Ex Parte Scavone et alDownload PDFPatent Trial and Appeal BoardNov 30, 201712036490 (P.T.A.B. Nov. 30, 2017) 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. 12/036,490 02/25/2008 Timothy Alan Scavone 10728R 2107 27752 7590 12/04/2017 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER KASSA, TIGABU ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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, MICHAEL JUDE LEBLANC, LOWELL ALAN SANKER, and ADRIAN GREGORY SWITZER1 Appeal 2017-003727 Application 12/036,490 Technology Center 1600 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to absorbent articles which have been rejected for failing to satisfy the written description requirement and as being obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as The Procter & Gamble Company. Br. 1. Appeal 2017-003727 Application 12/036,490 STATEMENT OF THE CASE The invention related to personal care products including wipes and absorbent articles. Spec. 1. Absorbent articles include diapers, feminine hygiene products, incontinence products and wound dressings. Id. The absorbent articles comprise a cyclodextrin complexing material and a fragrance complexed with the cyclodextrin complexing material. Id. Use of the complexed material results in an absorbent article where the perception of the fragrance is minimized prior to release from the cyclodextrin complex. Spec. 2. Claims 1—3, 5, and 7—14 are on appeal. Claims 1 is representative of the rejected claims and read as follows: 1. An absorbent article comprising: a. a component selected from the group consisting of a liquid permeable topsheet, a liquid impermeable backsheet, an absorbent core, and combinations thereof; b. a plurality of particles associated with the component of the absorbent article, the plurality of particles comprising a cyclodextrin complexing material and a first fragrance material, at least some of which being complexed with the cyclodextrin, wherein the plurality of particles has a moisture level, before their association with the component, of less than 20% by weight of the particles and wherein the percent of the first fragrance material that is complexed with the cyclodextrin is greater than about 90%, so that the perceptibility of the fragrance is minimized prior to its release; and c. a second fragrance material that is not complexed with the cyclodextrin and that is different from the first fragrance material. 2 Appeal 2017-003727 Application 12/036,490 The claims stand rejected as follows: Claims 11, 12, and 14 have been rejected under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement in that the amended claims contain new matter not disclosed in the Specification. Claims 1—3, 5, 7—10, and 13 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Trinh ’4452, combined with Ammeraal3, Strassburger4 and Trinh ’761.5 Claims 1—3, 5, and 7—14 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Trinh ’445 combined with Ammeraal, Lewis6, and Trinh ’761.7 NEW MATTER REJECTION Appellants did not address this rejection on Appeal. Therefore, we summarily affirm this rejection. 2 Trinh et al., US 5,714,445, issued Feb. 3, 1998 (“Trinh ’445”). 3 Ammeraal et al., US 4,904,307, issued Feb. 27, 1990 (“Ammeraal”). 4 Strassburger, WO 2006/137958 Al, published Dec. 28, 2006 (“Strassburger”). 5 Trinh et al., US 5,094,761, issued Mar. 10, 1992 (“Trinh ’761”). 6 Lewis et al., US 5,403,828, issued Apr. 4, 1995 (“Lewis”). 7 While the heading for this rejection in the Final Action does not reference Trinh ’761, Final Act. 17, the discussion of the references makes it clear that the Examiner included Trinh ’761 as part of the combination of references. Final Act. 21. See also, Ans. 19. 3 Appeal 2017-003727 Application 12/036,490 OBVIOUSNESS TRINH ’445 COMBINED WITH AMMERAAL, STRASSBURGER, AND TRINH ’761 Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that claims 1—3, 5, 7—10, and 13 would have been obvious over Trinh ’445 combined with Ammeraal, Strassburger, and Trinh ’761. The Examiner finds that Trinh ’445 discloses articles such as diapers and pantiliners which minimize odors by incorporating particles of uncomplexed cyclodextrin and an odor control agent. Final Act. 3. The Examiner also finds that Trinh ’445 discloses the use of perfiime/cyclodextrin complexes. Final Act. 4. The Examiner finds that Strassburger teaches the preparation of cyclodextrin complexes which can include fragrance compounds complexed with the cyclodextrin. Final Act. 6. The Examiner finds that Strassburger teaches forming cyclodextrin complex particles using a spray drying process similar to the process taught in the Specification. The Examiner finds that, based on the teachings of the present Specification, the cyclodextrin complexes of Strassburger would be expected to have a fragrance level within the scope of the claims. Final Act. 7—8. The Examiner finds that Ammeraal teaches that drying cyclodextrin complexes at a temperature of from 135° to 220°C reduces the moisture content to less than 15% or less. Final Act. 8. Finally, the Examiner finds that Trinh ’761 discloses the use of a second fragrance material. Id. The Examiner concludes that the present 4 Appeal 2017-003727 Application 12/036,490 invention would have been prima facie obvious in light of the references. Final Act. 8—13. Appellants contend that Trinh ’445 does not teach or suggest complexed cyclodextrin particles with the percentages of perfume and moisture content recited in the claims. Br. 5. Appellants contend that Trinh ’445 does not teach or suggest the use of a second perfume. Id. Appellants contend that Ammeraal does not teach or suggest a composition where the percent of the fragrance complexed with the cyclodextrin is greater than 90%. Br. 6. Appellants also contend that the process of Strassburger does not inherently produce complexed cyclodextrins with greater than 90% of the guest molecule complexed with the cyclodextrin. Br. 6. Appellants point to the Declaration of Mr. Scavone8 to support their contention that the composition of example 1 of Strassburger would have less than 90% of the fragrance complexed with the cyclodextrin. Br. 7. Appellants also argue that the composition of Strassburger contains pectin which would also combine with the fragrance, reducing the amount of fragrance complexed with the cyclodextrin. Br. 8. Appellants also argue that claim 11 used the transitional phrase “consisting of’ which excludes the presence of pectin. Br. 8—9. Finally, Appellants contend that one skilled in the art would not have a reasonable expectation of success in combining the teachings of the references to create the claimed product. Br. 9. 8 Declaration of Timothy Alan Scavone Under 37 C.F.R. § 1.132, filed Oct. 30, 2014 (‘Scavone Decl.”). 5 Appeal 2017-003727 Application 12/036,490 Principles of Law [T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Analysis We adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established that the claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Trinh ’445 combined with Ammeraal, Strassburger and Trinh ’761. Appellants have not produced evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are incorrect. Only those arguments made by Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative; therefore, all of the rejected claims fall with claim 1. We address Appellants’ arguments below. Appellants contend that Trinh ’445 does not teach the use of complexed cyclodextrin nor does it teach the use of two fragrances. Br. 5. We are unpersuaded. The Examiner does not rely on Trinh ’445 to teach these elements but rather cites to Strassburger and Trinh ’761 for these 6 Appeal 2017-003727 Application 12/036,490 elements. Final Act. 6, 8. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants contend that Ammeraal does not teach or suggest a composition where the percent of fragrance complexed with cyclodextrin is 90% or greater. Again, Appellants are addressing the teachings of the individual reference and not the combined teachings of the references. Strassburger teaches the formation of complexes wherein 90% of the fragrance is complexed with the cyclodextrin. Final Act. 6. Appellants argue, however, that Strassburger does not teach this limitation. Br. 6—7. In support of their position, Appellants cite to the Scavone Declaration wherein Mr. Scavone calculates that less than 90% of the fragrance used to prepare the composition would be complexed with the cyclodextrin. Br. 7. Scavone Decl. H 10—11. We have considered Appellants’ argument and the Scavone Declaration and find them unpersuasive. Strassburger teaches making cyclodextrin complexes containing fragrances as the complexed or guest molecule. Strassburger Abstract. Strassburger discloses formation of cyclodextrin complexes wherein the guest molecule is incorporated into the cyclodextrin such that less that 0.3 percent of the guest molecule remains on the surface which indicates that 99.3 of the guest compound is complexed in the cyclodextrin. Strassburger 1117. The complexed cyclodextrin material has a final moisture content of 4.0%. Id. We agree with the Examiner that 7 Appeal 2017-003727 Application 12/036,490 complexed cyclodextrins of Strassburger would have the same attributes as the complexes described in the claims. Ans. 17—18. Mr. Scavone’s Declaration does not convince us that the Examiner erred. Mr. Scavone’s calculation is based on determining how much of the diacetyl present at the start of the process is actually incorporated in the complex. See, Scavone Decl. Tflf 10—11. The claims, however, refer to the amount of fragrance present in the final product. See, claim 1 reproduced above. This interpretation is confirmed by the present Specification where it teaches that percentage of fragrance complexed is determined by analyzing the amount of fragrance that can be extracted from the finished complex, not the starting materials. Spec. 8. Mr. Scavone did not make the proper calculation or analysis required by the claims. In other words, Mr. Scavone disclosed the degree of complexing, but not the percentages in the final product. Appellants contend that the process of Strassburger does not necessarily result in a percentage of fragrance being complexed with cyclodextrin of 90% or greater. We are not persuaded. Strassburger specifically teaches that the percent of diacetyl on the surface is 0.3%, meaning that the remaining 99.7% of the diacetyl is complexed with cyclodextrin. Strassburger 1117, Ans. 17—18. Appellants argue that the presence of pectin would increase the amount of fragrance trapped but not complexed in the cyclodextrin. Br. 8. Appellants contend that this would artificially increase the measured amount of fragrance entrapped in the cyclodextrin. Id. We remain unpersuaded. While Strassburger teaches the use of pectin, as the Examiner points out, 8 Appeal 2017-003727 Application 12/036,490 Appellants have not produced any evidence that the fragrances entrapped in the cyclodextrin are not complexed. Ans. 17. Moreover, Strassburger teaches that pectin is a “complex enhancing agent[]” suggesting that pectin helps increase the amount of guest compounds complexed with cyclodextrin. Strassburger | 52. Appellants argue that claim 11 uses the transition phrase “consisting of’ which exclude the presence of other materials and that Strassburger teaches the inclusion of an emulsifier. Br. 8—9. Claim 11 and its dependent claim 12 are not the subject of this rejection. Therefore, this argument is moot. Finally, Appellants argue that one skilled in the art would not have had a reasonable expectation of success that combining the teachings of the references would have resulted in the claimed product. Br. 9. We are not persuaded. Trinh ’445 specifically teaches the use of “cyclodextrin/perfume inclusion complexes” as an optional moisture activated perfume in personal care compositions. Trinh ’445 col. 3,11. 18—31. Strassburger teaches that the cyclodextrin complexes described therein result in preventing the fragrance from escaping from the product before needed. See, Strassburger 122. We find that one skilled in the art would have had a reasonable expectation that the cyclodextrin complexes of Strassburger and Ammeraal would work in the personal care items of Trinh ’445. Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner’s conclusion that claim 1 would have been obvious over Trinh ’445 combined with Ammeraal, Strassburger, and Trinh ’761. 9 Appeal 2017-003727 Application 12/036,490 Claims 2, 3, 5, 7—10, and 13 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). TRINII ’445 COMBINED WITHAMMERAAL, LEWIS, AND TRINH 761 Issue The issue with respect to this rejection is whether a preponderance of the evidence supports the Examiner’s conclusion that claims 1—3, 5, and 7— 14 would have been obvious over Trinh ’445 combined with Ammeraal, Lewis, and Trinh ’761. The Examiner finds that Trinh ’445 discloses articles such as diapers and pantiliners which minimize odors by incorporating particles of uncomplexed cyclodextrin and an odor control agent. Final Act. 18. The Examiner also finds that Trinh ’445 discloses the use of perfiime/cyclodextrin complexes. Final Act. 19. The Examiner finds that Lewis teaches the preparation of pure inclusion complexes of cyclodextrin by the removal of uncomplexed guest molecules. Final Act. 20. The Examiner finds that the process of Lewis results in a final product wherein greater than 90 percent of the guest molecule in the final product is complexed with the cyclodextrin. Final Act. 21. The Examiner finds that Ammeraal teaches cyclodextrin complexes with a moisture content of less than 15% and that Trinh ’761 teaches the use of a second fragrance. Final Act. 21. The Examiner concludes that it would have been obvious to incorporate the cyclodextrin complexes of Lewis into the articles of Trinh 10 Appeal 2017-003727 Application 12/036,490 ’445 wherein the cyclodextrin particles have a moisture content within the range taught by Ammeraal. Final Act. 22—24. Appellants repeat their contentions with respect to Trinh ’445 and Ammeraal discussed above. With respect to Lewis, Appellants contend that Lewis does not teach the formation of particles nor does Lewis teach a material where the percent of the fragrance complexed with the cyclodextrin is greater than 90% as required by claim 1 or greater than 96% as required by claims 10 and 11. Br. 10. With respect to claim 8, Appellants argue that claim 8 calls for the complex to be made by spray drying and that Lewis does not teach spray-drying. Br. 11. Principles of Law “The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). (Citation omitted) Analysis We again adopt the Examiner’s findings of fact, reasoning on scope and content of the prior art, and conclusions set out in the Final Action and Answer regarding this rejection. We find the Examiner has established that the claims would have been obvious to one of ordinary skill in the art at the time the invention was made over Trinh ’445 combined with Ammeraal, Lewis and Trinh ’761. Appellants have not produced evidence showing, or persuasively argued, that the Examiner’s determinations on obviousness are 11 Appeal 2017-003727 Application 12/036,490 incorrect. Only those arguments made by Appellants in the Briefs have been considered in this Decision. Arguments not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1 as representative. We address Appellants’ arguments below. Appellants’ arguments with respect to Trinh ’445 and Ammeraal are discussed above. Appellants’ arguments are an attack on the teachings of the individual references and fail to address the combined teachings of the references. As such, they fail to overcome the Examiner’s prima facie case of obviousness. Appellants contend that the product produced in Lewis does not comprise particles but is a solid mass. Br. 10. We are unpersuaded. As the Examiner points out, Lewis teaches that the product disclosed comprises particles. Lewis col. 3,11. 20-26, Ans. 30. Appellants next contend that Lewis does not disclose complexes where 90% or more of the fragrance is complexed with the cyclodextrin. Br. 10. Again. We are unpersuaded. In example 2 of Lewis, the resulting product was subjected to a solvent extraction to test for any uncomplexed limonene in the final product. Lewis col. 5,11. 50—60. This test is similar to the test described in the present Specification for determining percent of fragrance complexed. Spec. 8. The test in Lewis indicates that for the sample “solid A” of cyclodextrin complexed with limonene, the amount of limonene extracted was zero. Lewis col. 5, Table II. In other words 100% of the limonene was complexed with the cyclodextrin. This is well above the 90% recited in claim 1 and the 96 percent recited in claims 10 and 11. In re Thorpe, 111 F.2d at 697. 12 Appeal 2017-003727 Application 12/036,490 We are unpersuaded by Appellants’ argument that Lewis does not teach spray-drying as required by claim 8. Br. 11. Claim 8 is directed to a product, not the method for making the product. Appellants have not shown that the product used in the invention is different from that described in Lewis. Therefore, the process by which the complexed cyclodextrin is made is irrelevant to patentability. Conclusion of Law We conclude that a preponderance of the evidence supports the Examiner’s conclusion that claims 1, 8, 10, and 11 would have been obvious over Trinh ’445, combined with Ammeraal, Lewis and Trinh ’761. Claims 2, 3, 5, 7, 9, and 12—14 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection under 35 U.S.C. § 112, first paragraph. We affirm the rejections under 35 U.S.C. § 103(a). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Copy with citationCopy as parenthetical citation