Ex Parte White

Board of Patent Appeals and Interferences

Jul 23, 2003

09336051 (B.P.A.I. Jul. 23, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL JOHN ROBERT WHITE
__________

Appeal No. 2002-0751
Application No. 09/336,051
__________

ON BRIEF
__________

Before WINTERS, WILLIAM F. SMITH, and GRIMES, Administrative Patent
Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 37-40, all of the claims remaining. Claim 38 is
representative and reads as follows:
38. A process for forming a toilet block for use in a toilet bowl consisting
essentially of the sequential steps of:

(i) extruding polyvinyl alcohol or 50-90% partially hydrolyzed polyvinyl
acetate having a number average molecular weight of from about
15,000 up to about 68,000 and containing 0-15% by weight polar
plasticizer with from 1 up to about 20% by weight of a compatible
fragrance comprising a major proportion of at least one highly polar
Appeal No. 2002-0751 Page 2
Application No. 09/336,051

organic primary alcohol for [sic] form an extrudate which is water-
soluble at a temperature in the range of 25-35°C;

(ii) chilling and pelletizing the resulting extrudate at a temperature in the
range of from about 5°C up about 60°C;

(iii) cryogenically grinding the resultant pelletized product at a pressure in
the range of from about 1 atmosphere up to about 50 atmospheres to
a particle size in the range of from about 10 up to about 500 microns
to form cryogenically-ground particles;

(iv) subsequently comminuting the resulting cryogenically-ground
particles in order to form a powder;

(v) mixing the resulting powder with:
(a) at least one compatible sulfonate or sulfate-containing
surfactant having both detergent and foaming properties; and

(b) from 25 to 45% by weight of a filler selected from the group
consisting of alkali metal bicarbonates, alkali metal sulfates,
alkali metal carbonates, alkali metal citrates, alkali metal
phosphates and sodium chloride; and then

(vi) molding the resultant mixture into a toilet block.

The examiner relies on the following reference:
McDermott et al. (McDermott) 5,543,439 Aug. 06, 1996

Claims 37-40 stand rejected under 35 U.S.C. § 103 as obvious in view of
McDermott.
We reverse.
Discussion
The claims are directed to a method of making products (toilet blocks)
intended for long-term release of fragrance, and optionally other agents, when
Appeal No. 2002-0751 Page 3
Application No. 09/336,051

the product is placed in a toilet bowl. The claimed process has essentially five
sequential steps:
(1) extruding a mixture of polyvinyl alcohol (PVA)1 and a plasticizer to
form an extrudate, which is then cooled and pelletized;
(2) cryogenically grinding the pellets to particles in the size range of 10 to
500 microns;
(3) comminuting the particles to form a powder;
(4) mixing the powder with at least a surfactant and a water-soluble filler;
and
(5) molding the resulting mixture into a toilet block.

The fragrance can be added either in the first step (in claim 38) or in the mixing
step (in claim 37). Claims 39 and 40 are directed to the toilet blocks made in the
process of claims 37 and 38, respectively.
The examiner rejected the claims as obvious in view of McDermott. The
examiner characterized McDermott as teaching a method of making toilet blocks
that uses essentially the same combination of ingredients as recited in the instant
claims, and differs only in two ways: (1) McDermott does not specify a particle
size for the treated extrudate, and (2) the “cryogenic step” occupies a different
place in McDermott’s process than in the claims. See the Examiner’s Answer,
pages 3-4. The examiner concluded that these differences did not distinguish
the instant claims from the prior art because “one of ordinary skill in the art would
have been motivated to create a toilet rim block using the process disclosed by
McDermott, regardless of the specific order of the method steps, and the specific
particle size.” Id., page 4.

1 Instead of PVA, a partially hydrolyzed polyvinyl acetate can also be used.
Appeal No. 2002-0751 Page 4
Application No. 09/336,051

Appellant argues that the examiner has not made out a prima facie case
of obviousness. In particular, Appellant argues that the examiner has pointed to
nothing in the prior art that would have suggested a cryogenic grinding step, as
required by the claims. See the Appeal Brief, page 5. Appellant also argues
that, even if a prima facie case had been made, the specification presents
evidence of unexpected results to rebut a conclusion of obviousness. See the
Appeal Brief, pages 5-7.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). “It is well-established that before a conclusion of obviousness
may be made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). “Even when obviousness is
based on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In this case, we agree with Appellant that the cited reference does not
support a prima facie case of obviousness. McDermott discloses a process of
Appeal No. 2002-0751 Page 5
Application No. 09/336,051

making toilet blocks by extruding a mixture of PVA, a plasticizer, and a fragrance
(col. 10, line 63, to col. 11, line 7). As in the claimed process, the extrudate is
then cooled and pelletized (col. 11, lines 7-8). This pelletizing step is also
referred to as comminution (see col. 12, lines 3-8). McDermott discloses that
“[t]he pelletized product may be marketed as is or it may be formed into toilet rim
blocks, for example.” Col. 11, lines 8-10.
Thus, McDermott discloses only the first and last steps of the process
defined by the instant claims. McDermott does not disclose or suggest a step of
cryogenically grinding the pellets resulting from the extrudate, or a step of
comminuting the ground pellets into a powder, or a mixing step in which the
powder is combined with, at least, a surfactant and a water-soluble filler.
The examiner attempted to meet the “cryogenically grinding” step of the
claimed process by pointing to McDermott’s disclosure that the pellets resulting
from the pelletizing of the extrudate could be cooled by passing through a stream
of liquid nitrogen (col. 17, lines 38-40). See the Examiner’s Answer, page 4: “It
is the position of the examiner that McDermott teaches applicant’s claimed
process, because both processes rely on grinding the extrudate into particles,
and both processes involve the use of liquid nitrogen.”
We do not agree with this reasoning. The specification discloses that
cryogenic grinding involves
first extruding a mixture of fragrance and polymer and quickly
chilling the extrudate through a pelletizing operation and into an
inert cooling liquid having a temperature in the range of from about
5°C to about 60°C; then cryogenically grinding the resultant product
Appeal No. 2002-0751 Page 6
Application No. 09/336,051

using liquid nitrogen, liquid air or other cryogenic cooling agent at a
pressure of from about 1 atmosphere up to about 50 atmospheres.

Pages 11-12. The specification also discloses several cryogenic grinding
apparatuses suitable for use in the disclosed process. See page 12. Thus, the
claimed process requires more than simply a step of cooling with liquid nitrogen;
the claim requires that the extruded pellets be ground while cooled under liquid
nitrogen.
The examiner argues that “one of ordinary skill in the art would have been
motivated to create a toilet rim block using the process disclosed by McDermott,
regardless of the specific order of the method steps, and the specific particle
size.” The examiner, however, has pointed to nothing in McDermott that would
have suggested the specific steps recited in the claims, in the recited order. The
examiner’s unsupported assertion is not enough to support a prima facie case of
obviousness. See In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775
(Fed. Cir. 1983) (“It is fundamental that rejections under 35 U.S.C. § 103 must be
based on evidence comprehended by the language of that section.”); In re Lee,
277 F.3d 1338, 1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002) (The “factual
question of motivation is material to patentability, and [must] not be resolved on
subjective belief and unknown authority.”).
Since the examiner has not shown that the cited reference would have
suggested the claimed method, we conclude that the examiner has not carried
the initial burden of showing prima facie obviousness. We therefore need not
address Appellant’s evidence of unexpected results.
Appeal No. 2002-0751 Page 7
Application No. 09/336,051

Summary
McDermott does not suggest the method recited in the instant claims. The
rejection under 35 U.S.C. § 103 is therefore reversed.

REVERSED

Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

EG/dym
Appeal No. 2002-0751 Page 8
Application No. 09/336,051

Arthur l Liberman ESQ
International Flavors & Fragrances Inc.
521 West 57th Street
Law Department 10th Floor
New York, NY 10019