Ex Parte Scavone et al

Patent Trial and Appeal Board

Aug 28, 2018

14308754 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/308,754 06/19/2014
27752 7590 08/30/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Timothy Alan Scavone
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.
CM3864 6651
EXAMINER
VASAT,PETERS
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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 TIMOTHY ALAN SCAVONE, MISAEL OMAR A VILES,
BRIAN FRANCIS GRAY, PETER CHRISTOPHER ELLINGSON,
and DEAN LARRY DUVAL
Appeal2017-010722
Application 14/308,754
Technology Center 3700
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-20. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
1 Appellant is the Applicant, The Procter & Gamble Company, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-010722
Application 14/308,754
SUMMARY OF THE DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
SUMMARY OF THE INVENTION
Appellant's disclosed invention relates to "an absorbent article
comprising ... one or more complexed or encapsulated compounds which
are particularly effective in counteracting malodors." Spec. 1: 5-6. Claims 1
and 16 are independent. Claim 1, reproduced below from page 11 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. An absorbent article comprising an encapsulated
component mixture having a thiol vapor pressure suppression
index (TVPS) of more than 25.8.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Cummings
Scavone
Woo
Caputi
us 5,951,534
US 2008/0215023 Al
US 2011/0152804 Al
US 2012/0226248 Al
REJECTIONS 2
Sept. 14, 1999
Sept. 4, 2008
June 23, 2011
Sept. 6, 2012
I. Claims 1-16 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cummings and Scavone.
II. Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Cummings, Scavone, and Caputi.
2 A rejection of claim 20 under 35 U.S.C. § 112(a) was withdrawn. Final
Act. 2-3; Ans. 3.
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III. Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Cummings, Scavone, and Woo.
ANALYSIS
Rejection I
Appellant addresses the rejection of claims 1-16 and 19 collectively.
Appeal Br. 2-7. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Cummings discloses an absorbent article
comprising an encapsulated component mixture having a thiol vapor
pressure suppression index ("TVPS") of more than 20, but "is silent as to
whether the encapsulated component mixture has a [TVPS] of more than
25.8." Final Act. 5. Finding that Cummings discloses "the encapsulated
agents ingredients and compositions ... of this invention are the
conventional ones known in the art" and "[ s ]election of any encapsulated
agents component, or amount of encapsulated agents, is based on functional
and aesthetic considerations," the Examiner further finds that Scavone
"teaches that 5-methyl-2-thiophenecarboxaldehyde is a suitable fragrance or
odor controlling material." Id. (citing Cummings 15:55-59; Scavone ,r 45).
The Examiner finds that "Scavone teaches that fragrant and odor controlling
material such as 5-methyl-2-thiophenecarboxaldehyde are able to improve
the odor perception of the composition or article [with] which they are
associated." Id. (citing Scavone ,r 43). Thus, the Examiner determines, it
would have been obvious to one of ordinary skill in the art "to modify
Cummings with fragrant and odor controlling material such as 5-methyl-2-
thiophenecarboxaldehyde, as taught by Scavone." Id. at 6. Citing
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Appellant's Specification, which discloses that 5-methyl-2-
thiophenecarboxaldehyde has a TVPS of 67.4, the Examiner finds that
Scavone's 5-methyl-2-thiophenecarboxaldehyde inherently possess a TVPS
of more than 25.8. Id. ( citing Spec. 17).
Appellant acknowledges that "Scavone teaches the use of 5-methyl-2-
thiophenecarboxaldehyde," but notes that Scavone teaches "approximately
168 fragrance materials" and mixtures thereof. Appeal Br. 3--4.
Characterizing Scavone' s disclosure as providing "an infinite number of
choices of fragrance materials," Appellant argues that, "without any teaching
or suggestion by either Cummings or Scavone regarding the problems being
solved by the Appellants," and "without a teaching or suggestion in the prior
art regarding which of an infinite number of possibilities may be
appropriate," the rejection is based on impermissible hindsight. Id. at 4--5.
Appellant also argues that, because "neither Cummings nor Scavone taught
or suggested the problem being solved by the Appellants," "the combination
of fragrance materials would not have a reasonable expectation of success
nor would they be predictable regarding combating odors described in the
[Appellant's] specification." Id. at 6.
Initially, we note that Appellant does not address the rationale for
combining Cummings and Scavone as set forth by the Examiner, which is
based on the teachings of the cited prior art references. See Ans. 6, 9.
Instead, Appellant appears to focus on a separate rationale that can be used
to support a finding of obviousness; namely, the "obvious to try" rationale.
Thus, we are not apprised of error in the Examiner's findings and reasoning.
We are not persuaded by the arguments Appellant does make.
Appellant's arguments appear to be based on the notion that the cited
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references must identify and solve the identical problem identified by
Appellant in the Specification. See Appeal Br. 4, 5, 6; Reply Br. 2. The
Supreme Court has spoken directly on this issue:
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve. The Court of Appeals failed to recognize that
the problem motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is not
whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ( citation omitted);
see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as
some motivation or suggestion to combine the references is provided by the
prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.").
Nor are we persuaded by Appellant's characterization of the rejection
as being "arrived at via metaphorical darts thrown at a board with an infinite
number of possibilities." Appeal Br. 5; see also Reply Br. 2-3. To the
contrary, given Scavone's description that any of its enumerated materials-
5-methyl-2-thiophenecarboxaldehyde included-would be effective at
masking, covering, or improving odor perception, substitution of
Cummings's encapsulated component with Scavone's 5-methyl-2-
thiophenecarboxaldehyde appears to be the substitution of one known odor-
controlling element with another known odor-controlling element with
predictable results-improving the perceived odor of the absorbent article
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before, during, and/or after its use. See Scavone ,r,r 43, 45; KSR, 550 U.S. at
416; Ans. 6 ("the simple substitution of Scavone' s fragrance for the
fragrance taught by Cummings results in the instant invention"). We note
that Scavone specifically discloses the material cited by the Examiner.
Scavone ,r 45. See Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804,
807 (1989) (recognizing that "the '813 patent instructs the artisan that any of
the 1200 disclosed combinations will produce" desired results, and
determining "[ t ]hat the '813 patent discloses a multitude of effective
combinations does not render any particular formulation less obvious");
cf In re Baird, 16 F.3d 380,382 (Fed. Cir. 1994) (discussing whether a
specific compound is suggested by a generic formula covering "more than
100 million" options); In re Jones, 958 F.2d 347,350 (Fed. Cir. 1992)
( discussing whether a specific species is suggested by the disclosure of its
"potentially infinite" genus).
Accordingly, we sustain the rejection of claims 1-16 and 19 as being
unpatentable over Cummings and Scavone.
Rejections II and III
Appellant does not separately address the rejection of dependent
claims 17 and 18, which depend from claim 1. See Appeal Br. 2-7.
Accordingly, for the same reasons as discussed above, we sustain the
rejection of these claims.
New Ground of Rejection
Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection
of claims 1-3, 6-9, 15, 16, and 19 under 35 U.S.C. § 102(a)(l) as anticipated
by Scavone for the reasons provided below. However, because the Board's
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exercise of authority under this provision is discretionary, no inference
should be drawn from the decision to exercise that discretion with respect to
only some of the claims on appeal. Should there be further prosecution of
the application, we leave to the Examiner to determine whether to make a
new ground of rejection of any other claims.
Regarding claims 1-3, 6, 7, 16, and 19, Scavone discloses that its
personal care product can take the form of an absorbent article ( claims 1 and
16) to which its cyclodextrin-fragrance complexes ( claim 6) are applied.
Scavone ,r 14. Scavone further discloses that its personal care product can
employ a scent-releasing system comprising a cyclodextrin-fragrance
complex encapsulated in a starch encapsulating material ( claims 3 and 7).
Id. ,r 41. Scavone further discloses that the complexed fragrance material
can be 5-methyl-2-thiophenecarboxaldehyde (claim 2). Id. ,r,r 43, 45. This
material inherently has a TVPS of more than 25.8 (claims 1, 16, and 19).
Spec. 17 (disclosing a TVPS of 67.4 for this material).
Regarding claims 8 and 9, Scavone discloses that the absorbent
material can be, "for example, diapers, feminine hygiene products,
incontinence products, and wound dressings." Scavone ,r 14.
Regarding claim 15, Scavone discloses that its fragrance materials
may be activated by becoming in contact with bodily fluids. Id. ,r,r 16, 46.
DECISION
The Examiner's decision to reject claims 1-20 is affirmed.
We enter a new ground of rejection of claims 1-3, 6-9, 15, 16, and 19
under 35 U.S.C. § 102(a)(l) as anticipated by Scavone.
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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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 )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(B)
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