11299437 (B.P.A.I. Apr. 21, 2009)

Ex Parte Sivik et al

Board of Patent Appeals and InterferencesApr 21, 2009

11299437 (B.P.A.I. Apr. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MARK ROBERT SIVIK, ROBB RICHARD GARDNER, THOMAS WOODS KEOUGH, WILLIAM MICHAEL SCHEPER, and YIPING SUN ____________ Appeal 2009-2701 Application 11/299,437 Technology Center 1700 ____________ Decided:1 April 21, 2009 ____________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and LINDA M. GAUDETTE, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 22, 23, 25-30, and 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-2701 Application 11/299,437 33-41. We have jurisdiction under 35 U.S.C. § 6(b). A copy of illustrative claim 41 is appended to this decision. The Examiner relies upon the following references in the rejection of the appealed claims (Ans. 3): Gardner (co-pending app.) 7,247,172 B2 Jul. 24, 2007 Kyriazis EP 979,867 Feb. 02, 2000 Appealed claims 22, 23, 25-30, and 33-41 stand rejected under the judicially created doctrine of obviousness-type double patenting over claims 1-19 of the patent to Gardner. Claim 41 stands rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Kyriazis. We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find that the Examiner’s obviousness-type double patenting rejection is well founded and in accord with current patent jurisprudence. On the other hand, we will not sustain the Examiner’s § 102 / §103 rejection of claim 41. Concerning the obviousness-type double patenting rejection, Appellants do not dispute the Examiner’s rationale that finishing compositions within the scope of the appealed claims are substantially the same as the finishing compositions claimed in the Gardner patent. Appellants have advanced no argument that the claimed compositions are non-obvious over the compositions recited in the Gardner claims. Appellants contend that the textile finishing compositions of the present claims “are distinct from the finished textiles claimed in the ‘172 (Gardner) patent” (Br. 5, third para.). However, although it may be fairly said that the finished textiles claimed in the Gardner patent are distinct from the finishing 2 Appeal 2009-2701 Application 11/299,437 compositions of the appealed claims, this does not establish the non- obviousness of the claimed compositions over substantially the same compositions recited in the patent claims. It can hardly be gainsaid that when a patent claims a composition coated on an article, the composition itself is obvious over the same composition coated on a substrate. Again, we emphasize that Appellants have presented no argument that compositions within the scope of the appealed claims are non-obvious over compositions within the scope of Gardner’s claims. We now turn to the Examiner’s § 102 / §103 rejection of claim 41 over Kyriazis. Appellants maintain that “[i]n contrast to the teachings of Kyriazis, the textile finishing composition according to claim 41 contains a cross-linking adjunct and esterification catalyst, with a weight ratio of cross- linking adjunct:catalyst of about 2:1” (Br. 7, last para.). However, as accurately pointed out by the Examiner, claim 41 on appeal recites no such ratio. However, we agree with Appellants that Kyriazis does not teach or suggest the presence of a non-phosphorous polycarboxylic acid, a non- phosphorous carboxylic acid, or a mixture thereof. While the Examiner points to page 3, lines 22-24 of Kyriazis, the reference teaches that “[t]his polymerization or telomerization is carried out using maleic acid and a telogenic monomer, preferably sodium hypophosphite”. Consequently, the reference does not teach or suggest the presence of maleic acid, per se, in the finishing composition but the reaction product of maleic acid and a telogenic monomer. Hence, the Examiner has not made out the prima facie case that it would have been obvious for one of ordinary skill in the art to include free maleic acid or any other non-phosphorous carboxylic acid in the finishing composition of Kyriazis. 3 Appeal 2009-2701 Application 11/299,437 In conclusion, based on the foregoing, the Examiner’s obvious-type double patenting rejection is sustained, but we are constrained to reverse the Examiner’s § 102 / § 103 rejection of claim 41. Accordingly, the Examiner’s decision rejecting the appealed claims 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) (2008). AFFIRMED ssl THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT - IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI, OH 45202 4 Appeal 2009-2701 Application 11/299,437 5