Ex Parte Roreger et al

Patent Trials and Appeals Board

Sep 5, 2013

10526570 - (D) (P.T.A.B. Sep. 5, 2013)

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.
10/526,570 03/04/2005 Michael Roreger 512100-2045 8017
7590 09/05/2013
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/05/2013 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 MICHAEL ROREGER, IRIS SCHNITZLER, and
QIAN-YI LI
____________

Appeal 2012-006273
Application 10/526,570
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON,
and PETER F. KRATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/526,570

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-17 and 19-31. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.

Appellants claim a solid soap preparation comprising a soap, a film-
or backbone-forming polymer, and air bubbles, wherein the thickness of the
soap preparation does not exceed 5 mm and the preparation has a dissolution
time in an aqueous medium of less than 15 seconds (claim 1). Appellants
also claim methods of producing and using such a soap preparation (claims
11 and 14 respectively).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
1. A solid soap preparation in the form of sheets or strips
comprising a soap,

at least one film- or backbone-forming polymer selected
from the group consisting of polyamides, polyacrylates,
polyamino acids, polyvinyl acetate, polyvinyl alcohol,
polyethylene glycols, polyvinylpyrrolidones, pullulan, alginic
acid and mixtures thereof, and

air bubbles,

wherein the thickness of said solid soap preparation does
not exceed 5 mm and the preparation has a dissolution time in
an aqueous medium of less than 15 seconds.

Under 35 U.S.C. § 103(a), the Examiner rejects:
Appeal 2012-006273
Application 10/526,570

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claims 1-4, 6-10, 13-17, 19, 20, 22-25, 28, and 30 as unpatentable
over Carson (US 4,328,131, issued May 4, 1982) in view of Hensley (US
2004/0029762 A1, published Feb. 12, 2004);
claims 5, 26, 27, 29, and 31 as unpatentable over Carson, Hensley,
and Abbas (US 6,555,509 B2, issued Apr. 29, 2003) as evidenced by Roth
(Cold Water-Soluble Films from Cyanoethylated Polyvinyl Alcohol, J. of
Applied Polymer Science, Vol. 9, 1083-1087 (1965)); and
claims 11, 12, and 21 as unpatentable over Carson, Hensley, and
Schulerud (US 2,525,081, issued Oct. 10, 1950).

We will sustain the above rejections for the reasons expressed in the
Answer. The following comments are added for emphasis.

The Rejection based on Carson and Hensley

Appellants do not present separate arguments directed to the
individual claims under rejection (see Br. 5-7). Therefore, we select
independent claim 1 as a representative claim with which the other rejected
claims will stand or fall.
The Examiner finds that Carson discloses a soap having the claim 1
ingredients but not the claim 1 thickness (Ans. 5). In this latter regard, the
Examiner additionally finds that Hensley discloses a single-use soap having
a 2 mm or less thickness within the claim 1 range (id.). The Examiner
concludes that it would have been obvious to provide the Carson soap in the
form of a single-use soap having a 2 mm or less thickness in view of
Hensley (id.).
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Appellants argue that Carson and Hensley teach away from each other
and teach away from claim 1 because Carson is directed to an elastic soap
bar rather than a soap sheet or strip as claimed and Hensley is directed to a
frangible soap preparation (Br. 5-6).
We discern no persuasive merit in Appellants' argument. The
differences identified by Appellants between the soaps of Carson and
Hensley and between these prior art soaps and the claim 1 soap would not
have discouraged combining these references in the manner proposed by the
Examiner. Specifically, these differences would not have discouraged one
having ordinary skill in this art from providing the Carson soap in the form
of a single-use soap having a thickness within the claim 1 range as taught by
Hensley. Appellants have provided this record with no compelling rationale
in support of their opposing view.
Appellants also argue that Carson's disclosure at column 9, lines 45-
60, contains no teaching of the dissolution time required by claim 1 (Br. 6-
7).
This argument is not convincing because the Examiner's
unpatentability determination for the claimed dissolution time is not based
on the above column 9 disclosure of Carson. Instead, in both the Final
Office Action and the Answer, the Examiner concludes that a dissolution
time of less than 15 seconds as recited in claim 1 would have been obvious
based on optimization of art-recognized, result-effective variables (FOA 3,
Ans. para. bridging 5-6). In the record before us, Appellants do not address,
and accordingly reveal no error in, this obviousness conclusion.
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For the reasons stated above and in the Answer, we sustain the
rejection of claims 1-4, 6-10, 13-17, 19, 20, 22-25, 28, and 30 as
unpatentable over Carson and Hensley.

The Rejection based on Carson, Hensley, Abbas and Roth

Once again, Appellants do not separately argue any particular claim
with reasonable specificity (Br. 7-9). Therefore, we will focus on claim 27
with which the other rejected claims will stand or fall.
The Examiner finds that Abbas discloses a soap composition
comprising sodium laureth sulfate (Ans. 7), and Appellants do not contend
otherwise (see Br. 7-9). The Examiner concludes that it would have been
obvious to provide the soap preparation of Carson with the ingredients
recited in rejected claims 5, 26, 27, 29, and 31 because such ingredients
(e.g., the sodium laureth sulfate of claim 27) and their attendant functions
are known to be desirable in soap as evidenced by Abbas and Roth (Ans. 7).
In contesting this rejection, Appellants argue that "the combination of
Abbas and Roth with Carson and Hensley represents the 'scavenger hunt'
approach to establishing obviousness" (Br. 8).
We cannot agree with Appellants. The Examiner's obviousness
conclusion is well supported by the fact that the proposed combination of
prior art ingredients for soap yields nothing more than predictable results
wherein the ingredients perform their established functions. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
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Consequently, we sustain the Examiner's rejection based on Carson,
Hensley, Abbas, and Roth.

The Rejection based on Carson, Hensley, and Schulerud

Because Appellants do not present arguments separately directed to
the individual claims under rejection (Br. 9-10), we will focus on
independent claim 11 with which dependent claims 12 and 21 will stand or
fall.
The Examiner finds that Carson's method of soap production does not
include use of a drying tunnel but that Schulerud teaches a soap preparation
method wherein the soap material is transported through a drying tunnel in
order to reduce its water content (Ans. 8). The Examiner concludes that it
would have been obvious to provide Carson's method with a drying tunnel as
taught by Schulerud in order to reduce the water content of the soap (id.).
In response, Appellants argue that "use of a drying tunnel for
Schulerud was permissible because there was no requirement for the product
of Schulerud to have air bubbles" (Br. 10) and that "[o]ne of ordinary skill in
the art would not have looked to the teachings of Schulerud for combination
with Carson as they were directed to producing different products" (id.).
Contrary to the premise of Appellants' argument, Schulerud teaches
that it is immaterial whether or not air becomes incorporated in the soap
prior to transporting the soap through a dryer tunnel in order to reduce its
moisture content (col. 2, l. 49-col. 3, l. 3). In the sense that both Schulerud
and Carson teach making soap which contains air bubbles, Appellants are
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incorrect in stating that these references are directed to producing different
products.
Appellants' argument reveals no factual or legal error by the
Examiner. Accordingly, we also sustain the rejection based on Carson,
Hensley, and Schulerud.

Conclusion

The decision of the Examiner is affirmed.
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).

AFFIRMED

kmm