13177880 (P.T.A.B. Jun. 13, 2016)

Ex Parte Tanner et al

Patent Trial and Appeal BoardJun 13, 2016

13177880 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/177,880 07/07/2011 27752 7590 06/15/2016 THE PROCTER & GAMBLE COMPANY Global Patent Services - Legal IP Central Building, CS One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Paul Robert Tanner 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. 12203 7345 EXAMINER JUSTICE, GINA CHIEUN YU ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 06/15/2016 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): 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 PAUL ROBERT TANNER and LARRY RICHARD ROBINSON Appeal2014-003476 Application 13/177,880 Technology Center 1600 Before ULRIKE W. JENKS, JAQUELINE T. HARLOW, and RYAN H. FLAX, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants requested rehearing of the decision entered May 19, 2016, which affirmed the Examiner's rejection of claims 1---6, 9, 11-20, 22, 23, and 26---29 under 35 U.S.C. Â§ 103(a). Appellants' request is denied with respect to making any modifications to the decision affirming the Examiner's rejection under 35 U.S.C. Â§ 103(a). Appeal2014-003476 Application 13/177 ,880 DISCUSSION I. Appellants' reliance on Black & Decker, Inc. v. Positec USA, --- Fed. Appx. ---, 2016 WL 2898012 (Fed. Cir. May 18, 2016) is misplaced. See Reg. Reh'g 1-3. Although not identified as such by the Appellants, this recent Federal Circuit opinion (upon which the request for reconsideration is premised) is unpublished and nonprecedential. Moreover, Black & Decker presents no new issues of law. "The court may refer to a nonprecedential disposition in an opinion or order and may look to a nonprecedential disposition for guidance or persuasive reasoning, but will not give one of its own nonprecedential dispositions the effect of binding precedent." Fed. Cir. R. 32.1 ( d). We treat Black & Decker as would the Federal Circuit and will consider it for guidance, but not for binding effect. In the relevant part of Black & Decker, the Federal Circuit reversed the Board for failing to "explain a rationale why a person of ordinary skill in the art would [have] modif[ied the prior art's disclosed device]." Black & Decker, 2016 WL 2898102 at *6. Here, we are not presented with the same situation because the Examiner's rejection and the Board's affirmance thereof were not predicated on modifj;ing the composition taught by the Chaudhuri reference, but instead on the recognition that the reference taught and suggested a combination of components in amounts that rendered the appealed claims' subject matter obvious. 2 Appeal2014-003476 Application 13/177 ,880 II. Appellants contend that neither the Examiner nor the Board reasonably explained why a skilled artisan would "combine elements independently disclosed in Chaudhuri" to render the claimed invention obvious. We are not persuaded. As identified by the Examiner, Chaudhuri teaches each element of the appealed claims as components combinable in a skin care composition. Final Action 3-5, 7-8; Decision 5; FF1-FF9. Moreover, as the Examiner noted in the rejection, Chaudhuri suggests making the combination of claimed components in the claimed proportions as preferred embodiments and working examples. Final Action 3-5; see also Ans. 5-8 (identifying Chaudhuri's preferred embodiments and effective ranges of components and that "one of ordinary skill in the art would have made the present invention by following the teachings and suggestions of Chaudhuri with a reasonable expectation of successfully making a stable skin care product"). Decision 5. Appellants argue that there is no recognized solubility relationship between the isosorbide and actives disclosed by Chaudhuri. Req. Reh'g 3. The Examiner determined that "any solvent properties would necessarily be present in Chaudhuri's composition [because a] chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties [thereof] are necessarily present." Ans. 7 (citing Jn re Spada, 911F.2d705, 709 (Fed.Cir.1990)). We agree. In view of the above, no motivation was required to modifj; Chaudhuri in any way. The only motivation required was to combine the disclosed components of Chaudhuri in the also-disclosed (preferred and example) 3 Appeal2014-003476 Application 13/177 ,880 amounts, which the reference itself suggests. In so doing, the skilled artisan would have expected to successfully obtain a skin care composition where the active flavonoid (e.g., genistein or diadzein) is necessarily solubilized by the isosorbide (e.g., SynoveaÂ® DOI) component, as in the appealed claims. III. Contrary to the Appellants' contention, the claim term "solvent" has not been misapprehended or overlooked. 1 "The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to the known composition" - this applies to obviousness as well as anticipation. Tyco Healthcare Group LP v. Mutual Pharmaceutical Co., Inc., 642 F.3d 1370, 1373-74 (Fed. Cir. 2011) (quoting In re Spada, 911 F.2d at 708). Appellants claimed a composition disclosed by the prior art teaching the same components and amounts/ratios thereof. Appellants' assigning the label "solvent" to the isosorbide component or reciting that the amount of isosorbide present will "solubilize" an active that is "soluble" in it does 1 Appellants' reliance on Par Pharmaceutical, Inc. v. Twi Pharmaceuticals, Inc., 773, F.3d 1186, 1195 (Fed. Cir. 2014), overlooks that Court's indication that inherency analysis and reasoning is applicable to the question of obviousness when the limitation at issue is the "natural result" of the combination of prior art elements. Here, although we do not rely thereon, the appealed-Specification itself confirms that the natural result of combining Chaudhuri's 2-3 wt.% SynoveaÂ® DOI with 0.1 wt.% of genistein or diadzein flavonoid (chemically similar to (S)-equol) would be solubilizing the flavonoid in the SynoveaÂ® DOI. Spec. 24--25. 4 Appeal2014-003476 Application 13/177 ,880 nothing to distinguish these components from the same components disclosed in the prior art. SUMMARY Appellants' request is denied with respect to making any modifications to the decision affirming the Examiner's rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). DENIED 5