Ex Parte Trinh

Board of Patent Appeals and Interferences

Jun 16, 2011

11059078 (B.P.A.I. Jun. 16, 2011)

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.
11/059,078 02/16/2005 Toan Trinh 9590ML 9980
27752 7590 06/17/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HARDEE, JOHN R
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
06/17/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOAN TRINH
____________________

Appeal 2010-000393
Application 11/059,078
Technology Center 1700
____________________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject dependent claim 151. We have jurisdiction under 35
U.S.C. § 6(b).

1 Appellant only appeals claim 15 (e.g., App. Br. 2, dated January 2, 2009).
Accordingly, this appeal is dismissed as to claims 1, 3-14, 16-23, and 28.
See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008). Upon return of the
application to the jurisdiction of the Examiner, the Examiner should cancel
Appeal 2010-000393
Application 11/059,078

2
We AFFIRM.
Claims 1 and 15 are illustrative of the claimed subject matter:
1. A fabric conditioning article comprising

a composition carrier comprising a first side and a second side,
wherein said first side is capable of releasing a fabric conditioning
composition;

wherein said fabric conditioning composition is capable of being
operatively attached to said composition carrier from said first side;

wherein the second side of said composition carrier is concave at least
before a fabric conditioning composition is operatively attached and
the second side of said composition carrier is substantially planar or
flat after the addition of the fabric conditioning composition.

15. The article of Claim 1, wherein said composition carrier is made
of high melting plastic.

The Appellant seeks review of the following rejections made by the
Examiner only as they apply to dependent claim 15:
1. The rejection of claims 1, 3-23, and 28 under 35 U.S.C. § 112, second
paragraph as indefinite;
2. The rejection of claims 1, 3, and 14-18 under 35 U.S.C. § 102(b) as
being clearly anticipated by Norris (US 5,208,089);
3. The rejection of claims 1, 3, and 10-18 under 35 U.S.C. § 103(a) as
unpatentable over Norris;

claims 1, 3-24, 16-23, and 28 and require that the limitations of claim 1 be
incorporated into claim 15.
Appeal 2010-000393
Application 11/059,078

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4. The rejection of claims 10-23 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Norris and Hendrickson
(US 4,254,139).
The § 112, second paragraph Rejection
The Examiner argues that the term “substantially” is a relative term
which is not defined by the claims, and that there is no guidance in the
Specification to determine what “substantially” means in this instance (Ans.
3). First of all, we do not agree that “substantially” renders the claimed
subject matter indefinite in this case. “Substantially” is often used to mean
largely but not wholly what is specified. See, e.g., York Products, Inc., v.
Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-73 (Fed. Cir.
1996); see also, Amhil Enterprises Ltd. v. Wawa, Inc., 81 F.3d, 1554, 1562,
(Fed. Cir. 1996).
Furthermore, contrary to the Examiner’s position (Ans. 5), we agree
with Appellant that the subject matter contained in (non-appealed) claims
10-13 evidence that the Specification does provide guidance as to what is
meant by “concave” as recited in claim 15 (via its dependence on claim 1)
and concomitantly provides evidence as to what would be considered
substantially planar or flat (Reply Br. 2).
Accordingly, the preponderance of the evidence fully supports
Appellant’s view that one of ordinary skill in the art would have understood
the meaning of the term “substantially flat or planar” as set out in claim 1
(Reply Br. 2; App. Br. 3, 4).

Appeal 2010-000393
Application 11/059,078

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The Prior Art Rejections
DISPOSITIVE ISSUE
For each prior art rejection on appeal, the dispositive issue arising
from the contentions of the Appellant and the Examiner is the same: does
the evidence support the Appellant’s view that the Examiner erred in finding
Norris teaches or alternatively suggests that the composition carrier is
concave before application of a fabric conditioning composition and is made
of high melting plastic as required by claim 15?
We answer this question in the negative.
DISCUSSION
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter is anticipated by Norris, or would have been obvious
to one of ordinary skill in the art within the meaning of § 103 in view of the
applied prior art. We adopt the Examiner’s findings in the Answer as our
own and add any additional findings of fact appearing below for emphasis.
The Examiner finds that Norris teaches that its carrier may be made
of nylon, and that nylon is a high melting plastic as set out in Appellant’s
Specification. (Ans. 5-6). The evidence of record supports the Examiner’s
finding. Indeed, Appellant does not specifically challenge this finding as no
responsive brief has been filed.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Appeal 2010-000393
Application 11/059,078

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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Contrary to Appellant’s contention that the Examiner did not address
the limitation that the substrate is concave before application of a fabric
conditioning composition (Reply Br. 2-3; see also Supplemental App. Br. 8,
filed May 1, 2009), the Examiner specifically addressed this limitation (Ans.
3 “In Fig. 2 [of Norris], substrate 2 is dispensed from roll 1, wherein the
underside of the substrate is concave. After coating . . . the substrate is
stretched flat”).
Appellant has not directed us to any persuasive rationale or credible
evidence that the article of Norris is patentably distinct from the claimed
invention. Appellant has also not directed us to any persuasive rationale or
credible evidence that the Examiner’s claim interpretation regarding this
limitation is unreasonable. In any event, the “concave” claim limitation at
issue may be viewed as a product by process limitation (that is, the substrate
during processing is concave and then flat). It is well established that a
product claim is not limited by the process by which it is made.2 In re
Brown, 459 F.2d 531, 535 (CCPA 1972) (“[I]t is the patentability of the
product claimed and not of the recited process steps which must be
established.”) The final product of Norris and the final product of claim 15
are each “substantially planar or flat”.

2 “Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).

Appeal 2010-000393
Application 11/059,078

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Accordingly, we sustain all of the Examiner’s §§ 102 and 103
rejections.
CONCLUSION
On the record before us, we reverse the § 112 rejection, and sustain
the §§ 102 and 103 rejections maintained by the Examiner.
DECISION
The decision of the Examiner 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).
AFFIRMED

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