Ex Parte Roberts

Board of Patent Appeals and Interferences

Jun 15, 2012

12190605 (B.P.A.I. Jun. 15, 2012)

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

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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
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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).
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Application 12/190,605

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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

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