15425713 - (R) (P.T.A.B. May. 14, 2020)

Jorge Max. Sunkel

Patent Trials and Appeals BoardMay 14, 2020

15425713 - (R) (P.T.A.B. May. 14, 2020)

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. 15/425,713 02/06/2017 Jorge Max SUNKEL 14712 3215 27752 7590 05/14/2020 THE PROCTER & GAMBLE COMPANY GLOBAL IP SERVICES CENTRAL BUILDING, C9 ONE PROCTER AND GAMBLE PLAZA CINCINNATI, OH 45202 EXAMINER ROSENTHAL, ANDREW S ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 05/14/2020 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 mayer.jk@pg.com pair_pg@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JORGE MAX SUNKEL Appeal 2019-000212 Application 15/425,713 Technology Center 1600 ____________ Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and MICHAEL A. VALEK, Administrative Patent Judges. JENKS, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Appellant requests rehearing under 37 C.F.R. § 41.50(b)(2) (“Request” or “Req. Reh’g”) for reconsideration of our Decision on Appeal entered February 28, 2020 (“Decision” or “Dec.”). The Decision affirmed Examiner’s rejection of claims 1–16 under 35 U.S.C. § 103. Dec. 13. We have considered Appellant’s Request, but we do not modify our opinion. DISCUSSION “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1) (emphasis added). A request for rehearing is not an opportunity to express disagreement with a decision without setting forth those points that Appellant believes the Board misapprehended or overlooked in rendering its Decision. The proper course for an Appellant Appeal 2019-000212 Application 15/425,713 2 dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that already have been decided. See 35 U.S.C. §§ 141, 145. In the Request, Appellant contends that our Decision “may have been based on an erroneous interpretation of the scope and content of the [Catalfamo] secondary reference.” Req. Reh’g. 1. Specifically, Appellant contends that neither Finley nor Catalfamo discloses “that using a HIPE would provide some benefit or advantage over the LIPE of Finley.” Id. at 4; see also id. at 3 (“there is no disclosure that the described properties of this gas/liquid embodiment would provide some advantage or benefit over other HIPEs or LIPEs.”); see Appeal Br. 5–7. We are not persuaded that Appellant has identified any matter overlooked or misapprehended by the Board in the Decision. In our Decision, we explained that a skilled artisan would have been motivated to make a HIPE emulsion because Catalfamo teaches that such formulations ensure uniform distribution of components. See Dec. 8 (“Examiner identifies that HIPE emulsions, as disclosed in Catalfamo, are desirable to ensure uniformity of the emulsion for distribution of components. See Ans. 14 (“Uniformity of the emulsion is desired to insure distribution of components”), FF5.”). Catalfamo teaches that “uniform cell sizes can be used to uniformly contact relatively large surfaces with a relatively small amount of an active carried in the continuous, external phase.” FF5. Although Catalfamo may be focused on a specific process of making an HIPE, that does not detract from the teaching and the Examiner’s related reasoning that having uniform cell size would provide the benefit of Appeal 2019-000212 Application 15/425,713 3 a more even distribution of actives over a large surface. FF5; see Dec. 8. The art is not required to teach the same reasoning for making the composition as Appellant (see Dec. 8); MPEP 2144 (IV) states “the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 411 F.3d 977, 987 [] (Fed. Cir. 2006)”. Accordingly, Appellant does not demonstrate that we misapprehended or overlooked any point of law or fact in rendering our Decision. Therefore, we decline to modify our original Decision. DECISION We deny the requested relief with respect to making any changes to the Decision. CONCLUSION Outcome of decision on rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted 1–16 103 Finley, Catalfamo 1–16 Outcome of appeal after rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–16 103 Finley, Catalfamo 1–16 1, 7–15 103 Labatut 1, 7–15 Appeal 2019-000212 Application 15/425,713 4 Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed Overall Outcome 1–16 DENIED