ Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-9. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2011-002934 Application 12/190,605 2 Claims 1 and 8 are illustrative of the claimed subject matter: 1. A process for making a detergent composition, the detergent composition comprising: a) from about 0.1 % to about 50% by weight of the composition of a polymer in particulate form comprising: i) a carboxylic acid monomer; ii) more than about 5% by weight of the polymer of one or more sulfonic acid monomer; and iii) optionally a non-ionic monomer; and b) from about 0.01 % to about 10% by weight of the composition of a hydrophilic silica, the process comprising the steps of mixing the polymer with the hydrophilic silica to obtain a polymer/silica premix and mixing the polymer/silica premix with any additional detergent components. 8. A detergent composition comprising a) from about 0.1% to about 50% by weight of the composition of a polymer in particulate form comprising: i) a carboxylic acid monomer; ii) more than about 5% by weight of the polymer of one or more sulfonic acid monomer; and iii) optionally a non-ionic monomer; and b) from about 0.01 % to about 10% by weight of the composition of a hydrophilic silica; wherein said hydrophilic silica is deposited onto the surface of said polymer. The Examiner maintains, and the Appellant appeals, the following three rejections under 35 U.S.C. § 102(b (or (e))1 or, in the alternative, under 35 U.S.C. § 103(a): 1) claims 1-5, and 7-9 as anticipated by, or unpatentable over Kapur (WO 03/042347 A1, pub. May 22, 2003); 1 Only the rejection based on Nishimoto is under 35 U.S.C. 102(e). Appeal 2011-002934 Application 12/190,605 3 2) claims 1-8 as anticipated by, or unpatentable over Nitsch (US 2004/0116319 A1, pub. Jun. 17, 2004); and 3) claims 1-6 and 8 as anticipated by, or unpatentable over Nishimoto (US 2007/0145014 A1, pub. Jun. 28, 2007). ANALYSIS The Process Claims After consideration of the record before us, we agree with Appellant that the Examiner has not shown where each of the three references teaches or suggests the premix step as recited in claim 1 (e.g., Br. 3-5). This issue turns on the broadest reasonable interpretation of the claim 1 language of “the process comprising the steps of mixing the polymer with the hydrophilic silica to obtain a polymer/silica premix” and then mixing the premix with additional detergent components. Appellant explains that the use of a premix step of the polymer with silica helps the polymer to maintain its free-flowing properties (Spec. 2:18-21). Appellant’s Specification states that the polymer and silica are mixed, and “[o]nce the polymer/silica premix is formed it can be admixed with the rest of the powder components” (Spec. 8:16-18). We therefore interpret that the broadest reasonable interpretation consistent with Appellant’s Specification of the premix step in claim 1 means that only the polymer and silica is in the premix. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of Appeal 2011-002934 Application 12/190,605 4 ordinary skill in the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (Internal citation omitted.)) The Examiner has not directed our attention to any evidence nor provided any persuasive line of technical reasoning that any of the three applied references teaches or suggests the claimed feature in dispute of a premix step of the silica and polymer (see generally Ans.). The Examiner also does not provide any rationale or reasoning why one would have premixed these two ingredients (id.). Under these circumstances, we reverse all of the § 102/ 103 rejections of the process claims 1-7 on appeal. The Product Claims On the other hand, Appellants have not shown that the Examiner erred in determining that each of the three applied references teaches or suggests the product as claimed in claim 8 (as well as the product of claim 9 which was not separately argued in the rejection based on Kapur). There is no dispute that each reference teaches a detergent composition comprising the recited ingredients. The only issue is whether the silica is “deposited onto the surface of said polymer” as recited in claim 8. We agree with the Examiner that Claim 8’s limitation that the “hydrophilic silica is deposited onto the surface of said polymer” is a product-by-process limitation. In any event, even if we could have interpreted this limitation as reciting a state of being as argued; that is, as Appeal 2011-002934 Application 12/190,605 5 reciting relative positions of accumulated silica and polymer surface as a required structural limitation of the composition, the outcome with respect to this rejection would be the same. In this regard, the Examiner’s implicit position that the mixing steps of the applied prior art, that include silica with the polymer along with other ingredients, will result in silica deposited on the surface of the polymer as claimed is reasonable and Appellants have not established otherwise. Furthermore, as regards our interpretation of this limitation, it is well established that, when a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697-698 (Fed. Cir. 1985). See also In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“[T]he burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.”). This evidence must be commensurate in scope with the claims. Id. Appellants have not met their burden to show that having the silica “deposited onto the surface” of the polymer results in a patentably distinct product over a product prepared via the processes of any of the three applied references (see Ans. 7-10; generally Br.). See In re Thorpe, 777 F.2d at 697-98. Arguments and conclusions unsupported by factual evidence carry no evidentiary weight. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Appeal 2011-002934 Application 12/190,605 6 Accordingly, we affirm all of the § 102/103 rejections of the product claims 8 and 9 on appeal. DECISION We reverse the § 102/ 103 rejection of claims 1-5, and 7, and affirm the rejection as to claims 8 and 9, as anticipated by, or unpatentable over Kapur. We reverse the § 102/ 103 rejection of claims 1-7, and affirm the rejection of claim 8, as anticipated by, or unpatentable over Nitsch. We reverse the § 102/ 103 of claims 1-6, and affirm the rejection of claim 8, as anticipated by, or unpatentable over Nishimoto. 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)(iv). AFFIRMED-IN-PART ssl Copy with citationCopy as parenthetical citation