Ex Parte Scavone et alDownload PDFPatent Trial and Appeal BoardNov 6, 201711712771 (P.T.A.B. Nov. 6, 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. 11/712,771 03/01/2007 Timothy Alan Scavone 10728 8219 27752 7590 11/08/2017 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 11/08/2017 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 SWITZER Appeal 2016-007780 Application 11/712,7711 Technology Center 1600 Before DONALD E. ADAMS, FRANCISCO C. PRATS, and ULRIKH W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL2 This appeal under 35 U.S.C. § 134(a) involves claims 37, 39-47, 49, and 50 (Ans. 2). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify the real party in interest as “The Proctor & Gamble Company of Cincinnati, Ohio” (Br. 1). 2 This Appeal is related to Appeal 2015-006714 (Application 13/101,851); Appeal 2015-006715 (Application 13/101,865); and Appeal 2017-003727 (Application 12/036,490) (see Br. 1). Appeal 2016-007780 Application 11/712,771 STATEMENT OF THE CASE Appellants’ Specification discloses “personal care products, including compositions that are applied to the body or clothing, and articles that are worn or applied against the body” (Spec. 1). Claim 37 is representative and reproduced below: 37. A personal care product, comprising: (a) a liquid carrier; (b) an antiperspirant active dispersed within the liquid carrier; (c) a plurality of particles dispersed within the liquid carrier, the plurality of particles comprising a cyclodextrin complexing material and a first fragrance material, wherein the percent of the first fragrance material that is complexed with the cyclodextrin is greater than about 75%, so that the perceptibility of the fragrance is minimized prior to its release; and (d) a second fragrance material that is not complexed with cyclodextrin complexing material and that is different from the first fragrance material in chemical make-up, wherein the personal care product is in the form of a spray, a roll-on, or an aerosol; wherein the plurality of particles are formed using a process comprising a step of spray drying. (Br. 14.)3 3 We understand the requirement in Appellants’ claim 37 that “the percent of the first fragrance material that is complexed with the cyclodextrin is greater than about 75%” to refer to a complexation efficiency, wherein complexation efficiency is defined by the formula: “Complexation Efficiency = % Complexed / [% Complexed + % Free]” (see Spec. 8 (alteration original)). 2 Appeal 2016-007780 Application 11/712,771 The claims stand rejected as follows: Claims 37, 39, 41, 43, 44, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon4 and Strassburger.5 Claims 40, 42, and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Strassburger, and Peterson.6 Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Strassburger, and Faryniarz.7 Claims 37, 39, 41, 43, 44, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon and Lewis.8 Claims 40 and 45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, Dodd,9 and Brooks.10 Claims 46 and 47 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, and Lindauer.11 Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, and Holzner.12 4 Bacon et al., US 6,110,449, issued Aug. 29, 2000. 5 Strassburger, WO 2006/137958 Al, published Dec. 28, 2006. 6 Peterson et al., US 5,861,144, issued Jan. 19, 1999. 7 Faryniarz et al., US 5,135,747, issued Aug. 4, 1992. 8 Lewis et al., US 5,403,828, issued Apr. 4, 1995. 9 Dodd et al., US 5,882,638, issued Mar. 16, 1999. 10 Brooks, US 6,824,763 B2, issued Nov. 30, 2004. 11 Lindauer et al., US 4,731,243, issued Mar. 15, 1988. 12 Holzner, US 4,803,195, issued Feb. 7, 1989. 3 Appeal 2016-007780 Application 11/712,771 Claims 37, 39, 43, 44, 49, and 50 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of Scavone ’3 8613 in combination with Bacon and Lewis.14 Claims 37, 39, 43, 44, 49, and 50 stand rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of Scavone ’38715 in combination with Bacon and Lewis.16 Obviousness-type Double Patenting'. Appellants did not contest the obviousness-type double patenting rejections (see Ans. 43 and 45). Therefore, Appellants waived any appeal of these rejections. The obviousness-type double patenting rejections are summarily affirmed. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Bacon “relates to anhydrous antiperspirant cream compositions which contain perfumes that are encapsulated by cyclodextrins to provide for sustained release of the perfumes” (Bacon 1: 8—11; see also id. at 2: 44— 13 Scavone et al., US 9,649,386 B2, issued May 16, 2017. 14 Because, Application 13/101,851 issued as the Scavone ’386 patent, this rejection is no longer provisional (cf. Ans. 41). 15 Scavone et al., US 9,649,387 B2, issued May 16, 2017. 16 Because, Application 13/101,865 issued as the Scavone ’387 patent, this rejection is no longer provisional (cf. Ans. 43). 4 Appeal 2016-007780 Application 11/712,771 46 (Bacon relates “to anhydrous antiperspirant cream compositions that have improved fragrance longevity”); see generally Ans. 3—5, 9-10, and 21—23). FF 2. Bacon discloses that “[m]ost [topical antiperspirant products that are commercially available or otherwise known in the antiperspirant art] are formulated as roll-on liquids, creams, emulsions, gels, gel-solids, or other solid stick formulations, and comprise an antiperspirant active and suspending or thickening agent incorporated into a suitable liquid carrier,” wherein “these antiperspirant products contain perfumes which [are generally included in antiperspirant products as free perfumes and] help provide a pleasant fragrance during or after application of the product, or which otherwise help to hide or mask malodors associated with the use of the product” (Bacon 1: 14—30; Ans. 3—5, 9-10, and 21—23). FF 3. Bacon “found that the fragrance odor impressions of encapsulated perfumes can be improved by incorporating perfume/cyclodextrin inclusion complexes into an anhydrous antiperspirant cream composition” (Bacon 2: 9—12; see id. at 2: 19-25 (“the incorporation of perfume/cyclodextrin inclusion complexes in antiperspirant cream formulations provides extended contact of the complexes with the skin and sustained release of perfume materials which can result in fragrance odor impressions for extended periods after application and during use of the antiperspirant cream product”); see generally Ans. 3 and 21—22). FF 4. Bacon’s cream “compositions may optionally comprise a combination of the complex and free perfume,” wherein “the optional free perfume can emit a detectable perfume odor” and “is very useful in imparting an initial perfume odor that can serve as a signal that the antiperspirant cream product is effective” (Bacon 7: 44—61; see Ans. 22). 5 Appeal 2016-007780 Application 11/712,771 FF 5. Bacon’s “cream compositions . . . comprise an anhydrous liquid carrier” (Bacon 14: 66—67; see Ans. 3 and 21). FF 6. Examiner finds that Bacon fails to disclose “the percent of the fragrance material that is complexed with the cyclodextrin is greater than about [75]% as recited in claim 37 ... so that the perceptibility of the fragrance material is minimized prior to its release” and relies on Strassburger or Lewis to make up for this deficiency in Bacon (Ans. 5; see also id. at 23). FF 7. Strassburger relates to “[cjyclodextrin inclusion complexes and methods for preparing and using the cyclodextrin inclusion complexes” (Strassburger, Abstract; see Ans. 5). FF 8. Strassburger discloses “[a] method for preparing a cyclodextrin inclusion complex,” which “compris[es]: dry blending cyclodextrin, an emulsifier and a thickener to form a dry blend; and mixing a solvent and a guest with the dry blend to form a mixture comprising a cyclodextrin inclusion complex,” “to form a dry powder comprising the cyclodextrin inclusion complex,” wherein the cyclodextrin inclusion complex is added to “an end product,” such as “a cosmetic” and “wherein [the] drying comprises at least one of. . . spray drying” (Strassburger 48 (claims 1—4); see Ans. 6 and 10-11). FF 9. Strassburger discloses that “the term ‘guest’ can refer to any molecule of which at least a portion can be held or captured within the three dimensional cavity present in the cyclodextrin molecule, including, without limitation, at least one of... an olfactant” (Strassburger 125; see also id. 6 Appeal 2016-007780 Application 11/712,771 129 (“Examples of olfactants can include, without limitation, at least one of natural fragrances, synthetic fragrances, synthetic essential oils, natural essential oils, and combinations thereof’); see Ans. 5—6). FF 10. Strassburger exemplifies a process for forming a cyclodextrin inclusion complex with P-cyclodextrin, diacetyl (fragrance), and pectin as an emulsifier, wherein 110.02 lb “of P-cyclodextrin was dry blended with . . . [2.20 lb of] beet pectin ... to form a dry blend,” which was then combined with 275.05 lb “of hot deionized water” and 24.75 lb “of diacetyl,” and “then spray dried on a nozzle dryer having an inlet temperature of approximately 410 °F (210 °C) and an outlet temperature of approximately 221 °F (105 °C)” to achieve a “percent retention of 12.59 wt % of diacetyl in the cyclodextrin inclusion complex” with a 4.0% moisture content, resulting in a “cyclodextrin inclusion complex [that] included less than 0.3% surface diacetyl, and [a] particle size of the cyclodextrin inclusion complex [that] was measured as 99.7% through an 80 mesh screen” (Strassburger 1117; see id. 140 (Strassburger’s “‘guest’ can [] include . . . diacetyl”); see Ans. 10- 13). FF 11. Scavone declares that Strassburger’s exemplified method of producing cyclodextrin-fragrance complexes, as relied upon by Examiner, resulted in a “calculated degree of complexing [that] is approximately 60.15%” and “one of ordinary skill in the art, after reading Strassburger, would most likely not appreciate that spray drying a mixture of cyclodextrin- fragrance complexes could produce particles with greater than 90% complexation” (Scavone Decl.17 H 6—11). 17 Declaration of Timothy Alan Scavone, signed Mar. 19, 2013. 7 Appeal 2016-007780 Application 11/712,771 FF 12. Examiner finds that the combination of Bacon and Strassburger “neither teach the antiperspirant cream composition in the form of [a] spray or aerosol nor the incorporation of cyclodextrin particles that do not contain fragrance material” and relies on Peterson to make up for the foregoing deficiencies in the combination of Bacon and Strassburger (Ans. 15—17). FF 13. Examiner finds that Peterson discloses the delivery of cyclodextrin compositions “as a suspended solution via a spray dispenser or a bottle, such that when applied or sprayed onto the skin, the solvent would immediately dry/volatilize off to leave a powder film .... Examples of such suspension forms are aerosols, liquid powder suspensions, or silicone suspensions” (Ans. 15-16). FF 14. Examiner finds that Peterson discloses the application of uncomplexed cyclodextrin to skin to absorb various body odor molecules (Ans. 15). FF 15. Examiner finds that the combination of Bacon and Strassburger fails to suggest “the incorporation of fragrance material that is encapsulated with a material other than cyclodextrin,” and relies on Faryniarz to disclose “an antiperspirant and/or deodorant product” comprising a fragrance encapsulated in a polymeric material such as “polyethylene waxes, polyvinyl acetate, polyvinyl pyrrolidine, polyamides, polyesters, polysaccharides, gelatin, gum acacia and arabic, carboxymethyl cellulose, hydroxyalkyl cellulose, alkyl cellulose and natural waxes” (Ans. 18—19). FF 16. Lewis discloses A method ... for purifying crude inclusion complexes of cyclodextrin which is used as a host material, in combination with a guest material, such as light mineral oil. After the crude cyclodextrin complex is formed in an aqueous media, the 8 Appeal 2016-007780 Application 11/712,771 moisture content of the crude cyclodextrin complex is substantially reduced before it is washed with a wash solvent to substantially eliminate uncomplexed guest molecules. (Lewis, Abstract; see Ans. 23.) FF 17. Lewis discloses that “[t]he most widely used method for formation of a complex between a cyclodextrin and a guest molecule involves dissolving the cyclodextrin in a solvent with a guest molecule and collecting the precipitate that forms” (Lewis 1: 53—56; see Ans. 24). FF 18. Lewis discloses that [o]ne of the problems with the complexation process is that the product obtained directly after complexation, hereinafter referred to as the crude product, is generally not a pure complex of guest and cyclodextrin. Rather, the crude product from the complexation process comprises a complex of cyclodextrin and guest; uncomplexed cyclodextrin, uncomplexed guest; and some solvent. . . . [Therefore, Lewis realized] a need to find a method for removing uncomplexed guest from the crude product without removing complexed guest from the complex . . . [and] discovered that an uncomplexed guest can be removed from crude product thereby purifying the crude product by washing the crude product with a wash solvent wherein said wash solvent is an organic compound that is a liquid at a temperature between about 0° C. to about 60° C., has a boiling point at a temperature between about 40° C. to about 130° C., and wherein said uncomplexed guest is soluble in said wash solvent at about 25° C. (Lewis 1: 67 — 2: 32; see Ans. 23—24.) FF 19. Lewis exemplifies a method of preparing a 1:1 inclusion compound between P-cyclodextrin (BCD) and limonene,18 wherein the method comprises dissolving 10 g of BCD in 100 mL of water at 60° C and adding 18 Examiner finds that “limonene ... is one of the specific perfumes taught by Bacon” (Ans. 25 (emphasis removed)). 9 Appeal 2016-007780 Application 11/712,771 1.1 g of limonene “to the stirred homogeneous aqueous BCD solution at 60° C” to obtain a white precipitate, which was “collected by filtration” and “divided into two parts: Part A[, which] was dried in an oven at 105° C and part B[, which] was allowed to dry on a glass fritted-funnel.” Parts A and B where “then [separately] mixed with 15 ml of acetone” and “dried on glass frits to remove the acetone.” “'H NMR showed that solid A had a BCDdimonene ratio of 0.95 and that solid B had a BCDdimonene ratio of 0.85 indicating that the brief acetone contact removed more guest from the ‘wet’ solid B than from the ‘dry’ solid A” (Lewis 5: 38—54; see id. at 6: 7— 29; see Ans. 23—25; see also Ans. 25 (“a ratio of 0.95 corresponds to a percentage of 95% of fragrance material that is complexed with the cyclodextrin which overlaps with the ranges found in [Appellants’] claim 37 and is close to the range of instant claim 39” (emphasis removed))). FF 20. Scavone declares that: [T]he by-product of Example 2 of Lewis et al. is likely different from the “particles” of claim 37 and of the particles produced through a spray drying step because the by-product of Lewis [] is likely gritty, larger, and contains sharp surfaces because Lewis[’s] crystallization of the cyclodextrin complex is uncontrolled and Lewis[’s] use of single perfume component would likely produce a homogenous crystallite that could grow into a large by-product. (Scavone Decl. 114 (emphasis added).) FF 21. Examiner finds that the combination of Bacon and Lewis “neither teach[es] the antiperspirant cream composition in the form of [a] spray nor the incorporation of cyclodextrin particles that do not contain fragrance material” and relies on Dodd to cure these deficiencies in the combination of Bacon and Lewis (Ans. 29; see also id. at 29—32). 10 Appeal 2016-007780 Application 11/712,771 FF 22. Examiner relies on Brooks to “teach that a fragrance is added to the body powder to assist in reducing the appearance or strength of odors often associated with fungal infections and the biotransformation of apocrine sweat” (Ans. 32). FF 23. Examiner finds that the combination of Bacon and Lewis fails to suggest “the incorporation of fragrance material that is encapsulated with a material other than cyclodextrin” and relies on Lindauer to cure this deficiency in the combination of Bacon and Lewis (see Ans. 35—36). FF 24. Examiner finds that the combination of Bacon and Lewis fails to suggest a “personal care product in the form of [an] aerosol” and relies on Holzner to cure this deficiency in the combination of Bacon and Lewis (Ans. 38-39). ANALYSIS The rejection over the combination of Bacon and Strassburger. Based on the combination of Bacon and Strassburger, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to complex fragrances with cyclodextrin,” as suggested by Bacon, using Strassburger’s spray-drying technique (see Ans. 7). In this regard, Examiner finds that the “levels of fragrance complexation are directly associated with the complex formation process itself’ and “the percentages do not represent a formulation design of adding a first percentage of fragrance material via a cyclodextrin complex and adding a second percentage of neat fragrance material” (Ans. 6 (emphasis omitted); see id. at 9). Therefore, Examiner reasons that “[t]he spray drying method employed by Strassburger would necessarily yield the percent of fragrance material that is complexed with cyclodextrin to be greater than about 90% 11 Appeal 2016-007780 Application 11/712,771 . . . because Strassburger utilizes the same spray drying method as [A]ppellant[s] to form perfume cyclodextrin inclusion complexes” (id. at 7— 8; see id. at 8 (“[t]he spray drying process of Strassburger would necessarily and inherently result in the same percent of fragrance complexed with the cyclodextrin”). We are not persuaded. Notwithstanding Examiner’s contention to the contrary, Scavone makes clear that the percent of fragrance material that is complexed with cyclodextrin in the Strassburger example relied upon by Examiner is approximately 60.15% (FF 11; see also Br. 4—5). We are not persuaded by Examiner’s contention that Scavone’s calculated “60.15% degree of complexing is erroneous,” because Strassburger’s reference to a “percent retention of 12.59 wt % of diacetyl in the [cyclodextrin] inclusion complex” “is 12.59% of the 24.751b of diacetyl originally added to the reactor [that is] complexed in the cyclodextrin” (Ans. 12; see FF 10). As Appellants explain, “if calculated as such, the amount complexed would actually be 3.11 lbs., which is less than Mr. Scavone’s calculated 16.95 lbs. leading to an even lower percentage of complexing” (Br. 5). We are also not persuaded by Examiner’s contention that the actual percent of uncomplexed diactyl in the final cyclodextrin inclusion complex is less than 0.3% since this is the percentage of surface diacetyl disclosed by Strassburger. The only diacetyl in the cyclodextrin inclusion complex is either complexed or surface diacetyl because the boiling point of diacetyl is higher than the temperature used for spray drying. Moreover, the cyclodextrin inclusion complex is spray dried particle— there is no aqueous solution comprising uncomplex[ed] diacetyl in the final inclusion complex. [Therefore,] [r]egardless of how much diacetyl Strassburger started with, the percent of uncomplexed fragrance in the final cyclodextrin inclusion complex is at least 99.7% (100- 12 Appeal 2016-007780 Application 11/712,771 0.3=[99.7]). . . . [Thus,] [t]he resulting spray dried perfume/cyclodextrin would necessarily have greater than about 75% of fragrance complexed with the cyclodextrin regardless of whether or not one would have recognized that fact. (Ans. 12; see FF 10.) As Appellants explain, “[considering both the inlet and outlet temperatures (210°C and 105°C[, respectively]) [of Strassburger’s spray drying method] are above the boiling point of diacetyl (88°C), it is understood [by those of ordinary skill in this art] that diacetyl is above its boiling point and will flash off with the water” (Br. 5; see Ans. 14 (Appellants are “correct that the spray drying temperature is higher than the boiling point of diacetyl and, therefore, all of the uncomplexed diacetyl is removed”)). Examiner’s reasoning that 100% of the diacetyl added to the reaction is either complexed to or on the surface of cyclodextrin (e.g., 100- 0.3=99.7%), fails to account for that amount of diacetyl that is neither complexed to nor on the surface of cyclodextrin, but is instead “flash[ed] off with the water” in the spray drying method (see generally Br. 5; cf. Ans. 12). In sum, Examiner failed to establish an evidentiary basis on this record to support a conclusion that the combination of Bacon and Strassburger suggests, or otherwise makes obvious, “a plurality of particles comprising a cyclodextrin complexing material and a first fragrance wherein the percent of the first fragrance material that is complexed with the cyclodextrin is greater than about 75%” as is required by Appellants’ claimed invention (see Br. 2; see also id. at 4—5). The rejection over the combination of Bacon, Strassburger, and Peterson'. Based on the combination of Bacon, Strassburger, and Peterson, Examiner concludes that, at the time Appellants’ invention was made, it 13 Appeal 2016-007780 Application 11/712,771 would have been prima facie obvious “to modify the antiperspirant cream composition [suggested by the combination of Bacon and Strassburger, in order to]. . . prepare it in the form of spray or aerosol, because Peterson [] teach[es] compositions that may contain antiperspirants in the form of spray or aerosols” and “incorporating uncomplexed cyclodextrin, because Peterson [] teach[es] compositions that contain uncomplexed cyclodextrin” (Ans. 16). We are not persuaded. As Appellants explain, Examiner failed to establish that Peterson cures the deficiencies in the combination of Bacon and Strassburger discussed above (see Br. 6; cf FF 12—14). The rejection over the combination of Bacon, Strassburger, and Faryniarz: Based on the combination of Bacon, Strassburger, and Faryniarz, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify the antiperspirant cream composition [suggested by the combination of Bacon and Strassburger] . . . by incorporating fragrance material that is encapsulated with a material other than cyclodextrin, because Faryniarz [] teach[es] compositions that comprise fragrance material that is encapsulated with a material other than cyclodextrin” (Ans. 19; see FF 15). We are not persuaded. As Appellants explain, Examiner failed to establish that Faryniarz cures the deficiencies in the combination of Bacon and Strassburger discussed above (Br. 7; cf. FF 15). 14 Appeal 2016-007780 Application 11/712,771 The rejection over the combination of Bacon and Lewis'. Based on the combination of Bacon and Lewis, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to select a perfume/cyclodextrin inclusion complex which was purified to substantially eliminate the uncomplexed perfume guest molecules as taught by Lewis . . . [because,] Lewis [] teach[es] one of the problems with the complexation process is that the product obtained directly after complexation, hereinafter referred to as the crude product, is generally not a pure complex of guest and cyclodextrin (Ans. 24). We understand Examiner’s rationale to mean that a person of ordinary skill in this art would have prepared a cyclodextrin-perfume inclusion complex according to Lewis’ disclosure and included this cyclodextrin-perfume inclusion complex in Bacon’s composition. In this regard, Examiner finds that, notwithstanding Appellants’ product-by-process limitation regarding spray-drying, absent evidence to the contrary, the cyclodextrin-perfume inclusion complex suggested by the combination of Bacon and Lewis, and Appellants’ claimed invention, are chemically and structurally the same whether dried in an oven or spray dried (see Ans. 26). Appellants contend, inter alia, that “[t]he ‘material’ from Lewis, as cited by [Examiner], does not appear to be ‘particles’ as recited by the claim, but appears to actually be a solid compound, formed by BCD and limonene” (Br. 10; see also EL 20 (Scavone declares that Lewis’ product “is likely different from [Appellants’] ‘particles’”).) Stated differently, Appellants contend that, notwithstanding Examiner’s assertion to the contrary, a reasonable expectation exists that there is, at least, a structural difference between the cyclodextrin-perfume inclusion complex required by 15 Appeal 2016-007780 Application 11/712,771 Appellants’ claimed invention and the cyclodextrin-perfume inclusion complex suggested by the combination of Bacon and Lewis (see Br. 10; cf Ans. 26). Although Examiner recognizes Appellants’ contention regarding particles, Examiner failed to address Appellants’ contention and, thereby, failed to establish an evidentiary basis on this record to support a conclusion that the cyclodextrin-perfume inclusion complex resulting from the combination of Bacon and Lewis is in the form of a plurality of particles as is required by Appellants’ claimed invention (see Ans. 26; see also id. at 27— 28). It is Examiner’s “initial burden, on review of the prior art. . ., [to] present[] a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Because, Examiner failed to satisfy this initial burden, the rejection is reversed. The rejection over the combination of Bacon, Lewis, Dodd, and Brooks'. Based on the combination of Bacon, Lewis, Dodd, and Brooks, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify the composition suggested by the combination of Bacon and Lewis in order to “prepare the composition in the form of [a] spray, because Dodd [] teach compositions that may contain antiperspirants in the form of [a] spray” and “incorporat[e] uncomplexed cyclodextrin, because Dodd [] teach[es] compositions that contain uncomplexed cyclodextrin which [is] free of free perfumes” (Ans. 31). We are not persuaded. As Appellants explain, Examiner fails to establish that Dodd and Brooks, alone or in combination, cures the deficiencies in the combination of Bacon and Lewis (Br. 11). 16 Appeal 2016-007780 Application 11/712,771 The rejection over the combination of Bacon, Lewis, and Lindauer: Based on the combination of Bacon, Lewis, and Lindauer, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify the antiperspirant cream composition [suggested by the combination] of Bacon [and Lewis] by incorporating fragrance material that is encapsulated with a material other than cyclodextrin such as using polymers” as suggested by Lindauer (Ans. 35— 36). We are not persuaded. As Appellants explain, Examiner failed to establish that Lindauer cures the deficiencies in the combination of Bacon and Lewis (Br. 12). The rejection over the combination of Bacon, Lewis, and Holzner: Based on the combination of Bacon, Lewis, and Holzner, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to modify the antiperspirant cream composition [suggested by the combination] of Bacon [and Lewis] by formulating the composition in the form of [an] aerosol” as suggested by Holzner (Ans. 38). We are not persuaded. As Appellants explain, Examiner failed to establish that Holzner cures the deficiencies in the combination of Bacon and Lewis (Br. 12). CONCLUSION OL LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. 17 Appeal 2016-007780 Application 11/712,771 The rejection of claims 37, 39, 41, 43, 44, 49, and 50 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon and Strassburger is reversed. The rejection of claims 40, 42, and 45 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Strassburger, and Peterson is reversed. The rejection of claims 46 and 47 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Strassburger, and Faryniarz is reversed. The rejection of claims 37, 39, 41, 43, 44, 49, and 50 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon and Lewis is reversed. The rejection of claims 40 and 45 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, Dodd, and Brooks is reversed. The rejection of claims 46 and 47 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, and Lindauer is reversed. The rejection of claim 42 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bacon, Lewis, and Holzner is reversed. 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-IN-PART 18 Copy with citationCopy as parenthetical citation