The Procter & Gamble Company

Patent Trials and Appeals Board

May 20, 2020

14523242 - (D) (P.T.A.B. May. 20, 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.
14/523,242 10/24/2014 Mark Lewis AGERTON 13110M 1091
27752 7590 05/20/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
SINGH, RANDEEP
ART UNIT PAPER NUMBER
1615
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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 MARK LEWIS AGERTON, STEVEN ROBERT ALEXANDER,
GINA LYNN BLUM, MARCO CAGGIONI, SUSAN MARIE DAWES,
DAVID MICHAEL FARREN, JUSTIN THOMAS LYDON HEDIN,
CHARLES PHILLIP MILLER, CHRISTA MARIE NOVICKI,
MELISSA CHERIE PAYNE, MOLLY ROSE SCHOTTELKOTTE,
JOHN CHRISTOPHER WESNER, and RANDALL LEE WOOD

Appeal 2019-005506
Application 14/523,242
Technology Center 1600
Before ULRIKE W. JENKS, ELIZABETH A. LAVIER, and
JAMIE T. WISZ, Administrative Patent Judges.
LAVIER, 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 1–20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Procter &
Gamble Company. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to methods for producing packaged personal
care compositions. Claim 1 is illustrative:
1. A method of producing a packaged personal care composition comprising:
a) forming in a mix tank a premix having a lower viscosity than the
packaged personal care composition;
b) adding compacted rheology modifiers to the premix;
c) transferring the premix from the mix tank to a high energy
dispersion device;
d) packaging the premix to produce the packaged personal care
composition.

Br. 6 (Claims Appendix).
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Sanders US 2,751,328 June 19, 1956
Miles US 4,599,363 July 8, 1986
Montgomery US 5,176,899 Jan. 5, 1993
Yamane US 6,149,894 Nov. 21, 2000
Haas US 2010/0291162 Al Nov. 18, 2010
Agerton ’1802 US App. No.
14/523,180
Oct. 24, 2014
REJECTIONS
1. Claims 1–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Sanders, Montgomery, Yamane, Haas, and Miles. Final
Action 3.

2 Agerton ’180 was filed as US Application No. 14/523,180 on Oct. 24,
2014, and issued as US Patent No. 10,172,778 B2 on Jan. 8, 2019.
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3
2. Claims 1–20 stand rejected on the ground of nonstatutory double
patenting as unpatentable over claims 1 and 3–20 of Agerton ’180,
Sanders, Yamane, and Miles. Final Action 9–10.
OPINION
A. Rejection 1
With respect to illustrative claim 1, the Examiner finds that Sanders
teaches a method for preparing a personal care composition in which the
premix has a lower viscosity than the packaged composition, and the
rheology modifier (which Sanders refers to as a binder) is added after the
premix has been transferred out of the mix tank. See Final Action 3–4
(citing Sanders Fig. 1, 1:15–21). The Examiner also relies on Miles, another
reference describing methods for producing personal care compositions, as
teaching the introduction of thickening agents such as silica directly into an
aqueous premix. See id. at 6–7 (citing Miles 4:3–12, 4:48–5:24, 5:24–48,
Fig. 1). As Sanders does not expressly recite packaging the premix, the
Examiner cites Montgomery, which teaches manufacturing and packaging of
personal care compositions such as toothpastes. See id. at 5 (citing
Montgomery 9:23–31, Example A).
In regard to combining these three references, the Examiner finds:
It would have been obvious at the time of filing to modify the
processes disclosed in Sanders and Montgomery according to the
teachings of Miles with a reasonable expectation of success.
Although Sanders and Montgomery do not expressly teach
adding powder thickening agents to the aqueous premix, Miles
suggests adding powder thickening agents directly to an aqueous
premix as an alternative to the addition of a slurry of thickening
agents as done in Sanders, and that similar if not improved
wetting and dispersion of the thickening agent could be achieved
using this technique. . . . The skilled artisan could have applied
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the teachings of Miles to the method of Sanders by incorporating
a powder hopper and mixer inline according to the schematics of
Miles into the system/apparatus understood from Sanders either
in place of the mixing tank (12) or in addition to mixing tank
(12), for adding additional thickening materials to the
composition in line. The skilled artisan would have had
reasonable expectation of success because both documents teach
methods for preparing similar personal care compositions such
as toothpaste or dentifrices. Based on the overall teachings of the
cited art of record mentioned above, a skilled artisan at the time
of filing would have been motivated to increase the viscosity of
a premix by adding compacted rheology modifier directly to the
premix.
Final Action 7–8.
In addition, the Examiner cites Haas for teaching “the coating and roll
compaction of rheology modifiers such as celluloses” in forming personal
care compositions. Final Action 6 (citing Haas ¶¶ 15, 23). The Examiner
finds that “[b]ased on the teachings of Haas, it would have been well within
the ordinary level of skill in the art at the time of filing to use a roller
compacter to process and optimize rheology modifiers such as celluloses
prior to adding them to the premix of Sanders.” Id.3
Appellant presents two arguments, neither of which ultimately
persuades us that the Examiner erred reversibly in rejecting claim 1. First,
Appellant argues that “none of the cited references disclose adding
compacted rheology modifiers to a premix.” Br. 2. Appellant is correct to
the limited extent that no single reference discloses adding compacted

3 The remaining reference, Yamane, teaches adding a surfactant in preparing
personal care compositions. See Final Action 5 (citing Yamane Abstract,
cols. 3–4). A surfactant is not expressly recited in illustrative claim 1, but is
germane to the specific limitations of claim 13. See id.; see also Br. 8
(Claims Appendix).
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rheology modifiers to the premix. “But one cannot show non-obviousness
by attacking references individually where, as here, the rejections are based
on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA
1981). Here, the Examiner relied on Miles for adding rheology modifiers to
a premix, and on Haas for compacting the rheology modifiers. See Final
Action 6–7, 12–14;4 see also Ans. 4.5 Appellant offers no specific
arguments with respect to Haas. See Br. 4. Appellant emphasizes that in
Miles, the powders or solids are added directly to the liquids through the
bottom of the mixing tank (while maintaining a vacuum), such that the
premix is made thick in the main mix tank. Again, Appellant argues the
references individually. Furthermore, this argument is not persuasive
because it pertains to a limitation not recited in claim 1: claim 1 requires

4 The Examiner’s introduction of Haas in the Final Action begins with a
sentence about the specific limitations of particular dependent claims (i.e.,
not including claim 1). See Final Action 6. But this paragraph goes on to
make broader points applicable to claim 1 as well (albeit still without
mentioning claim 1 expressly). See id. Further along in the Final Action,
however, in responding to Appellant’s arguments (and this time without
referencing any particular claims), the Examiner again discusses Haas as
teaching roll compaction of rheology modifiers. See id. at 13–14. The
Examiner concludes: “based on the teachings of Haas, it would have been
well within the ordinary level of skill in the art at the time of filing to use a
roller compacter to process and optimize rheology modifiers such as
celluloses prior to adding them to the premix of Sanders and Miles.” Id. at
14. Given that the rejection of claim 1 expressly includes the Haas
reference, and at least some of the discussion of Haas in the Final Action
clearly applies to claim 1, we are satisfied that Appellant had adequate
notice of the Examiner’s reliance on Haas for teaching compacted rheology
modifiers as recited in claim 1.
5 The Answer is not paginated, but we count eight pages beginning with the
title page.
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lower viscosity only in step (a), i.e., at premix formation, before the
compacted rheology modifiers are added in step (b).
Second, Appellant argues that the ordinarily skilled artisan would not
have been motivated to combine Sanders and Miles:
Sander[s] is concerned with dispersing rheology modifiers and
Miles focuses on reducing entrained air in a paste mixture. One
of ordinary skill in the art would not add the powders or solids of
Miles to Sanders; first as Mile[s’] invention is focused on adding
the powders or solids to the bottom of the mixing tank, and
second as Sander[s’] invention is specifically focused on using a
non-aqueous liquid dispersion vehicle to add the rheology
modifiers; adding the powders or solids of Miles “dry” would
negatively affect the increased dispersion Sander[s] is trying to
achieve, via the non-aqueous mixture.
Br. 3. Further to this point, Appellant highlights Sanders’ preference for
keeping binders and water in separate premixes, due to the reactivity of most
binders. See Br. 3 (discussing Sanders 3:63–67). But Appellant does not
mention that Sanders also states that for unreactive binders, limitations on
mixing steps after combining the binder and the water “practically do[] not
exist.” Sanders 3:63. A reference is prior art for all that it teaches or
suggests. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citations
omitted) (“All the disclosures in a reference must be evaluated, including
nonpreferred embodiments.”); In re Lemelson, 397 F.2d 1006, 1009 (CCPA
1968) (“The use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.”). Indeed, as the Examiner explains:
While Sanders teaches the use of a non-aqueous liquid dispersion
vehicle to add their rheology modifiers (binders) to a premix in
one embodiment (Figure 1), Sanders also teaches the addition of
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powders capable of acting as rheology modifiers to an aqueous
premix (see Figure 2). Miles similarly suggests adding powder
thickening agents directly to a premix (see above).
Ans. 7.6 Notably, “[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Having considered Appellant’s two arguments, we are not persuaded
that the Examiner erred reversibly in rejecting claim 1, as explained herein
and for the reasons already of record. Appellant does not argue separately
claims 2–20; these fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

B. Rejection 2
Appellant does not argue separately the nonstatutory double patenting
rejection. We affirm it summarily. See 37 C.F.R. § 41.37(c)(1)(iv); MPEP
§ 1205.02. To the extent Appellant intended its arguments made in regard to
the obviousness rejection to cross-apply to the nonstatutory double patenting
rejection, these arguments are unpersuasive for the same reasons discussed
above.
CONCLUSION
The Examiner’s rejections are affirmed.

6 When the Examiner states “(see above)” with respect to Miles, we
understand the Examiner to be referring to the discussion of Miles on page 6
of the Answer.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 103 Sanders,
Montgomery,
Yamane, Haas,
Miles
1–20
1–20 nonstatutory
double patenting
1–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED