Ex Parte Sunder et al

Patent Trial and Appeal Board

Dec 6, 2016

12983344 (P.T.A.B. Dec. 6, 2016)

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.
12/983,344 01/03/2011 Matthias Sunder H 08084 1159
49641 7590 12/08/2016
THE DIAL CORPORATION
7201 E. Henkel Way
SCOTTSDALE, AZ 85255
EXAMINER
ROBINSON, LISBETH C
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
US-STZ-PATENTS-UK-UW@us.henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS SUNDER, MARIO STURM, TOBIAS SEGLER, and
NOELLE WRUBBEL1
Appeal 2015-005448
Application 12/983,344
Technology Center 1600
Before JEFFREY N. FREDMAN, RICHARD J. SMITH, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a particle for
use in cleaning products such as laundry detergent. The Examiner entered
final rejections for obviousness and double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Background
The Specification discloses:
1 Appellants identify the Real Party in Interest as Henkel AG & Co. KGAA.
App. Br. 3.
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Application 12/983,344
[t]he present invention relates to particles suitable for use in
laundry-detergent products, cleaning products and care
products. The particles have a water-soluble or water-
dispersible carrier and active ingredient microcapsules.
Furthermore, the present invention relates to a method for
producing such particles, as well as detergents, cleaning agents
or care agents containing such particles.
Spec. 12.
The Claims
Claims 1, 5—10, 12, 13, and 16—18 are on appeal. Claim 1 is
illustrative and reads as follows:
1. Particle suitable for use in laundry-detergent, cleaning-agent
or care products, comprising:
a water-soluble or water-dispersible carrier, and
microcapsules comprising one or more active ingredients,
the water-soluble or water-dispersible carrier being in the
form of crystals and
comprising a carbohydrate chosen from dextrose, fructose,
galactose, isoglucose, glucose, sucrose, raffmose or mixtures
thereof, and
a coating comprising a mixture of thermoplastic polymer
and microcapsules.
App. Br. Claims App’x. 15.
The Issues
The following rejections are before us on appeal:
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A. Claims 1, 5—10, 12, 13, 16, and 17 are rejected under 35 USC § 103(a)
as obvious over Mayer2 and Denome.3 Ans. 2.
B. Claims 1, 5—10, 12, 13, and 16—18 are rejected under 35 USC § 103(a)
as obvious over Mayer, Denome, and Barthel.4 Ans. 3.
C. Claims 1, 5—10, 12, 13, and 16—18 are rejected under 35 USC § 103(a)
as obvious over Mayer and Aouad.5 Ans. 3.
D. Claims 1,5, 16, and 17 are rejected on the ground of nonstatutory
obviousness-type double patenting as obvious over claims 1—10 of Dreja.6
Ans. 4.
OBVIOUSNESS
Appellants do not separately argue the rejection of claims 1, 5—10, 12,
13, and 16—18 over Mayer, Denome and Barthel or the rejection of claims 1,
5—10, 12, 13, and 16—18 over Mayer and Aouad, but instead rely on their
argument regarding the rejection of claim 1 over Mayer and Denome. App.
Br. 14. Accordingly, we address these rejections together and find it
necessary to consider only Mayer and Denome.
We select claim 1 as representative of the claims subject to this
ground of rejection. 37 C.F.R. § 41.37(c)(iv).
2 WO 2007/113326 Al, published October 11, 2007. The Examiner has
relied upon U.S. Pre-Grant Pub. 2009/0042766 Al to Mayer for the English
language translation (collectively referred to herein as “Mayer”).
3 WO 2007/130685 Al, published Nov. 15, 2007 (“Denome”)
4 WO 2008/040620 Al, published Apr. 10, 2008 (“Barthel”)
5 US 2008/0131695 Al, published June 5, 2008 (“Aouad”)
6 US 8,399,395 B2, issued Mar. 19, 2013 (“Dreja”)
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The Examiner finds that Mayer teaches
a textile care agent having a water-soluble carrier comprising
carbohydrates selected from the group comprising dextrose,
fructose, galactose, isoglucose, glucose, sucrose, raffmose,
isomalt and mixtures thereof as carbohydrate carriers . . . and []
an embodiment with 1-4 mm sucrose crystals which are coated
with a thermoplastic polymer (PEG 4000) (Table I, with 15%
by weight thermoplastic polymer, and 10% by weight water-
softening clay (bentonite)).
Fin. Act. 3^4.7
The Examiner finds Mayer does not teach a perfume that is
microencapsulated, or liquid perfumes. Id. at 5. The Examiner finds
Denome teaches “a film comprising a thermoplastic polymer (polyvinyl
alcohol) and liquid perfume (perfume oil) encapsulated in water-insoluble
microcapsules (with a wall of urea/formaldehyde), wherein the film
comprises about 2-40% by weight perfume.” Id. The Examiner further
finds Denome teaches “layering techniques to produce a multilayered
material having different functional materials in each layer whereby a
functionalized substrate comprising one perfume is overlaid with a film
comprising perfume microcapsules,” and “that the film compositions
(functional substrates) may comprise a mixture of microcapsules and neat
perfume.” Id. The Examiner further finds Denome teaches that
the use of perfume microcapsules provides one or more of the
following advantages: (i) the ability to use a reduced total
perfume level, e.g., in neat perfume (direct add); in perfume
microcapsules; or combinations thereof, (ii) avoiding cost in
processing and lost material through processing; (iii) delivering
7 Final Action, mailed June 9, 2014.
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a high level of perfume while not affecting process product
disposition or process parameters or product stability or product
physical properties (one example is viscosity); and (iv)
delivering a high level of perfume to fabric while avoiding a
high level of neat product odor, which can be a consumer
negative; (v) delivering improved fabric odor longevity
performance compared to neat perfume; and (vi) delivering
improved odor from fabrics under stress conditions (one
example is while wearing clothing during physical activity or
exercise).
Id. at 5—6.
Based on the teachings of these references, the Examiner
concludes that it would have been “obvious for a person of ordinary
skill in the art to overlay the particles of Mayer [] with one or more of
the films comprising microcapsules of liquid perfume taught in
Denome [] because Denome et al. suggest multilayered substrates
with a combination of neat perfume and perfume microcapsules.” Id.
at 6. The Examiner finds a “skilled artisan would have been
motivated to apply the film layer of Denome et al. to accommodate
higher loading capacity and to control release of the functional
materials (e.g., whereby the presence of an outer layer controls the
release of an inner layer),” the artisan “would have been capable of
applying the known microcapsule film layering technique in the same
way as taught in Denome,” and “the results from the multilayered
particle would have been predictable to one of ordinary skill in the art,
in view of the advantages taught in Denome.” Id.
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The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that Mayer and Denome
suggest the subject matter of claims 1, 5—10, 12, 13, 16, and 17.
Findings of Fact (FF)
1. Mayer teaches “[ajsolid textile care composition in which the
water-soluble carrier is present in particulate form and has an envelope
composed of the water-soluble polymer, the textile care compound and the
perfume.” Mayer Abstract.
2. Mayer teaches “[t]he water-soluble carrier may comprise in
particular a carbohydrate selected from the group comprising dextrose,
fructose, galactose, isoglucose, glucose, sucrose, raffmose, isomalt and
mixtures thereof. The carbohydrate used may be, for example, candied sugar
or sugar crystals.” Id. at 138.
3. Mayer discloses sample textile care compositions as follows:
TMMJ i: ]
i* h- ;-a
so.sy
'07 7 9 70 70;
0
0 7
i 5 75
Id. at 1177.
4. Denome teaches a “functionalized substrate” (e.g., film) using
polyvinyl alcohol resin as a thermoplastic polymer and liquid perfume
(perfume oil) encapsulated in water-insoluble microcapsules. Denome 34—
35.
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5. Denome teaches layering techniques to produce multilayered
functional substrates and layering comprising perfume microcapsules:
In one embodiment where the film comprises multi-layers, the
composition of a first layer of film is different than the
composition of a second layer of film. In another embodiment,
the functional material of a first layer of film is different than
the functional material of a second layer of film. Examples of
different functional materials can include embodiments where
the first functional material comprises a PMC [perfume
microcapsule] and the second functional material can be a
functional material other than PMC; or where the first
functional material comprises a first PMC and the second
functional material comprises a second PMC, wherein the
encapsulated perfume components are different. These
different encapsulated perfumes components can have different
chemical formulas or create different scent effects. In another
embodiment, the present invention comprises more than two
layers wherein each layer comprises a functional material, and
wherein at least two of the layers have different functional
materials.
Id. at 26-21.
6. Denome teaches:
[ajnother aspect of the invention provides a functional
composition comprising a perfume composition comprising at
least one of the following: (a) perfume microcapsule
comprising a perfume carrier and an encapsulated perfume
composition, wherein said perfume microcapsule is selected
from a moisture-activated microcapsule, a heat-activated
microcapsule, a friable microcapsule, or mixtures or
combinations thereof.; (b) a pro-perfume; (c) a low odor
detection threshold perfume ingredients; (d) neat perfume; and
(e) combinations thereof. In one embodiment, the article is free
or substantially free of any one or more of the aforementioned
perfume components. A non-limiting example of a moisture-
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activated perfume microcapsule includes one that comprises
cyclodextrin.
Id. at 13.
7. Denome teaches the use of perfume microcapsules provides one or
more advantages:
(i) the ability to use a reduced total perfume level, e.g., in neat
perfume (direct add); in perfume microcapsules; or
combinations thereof, (ii) avoiding cost in processing and lost
material through processing; (iii) delivering a high level of
perfume while not affecting process product disposition or
process parameters or product stability or product physical
properties (one example is viscosity); and (iv) delivering a high
level of perfume to fabric while avoiding a high level of neat
product odor, which can be a consumer negative; (v) delivering
improved fabric odor longevity performance compared to neat
perfume; and (vi) delivering improved odor from fabrics under
stress conditions (one example is while wearing clothing during
physical activity or exercise).
Id. at 12.
8. Denome teaches “[bjenefits for multi-layered systems include, but
are not limited to, providing higher loading capacity, promoting substrate
stability, isolating interaction between certain functional materials, etc.” Id.
at 27.
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Wrigley found a “strong case of obviousness based on the prior art
references of record. [The claim] recites a combination of elements that were
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all known in the prior art, and all that was required to obtain that
combination was to substitute one well-known ... agent for another.” Wm.
Wrigley Jr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1364 (Fed.
Cir. 2012).
Analysis
The Examiner provides sound fact-based reasoning for combining
Mayer and Denome. We adopt and incorporate by reference the Examiner’s
findings and conclusions regarding the scope and content of the prior art
(Final Action 3—8, Answer, 2—3, FF 1—6) and agree that the claimed particle
would have been obvious over the teachings of Mayer and Denome. We
address Appellants’ arguments below.
Appellants argue the Examiner’s rationale for obviousness of claim 1
is incorrect because “nowhere within Denome is any reference made to
multilayered substrates with a combination of neat perfume and
perfume microcapsules” and “nowhere within Denome is any reference
made to an ability to accommodate higher loading capacity as compared
to inclusion of neat perfume in film layers.” App. Br. 11—12 (emphasis
original). These arguments are unpersuasive as Denome indeed suggests the
points cited by the Examiner: Denome teaches “perfume microcapsules
comprising a perfume carrier and an encapsulated perfume composition” and
“neat perfume” along with “combinations thereof’ and that “benefits for
multi-layered systems include . . . providing higher loading capacity” and
references perfume as a functional material for inclusion in the layers. FF
5—7. Moreover, it is well established that prior art references need not
disclose an express motivation to combine the teachings in order to motivate
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the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996)
(“[T]he motivation in the prior art to combine the references does not have
to be identical to that of the applicant to establish obviousness.”). Denome
teaches that perfume microcapsules provide one or more advantages that
would motivate one of skill in the art to make particles using them. FF 7. In
addition, our reviewing court has held that improvement-related factors may
implicitly motivate a combination:
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical—. . . there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) (bold emphasis added).
Appellants further argue Mayer “fails to teach or suggest inclusion
of any type of solid particle in the thermoplastic coating of the particles
described herein” and instead “clearly involves different considerations than
forming polymeric films through casting, blow-moulding, extrusion or
blown extrusion of the polymeric material.” Id. at 12 (emphasis original).
According to Appellants, “Mayer fails to suggest that there are any
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difficulties with inclusion of perfume directly within the thermoplastic
coating” and instead teaches “including the perfume within the thermoplastic
polymer coating,” meaning “there is no suggestion that any further
protection measures need to be taken.” Id. at 12—13.
We do not find this argument persuasive because it fails to address the
combined teachings of Mayer and Denome. The Examiner’s reasoning is
that because Denome suggests multilayered substrates with a combination of
neat perfume and perfume microcapsules (FF 6), one of ordinary skill in the
art would have been motivated to use the particles of Mayer in the
combination suggested by Denome. Fin. Act. 6. In the Answer, the
Examiner further explains:
the modification articulated by the Examiner does not require
adding the perfume microcapsules of Denome et al. to the
thermoplastic coating of Mayer et al. Instead, the Examiner has
found that the coated particles of Mayer et al. can be overlaid
by a film composition of Denome et al. comprising
encapsulated perfume to produce a multilayered coated particle.
Ans. 5.
Thus, Appellants’ argument is inapposite. The Examiner reasonably
explains that a “skilled artisan would have been motivated to apply the film
layer of Denome et al. to achieve the benefits disclosed therein (e.g., to
accommodate higher loading capacity and to control release of the
functional materials) and the artisan would have had the requisite knowledge
and skill to apply the known microcapsule film layering technique in the
same way as taught in Denome, with predictable results. Id.
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Appellants next argue the “teachings of Denome are still within the
context of a composite film structure and any such benefits would not
necessarily inure to coated particles” such that “a person of ordinary skill in
the art would not reasonably have been expected to exploit such further
teachings of Denome in regards to modification of a coated particle as taught
in Mayer, especially given the desire in Mayer to provide perfume that is
transported to the laundry directly at the start of the washing operation.” Id.
at 13. Appellants further argue the “benefits of the particles as highlighted
by Mayer would be negatively impacted by overlaying the coated particles
of Mayer with the films of Denome and [] the production methods for the
film taught by Denome do not lend themselves as feasible for producing a
coating on a particle.” Rep. Br. 5.
Appellants have not provided any evidence to support their
contentions that the benefits would not inure to coated particles or that the
modifications suggested by the Examiner would have a negative impact or
be unfeasible. The Examiner has stated a strong prima facie case of
obviousness, which Appellants’ arguments, without more, does not
overcome. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(“[Attorney argument [is] not the kind of factual evidence that is required to
rebut a prima facie case of obviousness”).
Appellants next argue there are “unrecognized benefits associated
with including the microcapsules in the coating that includes the
thermoplastic polymer as claimed in claims 1 and 18.” App. Br. 13. We
agree with the Examiner that Appellants have not provided evidence to
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establishing that the results are unexpected, unobvious or commensurate in
scope with the claims (Ans. 10), and are not persuaded by this argument.
Conclusion of Law
We affirm the rejection of claim 1 as obvious over Mayer and
Denome. Claims 5—10, 12, 13, 16, and 17 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
As discussed above, Appellants have waived arguments directed to
Barthel and Aouad. We therefore also affirm the rejection of claims 1, 5—10,
12, 13, and 16—18 as obvious over Mayer, Denome, and Barthel and the
rejection of claims 1, 5—10, 12, 13, and 16—18 as obvious over Mayer and
Aouad. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the
event of such a waiver, the PTO may affirm the rejection of the group of
claims that the examiner rejected on that ground without considering the
merits of those rejections.”).
DOUBLE PATENTING
The Examiner finds that
claim 1 teaches detergent particles suitable for use in laundry-
detergent, cleaning-agent or care products, comprising: a water-
soluble or water-dispersible carrier (support particulate), and a
coating comprising a mixture of thermoplastic polymer and
perfume, and patented claim 7 teaches that the perfume is
encapsulated.
In Table 1 of the ’395 patent, sucrose crystals are described as
the “water-soluble support particulate.” Thus, the instant
limitation wherein the water-soluble or water-dispersible carrier
being in the form of crystals and comprising sucrose is an
obvious variant of the patented claims.
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[] For Claim 17, patented claim 2 teaches that the carrier can
comprise one or more materials chosen from inorganic alkali
metal salts, organic alkali metal salts, inorganic alkaline earth
metal salts, organic alkaline earth metal salts, organic acids,
silicates, urea or mixtures thereof.
Fin. Act. 16—17.
The issue with respect to this rejection is whether a preponderance of
the evidence weighs in favor of the Examiner’s conclusion that claims 1—10
of Dreja suggest the invention of claims 1,5, 16, and 17.
Findings of Fact
8. Dreja is a continuation of PCT/EP2010/062897, filed on Sep. 2,
2010, and claims priority to a German application filed Sept 9, 2009.
9. The instant application is a continuation of
PCT/EP2009/056906, filed June 5, 2009, and claims priority to a German
application filed July 3, 2008.
10. Claim 1, the sole independent claim of Dreja, recites:
1. A solid scent-imparting composition comprising:
a. a water-soluble support particulate;
b. a water-soluble polymer;
c. a malodor-absorbing compound; and
d. a perfume,
wherein said support particulate has at least a partial envelope
comprising said water-soluble polymer, said malodor-
absorbing compound, and said perfume, and wherein the
envelope further comprises a detergent compound at least
partially incorporated therein.
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Analysis
Appellants argue, inter alia, that the two-way obviousness test should
apply:
In accordance with MPEP 804(II)(B)(l.)(b), an appropriate
obviousness-type double patenting analysis requires a two-way
obviousness analysis if (A) there is administrative delay on the
part of the Office causing delay in prosecution of the earlier
filed application; and (B) the applicant could not have filed the
conflicting claims in a single (i.e., the earlier filed) application.
Rep. Br. 7.
Appellants argue “the instant application was filed earlier than Dreja” and
“Appellants have not taken any extensions of time in responding to any
official actions [and are thus] not responsible for the later issuance of the
instant application in comparison to Dreja.” Id. Appellants further argue
“the conflicting claims could not have been filed in the earlier application
because Dreja expressly requires a malodor-absorbing compound to also be
present in the envelop[e] (see claim 1 of Dreja), and there is no disclosure
whatsoever of a malodor-absorbing compound within the compositions as
described in the instant application.” Id. According to Appellants, the two-
way obviousness test cannot be met “because there is no basis for
concluding that inclusion of a malodor-absorbing compound within the
envelop[e] of Dreja, as claimed, would be obvious over the teachings of the
instant application.” Id. In addition, Appellants argue that “Dreja contains
no claims directed to particles with a coating that includes a mixture of
thermoplastic polymer and microcapsules.” Id. at 6.
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We agree with Appellants that the two-way obviousness test applies to
this inquiry as the instant application predates the application leading to the
Dreja patent (FF 8—9) and Appellants aver that all delays in the prosecution
of the application are solely attributable to the Office. Rep. Br. 7. See In re
Berg, 140 F.3d 1428, 1435 (Fed. Cir. 1998) (“The two-way exception can
only apply when the applicant could not avoid separate filings, and even
then, only if the PTO controlled the rates of prosecution to cause the later
filed species claims to issue before the claims for a genus in an earlier
application ”).
Under this analysis, we begin by considering whether claims 1—10 of
Dreja are obvious over the claims at issue. As Appellants note, claims 1—10
of Dreja require inclusion of a malodor compound within the envelope. FF
10. We find the Examiner has not established in this rejection that the
subject matter of claims 1—10 could have been filed with descriptive support
in the instant specification: the Examiner does not establish that the claims
or Specification of the instant application support this claim element or cite
to a second reference providing evidence that it would have been obvious for
an ordinarily skilled artisan to include a malodor compound at the time of
the invention. Accordingly, we find that because the two-way test for
obviousness-type double patenting applies and Dreja’s claims are not
obvious over the instant claims, the evidence does not support a finding of
obviousness-type double patenting, and we reverse the rejection.
Conclusion of Law
We reverse the double patenting rejection of claims 1,5, 16, and 17.
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SUMMARY
We affirm the obviousness rejections and reverse the double patenting
rejection.
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
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