MILLIKEN & COMPANY

Patent Trials and Appeals Board

Oct 12, 2021

2020005546 (P.T.A.B. Oct. 12, 2021)

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.
14/704,154 05/05/2015 Benjamin R. Butterfield 6834A 4629
25280 7590 10/12/2021
Legal Department (M-495)
P.O. Box 1926
Spartanburg, SC 29304
EXAMINER
MRUK, BRIAN P
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
10/12/2021 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):
patents@milliken.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN R. BUTTERFIELD, EDUARDO TORRES,
SANJEEV K. DEY, MICHAEL HONG, HAIHU QIN, and
DOMINICK J. VALENTI
Appeal 2020-005546
Application 14/704,154
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 under 35 U.S.C. § 102(a)(1) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Sabnis et al, WO 2007/008389 A2. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellant, which refers to “applicant” as defined in 37 C.F.R. § 1.42(a),
identifies the real party in interest as Milliken & Company. Appeal Br. 2.
Appeal 2020-005546
Application 14/704,154
2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a laundry care composition comprising a
laundry care ingredient and at least one compound conforming to a structure
selected from the group consisting of the Formulae (I) – (XC). See, e.g.,
claim 1. In response to the Examiner’s species election requirement made in
the Office Action of August 22, 2016, Appellant elected the species of
Formula (I). Appeal Br. 3. Below, we reproduce relevant portions of claim 1
with the limitations at issue italicized:
1. A laundry care composition comprising a laundry care
ingredient and at least one compound conforming to a structure
selected from the group consisting of Formulae (I) – (XC)
below
(I)

wherein X1 and X2 are selected from the group consisting
of a carbon atom and a nitrogen atom; a is an integer from 0 to
5, provided a is an integer from 0 to 4 when one of X1 and X2 is
a nitrogen atom and a is an integer from 0 to 3 when both X1
and X2 are nitrogen atoms;
each R1 is independently selected from the group
consisting of halogens, a hydroxy group, a nitro group, alkyl
groups, substituted alkyl groups, –S(O)2OH, –S(O)2O-[M+], –
C(O)OR5, –C(O)R5, –C(O)NR5R6, –NC(O)OR5, –NC(O)SR5, –
OR5, –NR5R6, –S(O)2R5, –S(O)2NR5R6, and –P(O)2R5; M is a
Appeal 2020-005546
Application 14/704,154
3
cation; R5 and R6 are independently selected from the group
consisting of hydrogen, alkyl groups, substituted alkyl groups,
aryl groups, substituted aryl groups, and Ra;
R2 and R3 are independently selected from the group
consisting of aryl groups, substituted aryl groups, heteroaryl
groups, and substituted heteroaryl groups, provided at least one
of R2 and R3 is heteroaryl group or a substituted heteroaryl
group when both X1 and X2 are carbon atoms;
L1 is selected from the group consisting of hydrogen,
halogens, a hydroxy group, a cyano group, and –OR8; R8 is
selected from the group consisting of alkyl groups and
substituted alkyl groups; . . .
Appeal Br. 7–8 (Claims Appendix) (emphasis and formatting added).
OPINION
The issue on appeal is: Has Appellant identified a reversible error in
the Examiner’s finding that Sabnis’s Example 11 compound 3,3-bis-(4-
hydroxy-3-pyridin-1-yl)-l-(3H)-isobenzofuranone has a group that meets the
requirements of the L1 group required by Appellant’s claims? Compare
Appeal Br. 3–5, with Ans. 3–4.
Appellant has identified such an error.
The claims require a central carbon atom bonded to an L1 group. The
L1 group may be an –OR8 group. R8 is either an alkyl group or a substituted
alkyl group. See claim 1.
The Examiner reproduces Sabnis’s Example 11 structure and finds
that it teaches an –O–C(O)–CH– linkage that meets the –OR8 requirements
of Appellant’s L1 group when R8 is a substituted alkyl group. Ans. 4.
We agree with Appellant that Sabnis’s compound does not have the
required substituted alkyl group. Appeal Br. 3–5. We reproduce the structure
of Sabnis’s Example 11 compound below:
Appeal 2020-005546
Application 14/704,154
4

Sabnis ¶ 215.
The image depicts a chemical structure with a central carbon atom
with four bonds, three bonds are to phenyl rings and one bond is to an
oxygen atom. The chemical structure closest to the –O–C(O)–CH– structure
identified by the Examiner is the oxygen-bonded structure, which is depicted
to the right of the central carbon atom.
As pointed out by Appellant, the oxygen-bonded structure, in fact, is a
carboxy group of formula –O–C(O)–. Appeal Br. 4. As shown in the above
image, this carboxy group is not only attached to the central carbon, but also
attached to the phenyl ring below and to its the left. Thus, the carboxy group
has two covalent bonding sites, one on each end.
Appellant’s Specification defines “substituted alkyl groups” as
“univalent functional groups derived from substituted alkanes by removal of
a hydrogen atom from a carbon atom of the alkane.” Spec. ¶ 10 (emphasis
added).
Appellant contends that their definition of substituted alkyl group
specifically excludes Sabnis’s second valency because “univalent” means it
“contains only a single open valence for bonding to an adjacent atom or
functional group. So, when the group R8 is a substituted alkyl group, the
substituted alkyl group's single open valence is covalently bonded to the
Appeal 2020-005546
Application 14/704,154
5
oxygen atom of the group –OR8.” Appeal Br. 4. The Examiner does not
dispute this. Ans. 4. Thus, we determine a preponderance of the evidence
supports Appellant’s argument that Sabnis’s carboxy group is not a
substituted alkyl group as that term is used by Appellant and, thus, Sabnis’s
compound does not meet the requirements of the R8 group of Appellant’s
claims. Nor has the Examiner provided an obviousness analysis supporting
substitution of Sabnis’s carboxy group with a substituted alkyl group.
CONCLUSION
The Examiner’s decision to reject claims 1–4 under 35 U.S.C.
§ 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
obvious over Sabnis is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4 102(a)(1) Sabnis 1–4
1–4 103 Sabnis 1–4
Overall
Outcome
1–4

REVERSED