Ex Parte WEI et al

Patent Trial and Appeal Board

Feb 22, 2017

13157665 (P.T.A.B. Feb. 22, 2017)

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.
13/157,665 06/10/2011 Karl Shiqing WEI 11750M 7678
27752 7590 02/24/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
MRUK, BRIAN P
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
02/24/2017 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 PATENT TRIAL AND APPEAL
BOARD
Ex parte KARL SHIQING WEI, EDWARD DEWEY SMITH III,
SHAWN LYNN MANSFIELD, PETER HERBERT KOENIG, WEI JI,
YOGESH SURADKAR, DEEPA BAGCHI, SUJATHA LOGOU, and
STEVAN DAVID JONES
Appeal 2016-002268
Application 13/157,665
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 21—24, 27, 28, 30-45, 47—61, 65 and 67—72
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-002268
Application 13/157,665
Claim 21 is illustrative of the claimed subject matter (emphasis added
to highlight disputed claim limitation):
21. A personal care composition comprising a cleansing phase and a
benefit phase wherein said cleansing phase comprises:
a) an aqueous structured surfactant phase comprising from about 5%
to about 20%, by weight of said personal care composition, of STnS where n
is between 0 and about 2.7;
b) at least one of the following: an amphoteric surfactant and a
zwitterionic surfactant;
c) a structuring system comprising:
i. optionally, anon-ionic emulsifier having;1
ii. optionally, from about 0.05% to about 5%, by weight of said
personal care composition, of an associative polymer;
iii. an electrolyte; and
said benefit phase comprises:
a) from 0.1 % to about 50%, by weight of said personal care
composition, of a benefit agent;
wherein said aqueous structured surfactant phase comprises at least a
70% lamellar structure.
Independent claim 41 is also directed to a personal care composition
and contains the disputed phrase “wherein said personal care composition is
free of alkyl sulfate” (Claims App’x). Independent claim 61 is also directed
to a personal care composition and contains the disputed limitation “wherein
the cleansing phase comprises at least a 70% lamellar structure” (Id.).
1 The word “having” appears to be an error, note it is also present in original
claim 21.
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Application 13/157,665
The following rejections are on appeal:
Claims 41—45, 47—60 and 65 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement because of the limitation “free of alkyl
sulfate”; and
Claims 21-24, 27-28, 30-40, 61 and 67-72 under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Gates (US 2008/0233061 Al, pub. Sept. 25, 2008).
ANALYSIS
The §112 Rejection of Claims 41—45, 47—60 and 65
Upon consideration of the evidence on this record and each of
Appellants’ contentions, the preponderance of evidence supports the
Appellants’ position that they were in possession of the invention as claimed
being “free of alkyl sulfate” in independent claim 41. The Examiner does
not dispute that the Specification describes a personal care composition that
is free of sodium lauryl sulfate, but states neither this nor the absence of
alkyl sulfate from the examples provides support for “free of alkyl sulfate”
(Ans. 4). Appellants’ position is that
the combination of the positive recitation of free of a species of
alkyl sulfate, the multitude of examples which are free of the
genus of alkyl sulfates, and the statement in the specification as
to the downside of utilizing the genus of alkyl sulfates, provide
adequate support for a composition free of alkyl sulfate.
(Br. 3).
The Examiner appears to focus on the absence of the phrase “free of
alkyl sulfates” from the Specification (Ans. 4). However, it has been
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Application 13/157,665
established that the claim need not use the same words as the specification,
but rather it is enough that one of ordinary skill in the art would recognize
that the inventor invented what is claimed. Union Oil Co. of Cal. v. Atlantic
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). Notably, the Federal
Circuit has held that negative claim limitations, such as the one at issue here,
are:
adequately supported when the specification describes a reason
to exclude the relevant limitation. Such written description
support need not rise to the level of disclaimer. In fact, it is
possible for the patentee to support both the inclusion and
exclusion of the same material.
Santarus, Inc. v. Par Pharm., Inc. 694 F.3d 1344, 1351 (Fed. Cir. 2012)
(emphasis added). In Santarus, the Federal Circuit held that the claim
limitation at issue — wherein the [claimed] composition contains no
sucralfate— was adequately supported by statements in the Specification
expressly listing the disadvantages of using sucralfate, which, presumably,
was a reason to exclude sucralfate {id. at 1350; emphasis in original).
As explained by Appellants, a person of skill in the art reading the
Specification would have reasonably understood that alkyl sulfates were
used in the prior art and that their use had the disadvantage of reducing
mildness in personal care compositions. Based on this disclosure, combined
with the Specification examples that do not contain alkyl sulfates, as well as
the undisputed description of compositions free of sodium lauryl sulfate, we
find that the Specification describes embodiments which do not include
alkyl sulfates.
We, therefore, conclude Appellants’ Specification conveys with
adequate clarity to those skilled in the art that, as of the filing date sought,
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Application 13/157,665
Appellants were in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Accordingly, we reverse the Examiner’s § 112 first paragraph
rejection.2
The §§ 102 and 102 Rejections
On the other hand, we determine that the preponderance of evidence
supports both the Examiner’s finding that independent claims 21 and 61 are
anticipated within the meaning of § 102 by Gates, as well as the Examiner’s
conclusion that the subject matter of Appellants’ claims is unpatentable
within the meaning of § 103 over Gates. Accordingly, we sustain the
Examiner’s §§ 102 and 103 rejection of the claims on appeal for the reasons
set forth in the Answer, which we incorporate herein by reference.
We provide the following for emphasis only. Appellants do not
separately argue any of the dependent claims in the rejections, and focus the
specific arguments on claims 21 and 61 (Br. 4, 5). Accordingly we select
independent claim 21 as representative, and also discuss the additional
argument regarding claim 61.
Appellants’ main argument is that “some” of the examples of Gates
“appear” to not be lamellar (Br. 4). Appellants’ state that even if one
substituted the alternatively taught ST2S (sodium trideceth-2 sulfate) and
ST IS (sodium trideceth-1 sulfate) (noting there is no dispute that these
surfactants are encompassed by claims 21 and 61) for the ST3S in the
relevant examples, “there is no guarantee” of a lamellar structure as recited
in claims 21 and 61 (id.).
2 The Examiner has not presented any prior art rejections for our review on
these claims.
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Application 13/157,665
It is well settled that when a claimed product reasonably appears to
be substantially the same as a product disclosed by the prior art, the burden
is on the applicant to prove that the prior art product does not necessarily or
inherently possess characteristics/properties of the claimed material not
expressly disclosed within the art attributed to the claimed product, and that
it is of no moment whether the rejection is based on § 102 or § 103 since the
burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed
Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have
not provided any persuasive evidence or persuasive technical reasoning to
refute the Examiner’s reasonable finding that the compositions described by
Gates that have the same surfactant (e.g., ST2S or ST1S) and benefit agent
as claimed and disclosed, and, thus, would have the required feature of the
surfactant phase having “at least 70% lamellar structure” recited in claim 21
and 61.
We agree with the Examiner that even assuming arguendo that Gates
does not describe the composition with sufficient specificity to anticipate the
claims, choosing “each of the claimed ingredients within the claimed
proportions for the same utility” as taught in Gates would have been obvious
(e.g., Ans. 4).
Appellants’ argument regarding the “consisting essentially of’
language in claim 61 (Br. 5), is not persuasive for reasons set out by the
Examiner (Ans. 5).
The Specification evidence relied on by Appellants to show
unexpected results is unpersuasive of patentability (Br. 5, 6). The burden of
showing unexpected results rests on Appellants, and Appellants must
establish that the difference between the claimed invention and the closest
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Application 13/157,665
prior art was an unexpected difference. See In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). The unexpected results must be established by factual
evidence, and attorney statements are insufficient to establish unexpected
results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997).
Further, a showing of unexpected results supported by factual evidence must
be reasonably commensurate in scope with the degree of protection sought
by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). Appellants did not
respond, by way of reply brief or otherwise, to the Examiner’s reasonable
determination that the evidence is not commensurate in scope with the
breadth of the claims (Ans. 6).
Accordingly, we affirm the Examiner’s §§ 102 and 103 rejections of
claims 21-24, 27-28, 30-A0, 61 and 67-72.
We reverse the Examiner’s § 112 rejection of claims 41—45, 47—60
and 65.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED-IN-PART
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