The Gillette Company LLC

Patent Trials and Appeals Board

Oct 15, 2021

2021000452 (P.T.A.B. Oct. 15, 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.
15/632,662 06/26/2017 Luke Andrew Zannoni CM4540 6228
27752 7590 10/15/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
GULLEDGE, BRIAN M
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
10/15/2021 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):
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 LUKE ANDREW ZANNONI, BETH ANN SCHUBERT,
RAJAN KESHAV PANANDIKER, JOSEPH JAY KEMPER,
ROBERT JOHN STRIFE, SAFA MOTLAGH,
JEFFREY JOHN SCHEIBEL, ALISON FIONA STEPHENS, and
PHILIP ANDREW SAWIN
Appeal 2021-000452
Application 15/632,662
Technology Center 1600
BEFORE LINDA M. GAUDETTE, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
Appeal 2021-000452
Application 15/632,662
2
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, 4–6, 8–13, 17, 20, and 21.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We Reverse.
CLAIMED SUBJECT MATTER
The claims are directed to lubricating members for razor cartridges
comprising a metathesized unsaturated polyol ester exhibiting improved
lubricating properties. Claim 1 reproduced below, is illustrative of the
claimed subject matter:
1. A lubricating member for use on a hair removal device,
said lubricating member comprising a lubricating material
comprising from 1% to 99% by weight of metathesized
unsaturated polyol ester, said metathesized unsaturated polyol
ester having a free hydrocarbon content, based on total weight
of said metathesized unsaturated polyol ester, of from about
0.1% to about 3% and one or more of the following properties:
(i) a weight average molecular weight of from about
5,000
Daltons to about 50,000 Daltons;
(ii) an oligomer index from greater than 0 to 1; and
(iii) an iodine value of from about 30 to about 200;
wherein said lubricating member is manufactured using one of
an extrusion, injection molding, compression, or hot melt
process, wherein:

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Gillette
Company. Appeal Br. 2.
2 Claims 2, 3, 14–16, 18, and 19 are pending in the application but have been
withdrawn from consideration. Non-Final Act. 1.
Appeal 2021-000452
Application 15/632,662
3
said extrusion process comprises heating to between 150°
C and 200° C;
said injection molding process comprises heating to
between 165° C and 250° C;
said compression process comprises applying a
compression force of at least one kN; and
said hot melt process comprises heating to between 55° C
and 85° C and applying a pressure.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Braksmayer US 2014/0357714 A1 Dec. 4, 2014
Moloney US 2016/0177217 A1 June 23, 2016
REJECTION
The Examiner has rejected claims 1, 4–6, 8–13, 17, 20, and 21 under
35 U.S.C. § 103 as unpatentable over Braksmayer in view of Moloney.
OPINION
The issue before us is whether a preponderance of the evidence
supports the Examiner’s conclusion that the subject matter of claims 1, 4–6,
8–13, 17, 20, and 21 would have been obvious to one of ordinary skill in the
art at the time the invention was made over Braksmayer combined with
Moloney.
The Examiner finds Braksmayer teaches metathesized unsaturated
polyol esters that can be used as a substitute for petrolatum. Non-Final Act.
3. The Examiner finds that Braksmayer teaches that the metathesized polyol
ester
comprises a mixture of monomer, dimers, trimers, tetramers,
pentamers, and other higher order oligomers (paragraph [8]),
and further states that the metathesized polyol ester comprises
at least 30% of tetramers or higher unit oligomers (paragraph
Appeal 2021-000452
Application 15/632,662
4
[50]), and such an amount of tetramer or higher oligomer would
provide a oligomer index which reads upon the instant recited
range.3

Id. The Examiner finds Braksmayer teaches that any remaining free
hydrocarbons in the metathesized polyol ester can be allowed to remain or
be partially or completely removed. Id. The Examiner finds that the “about
0.1%” recited in the claims reads on Braksmayer’s teaching of complete
removal of the free hydrocarbon. Id.
The Examiner finds that Braksmayer does not teach a lubricating
member for hair removal nor does Braksmayer teach a method for producing
a lubricating member. Id. at 4. The Examiner finds that these claim elements
are taught by Moloney. Id.
The Examiner concludes:
Therefore, it would have been prima facie obvious to one
of ordinary skill in the art at the time of filing to have
substituted the metathesized unsaturated polyol ester taught by
Braksmayer et al. for the petrolatum in the composition taught
by Moloney et al. Doing so would allow for the removal of a
non-renewable-based ingredient from said composition, which
is a desirable outcome according to Braksmayer et al.
(paragraph [2]).
As for the method of production, the pressure applied in
the method disclosed by Moloney et al. reads upon the instantly
recited method steps. However, it is noted that the patentability
of a product does not depend on its method of production, and
if the product in the product-by-process claim is the same as or
obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a

3 The Examiner finds that the prior art disclosures read on claim limitations.
Cited prior-art references do not “read on” claim limitations, rather, a
particular claim limitation “reads on” the corresponding feature(s) found in
the cited prior art

Appeal 2021-000452
Application 15/632,662
5
different process. See MPEP 2113. Thus, whether or not the
step is disclosed by Moloney et al., the lubricating member
taught by the cited prior art has the structural elements instantly
recited. Thus, the patentability is not considered to depend on
these method steps recited by the independent claims. And the
resultant member thus renders prima facie obvious independent
instant claims 1 and 4 as well as dependent instant claims 6 and
8–13.
Id. at 4–5.
Appellant contends that Braksmayer is silent with respect to the
percent of free hydrocarbon present in the metathesized polyol ester. Appeal
Br. 6. Appellant contends that although the passage in Braksmayer cited by
the Examiner suggests removing all or some of the free hydrocarbon, the
embodiments disclosed in Braksmayer all have free hydrocarbon contents
above the range recited in the claims. Id. at 7–11.
We have considered the arguments presented by the Examiner and
Appellant as well as the evidence of record and conclude that the Examiner
has not made out a prima facie case of obviousness. “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 (Fed. Cir. 1993).
“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 Grasselli,
713 F.2d 731, 739 (Fed. Cir. 1983).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Appeal 2021-000452
Application 15/632,662
6
The Examiner bases the rejection in part on a finding that the removal
of hydrocarbons mentioned in Braksmayer “would provide a free
hydrocarbon content which is . . . ‘about’ 0.1 %.” Ans. 6–7. This finding,
however, appears to be based on the assumption that the “known stripping
techniques” referenced in Braksmayer for complete removal of the saturated
linear/cyclic hydrocarbons after hydrogenation of internal linear and cyclic
olefins of self-metathesized polyol ester, see Braksmayer ¶ 49, would result
in some residual hydrocarbon being present in an amount of about 0.1%.
The Examiner has not provided sufficient evidence or reasoning to support
the assumption undergirding the factual premise thereby shifting the burden
to the Appellant to show that Braksmayer’s techniques would not have
resulted in about 0.1% residual hydrocarbon.4
Based on the foregoing we find that a preponderance of the evidence
does not support the Examiner’s finding of obviousness. Therefore the
rejection is not sustained.
CONCLUSION
The Examiner’s rejection is reversed.
More specifically,
The rejection of claims 1, 4–6, 8–13, 17, 20, and 21 under 35 U.S.C.
§ 103 as unpatentable over Braksmayer in view of Moloney is reversed.

4 We note that Appellant has advanced evidence concerning the free
hydrocarbon content of various embodiments of Braksmayer. Appeal Br. 8–
11. The metathesized polyol esters in those embodiments do not appear to
have been subjected to stripping to remove residual free hydrocarbons. See
Braksmayer ¶ 116. Thus we do not see how they respond to the Examiner’s
arguments.
Appeal 2021-000452
Application 15/632,662
7
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6, 8–
13, 17, 20,
21
103 Braksmayer, Moloney 1, 4–6, 8–
13, 17, 20,
21

REVERSED